Intellectual Property Archives - Page 26 of 58

When Quirk of Copyright Law Creates Christmas Classic: It’s Wonderful Life and Public Domain

Christmas tree George Bailey stands on a bridge begging for another chance at life. Upon being granted a second chance, he joyously runs home to embrace his family. As the community of Bedford Falls rallies around him and raises funds to save the endangered Building and Loan and George Bailey personally from an unjustified failure, someone proclaims a toast to George Bailey, “the richest man in town.” It’s a powerful ending to a beloved holiday classic, and it would have been forgotten over time but for accidentally allowing a copyright to expire.

The 1909 Act is the copyright act that governs copyrightable works created before 1964. The Act created two, distinct copyright terms for each individual work: a 28-year initial term and a 28-year renewal term. The initial term applied automatically, but the copyright owner had to file a renewal application with the U.S. Copyright Office to get the second term. If the owner failed to file a renewal application before the first 28-year term expired, the work automatically entered the public domain.

Into this copyright framework, a movie called It’s a Wonderful Life was released in December 1946. It was directed by Frank Capra and starred James Stewart. Upon its release, it was not the booming success that one might imagine based on its reputation now. While it was not a complete box-office failure, it struggled financially and never came close to reaching its break-even point. Capra and Stewart would never work together again. In fact, it was a major blow to Capra’s reputation, and in the aftermath of the film, Capra’s production company went bankrupt.

More holiday movies were created over the years, and the film was largely forgotten. At the end of the initial 28-year copyright term in 1974, a clerical mistake prevented the copyright owner of It’s a Wonderful Life from filing a renewal application, and the movie went into the public domain. TV studios, eager for inexpensive content to show during the holidays, began showing the movie every year because they were not required to pay any royalties while the film was in the public domain. Over the next approximately 20 years, the film was shown repeatedly every holiday and claimed its current status as a holiday classic.

Everything changed in 1993. In response to a Supreme Court ruling in Stewart v. Abend, the current copyright owners of It’s a Wonderful Life were able to enforce a copyright claim to the movie. The Court in Steward v. Abend held that a current copyright owner has the exclusive right to exploit derivative works, even in light of potentially conflicting agreements by prior copyright holders. Coincidentally, the Steward v. Abend case involved another James Stewart movie, Rear Window.

Because the current copyright owners of It’s a Wonderful Life still owned the movie rights of the original story on which the movie is based, the current copyright owners argued that their rights to the story told in It’s a Wonderful Life still existed and were enforceable to prevent unauthorized showing of the movie in its current form. The newly-returned owners were thus able to stop any unauthorized showings of the movie, but by then the movie was firmly entrenched as a holiday classic. It has been popular ever since. So the next time you sit down to watch George Bailey offer to lasso the moon for Mary or watch them dancing over an expanding swimming pool, just remember that we all might have missed this movie entirely if not for a clerical mistake causing a renewal application not to be filed.

Article By Lisa Adams & Derek E. Constantine of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Smartphone Wars – Supreme Court Awakens: Samsung Files Petition for Certiorari in New Hope to Harmonize Design Patent Law

On Monday, in the latest episode of the smartphone wars, Samsung filed a petition for certiorari with the Supreme Court.

Smartphone Wars

Samsung is appealing a Federal Circuit decision that upheld a $399 million judgment against Samsung for infringing three of Apple’s design patents. Samsung argues that the decision, if left unchecked by the Supreme Court, could dramatically increase the value of design patents. While the Supreme Court is the ultimate power in patent jurisprudence, it was a long time ago that it last considered a design patent case; more than 120 years ago according to Samsung. Samsung’s petition presents two fundamental questions concerning design patents:

1. Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?

2. Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

With respect to the first question – whether a district court should be required to limit the protection of a design patent to only ornamental features – Samsung argues that the Federal Circuit’s decision conflicts with both Section 171 of the Patent Act and with the Supreme Court’s precedent requiring judicial construction of patent claims.

