IP UPDATE
Exploring the Latest in Intellectual Property Law
IP UPDATE
Exploring the Latest in Intellectual Property Law
infringement
Subscribe to infringement's Posts

Third Circuit Orders Second Look at Delays and Disgorgement of Profits

by | Aug 26, 2021 |

In a long-running trademark dispute between two charitable organizations, the US Court of Appeals for the Third Circuit found that the appellee did not preserve its challenge to the district court’s denial of summary judgment on its trademark cancelation claims, the appellant waived any challenge to the validity of the defendant’s mark and the district court did not abuse its discretion by declining to award enhanced monetary relief or prejudgment interest. Kars 4 Kids Inc. v America Can!, Case Nos. 20-2813; -2900 (3rd Cir., August 10, 2021) (Shwartz, J.) The Court also vacated-in-part and remanded for the district court to reexamine its laches and disgorgement conclusions under applicable law.

As charitable organizations that sell donated vehicles to fund children’s programs, both America Can (as CARS FOR KIDS) and Kars 4 Kids have used similar trademarks since their respective starts in the early- to mid-1990s. In 2003 and 2013, America Can sent cease and desist letters to Kars 4 Kids after seeing its advertisements in the state of Texas. In 2014, Kars 4 Kids sued America Can for federal and state trademark infringement, unfair competition and trademark dilution claims. Less than one year later, America Can filed its own suit—alleging the same claims—plus a petition to cancel a Kars 4 Kids trademark registration and seeking a nationwide injunction and financial compensation.

Both parties appeal from a denial of their respective summary judgment motions as well as (1) the jury finding that Kars 4 Kids willfully infringed America Can’s trademark rights in Texas, (2) the rejection of America Can’s petition for cancellation of a KARS FOR KIDS trademark registration finding that the registration was not knowingly procured by fraudulent means, (3) the conclusion that laches did not apply against America Can’s claims, (4) disgorgement of Kars 4 Kids profits in Texas totaling about $10.6 million, (5) rejection of enhanced monetary relief and (6) an injunction against Kars 4 Kids with respect to use of its trademark in Texas and from using the carsforkids.com domain name. On appeal, Kars 4 Kids also renewed its motion for judgment as a matter of law, including an argument that America Can’s trademark is invalid.

The Third Circuit rejected Kars 4 Kids’ effort to overturn the jury’s liability verdict, concluding that Kars 4 Kids failed to preserve its challenge to the validity of the CARS FOR KIDS trademark when it left that issue out of its Rule 50(a) motion. Instead, evidence of America Can’s continuous use of the CARS FOR KIDS mark well prior to 2003 predated Kars 4 Kids’ first use of its trademark in Texas in 2003 and established America Can’s ownership of the CARS FOR KIDS trademark in Texas.

However, after examining the laches claim, the Third Circuit explained that it considered (1) the plaintiff’s inexcusable delay in bringing suit and (2) prejudice to the defendant as a result of the delay. With no statute of limitations under the Lanham Act, the parties agreed that their claims are properly analogized to New Jersey’s six-year [...]

Continue Reading



read more

Injunctive Relief Available Even Where Laches Bars Trademark Infringement, Unfair Competition Damage Claims

by | Aug 12, 2021 |

The US Court of Appeals for the 11th Circuit affirmed a district court’s conclusion that laches barred an advertising and marketing company’s claims for monetary damages for trademark infringement and unfair competition, but remanded the case for assessment of injunctive relief to protect the public’s interest in avoiding confusion between two similarly named companies operating in the advertising sector. Pinnacle Advertising and Marketing Group, Inc. v. Pinnacle Advertising and Marketing Group, LLC, Case No. 19-15167 (11th Cir. Aug. 2, 2021) (Branch, J.)

Pinnacle Advertising and Marketing Group (Pinnacle Illinois) is an Illinois-based company and owner of two registered trademarks including the name “Pinnacle.” Pinnacle Illinois learned of a Florida-based company operating under almost the same name that was also in the advertising and marketing space—Pinnacle Advertising and Marketing Group (Pinnacle Florida) —through potential clients and a magazine’s accidental conflation of the two unrelated companies. Several years later, Pinnacle Illinois sued Pinnacle Florida for trademark infringement, unfair competition and cybersquatting. Pinnacle Florida filed a counterclaim seeking to cancel Pinnacle Illinois’s trademark registrations and also alleged that Pinnacle Illinois’s claims were barred by the doctrine of laches.

