|
Law.com
Skilled in the Art
Everything IP
|
|
Scott Graham
|
|
|
|
|
Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Is everybody ready for the next IP trial of the century? I think I've got a candidate. It features premier Silicon Valley legal talent and puts in play the branding strategy of one of the world's largest companies. More details below. I've also got a few takeaways from LAIPLA's Judges Night Gala and news of a Utah IP firm that's made a couple of splashy hires on the West Coast. As always you can email me your thoughts and follow me on Twitter.
|
|
|
Orrick's Annette Hurst and Durie Tangri's Mark Lemley
|
|
|
World Series of Trademarks Is Brewing in S.F.
Patents had Apple v. Samsung. Copyright has Oracle v. Google. What we need to complete the trilogy is a knock-down drag-out trademark fight between top-shelf retailers with unlimited resources, blue-chip lawyers and the challenge of adapting traditional IP law to the digital age.
We might now have that in Williams-Sonoma v. Amazon.com. On one side you've got Stanford professor, Durie Tangri partner and IP law disruptor Mark Lemley. He's wielding the first-sale doctrine in a bid to maintain space for Amazon to market Williams-Sonoma-branded merchandise on Amazon's website. On the other side is Orrick, Herrington & Sutcliffe IP honcho Annette Hurst, a chief architect of Oracle's two Federal Circuit wins in its copyright war with Google. She comes armed with longstanding trademark authority—plus a quirky 2016 Ninth Circuit decision involving fake Trader Joe's stores.
Williams-Sonoma, also known as WSI, kicked off the dispute in December by accusing Amazon of “trading upon WSI’s goodwill and infringing WSI’s intellectual property” by advertising goods on Amazon.com as “by Williams-Sonoma” and “fulfilled by Amazon.” Williams-Sonoma says it carefully guards its online reputation, and calls Amazon's use “a counterfeit mark.”
Lemley asked U.S. Magistrate Judge Elizabeth Laporte to dismiss the case Feb. 5. “Williams-Sonoma alleges that Amazon has violated the law by accurately identifying legitimate Williams-Sonoma products as exactly what they are: products made and sold by Williams-Sonoma in the first instance. Whatever else that is, it’s not counterfeiting,” Lemley writes.
He contends Williams-Sonoma is trying to distract from the fact that it “can't get what it really wants,” which is to prevent others from reselling its products. Under the first-sale doctrine, buyers of branded products can lawfully resell them so long as they're not materially changed, Lemley argues. Amazon's advertisements “simply state the truth: that Williams-Sonoma products are available through Amazon’s website.”
Hurst responded Tuesday in characteristic take-no-prisoners fashion. “Amazon has in fact engaged in prototypical counterfeiting” by publishing and creating “a fake Williams-Sonoma website,” she writes in opposition.
The first-sale doctrine might let Amazon display and resell unaltered merchandise, but it does not permit Amazon to mislead customers into believing they're buying from Williams-Sonoma or an authorized dealer, she argues. Plus, Amazon is jacking up prices and selling damaged merchandise—even presenting small washcloths as full-sized dish towels. “Customer complaints run rampant on Amazon’s 'Shop Williams Sonoma' website, plainly damaging WSI’s goodwill,” she writes.
Hurst points to Trader Joe's v. Hallatt, in which the Ninth Circuit ruled that a person could be blocked from buying Trader Joe's merchandise and re-selling it in Canada at stores called Pirate Joe's. If Lemley is right, then “Pirate Joe’s would have nothing to fear,” Hurst declares.
While emphasizing the Ninth Circuit case, Williams-Sonoma would apparently prefer that any appeal not be heard in that court. Along with its trademark claims, the company is also asserting a single design patent on an upholstered dining chair, which means any appeal would go to the Federal Circuit.
Williams Sonoma and Amazon are scheduled to square off April 2 in Laporte's San Francisco courtroom. If you're going, be sure to bring some popcorn.
|
|
|
More Support for Patent Eligibility Legislation
The Los Angeles Intellectual Property Law Association presented its annual Judges Night Dinner on Wednesday. Former Federal Circuit Chief Judge Paul Michel gave the keynote, then engaged in a public dialogue with Berkeley Law professor Pamela Samuelson and Durie Tangri partner Daralyn Durie on some hot topics in IP law. Here are four takeaways:
➤ Michel, who wears his support for stronger patent rights on his sleeve, is a big fan of PTO Director Andrei Iancu. The former Irell & Manella partner is “our country's best hope for a better patent system. So thank you, Los Angeles, for Andrei Iancu,” Michel said.
