Skilled in the Art: Keeping It Real at the Ninth Circuit + Two Knobbe Partners Find New Homes

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Thu, Apr 25, 2019, 10:10 PM

Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. After five years and two Ninth Circuit opinions, a New York fabric maker's copyright case remains at square one. The reason: a federal judge who's not always amenable to appellate direction. I've got details below. Plus, Conan O'Brien is nearing trial on allegedly copyrighted jokes, and two Knobbe Martens partners have new digs. As always you can email me your thoughts and follow me on Twitter.

U.S. District Judge Manuel Real. Photo by Diego Radzinschi.

Keeping It Real at the Ninth Circuit

Fans of the Cleveland Indians, Boston Red Sox and Los Angeles Dodgers will remember the phrase “Manny being Manny.” It described superstar outfielder Manny Ramirez's eccentric behavior—disappearing into outfield scoreboards, high-fiving a fan after a spectacular catch, refusing orders to play left field.

The federal courts have their own Manny being Manny. It's Senior Judge Manuel Real of the Central District of California, and his occasional open disdain of appellate court instructions. A couple of years ago the Federal Circuitordered himto recalculate a $755,000 attorney fee award. He did, and came back with $759,000. The Federal Circuit reluctantly signed off.

Now the Ninth Circuit is in a standoff with Real and isn't backing down, at least not yet. The result is Malibu Textiles v. Label Lane International, a copyright case that's five years old and still at the pleading stage.

New York-based Malibu Textiles sued L.A. fabric store Label Lane and New York clothier H&M Hennes & Mauritz in 2014, accusing them of infringing two of its floral lace designs. Real dismissed the cases with prejudice, saying Malibu Textile had failed to plead similarity once all non-protectable elements were filtered out.

The Ninth Circuit reversed in 2016, saying Malibu Textile should have been given the opportunity to amend its complaint by including side-by-side comparisons of the designs and evidence that the defendants could have had access to them.

Malibu Textile then filed an amended complaint with the side-by-side:

But Malibu's attorneys at Doniger Burroughs initially neglected to include the access allegations—namely, that Malibu had produced a million yards of fabric bearing the pattern and it had been widely distributed. A few weeks later they submitted a third amended complaint with those allegations added. Defense attorneys at Nixon Peabody graciously stipulated to the amendment.

Real wouldn't accept it. “No good cause is shown” he scrawled across Malibu's proposed order. A few months later the case was again dismissed. “There are no allegations relating to distribution" in the operative complaint, he wrote.

On Wednesday, the Ninth Circuit issued a published opinion ordering Real to let Malibu Textile proceed with its full set of allegations—again. “This latest round of appeals added nearly two years to cases that were already three years old,” U.S. District Judge Jack Zouhary, visiting from Ohio, wrote for a unanimous panel. “Direction from the earlier appeals was disregarded, as were the parties’ stipulations to allow amendments to the Complaints.”

Doniger Burroughs' Stephen Doniger had the winning argument for Malibu Textiles.

Real has been a federal judge for 53 years. He took senior status last fall. We'll see how well he takes direction from a district court colleague nearly 30 years his junior.

Will the Joke Be on Conan O'Brien?

Over at Above the Law, Doniger's partner Scott Alan Burroughs reminds us that Conan O'Brien is speeding toward a copyright trial next month over allegedly stolen jokes.

Comedy writer Alex Kaseberg sued O'Brien, his production company and his writers after several jokes Kaseberg published on his blog or Twitter feed allegedly were repeated on O'Brien's show later that day or the day after. (An example: Kaseberg wrote the morning of Feb. 3, 2015, “Tom Brady said he wants to give his MVP truck to the man who won the game for the Patriots. So enjoy that truck, Pete Carroll.” Later that day one of O'Brien's writers submitted a joke that O'Brien performed during his monologue: “Tom Brady said he wants to give the truck that he was given as Super Bowl MVP … to the guy who won the Super Bowl for the Patriots. Which is very nice. I think that’s nice. I do. Yes. So Brady’s giving his truck to Seahawks coach Pete Carroll.”)

O'Brien says his writers independently created their own versions of the jokes, and that they can prove at least one was circulated among team members before Kaseberg published his version.

U.S. District Judge Janice Sammartino last week excluded testimony from two of Kaseberg's expert witnesses, including comedian Elayne Boosler. “Although the Court recognizes that Ms. Boosler is undoubtedly an expert comedienne,” Sammartino wrote, she isn't an expert on the analytical dissection necessary to determine whether the jokes are virtually identical.

Jayson Lorenzo and Ryan Altomare of J. Lorenzo Law represent Kaseberg. A Glaser Weil Fink Howard Avchen & Shapiro team headed by Patricia Glaserrepresents O'Brien and his co-defendants.

New Gigs for Two Knobbe Partners

It's rare for partners to lateral in or out of Knobbe Martens, but it's happened twice in recent weeks.

First, partner Jing Liu and associate Paul Chang have joined Sheppard Mullin Richter & Hampton's IP group in San Diego. The two practice in the life sciences area, including diagnostics, genomics, bioinformatics, industrial biotechnology and oncology.

“Jing and Paul are outstanding additions,” Sheppard chairman Guy Halgren said in a written statement, “and their work for U.S. and international clients broadens our ability to protect and defend myriad inventions and technological advancements.”

Second, partner Michelle Armond, who was co-chair of Knobbe's Patent Office litigation group, is teaming up with Heim, Payne & Chorush partner Douglas Wilson to form Armond Wilson, according to their LinkedIn profiles.

“We wish them well in their future endeavors,” Knobbe managing partner Steven Nataupsky said.

Hulu Says Humu Is Too Close for Comfort

A trademark dispute between streaming video provider Hulu LLC and Humu Inc., a startup aimed at helping businesses improve employee morale, has landed in Oakland federal court.

Humu v. Hulu pits two prominent women in the IP bar, Orrick Herrington & Sutcliffe’s Annette Hurst and Kirkland & Ellis’ Dale Cendali.

Three ex-Google employees started Humu in 2017. Their idea is to use artificial intelligence to support employee motivation, productivity and happiness. Two of the founders met in Hawaii and decided to name the business after the Hawaiian name for the triggerfish (humuhumunukunuku apua’a). “Humu” also is evocative of “human,” making it “the perfect choice” for the HR-oriented business, according to a January complaint signed by Hurst.

Humu seeks a declaration that there’s no likelihood of consumer confusion with Hulu because of the different industries, no dilution of Hulu’s mark, or any other violation of its trademark rights. Hulu’s “niche fame” in the streaming broadband space “is not the type of secondary meaning that qualifies as fame for purposes of dilution,” Hurst writes.

Hulu moved to dismiss the suit last month. The company said it recently provided Humu with a covenant not to sue over any use of “Humu” in connection with business-to-business human resources services. Instead of dropping its suit, Humu amended its complaint to clarify that it might offer goods and services in the future, such as downloadable audio and video material related to employee retention, career growth and increased productivity.

“Humu’s real interest is in an advisory ruling by this Court that any future use of the HUMU mark, including for unspecified consumer-oriented video services, would not be infringing,” Cendali writes in the March 26 motion. “Vague allegations of an intent to engage in a trademark use at some unknown future date are insufficient to establish a case or controversy.”

The case has been assigned to U.S. District Judge Haywood Gilliam.