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The District of Delaware is renowned as a patent litigation hot spot, but the district sees its fair share of other IP litigation. Two recent opinions shed some light on this practice and are useful for anyone seeking to file a trademark or copyright suit, or called to defend against one, in the district.

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First up is a trademark case at the motion to dismiss stage. Plaintiff Javo Beverage Company, Inc. filed suit against defendants Javy Coffee Company and Javy Coffee LLC (together, Javy) alleging infringement of Javo’s “Javo” marks relating to coffee-based beverages (as well as the standard unfair competition and unjust enrichment state law claims). Both Javo and Javy distribute coffee and coffee-related goods (and Javy has its own registration for a stylized “Javy Coffee” mark).&nbsp;

Javy moved to dismiss the complaint, arguing, among other reasons, that Javo had “failed to plausibly allege the existence of a likelihood of confusion between Defendants’ marks and Plaintiff’s marks.” Opinion at 3. Judge Richard G. Andrews disagreed, finding “Plaintiff’s allegations of likelihood of confusion to be plausible.” Id. Judge Andrews explained that both “Javo” and “Javy” are “made-up words” that “might be suggestive of java, a term often used to refer to coffee” and “could easily be confused” based at least in part on the fact that the companies were both “in the coffee business.” Id. at 3-4.&nbsp;

Although the result was not particularly surprising, Judge Andrews’s analysis was. Specifically, Judge Andrews stated that he did “not think assessing the likelihood of confusion from a full-blown Lapp factors analysis is appropriate” because a “[p]laintiff does not have to prove its case in its complaint” and the “‘existence of consumer confusion is a fact-intensive analysis that does not lend itself to a motion to dismiss.’” Id. at 4 (quoting Applied Underwriters, Inc. v. Lichtenegger, 913 F.3d 884, 897 (9th Cir. 2019)); see A&amp;H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 211 (3d Cir. 2000) (citing Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983) (setting forth 10 factors for determining the likelihood of confusion between marks)). Judge Andrews’s Javo opinion is a guidepost for parties that are either pleading infringement or trying to dismiss infringement claims early.

Next is a copyright case at the dispositive motion stage. The plaintiffs (all indirect subsidiaries of Johnson &amp; Johnson Surgical Vision, Inc.) filed a patent infringement suit accusing the defendants of infringing claims of 12 patents relating generally to patterned plasma-mediated lasers and their use in cataract surgery, the patents embodied in the Catalys® Precision Laser System. Via an amended complaint, the plaintiffs added claims for infringement of copyrights protecting the computer programs that operate J&amp;J Surgical Vision’s IntraLase® FS Model 2 and Model 3 Laser systems and its iFS® Advanced Femtosecond Laser systems.

The plaintiffs ultimately filed a Daubert motion seeking to exclude the testimony of the defendants’ expert regarding non-infringing alternatives relating to copyright damages, arguing in part that non-infringing alternatives are not relevant to calculating actual damages in copyright cases. Opinion at 1. Chief Judge Colm F. Connolly acknowledged that at least one district court held that, unlike in patent cases, “‘[t]he ability to avoid damages by rewriting a computer program, or a song, or reproducing a painting, should not be considered [in a copyright infringement case] because it would not implicate the originality of the expression being protected.’” Id. at 2 (quoting Goldman v. Healthcare Mgmt. Sys., Inc., 559 F. Supp. 2d 853, 875 (W.D. Mich. 2008)). Judge Connolly disagreed with that opinion, however, and distinguished copyright law as it applies to songs or paintings versus computer programs, citing favorably the Supreme Court that “applying copyright law to computer programs is like assembling a jigsaw puzzle whose pieces do not quite fit” (Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1198 (2021) (quotation marks omitted)) and that “[c]omputer code occupies a unique space in intellectual property” and a “library of code straddles [copyright and patent law]” because it is both “highly functional like an invention” but “yet, as a writing, it is also a work of authorship” (id. at 1212 (Thomas, J., dissenting)). Id. at 2-3.

Ultimately, Judge Connolly found that “[b]ecause of the functionality of computer programs ... it is appropriate in a copyright case to borrow from patent law’s remedial scheme” and therefore “a defendant whose computer program is accused of copyright infringement may ‘offer evidence of non-infringing alternatives to meet [the plaintiff’s] claim for the profits it would have received absent infringement under Section 504(b)’ of the Copyright Act.” Id. at 3 (quoting Oracle Am., Inc. v. Google Inc., 2016 WL 1743154, at *7 (N.D. Cal. May 2, 2016)). Future litigants in the District of Delaware should be aware of potential arguments relating to non-infringing alternatives as they potentially relate to both patent and copyright damages.

IP Litigation Update in the District of Delaware (Not Patents!)