• INTELLECTUAL PROPERTY RIGHTS

U.S. 6th Circuit Court of Appeals

Cincom Sys., Inc. Vs. Novelis Corp.

A series of mergers Novelis underwent as part of an internal corporate restructuring resulted transfer of the software license Cincom had granted to a former Novelis subsidiary - Whether the transfer of the license under Ohio law is perissible.

The district court determined that Alcan Ohio's merger with Alcan Texas effected a transfer of the license under Ohio law. The district court entered summary judgment as to liability for Cincom and held that Novelis's actions led to an impermissible transfer of the software license. Hence, the present appeal. Novelis argued that the district court erred by concluding that a series of mergers Novelis underwent as part of an internal corporate restructuring resulted in a prohibited transfer of the software license Cincom had granted to a former Novelis subsidiary. The Court held that as per the Ohio Law upon a merger, "the separate existence of each constituent entity other than the surviving entity . . . shall cease." Alcan Ohio, the rightful holder of the Cincom license, thus no longer exists as a legal entity under Ohio law. Ohio law further provides that the license once held by Alcan Ohio automatically vested by operation of law in Novelis Corporation, Alcan Ohio's successor, after the completion of the corporate restructuring. The only legal entity that can hold a license from Cincom is Alcan Ohio. If any other legal entity holds the license without Cincom's prior approval, that entity has infringed Cincom's copyright because a transfer has occurred. Simply put, in the context of a patent or copyright license, a transfer occurs any time an entity other than the one to which the license was expressly granted gains possession of the license. Consequently, Novelis has infringed upon Cincom's copyright. The judgment of the district court is therefore affirmed.

• CIVIL

United States Court of Appeals For the First Circuit

ASTRO-MED, INC., Plaintiff, Vs. NIHON KOHDEN AMERICA, INC. AND KEVIN PLANT 

Respondent signed an employee agreement that contained non-competition and non-disclosure provisions - Appellant filed suit against Plant alleging breach of contract and misappropriation of trade secrets - Respondent moved to dismiss the lawsuit under Federal Rule of Civil Procedure 12(b)(2) on the ground that the district court did not have personal jurisdiction - Respondent contended that Rhode Island was not the proper venue for Astro-Med's lawsuit, and the district court should have either dismissed the claim or transferred the case to a different district in accordance with 28 U.S.C. § 1404 - Whether Rhode Island is proper forum

Held, Astro-Med and Plant entered into an employment contract in Rhode Island, the district in which Astro-Med was headquartered, that contained the non-compete and non-disclosure clauses at issue here. With full knowledge of the Employee Agreement and its contents, Nihon Kohden hired away Plant, thereby interfering with Astro-Med's contract and misappropriating its trade secrets. Because Astro-Med was headquartered in Rhode Island, this district is one of the places where the tortious interference and misappropriation of trade secrets occurred and where the harms from these torts were felt. Therefore, district court did not err in refusing to dismiss the claims pending against Nihon Kohden in Rhode Island for improper venue.