Following a jury trial, the district court granted Pinnacle Florida’s motion for judgment as a matter of law on Pinnacle Illinois’s cybersquatting claim. The jury returned a verdict in favor of Pinnacle Illinois on its claims for trademark infringement and unfair competition, awarding Pinnacle Illinois $550,000 in damages. The district court then granted Pinnacle Florida’s motion for judgment as a matter of law on its laches defense, concluding that Pinnacle Illinois’s trademark infringement and unfair competition claims were barred by laches because it waited more than four years to bring suit after it should have known that it had a potential infringement claim against Pinnacle Florida. The district court also cancelled Pinnacle Illinois’s registrations because it concluded that Pinnacle Illinois’s marks were merely descriptive and lacked secondary meaning. Pinnacle Illinois appealed.

Pinnacle Illinois argued that the district court abused its discretion in finding that Pinnacle Illinois’s claims were barred by laches, and that even if laches did bar Pinnacle Illinois’s claims for money damages, the district court should have considered whether injunctive relief was proper to protect the public’s interest in avoiding confusion between the two companies. Pinnacle Illinois also argued that the district court erred when it cancelled its registrations without regard to the jury’s findings of distinctiveness and protectability or the presumption of distinctiveness afforded to its registered marks.

The 11th Circuit found that the district court did not abuse its discretion in determining that laches barred Pinnacle Illinois from bringing its trademark infringement and unfair competition claims for monetary damages. Pinnacle Illinois sued after the Florida four-year statute of limitations had passed, and the Court found that the company was not excused for its delay because it did not communicate with Pinnacle Florida about the infringement until it filed suit. Pinnacle Florida also suffered economic prejudice because it invested significant time and money, including around $2 million, in developing its business under [...]

Continue Reading



read more

A Goldilocks Dilemma: What is the “Right Amount” When Pleading Patent Infringement Cases?

by | Jul 22, 2021 |

Addressing the issue of pleading requirements for patent infringement cases, the US Court of Appeals for the Federal Circuit clarified that patentees need not prove their case at the pleading stage on an element-by-element basis but can plead themselves out of court by presenting facts that are inconsistent with their infringement claims. Bot M8 LLC v. Sony Corp. of Am., Case No. 20-2218 (Fed. Cir. July 13, 2021) (O’Malley, J.)

Bot M8 filed suit against Sony and alleged that Sony’s PlayStation 4 and PlayStation network infringed Bot M8’s asserted patents, which are all generally directed to casino, arcade and video games. The asserted patents describe an “authentication mechanism to verify that a game program has not been manipulated,” a “gaming machine [that stores] gaming information and a mutual authentication program on the same medium,” a “gaming device with a fault inspection system,” and a “gaming machine that changes future game conditions based on players’ prior game results.”

The district court sua sponte instructed Bot M8 to file an amended complaint, “specifying ‘every element of every claim that [Bot M8] say[s] is infringed’” and to reverse engineer Sony’s products to prove its case. Bot M8 did not challenge the district court’s order and agreed to file claim charts. Following Bot M8’s service of the first amended complaint, Sony filed a motion to dismiss, which the district court granted. On an unrelated patent, both parties filed summary judgment motions. The district court entered final judgment in favor of Sony, and Bot M8 subsequently appealed both the dismissals and the grant of summary judgment.

On appeal, the Federal Circuit emphasized that “patentees need not prove their case at the pleading stage” and thus found that the district court had erred by misapplying Iqbal and Twombly. Apparently exasperated by the need to reiterate the proper pleading standard, the Court emphasized that “[a] plaintiff is not required to plead infringement on an element-by-element basis.”

While reaffirming a standard favorable to patentees, the Federal Circuit explained that for a complaint to pass muster under Iqbal and Twombly, it still must provide sufficient factual allegations to “articulate why it is plausible that the accused product infringes the patent claim.” Thus, “a patentee may subject its claims to early dismissal by pleading facts that are inconsistent with the requirements of its claims.” The Court explained that Bot M8’s allegations conflicted with claim 1 of Bot M8’s patent. Whereas that claim required a motherboard separate from the authentication and game programs, Bot M8’s claim charts expressly alleged that “[t]he authentication program for the PlayStation 4 hard drive, operating system, and games is stored on PlayStation 4 . . . Serial Flash Memory” and that “[t]he PlayStation 4 motherboard contains flash memory.” According to the Court, it was “not even possible, much less plausible” for Bot M8 to prevail because of this inconsistency between Bot M8’s allegations and its patent with respect to the location of the authentication and game programs relative to the motherboard. By pleading “too much rather [...]

