Trademarks / Functionality

Kimberly-Clark Finds a Soft Touch on Appeal
by Natalie A. Bennett

The U.S. Court of Appeals for the Seventh Circuit, on a de novo review of a district court grant of summary judgment in favor of defendant in an unfair competition and trademark infringement suit involving patterned toilet paper, disposed of plaintiff's claim using ironic and candid prose to explain its conclusions. Georgia-Pacific v. Kimberly-Clark, Case No. 10-3519 (7th Cir., July 28, 2011) (Evans, J.).

Georgia-Pacific sued Kimberly-Clark over the design similarity between Quilted Northern and Cottonelle toilet paper. Both brands bear diamond-shaped designs on the surface of the paper, and Georgia-Pacific asserted that the Cottonelle brand infringed its allegedly "incontestable" trademarks. Kimberly-Clark defended on the basis that the functionality of the design trumped any goodwill plaintiff may have made in promoting its mark to consumers. After Kimberly-Clark prevailed on its functionality defense, Georgia-Pacific appealed. In affirming the district court decision, the 7th Circuit agreed that the functionality of the quilted diamond designed used on Quilted Northern toilet paper precluded Georgia-Pacific from relying on the Lanham Act to protect its mark, in large part because the plaintiff already had already opted to protect the quilted design through utility patents. The court was quick to point out that even where a mark has incontestable status under 15 U.S.C. § 1065, it does not make the mark "invincible."

In finding the pattern design embossed on the toilet paper was functional, the court focused its inquiry on post-TrafFix factors, assessing whether the design was "essential to the use or purpose of the article or it affects the cost or quality of the article." The relevant factors the court considered were the following: the existence of a utility patent, the utilitarian properties of any unpatented design elements, advertising that touted utilitarian advantages of the design elements, the feasibility of alternative designs to achieve the same purpose and the effect of the design feature on quality or cost.

In weighing the factors, the court's ultimate decision was heavily influenced by the fact that Georgia-Pacific already held utility patents disclosing the same lattice pattern it claimed as its trademark. After noting that while the embossed design on the accused product was indeed similar to the trademarked design, the court found the presence of the utility patents undercut Georgia-Pacific's right to trademark protection as it was not entitled to claims both patent protection and trademark protection on useful designs. The 7th Circuit cited Federal Circuit precedent explaining that utility patents (whether extant or expired) are strong evidence that the claimed features are functional. Here, since the "central advance" in the Georgia-Pacific utility patents claimed the same "essential feature" as was found in the Georgia-Pacific trademarks, the 7th Circuit concluded that the trademarks were invalid because it is patent law that "protects useful designs from mimicry." The court explained that having opted for patent protection, the plaintiff must "live with [its] choice" and was precluded from blocking innovation through trademarks.

Lanham Act / False Advertising

Lanham Act Attorneys' Fees Awarded in the Absence of Damages
by Eric Levinrad

The U.S. Court of Appeals for the Ninth Circuit held that even in the absence of an award of damages on a Lanham Act false advertising claim, a party can recover attorneys' fees after obtaining an injunction that confers substantial benefit to the public. TrafficSchool.com, Inc. v. Edriver Inc., Case No. 08-56518; -56588; 09-55333 (9th Cir., July 28, 2011) (Kozinski, C.J.).

Defendant Edriver operates the website located at DMV.org, which serves as a repository of driving-related information. Edriver receive revenues from selling sponsored links and collecting fees for referring website visitors to other sponsored sites. The plaintiffs market and sell traffic school and drivers' education courses. The plaintiffs brought claims against the defendants for false advertising under the Lanham Act and violation of California's unfair competition statute, alleging that defendants actively fostered among consumers the false belief that the defendants' DMV.org website is an official state website sponsored by the Department of Motor Vehicles or is affiliated with a state DMV. To support their claims, the plaintiffs introduced evidence of consumer communications to the defendants reflecting the mistaken belief that the consumers were communicating with an official state DMV. After a trial, the district court held that the defendants violated the Lanham Act but rejected the claim concerning California's unfair competition statute. The district court issued a permanent injunction requiring the display of a splash screen warning users that the DMV.org site was not affiliated with any state DMV, but awarded no monetary damages to the plaintiffs and denied the plaintiffs' request for an award of attorneys' fees.

