Month: March 2014

Broadcasters Ask Supreme Court to Rule in Streaming Case

ABC, Disney, CBS, Fox Television and other broadcasters have asked the US Supreme Court to rule on whether a company that captures over-the-air TV signals and relays them to digital devices is violating the broadcasters’ copyrights.

The broadcasters sought Supreme Court review after a New York federal judge refused to grant an injunction against Aereo, an Internet TV company, and the Second Circuit Court of Appeals upheld that decision.

The New York judge had held that each Aereo subscriber was receiving a private, customized transmission and thus that the company was not violating the broadcasters’ public performance rights under copyright law.

According to the broadcasters, the question presented to the Supreme Court is:

…whether a company ‘publicly performs’ a copyrighted television program when it retransmits a broadcast of that program to thousands of paid subscribers over the Internet.

The broadcasters say that the Second Circuit’s ruling threatens the television industry by allowing retransmissions of live broadcasts to paying customers without any payments to the copyright owners who invested in creating the content.

Aereo does not oppose the broadcasters’ petition for Supreme Court review.  However, Aereo frames the question differently, as:

… whether Aereo ‘perform[s] publicly’ … by supplying remote equipment that allows a consumer to tune an individual, remotely located antenna to a publicly accessible, over-the-air broadcast television signal, use a remote digital video recorder to make a personal recording from that signal, and then watch that recording.

The broadcasters contend that this is an attempt by Aereo to represent itself as “a mere supplier of equipment that individuals may use to enhance their ‘private reception of broadcast television.’ ”

But, say the broadcasters, “Aereo is not a hardware supplier. It offers a subscription service.”

Aereo CEO Chet Kanojia has argued that a ruling against his company could destroy “the entire cloud computing business.”

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.


AT&T Appeals to Federal Circuit after Patent Lawyers Blow Deadline

After its patent law firm missed a deadline for challenging a $40 million patent infringement verdict against it, AT&T has asked the Federal Circuit for more time to appeal.

On February 6, US District Judge Orlando Garcia denied a motion by AT&T seeking an extension of time to appeal a March, 2013 verdict that it infringed patents owned by Two-Way Media LLC.

The patents at issue include a “Multicasting method and apparatus” and relate to technology for live-streaming audio and video over the Internet.

A Texas jury found that AT&T and its subsidiaries infringed seven claims of two of the patents and that AT&T had failed to prove that the patents were invalid.

The deadline to appeal the jury verdict passed in December.  AT&T claimed that docket notices emailed from the court did not make it clear that all post-trial motions had been resolved by November, which started the clock ticking on the 30-day period for filing an appeal.

AT&T said that its attorneys only realized in January that the motions had been resolved when one of them happened to actually read the orders while looking for something else.

Judge Garcia did not consider that a good enough reason to grant an extension, saying that it was “very troublesome” that none of AT&T’s 18 patent attorneys at two law firms “bothered to read the orders issued by the court, check the docket for activity, or check on the status of the case” – especially given how much money was involved.

AT&T has agreed to post a $40 million bond while it appeals the decision prohibiting it from appealing the verdict.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.


Trademark Owners Must Show Irreparable Harm for Injunctions in Ninth Circuit

The Ninth Circuit Court of Appeals has eliminated the presumption of irreparable harm when trademark owners seek preliminary or permanent injunctions against alleged infringers.

This means that trademark owners must now show that they would suffer actual irreparable harm in order to obtain injunctions.

The case of Herb Reed Enterprises, LLC v. Fla. Ent. Mgmt. Inc. involved the musical group “The Platters,” founded in the 1950s and known for hits like “Smoke Gets in Your Eyes” and “Only You.”

Herb Reed was one of the founders of the group.  After it broke up in the 1960s, its members continued to perform using different versions of the name “The Platters.”

Employment contracts signed in 1956 between the original members of the group and their manager’s company assigned rights in the name “The Platters” to the company in exchange for company stock.

Litigation over the validity of these contracts and ownership rights in the group’s name has dragged on for more than 40 years.

In this most recent case, defendant Florida Entertainment Management challenged a district court’s order enjoining the defendant from using “The Platters” in conjunction with any vocal group.