Continue Reading



read more

Not With a Bang but a Whimper

by | May 27, 2021 |

In a non-precedential Order issued by the US Court of Appeals for the Federal Circuit—on remand from the US Supreme Court’s April 2021 decision upholding Google’s fair use defense to Oracle’s copyright infringement claim—the Court recalled its mandate in the case “solely with respect to fair use,” leaving intact the Federal Circuit’s May 2014 judgment favoring Oracle on the question of copyrightability. Oracle America Inc. v. Google LLC, Case Nos. 17-1118; 1202 (Fed. Cir. May 14, 2021)(PER CURIAM). After recalling its mandate, the Federal Circuit issued its order without further briefing by the parties.



read more

Confused? How Do You Factor That?

by | May 27, 2021 |

Considering the eight-factor likelihood of confusion test, the US Court of Appeals for the Sixth Circuit affirmed the district court’s finding on all factors, concluding that two competing marks in the transportation logistics industry are overlapping to the extent that consumers would likely be confused. AWGI, LLC v. Atlas Trucking Co., LLC, Case No. 20-1726 (6th Cir. May 18, 2021) (Cook, J.)

Atlas Movers owns the “Atlas” mark and a federal registration for the mark for “freight forwarding services and transportation of household goods of others.” It first used the mark “Atlas Van Lines” in 1948 for transportation and logistics services. In 2007, it revised its name to Atlas Relocation Services and marketed its services under “Atlas Logistics.”

Atlas Trucking, a part of Eaton Steel, manufactured and distributed steel under its Atlas Trucking mark starting in 1999. Later, in 2003, Eaton expanded its services to ship other goods under the mark Atlas Logistics. Eaton admitted it knew of Atlas Van Lines for logistics before it began using the mark.

Atlas Movers sued Eaton for infringement of its “Atlas” mark and Eaton counterclaimed that it owned the Atlas Logistics mark.

The district court found that Eaton’s use of “Atlas” creates a likelihood of confusion with Atlas Movers. The court went through the eight-factor likelihood of confusion test, considering: (1) strength of the plaintiff’s mark; (2) relatedness of the goods or services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant’s intent in selecting the mark and (8) likelihood of expansion of the product lines or services “Atlas” marks. The court ultimately found for Atlas Movers on its trademark infringement claim. Eaton appealed.

The Sixth Circuit agreed with the district court’s analysis. First, on commercial strength, the district court found Atlas Movers’ mark to be commercially strong because of its significant advertising expenditures, exposing consumers to its trademark with public recognition. Eaton tried to demonstrate weakness of the mark by presenting evidence of third parties’ use of similar marks, but the lower court rejected the argument, noting the other marks did not use “Atlas” for transportation and logistics. The court found this factor favored Atlas Movers.

The Sixth Circuit also agreed with the district court on the second factor, relatedness of goods and services, concluding buyers would be likely to believe the parties’ respective goods and services, which relate to the same industry and are directed to common consumers, come from the same source or are connected with a common company. The court found this factor also favored Atlas Movers.

Third, as to similarity of the marks, the lower court gave weight to pronunciation, appearance and verbal translation of the marks in their entirety, finding the dominant potion of the mark (“Atlas”) was identical. Again, this factor favored Atlas Movers.

Fourth, on the issue of actual confusion, the lower court considered evidence of five people experiencing actual confusion from Eaton’s use of its “Atlas” mark. There were also consumer [...]

Continue Reading



read more

Initial Confusion? Relax, Eighth Circuit Has Your Number

by | May 20, 2021 |

Addressing a novel issue regarding when confusion must occur for it to be actionable, the US Court of Appeals for the Eighth Circuit concluded that initial-interest confusion was a viable infringement theory. Select Comfort Corp. v. Baxter, Case No. 19-1113 (8th Cir. May 11, 2021) (Melloy, J.)

