Author Archives: david

The Ghost Rider Returns – In a Copyright Work For Hire Trial

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July 8  |  Newsletter  |   david

A fan of comic books and motorcycle gang movies, in the 1950s Gary Friedrich began to imagine a motorcycle-riding superhero.  The hero developed into a motorcycle stuntman when Evel Knievel rose to popularity in the late-1960s and in 1968 Friedrich gave his hero a flaming skull for a head.  He then fleshed out a story for this hero.

At that time, Gary Friedrich was a part-time free-lance comic book writer scripting issues of existing comic book serials as requested by Marvel and other publishers.  In 1971, Friedrich decided to try to publish a comic book starring his flaming-skulled hero and created a written synopsis on his own initiative and at his own expenses which he called “Ghost Rider.”

Friedrich decided to approach Marvel with his idea.  Marvel agreed to publish Ghost Rider in its series “Marvel Spotlight”, which was the way in which it auditioned new superheroes.  Friedrich assigned his rights in the Ghost Rider characters to Marvel.  In April 1972 Marvel Spotlight was published featuring Ghost Rider.  It was republished five times.  In each there was a copyright notice in favor of Marvel, but also a credit “Conceived & Written Gary Friedrich.”  In a separate publication Marvel acknowledged that Friedrich “dreamed the whole thing up.”

Ghost Rider quickly became very popular and in May 1973 Marvel launched a separate Ghost Rider comic book series.  Friedrich wrote the stories for several of these later comics on a freelance basis.  Marvel promptly filed copyright registrations for several of these subsequent Ghost Rider comic books.

The Copyright Act of 1909, which was in effect in 1972, provided that the original term of a copyright was for 28 years from the date of first publication.  The Copyright Act of 1909 also provided for a renewal and extension of the copyright for an additional 28 years upon the filing of an application to renew.

In 1976 Congress repealed the 1909 act and adopted a new copyright act, effective January 1, 1978.  The new copyright act provided for a much longer original term and discontinued the concept of a renewal copyright for new copyrights.  However, as to copyrights which were then existing and in their first term on January 1, 1978, the Copyright Act of 1976 continued the concept of having an original term of 28 years, but provided for a renewal term of 67 years.  If no application to renew the copyright was made, then at the expiration of the original term the copyright vests in the author if he is still living.

A copyright work for hire under the 1976 Copyright Act, as construed by the United States Supreme Court[i], is generally a work prepared by an employee (as that term is understood to mean under agency law which is broader than just a W-2 wage employee), or certain types of specially ordered or commissioned works if the parties expressly agree in a written instrument that it is to be considered a work for hire.  The prior law did not require an express agreement.  Instead, the copyright belonged to the person at whose “instance and expense” the work was created.[ii]

Because of this change in the law, in 1978 the then publisher of Marvel comics required Friedrich, and all other freelance artists, to sign a form work for hire agreement.  The agreement was a page long and contained two operative sentences.  The first sentence was 90-words long, the second 45.  The first sentence provided that all works which “have been or are in the future” created by Supplier (Friedrich) “have been and will be specially ordered or commissioned for use as a contribution to a collective work and . . . is . . . a work made for hire.”  The second sentence grants to Marvel all rights of ownership “forever.”

The initial copyright term for Ghost Rider expired in the year 2000, 28 years after it was first published.  Friedrich was unaware of  Marvel’s use of the Ghost Rider character during the renewal term until 2004 when he learned Marvel was preparing to make a Ghost Rider movie.  Friedrich’s attorney wrote to Sony Pictures, which was producing the movie, and asserted Friedrich’s rights in the Ghost Rider copyright.  In a response dated April 14, 2004, Marvel advised Friedrich that Ghost Rider was a work for hire.  Despite taking this position, however,  Marvel sent Friedrich a check when it reprinted Spotlight 5 in 2005.

On April 4, 2007, Friedrich filed suit in the United States District Court for the Southern District of Illinois against the current owners of Marvel and their licensees alleging copyright infringement.  He did so within three years of the April 14, 2004 letter from Marvel advising of its position that Ghost Rider was a work for hire.

