Antisuit Injunction Not Available to Stop Litigation in China Despite Prior California Settlement

Case: TSMC North America v. Semiconductor Mfg. Int'l Corp., California Court of Appeal No. A117182, March 27, 20008

In Brief: After the parties settled an earlier patent infringement suit with a settlement agreement providing for California choice of law and submission to California courts for jurisdiction, disputes again arose causing one party to file litigation in California and the other to file a suit in the Peoples' Republic of China. The trial court denied a motion for an antisuit injunction barring further litigation of the case in China, citing concerns of international comity, and rejecting claims that the litigation in China would violate plaintiff's rights. The court of appeal affirmed.

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Use of Trademark in Keyword Search Caused Initial Interest Confusion

Case: Storus Corp. v. Aroa Mktg. Inc., N.D. Cal. C-06-2454 (Feb. 15, 2008)

The One Sentence Summary: Summary judgment of initial interest confusion under the Lanham Act was granted for plaintiff where defendant purchased keyword search advertisements using plaintiff's trademark and the advertisement displayed the trademark leading searchers to click on the advertisement.



District Court Holdings:

• SMART MONEY CLIP mark was a valid mark. Defendant failed to present any evidence that "smart money clip" was a general laudatory term.
• Applying the internet trinity of Sleekcraft confusion factors, (1) the similarity of the marks, (2) the relatedness of the goods or services, and (3) the parties’ simultaneous use of the Web as a marketing channel, the court found a likelihood of confusion due to initial interest confusion. Defendant's purchase of the trademark keywords "smart money clip" on Google AdSense leading to defendant's advertisement titled "Smart Money Clip" led to 1,374 clicks out of 36,164 displays. This diversion of potential customers was initial interest confusion under the Lanham Act.
• For a second defendant, summary judgment was denied in the absence of evidence that a search for the term "smart money clip" would lead to a page with that phrase advertising a competing product.
  
  

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Amounts Paid By Settling Copyright Defendants Reduces Judgment Against Non-Settling Defendants Under One-Satisfaction Rule

Case: Buc Int'l Corp. v. Int'l Yacht Council Ltd, 11th Cir. No. 05-16151 (2/25/08)

The One Sentence Summary: Defendants found liable for copyright infringement should have been allowed to reduce the judgment against them under Federal Rule of Civil Procedure 60(b)(5) by the amount paid by settling defendants because one satisfaction rule applies to copyright claims.

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Unfair Competition and Copyright Claims Against Karaoke Competitor Dismissed

Case: Sybersound v. UAV Corp., 9th Cir. No. 06-55221(2/27/08)

The One Sentence Summary: Claims that a competitor in the karaoke business infringed copyrights and competed unfairly were dismissed.



Ninth Circuit Holdings:

• Lanham Act 43(a) (15 U.S.C. § 1125(a)) claim for misrepresentations regarding copyright license status could not be brought by competitor who did not own copyrights, so dismissal of claim was proper.
  
• Co-owner of copyright could not assign exclusive right to sue for infringement of karaoke license.
• Dismissal of RICO claim under 18 U.S.C. § 1962 was proper because plaintiff could not show proximate cause of damage, and complicated questions as to multiple recoveries would arise.
• Dismissal of RICO claim was also proper because plaintiff could not show not show injury caused by reinvestment of RICO proceeds.
• State law claims for interference with contract and breach of California's Unfair Competition Law, Business & Professions Code section 17200, were preempted to the extent they were based on claims of copyright infringement. Claims that third parties were induced to enter contract by defendants' claims of copyright compliance could not be enforced by plaintiff who was not directly involved.
• Claim under Bus. & Prof. Code § 17043 for below cost sales were dismissed because there was no claim of a purpose to harm plaintiff.
  
  

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