Select Comfort owns registered trademarks, including “SELECT COMFORT,” “SLEEP NUMBER” and “WHAT’S YOUR SLEEP NUMBER,” for adjustable air mattresses, which it sells online and in stores across the United States. Baxter sells competing air mattresses online and through a call center. Select Comfort brought a suit asserting trademark infringement, trademark dilution and false advertising theories against Baxter. Select Comfort alleged that Baxter used Select Comfort’s registered trademarks in an identical or confusingly similar manner to advertise Baxter’s mattresses and divert consumers to its website and phone lines instead of Select Comfort’s. Select Comfort also alleged that Baxter made false representations about its products and failed to dispel consumer confusion about the products. At trial, Select Comfort pointed to similar terms in Baxter’s online advertising text, graphics and domain addresses, in addition to examples of actual confusion about the products in Baxter’s call-center transcripts.

Earlier in the case, in connection with summary judgment, the district court found that the relevant consumers were sophisticated as a matter of law, and, citing Eight Circuit precedent, rejected application of a theory of initial-interest confusion. The district court instead instructed the jury that in order to prevail on its trademark infringement claim, Select Comfort had to prove likelihood of confusion at the time of purchase. Based on this limiting instruction, the jury rejected Select Comfort’s trademark infringement claims. Select Comfort appealed.

The Eighth Circuit reversed. The Court explained that the district court erred on the availability of an initial-interest confusion as an infringement theory. For trademark infringement claims, the likelihood of confusion test is a fact-intensive inquiry with many factors. However, circuit courts have not definitively agreed on when confusion must exist. Must confusion occur only at the time of ultimate purchase, or can it also exist during pre-sale? The theory of initial-interest confusion involves the latter scenario, namely, when confusion about a product’s ownership causes a customer to have initial interest in the product, even if there is no actual sale at the time of the confusion. Actionable initial infringement protects competitors from getting a free ride on the goodwill of an established mark if a consumer falsely infers an affiliation between the companies.

In the precedential 2010 Eighth Circuit case Sensient Techs. v. Sensory Effects Flavor, the Court neither rejected nor adopted the initial-interest/pre-sale confusion theory. Instead, it merely found that the theory did not apply where consumers were sophisticated (i.e., where they exercise a high degree of care in purchasing products, a factor weighing against likelihood of confusion). Here, influenced by Lanham Act amendments and other circuit courts, the Court addressed the issue previously left open: whether the initial-interest confusion may be actionable in the Eighth Circuit in cases where the jury is left to [...]

Continue Reading



read more

Targeted Advertising Still Patent Ineligible Subject Matter

by | May 20, 2021 |

The US Court of Appeals for the Federal Circuit found that targeted advertising is still an abstract idea and that a system providing targeted advertising must utilize something more than generic features and routine functions to be eligible for patent protection. Free Stream Media Corp. v. Alphonso Inc., Case No. 19-1506 (Fed. Cir. May 11, 2021) (Reyna, J.)

Free Stream Media, d.b.a. Samba, owns a patent directed to “a system providing a mobile phone user with targeted information (i.e., advertisements) that is deemed relevant to the user based on data gathered from the user’s television.” The system has three main components: (1) a networked device (e.g., a smart TV) that collects primary data, including program information, location, weather information or identification information; (2) a client device (e.g., a mobile device) on which applications run and advertisements may be shown; and (3) a relevancy-matching server that uses the primary data to select advertisement or other targeted data based on a relevancy factor associated with the user. Specifically, the relevancy-matching server “may also be configured to render the targeted data to the user through the networked device and/or the sandboxed application of the client device.”

Samba asserted infringement of the patent against Alphonso. In response, Alphonso filed a motion to dismiss on grounds that the asserted claims of the patent were directed to patent ineligible subject matter under 35 USC § 101. Alphonso subsequently filed a motion for summary judgment of non-infringement. The district court denied the § 101 motion but granted the summary judgment motion. Samba appealed the non-infringement finding, and Alphonso cross-appealed the § 101 finding.

The Federal Circuit started with the § 101 finding by first addressing Alice step 1 (abstract idea). The Court rejected the district court’s finding that the asserted claims were directed to “systems and methods for addressing barriers to certain types of information exchange between various technological devices . . . being used in the same place at the same time,” i.e., to bypass the security sandbox, and not an abstract idea of tailored advertising. To the contrary, the Court found that the asserted claims were directed precisely to the abstract idea of tailored advertising—specifically, gathering information about television users’ viewing habits, matching the information with other content and sending that content to a second device. Reiterating its prior holdings with respect to Alice step 1, the Court explained that the asserted claims only provided for the result of overcoming a security sandbox, and did not at all describe how that result is achieved. The Court also explained that even if the claims did recite a method for bypassing a security sandbox, Samba failed to demonstrate that this was anything more than a mere use of a computer as a tool, or that it somehow “improves the operability of these devices beyond providing a user with targeted content using generic processes and machinery.”