The action was transferred to the Southern District of New York.  Marvel filed its answer asserting that Ghost Rider is a “work made for hire.”  It then filed an amended answer to include a counterclaim against Friedrich for copyright infringement.

After discovery, both sides moved for summary judgment.  Friedrich argued that he was the owner.  Defendants argued that Friedrich’s claim was barred by the statute of limitations[iii], and alternatively that Friedrich had assigned his renewal rights to Marvel.

The District Court[iv] concluded that there were genuine issues of material fact concerning the authorship of the work, but that by executing the agreement, even if Friedrich were the sole author, he conveyed those rights to Marvel “forever.”  The District Court reasoned that use of the word “forever” in the 1978 form work for hire agreement indicated the parties intent to convey the renewal rights.  It dismissed Friedrich’s claims, awarded damages to Marvel for copyright infringement and enjoined Friedrich from using the Ghost Rider copyright.

Friedrich appealed.  The Second Circuit vacated the district court judgment and remanded.[v]  It held that there were genuine issues of fact in dispute and therefore the summary judgment granted by the trial court was improper.

The first of three issues the Second Circuit held were in dispute involved the construction of the 1978 work for hire agreement.  The court looked to New York state law to construe the document and held that it was ambiguous and therefore extrinsic evidence should be used to determine its meaning.  It held that the run-on sentences of the document were ambiguous on their face calling them “dense sentences” and “an opaque cluster of clauses.”  It also found that the 1978 document was a standard-form created by Marvel and that the language was ambiguous as to whether it was only forward looking or also covered a work created prior to that date such as the Ghost Rider character.  It also found that the document was ambiguous as to whether it referred only to the original term of the copyright or also to the renewal term.  It found that there was evidence in the record which indicated Friedrich was doing other work for the current owner of Marvel at the time he signed the agreement and that he was specifically told the document only covered that current work and future work.  Citing earlier Second Circuit authority, it held that there is a strong presumption against the conveyance of renewal rights[vi] and although a word like “forever” may be indicative of an intent to convey renewal rights, this intent is to be determined by the trier of the facts and not upon summary judgment.[vii]

The second issue upon which the Second Circuit held there were facts in dispute involved when Friedrich’s claim accrued under the 3-year statute of limitations.  Following earlier Second Circuit authority[viii], the court held that the claim accrues when a reasonably diligent plaintiff would have been put on inquiry as to the assertion of an adverse claim to the copyright.  Friedrich filed suit on April 4, 2007.  The court looked to whether Marvel had asserted an adverse claim prior to April 4, 2004.  It looked at whether Marvel had publicly repudiated Friedrich’s claim, whether it had privately repudiated Friedrich’s claim, or whether it had impliedly repudiated Friedrich’s claim, and found that there were triable issues of fact as to each.

The third issue upon which the court held that there were facts in dispute involved ownership.  The Second Circuit agreed with the trial court that it was improper to grant summary judgment in Friedrich’s favor on the ownership issue.  When the facts are viewed in Marvel’s favor, as they would be in determining whether to grant summary judgment to Friedrich on this issue, it would be possible for a jury to conclude that Friedrich had only an uncopyrightable idea for a motorcycle-riding character when he first presented it to Marvel.[ix]

Although the unique facts of this case relate to a work created prior to the effective date of the current copyright act, for employers the overriding lesson is equally applicable now.  It is not only to have a written copyright work for hire agreement, but that it fits with the facts of the particular situation, that it clearly defines the relationship between the employer and employee, and that it states who is entitled to the copyright in the work.  Failure to do so can not only be costly to both parties in terms of legal fees, but also a great deal of time and money may be expended in exploiting the work only to learn after the fact that the profits may be going to someone else.


[i] Community for Creative Non-Violence v. Reid, 490 U.S. 730, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989).

[ii] Martha Graham School v. Martha Graham Center, 380 F.3d at 634-35.

[iii] The statute of limitations is three years.  The District Court opinion does not mention the statute of limitations argument, but the appellate opinion indicates that defendants raised that issue.  It must have appeared in other parts of the record.

