Posts in Copyright

Since America’s earliest days, many creative and innovative toys have come through the consumer marketplace. Many have become so iconic they are now household names and synonymous with a moment in time for America’s youth. Some of the most popular of these toys continue to show up year after year under Christmas trees and – you guessed it – were…

The Grand Chamber of the Court of Justice of the European Union (CJEU) has ruled that supply to the public by downloading, for permanent use, of an e-book is covered by the concept of “communication to the public” rather than “distribution to the public.” Under Article 3(3) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (Infosoc Directive), the communication to the public right is not exhausted by any communication to the public or making available to the public. The dispute in this case was between two associations representing copyright holders on one hand and Tom Kabinet, which operates a website with a virtual market of second-hand e-books offered via a reading club, on the other hand. The associations argued that Tom Kabinet was making an unauthorized communication to the public.

Deciding whether or not to enforce one’s intellectual property rights is a significant decision for any business (or individual). Litigation in general tends to be an expensive proposition and intellectual property litigation ranks toward the top with regard to average cost. While the average total cost of U.S. trademark infringement and copyright infringement litigation varies depending on the nature of the case and the stakes involved, such costs (i.e., attorneys’ fees and third-party costs) average in the $300,000-$500,000 range. Patent infringement litigation is typically even more expensive. Intellectual property enforcement decisions therefore must be made with care, taking into consideration all relevant legal, financial, and other business considerations. This article discusses the considerations affecting intellectual property enforcement decisions through the prism of two examples: T-Mobile’s trademark rights in the color magenta and the very popular Baby Yoda GIFs that seem to be everywhere online. Both companies recently experienced considerable backlash when IP enforcement of these rights went wrong.

On December 2, the U.S. Supreme Court heard oral argument in the matter of Georgia v. Public.Resource.Org, Inc. The issue on appeal was on whether annotations to the Official Code of the State of Georgia, which were prepared by Mathew Bender & Co under the supervision of Georgia’s Code Revision Commission, which was itself created by Georgia’s General Assembly, were capable of copyright protection, or whether they were an integral part of the laws of the State of Georgia, which, like all legislation, is part of the public domain and cannot be copyrighted. The outcome of this decision will affect legal publishing schemes in a number of states which, similar to Georgia, contract the work of preparing annotations to private sector companies, which then monetize those copyrights through a license fee structure. Indeed, concern for states’ publishing schemes led to the Solicitor General’s office and various other states joining in on the side of petitioner, the State of Georgia, who is seeking to establish that the annotations are subject to copyright. The case also presents a fascinating, almost philosophical discussion on the nature of annotations and the legal or persuasive force they should be afforded.

This week in IP news in Washington, D.C., both the House of Representatives and the Senate have several hearings regarding tech and innovation topics before either house of Congress enters its December recess next week. In the House, hearings look to address challenges in critical raw earth materials, federal IT acquisition programs and a bill that would affect how pharmaceutical patent owners can negotiate drug prices with the Medicare and Medicaid programs. In the Senate, the Senate IP Subcommittee will explore modernization efforts at the Copyright Office, while other committees focus on data encryption issues and legislation for energy innovation. Elsewhere in our nation’s capital, The Brookings Institution has a very busy week, co-hosting an event on spreading the location of tech innovation hubs with the Information Technology and Innovation Foundation and presenting other programs on the impacts of fintech on brokered deposits and AI tech issues related to consumers and labor markets.

This week in Other Barks & Bites: the U.S. Supreme Court hears oral arguments over copyright status of the Official Code of Georgia Annotated; the Federal Circuit remands Ericsson appeal to calculate release payment in patent license; Apple, Ford and others urge the USPTO to retain policy against injunctions on companies practicing SEPs; Huawei asks the Fifth Circuit to undo the FCC’s ban preventing it from supplying U.S. networks; Sergey Brin and Larry Page relinquish executive duties at Google; U.S. antitrust regulators explore Amazon’s cloud business; Washington politicians send letter to ALI over Copyright Restatement Effort concerns; and Qualcomm challenges Judge Koh’s class action certification at the Ninth Circuit.

This week in Other Barks & Bites: the Federal Circuit issues precedential decisions regarding its authority to remand to the PTAB, patent prosecution history estoppel and expert testimony on motivation to combine for obviousness findings; China nominates its choice for WIPO Director while pledging to reach “social satisfaction” on IP protections by 2025; INTA announces Ayala Deutsch as the organization’s new president; the USPTO seeks public comments on information collection related to national security concerns; the TTAB applies Federal Rules of Civil Procedure to discovery requests; Hewlett Packard shares drop after quarterly revenues fall short of analyst expectations; and the PTAB allows additional briefing in a case after the possibility of Administrative Procedure Act violations were raised by a patent owner.

This year has included many twists and turns for IP stakeholders, particularly on the patent side. Most recently, the Federal Circuit’s decision in Arthrex has called into question the constitutionality of Patent Trial and Appeal Board decisions, and perhaps the Board itself. Elsewhere, Congress has been—unsuccessfully—attempting to step in and clarify U.S. patent law since early in the year, while the courts have continued to muddy the waters of patent eligibility law. The Federal Trade Commission’s case against Qualcomm, and Judge Lucy Koh’s decision in the case, have further called into question the United States’ ability to compete on the innovation front going forward. And yet, there have been some wins in other areas this year, including at the U.S. Patent and Trademark Office (USPTO), and there remain many reasons to be hopeful about the year ahead. IPWatchdog asked some IP experts to share what they have to be thankful for on the IP front this Thanksgiving, despite all the uncertainty. Hopefully, as those of you who celebrate the holiday enjoy your Thanksgiving dinners, these sentiments will inspire you to be thankful too.