After ruling that the permanent injunction was overbroad and had to be modified, the 9th Circuit affirmed the district court's denial of damages to the plaintiffs, explaining that "[t]he Lanham Act allows an award of profits only to the extent the award 'shall constitute compensation and not a penalty.'" Noting that the advertising at issue did not directly compare the parties' respective products, the court reasoned that, "the injury to plaintiff 'may be a small fraction of the [defendants'] sales, profits or advertising expenses.'" As a result, the court found that the plaintiffs had failed to produce "any proof of past injury or causation" and affirmed the district court's ruling denying an award of damages.

Notwithstanding the denial of damages to the plaintiffs, the 9th Circuit reversed the district court's denial of attorneys' fees under the Lanham Act, which permits the recovery of fees in "exceptional cases." The court concluded that the district court had applied the incorrect standard by considering only the fact that the plaintiffs recovered no damages and by failing to consider the defendants' conduct. The court further explained that the district court should have considered the fact that the defendants' conduct was willful and that the plaintiffs obtained an injunction that conferred substantial benefit on the public by ending the confusion created by the DMV.org website. Accordingly, the court found it would be "inequitable to force plaintiffs to bear the entire cost of enjoining defendants' willful deception when the injunction confers substantial benefits on the public."

Practice Note: To support a claim for damages on a false advertising claim, a plaintiff cannot rely solely on evidence of the defendants' profits; evidence of past injury or causation is also required. Even if no damages are awarded, however, a request for attorneys' fees should be considered.

Trademarks / Licensing

Alleged Trademark Sublicense Assignable in Bankruptcy
by Shon Lo

Considering the fate to befall certain trademarks upon an owner's bankruptcy, the U.S. Court of Appeals for the Seventh Circuit Court determined that a trademark license is not assignable without the owner's express permission or in the absence of a clause explicitly authorizing assignment and a trademark license cannot be implied from a contract for services. In re XMH Corp., Case No. 10-2596 (7th Cir. August 2, 2011) (Posner, J.).

XMH and its subsidiaries, including one called Simply Blue, filed for Chapter 11 bankruptcy relief. XMH sought to sell Blue's assets, including a contract for services between Simply Blue and Western Glove Works. The contract included a sublicense from Western Glove Works to Simply Blue of the trademark JAG JEANS used in connection with various items of apparel. The sublicense as originally executed only lasted for two weeks. The parties also executed a contract for services to be performed during the year after the expiration of the trademark sublicense, under which Simply Blue agreed to provide a variety of services related to the apparel sold under the JAG JEANS mark. Three months after the expiration of the sublicense, the parties extended it retroactively to last six months and also extended the services contract. Later the parties opted to renew the services portion of the contract for an additional four years and provide for further renewal options which, if exercised, would extend to 2021.

Whether or not the contract could be assigned during bankruptcy turned on whether the contract was a trademark license. Western Glove Works objected to the assignment of the contract under bankruptcy, arguing the contract was a sublicense to Simply Blue of the JAG JEANS mark, which Western Glove Works itself had licensed from another company and which could not be assigned without its permission.

Judge Posner, writing for the court, recognized the "universal rule" that "a trademark license is not assignable without the owner's express permission," i.e., "in the absence of a provision authorizing assignment." This is because a trademark owner must exercise control over the quality of the trademarked goods. If a licensee were permitted to sublicense the trademark to a seller over whom the trademark owner, having no contract with the sublicense, has no control, the quality of the trademarked product could be degraded without notice, making the trademark deceptive. Because no provision in the Simply Blue-Western Glove Works contract authorized assignment, Simply Blue could not have assigned the trademark sublicense when it was in force.

Western Glove Works argued that the services provision of the contract which survived the expiration of the trademark sublicense was an implied sublicense, and therefore Simply Blue could not assign that portion of the contract either. The court disagreed, stating none of the provisions of the contract constituted "any sort of trademark license." Further, the court instructed "[i]f Western wanted to prevent Blue from assigning the service contract to another firm without Western's permission, all it had to do was get Blue to agree to designate the contract as a trademark sublicense, thus triggering the default rule." Therefore, the 7th Circuit affirmed the district court's reversal order, thus permitting assignment of the alleged trademark sublicense without the licensor's consent.

Trademarks / Sovereign Immunity

Voluntarily Invoking Federal Jurisdiction Constitutes Waiver of Sovereign Immunity
by Ulrika E. Mattsson

The U.S. Court of Appeals for the Seventh Circuit concluded that Wisconsin waived its sovereign immunity from trademark infringement counterclaims when it filed a federal lawsuit seeking to overturn a ruling by the U.S. Trademark Trial and Appeal Board (TTAB) brought under 15 U.S.C. 1071(b). Board of Regents of University of Wisconsin System v. Phoenix Int'l Software, Case No. 08-4164 (7th Cir., Aug. 5, 2011) (Wood, J.).

