Courthouse Steps
Recently filed cases in entertainment law, straight from the steps of the Los Angeles Superior Court.
Clause & Effect
TV Program Hosts/Sales And Assignment Clauses <br>Film Option Agreements/Profit Participation Rights
Arbitration Update
Recent rulings affecting arbitration provisions and hearings in the entertainment industry.
Raising the Stakes in Copyright Litigation: The Availability of Punitive Damages
Many practitioners likely assume that the sole monetary remedies under the Copyright Act are those specified in Sec, 504 of the statute, namely the copyright owner's provable losses and/or the infringer's profits, or, alternatively, statutory damages (which, by statutory formula, include possible stepped-up awards in cases of willful infringement). It was thus with some significance, and perhaps surprise, that in <i>Blanch v. Koons</i>, a slender decision of only seven paragraphs, a federal district judge in New York rendered a decision that granted a motion to amend the complaint in a copyright case to allow the plaintiff to seek punitive damages (not simply enhanced statutory damages).
Myths About Avoiding Prosecution History Estoppel
In the recent Federal Circuit case <i>Honeywell, Int'l. Inc. v. Hamilton Sundstrand Corp.</i>, 370 F.3d 1131 (Fed. Cir. 2004) (en banc), the court held that a presumption of prosecution history estoppel arises when a patent applicant cancels an independent claim and rewrites its first dependent claim in independent form. Since then, patent attorneys and industry watchdogs have repeatedly misinterpreted the cause of this estoppel. Worse, many have advocated the dangerous strategy of initially writing dependent claims in independent form as a means of avoiding the estoppel. Such a strategy is useless in avoiding estoppel and highly counterproductive. Patent prosecutors should leave dependent claims in dependent form and, instead, avoid estoppel by using the strategies suggested below.
Calculation of Lost Profits Damages in Patent Cases
Upon a finding of patent infringement, a court is to award the patentee "damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court." 35 U.S.C. '284. In most cases, the patentee will be entitled to a larger damage award if it can recover damages based on lost profits. Lost profits are not, however, available in all cases. This two-part article will review the current state of the law governing the availability of lost profits damages in patent infringement cases in the first part and the calculation of these damages based on diverted sales in the second part.
Recovery of Damages for Use of the Invention Claimed in a Published Patent Application
For about 200 years, the United States kept all patent applications confidential prior to issuance of a patent. Sabra Chartrand, <i>A New Law Removes Some Secrecy From the Applications</i>, N.Y. Times, Dec. 4, 2000, at C6. However, as the Director of the U.S. Patent and Trademark Office ("USPTO") noted, secrecy eventually gave way to global harmonization. <i>Id.</i> Under the American Inventors Protection Act of 1999 ("AIPA"), patent applications are published by the USPTO 18 months after the earliest claimed filing date. 35 U.S.C. '122(b) (2004). This change in U.S. patent practice presented a risk that a patent applicant's invention, once publicly disclosed, would be vulnerable to unrestrained use until the patent, with its associated intellectual property protections, actually issued. To address the vulnerabilities of a patent applicant prior to issuance of a patent, Congress enacted the Provisional Rights subsection as part of the AIPA.
When a UK Franchise Termination Struck Back
On Nov. 16, 2004, Justice Richards of the Chancery Division of the High Court in England handed down judgment in <i>(1) Total Spares & Supplies Limited (2) Antares Ltd v. (1) Antares SRL (2) European Plumb Direct Ltd,</i> 16 November 2004 EWHC 2626 (Ch). It is rare that a franchise dispute proceeds to trial in England, and this case is a reminder of the dangers associated with terminating a franchise agreement.
