IP Law Daily, WORTH NOTING—Other IP law developments, (Jul 30, 2021)

By WK Editorial Staff

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

COPYRIGHT—S.D. Tex.: An individual who filed claims for breach of contract, fraud and deceptive practices against a publishing company can pursue her claims in state court, the federal district court in Houston has ruled, in granting her motion for remand. The case from a contract between the individual and the publisher for publication of a book entitled "Hooker to Looker: A Makeup Guide for the Not So Easily Offended." The individual, who owned a makeup line, claimed that she wrote the book, while the publisher stated that it ghostwrote the book. Determining the book's ownership will require construction of the contract and not of the Copyright Act. The mere fact that a contract deals with the disposition of a copyright or there is a dispute as to who owns the copyright does not implicate the Copyright Act. The individual did not seek a remedy expressly granted by the Copyright Act, and the publisher did not argue that a distinctive policy of the Act required that federal principles control the disposition of the individual’s claims. Moreover, even if the publisher’s notice of removal had been proper, it was filed three years too late (Kelley v. Di Angelo Publications, July 28, 2021, Lake, S.).

TRADEMARK—N.D. Cal.: Wine producer Constellation Brands—owner of the incontestable trademarks TO KALON and TO KALON VINEYARD, associated with a historical vineyard in Napa Valley—was entitled to an award of attorney fees and costs under the Lanham Act’s fee shifting provision in a trademark infringement dispute with The Vineyard House ("THV"), a competing winemaker. Following a seven-day bench trial in January, the federal district court in Oakland concluded that THV infringed Constellation Brands’ TO KALON mark and issued a permanent injunction. Attorney fees were warranted because TVH’s theories proffered at trial lacked merit and any factual basis. "[W]hen a myopic view of litigation untethered to the realities of the facts and the law converge, one finds an ‘exceptional, case,’" the court said. Constellation Brands was awarded $2,339,446.23 in attorney fees and $11,681.00 expert witness fees (The Vinyard House, LLC v. Constellation Brands U.S. Operations, Inc., July 28, 2021, Rogers, Y.).

TRADEMARK—N.D. Cal.: American technology company Splunk cannot pursue declaratory judgment action against German telecommunications provider Deutsche Telekom (DT) over trademark rights in the color magenta, the federal district court in San Francisco has held because Splunk failed to demonstrate a live dispute sufficient for jurisdiction under the Declaratory Judgment Act. The facts considered by the court were that DT: (1) sent a demand letter to Splunk under German and EU law for Splunk’s conduct in Europe; (2) filed a trademark action against Splunk in Germany over the EU conduct; (3) reserved "its right to take legal action against the use of Magenta by Splunk" under U.S. trademark law"; and (4) has not sued Splunk in the United States; and did not oppose Splunk’s trademark applications for color gradient marks before the Trademark Trial and Appeal Board. Splunk contended that DT had "aggressively asserted" its trademark rights against other companies, but Splunk did not allege bad faith or other misconduct by DT with respect to its trademark rights. Moreover, DT represented to the court that it did not plan to pursue an action against Splunk in the United States. Under the circumstances, Splunk did not allege a reasonable apprehension of being sued in the United States by DT (Splunk Inc., v. Deutsche Telekom AG, July 26, 2021, Donato, J.).

FEDERAL CIRCUIT NEWS: Federal Circuit Judge Kathleen O’Malley this week announced her plans to retire from the bench on March 11, 2022. Judge O’Malley, who joined the U.S. Court of Appeals for the Federal Circuit in 2010, gained a reputation as a supporter of a strong patent system. Prior to the Federal Circuit, Judge O’Malley served 16 as district court judge for the Northern District of Ohio. Judge O’Malley was nominated to the Federal Circuit by President Obama as successor to Circuit Judge Alvin Schall. Her vacancy will allow President Biden to appoint a second judge to the Federal Circuit. Tiffany Cunningham was confirmed on July 19.

COPYRIGHT ROYALTY BOARD NEWS—Due to technical issues some users have experienced with eCRB, the Copyright Royalty Judges announced that they have reopened the comment period in connection with a proposed partial settlement and proposed regulations that set certain rates and terms applicable during the period beginning January 1, 2023, and ending December 31, 2027, for the section 115 statutory license for making and distributing phonorecords of nondramatic musical works for an additional 15 days. Comments and objections on the proposed rule, published June 25, 2021, at 86 Fed. Reg. 33601, are due no later than August 10, 2021 (86 Fed. Reg. 40793, July 29, 2021).

INTERNATIONAL COPYRIGHT NEWS: The European Commission on July 26 announced that it has sent letters to 23 Member States asking for them to provide information about how the rules set forth in the EU’s Directive on Copyright in the Digital Single Market (Directive 2019/790/EU) have been enacted into their national law. The commission also asked 21 Member States for information about how Directive 2019/789/EU on online television and radio programs has been enacted into their national law. The Directives aim to modernize EU copyright rules and to enable consumers and creators to make the most of the digital world. The deadline for transposing these Directives into national legislation was June 7, 2021. The Commission signaled that these letters of formal notice are the first step in initiating infringement procedures.

Attorneys: Christina Le Trinh (Buchalter, A Professional Corp.) for Vineyard House, LLC. Armin Ghiam (Hunton Andrews Kurth LLP) for Constellation Brands U.S. Operations, Inc. Ashok Ramani (Davis Polk & Wardwell LLP) for Splunk Inc. Dana Johannes Finberg (Arent Fox LLP) for Deutsche Telekom AG. Yocel Alonso (Alonso, PLLC) for Jentry Kelly. Karen Bryant Tripp (Karen Bryant Tripp, Attorney at Law) for Di Angelo Publications, Inc.

Companies: Constellation Brands U.S. Operations, Inc.; Splunk Inc.; Deutsche Telekom AG; Di Angelo Publications, Inc.

News: Copyright Patent Trademark CaliforniaNews FedCirNews TexasNews