➤ As noted here last week, Michel is also enthused about the reboot of the Senate Judiciary Committee's subcommittee on intellectual property after a 17-year hiatus. Sens. Thom Tillis and Chris Coons are privately discussing with industry stakeholders the outlines of an amendment to Section 101 of the Patent Act. Michel pointed out that, as reported by Bloomberg Law on Tuesday, the new chairman of the House Judiciary IP subcommittee also is on board. “There have been a few Supreme Court rulings that have affected the ability of the patent office to know with certainty what is patentable, particularly in the realm of medical diagnostics and computer software,” Rep. Hank Johnson of Georgia told Bloomberg. “They want to do the research, invest the money, come up with the product—and then the product is not patentable. That’s a big issue we need to address.”
➤ A new Section 101 could be the least of the technology industry's worries. Michel also talked up the idea of overruling the Supreme Court's 2006 eBay v. MercExchange decision, which made it harder for patent owners to obtain injunctions. “Injunctions in the United States are quite rare,” especially when compared with Germany or China, Michel said. “We weakened the injunction regime while other countries strengthened theirs.” Samuelson pushed back on that, pointing to research that shows operating companies can still get injunctions in the U.S.—it's mostly non-practicing entities that are limited to royalties. She argued that injunctions ought to be out of bounds on standard-essential patents and on single components of complex, otherwise non-infringing products.
➤ Michel and Samuelson did have one area of agreement: The Federal Circuit's decision on software copyrightability in Oracle v. Google is out of step with other circuits' precedents. Samuelson is co-author of an amicus curiae brief on behalf of 65 IP scholars who support Google's petition for certiorari. But she said Wednesday that she considers Microsoft's submission the most important.
The event was co-sponsored by the Orange County Intellectual Property Law Association and the Paul R. Michel Intellectual Property American Inn of Court, which meets monthly in Los Angeles.
|
|
|
Goodwin Goes After Fenwick IP Lawyers
Goodwin Procter has brought aboard Michael Shuster, a co-chair of Fenwick & West's life sciences group, along with Fenwick partner Kevin Kabler in San Francisco. Shuster said he expects about 10 more lawyers and professionals to follow them to the Boston-based firm.
Shuster told my ALM colleague Xiumei Dong that he was drawn to “the incredible strength of the corporate side” at Goodwin. Another influencing factor, he said, was that “Goodwin has easily figured out what’s required in terms of retention and the advancement of junior people [and] making sure the practice remains robust for the next generation.”
Shuster will be reunited at Goodwin with Darryl Woo, who practiced at Fenwick for many years before joining Vinson & Elkins in 2014 and then Goodwin last fall.
Goodwin also announced the hires of corporate attorneys Deepa Rich and Sam Zucker from Sidley Austin in Silicon Valley.
|
|
|
Barquist, Cheng Join Growing Maschoff Brennan
Maschoff Brennan is making a move. The 50-lawyer, Utah-based IP-oriented firm has added a couple of name brands: Morrison & Foerster partner Charles Barquist and Lee Cheng, the former Newegg general counsel most recently with The Webb Law Firm.
Barquist brings more than 30 years of experience in district courts and the International Trade Commission, while Cheng will serve as chair of the firm's corporate practice and co-chair of its Asia practice.
Barquist said the presence of former MoFo colleagues Sterling Brennan and Michael Katz was part of the draw. So was the addition of Cheng, who brings “great in-house experience, an amazing network of contacts, and lots of energy for growing the firm.”
“While not large, at 50-plus lawyers we are big enough to tackle virtually any case,” Barquist said. And “being based in Utah, we are able to offer our clients very attractive fee structures.”
The firm also announced it is opening a Los Angeles office (in addition to its Orange County digs) and putting partner Tyson Hottinger in charge of its West Coast offices.
|
|
|
How Reasonable Is My Royalty?
On Tuesday I wrote about a Texas patent owner who won a $6.6 million verdict without a damages expert. U.S. District Judge William Orrick III had excluded the testimony in part because the expert set the date of the hypothetical negotiation before the plaintiff LLC had been formed.
That struck a chord with Villanova law professor Michael Risch, who challenged similar assumptions about hypothetical negotiations in his 2016 article (Un)Reasonable Royalties.
“Why should a reasonable royalty depend on who owns the patent as a measure of compensatory damages?” Risch said via email. “The question is the value the patent provides, not what two people would haggle about.”
For the record, Orrick deferred to Daubert decisions from two other district judges, including one from Judge William Alsup in … Oracle v. Google.
|
|
|
That's all from Skilled in the Art this week. I'll see you all again on Tuesday.
|
|
|