[iv] Gary Friedrich Enterprises, LLC, et al. v. Marvel Enterprises, Inc., et al., 837 F. Supp. 337 (S.D.N.Y. 2011).

[v] Gary Friedrich Enterprises, LLC, et al. v. Marvel Characters, Inc., et al., Docket No. 12-893-cv (2d Cir. 2013).

[vi] Corcovado Music Corp. v Hollis Music, Inc. 981 F.2d 679, 684 (2d Cir. 1993).

[vii] Siegel v. Nat’l Periodical Publ’ns, Inc., 508 F.2d 909, 913 (2d Cir. 1974).

[viii] Kwan v. Schlein, 634 F.3d 224, 228 (2d Cir. 2011)

[ix] Under the 1909 Act, federal copyright protection attached to original works only when those works were published and had a notice of copyright affixed.  Under the 1976 Act, a copyright subsists in an original work of authorship only when fixed in any tangible medium of expression from which it can be perceived, reproduced or otherwise communicated.

Festival 2013

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May 29  |  Headlines  |   david

I am happy to be associated with Roanoke Festival in the Park, Inc. which has brought entertainment and activities to Roanoke over the Memorial Day weekend for more than 40 years. Congratulations on another success.

NRA and Virginia Attorney General Cuccinelli Lose on Second Amendment Argument

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March 23  |  Headlines  |   david

In Woollard v. Gallagher, a case decided March 21, 2013, the United States Fourth Circuit Court of Appeals in Richmond upheld a Maryland law which places restrictions on those who can carry handguns outside the home.  Both the National Rifle Association and the Attorney General of Virginia, among others, filed amicus briefs arguing that the Maryland law violated the Second Amendment.  They lost.

The Maryland law was not an absolute ban on carrying handguns outside the home.  It provided a number of exceptions, but said others not falling within an exception must have a “good and substantial reason” for carrying a gun in order for them to obtain the required permit.  The Maryland State Police was given authority to issue the permits.  The State Police adopted a standard which sets out four categories which they would consider to meet the “good and substantial reason” requirement, the last of which was “for personal protection.”   To determine whether the personal protection requirement was met, the State Police applied an objective standard previously adopted by the Maryland Court of Appeals that there must be an “apprehended danger,” something more specific than “a vague threat” or a general fear of “living in a dangerous society.”

 In its analysis, the Fourth Circuit followed its own precedent and applied an “intermediate scrutiny,” not a “strict scrutiny,” standard in determining whether the state regulation restricting guns outside the home placed an impermissible burden on the Second Amendment constitutional right.

 The court held that Maryland’s “good and substantial reason” requirement as applied in this case met second amendment constitutional muster.  Using the intermediate scrutiny standard, the court found Maryland had demonstrated that the statutory “good and substantial reason” requirement is reasonably adapted to Maryland’s significant interest in protecting public safety and preventing crime.

United States Sues S & P Over Derivatives Ratings

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February 5  |  Headlines  |   david

The United States Justice Department has filed a civil action against Standard & Poor’s and it’s parent company McGraw-Hill over the ratings it gave to financial derivatives which are widely blamed for causing the Great Recession.

Rose Bowl Float Side Story – Copyright

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January 1  |  Headlines  |   david

A float in today’s Rose Bowl Parade honored Korean War veterans by depicting the National Korean War Memorial on the Mall in Washington.  Fifty-five years after the war ended, the artist who created the central feature of the memorial had to fight a battle of his own over the copyright to his work.  Here is his story. The Stamp War – Copyright

Apple Ordered to Disclose Patent Infringement Settlement Details

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November 26  |  Headlines  |   david

The United States District Court for the Northern District of California has ordered Apple Computer to disclose the details of the global settlement agreement it reached with HTC dismissing all patent infringement lawsuits between the two companies.  Apple had sought a permanent US sales ban on eight Samsung smartphone models and one tablet computer.  Samsung claimed the iPod Touch 5, the iPad 4, and the iPad mini infringed its patents.

