IP News
May 01, 2003
Highlights of the latest intellectual property cases and news from around the country.
Patent Infringement Damages: Riding The Wine Railway Can Be Expensive
May 01, 2003
When the plaintiff in a patent litigation contends that it has never made or sold the product protected by its patent, alarm bells should start clanging in the ears of defense counsel. For the odds are that the plaintiff is angling to take advantage of a little-used aspect of the law of patent damages that can lead to a windfall recovery for patent infringement. It is the <i>Wine Railway</i> exception to the well-known "notice" provision of the patent statute. Created by the Supreme Court in <i>Wine Railway Appliance Co. v. Enterprise Railway Equipment Co.</i>, 297 U.S. 387 (1936), the exception can lead to catastrophic and unforeseen patent damage awards. Such damages are unforeseen (and, some would argue, unfair and undeserved) because they arise without any notice of infringement, actual or constructive.
The Reverse Doctrine of Equivalents Part 1 of 2
May 01, 2003
The ability of patents to encourage innovation by granting exclusive rights is well-recognized. However, patents can serve an antithetical role as well by, in certain circumstances, deterring, rather than encouraging, innovation.
Moseley Revisited: What the Victoria's Secret Case Means
April 01, 2003
The Supreme Court's recent Federal Trademark Dilution Act (FTDA) opinion, <i>Moseley et al. dba Victor's Little Secret v. V Secret Catalogue, Inc. et al.</i>, has a number of practical consequences. It settled an issue that had split the Circuits for years: whether actual dilution or a "likelihood of dilution" must be shown to establish an FTDA violation. Dilution law seeks to prevent the diminution or whittling away of a famous trademark's value through another's commercial use of the same or a similar mark. That somewhat abstract harm suggests the less concrete "likelihood of dilution" standard would more logically apply.
IP News
April 01, 2003
Highlights of the latest intellectual property cases from around the country.
Bodily Appropriation" Of A Creative Work: Can Trademark Law Provide A Remedy When Copyright Law Cannot?
April 01, 2003
Can the victim of infringement of a creative work find relief under the trademark law, when relief under the copyright law may not be available, without the need to prove likely consumer confusion? With the Circuit courts split, the Supreme Court recently agreed to decide the issue in <i>Dastar Corp. v. Twentieth Century Fox Film Corp.,</i> U.S. NO. 02-428 (granting <i>cert.</i> on January 10, 2003)
The Latest Threat To E-Commerce : The PanIP Patent Litigation
April 01, 2003
As if the recent attacks on the tax-exempt status of Internet transactions were not enough for e-commerce vendors to worry about, a new problem has come to light for companies that sell goods or services via an Internet Web site. PanIP, LLC (PanIP), a company based in San Diego, has initiated lawsuits in the U.S. District Court for the Southern District of California against over 50 companies transacting business over their Internet Web sites, alleging that such activity constitutes infringement of two patents owned by PanIP.1 The patents asserted by PanIP are generally directed to "data processing systems designed to facilitate commercial, financial and educational transactions between multimedia terminals"2 and to "a system for filing applications with an institution from a plurality of remote sites, and for automatically processing said applications in response to each applicant's credit rating obtained from a credit reporting service."3
