Multidistrict Judicial Panel Rejects Copyright/Trademark Case

The litigation involves cases in California, Missouri and New York for copyright infringement and trademark infringement. Two of the defendants moved to centralize the litigation in California. The panel denied the transfer because the cases were too individualized.

This case is another example that intellectual property litigation usually involves issues that are unique between the parties. As a result, intellectual property litigation typically is not suited for multidistrict litigation or class action litigation.


Attorney-Client Privilege Applies (For Now) in Patent Dispute

Isensee sued HO Sports for patent infringement and moved to compel production of various documents. The products complained of were sold by H.O. Sports. In a clever transaction, HO Sports acquired the assets off H.O. Sports, but did not purchase the business. However, HO still claimed attorney-client privilege for various documents created by H.O. Sports.

HO has taken inconsistent positions in this action, which the court expressly noted. To avoid liability, HO claims it was not the successor of H.O. but just purchased assets. To claim attorney-client privilege, HO claims it is the successor of H.O.

The magistrate judge granted the motion to compel without addressing the merits of the privilege arguments. His decision was that the sale of assets cannot convey the privilege. The district court showed disapproval with HO Sports but reassigned the matter to the magistrate judge to consider the merits of the privilege arguments.


TRO Denied in Arkansas Trademark/False Advertising Case

Trott’s took pictures of its cabinets to use in promotional materials. American Cabinet acquired these pictures from one of Trott’s former employees and used the photographs in their own sales brochures. Trott’s claimed false advertising and trademark infringement but failed to assert a claim for copyright infringement.

The court found no false advertising claim because there was no evidence consumers were deceived by the photographs. In fact, only a trained professional can distinguish the cabinets of one company from another. The court also found the cabinets themselves were generic and could not qualify for trademark protection. The court easily denied the TRO.

Trott’s had the right idea but brought the wrong claims. The photographs are copyrightable, and Trott’s likely would have been successful had it registered copyrights and asserted copyright infringement.


Microsoft Wins Copyright Case Under Anti-counterfeiting Amendments Act of 2004

Microsoft issues certificates of authenticity (COAs) so its customers know they are receiving genuine Microsoft software. Microsoft had successfully sued Ion Technologies and its owner, Paul Martin, for trademark infringement and copyright infringement for selling false COAs. See 2003 WL 21356084. The parties entered into a settlement agreement in late 2004, but Ion continued to sell COAs.

In December 2004, the Anti-counterfeiting Amendments Act of 2004 took effect. That law makes it illegal in some circumstances to knowingly traffic in an illicit label affixed to a copy of a computer program. See 18 U.S.C. § 2318. On the Section 2318 claim, the court granted partial summary judgment to Microsoft as to Ion but declined to extend personal liability to Martin. The court also granted partial summary judgment to Microsoft against both Ion and Martin for violation of the 2004 settlement agreement.