We will be discussing one trademark and one patent case  in our weekly SoCal IP Institute meeting on Monday, October 10, 2011. Brief synopses are presented below.

GoPets v. Hise et al., Case Nos. 08-56110 and -56112 (9th Cir. Sept. 22, 2011) (attached).  The primary question presented by this case is whether in the Anticybersquatting Consumer Protection Act (“ACPA”) at 15 U.S.C. § 1125(d)(1) the term “registration” applies only to the initial registration of the domain name, or whether it also applies to a re-registration of a currently registered domain name by a new registrant. The 9th Circuit held that § 1125(d)(1) did not apply to such re-registration.

In this case, two brothers Edward and Joseph Hise registered the “gopets.com” domain name in 1999.  In 2004, GoPets, Ltd. was formed and became a successful children’s interactive game involving digital “pets.”  Over time, the CEO of GoPets, Ltd. sought several times to purchase the gopets.com domain name from the Hises.  A UDRP action was eventually brought by GoPets, Ltd., which failed.  After that action failed in 2006, the Hises transferred the domain to their corporation, Digital Overture, and registered a series of other “gopets” related domain names.   GoPets, Ltd. then filed a lawsuit in the Central District of California alleging a number of claims including the ACPA claims and a trademark infringement claim for all domains.  The district court found for GoPets, Ltd. in all respects and awarded damages of $1000 for the new domains and $100,000 for the gopets.com domain in addition to ordering the Hises to transfer the domains to GoPets, Ltd.

The 9th Circuit reversed the findings regarding the gopets.com domain name because it was registered before GoPets, Ltd. existed and the re-registration by Digital Overture did not implicate the ACPA.  However, the Hises’ use of the domain to indicate that the site was in any way “official” was likely trademark infringement.  The district court did not award damages for this infringement and, therefore, the case was remanded to consider this issue.  In addition, the registration of the series of other domain names after the 2006 UDRP decision did implicate the ACPA.  As a result, the 9th Circuit affirmed the district court’s decision on those domains.  Similarly, the injunction on the transfer of the gopets.com domain was reversed, but the injunction maintained as to the other domains.  Finally, the 9th Circuit ordered the district court to reconsider the attorney’s fee award in view of the modification of the underlying decision.

IGT v. Bally Gaming Int’l., Inc. et al., Case No. 2010-1364 -1365 (Fed. Cir. Oct. 6, 2011 (attached).  IGT asserted two reissue patents related to a networked system of gaming machines.  The two patents generally relate to a method for causing a slot machine to pay a bonus upon occurrence of a particular event.  Bally was found to infringe.  Bally appealed the summary judgment of infringement as to some claims and IGT cross appealed the decision to deny summary judgment of infringement as to other claims.

IGT accused Bally of infringing based upon its “Power Rewards” and “Power Winners” promotions in which players of a particular machine can be rewarded for continued play at that machine, for example, with monetary rewards or in which rewards are generated randomly at a machine after a certain amount of time has elapsed.  The district court determined that the “Power Rewards” and “Power Winners” promotions infringed some of the claims the two patents and did not infringe others.

Bally’s appeal was based upon an assertion that the district court’s claim construction was erroneous.  The Federal Circuit, however, agreed with each of the district court’s constructions.  IGT’s cross appeal primarily focused on the construction of a “command” or “message” at the district court with which the Federal Circuit also agreed.  Accordingly, the decision was affirmed in all respects.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 10, 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.