Phoenix International Software is a small software developer and the owner of a trademark registration for "CONDOR," used in connection with mainframe software that allows online programming. Phoenix filed a petition with the TTAB to cancel an identical trademark registration for "CONDOR," owned by the Board of Regents of the University of Wisconsin System (Wisconsin), which is an arm of the state of Wisconsin, used in connection with a different kind of software that manages processing power across a network of computers. After the TTAB granted the cancellation petition, Wisconsin sued in the district court under 15 U.S.C. 1071(b) for review of the decision. Phoenix filed a counterclaim for trademark infringement.

The district court issued summary judgment for Wisconsin, thereby reversing the TTAB decision. The district court also dismissed the counterclaims filed against Wisconsin based on sovereign immunity. A 7th Circuit panel reversed the summary judgment on the TTAB review as requiring a trial on fact issues related to confusion. However it affirmed the dismissal of the infringement counterclaims based on sovereign immunity. Phoenix sought and was granted rehearing on the sovereign immunity issue.

In a unanimous panel, the 7th Circuit on rehearing reversed its prior ruling on sovereign immunity. In examining the types of litigation conduct by a state that will constitute a waiver, the panel noted that the key characteristic must be the voluntariness of invoking federal jurisdiction. In finding that Wisconsin waived sovereign immunity, the court explained that "to maximize its chances of reversing the agency's decision, the state availed itself of the advantages of a fresh lawsuit, choosing that path over a number of others available. It would be anomalous if, after invoking federal jurisdiction, the state could declare that the federal court has no authority to consider related aspects of the case. Phoenix's counterclaims are compulsory in nature and thus lie well within the scope of Wisconsin's waiver of immunity."

Wisconsin argued that it had no choice but to take the appeal that it did. However, the court found that Wisconsin could have taken a variety of alternatives to that action. The court explained that, among other things, Wisconsin could have simply accepted the TTAB ruling, brought a state court action against Phoenix before the cancellation proceedings began or appealed the TTAB decision directly to the Federal Circuit. The court concluded that Wisconsin voluntary invoked federal jurisdiction and, hence, waived its sovereign immunity. Therefore, the court reversed the district court's grant of summary judgment, reinstated Phoenix's counterclaims and remanded for further proceedings.

Copyrights / Injunctive Relief

eBay Abrogates Presumption of Irreparable Harm in Copyright Cases in Ninth Circuit
by Rita Weeks

Considering the impact of the Supreme Court's 2006 ruling in the patent infringement case eBay Inc. v. MercExchange, L.L.C. on copyright cases, the U.S. Court of Appeals for the Ninth Circuit Court held that irreparable harm may no longer be presumed upon showing a likelihood of success when seeking preliminary or permanent injunctive relief in copyright infringement cases. Perfect 10 Inc. v. Google Inc., No. 10-56316 (9th Cir., Aug. 3, 2011) (Ikuta, J.)

Plaintiff Perfect 10 creates photographic images of nude models for commercial distribution. For several years, it featured its photographs in a now-defunct magazine PERFECT 10. More recently, it began offering them for viewing at a paid-subscription website. The plaintiff earns virtually all of it revenue from monthly subscriptions to view the password-protected photographs at its website. Defendant internet search engine provider Google uses an automated software program to obtain copies of publically available webpages and images for use in Google's search index. Google also offers an internet blog service, Blogger. Blogger account holders may upload images from the internet onto Google's server in order to post them on their blogs or may use a hyperlink to images hosted on other servers. To obtain the "safe harbor" protections of the Digital Millennium Copyright Act, Google employs a copyright infringement notification policy for its search and blog services, including the designation of an agent to receive "takedown" notices from persons alleging copyright infringement. Google requires takedown notices to include, among other things, the URL for the infringing material. Google forwards takedown notices to the Chilling Effects website, a nonprofit, educational project run jointly by the Electronic Frontier Foundation and various law schools, which posts such notices on the internet. Accordingly, even if Google removes allegedly infringing images from its search results, internet users can still find the URL for the allegedly infringing images on the Chilling Effects website.

