Federal Circuit IP
Larball Publ’g Co., Inc. v. Lipa
Larball Publ’g Co., Inc. v. Lipa, No. 22 CIV. 1872 (KPF), 2025 WL 936536 (S.D.N.Y. Mar. 27, 2025)
Issue: Under copyright law, is a combination of individual, non-copyrightable elements of a creative work protectable?
Holding: In this case, no. There is no substantial similarity (and thus no copyright violation) because the similarity between the works concerns only non-copyrightable elements.
Background:
- Plaintiffs are music publishers who acquired the copyright to the 1979 song Wiggle through assignment, and the copyright to another song Don Diablo through a separate copyright infringement action. Pop star Dua Lipa is the primary recording artist, copyright holder, and author of the 2020 pop song Levitating. Other Plaintiffs included publishers and other authors.
- Plaintiffs brought the initial complaint on March 4, 2022 with the Southern District of New York alleging copyright infringement. On Aug. 8, 2023, the court denied defendants’ motion to dismiss. Larball Publ’g Co., Inc. v. Lipa, No. 22 CIV. 1872 (KPF), 2023 WL 5050951 (S.D.N.Y. Aug. 8, 2023). The case proceeded to discovery on the theory of substantial similarity between the plaintiff’s songs “Wiggle and Giggle” and “Don Diablo” and defendants’ song “Levitating.”
Key analysis:
- Plaintiffs adequately alleged ownership of a valid copyright and adequately alleged a striking similarity theory of actual copying. But this was not enough to succeed.
- Plaintiff identified a list of elements shared between the three songs, including groupings of repeated 16th notes, singing in a “patter style,” pop music style with a disco feel, and more.
- The court determined each of these elements are individually non-copyrightable, but further, they lack sufficient originality as combined to be protectable under copyright law, even though “it is possible that a ‘layperson’ could listen to portions of Plaintiffs’ and Defendants’ songs and hear similarities.”
- The court heavily relied on a similar recent song copyright infringement case Structured Asset Sales, LLC v. Sheeran, 120 F.4th 1066 (2d Cir. 2024), in which Plaintiff failed to show copyright infringement by Ed Sheeran’s song of an earlier Marvin Gay song. The defendant’s expert had shown that the same combination of elements was in other well-known songs, and the court noted that adopting the plaintiff’s selective claim would “risk granting a monopoly over a combination of fundamental music building blocks.”
Takeaways: Courts appear to be focusing more on the technical aspects of copyrightable material, dissecting material rather than considering the overall impression of a given work, and relying on experts.
Dollar Fin. Grp., Inc. v. Brittex Fin., Inc., No. 2023-1375, 2025 WL 850653 (Fed. Cir. Mar. 19, 2025)
Issue: Can the zone of natural expansion doctrine be used offensively to establish priority over another’s established trademark rights?
Holding: No. The zone of natural expansion doctrine is purely defensive.
Background: Defendant used the mark MONEY MART for loan services in the 1980s, then expanded to offer pawn shop services in 2012, and registered two marks with the USPTO claiming both loan and pawn shop services. Plaintiff used the mark MONEY MART for pawn shop services in the 1990s, and sued defendant for infringement, arguing it had senior common law rights under 15 U.S.C. § 1052(d).
Key analysis:
- In this case, the court applies the zone of natural expansion doctrine to the product line rather than to geography — for any goods or services which purchasers might reasonably expect to emanate from it in the normal expansion of its business under the mark.
- It was undisputed that Plaintiff used MONEY MART for pawn shop services first. But Defendant argued that because pawn shop services are a natural expansion of loan services, Defendant should have priority in the mark. But the court determined that “the zone of natural expansion cannot be used to establish priority in different goods or services, especially when such use could conflict with the prior use of another.”
- As such, the court required the Defendant to delete “pawn shops” from its goods recitals in its trademark registrations.
Takeaways:
- If a client has a trademark registration, and we flag a potentially problematic application for the same or similar mark but for different goods or services, we may consider opposing that application and frame the arguments under this doctrine.
- This decision may suggest the zone of natural expansion doctrine is broader than the likelihood of confusion doctrine. Or it may just be another way to argue the second and third Du Pont factors.
Maquet Cardiovascular LLC v. Abiomed Inc., No. 2023-2045, 2025 WL 876718 (Fed. Cir. Mar. 21, 2025)
Issue: During claim construction, does a prosecution disclaimer apply if it addresses an argument from a related patent’s history?
Holding: No, unless the two patents’ claims are highly related; and the patent owner made a clear and unmistakable disavowal
Background:
- Plaintiff owns a patent for an intravascular blood pump system for deploying a blood pump to a desired location in a patient’s artery, and sued defendant competitor for infringement.
- At the district court, the judge’s claim construction relied on a prosecution disclaimer Plaintiff allegedly made during the application process for a different, related patent. Given this claim construction, the parties stipulated that there was no infringement. Plaintiff then appealed to the Federal Circuit, which determined that the judge’s claim interpretation was incorrect.
Key analysis:
- Defendant first argued that Plaintiff made a prosecution disclaimer during the prosecution history for one of its related patents, and that that limitation should also be applied to the patent in suit. The court determined that the two patents’ relevant claim language were not highly related, and thus the earlier arguments were not applicable to the patent at suit.
- Then Defendant argued other claim language in the patent at suit should be constructed limitedly because Plaintiff made a limiting statement during the prosecution history of another related patent – a great-great-grandparent. The court found these two patents’ claim language was highly similar (nearly identical), and so a prosecution disclaimer made for the grandparent patent could be applied to the patent at suit.
- However, the court determined that “despite the similarity of claim limitations, the intrinsic record shows that [Plaintiff] did not make a clear and unmistakable disavowal.”
- Defendant argued Plaintiff did make a prosecution disclaimer because it acquiesced to statements made by the examiner regarding prior art in a second notice of allowance by not responding. But “an applicant’s silence in response to an examiner’s notice of allowance will generally not rise to a clear and unmistakable claim disavowal.” Defendant also argued Plaintiff confirmed the examiner’s statements in its arguments made during IPR proceedings regarding prior art. But the court determined even these statements were not clear, unmistakable disclaimers.
Takeaways: Not responding to an examiner’s reasons for allowance does not necessarily trigger prosecution history disclaimer, but we should consider a response if the examiner’s comments are more limited than claim terms.