Harley-Davidson, Inc. v. Grottanelli
164 F3.d 806 (2d Cir. 1999)
Facts: Beginning in the 1960’s, large motorcycles were referred to as hogs my motorcyclist.
Then, in the 1980’s, the word hogs became associated with Harley Davidson bikes. In 1981. In
1983, the company formed a group called Harley Owners Group, and registered the acronym
H.O.G in 1987. Harley-Davidson has used variations of their bar-and-shield logo over the years.
Ronald Grottanelli, in 1969, opened a motorcycle repair shop named The Hog Farm. After 1981,
Grottanelli sold products such as Hog Wash engine degreaser and Hog Trivia board game. He
has also used variations of the Harley-Davidson logo since 1979 on shirts and signs. He was
forced to stop using the Harley-Davidson name in 1982 after receiving a letter from the company
but continued to use the bar and shield.
Below: From a judgment for Harley for infringement of the bar- and-shield trademark and an
injunction prohibiting the use of the word hog in reference to some of his products and services,
Grottanelli appealed
Issue: Can Grottanelli use “hog” and the bar-and-shield logo? Was it okay for the local dealer to
use the modified logo to promote business?
Decision: Reversed for the use of the word hog, and affirmed for the bar-and-shield logo.
Rationale: Hog: “..No manufacturer can take out of the language a word, even a slang term, that
has generic meaning as to a category of products and appropriate it for its own trade- mark use..”
Hog cannot be protected because it was still generic to the the relevant category of products prior
to the proprietor’s trademark use and registration. Harley-Davidson states that Hog should be
protected because consumers were referring their bikes to the term previously, but the word is
generic and has still been used generically recently. “Like any other manufacturers with a
product identified by a word that is generic, Harley Davidson will have to rely on all or a portion
of its trade name to identify it brand…”. Bar-and-shield logo: Grottanelli admitted to
“purposefully suggest an association with Harley” with his variation of the logo. Grottanelli
argues that this is a protectable parody. Since Harley-Davidson uses their logo on their repair
shops and services, Grottanelli can no longer use his logo or any logo that resembles theres to
prevent confusion.
My Thoughts: I agree with the decision. I think that the logo and anything particular to Harley
Davidson shouldn’t be used, but the generic words can be.
Cariou v. Prince
714 F.3d 694 (2nd Cir 2013)
Facts: Patrick Cariou, a professional photographer, published copyrighted work at the Eden
Rock hotel and at the Gagosian Gallery. Prince use the photographs and altered them in ways
such as painting ‘lozenges’ over the faces or adding guitars. Prince added works of other artist
into some.Cariou sued Prince and Gagosian. Prince nad Gagosian raised the defense of fair use.
The lower court held that Orunce wasn’t entitled to a fair use defense.
Below: The court ordered all of the infringing works to be delivered to Cariou for ‘impounding,
destruction, and other disposition’.
Issue: Was fair use a limitation to the copyright of Cariou’s work? Did the four factor rules
prove otherwise?
Decision: Reversed in part, vacated in part.
Rationale: Using the four factor fair use determination rules, some caused a reversal in decision
and some called for the decision to be vacated. The first rule, that in order for fair use to be
applied, the secondary work must create new information, aesthetic, new insight and
understanding. Or it must “comment on, relate to historical context of, or critically refer back to
the original work”. It was found that Prince’s work was completely different and new stemming
off from Cariou’s. Prince used collage, color, and was crude, whereas Cariou’s work depicted
natural beauty and was black and white. Therefore the first rule, the purpose and character of the
use, proved that the majority of Princes works were different than Cariou, except a few. The
second rule questions the nature of the work. Prince’s work’s nature was completely different
from Cariou’s from the style, to color, to media. The third rule, if the secondary work contained
significant portions of the original work, was seen a true. Prince’s work contained significant
portions of Cariou’s work. The Fourth rule, if the secondary work affected or urups the original
works market, was found to be hard to determine. Prince’s work was so different that there was
no evidence that it affected Cariou’s market. “The court found that the nature of the copyrighted
work weighed against a fair use determination... The court also found that the ‘amount and
substantiality’ did not weigh against fair use”
My Thoughts: I think that any use of another person's artwork without permission should not be
allowed and that if it is is should be destroyed.