According to Samsung, the Federal Circuit refusal “to cabin design patents to their protected ornamental scope” conflicts with Section 171 and allows infringement to be “found based on the use of nonornamental attributes.” Thus, argues Samsung, the Federal Circuit broadened the protectable scope of design patents, which are limited to “any new, original and ornamental design for an article of manufacture,” under section 171. Samsung argues the Federal Circuit’s ruling also creates tension with other areas of intellectual property law that routinely enforce limitations to protectable scope, such as copyright doctrine of “filtration” and trademark law’s doctrine of functionality.

Samsung also maintains that the ruling is contrary to Supreme Court precedents in the analogous context of utility patents, which recognize that district courts have a duty to construe patent claims and eliminate unprotected features. In Samsung’s view, similar to a Markman hearing, a district court should instruct a jury to identify non-ornamental features of a design patent and exclude them from the infringement analysis.

Turning to the second question – whether damages should be limited to the profits attributable to the infringing component – Samsung argues that the Federal Circuit’s decision conflicts with Section 289 of the Patent Act and the basic principles of causation and equity.

Samsung urges that “the Federal Circuit’s holding as a matter of law that an infringer of a design patent is liable for all of the profits it made from its entire product, no matter how little the design contributed to the product’s value or sales” be corrected. Samsung argues that the Federal Circuit’s conclusion that the article of manufacture is the entire smartphone, and not specific subcomponents, is wrong based on a natural reading and purpose of Section 289 of the Patent Act, contemporary extrinsic evidence regarding the definition of “articles of manufacture,” and non-controlling case law (see note below).

According to Samsung, the Federal Circuit’s “interpretation of Section 289 also flies in the face of well-settled tort principles of causation” and “ignores that disgorgement of the defendant’s profits is a classic equitable remedy for which the accepted measure of recovery generally is ‘the net profit attributable to the underlying wrong.’” “The cardinal principle of damages in Anglo-American law is that of compensation for the injury caused to plaintiff by defendant’s breach of duty,” This is the backdrop in which Section 289 was adopted. “Where disgorgement is available in patent cases, it has [] been ‘given in accordance with the principles governing equity jurisdiction, not to inflict punishment but to prevent an unjust enrichment by allowing injured complainants to claim ‘that which … is theirs, and nothing beyond this.’”

Samsung claims that certiorari should be granted because the Federal Circuit’s decision dramatically increases the value of design patents relative to other forms of intellectual property. Without correction, design patents will have whatever scope juries choose to give them, and a design-patent holder will be entitled to the infringer’s profits on the entire product even if the patented design applies only to a part of the product, and contributes to only a minor faction of the overall value. The Federal Circuit’s decision allows design patent owners to obtain the infringer’s total profits – a remedy not available under utility-patent law. Samsung contends that such leverage “poses a real danger for companies everywhere,” that it will lead to an “explosion of design patent assertions and lawsuits.”

Will the Supreme Court agree with Samsung that the Federal Circuit has caused a great disturbance in design patent jurisprudence? Difficult to see. Always in motion is the future.

Bush & Lane Piano Co. v. Becker Bros., 222 F. 902, 904 (2d Cir. 1915), (allowed an award of infringer’s profits from the patented design of a piano case but not from the sale of the entire piano, holding that “recovery should be confined to the subject of the patent.”); Young v. Grand Rapids Refrigerator Co., 268 F. 966 (6th Cir. 1920), (Affirmed the denial of all profits from the sale of refrigerators where the infringed patent related only to the design of the refrigerator’s door latch, explaining that it was not even “seriously contended” that the patentee could recover all profits from sales of refrigerators containing that latch.)