Turning to Alice step 2 (inventive concept), the Federal Circuit explained that the claimed abstract idea of providing targeted advertisements was not [...]

Continue Reading



read more

Tax Court Allows Partial Deduction, Requires Partial Capitalization of Generic Drug Approval Legal Expenses

by | May 13, 2021 |

The US Tax Court determined that a pharmaceutical manufacturer’s legal expenses incurred to defend against a patent infringement suit were eligible for an immediate deduction as ordinary and necessary business expenses, while legal expenses incurred as part of an abbreviated new drug application (ANDA) were not eligible for an immediate deduction and thus had to be capitalized and then amortized over 15 years. Mylan, Inc. & Subsidiaries v. Commissioner, 156 T.C. No. 10 (Apr. 27, 2021) (Urda, J.)

The ANDA process allows for faster approval of a generic drug if the manufacturer can show that the generic drug is sufficiently similar to an approved brand name drug. As part of the ANDA process, the generic manufacturer must file statements certifying that the generic drug does not infringe any brand drug patents, or that such patents are invalid. The generic manufacturer also must send a notification to the holder of any patents covered by the certification statements.

Mylan filed several ANDAs for generic versions of brand name drugs, including Celebrex, Lunesta and Nexium, during the tax years at issue in the case. Considerable legal expenses were incurred as part of filing the ANDAs and making the required certifications and notifications. As a result of those certifications and notifications, patent holders brought approximately 120 patent infringement suits against Mylan. Mylan defended itself against the infringement suits, incurring litigation expenses.

In general, taxpayers may take an immediate deduction for ordinary and necessary business expenses. However, taxpayers must capitalize expenditures that create or enhance a distinct asset or otherwise generate benefits for taxpayers beyond a single tax year. Special rules apply to determine whether expenses related to an intangible asset should be capitalized. The income tax regulations provide that a “taxpayer must capitalize amounts paid to a governmental agency to obtain, renew, renegotiate, or upgrade its rights under a trademark, trade name, copyright, license, permit, franchise, or other similar right granted by that governmental agency.” Taxpayers must also capitalize an amount paid to facilitate an acquisition or creation of an intangible.

Litigation expenses for patent suits may be deducted or must be capitalized depending on the nature of the litigation. Defense of title claims are treated as the acquisition or disposition of a capital asset and must be capitalized. In contrast, patent infringement claims arise in tort and can be deducted in the year the expense is incurred.

Applying these rules to Mylan’s legal expenses, the Tax Court held that expenses related to the preparation of the ANDA, including the certifications and notices, were capital expenses to acquire or create an intangible asset and had to be recovered incrementally over 15 years. However, the Tax Court held that the costs of defending against patent infringement suits is an ordinary and necessary business expense for a generic drug manufacturer and permitted Mylan to deduct its litigation expenses in the year the expense was incurred.



read more

Federal Circuit Puts Patent Infringement Award/Injunction Back in the Box

by | May 13, 2021 |

The US Court of Appeals for the Federal Circuit, exploring the use of Federal Rule of Civil Procedure 60(b)(3) under Ninth Circuit law, affirmed a district court’s ruling setting aside a monetary damages judgment and an injunction for fraudulent misrepresentations by a corporate patent owner’s president concerning prior art. Cap Export, LLC, et al. v. Zinus, Inc., et al., Case No. 20-2087 (Fed. Cir. May 5, 2021) (Dyk, J.)

In 2016, Cap Export sued Zinus seeking a declaratory judgment that claims of a patent owned by Zinus were invalid and not infringed. Zinus countersued, alleging that Cap Export infringed its patent covering a bed frame that can be packed into the headboard for compact shipping (known as a “bed in a box”). Zinus filed a motion for partial summary judgment of no invalidity of certain claims, and the court allowed Cap Export to depose Zinus’s then-president and “testifying technical expert,” Colin Lawrie. During the deposition, Lawrie denied knowledge of the existence of prior art. The district court concluded that the claims were not invalid and entered a judgment and permanent injunction against Cap Export.

Shortly thereafter, Zinus sued another company for patent infringement, and Cap Export discovered an exhibit on the docket describing a sale to Zinus of a bed that had all of the components of the bed (except the headboard) packed inside a zippered compartment in the headboard. Cap Export contacted the third party that sold the prior art beds to Zinus and obtained an invoice bearing the signature of Lawrie, the same witness who denied knowledge of such beds during his deposition. Cap Export moved to vacate the judgment and injunction on the grounds of fraud and misrepresentation under Rule 60(b)(3). After the district court granted the motion, Zinus appealed.

