Capitol Records v. Vimeo

Court: U.S. Court of Appeals for the Second Circuit

Docket: 21-2949

Opinion Date: January 13, 2025

Judge: Pierre Leval

Areas of Law: Copyright, Intellectual Property

Plaintiffs, rightsholders of musical recordings affiliated with EMI, sued Vimeo, Inc. and Connected Ventures, LLC for copyright infringement, alleging that Vimeo users uploaded videos containing their copyrighted music without authorization. Vimeo claimed protection under the safe harbor provision of Section 512(c) of the Digital Millennium Copyright Act (DMCA), which shields service providers from liability for user-uploaded infringing content under certain conditions.

The United States District Court for the Southern District of New York granted summary judgment in favor of Vimeo, finding that Vimeo was entitled to the DMCA safe harbor. The court concluded that Vimeo did not have actual or red flag knowledge of the infringing content and did not have the right and ability to control the infringing activity in a manner that would disqualify it from the safe harbor.

The United States Court of Appeals for the Second Circuit reviewed the case. The court held that Vimeo employees did not have red flag knowledge of the infringing content because it was not obvious to an ordinary person without specialized knowledge of music or copyright law that the videos were infringing. The court also found that Vimeo did not exercise substantial influence over user activities to the extent required to lose the safe harbor protection. The court noted that Vimeo's actions, such as promoting certain videos and banning specific types of content, did not amount to the level of control that would disqualify it from the safe harbor.

The Second Circuit affirmed the district court's judgment, holding that Vimeo was entitled to the DMCA safe harbor and dismissing Plaintiffs' claims of copyright infringement.

Moke America LLC v. Moke International Limited

Court: U.S. Court of Appeals for the Fourth Circuit

Docket: 23-1634

Opinion Date: January 15, 2025

Judge: Robert King

Areas of Law: Intellectual Property, Trademark

Moke America LLC and Moke International Limited, along with Moke USA, LLC, are competing for the U.S. trademark rights to the "MOKE" mark, used for their low-speed, open-air vehicles. The U.S. District Court for the Eastern District of Virginia found that "MOKE" is a generic term for these vehicles, meaning it cannot be a trademark owned by either party. This finding was based on the history of the Moke vehicles, which were originally produced by the British Motor Corporation (BMC) and later by other manufacturers, and the term "Moke" becoming synonymous with a style of vehicle.

The district court's decision followed a bench trial where Moke America failed to prove its priority of use. The court then considered whether the MOKE mark was distinctive or generic. Both parties argued that the mark was inherently distinctive, but the court found it to be generic based on the evidence presented, including the parties' marketing efforts and the testimony of a Moke America witness.

The United States Court of Appeals for the Fourth Circuit reviewed the case and concluded that the district court correctly placed the burden on the parties to prove that "MOKE" is not a generic term. However, the Fourth Circuit found that the evidence was insufficient to either affirm or outright reverse the district court's finding of genericness. The court noted that more evidence is needed to determine whether "MOKE" is a generic term or an inherently distinctive mark that was abandoned by its original owner, BMC.

The Fourth Circuit vacated the district court's judgment and remanded the case for further proceedings to gather additional evidence on the distinctiveness or genericness of the "MOKE" mark. The parties will continue to bear the burden of proving that the mark is not generic. The court suggested that appointing a disinterested expert witness might be helpful in resolving the issue.

Designworks Homes, Inc. v. Columbia House of Brokers Realty, Inc.

Court: U.S. Court of Appeals for the Eighth Circuit

Docket: 23-3402

Opinion Date: January 14, 2025

Judge: Morris Arnold

Areas of Law: Civil Procedure, Copyright, Intellectual Property

Charles James, a home designer, claimed that real estate agents infringed his copyrights by including floorplans of his homes in resale listings. James designed a home with a triangular atrium and stairs, built six homes using the design, and registered copyrights for the designs. In 2010, agent Susan Horak listed one of these homes for resale, creating a floorplan by hand for the listing. In 2017, agent Jackie Bulgin listed another of James's homes, using a similar floorplan. James discovered these listings in 2017 and alleged that the floorplans could be used to build homes, potentially infringing his copyrights.