Chapter 9 Case
Alice Corporation Pty. Ltd. v. CLS Bank International
134 S. Ct. 2347 (2014)
Facts: Alice Corporation held a patent that uses a computer to be a third party intermediary to
minimize the risk associated with the exchange of financial obligations. The computer creates
and updates “shadow” records that reflect the value of each parties accounts that are at exchange
institutions. This permits the parties from only spending what they have in the account. At the
end of each day, the computer sends instructions to the exchange institution to carry out the
permitted transactions. CLS Bank International operates a global network that facilitate money
transactions.
Below: CLS sought a declaratory judgment that Alice’s patent was invalid
Issue: Is the Alice Corporation patent valid or invalid due to the claim laws of nature, natural
phenomena, and abstract ideas.
Decision: Invalid
Rationale: Judge Thomas states that “Laws of nature, natural phenomena, and abstract ideas are
not patentable”. There are two concerns that determine if something is patentable. First we must
see whether the claims at issue are directed to one of those patent ineligible concepts. If they are,
then what else is there in the claims before us? If something is patent-ineligible it means that its
an abstract idea. This comes from the rule “an idea itself is not patentable”. If a company makes
a claim that recites an abstract idea, they must add additional features to ensure that the claim is
more than an effort to monopolize an abstract idea. The claims in this case are directed at an
abstract idea with no additional features, making it patent-ineligible.
My Thoughts: I agree with this case and the requirements to make a patent legitatment.
Chapter 9 Case
EBay, Inc. v. MercExchange, LLC
547 U.S. 388 (2006)
Facts: EBay operates a popular Internet website that allows private sellers to list products they
wish to sell at either an auction or a fixed price. MercExchange, LLC, sought to license its
business method patent to eBay, but no agreement was reached. In MercExchange patent
infringement suit, the jury found that the patent was valid and eBay infringed it and $29.5
million in damages were appropriate. The District Court denied MercExchange’s motion for
permanent injunctions against patent infringement absent exceptional circumstances.
Below: The Circuit Court of Appeals reversed, U.S. Supreme Court granted certiorari.
Issue: Did the plaintiff seeking a permanent injunction satisfy a four-factor test before the court?
Decision: Reversed and Remanded.
Rationale: “A plaintiff must demonstrate: (1)that is has suffered an irreparable injury; (2) that
remedies available at law, such as monetary damages, are inadequate to compensate for that
injury; (3)that, considering the balance of hardships between the plaintiff and defendant, a
remedy in equity is warranted; and (4) that the public interest would not be disserved by
permanent injunction”. The Patent Act also declared that “patents shall have the attributes of
personal property”, including “the right to exclude other from making, using, offering for sale or
selling the innovation.” Neither of the courts below correctly applied the traditional four-factor
framework that governs the award of injunctive relief, we vacate the judgment of the Court Of
Appeals, so that the District Court may apply that framework into the first instance.
Hallmark Cards, Inc. v. Monitor Clipper Partners
758 F.3d 1051 (8th Cir. 2014)
Facts: Hallmark Cards Inc., hired a consulting group, Monitor Company Group, to compile
research on the greeting cards market. Monitor then created PowerPoint presentations containing
the findings. Hallmark and Monitor signed confidentiality agreements preventing Monitor from
sharing these findings with anyone else. However, Monitor was close with Clipper, a private
equity firm founded by two of Monitor’s original partners. Clipper was interested in acquiring
Recycled Paper Greetings, from Hallmarks competitor. Clipper asked for Monitor to give them
the PowerPoints and Monitor did. Hallmark settled its claims of trade secret misappropriation
with Monitor but the case against Clipper went to trial. The jury awarded Hallmark $21.3 million
in compensatory damages and $10 million in punitive damages.
Below: Appealed
Issue: Were the PowerPoint presentations “trade secrets” under the Missouri Uniform Trade
Secrets Act?
Decision: The jury had sufficient evidence before it to find that Hallmark’s PowerPoint
presentations constituted trade secrets under MUTSA.
Rationale: Clipper argues that the presentations were not “the subject of efforts…to maintain
[their] secrecy” because Hallmark published the central conclusions of the presentations before
Clipper acquired them. The value of a trade secret is not dependent on how much of the
information is otherwise available because the effort of compiling useful information is, of itself,
entitled to protection even if the information is otherwise generally known. The value of the
trade secret has diminished over time.
My Thoughts: I think that it was wrong of them to share the presentations after agreeing not to
and they deserve some damage compensation.