A little used and often overlooked provision of the California Code of Civil Procedure recently played an important role in three recent cases brought by AF Holdings LLC, a foreign entity formed under the laws of the Federation of Saint Kitts and Nevis, against California residents for allegedly dealing with copyright infringing content through use of BitTorrent software. These decisions, copies appended, are:

AF Holdings LLC v. Trinh, United Stated District Court for the Northern District of California, 2012 U.S. Dist. Lexis 161394 (November 9, 2012) (“AF Holdings I”).

AF Holdings LLC v. Navasca, United Stated District Court for the Northern District of California, No. C-12-2396 EMC (February 5, 2013) (“AF Holdings II”).

AF Holdings LLC v. Magsumbol, United Stated District Court for the Northern District of California, No. 12-4221 SC (March 18, 2013) (“AF Holdings III”).Continue Reading BONDing WITH NPE’s – The requirement for security for costs or expenses under Section 1030 of the California Code of Civil Procedure

By Dennis Smith, Martin Bader, Gray Buccigross

On August 31, 2012, the Federal Circuit, sitting en banc, issued a seminal, split decision articulating a new standard for induced infringement. Adjudicating two companion cases, Akamai Technologies, Inc. v. Limelight Networks Inc., and McKesson Technologies, Inc. v. Epic Systems Corp. (Fed. Cir., No. 2009-1372, -1380, -1416, -1417), the majority (Chief Judge Rader, and Circuit Judges Lourie, Bryson, Reyna, Moore and Wallach, joining) reversed both district courts and remanded for further proceedings.
Continue Reading Federal Circuit Avoids Central Joint Infringement Question and Articulates New Standard For Inducement

By Tyler Baker and Ted Max

On September 5, 2012, the United States Court of Appeals for the Second Circuit issued its long-awaited and highly anticipated decision in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., Docket No. 11-3303-cv. The Second Circuit reversed the lower court decision, in part, holding that Christian Louboutin’s “red outsole” trademark was valid and enforceable, and affirmed in part, holding that such trademark protection was limited to uses in which the “red outsole” contrasts with the color of the remainder of the shoe. As a result, the appeal of Christian Louboutin (“Louboutin”) was not successful and the fashion atelier Yves Saint Laurent (“YSL”) was not enjoined from using a red sole as part of a monochrome red shoe. The ruling, deciding a novel and hotly debated issue of U.S. trademark law regarding aesthetic functionality, is a victory for both sides in some respects, yet certainly leaves the door open for future debate and lawsuits about the scope of the Louboutin mark’s protection.
Continue Reading Second Circuit Digs Its Heels Into Louboutin Dispute; Finds “Red Sole” Trademark Protectable, But Limited in Scope

By Edwin Komen and Brian Weimer

New FCC regulations on closed captioning of IP-delivered video programming have caught many by surprise even though they have been in the works for the past two years. Many of those who will be directly impacted by the new rules may still be unaware of the rapidly approaching compliance deadline of September 30, 2012. Most pre-recorded video programming must be captioned for IP-delivery if it is shown on television with captions on or after September 30, 2012. The producer or supplier of the content bears the initial responsibility for inserting the captioning but the distributors also have the duty to confirm compliance. There are many variations and different applicable dates for different kinds of programming (e.g., live vs. pre-recorded but edited vs. archived). As in all aspects of the law, the application of the law and the associated regulations depends on the specific circumstances surrounding each video program in a library. However, since the dates for implementation vary widely depending on the content and whether it has been broadcast on television in the US, producers, suppliers and distributors must carefully consider each video program in relationship to the relevant regulations. Video programming distributers will also be subject to new consumer complaint procedures that require distributors to have prescribed procedures in place by September 30, 2012. And while the deadline for device manufacturers to comply with their new closed captioning requirements is not until 2014, the reality of equipment development cycles requires device manufacturers to pay close attention to the new requirements immediately.
Continue Reading FCC’s New Closed Captioning Rules Kick Into Gear

By Ed Anderson, Martin Bader, and Matthew M. Mueller

The Federal Circuit (Dyk*, Rader & Moore) recently weighed in on the long-disputed issue of privilege for settlement negotiations. On April 9, 2012, the Federal Circuit handed down its decision in In re MSTG, Inc., Misc. Dkt. No. 996. The Federal Circuit declined to create a privilege that would prevent disclosure of settlement negotiations during discovery. In so doing, the Court extended the scope of discovery into settlement negotiations, a trend beginning with ResQNet. In re MSTG, slip op. at 19 (“Our cases appropriately recognize that settlement agreements can be pertinent to the issue of reasonable royalties.” (citing ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869-73 (Fed. Cir. 2010))).
Continue Reading Federal Circuit Extends ResQNet and Allows Discovery of Settlement Negotiations

By Kevin Capps

On March 20, 2012, the Supreme Court issued its much-anticipated decision in Mayo Collaborative Services, DBA Mayo Medical Laboratories, et al. v. Prometheus Laboratories, Inc., with potentially far-reaching ramifications for pharmaceutical and biotechnology companies, particularly those developing diagnostic methods and assays.
Continue Reading Supreme Court Holds That a Law of Nature Applied Using Known and Obvious Steps Is Not Patent Eligible

Building Brands In A Digital World

Building a better mousetrap, widget, or search engine isn’t enough. Join leading branding professionals and trademark counsel for an in-depth discussion of how to build a compelling brand, including online brand development strategies as well as best practices regarding brand protection and enforcement in both the actual and virtual worlds, focusing on “real life” practical examples.Continue Reading Digital Media Law Forum – Fall 2010

ABA Section of Litigation – Intellectual Property Roundtable Discussion
Tuesday, May 18, 2010 – Sheppard Mullin Richter & Hampton New York

The Co-Chairs of the Intellectual Property Litigation Committee of the American Bar Association Section of Litigation invite you to participate in one of the Committee’s most popular programs—the Roundtables. These gatherings are informal opportunities for participants to meet in small groups at convenient locations to discuss current issues in intellectual property litigation.
Continue Reading Beware The New Patent Trolls – Strategies For Handling and Avoiding False Patent Marking Claims After Forest Group v. Bon Tool

On June 29, 2009, Governor Schwarzenegger signed into law California’s Electronic Discovery Act, which is effective immediately. All discovery propounded or responded to must now comply with the new law. These rules are very similar to the recent revisions to the Federal Rules of Civil Procedure, and bring California in line with the federal e-discovery standards.Continue Reading California Passes New Electronic Discovery Act Effective Immediately