The US Supreme Court in eBay v. MercExchange effectively eliminated the presumption of irreparable harm for plaintiffs seeking preliminary injunctions in patent cases.  Other courts have also eliminated the presumption for copyright cases, but the circuits have been divided on whether the presumption applies in trademark cases.

Before the latest Herb Reed decision, the law on this issue for the Ninth Circuit (which includes California) was likewise unsettled.

In order to establish irreparable harm, a trademark owner must show that “remedies available at law, such as monetary damages, are inadequate to compensate” for the injury arising from infringement.

Although the Ninth Circuit found that the district court had applied the correct legal principle in the Herb Reed case, it concluded that the record did not support a finding of the likelihood of irreparable harm.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Sherlock Holmes Enters the Public Domain

A federal judge has ruled that the character of Sherlock Holmes (along with his faithful sidekick Watson and his evil nemesis Moriarty) is now in the public domain under US copyright law.

Holmes was introduced by Scottish author and doctor Sir Arthur Conan Doyle in the novel A Study in Scarlet published in 1887.  Three more novels and 56 short stories followed, with the last published in 1927.

Holmes has appeared in at least hundreds (perhaps thousands) of works in print and other media.  According to Guinness World Records, Holmes is the “most portrayed movie character” ever.  More than 70 actors have played the part in over 200 films, from Sherlock Holmes Baffled (1900) to the BBC’s Sherlock, starring Benedict Cumberbatch, which starts a new season on PBS on January 19, 2014.

The copyright for Conan Doyle’s works expired in the UK in 1980.  In the US, his works published before 1923 are also in the public domain.

In February of 2013, Holmes scholar Leslie S. Klinger sought a declaratory judgment that the characters of Holmes and Watson (along with 221B Baker Street and any other story elements first published before January 1, 1923) are also in the public domain.

Klinger and Laurie R. King (author of a mystery series starring Holmes and his wife) were the editors of “In the Company of Sherlock Holmes,” a collection of new Holmes stories.

Klinger and King had paid $5,000 to the Conan Doyle estate to license the right to publish a previous Holmes-based collection.  The estate demanded an additional fee for the new work.

The estate’s copyright lawyers claimed that the characters remained under copyright protection in the US because they were not “completed” until 1927, when Conan Doyle published his last Holmes story.

In December of 2013, the district court rejected this argument and ruled in Klinger’s favor.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Fair Use of Copyrighted Articles in Patent Applications?

Several recent federal court decisions involved an unusual convergence between two forms of intellectual property:  patents and copyrights.

At issue was whether it was a violation of copyright law to include copies of scholarly articles with patent applications.

The plaintiffs in the cases were the American Institute of Physics and two publishers of scientific journals:  John Wiley & Sons and Blackwell Publishing.

The defendants were patent law firms that prosecute applications before the US Patent and Trademark Office (USPTO) and foreign patent offices.

The patent lawyers had submitted copies of articles published by the plaintiffs as evidence of “prior art” in connection with patent applications.  The lawyers had also distributed copies of the articles to their clients and to other patent attorneys working on domestic or foreign applications.

In the Minnesota federal court case of American Institute of Physics and John Wiley & Sons, Inc. v. Schwegman, Lundberg & Woessner, P.A., a patent law firm had downloaded 18 of the defendants’ articles — mostly from the USPTO’s website.  The firm also placed copies of the articles on its intranet site.

The plaintiffs asserted that this copying constituted copyright infringement.

The judge disagreed, and granted summary judgment for the defendants.

In similar cases from Texas and Illinois, the plaintiffs complained that the patent lawyers not only engaged in unauthorized copying but also directly profited from their copyright violations by charging clients for the copies.

The court in the Texas case granted summary judgment for the defendants;   the Illinois case has not yet been decided.

A fourth case in Kansas was dismissed after the defendant obtained a license to use the copyrighted works.

In all of these cases, the defendants invoked the “fair use” doctrine.  Under US copyright law, certain acts that would otherwise constitute infringement are considered “fair use.”  Examples of fair use include “criticism, comment, news reporting, teaching[,] or research.”