No Dice: The Risks of Trade Secret Misappropriation

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October 29  |  Newsletter  |   david

Often the most important remedy in intellectual property litigation is an injunction.  If someone infringes your patent, copyright or trademark, you want a remedy that will require them to stop doing so.  It had long been held in intellectual property litigation that once an infringement was proven, an injunction would issue.

The Legal Background

The 2006 United States Supreme Court opinion in eBay, Inc. v MercExchange, LLC[1] changed that.  It was a patent infringement case and held that the requirements for obtaining a permanent injunction should be no different than the common law requirements for obtaining a permanent injunction in other types of cases which are that the plaintiff must prove (i) that it has suffered irreparable injury, (ii) that remedies at law (monetary damages) are inadequate to compensate for the injury, (iii) that considering the balance of hardships between the plaintiff and defendant, an injunction is warranted, and (iv) that the public interest would not be disserved by a permanent injunction.

In the years since eBay, there has been a great deal of discussion about the application of its holding to other types of intellectual property and other related areas of the law.  The decision in eBay specifically discussed the Copyright Act, and so it is easy to conclude that it also applies to copyright cases.  It has also been held to apply to trademark infringement cases[2] and to false advertising cases[3] brought under §43(a) of the Lanham Act (the federal trademark act); however, there has been some inconsistency in doing so.[4]

Now comes a trade secret case in Virginia.  A trade secret is a legally protected right of a business to its confidential, proprietary information.  Patent, copyright and trademark are ways for a business to protect its creative efforts.  Trade secrets provide another way.  For a general discussion of trade secret law, see Trade Secret Law.

The case is a big one.  It resulted in a $920 million judgment and a 20-year, world-wide injunction against the Korean manufacturer Kolon Industries, Inc. producing its competitive product.  The case is in the Richmond District of the United States District for the Eastern District of Virginia.  The court had personal jurisdiction over the South Korean defendant because some aspects of the misappropriation occurred in the United States and Kolon entered a general appearance in the case and filed a counterclaim (which was severed).  As would be expected in such a large case, every issue was contested which has resulted in numerous written opinions, including a 70-page opinion entered August 30, 2012 on DuPont’s post-trial motion for a permanent injunction.

The Factual Background

The following facts are from the court’s opinion.  They are egregious.  After a seven-week trial, a jury found that Kolon violated the Virginia Uniform Trade Secrets Act.  Using a fifty-one page verdict form, the jury specifically found that Kolon willfully and maliciously misappropriated and used 149 DuPont trade secrets for the manufacture of DuPont’s para-aramid fiber Kevlar®.

Kolon had attempted in the 1980s and 1990s to develop a commercial para-aramid product.  It was unsuccessful and in 1995 abandoned the effort.  In 2002, Kolon’s top executive directed that the company renew its efforts to produce para-aramid.  In 2005, Kolon announced that it soon would enter the para-aramid fiber market with its product Heracron®.  It did begin production but its efforts were less than successful.  Because it is a lucrative market, the company’s top management again made success in the manufacture of Heracron® a top priority.

Kolon continued its development efforts and was making some progress toward success, but it encountered significant problems in quality control and in efficient production, both of which kept Heracron® from being competitive in the market.  In its effort to become competitive, Kolon made the deliberate decision to acquire DuPont’s trade secrets and confidential information.

To achieve its objective, Kolon retained as “consultants” former DuPont employees whom it paid to divulge DuPont’s trade secrets.  Once such consultant, Mitchell, was a long-time former employee that DuPont had terminated in 2006.  Despite having entered into a non-disclosure agreement with DuPont, Mitchell divulged DuPont trade secrets to Kolon.  Apparently not satisfied that Mitchell was spilling all the beans, during a luncheon recess from a meeting in Korea, Kolon surreptitiously copied the hard drive of Mitchell’s laptop.

At trial, DuPont presented evidence that Kolon had incorporated the stolen DuPont trade secrets into Kolon’s own manufacturing facilities, including machine configurations that DuPont had used solely because of its need to fit machinery into limited space in its plant.