This week in Other Barks & Bites: the U.S. Patent and Trademark Office issues an updated AIA Trial Practice Guide following SAS Institute v. Iancu; the AM-FM Act is introduced into Congress to update copyright law for terrestrial radio stations; VoIP-Pal.com defeats remaining IPRs challenging its patents at the institution phase; the Copyright Royalty Board announces cost of living adjustments in certain royalty rates; a Senate report shows that U.S. law enforcement didn’t adequately respond to Chinese IP theft for 20 years; China outpaces the rest of the world in terms of blockchain patent filing activities; and Apple joins Intel’s antitrust actions against Fortress Investment Group’s patent assertions.

The Supreme Court has agreed to hear Google’s petition for a writ of certiorari in its long-running case with Oracle. The High Court will decide: 1. Whether copyright protection extends to a software interface; and 2) Whether Google’s use of a software interface in the context of creating a new computer program constitutes fair use. In March 2018, the Federal Circuit issued its opinion in favor of Oracle in the case. See Oracle America, Inc. v. Google LLC. The Court found Google’s use of Java application programming interface (‘API packages’) not fair as a matter of law, reversing the district court’s decision on the matter. The ruling resurrected a multi-billion dollar copyright case brought by Oracle Corp against Google and was appealed to the Supreme Court in January 2019, after the Federal Circuit denied rehearing in August 2018. In a press release issued the same day Google filed its petition, Oracle dismissed Google’s move as “a rehash of arguments that have already been thoughtfully and thoroughly discredited” and said that Google’s “fabricated concern about innovation hides Google’s true concern: that it be allowed the unfettered ability to copy the original and valuable work of others as a matter of its own convenience and for substantial financial gain.”

This week in Other Barks & Bites: the Federal Circuit strikes down a district court’s finding of design patent infringement on summary judgment; the USPTO advises trademark attorneys to monitor filings to prevent against the unauthorized use of their names; the U.S. Copyright Office issues final rules eliminating options for physical material submissions for newspaper and serial registrations; the U.S. Supreme Court will take up Booking.com’s appeal of the rejection of its trademark application by the USPTO; AG Barr supports the FCC’s plan to restrict Huawei and ZTE equipment purchases through the Universal Service Fund; Nirvana’s copyright case against Marc Jacobs moves past a motion to dismiss; Biogen loses $3 billion in market value after PTAB hearing; and Amazon seeks an injunction against a patent owner asserting infringement claims against Amazon Fire product retailers.

Ownership of a valid copyright requires that the work be independently created by the author and have some “minimal degree of creativity,” as required by Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc. The Eleventh Circuit recently waded into this area of law in May of 2019 when it decided Pohl v. MH Sub I LLC. The question is: did they get it right? Dr. Mitchell Pohl is a dentist based in Florida who took before and after photographs of his patient’s teeth to show his efforts in cosmetic dentistry. Dr. Pohl personally took these photographs. After performing a reverse image search, Dr. Pohl determined that the defendant published certain images of Dr. Pohl’s patients without authorization. Dr. Pohl subsequently filed suit. The district court, in a decision on summary judgment riddled with puns about teeth and dentistry, determined that the images lacked creativity and originality to subsequently receive copyright protection.

This week in tech and innovation hearings in Washington, D.C., the U.S. House of Representatives gets underway on Wednesday by exploring rulemaking at the Environmental Protection Agency (EPA), regulating online platforms through antitrust law, preparing the medical workforce for innovation and checking the progress of NASA’s plans to put American astronauts on the Moon and Mars. Later in the week, House committees focus on innovation in water and geothermal energy as well as the impact of big tech on small businesses across America. Over in the Senate, the Senate Environment Committee holds a hearing to look at expanding commercial nuclear power and the Senate Commerce Committee will mark up various pieces of legislation, including one bill that would reauthorize compulsory licenses for satellite broadcasts under STELAR despite Copyright Office opposition to such reauthorization. Elsewhere in D.C., The Brookings Institution holds an event today to discuss potential biases that can develop through the use of algorithms in AI technologies.

As the relationship between copyright and the internet continues to develop and technical distinctions are increasingly cast aside for more practical perspectives, new licensing opportunities are becoming available for content owners and creators. Two recent developments concerning online service providers’ use of so-called “inline linking” and those providers’ potential liability for publicly displaying unlicensed content from third-party websites open the way for this new vein of potential income.Inline linking occurs when a service provider “embeds” on the provider’s website content that is hosted at another location or “destination URL” on the internet. This is achieved using HTML coding, which retrieves content from the destination URL and shows that content to visitors on the service provider’s site. The inline link in the code of the service provider’s website thus constitutes a sort of window or “frame” to content maintained at another location on the internet. This is in contrast to the use of a standard text hyperlink, which, after a click, simply directs users to a destination without showing the content hosted there. A new European Union copyright law and recent decisions from the Southern District of New York and the Northern District of California suggest that what was once thought to be non-infringing inline linking may now require service providers to obtain licenses or face claims of infringement.

The Supreme Court heard oral argument in Allen v. Cooper (Case No. 18-877) on Monday, November 5, 2019. Petitioner Allen claims that the State of North Carolina infringed his copyrights in images and video of the salvage of Blackbeard’s famed pirate ship. Relying on the Copyright Remedies Clarification Act (CRCA), Allen seeks monetary damages against the State. The State argues, and many lower courts have agreed, that the CRCA is unconstitutional and state sovereign immunity precludes Allen from recovering copyright infringement damages against the State.