In Lucasfilm Ltd. v. Ainsworth [2009] EW Court of Appeal Civ 1328 (16 December 2009), on an appeal from the Chancery Division, the Court of Appeal (Court of Appeal) rejected the Plaintiff-Appellant Lucasfilm’s appeal in respect of copyright non-infringement and of the lack of enforcement of a US judgement in the UK. Defendant-Respondent Ainsworth cross-appeals the decision to enforce the US copyright.
In the course of making the first Star Wars film paintings and drawings were produced showing “stormtroopers” in their helmets and armour as well as a clay model of a stormtrooper helmet. Ainsworth was asked to produce a plastic version based on the clay model and created a sculpted version incorporating his own improvements. Ainsworth subsequently made and sold copies of the helmet. After trial in the Chancery Court (CC) Lucasfilm had obtained a default judgment for trade-mark and copyright infringement in California against Ainsworth in the sum of $20M (US) and was granted an injunction preventing Ainsworth from advertising the identified props in, or sending them to, the US. 
By
Patrick Hui on January 27th, 2010 in
Canada: Patents
In Lundbeck Canada v. Minister of Health, 2009 FC 1102, the Federal Court of Canada (FC) dismissed Lundbeck’s prohibition application against Ratiopharm in respect of two patents relating to memantine hydrochloride. Canadian patents 2,014,453 (‘453 patent) and 2,426,492 (‘492 patent) were listed by Lundbeck on the Patent Register under section 4 of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 (PMNOC Regulations). The patents relate to memantine, a drug used to treat individuals with Alzheimers. The ‘453 patent outlines the mechanism of action for memantine and the ‘492 patent suggests a method for combining memantine with other acetylcholine inhibitors (ACE inhibitors) to provide a synergistic effect. Ratiopharm served a Notice of Allegation on Lundbeck alleging that both the ‘453 and the ‘492 patents were invalid. The FC ruled that Ratiopharm’s allegations of invalidity were justified with respect to both patents. In doing so, the FC employed the tests for anticipation, obviousness, utility and found a lack of good faith prosecution due to the failure to specifically identify adverse material in a disclosed prior art reference.
In NPS Pharmaceuticals v. Biofarma (2009 FC 172), the Federal Court upheld the Trade-marks Opposition Board’s (“the Board”) decision to dismiss NPS Pharmaceuticals’ (“NPS”) application to register the mark PREOS based on proposed use in association with pharmaceutical preparations for the treatment of certain bone diseases. Biofarma, Société par Actions Simplifiée (Biofarma), whose proposed marks PROTOS and PROTELOS had been accepted, but not yet registered, in association with nearly identical wares, opposed the application.
In The Cold War Museum, Inc. v. Cold War Air Museum, Inc. the Court of Appeals for the Federal Circuit (“CAFC”) reversed the Trademark Trial and Appeal Board’s (“TTAB”) decision (#92047391), which had cancelled the registration of the Cold War Museum’s service mark THE COLD WAR MUSEUM (Serial 76487216).
The TTAB had initially dealt with the issue of whether the registrant’s Cold War Museum’s service mark had acquired distinctiveness and was registrable pursuant to section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f). However, the TTAB erred in cancelling the registration after it held registrant Cold War Museum had not proven the acquired distinctiveness of its mark. The CAFC, upon de novo review of the TTAB’s legal conclusions, reversed the decision.
In Loro Piana S.P.A. v. Canadian Council of Professional Engineers (2009 FC 1096), the Federal Court reversed a Hearing Officer’s decision to delete certain wares from Loro Piana’s mark, ING. LORO PIANA & C. (“the PIANA mark”), for non-use. On appeal, Loro Piana was able to show that invoices that had been before the Hearing Officer, which referred to the wares in question by code in fact established use, by filing additional exhibits explaining the meaning of those codes. The Court also held that, by adding the text “FABRICS MADE IN ITALY” and “Super 120’s,” Loro Piana had not deviated from the registered form of its trademark as the text would not have been perceived as forming part of the PIANA mark itself. Similarly, cautious variations can be made from a mark, in this case, Loro Piana used a script version of the PIANA mark, so long as the same dominant features of a mark are maintained and the differences are not so unimportant as not to mislead an unaware purchaser.
In Loro Piana S.P.A. v. Canadian Council of Professional Engineers (2009 FC 1095), the Federal Court reversed a Hearing Officer’s decision to delete certain wares from Loro Piana’s mark ING. LORO PIANA & C. & DESIGN (the “Mark”), for non-use. On appeal, Loro Piana was able to show that invoices that had been before the Hearing Officer, which referred to the wares in question by code, in fact established use by filing additional exhibits explaining the meaning of those codes. The Court also held that by adding the text “FABRICS MADE IN ITALY,” Loro Piana had not deviated from the registered form of its trademark as the text would not have been perceived as forming part of the mark itself.
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