For our weekly SoCal IP Institute meeting on Monday, August 19th, 2019, we will discuss the following cases:

Gold Value International Textile, Inc. v. Sanctuary Clothing, LLC (9th Cir. June 2019) (available here).

Gold Value alleged defendant copied its fabric design, which was used to manufacture a blouse that was later sold by defendant at retail outlets. Defendant filed a counterclaim, seeking invalidation of Plaintiff’s copyright. Concluding that Plaintiff’s copyright registration was invalid, the district court granted summary judgment in favor of defendants. The 9th Circuit affirmed the district court’s conclusion that the registration was invalid under 17 U.S.C. § 411(b) because plaintiff knowingly included inaccurate information in its copyright application that would have denied registration. The 9th circuit also upheld and award of attorney’s fees under 17 U.S.C. § 505 even though defendants prevailed on a technical defense.

Romag Fasteners, Inc. v. Fossil, Inc. (CAFC 2017) (Petition for Cert granted 2019) (case here) (petition here)

Romag owns U.S. Patent No. 5,722,126 for magnetic snap fasteners, which it sells under the registered trademark, ROMAG. Romag sued Fossil, Inc. and various retailers for, patent infringement, trademark infringement, and violation of the Connecticut Unfair Trade Practices Act (“CUTPA”) in district court. The jury returned a verdict for Romag, finding that Fossil had engaged in patent and trademark infringement and in unfair trade practices. Romag sought attorney’s fees under the Patent Act, 35 U.S.C. § 285, Lanham Act, 15 U.S.C. § 1117(a), and CUTPA. The district court granted fees under the Patent Act and CUTPA, but not under the Lanham Act. Fossil appealed and Romag cross-appealed, The federal circuit vacated and remanded. A petition for certiori was granted with the question “Whether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of section 43(a), id. § 1125(a).”

All are invited to join us on Monday August 19th, 2019, 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 Elisha Manzur by 9 am Monday morning.