Article By, Patrick T. Driscoll, James Wodarski, Michael T. Renaud & Michael C. Newman of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Ariosa v. Sequenom: In Search of Yes After a Decade of No

The Federal Circuit this Wednesday declined to reconsider its June decision in Ariosa v. Sequenom, a closely watched medical diagnostics case involving patents on cell-free fetal DNA testing. Biotech companies, investors, and patent lawyers alike should expect a prompt petition for certiorari, and should hope that the Supreme Court grants it. (Disclosure: I was one of twenty-three law professors who submitted an amicus brief urging the Federal Circuit to grant en banc rehearing.)

In the last decade, the Supreme Court has suggested in case after case that the inventions they were considering were not merely unworthy of patent protection because they were, say, not inventive enough or useful enough or disclosed in enough detail. Rather, the Court in these cases gave us information about the very boundaries of the patent system—by placing the disputed inventions outside those boundaries altogether. But they have not yet told us what is just inside those boundaries.

This legal uncertainty has a significant chilling effect on investment in innovation, one that we are increasingly able to quantify. As USPTO Chief Economist Alan Marco and I explained in a 2013 paper in the Yale Journal of Law and Technology, when a court issues a decision resolving the legal uncertainty over whether a patent was valid, that newfound certainty actually moves the market as much as the initial patent grant does. In other words, the unpredictability of courts forces the market to discount—by as much as half—how much trust to put in the legal rights that the Patent Office issues.

Patent holder Sequenom certainly experienced the downside of that uncertainty, as Wednesday’s rehearing denial sent its stock price tumbling over 14% in just two days. Others have taken a hit as well, such as the large-cap DNA analysis firm Illumina, which has pursued Ariosa in a separate patent litigation and whose stock price fell 7% across the same two-day period.

The reason for this uncertainty is that we are effectively back in the late 1970s, when the Court was prominently rejecting inventions as patent-ineligible subject matter—Gottschalk v. Benson in 1972 and Parker v. Flook in 1978—without saying anything concrete about what was eligible. Relief would come only after Diamond v. Chakrabarty in 1980 and Diamond v. Diehr in 1981, when the Court finally produced binding precedents going the other way.

The result is that today’s patentees can only try to run away from the settlement risk mitigation patent in Alice Corp. v. CLS Bank (2014), the breast cancer genetic diagnostic patent in AMP v. Myriad (2013), the thiopurine dosage monitoring patent in Mayo v. Prometheus (2012), the energy futures risk hedging patent application in Bilski v. Kappos (2010), and, although they were never definitively adjudicated, the vitamin deficiency diagnostic patents in LabCorp v. Metabolite (2006). There is no case yet to run toward.

Ariosa v. Sequenom could have been that case and still can be, if the Court grants certiorari. Certainly the Federal Circuit order has framed the issue well. The per curiam order denying en banc rehearing was accompanied by three opinions that addressed in different combinations both the reach and the wisdom of the Supreme Court’s recent precedents.

Judge Dyk’s concurrence concluded that the precedents, particularly Mayo and Alice, do apply to the present facts and that those precedents are generally sound. He invited “further illumination” from the Supreme Court only on whether the all-important inventive concept must come at the second step of the two-step Mayo test (application of the natural law or abstract idea) or may also come at the first step (discovery of the natural law). Meanwhile, Judge Newman’s dissent concluded that the precedents, particularly Mayo and Myriad, do not apply here, for the facts “diverge significantly.” She found the Sequenom patent’s subject matter to be eligible and would have proceeded to more specific patentability analysis under §§ 102, 103, 112, etc.

Their midpoint and the best argument for certiorari was Judge Lourie’s concurrence, which agreed that Mayo controls, with “no principled basis to distinguish this case from Mayo”—but which also urged that Mayo and the Supreme Court’s other precedents from Bilski onward are an increasingly unsound basis for differentiating between natural laws and abstract ideas on the one hand, and applications of those laws and ideas on the other hand. Echoing a previously expressed position of the Patent Office, he favored the “finer filter of § 112” for issues of indefiniteness or undue breadth (rather than what the agency’s post-Bilski Subject Matter Eligibility Guidelines called the “coarse filter” of § 101).