The defendants argued that their copying was essential to the prosecution of patent applications, which includes the obligation to disclose “prior art.” In addition, the defendants argued that their use of the copies did not affect the market for the plaintiffs’ articles.

The plaintiffs have announced their intention to appeal the decisions against them.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Adidas Claims Under Armour Infringed Fitness Patents

Adidas AG has sued Under Armour Inc. in Delaware federal court, claiming that Under Armour infringed 10 Adidas patents for a “location aware” fitness training system.

The patents at issue were issued between 2007 and 2013 and include one for a “method of monitoring an individual’s performance during a physical activity with a portable performance monitoring device,” using GPS and “systems and methods for a portable electronic journal.”

Adidas products using the patented technology let users monitor their heart rates, calculate the number of calories they have burned, and collect other data via their smartphones.

The Adidas suit targets the Armour39 exercise monitoring system, which uses sensors, a chest strap, and mobile apps to track athletic performance metrics.

The suit also names as a defendant MapMyFitness Inc., a subsidiary Under Armour acquired in 2013.

MapMyFitness makes mobile apps including MapMyRide, MapMyRun, and MapMyHike, which all use GPS technology.

Adidas says that Under Armour’s director of innovation and research was previously a senior innovation engineering manager for Adidas.

Adidas is seeking damages for infringement based on a reasonable royalty rate, plus treble damages for willful infringement.

Adidas was itself sued in 2013 by a company called SportBrain, which alleged that Adidas violated its 2008 patent for “integrating personal data capturing functionality into a portable computing device and a wireless communication device.”

SportBrain also sued Nike for patent infringement involving the Nike FuelBand, a bracelet that measures calories burned by the wearer all during the day, and also brought suit against California-based FitBit Inc.

Because of the risk of expensive patent infringement litigation, companies seeking to produce new products often obtain “freedom to operate” (FTO) opinions from patent attorneys.

An FTO opinion can help a company determine whether a proposed new product can be marketed without infringing third party patent rights, on a country-by-country basis.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Life is a (Global Patent Prosecution) Highway

Thirteen countries have signed an agreement that provides patent applicants with an opportunity to request accelerated examination – and, potentially, early patent grants – in the signatory states.

For several years, the US Patent and Trademark Office (USPTO) and patent offices in a number of other countries have participated in bilateral pilot programs called the Patent Prosecution Highway (PPH).  This allowed a patent applicant receiving a ruling from the patent office in one country to request fast track treatment of the corresponding application in the other country.

The program was later expanded to include applications filed under the Patent Cooperation Treaty (PCT).  The PCT, signed in 1970, provides a unified procedure for filing patent applications in member countries.

Starting January 6, 2014, the old PPH program has been replaced by a new Global Patent Prosecution Highway (GPPH) program.

The countries that will initially participate are:

  • The US
  • Australia
  • Canada
  • Denmark
  • Finland
  • Iceland
  • Japan
  • Korea
  • Norway
  • Portugal
  • Russia
  • Spain
  • The United Kingdom

Patent applicants receiving a ruling from any member patent office that at least one claim of a patent application is allowable can request that one or more of the other member patent offices accelerate the review of the corresponding patent application.

Applicants will be able to use a single form and follow a common set of guidelines for all the patent offices.

The GPPH pilot program can save money and time for patent applicants seeking international protection for their inventions.  It can be especially valuable in rapidly evolving technology fields where it’s important to gain a commercial advantage by filing patents as early as possible.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Court Rules that Google Book Project is Fair Use

A US Federal Court judge has ruled that Google’s book scanning project constitutes “fair use” under copyright law.

In 2004, Google began digitally copying books from several major libraries — initially Harvard, the University of Michigan, the New York Public Library, Oxford, and Stanford.  More than 20 million books have been scanned so far.

According to Google,

The Library Project’s aim is simple: make it easier for people to find relevant books – specifically, books they wouldn’t find any other way such as those that are out of print – while carefully respecting authors’ and publishers’ copyrights. Our ultimate goal is to work with publishers and libraries to create a comprehensive, searchable, virtual card catalog of all books in all languages that helps users discover new books and publishers discover new readers.

