The Eastern District of California recently issued a preliminary injunction precluding an American defendant from attempting to sell alfalfa seeds under an Australian trademark in Saudi Arabia. Seed Servs., Inc. v. Winsor Grain, Inc., No. 1:10-CV-2185 AWI GSA, 2012 WL 1232320 (E.D. Cal. Apr. 12, 2012).

Joining what may be becoming a trend, the Ninth Circuit rejected an attempt to assert criminal charges against a defendant in a situation that could be addressed by making a civil claim under trade secrets law. United States v. Nosal, __ F.3d. __, No. 10-10038, 2012 WL 1176119 (9th Cir. Apr. 10, 2012) (en banc).

In an important decision construing the ISP safe harbors of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 512, the Second Circuit reversed the lower court’s entry of summary judgment in favor of defendants YouTube and Google (collectively YouTube). Viacom Int’l, Inc. v. YouTube, Inc., ___ F.3d ___, Nos. 10-3270-cv & 10-3342-cv, 2012 WL 1130851 (2d Cir Apr. 5, 2012).

The Second Circuit reversed a conviction for stealing proprietary source code under two federal statutes because software code is not a “good” under the National Stolen Property Act and it was not “related to or included in a product” sufficiently connected to interstate commerce. United States v. Aleynikov, _F.3d._, No. 11-1126, 2012 WL 1193611 (2d Cir. Apr. 11, 2012).

The Fifth Circuit held that a trademark owner who makes material misrepresentations in a Uniform Domain Name Dispute Resolution Policy (“UDRP”) arbitration submission can be liable for damages under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d)(1). ISystems v. Spark Networks Ltd., 102 U.S.P.Q.2d 1055, No. 10-10905, 2012 WL 1057515 (5th Cir. Mar. 21, 2012).  

In a matter of first impression for the circuit, the Second Circuit held that a plaintiff in a trademark counterfeiting and infringement case may be awarded attorneys’ fees even if the plaintiff requested, and was awarded, statutory damages under the Lanham Act. Louis Vuitton Malletier S.A. v. LY USA Inc., _F.3d_, Nos. 08-4483-cv, 08-4525-cv, 08-4528-cv, 08-5108-cv, 08-5273-cv, 08-5290-cv, 2012 WL 1034900 (2d Cir. Mar. 29, 2012).

The First Circuit affirmed a lower court decision that has interesting implications for intellectual property litigants on both sides of an infringement case. ­Applying an “extremely deferential” standard of review, the First Circuit held that an award of $35,000 in attorneys’ fees to the prevailing defendant in a copyright infringement case was not an abuse of discretion. The lower court’s award was based in part on the ability of such an award to deter excessive litigation tactics. T-Peg, Inc. v. Vt. Timber Works, Inc., 669 F.3d 59, 61 (1st Cir. 2012).

In a 6-2 ruling, the U.S. Supreme Court upheld Congress’ authority to give copyright protection to works previously in the public domain. The Court held that a statute granting copyright protection to previously unprotected foreign works did not exceed Congress’ authority under the U.S. Constitution’s Copyright and Patent Clause, art. I, § 8, cl.8, and that it did not run afoul of the First Amendment’s guarantee of free speech. Golan v. Holder, 132 S. Ct. 873 (2012).

The Ninth Circuit held that a traction hoist’s manufacturer had not carried its burden of establishing the nonfunctionality of the hoist’s design and the product did not qualify for trade dress protection. The court also found the case exceptional for purposes of awarding attorneys’ fees to the defendant. Secalt S.A. v. Wuxi Shenxi Constr. Mach. Co., 668 F.3d 677 (9th Cir. 2012).

Former Motorola employee Hanjuan Jin was found guilty of criminal “theft of trade secrets” in violation of Section 1832(a)(3) of the Economic Espionage Act, 18 U.S.C. § 1831 et seq., after a bench trial. But the court found Jin not guilty of “economic espionage” under Section 1831(a)(3) of the act. United States v. Jin, __ F. Supp. 2d __, No. 08 CR 192, 2012 WL 400681 (N.D. Ill. Feb. 8, 2012).

In a copyright dispute between a recording company and a video website operator, the Ninth Circuit affirmed and clarified the scope of “safe harbor” provisions of the Digital Millennium Copyright Act. UMG Recordings, Inc. v. Veoh Networks, Inc., 667 F.3d 1022 (9th Cir. 2011).

The Central District of California rejected a motion to dismiss, finding that plaintiff DC Comics properly stated a claim for copyright infringement when it brought that claim against an automobile producer that specializes in building replica Batmobiles. DC Comics v. Towle, No. 2:11-cv-03934-RSWL, Order Denying Motion to Dismiss (C.D. Cal. Jan. 26, 2012).

The Northern District of California held that title to original equipment manufacturer (OEM) software installed on a computer before its purchase may not transfer to the computer’s buyer. Relying on the Ninth Circuit’s decisions in Vernor v. Autodesk, Inc., 621 F.3d 1102 (9th Cir. 2010), cert. denied, 132 S. Ct. 105 (2011), and Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir. 2008), cert. granted, 130 S. Ct. 2089, aff’d, 131 S. Ct. 565 (2010), the court found that the terms entered into between a software provider and an upstream computer manufacturer will determine the extent of the rights that pass to the downstream purchaser. Adobe Sys. Inc. v. Hoops Enter. LLC, No.C:102769- CW, 2012 WL 298732 (N.D. Cal. Feb. 1, 2012) (also available on Google Scholar).