He also pushed back directly against a argument that the Supreme Court frequently invokes to express its preference for flexible standards that foster over predictable rules that can be manipulated: the draftsman’s art. Decisions from Flook and Diehr to Mayo and Alice have rested in part on the suspicion that patent lawyers may at any time evade substantive doctrinal limitations through clever claim drafting. To this Judge Lourie’s opinion aptly responded that “a process, composition of matter, article of manufacture, and machine are different implementations of ideas, and differentiating among them in claim drafting is a laudable professional skill, not necessarily a devious device for avoiding prohibitions.”

In these regards, Judge Lourie’s approach may well represent the “center” of the Federal Circuit on subject-matter eligibility. He was in the en banc majority in Bilski and authored the panel opinion in Mayo. He authored both panel majority opinions in Myriad (before and after the Supreme Court’s GVR order). And he authored the five-judge en banc plurality opinion in Alice, whose analysis was ultimately consolidated and endorsed in the Supreme Court’s opinion in that case.

With the issues so well framed and the recent subject-matter eligibility precedents so well synthesized, then, there is reason to be optimistic that a decade of hearing “no” from the Supreme Court may finally give way to a “yes” and better orient us on the true boundaries of our patent system.

Article By Saurabh Vishnubhakat of Texas A&M University School of Law

October 2015 – gTLD Sunrise Periods Now Open

The first new generic top-level domains (gTLDs, the group of letters after the “dot” in a domain name) have launched their “Sunrise” registration periods.

As of the date of this post, Sunrise periods are open for the following new gTLDs:

.pohl	.allfinanz
.trading	.spreadbetting
.cfd	.swiss
.xn--45q11c (八卦 for “gossip” in Chinese)	.forex
.broker	.earth
.gdn	.kyoto
.feedback

ICANN maintains an up-to-date list of all open Sunrise periods here. This list also provides the closing date of the Sunrise period. We will endeavor to provide information regarding new gTLD launches via this monthly newsletter, but please refer to the list on ICANN’s website for the most up-to-date information – as the list of approved/launched domains can change daily.

Because new gTLD options will be coming on the market over the next year, brand owners should review the list of new gTLDs (a full list can be found here) to identify those that are of interest.

Article By Monica Riva Talley, Tracy-Gene G. Durkin, Ivy Clarice Estoesta, Lauriel F. Dalier & Shana L. Olson of

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Ninth Circuit “Twists” Things Up for IP Protection in Yoga

In a recent decision, the U.S. Court of Appeals for the Ninth Circuit held that a certain yoga sequence developed by legendary yoga teacher Bikram Choudhury was not eligible for copyright protection. The Court’s decision was based on the fundamental copyright principle known as the “idea/expression dichotomy,” which states that copyright protection is limited to the expression of ideas, and cannot extend to the ideas themselves. The Court concluded that because the yoga sequence is an idea, process or system designed to improve health, copyright can protect only the words and pictures that are used to describe the yoga sequence (i.e. the book in which the sequence is described), but cannot be extended to protect the idea of the sequence itself.

As a bit of interesting background, Bikram Choudhury, founder of the worldwide Yoga College of India, began his yoga career in India at the ripe age of four years old. After he immigrated to the US in the 1970s, he opened a yoga studio and began offering classes in which a sequence of twenty-six yoga poses and two breathing exercises (known as the “Sequence”) was practiced over the course of ninety minutes in a room heated to 105 degrees Fahrenheit (intended to mimic the climate of India). Bikram soon became a central figure in the yoga community in the US, including among the celebrity circuit and professional athletes. In 1979 he published a book titled Bikram’s Beginning Yoga Class, in which the Sequence was described. Bikram registered the book with the Copyright Office in 1979, and in 2002 registered a “compilation of exercises” contained in the book.