The United States District Court for the Western District of Missouri granted summary judgment to the real estate agents, concluding that their use of the floorplans was fair use. The court also initially ruled in favor of the agents under § 120(a) of the Copyright Act, but this decision was reversed by the United States Court of Appeals for the Eighth Circuit, which remanded the case for further consideration of the fair use defense.

The United States Court of Appeals for the Eighth Circuit reviewed the case and affirmed the district court's summary judgment in favor of the agents. The court held that the agents' use of the floorplans was fair use, considering the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and the effect on the market for the original work. The court found that the agents' use was transformative, had an informational purpose, and did not harm the market for James's designs. The court also rejected Designworks's request for further discovery on the fair use issue, concluding that the district court did not abuse its discretion in denying the motion. The court affirmed the district court's judgments.

TANGLE, INC. V. ARITZIA, INC.

Court: U.S. Court of Appeals for the Ninth Circuit

Docket: 23-3707

Opinion Date: January 14, 2025

Judge: Michael Simon

Areas of Law: Copyright, Intellectual Property, Trademark

Tangle, Inc. holds copyright registrations for seven kinetic and manipulable sculptures made from 17 or 18 identical, connected, 90-degree curved tubular segments that can be twisted or turned 360 degrees. Aritzia, Inc. owns and operates retail stores and used similar sculptures in their store windows. Tangle alleged that Aritzia's sculptures infringed on their copyrighted works and also claimed trade dress infringement under the Lanham Act.

The United States District Court for the Northern District of California dismissed Tangle's initial copyright infringement claim for failure to state a claim but allowed Tangle to amend its complaint. Tangle filed an amended complaint, which was again dismissed. Tangle then filed a Second Amended Complaint, adding a trade dress infringement claim. The district court dismissed both claims, giving Tangle leave to amend. Tangle chose not to amend further and instead appealed the dismissal.

The United States Court of Appeals for the Ninth Circuit reviewed the case. The court reversed the district court’s dismissal of Tangle’s copyright claim, holding that Tangle adequately alleged valid copyrights in its kinetic and manipulable sculptures. The court found that the sculptures were sufficiently "fixed" in a tangible medium for copyright purposes, despite their ability to move into various poses. The court also held that Tangle plausibly alleged that Aritzia's sculptures were substantially similar to Tangle's protected works under the "extrinsic test."

However, the Ninth Circuit affirmed the district court’s dismissal of Tangle’s trade dress infringement claim. The court agreed that Tangle failed to provide a complete recitation of the concrete elements of its alleged trade dress, which is necessary to give adequate notice of the asserted trade dress.

The case was remanded for further proceedings consistent with the Ninth Circuit's opinion.

BEARBOX LLC v. LANCIUM LLC

Court: U.S. Court of Appeals for the Federal Circuit

Docket: 23-1922

Opinion Date: January 13, 2025

Judge: Kara Farnandez Stoll

Areas of Law: Intellectual Property, Patents

BearBox LLC and Austin Storms alleged that Lancium LLC and its co-founders, Michael T. McNamara and Dr. Raymond E. Cline, Jr., improperly used Storms' ideas and patented them. The dispute arose from a conversation at a Bitcoin mining conference and a follow-up email from Storms to McNamara containing BearBox's system details. BearBox claimed that Storms should be named as an inventor on Lancium's U.S. Patent No. 10,608,433.

The United States District Court for the District of Delaware granted summary judgment to Lancium, dismissing BearBox's Louisiana state law conversion claim as preempted by federal patent law. The court also excluded BearBox's expert's supplemental report and denied BearBox's claim that Storms was either a sole or joint inventor of the '433 patent.

