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Game, set, affirmance

By Rebecca Tushnet

Marcinkowska v. IMG Worldwide, Inc., 2009 WL 2562745 (Fed. Cir.)

Marcinkowska, a former pro tennis player, has a patent for a dual surface for a sport event/game. She sued defendants for infringement as well as Lanham Act violations based on their staging of a tennis match in Spain on a dual-surface court, ?The Battle of the Surfaces.? The Battle featured the then-top-ranked grass player, Roger Federer, against the then-top-ranked clay player, Rafael Nadal. (Nadal won.)

The court of appeals affirmed the dismissal of the claims against an Argentine ad agency on jurisdictional grounds. Against IMG, the court affirmed the dismissal of the patent claims because US patent law isn?t extraterritorial and IMG didn?t make, use, sell, or offer for sale the subject matter of the patent, even though (1) its globally accessible website promoted the Battle, used pictures of the hybrid tennis court, promoted ticket sales in the United States, and enabled the download of photographs and videos of the match and (2) IMG controlled and was paid for the broadcast rights to the Battle in the US and promoted its services using images from the Battle. The court of appeals agreed that these allegations stretched the definition of ?use? too far. The hybrid tennis court wasn?t used in the US; it was used in Spain, and that use was broadcast in the US.

The Lanham Act claims also failed. They were based on the section of the Battle website stating ?the idea for the hybrid court ?began with an idea by Pablo Del Campo, president of Del Campo Saatchi & Saatchi.?? According to the court of appeals, ?United States Patents and Trademarks do not protect ?ideas?--they protect novel, nonobvious, and useful inventions and marks associated with goods or services.? There was no false advertising of any ?name, description, or origin? of Marcinkowska?s goods or services in the US. This is all a bit confusing, given that (1) the court previously classified her claim as arising under §43(a)(1)(B), thus it?s not a trademark claim; and (2) the Lanham Act explicitly covers misstatements about one?s own goods and services?i.e., the Battle?as well as misstatements about others?. Of course, using standard doctrine, Dastar plus §43(a)(1)(B)?s materiality/competition requirements dispose of this claim equally quickly, but I?d classify this case as an example of persistent confusion about the relationship between trademark and false advertising law.

Full post as published by 43(B)log on August 23, 2009 (boomark / email).