The roots of the present dispute were planted in the 1990s, when Bikram introduced the “Bikram Yoga Teacher Training Course.” The defendants in the present case completed Bikram’s course, and subsequently began offering “hot yoga” classes in their own studio, in which a style of yoga similar to the Sequence was taught. Bikram then filed a complaint alleging that the defendants infringed Bikram’s copyright.

Of course, to prove a claim of copyright infringement, a plaintiff must first prove it has a valid copyright. This is where Bikram did a “downward dog.”

First, the Court noted that the Sequence is a “system” or “method,” which was designed to “systematically work every part of the body, to give all internal organs, all the veins, all the ligaments, and all the muscles everything they need to maintain optimum health and maximum function.” Thus, the Court went on, Bikram’s attempt to secure copyright protection for a healing art, or a system designed to yield physical benefits and a sense of well-being, was precluded by the idea/expression dichotomy. Essentially, the idea/expression dichotomy, which is codified in 17 U.S.C. § 102(b),

strikes a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts [and ideas] while still protecting an author’s expression.

The Court next addressed Bikram’s contention that the Sequence was entitled to copyright protection as a “compilation.” A compilation is “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” 17 U.S.C. § 101. The Court noted that while a compilation may be eligible for copyright protection, it must nevertheless represent an “original work[] of authorship,” as required by Section 102. The Court held that the fact that the Sequence may possess many constituent parts did not transform it into a proper subject of copyright protection.

The Court then rejected Bikram’s argument that the Sequence was entitled to copyright protection as a “choreographic work.” Although a “choreographic work” is a statutory category of work entitled to copyright protection, this term has not yet been defined in the copyright context by the Court or by Congress. Nevertheless, the Court noted that defining the term was not necessary, since regardless of category, the work must meet the originality requirement imposed by Section 102. Thus, the Court held:

The Sequence is not copyrightable as a choreographic work for the same reason that it is not copyrightable as a compilation: it is an idea, process, or system to which copyright protection may in no case extend.

As long as this case law is upheld and followed, proprietors of yoga sequences and similar matter will have a difficult time in getting past the “idea/expression dichotomy” hurdle, and may have to say “neti-neti” to copyright protection. However, other forms of intellectual property protection may be available. For example, in this case, the Court specifically noted that “if [the Sequence] is entitled to protection at all, that protection is more properly sought through the patent process.” Additionally, proprietors can adopt and develop good will in a brand for the specific services associated with their sequences or similar matter (such as educational services in which the matter is taught), and rely on trademark law to prevent others from offering similar services under a similar mark.

Until the next yoga move in the IP arena, Namaste.

Article By Beth A. Seals of Squire Patton Boggs (US) LLP

With This Ring, I Thee Infringe re: Tiffany’s Jewelry Trademark

Fake Tiffany Ring - Infringement If you’re ready to really do it─to get down on one knee and take the plunge─Costco has made the whole process much simpler. Stop by and pick up an authentic Tiffany engagement ring. She’ll never know you didn’t get it at Tiffany & Co. It has the Tiffany name right on the box. That was the case a few years back and Costco reportedly had a good Tiffany-ring run. According to the suit Tiffany & Co. filed against Costco, the bond of hundreds, if not thousands, of unsuspecting young couples out there was sadly forged over a sham “Tiffany ring” purchased at Costco. The only way to rectify the love lost here, Tiffany claims, will be recovery of the profits Costco made on its sale of “Tiffany rings,” punitive damages, costs, and attorney’s fees.