However, despite its purported “respect” for copyright, Google did not seek the consent of the copyright owners before scanning their books.  The Author’s Guild (an advocacy group for writers, founded as the Authors League of America in 1912) and individual authors sued Google for copyright infringement.

Google claimed that its project would benefit authors by making it easier for readers to find and buy their books.

In response, Sally Morris, chief executive of the UK-based Association of Learned and Professional Society Publishers, said that that this was like saying “it’s OK to break into my house because you’re going to clean my kitchen.  Just because you do something that’s not harmful or (is) beneficial doesn’t make it legal.”

After an eight-year legal fight, Judge Denny Chin granted summary judgment to Google, writing:

In my view, Google Books provides significant public benefits.  It advances the progress of the arts and sciences, while maintaining respectful consideration for the rights of authors and other creative individuals, and without adversely impacting the rights of copyright holders.

Judge Chin found that Google Books had become an essential research tool for librarians and researchers, especially in the humanities.

He agreed with Google that the project benefitted authors and publishers via the “About the Book” page with links to booksellers and libraries that carried the originals of the scanned books.  These links, he said, could “generate new audiences and create new sources of income.”

The Author’s Guild said that it would appeal the decision.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Dow Jones Sues over Use of Wall Street Journal Headlines

Dow Jones & Co., which owns the Wall Street Journal, has sued an audio news service known as a “squawker” for $5 million.

Dow Jones alleges that RANsquawk, based in the United Kingdom, is hurting Dow Jones’s business by reading Wall Street Journal “hot news” headlines and other content to subscribers seconds after the material is published by Dow Jones.

RANsquawk claims that “8/10 of the world’s largest banks” use its service.

Dow Jones operates its own newswire service providing “real time” news to its subscribers.  Its customers include investors and others involved in industries where breaking news moves markets and drives business decisions.

Dow Jones’s premier product is called Dow Jones Dominant (DJX), which provides scrolling headlines.

According to the Dow Jones complaint against Real-Time Analysis & News Ltd., which runs RANsquawk,

By nearly instantaneously cutting, pasting and broadcasting via their own channels the reports of news events that others have uncovered and verified at significant investment and expense, these free-riders offer a pirated product at a cheaper price.

RANsquawk does not credit Dow Jones as the source of the news it reports.  A copyright law firm representing RANsquawk previously denied that its client used material directly from DJX.  The law firm claimed that its client obtained material from instant messages, Twitter, and other sources.

US copyright law protects “original works of authorship fixed in a tangible medium of expression.”  Although the particular words used to report a news story may constitute a “work of authorship,” the facts are not protected by copyright law and may be reported by others in different ways.


Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

“After Final Consideration” Pilot Program Extended by Patent Office

The US Patent and Trademark Office (USPTO) announced that it is extending a popular program that allows patent applicants to submit minor amendments to patent applications even after a final rejection.

The “After Final Consideration” Pilot was launched in May and was scheduled to end on September 30, 2013.  The Pilot will now be extended to include requests filed on or before September 30, 2014.

The Pilot is one of the programs the Patent Office is adopting to reduce the backlog of 90,000 pending patent applications associated with a Request for Continued Examination (RCE).  An RCE is a request by a patent applicant to reopen prosecution of a patent application after a final rejection.

The Pilot also allows patent applicants to potentially avoid the delay and cost associated with an RCE.

Applicants for the Pilot must submit a request and certification for consideration, an amendment to at least one independent patent claim, and any fees that may be required.  The amendment must not “broaden the scope of the independent claim in any aspect.”

The patent applicant must also be willing and available to be interviewed by a patent examiner.

A patent examiner will review the amendment and determine whether it should be accepted for further examination by the USPTO.  The amendment is more likely to be accepted if:

  • the amendment cancels claims or complies with formal requirements in response to objections made in the final patent office action;
  • the amendment rewrites objected-to claims in independent form;  or
  • the amendment incorporates limitations from objected-to claims into independent claims, “if the new claim[s] can be determined to be allowable with only a limited amount of further consideration or search” by the patent examiner.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.