The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the district court's judgment on all issues. It held that BearBox's conversion claim was preempted by federal patent law because it sought patent-like protection for unpatented technology. The court also upheld the exclusion of the expert's supplemental report, finding no abuse of discretion in the district court's decision. Finally, the court agreed with the district court's conclusion that BearBox failed to prove by clear and convincing evidence that Storms was a sole or joint inventor of the '433 patent. The court found that the information Storms shared with Lancium did not establish his contribution to the claimed invention and that Lancium had independently conceived the subject matter of the patent before Storms' communication.

LYNK LABS, INC. v. SAMSUNG ELECTRONICS CO., LTD.

Court: U.S. Court of Appeals for the Federal Circuit

Docket: 23-2346

Opinion Date: January 14, 2025

Judge: Sharon Prost

Areas of Law: Intellectual Property, Patents

Lynk Labs, Inc. owns U.S. Patent No. 10,687,400, which relates to light-emitting diodes (LEDs) and LED drivers, specifically alternating current (AC) driven LEDs and LED circuits. Samsung Electronics Co., Ltd. filed a petition for inter partes review (IPR) challenging claims 7-20 of the '400 patent for obviousness. Lynk Labs disclaimed claims 14 and 18-20, leaving claims 7-13 and 15-17 in dispute. The Patent Trial and Appeal Board (Board) determined that claims 7-13 and 17 were unpatentable for obviousness based on prior art, including U.S. Patent Application Publication No. 2004/0206970 (Martin), which was filed before the '400 patent's priority date but published after.

The Board found that Martin could serve as prior art under 35 U.S.C. § 102(e)(1), which allows a published patent application to be deemed prior art as of its filing date. The Board also determined that claims 15 and 16 were unpatentable based on other grounds not involving Martin. Lynk Labs appealed, arguing that Martin could not be prior art because it was published after the '400 patent's priority date and that the Board erred in its claim constructions.

The United States Court of Appeals for the Federal Circuit affirmed the Board's decision. The court held that under § 102(e)(1), a published patent application can be deemed prior art as of its filing date, thus Martin was properly considered prior art. The court also upheld the Board's claim constructions, concluding that the term "a plurality of LEDs connected in series" includes both individual LEDs and groups of LEDs connected in series, and that "matches" in the context of the forward voltage limitation includes both equivalence and a rectified input AC voltage output that is less than the forward voltage of the LEDs. The court found substantial evidence supporting the Board's findings and affirmed the unpatentability of claims 7-13 and 17.

Novartis Pharmaceuticals Corporation v. Torrent Pharma Inc.

Court: U.S. Court of Appeals for the Federal Circuit

Docket: 23-2218

Opinion Date: January 10, 2025

Judge: Alan Lourie

Areas of Law: Intellectual Property, Patents

Novartis Pharmaceuticals Corporation developed a combination therapy of valsartan and sacubitril, marketed as Entresto®, for treating heart failure. The U.S. Patent 8,101,659 (the ’659 patent) protects this combination. In 2019, several generic manufacturers, including MSN Pharmaceuticals, filed Abbreviated New Drug Applications (ANDAs) to market generic versions of Entresto, prompting Novartis to sue for patent infringement.

The United States District Court for the District of Delaware held a three-day bench trial. The court found that the claims of the ’659 patent were not invalid for obviousness, lack of enablement, or indefiniteness but were invalid for lack of written description. Specifically, the court determined that the patent did not adequately describe the combination of valsartan and sacubitril in a complex form, which was a later-discovered form of the combination.

The United States Court of Appeals for the Federal Circuit reviewed the case. The court reversed the district court’s determination that the claims lacked an adequate written description, holding that the ’659 patent adequately described the claimed combination of valsartan and sacubitril administered "in combination." The court affirmed the district court’s findings that the claims were not invalid for lack of enablement or obviousness. The court concluded that the patent did not need to enable or describe the later-discovered complex form of the combination, as it was not claimed in the patent. The court also found no clear error in the district court’s determination that the prior art did not provide a motivation to combine valsartan and sacubitril with a reasonable expectation of success.

Thus, the Federal Circuit affirmed in part and reversed in part, upholding the validity of the ’659 patent except for the written description finding, which it reversed.