Little known fact: at the time (2012) Costco was actually one of the largest sellers of fine jewelry in the United States. They had a good share of the market on high-quality, discounted diamonds. But when they started selling “Tiffany” engagement rings, Tiffany & Co. stepped in. Whether it was spitefully intentional or ironically inadvertent, it was─at the very least─quite fitting that Tiffany filed the suit against Costco on Valentine’s Day, 2013. Tiffany claimed Costco had been selling different styles of rings, falsely identified on in-store signs as “Tiffany rings” for years, but didn’t use the Tiffany trademark in their online promotions in order to avoid Tiffany’s rigorous trademark policing procedures. Rather, Tiffany learned about the scheme when a shopper complained to Tiffany after seeing diamond engagement rings advertised as “Tiffany rings” in a Costco store in California. When the shopper inquired about the rings, the Costco clerk represented them as “Tiffany rings.” The real problem here was that Tiffany wasn’t dealing with a mere street vendor selling alleged “Tiffany rings” out of the trunk of his car. This was Costco─a reputable, nationwide brand where members expect authentic, name-brand merchandise at discounted prices. In other words, because it was Costco, not a nondescript trunk vendor, customers might believe.

Costco fired back, though, with a counterclaim alleging their rings were marketed with the Tiffany trademark merely because they had a “Tiffany setting,” which Costco claimed was such a generic term it could be used to describe any setting comprised of multiple slender prongs extending upward from a base to hold a single gemstone. Costco claimed the trademark setting was so diluted that it should be declared invalid so Tiffany could no longer use it to prevent other retailers from selling the famed “Tiffany setting” ring. The problem, though, was that the in-store Tiffany signs Costco was using did not say the rings merely had “Tiffany settings.” The signs, packaging, and even the words of one of Costco’s very own, showed Costco was portraying them as authentic “Tiffany rings.” Scrambling for footing, Costco claimed the Tiffany mark itself was weak. The Manhattan judge in this case found that Tiffany put forth “uncontroverted evidence” establishing the strength of its mark. One of the most significant pieces of evidence was a Bain & Co. report showing Tiffany “claims the largest share of the female mind in the U.S.” when it comes to name recognition in jewelry brands. Tiffany even located and interviewed six different consumers who had purchased alleged “Tiffany rings” at Costco and found that they all thought they had a genuine Tiffany & Co. ring. One woman even reportedly cried when the diamond fell out of what she thought was her very own Tiffany & Co. ring.

The suit is a testament to Tiffany’s rigorous trademark policing procedures and the strength of a timeless, established brand. Tiffany will likely implement more in-store, on-foot procedures in light of Costco’s initially-effective evasion of Tiffany’s internet monitoring. Proof of intentional trademark infringement and establishment of a reputable, recognized brand clearly requires expert testimony.

Article By Annie Dike of IMS ExpertServices

With This Ring, I Thee Infringe re: Tiffany's Jewelry Trademark

Article By Annie Dike of IMS ExpertServices

On Sale Today – .law Domain Names

Today, all law firms will be able to apply for .law names. This top-level domain name is intended to create an online space in which only regulated, licensed legal practitioners can be found.

In order to purchase your .law domain name, there are specific steps involved, as well as some key dates of which to be aware. Here is a quick guide to help you move forward with purchasing your .law domain.

What domain names should you buy?

Purchase the .law version of your domain name.

Purchase keyword specific URLs that are important to your branding efforts, such as employmentlawyer.law, employment.law, advertisinglaw.law, etc. Note that there could be bidding for some of the more popular domains.

When and where can I register the domain?

Oct. 12 – 18, 2015:

Qualified lawyers can apply for domain names. Domain names will be awarded on a first-come, first-served basis.
There will be a one-time Early Access Program (EAP) fee as well as an annual registration fee.
Pricing will decrease each day for the first seven days of General Availability – check with an authorized registrar for purchasing details.

October 19 – Future:

Qualified lawyers can still purchase domain names on a first-come, first-served basis, minus the EAP fee.

What is the eligibility process?

Decide which of your firm’s lawyers will be designated a “qualified lawyer” for purposes of purchasing .law domain names – such as your managing partner or marketing partner.

Gather the following information for your qualified lawyer:

Attorney’s name (as it appears on his/her bar registration)
State/jurisdiction(s) where attorney is licensed to practice
Year of registration: Year(s) admitted to practice
Bar registration number(s)
Bar association state and country

How long does it take?

