IP Law Daily, WORTH NOTING—Other IP law developments, (Aug 25, 2023)

By WK Editorial Staff

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

COPYRIGHT—11th Cir.: Bruce Munro, a creator of large light installation exhibits, could not appeal a district court’s summary judgment of noninfringment in favor of certain defendants—the entities and their officers responsible for designing and hosting a light-based art installation in Coral Gables, Florida called “NightGarden”—because Munro’s claims against another defendant—a Chinese light manufacturer and seller that did not appear in the case—was not yet final. The clerk of court entered a default against the Chinese company, but Munro never moved for entry of default judgment. In this case, Munro’s claims against G-Lights were “intertwined” with his claims against the NightGarden defendants so an exception to finality did not apply. The appeal was dismissed for lack of jurisdiction (Munro v. Fairchild Tropical Botanic Garden, Inc., August 23, 2023, per curiam).

COPYRIGHT—11th Cir.: The U.S. Court of Appeals in Atlanta had declined to reconsider its decision holding that R&D company Corellium, which marketed a software product based on Apple’s iPhone operating system, was protected by the fair use doctrine because it transformed the technology powering the ubiquitous consumer product into a tool that enabled security researchers to more effectively investigate potential threats from hackers. Apple had filed a petition for panel rehearing or rehearing en banc on the ground that the Supreme Court’s recent decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258 (2023), established a new standard for analyzing the first fair use factor in copyright suits; namely, that “transformative use now hinges on whether the specific challenged use overlaps with any of the copyright holder’s uses of the original work.” Apple had argued the panel decision did not conduct the now-required analysis. In a brief order rejecting Apple’s petition, the panel determined that “Warhol does not change our conclusion as to the first fair use factor that Corellium’s product, CORSEC, was moderately transformative,” nor did it alter the court’s balancing of the fair use factors (Apple Inc. v. Corellium, Inc., August 23, 2023, per curiam).

PATENT—Fed. Cir.: Substantial evidence supported a Patent Trial and Appeal Bard decision rejecting certain claims of U.S. Patent Application No. 15/711,381 (’381 application) as obvious under 35 U.S.C. § 103. The ’381 application, titled “System and Method for Ubiquitous Appliance Control,” which discloses a system in which a universal remote controls various appliances through a slave relay device. The rejected claims recite methods for using a universal remote control in conjunction with a relay device to control various appliances. The Board found that the rejected claims were unpatentable over U.S. Patent No. 7,631,197 (Niwamoto) in view of U.S. Patent Application Publication No. 2005/0097618 (Arling) and U.S. Patent No. 7,589,642 (Mui). Contrary to the applicant's contention, evidence supported the finding that Arling discloses the “tag file” limitation of claim 2 and that Niwamoto teaches the “file name” limitation of claim 3. The Board also sufficiently explained why a person of ordinary skill would have combined Niwamoto, Arling, and Mui. The Board had adopted the examiner’s reasoning that the combination “provides an established system with one to one mapping for accessing information thereby improving overall operability” (In re Universal Electronics, Inc., August 24, 2023, Stoll, K.).

TRADEMARK—11th Cir.: A Georgia federal district court did not err in ordering a retail store operator, Diamond J. Wholesale, LLC, d/b/a Gabsons Novelties (“Gabsons”), and its sole owner to pay $11 million in statutory damages for selling counterfeit “Top Tobacco” cigarette rolling papers, the U.S. Court of Appeals for the Eleventh Circuit has decided in a nonprecedential opinion. The district court did not abuse its discretion in excluding certain evidence at trial, including the testimony of one of Gabsons’ suppliers, because the supplier did not purchase products from the wholesaler during the time period. The sole owner’s argument that the district court erred on summary judgment in holding him individually liable because there were genuine issues of fact about his state of mind was rejected by the appellate court because intent is not necessary to establish liability for the use of counterfeit marks in commerce under 15 U.S.C. § 1114(1)(a). The individual had stipulated that he was “chie?y responsible for buying and selling the counterfeit products,” which sufficed to establish individual liability (Top Tobacco, L.P. v. Gabsons Novelties, August 22, 2023, per curiam.).

Attorneys: Melissa Arbus Sherry (Latham & Watkins LLP) for Apple, Inc. Thomas Goldstein (Goldstein & Russell, PC) for Corellium, Inc. Joel Benjamin Rothman (SRIPLAW) for Bruce Munro. Allison Sinclair Lovelady (Shullman Fugate, PLLC) for Fairchild Tropical Botanic Garden, Inc. James J. Lukas, Jr. (Greenberg Traurig, P.A.) for Universal Electronics, Inc. Katherine K. Vidal for the USPTO. Maia T. Woodhouse (Adams & Reese, LLP) for Top Tobacco, L.P., Republic Technologies [NA], LLC and Republic Tobacco, L.P. Dorey Cole (Cole Law Group, LLC) for Diamond J. Wholesale, LLC, d/b/a Gabsons Novelties.

Companies: Apple, Inc.; Corellium, Inc.; Fairchild Tropical Botanic Garden, Inc.; Universal Electronics, Inc.; Top Tobacco, L.P.; Republic Technologies [NA], LLC; Republic Tobacco, L.P.; Diamond J. Wholesale, LLC, d/b/a Gabsons Novelties

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