The plaintiff moved for a preliminary injunction against Google, arguing that Google's web and image search and related caching feature, its Blogger service and its practice of forwarding the plaintiff's takedown notices to the Chilling Effects website constituted copyright infringement. The district court denied the plaintiff's motion for a preliminary injunction, holding that the plaintiff had not shown that it was likely to suffer irreparable harm in the absence of such relief and that the plaintiff had failed to satisfy any of the other requirements to obtain a preliminary injunction. The district court also held that Google was entitled to safe harbor protection under the DMCA for its caching feature, its Blogger service and, in part, its web and image search.

On appeal, the 9th Circuit considered whether the district court erred in denying the plaintiff's motion for preliminary injunction. To obtain a preliminary injunction, a plaintiff must show that it is likely to succeed on the merits, it is likely to suffer irreparable harm in the absence of a preliminary injunction; the balance of equities tips in its favor and an injunction is in the public interest. On appeal, the plaintiff argued primarily that because it had shown that it was likely to succeed on its copyright infringement claims, the court must presume irreparable harm. The 9th Circuit rejected this argument in light of the Supreme Court's 2006 ruling in eBay Inc. v. MercExchange, L.L.C., a patent case that held that an injunction may issue only in accordance with "traditional equitable principles," and effectively overruled the Federal Circuit's practice to issue a permanent injunction nearly automatically once a plaintiff shows infringement and validity. The 9th Circuit agreed with the U.S. Court of Appeals for the Second Circuit that nothing in the Copyright Act indicates congressional intent to authorize a "major departure" from the traditional four-factor test for injunctive relief to justify a presumption of irreparable harm. Therefore, the 9th Circuit explained, its "long standing rule" to presume irreparable harm upon a showing of likelihood of success in a copyright infringement case is "effectively overruled," both for preliminary and permanent injunctions. After concluding that the plaintiff had not made a sufficient independent showing of irreparable harm, the 9th Circuit affirmed the district court's denial of the preliminary injunction.

Practice Note: While the 9th Circuit mentioned one of its post-eBay trademark decisions in a footnote to the Perfect 10 decision, the court did not determine whether the 9th Circuit's traditional presumption of irreparable harm in trademark cases is abrogated by eBay. Therefore, whether irreparable harm may still be presumed in trademark infringement cases involving injunctive relief in light of eBay remains undecided in the 9th Circuit.

Copyright Infringement / Substantial Similarity

Ninth Circuit Adopts Lower Court's Use of Its Own "Blades of Chaos" to Filter Out the Unprotectable Elements of a Plaintiff's Copyright Infringement Claim
by Gene Folgo

The U.S. Court of Appeals for the Ninth Circuit adopted and affirmed the trial court's decision that no reasonable juror could conclude that Sony's God of War videogame contained substantially similar ideas and expression to any of the protectable elements contained in the plaintiffs' works. Dath v. Sony Computer Entm't Am., Inc., Case No. 10-15783 (9th Cir., July 29, 2011) (per curiam).

Plaintiffs Jennifer B. Dath and Jonathan Bissoon-Dath sued Sony alleging that Sony's God of War video game infringed their copyrights pertaining to two treatments, two screenplays and an illustrated map. To prevail on their claim, the plaintiffs were required to show that Sony had copied protected elements of that work. To establish copying, the plaintiffs had to show that Sony had access to the plaintiffs' works and that Sony's God of War game is substantially similar to the plaintiffs' copyrighted works.

To determine whether the works in question are substantially similar, the court applied an extrinsic test examining articulable similarities between the plot, themes, dialogue, mood, settings, pace, characters and sequence of events. In this analysis, non-protectable elements are filtered out and disregarded because copyright law protects only a writer's expression of ideas and not the ideas themselves. Non-protectable elements include general plot ideas, the scenes that flow naturally from them (scènes à faire), stock characters, historical events and clichéd dialogue.

In the works at issue, the court determined that the plot, dialogue, characters and settings were only similar as to non-protectable elements. Concerning alleged plot similarities, the similarities in the parties' works related to non-protectable elements such as a questing hero acting in accord with a divine power, antagonism between Greek gods and fighting between Athens and Sparta. Concerning alleged similar dialogue, the court determined that the only similar dialogue in the parties' works was not protectable—the clichéd phrases "knew no bounds" and "none has/have returned." Concerning alleged character similarities, the plaintiffs alleged similarities in characters such as Greek gods such as Ares, Zeus and Athena. The court determined that such characters were stock figures common not only in many contemporary stories, movies and video games, but also of the Western collective unconscious. While the court acknowledged that the parties' shared settings of Greece, Athens, Mount Olympus, Sparta and the Underworld did establish some similarity between the parties' works, the settings were generic and clichéd for stories involving ancient Greece and Greek gods.

