We will be discussing two recent, relevant opinions in our weekly SoCal IP Institute meeting on Monday, May 9, 2011.  The first case further develops the growing false marking jurisprudence.  The second case addresses the situation in which a movie production company uses an individual’s idea for a movie but fails to pay.  A brief synopsis of the cases is presented below.

Juniper Networks Inc. v. Shipley, 2010–1327 (Fed. Cir. April 29, 2011) (attached).  Mr. Shipley was inventor of two patents related to a “dynamic firewall”.  Mr. Shipley later assigned these patents to an unrelated third party who sued Juniper Networks for infringement.  Juniper Networks brought a qui tam action for a judgement of false marking of the patents based upon statements made on Mr. Shipley’s website from 2000 to the present regarding the systems covered by the patents.  Namely, Juniper Networks alleged that the indication on Shipley’s website that software embodying the patents was “in progress” of being created was a “marking” of the patents.  When Mr. Shipley’s hard drive crashed in 1999 losing the only known embodiment of those firewall products, Juniper Networks alleged that those markings became false when Mr. Shipley failed to remove them from his site.

Mr. Shipley moved to dismiss for failure to state a claim.  The district court granted the motion without leave to amend.  Juniper Networks appealed.  The Federal Circuit rejected Juniper Networks’ various assertions and affirmed the district court.  In particular, the Federal Circuit affirmed the district court’s decision that the alleged markings did not indicate that the website itself was protected by the software, that the district court need not consider other aspects of the false marking test when one element is not satisfied and that the proper standard of review under 12(b)(6) was applied.  The Federal Circuit also affirmed the district court’s dismissal without leave to amend because it was clear that the complaint could not be saved by any amendment.

Montz v. Pilgrim Films & Television, Inc., 08-56954 (9th Cir. May 4, 2011) (attached).  Larry Montz envisioned a television series following a group of paranormal investigators to real-world locations searching for confirmation of paranormal activity.  From 1996 to 2003 Mr. Montz pitched his idea to various television production companies.  In 2006, Mr. Montz sued the plaintiffs in this case after they began production and airing of the show Ghost Hunters on the Sci-Fi Channel.  Mr. Montz claimed copyright infringement and breach of an implied contract on the basis of his prior disclosure of the concept to the plaintiffs.

The District court dismissed the claims as preempted by Federal Copyright law and, absent a license, the plaintiffs were not under any obligation to pay for the concept.  The en banc panel of the 9th Circuit reversed concluding that copyright law did not preempt Mr. Montz claim for an implied-in-fact contract under long-standing California Supreme Court precedent in Desney v. Wilder, 299 P.2d 257 (Cal. 1956).  As a result, the case was remanded to the district court for further proceedings.

All are invited to join us in our discussion of these cases during the SoCal IP Institute meeting on Monday, May 9, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.