The Federal Circuit analyzed the issue under Ninth Circuit law, which requires evidence that the verdict was obtained through fraud, misrepresentation or other misconduct, and that the conduct prevented the losing party from fully and fairly presenting its defense. Ninth Circuit law further requires that the fraud was not discoverable by due diligence before or during the proceedings. Zinus argued that Cap Export’s counsel should have discovered the emails if they had exercised due diligence and propounded standard document requests for a patent case. Cap Export did not dispute that its written discovery served on Zinus did not specifically seek prior art and that it did not depose the inventor of the patent. Cap Export also did not dispute that although Lawrie’s deposition was taken, it was not taken under Federal Rule of Civil Procedure 30(b)(6).

The Federal Circuit explained that the issue was not whether Cap Export’s conduct fell below the standard of care for attorneys practicing patent litigation, but rather whether a reasonable company in Cap Export’s position should have had reason to suspect the fraud—i.e., that Lawrie had testified falsely—and, if so, whether it took reasonable steps to investigate. The Court found no showing that there was reason to suspect that Lawrie’s statements were [...]

Continue Reading



read more

Blueprint Blooper: Floor Plan Copyright Infringement Requires Virtually Identical Copying

by | May 6, 2021 |

Addressing whether a home builder’s floor plans infringed the plaintiff’s architectural copyrights, the US Court of Appeals for the Seventh Circuit affirmed a lower court’s entry of summary judgment against the plaintiff, finding that only a virtually identical design would infringe the plaintiff’s “thin copyright” in its floor plans. Design Basics, LLC v. Signature Construction, Inc., Case No. 19-2716 (7th Cir. Apr. 23, 2021) (Sykes, J.)

Design Basics, described bluntly by the Seventh Circuit as a “copyright troll,” holds copyrights in thousands of floor plans for suburban single-family homes. Design Basics sued Signature Construction (Signature) for infringement of 10 of its designs. Discovery showed that Signature held copies of four of Design Basics’ designs, one of which had been marked up by a Signature employee. Signature moved for summary judgment, relying on a 2017 Seventh Circuit opinion in Basic Designs v. Lexington Homes in which the Court found that Design Basics’ copyright protection in its floor plans was “thin.” The district court granted summary judgment against Design Basics, and this appeal followed.

Relying heavily on Lexington Homes, the Seventh Circuit took the opportunity to clarify the elements of a prima facie case of copyright infringement for works with “thin” copyright protection. The Court explained that to establish infringement, the plaintiff must prove (1) ownership of a valid copyright and (2) copying of original elements of the work. Because ownership was not contested in this case, the Court focused on the copying element. The Court explained that “copying” constitutes two separate questions: Whether the defendant actually copied the plaintiff’s protected work (as opposed to creating it independently) and whether the copying constituted wrongful copying, also known as unlawful appropriation.

Because there is rarely direct evidence of copying, circumstantial evidence may be used to infer actual copying, the Seventh Circuit explained. Proving actual copying by circumstantial evidence requires evidence of access to the plaintiff’s work and evidence of substantial similarity between the two works. The analysis of substantial similarity is not limited to the protected elements of the plaintiff’s work; any similarities may be probative of actual copying. However, the unlawful appropriation prong requires substantial similarities to the protected elements of the copyrighted work. The Court noted that the use of the same term for two different tests has caused confusion, and therefore implemented the term “probative similarity” when referring to actual copying, and “substantial similarity” in the case of unlawful appropriation. The Court went on to explain that in the case of thin copyright protection such as this, proving unlawful appropriation requires more than a substantial similarity; only a “virtually identical” plan will infringe.

The Seventh Circuit then turned to the issues of scènes à faire and merger. Citing its detailed analysis in Lexington Homes, the Court noted that arrangements of rooms in Design Basics’ floor plans were largely scènes à faire, deserving no copyright protection. For example, placement of the dining room near the kitchen and a bathroom near the bedrooms is rudimentary, commonplace and standard, and [...]

Continue Reading



read more

BLOG EDITORS

Paul Devinsky

Amol Parikh

Jodi Benassi

STAY CONNECTED

Subscribe

TOPICS

ARCHIVES