Considering protectable elements of the parties' works, the district court held that the themes, mood and sequence of events in the works are not similar. For example, Sony's God of War game employed themes of violence, the search for divine forgiveness and the continuation of war, whereas plaintiffs' works employed the themes of democracy and achieving an era of peace and prosperity. The plaintiffs' works generally evoked a light-hearted mood with elements of romance and comedy, whereas Sony's work was dark and extremely violent. Sony's game contained virtually no light-hearted or comic moments, which began with the protagonist attempting suicide, repeatedly referenced his memories of and guilt over his past violent deeds and ended with violent images of World War II and Vietnam. Concerning style of storyline, the plaintiffs' works were all told in a linear, narrative fashion with scenes occurring one after another in logical sequence. Sony's game opened with what would ultimately be the second-to-last scene and is told through discordant flashbacks.

Based upon the similarities in unprotectable expression and lack of similarities in protectable expression between the parties' works, the district court concluded that no reasonable trier of fact could conclude that Sony's game God of War is substantially similar to any of plaintiffs' works to find infringement. Further, the plaintiffs pointed to no persuasive similarity in dialogue or narration that would suggest actual copying. Recognizing that the particular sequence in which an author strings a significant number of unprotectable elements can itself be a protectable element, the court concluded that the sequences of elements and the relationships between the elements were entirely dissimilar between the parties' works.

The 9th Circuit affirmed the district court's "well-reasoned" decision in a one-sentence order.

Copyrights / Statute of Limitations

Copyright Infringement Suit Survives Dismissal Based on Proposed Amended Complaint
by Lauren Nelson

Addressing for the first time the issue of whether a plaintiff can amend a copyright infringement complaint to add additional facts and obviate a statutory limitations defense, the U.S. Court of Appeals for the Fifth Circuit reversed in part the district court's judgment denying the plaintiff leave to amend the complaint. Jaso v. The Coca Cola Co., Case Nos. 10-20786; -2423 (5th Cir., Aug. 1, 2011) (per curiam).

Plaintiff Omar Jaso alleged that he composed a musical work entitled "El Juego." Jaso further alleged that in 1994, he learned that The Coca Cola Company was using the song "Always Coca-Cola" in an advertising campaign. Jaso alleged that Coca Cola derived its advertising jingle from his song without his permission. Plaintiff Jaso then sued Coca Cola and the advertising agency that created the advertisement for copyright infringement.

The defendants moved to dismiss Jaso's complaint, arguing that the plaintiff's claim for copyright infringement was facially barred by the Copyright Act's three-year statute of limitations. Jaso's claim should fail, the defendants argued, because Jaso was aware of his infringement claim in 1994 and Coca Cola stopped using the "Always Coca-Cola" song in its marketing efforts in 2000. Plaintiff moved to amend his complaint to provide additional details concerning his claims. To support their assertion that Coca Cola stopped using the "Always" song in 2000, the defendants provided the district court with a print-out of a webpage entitled "Highlights in the History of Coca-Cola Advertising" taken from the Library of Congress's website, which stated that Coca Cola stopped using the song in 2000. The defendants' counsel also stated on the record that Coca Cola stopped using the song in 2000. The district court ultimately dismissed Jaso's complaint, finding it to be barred by the statute of limitations.

On appeal, the 5th Circuit determined that the relevant test for dismissing a claim based on the statute of limitations defense is whether the plaintiff's response to the defense is foreclosed by allegations made in the original complaint. Accordingly, the court evaluated the allegations made in Jaso's proposed amended complaint to determine whether it alleged infringement within the limitations period. Because the plaintiff's proposed amended complaint contained an allegation that the defendants distributed the allegedly infringing song "from 1994 to the present," the court found that language sufficient to survive the defendants' motion to dismiss, as it alleged that the defendants committed some act of copyright infringement within the limitations period. In reversing the dismissal by the district court, the 5th Circuit declined to take judicial notice of the fact that Coca Cola stopped using the "Always" song in 2000 based on the print-out and statements made by counsel.

Trade Secret Misappropriation / Personal Jurisdiction

Personal Jurisdiction in Trade Secret Cases
by Amol Parikh

Addressing the proper application of the due process clause, the U.S. Court of Appeals for the Eighth Circuit revived the plaintiff's case for trade secret misappropriation, finding that a Spanish company's contacts with Missouri were such that it should have reasonably anticipated being sued in Missouri. K-V Pharma. Co. v. J. Uriach & CIA, S.A., Case No. 10-3403 (8th Cir., August 3, 2011) (Gilman, J.) (sitting by designation).