Kolon’s flagrant behavior didn’t end when the lawsuit was filed.  Kolon also engaged in some serious shenanigans during the trial.  DuPont discovered a number of screenshots that indicated employees of Kolon had deliberately deleted, overwritten or destroyed approximately 17,000 emails and other documents.  That resulted in Judge Payne granting an adverse inference instruction to the jury, meaning that the jury could infer that the documents destroyed were adverse to Kolon.

Whether eBay Applies to Permanent Injunction under Virginia Uniform Trade Secrets Act

Following trial, DuPont moved for a permanent injunction against Kolon using DuPont’s trade secrets.  In considering the issue of whether a permanent injection should issue against Kolon, Judge Payne conducted a comprehensive analysis which begins with the question of whether the eBay doctrine for issuance of an injunction, if applied to this case, would encroach upon the bedrock case of Erie R. R. v. Tompkins.[5]

Remember, the eBay case involved patent infringement – a violation of federal law for which the federal trial court had federal question jurisdiction.  The Kolon case involved trade secrets under Virginia law for which the federal trial court had diversity jurisdiction, not federal question jurisdiction.  As noted by Judge Payne, under the Erie doctrine, federal courts must apply the substantive law of the forum state in diversity of citizenship cases.  As he also notes, since Erie federal courts have struggled to distinguish substance from procedure.

Judge Payne then engages in a thoughtful analysis of the application of Erie to the issue of a permanent injunction, which courts and lawyers in other jurisdiction will find instructive.  He concludes that analysis by stating that there is a widely held perception the issue has not been resolved by the Supreme Court of the United States.

However, he then resolves the issue for the Kolon case by stating that the Fourth Circuit, which is direct authority for federal courts in Virginia, “has spoken directly on this admittedly complicated issue.…  In Capital Tool,[6] the Fourth Circuit concluded that the application of state law to the issuance of a final injunction in diversity cases is consistent with the principles announced in Erie when it articulated that:  ‘There is no reason to exclude form Erie state substantive law regarding the issuance of final injunctions. 837 F.2d at 172’.”

Judge Payne continues:  “(A) complainant need not allege or prove irreparable harm when it involves a statute that authorizes injunctive relief.  All that need be proved is a violation of the statute.” (Emphasis by Judge Payne) (citing Va. Beach S.P.C.A., Inc. v. S. Hampton Roads Veterinary Ass’n, 329 S.E.2d 10 (Va. 1985) and Envtl. Def. Fund., Inc. v. Lamphier, 714 F.2d 331 (4th Cir. 1983)).[7]

Judge Payne then holds:  “For the foregoing reasons, the Court finds that applying the standard for injunctive relief in eBay to DuPont’s request for a permanent injunction under the VUTSA would trench upon the rule of Erie.  Hence, the Court will apply Virginia’s principles as set forth in the decisions of the Commonwealth’s highest court.  Under those principles,  DuPont, having proved a violation of the VUTSA, does not have to prove irreparable harm or the lack of an adequate remedy at law to receive an injunction against the actual misappropriation of its trade secrets by Kolon.”  (Opinion p. 30)

Judge Payne then states:  “The conclusion that DuPont is not required to establish irreparable injury or the lack of an adequate remedy at law does not mean that DuPont is automatically entitled to injunctive relief.” (Opinion p. 31)   He then turned his attention to the factors under Virginia law which should be considered in determining whether to grant an injunction.

Injunction under Virginia Uniform Trade Secrets Act[8]

Kolon, relying upon Faiveley Transport Malmo AG v. Wabtee Corp.,[9] argued that the $920 million judgment against it makes in unnecessary and inappropriate to issue an injunction.  The Second Circuit in Faiveley commented that an award of damages often will provide a complete remedy for misappropriation absent a showing that, unless enjoined, the misappropriator will further disseminate the stolen secret.  Judge Payne gave Faiveley short shrift:  “That somewhat remarkable, overly simplified statement was made without the benefit of a full record, and it was dictum.”  (Opinion p. 33)

Judge Payne pointed to Kolon’s assertion that it could not afford the premiums on an  appeal bond and noted that they may have no assets in the United States forcing DuPont to attempt to enforce its judgment in Korea, to indicate there is no assurance DuPont will be successful in obtaining satisfaction of its judgment.   During the time DuPont would be required to spend in seeking to enforce its judgment, without an injunction, Kolon would be free to use the stolen trade secrets.  Judge Payne concluded that the $920 million monetary judgment would not preclude an injunction.