The verification process should take 48 hours, after which time the domain names you applied for will be registered to you.

Article By Amy L. Knapp & Aileen M. Hinsch of Knapp Marketing

Practice What You Preach – Yoga Remains Uncopyrightable, for Now

Bikram Choudhury is famous for being the world’s most successful – and eccentric – yoga guru, and the pioneer of his self-branded, mass marketed Bikram Yoga. Bikram Yoga consists of a sequence of 26 yoga poses, or asanas, and two breathing exercises, performed in a very hot room (100 degrees!) for 90 minutes. The term Bikram Yoga is protected by trademark, but you will see similar yoga practices referred to generically as “hot yoga.” Mr. Choudhury has also been the subject of certain lawsuits filed by women who attended his wildly successful nine-week hot yoga teacher training course (which can cost up to $10,000). But whatever you think about Mr. Choudhury, one thing is clear – he doesn’t want anybody else teaching his specific hot yoga sequence.

Mr. Choudhury has probably come under more fire for his attempt to lock up his hot yoga sequence than he has for his other legal issues. That’s because yoga and intellectual property rights are not ideal bedmates. Yoga is an ancient practice that teaches liberation and growth, while intellectual property tends to be about what’s mine and not yours. To many, trying to “own” yoga in any way is antithetical to the very spirit and purpose of the yoga practice.

But going against the grain does not bother Mr. Choudhury. Mr. Choudhury owns a copyright registration for his Bikram Yoga sequence, attained as a supplemental registration to a 1979 copyright he owns in his book Bikram’s Beginning Yoga Class, which describes the sequence. He has sued several prior students who took his course, went out on their own, and began teaching a 26-pose “hot yoga” course which, Mr. Choudury alleges, is too similar to his own. In response to Mr. Choudhury’s efforts to lock up this particular sequence of poses, Open Source Yoga Unity, an organization for the “continued natural unfettered development of yoga for all to enjoy,” sought a court’s ruling that Mr. Choudhury does not have valid copyright in the Bikram Yoga sequence.

The details of the various legal battles (many of which resolved by settlement before a decision on the merits) are very well explained on Open Source Yoga Unity’s Facebook page (https://www.facebook.com/yogaunity). The key take-aways, so far, are that each yoga asana, itself, is firmly in the public domain. The dispute is only with respect to the specific sequence of 26 yoga asanas that Mr. Choudhury claims to have been the first to select and arrange, as well as all derivatives that are “substantially similar” to the original sequence. See Open Source Yoga Unity v. Choudhury, 2005 WL 756558 (N.D. Cal. April 1, 2005). Resolution of Mr. Choudhury’s copyright claims revolves around whether his hot yoga sequence is a creative expression, copyrightable as choreography, or merely uncopyrightable functional physical movements. Id. Most team sports activities, for example, aren’t copyrightable because they are unscripted and don’t involve a fixed routine of motions. See, e.g., National Basketball Association and NBA Prop., Inc. v. Motorola, Inc., 105 F.3d 841, 846 (2d Cir. 1997) (no copyright in basketball games). Hot yoga would appear to fall somewhere between basketball and ballet. Exactly where yoga falls on this continuum of creativity remains to be determined.

In 2012, the United States Copyright Office issued a policy statement, stating that yoga sequences are “not the equivalent to a pantomime or a choreographic work” and “could not be protected as compilations[.]” The Copyright Office recognized that it had been an error allowing Mr. Choudhury to file his supplemental registration, and that no other registrations of that type would be allowed. You have to wonder if Mr. Choudhury smiled at that – not only does he own a registration for his yoga sequence, but nobody else ever will!

