Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. Recently, a jury in the Western District of Texas found that Intel infringed two of plaintiff VLSI’s patents, and tagged Intel with damages in excess of $2 billion (yes, with a “b”). The Verdict Form (thanks to IP Watchdog) is here. This is a staggering damages award, and there is little doubt that Intel will file post-trial motions and appeal. The takeaway here is that this verdict is only going to strengthen the attractiveness of the Western District of Texas, Waco Division, as a preferred venue for patent-plaintiffs.

2. In another photo embedding case involving re-use of a photo that had been posted this time on Twitter, a judge in the Northern District of Indiana denied a motion to dismiss a copyright infringement claim holding that there were unresolved facts that precluded dismissal, and also a lack of certainty, at the motion to dismiss stage, as to whether Twitter’s Terms of Service provided for any sublicensing once a user posted content such as a photograph on Twitter. We have previously discussed similar issues arising in connection with Instagram and cases pending in New York, both here (Takeaway No. 1) and here (Takeaway No. 2). With copyrights of photographs, in particular, making sure one has the right to use a photograph before using it is important.

3. In an interesting recent decision from a state appeals court in Georgia, the Court affirmed a trial court decision in favor of Google and against Edible (as in Edible Arrangements). Edible sued Google in state court in Georgia asserting claims for theft of personal property, conversion, money had and received, and civil RICO violations under Georgia law in connection with Google’s auctioning Edible’s trade name as a keyword for use in Google advertising by others. The appeals court affirmed the trial court’s dismissal of the complaint for failure to state any claims upon which relief could be granted, and sent the matter to arbitration pursuant to the terms of one of Edible’s affiliate’s agreements with Google. In essence, the Court said that Google was not taking or appropriating Edible’s trade name, but rather, monetizing the opportunity to advertise using the keyword(s) on Google. The monetization of others’ trademarks and trade names by Google is a touchy subject and one that many have attempted, unsuccessfully, to stop.