In balancing the equities between DuPont and Kolon, Judge Payne found that the equities strongly favored granting and injunction.  In considering the public interest in determining whether an injunction should issue, Judge Payne found that in a global economy where many international companies do not accord trade secrets the same respect and protection as they are granted under the Uniform Trade Secrets Act, which has been enacted by all states except Massachusetts, New York, North Carolina and Texas, it serves the public interest for those who violate the law to know that they will be caught, they will be prosecuted civilly, and they will not be able to profit from their stealing.  Judge Payne then found that injunctive relief will help serve as a deterrent to trade secret misappropriation.

Judge Payne thus found that the factors under Virginia law favor granting an injunction.  When granted, an injunction must be tailored to address properly the wrong that has been proved and to effectuate proper relief.

Type and Scope of Injunction

Judge Payne then addressed the type of injunction to issue – a “production” injunction or a “use” injunction.  DuPont requested an injunction prohibiting Kolon from making a para-aramid product altogether, not just prohibiting Kolon from using the stolen secrets in making the product.

Judge Payne determined that Kolon had not created a significant and comparable design for the product prior to stealing DuPont’s trade secrets.  He further determined that the misappropriated trade secrets are inextricably intertwined in Kolon’s production line and operating processes, and further that it would not be possible for Kolon’s employees to “unlearn” the secrets that were misappropriated.  He also determined that given Kolon’s flagrant misconduct, Kolon could not be trusted to police itself on an injunction that would prohibit only use of the stolen trade secrets.

The scope of the injunction deals with both its geographic scope and its duration.  DuPont requested a worldwide scope.  Judge Payne looked to the Restatement (Third) of Unfair Competition, authority from the Eleventh Circuit[10] and the Ninth Circuit,[11] and general principles of equity to conclude that an extraterritorial injunction is warranted.

Judge Payne considered the “independent development” standard in determining the duration of the injunction, but also cited with approval a treatise[12] which states that while the general principle and judicial preference is to limit injunctive relief to independent development time, courts seek to do equity and will enter an injunction for an arbitrary term if needed to accomplish an equitable result.  In this case, Kolon had not perfected the technology after almost 20 years of trying and the evidence was that it took DuPont 30 years to develop Kevlar.®

As a result, Judge Payne issued an injunction against Kolon prohibiting the production of any para-aramid fiber for 20 years, as well as a permanent injunction against the use of the trade secrets, and a permanent injunction against disclosure of the trade secrets not only to others outside Kolon but also against further disclosure to other employees of Kolon.

Footnote

On September 21, 2012, in a split decision a three-judge panel of the Fourth Circuit stayed the injunction pending Kolon’s appeal.

For his part, in 2010 DuPont’s former employee Mitchell was convicted of stealing numerous trade secrets concerning the making of Kevlar® and passing them to Kolon.

And now, on October 18, 2012, Kolon and five of its employees were indicted for their actions.  That may take some of the fight out of them.  Those employees could soon find themselves with a free one-way airplane ride to the United States, handcuffed to U.S. Marshalls.

What It All Means

For lawyers, the case is instructive because of its exhaustive analysis, first on the issue of a permanent injunction under the Uniform Trade Secrets Act.  It will be persuasive authority in all states, except the four which have not adopted the UTSA.  Perhaps more importantly, though, the case clearly sets cases brought under the UTSA, state law, outside the limitations of eBay on issuance of a permanent injunction when a statutory violation has been established.

For business men and women, the lesson is clear.  If you steal property of a competitor there is a significant downside if you get caught.  There is also a significant downside if you get caught later destroying evidence during the course of the trial.  No judge would take kindly to that.  It goes to the heart of being able to have a fair trial.  Kolon’s egregious misconduct permeates every aspect of this case and the court’s opinion.