But, the Copyright Office’s Policy Statement is merely that; it is not law. In Open Source Yoga, seven years prior, the court held that while “application of the law of compilations to yoga asanas appears to violate the spirit of yoga,” it was “unable to locate any authority that precludes such application.” Therefore, if the trier of fact determined that a sufficient number of individual yoga asanas are arranged in a sufficiently creative manner, copyright protection would be available. The case settled outside of court. In a case filed after the Copyright Office’s Policy Statement, the court agreed with the Statement, holding that where the poses are said to result in improvements in one’s health or physical or mental condition, as Mr. Choudhury claims they do, they are not copyrightable. Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC, 2012 WL 6548505 (C.D. Cal. Dec. 14, 2012). Mr. Choudhury promptly appealed this ruling and, as of this article, we await a decision from the Ninth Circuit Court of Appeals.

For now, the ancient yoga teachings of liberation, spirituality, and healing carry the day. But, given Mr. Choudhury’s litigiousness and the uncertainty of the pending appeal, yogis still have to look over their shoulders when teaching Mr. Choudhury’s particular brand of hot yoga.

Article By Nadya Davis of Holland & Hart LLP

Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. v. E-Watch, Inc: Decision Denying Institution IPR2015-00612

Takeaway: The Board does not have the authority to determine whether an application was abandoned or improperly revived when determining whether a challenged claim is entitlted to claim priority to a an earlier-filed application.

In its Decision, the Board denied institution and determined that Petitioner had not demonstrated a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims (claims 1-15) of the ’871 Patent. The ’871 Patent relates to “image capture and transmission systems and is specifically directed to an image capture, compression, and transmission system for use in connection with land line and wireless telephone systems.”

The Board reviewed the only asserted ground of unpatentability – that claims 1-15 of the ’871 Patent are anticipated by Monroe. The Board discussed whether Monroe is prior art. Monroe was published on July 15, 1999. The ’871 Patent issued from an application filed on January 3, 2003, which is a divisional of an application filed on January 12, 1998. Petitioner argued that the claims of the ’871 Patent are not entitled to the filing date of the 1998 “parent” application because of a lack of co-dependency between the parent and the divisional/child application. The Board stated that if Petitioner had argued that the parent application does not support the subject matter of the challenged claims in the divisional patent, then Patent Owner would have had to show that the challenged claims are entitled to an earlier filing date. However, Petitioner instead challenged co-pendency, which the Board noted was an attack on a petition decision in 2003 by the PTO reviving the parent divisional application when the child application was filed. Petitioner argued that the parent application was “purposefully” abandoned and should not have been revived.

The Board noted that Petitioner has not identified proper jurisdiction of the Board to review the 2003 decision or to ignore that decision and make its own determination about whether the parent application should have been revived. The Board stated it has the power to determine whether a patent owner can antedate a reference but that the status of an application as abandoned or revived is procedural and the Board does not have the ability to review such an action. Therefore, the Board found that Petitioner had not shown that Monroe constitutes prior art.

Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. v. E-Watch, Inc., IPR2015-00612
Paper 8: Decision Denying Institution
Dated: July 8, 2015
Before: Jameson Lee, Gregg I. Anderson, Matthew R. Clements
Written by: Clements
Related Proceedings: IR2015-00541; IPR2014-00439; IPR2014-00987; IPR2015-00402; IPR2015-00404; IPR2015-00406; IPR2015-00411; IPR2015-00412; IPR2015-00413; IPR2015-00610

Category: Intellectual Property

When Quirk of Copyright Law Creates Christmas Classic: It’s Wonderful Life and Public Domain

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Ariosa v. Sequenom: In Search of Yes After a Decade of No

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October 2015 – gTLD Sunrise Periods Now Open

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Ninth Circuit “Twists” Things Up for IP Protection in Yoga

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With This Ring, I Thee Infringe re: Tiffany’s Jewelry Trademark

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With This Ring, I Thee Infringe re: Tiffany's Jewelry Trademark

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Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. v. E-Watch, Inc: Decision Denying Institution IPR2015-00612

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