IP Law Daily, WORTH NOTING—Other IP law developments, (Feb 25, 2016)

A periodic roundup of other items of interest to the Intellectual Property community:

COPYRIGHT—S.D. Tex.: Peter Scoppa and the other defendants that Suncoast Post-Tension alleged had infringed its registered copyrights in 26 technical drawings and misappropriated its trade secrets, were not entitled to a new trial, the federal district court in Houston has decided (Suncoast Post-Tension, Ltd. v. Scoppa, February 24, 2016, Gilmore, V.). Suncoast alleged that Peter Scoppa breached his employment contract with Suncoast by taking Suncoast’s trade secret information without authorization and that the other defendants tortiously interfered with that contract. On October 13, 2015, the jury entered a verdict in Suncoast’s favor for each of the causes of action identified above and awarded $8 million in compensatory damages, as well as $3 million in statutory copyright damages, along with punitive damages. The defendants alleged in their motion for a new trial, that the judge had made an impermissible prejudicial comment in the presence of the jury by identifying the defendants as “wipers.” In her brief order denying the motion, Judge Gilmore stated: “With respect to the Court’s comment about “wipers,” the term is from the classic 1988 Eddie Murphy movie, “Coming to America,” and is a reference to the underlings who serve the prince. The “wipers” in this case were the young lawyers who are usually relegated to carrying briefcases.”

TRADEMARK—2d Cir.: C & L International Trading Inc. and Kam Ng (together, the “appellants”) were not entitled to any relief from the federal district court in New York City’s amended injunction that left intact a portion of an injunction that barred the appellants from selling or importing into the United States any product named or labeled as “Tibetan Baicao Tea,” the U.S. Court of Appeals in New York City has ruled (C & L International Trading Inc. v. American Tibetan Health Institute, Inc., February 22, 2016, per curiam). Because the appellants had failed to raise their argument on appeal that “Tibetan Baicao Tea” was not protectable until after the trial of their dispute with American Tibetan Health Institute, they forfeited it, according to the appellate court.

PATENT—E.D. Tex.: Marten Transport, a Wisconsin manufacturer of notification systems accused of patent infringement by plaintiff Eclipse IP, was not entitled to transfer venue of the suit to the Western District of Wisconsin, the federal district court in Marshall, Texas, has determined (Eclipse IP LLC v. Marten Transport, Ltd., February 24, 2016, Payne, R.). Eclipse asserted that Marten infringes U.S. Patent No. 7,876,239 (“the ’239 patent”). The parties did not seriously dispute that third-party providers of tracking and notification systems would have technical evidence in this case and evidence from two of the third-party providers was significantly more accessible from this district, the court said. The Eastern District of Texas has compulsory process over witnesses from at least two relevant third-party entities; however, the Western District of Wisconsin does not have compulsory process over witnesses from any third-party entities. Furthermore, The ’239 patent shares a specification with U.S. Patent No. 7,319,414, and Eclipse asserted the ’414 patent against numerous defendants in this district before it asserted the ’239 patent against Marten. Thus, at the time this case was filed, cases involving related patents were already pending before the court.

TRADE SECRETS—M.D. Fla.: Financial Information Technologies (“Fintech”) sufficiently pleaded a claim that its former employee Mark Lopez violated the Florida Uniform Trade Secrets Act (“FUTSA”) after leaving his employment. Fintech alleged detailed facts that: (1) Fintech possessed confidential and proprietary information and took reasonable steps to protect its secrecy; (2) Lopez misappropriated this secret information and used it for improper means; and (3) Fintech’s confidential and proprietary information derives independent economic value from not being generally known or ascertainable through proper means. Contrary to Lopez’s contentions, Fintech averred more than just “conclusory allegations” that Lopez had knowledge of and misappropriated Fintech’s trade secrets, the federal district court in Tampa reasoned (Financial Information Technologies, Inc. v. Lopez, February 19, 2016, Moody, J.).

TRADEMARK—E.D. Cal.: John Lee and Paper Plus Connection, the plaintiffs and owners of two trademarks for bathroom tissue, were not entitled to a temporary restraining order against two defendants they accused of importing and selling bathroom tissue using marks that are confusingly similar to the plaintiffs’ own marks, the federal district court in Sacramento has decided (Lee v. Haj, February 22, 2016, Droyd, D.). The plaintiffs did not show that the potential harm they faced was so immediate to justify issuing a temporary restraining order without notice and an opportunity to be heard. Moreover, the plaintiffs’ unexplained delays in seeking immediate injunctive relief militated against a finding of irreparable harm and against the issuance of a temporary restraining order. There was no evidence demonstrating that denial of an ex parte temporary restraining order would result in irreparable injury to the plaintiffs for which legal remedies, such as monetary damages, would be inadequate.

TRADEMARK—C.D. Cal.: The federal district court in Los Angeles has granted plaintiffs Rin, Inc., and Shamrock Entertainment entry of default judgments against defendants Daphne Hereford and Rin Tin Tin, Inc. (“RTTI”), as well as a permanent injunction enjoining the defendants from asserting that they have rights in the RIN TIN TIN trademark and from using the mark on images, motion pictures or tangible objects, in public displays or marketing, or in the provision of services or licensing opportunities (Kleven v. Hereford, February 18, 2016, Birotte Jr., A.). In 2013, Max Kleven and Rin, Inc. filed suit against Hereford, RTTI, and another entity. Shamrock Entertainment intervened as a plaintiff. Kleven claimed that he and his predecessors have used the common law RIN TIN TIN trademark continuously in commerce since 1923 through the production of movies, television shows, and merchandise. He claimed that the defendants' “unlawful claim to intellectual property rights” for RIN TIN TIN interfered with his rights. The court agreed, but modified the scope of the requested injunction by narrowing it so that it barred only the defendants’ infringing conduct. Previously, on August 21, 2015, the court ordered cancellation of nine federal trademark registrations that were initially issued to Texas dog breeder Daphne Hereford or her company.

PATENT—D. Del.: Two declaratory judgment complaints brought by Cisco Systems against Sprint Communications have been dismissed for lack of subject matter jurisdiction. There was no dispute that Sprint has asserted infringement against various Cisco customers based on their use of Cisco products, however, the Federal Circuit has held that suppliers have no right to bring a declaratory judgment action solely because their customers have been sued for direct infringement, the federal district court in Wilmington, Delaware, said. The prospect of continued litigation against Cisco customers, without more, was “insufficient to pass muster under the current legal regime,” according to the court (Cisco Systems, Inc. v. Sprint Communications Co., LP, February 19, 2016, Robinson, S.).

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