K-V is a Delaware corporation with its principle place of business in St. Louis, Missouri. Uriach is a Spanish corporation with its principle place of business in Barcelona, Spain. In 1993, K-V and Uriach entered into a contract to develop, manufacture and sell an antifungal cream with an ingredient developed by Uriach and a drug-delivery system developed by K-V. Pursuant to the contract, Uriach was to sell the antifungal cream throughout the world, except for the United States, Canada and Mexico. K-V and Uriach amended the contract twice—in 1998 and again in 2002. In 2005, K-V terminated the contract. After the termination, Uriach allegedly failed to return certain trade secrets and confidential information to K-V and later began marketing and selling a cream that allegedly used K-V's drug delivery system. K-V sued Uriach in Missouri for breach of contract and misappropriation of trade secrets, seeking damages and an injunction to prevent Uriach from selling the antifungal cream.

Uriach filed a motion to dismiss for lack of personal jurisdiction. In granting the motion, the district court found that Uriach's only contact with Missouri were letters, telephone calls, one meeting and a Missouri choice of law provision in the contract. The court held that these contacts were insufficient to establish personal jurisdiction. The district court also noted that the contract's contemplated future consequences would not occur in Missouri because Uriach agreed to do tasks that excluded the United States, Canada and Mexico. K-V appealed.

That issue on appeal centered on whether the district court has personal jurisdiction over Uriach. Reviewing the jurisdictional issue de novo, the 8th Circuit noted that Missouri's long-arm statute authorizes personal jurisdiction to the full extent permitted by the due-process clause. The due-process clause requires that a defendant purposefully establish "minimum contacts" in the forum state, such that asserting personal jurisdiction and maintaining a lawsuit against a defendant does not offend "traditional conceptions of fair play and substantial justice." Based on these principles, the court identified five factors that must be considered in determining whether sufficient minimum contacts exist: the nature and quality of contacts with the forum state; the quantity of contacts; the relationship of the cause of action to the contacts; the interest of the forum state in providing forum for its residents; the convenience or inconvenience to the parties. After noting that the first three factors are primary factors and the remaining two factors are secondary, the court addressed each factor in turn.

With regard to the first and second factors, the Court noted that Uriach had actual contacts with Missouri, including its officials coming to Missouri in 2001 to renegotiate the contract with K-V, paying money to K-V as agreed to in the contract and exchanging many letters, emails and telephone calls with K-V throughout the 12 years that the contract was in existence. In addition, Uriach anticipated having even more extensive contacts with Missouri, including selling and shipping the antifungal agent to Missouri so K-V could make the cream and sell it, as well as receiving payment from K-V within 30 days. The court concluded that these considerations tip the scales in favor of the forum state. The court also held that the third factor (relationship between the cause of action and the contacts) favors finding jurisdiction because K-V's breach of contract and misappropriation claims are related to the contacts Uriach had with Missouri. If the companies had not been involved in a long-term contractual relationship with one another, Uriach would not have had access to the trade secrets. Regarding the fourth factor, the court held that Missouri has an interest in providing a forum for its resident corporations. Finally, addressing the fifth factor, the court concluded that this factor largely balances out because a trial in Spain would be just as inconvenient for K-V as a trial in Missouri would be for Uriach. In sum, the court concluded that proper application of the five-factor test supports hearing the case in Missouri.

The Court also rejected Uriach alternative argument that K-V's complaint should be dismissed based on forum non conveniens. Under the doctrine of forum non conveniens, a court may decline to exercise jurisdiction and dismiss a case where that case would be more appropriately brought in a foreign jurisdiction. Such a determination is made based on the private interest of the litigants and the public interest. In connection with the private interest, Uriach argued factors such as location of evidence, including witnesses and documents in Spain, favors litigating in Spain. However, the court noted that part of K-V's claims will require it to establish that its delivery system includes protectable trade secrets and that will require evidence from Missouri. Thus, the court concluded that these private-interest factors were neutral. Uriach also argued that the public-interest factor favors litigating in Spain because K-V is seeking an injunction that, if granted would deprive Spanish women of an important medical treatment. Uriach argued that Spanish courts are better equipped to address such sensitive health-policy related issues. The Court rejected Uriach's argument and concluded that, if such evidence existed, a U.S. court could consider such evidence just as well as a Spanish court. As a result, because there were no exceptional circumstances necessary to invoke forum non conveniens, the Court denied Uriach's motion to dismiss.

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