Instead to taking their company to new heights and building an empire for themselves, the key executives of Kolon may instead be known for the company’s collapse.  They not only rolled the dice on the future of their company, they did so with no small amount of personal risk as well – time away from their families in a foreign country, living in the spartan accommodations of a U.S. prison.

Copyright 2012 David G. Harrison.  All Rights Reserved.

[1] 547 U.S. 388, 26 S.Ct. 1843,164 L.Ed.2d 625 (2006)

[2] See Audi AG v. D’Amato, 469 F.3d 534 (6th Cir. 2006);  North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008); Voices of the Arab World, Inc. v. MDTV Medical News Now, Inc., 645 F.3d 26 (1st Cir. 2011)

[3] See PBM Products, et al. v Mead Johnson (4th Cir. 2011)

[4] See Reno Air Racing Association v. McCord, 452 F.3d 1126 (9th Cir. 2006); Abercrombie & Fitch Co. v Moose Creek, Inc., 486 F.3d 629 (9th Cir. 2007); Marlyn Nutraceuticals, Inc. v. Muchos Pharma GmBH & Co., 571 F.3d 873 (9th Cir. 2009)

[5] 304 U.S. 64 (1938)

[6] Capital Tool & Mgf. Co., Inc. v.  Maschinenfabrik Herkules, Hans Thoma Gmbh, 837 F.2d 171, 172 (4th Cir. 1988)

[7] Like Kolon,  Capital Tool involved the alleged violation of the Virginia Uniform Trade Secrets Act; but unlike Kolon, Capital Tool involved a request for a preliminary injunction, not a permanent injunction after a trial on the merits.  The trial court in Capital Tool denied the preliminary injunction which the Fourth Circuit affirmed.  The Virginia Uniform Trade Secrets Act provides that “(a)ctual or threatened misappropriation may be enjoined” (emphasis added).  Code of Virginia §59.1-337 A

[8] Code of Virginia §59.1-336 et seq.

[9] 559 F.3d 110 (2d Cir 2009)

[10] Nordson Corp. v. Plasschaert, 674 F.2d 1371 (11th Cir 1982)

[11] Lamb-Weston, Inc. v McCain Foods, Ltd., 941 F.2d 970 (9th Cir. 1991)

[12] Milgrim on Trade Secrets §15.02[1][e]

Largest Health Care Fraud Settlement in U.S. History

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July 2  |  Headlines  |   david

GlaxoSmithKline LLC agreed today to plead guilty and pay $3 billion to resolve criminal charges brought by the U.S. Justice Department for introducing misbranded Paxil and Wellbutrin into interstate commerce, and failing to report safety data about the diabetes drug Avandia, and also to resolve civil claims brought by the government for alleged false price reporting practices.  It is the largest payment ever by a drug company.  http://1.usa.gov/M1nehB

Supreme Court Upholds Health Care Law

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June 28  |  Headlines  |   david

The Supreme Court today released its opinion upholding the constitutionality of the Patient Protection and Affordable Care Act.  http://www.scotusblog.com/

Service Mark Infringement – Eighth Circuit

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May 31  |  Headlines  |   david

The First National Bank in Sioux Falls v. First National Bank South Dakota

 In this service mark infringement suit over two banks using similar names, on May 25, 2012 the Eighth Circuit affirmed the issuance of a permanent injunction.  It held that there was sufficient evidence in the record of likelihood of confusion that the District Court of South Dakota’s factual finding of likelihood of confusion was not clearly erroneous.

 In an earlier decision, the court had not extended the injunction to prevent First National  Bank of South Dakota from using its full name.  In a redesigned logo and in advertising materials, FNB SD then used its full name but highlighted “First National” and “First National Bank” and minimized “South Dakota.”

 After the first suit, First National Bank of Sioux Falls federally registered its mark, so the second suit was brought under the Lanham Act.  In this second suit, the use of the redesigned logo and advertising materials was enjoined; however, the court held this was not an “exceptional case” meeting the statutory standard for the award of attorneys fees.

http://law.justia.com/cases/federal/appellate-courts/ca8/11-1568/11-1568-2012-05-25.html