For our weekly SoCal IP Institute meeting on Monday, March 2nd, 2020 we will discuss the following cases:
Arctic Cat Inc. v. Bombardier Recreational Prods. Inc. (Fed. Cir. 2020) (available here)
35 U.S.C. 287(a) in part states,
“[. . . ] In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.”
In essence the statute creates a scheme for limiting back-damages where a patentee does not mark its patented articles as patented. There are instances however when marking is impossible (e.g. a patentee does not actually make a patented item, or stops making one). Here, Arctic Cat manufactured a thrust steering system, but stopped making it by the time the patent had issued. Arctic later entered into a licensing deal with Honda, the license agreement did not give Honda a marking requirement. Arctic Cat later sued a different infringer in 2014, the question on appeal became how far back Arctic Cat could go back to collect damages. The Federal Circuit held that Arctic Cat could only collect damages from the time the complaint was filed.
Joe Hand Promotions, Inc. v. Alburl (N.D. Ala. Feb. 20, 2020) (available here)
A bar allegedly played a pay per view fight without paying for a license to the fight, the copyright owner sued the bar which was organized as an LLC. Defendant Alburl in this case was a partial owner of the LLC and had no knowledge that the fight was ever played at the bar. The specific issue here was whether Alburl could be personally liable for willful copyright infringement. The Alabama court found that defendant could be liable.
All are invited to join us on Monday March 2nd, 2020 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.