Weekly IP Takeaways

In IP Blog

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

1. A recent opinion from the Ninth Circuit held that a trademark infringement plaintiff did not have a right to a jury trial when its only damages remedy was a disgorgement of the defendant’s profits. In the case, the plaintiff did not provide discovery on actual damages or a royalty-based damages theory, and through a motion to exclude the defendant successfully limited the plaintiff to a disgorgement of profits theory of damages. The defendant then moved to strike the plaintiff’s demand for a jury trial because disgorgement of profits is an equitable remedy to which no right to a jury trial is available. The district court agreed, and the Ninth Circuit affirmed. In an interesting concurring opinion, Judge Friedland noted that the Ninth Circuit’s current case law says that disgorgement of profits under the Copyright Act is a legal remedy to which there would be a jury trial, but that such law may need to be revisited.

2. In a recent decision on a petition for writ of mandamus filed by Apple, the Federal Circuit rejected Apple’s attempt to force the transfer of a case from the Western District of Texas (Austin) to the Northern District of California. In the district court, Apple was able to move the case from Waco, Texas in the Western District to Austin, also in the Western District. The district court, however, denied Apple’s request to move the case to the Northern District of California. The Federal Circuit denied the petition, finding that Apple has not met the very high standard for mandamus. The Federal Circuit, however, did note a few questionable points of law from the district court, including construing the facts and reasonable inferences in a light most favorable to the non-moving party (which is the rule on summary judgment, but not transfer motions), and also the limited effect the convenience of party witnesses was given by the district court. Thus, there may be some interesting points of clarification on the law for Section 1404 transfers provided by this ruling.

3. The Ninth Circuit recently affirmed a denial of advertising injury insurance coverage in a trademark infringement case where the twist was that the party seeking coverage was an indemnitor of Wal-Mart, and the lawsuit was against Wal-Mart. The Central District of California (Selna, J.) had granted summary judgment finding, among other things, that the insured had not been the party doing the allegedly infringing advertising, nor were the goods promoted by the allegedly infringing advertising the insured’s. The policy had language in it stating, the injury had to be caused by the insured’s advertisement of the insured’s goods. Accordingly, summary judgment was affirmed.