Category: Intellectual Property

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

© Copyright 2015 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.

© 2015 Sterne Kessler

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.

Meditation

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

© Copyright 2015 Squire Patton Boggs (US) LLP

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

Fake Tiffany Ring - InfringementIf 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

© Copyright 2002-2015 IMS ExpertServices, All Rights Reserved.

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

Fake Tiffany Ring - InfringementIf 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

© Copyright 2002-2015 IMS ExpertServices, All Rights Reserved.

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?

  1. Purchase the .law version of your domain name.

  1. 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:

  1. Qualified lawyers can apply for domain names. Domain names will be awarded on a first-come, first-served basis.

  2. There will be a one-time Early Access Program (EAP) fee as well as an annual registration fee.

  3. 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?

  1. 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.

  1. Gather the following information for your qualified lawyer:

  1. Attorney’s name (as it appears on his/her bar registration)

  2. State/jurisdiction(s) where attorney is licensed to practice

  3. Year of registration: Year(s) admitted to practice

  4. Bar registration number(s)

  5. 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

Copyright 2015 Knapp Marketing

Practice What You Preach – Yoga Remains Uncopyrightable, for Now

bikram yoga copyrightBikram 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

Copyright Holland & Hart LLP 1995-2015.

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

©2015 Drinker Biddle & Reath LLP. All Rights Reserved

Using Copyright Protection in Architectural Works to Police Unauthorized Photographs

Can I stop photographers from taking, displaying, and selling photographs of my building? The answer is, like the answer to so many other questions, maybe.

This issue often arises in the context of photographers who license their photographs for a fee through online stock image sites. The photographs are taken without authorization and present a building (and potentially the owner or occupants) in a negative light or disclose features of the building that the owner or architect would prefer remain visible only to those who see the them first hand.

If the area of concern is a building’s interior, the first step in limiting unauthorized photographs is to expressly prohibit photography. If you can show proof of such policies, most websites will remove the photographs without further question. But for various reasons, you may not have an express policy posted in your building. If that is the case, another option may be to enforce your intellectual property rights in the building itself.

Copyright protection subsists in original works of authorship fixed in any tangible medium of expression, including architectural works. 17 U.S.C. § 102(a)(8). An owner of a copyright in an architectural work may prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is not located in or ordinarily visible from a public place. See id. § 120(a). Thus, if a building embodying a design to which you own the copyright is the subject of someone else’s photograph, you can potentially stop the display and distribution of that photograph.

Whether you own the relevant copyright should not be difficult to determine. It either belongs to the creator of the building’s design (i.e., the architect) or, by agreement, to someone else (perhaps the building’s owner). Whether your building is a building for purposes of the Copyright Act is slightly more complicated. According to legislative history, the term “buildings” includes “habitable structures such as houses and office buildings. It also covers structures that are used, but not inhabited, by human beings, such as churches, pergolas, gazebos, and garden pavilions.” H.R. Rep. No. 101-735, 101st Cong., 2d Sess. 20 (1990).

Assuming your structure is a “building,” the final question is whether it is located in or ordinarily visible from a public place. Legislative history does not provide guidance on the interpretation of this phrase, presumably because the legislature believed public place would be understood according to its plain meaning—i.e., “any location that the local, state, or national government maintains for the use of the public, such as a highway, park, or public building.” Black’s Law Dictionary (9th ed. 2009). Courts have likewise been silent on the issue.

Nevertheless, stock image sites are reluctant to simply accept a presumption. Their business depends on their users being able to take and license photographs, and, for them, a more expansive view of public place is preferable. In our experience, many sites will argue that any property open to the public is a public place, regardless of whether the property is privately owned. This interpretation, however, would render buildings like churches and museums not protectable despite the clear intent that such structures be eligible for protection.

Moreover, other areas of the law support the proposition that opening private property to the public does not affect a property’s private nature. For example, a person granted a license to enter a property is still liable for trespass if she exceeds the scope of the license. Similarly, a property owner does not surrender her right to exclude simply by allowing invitees to enter her property. In addressing the nature of private property open to the public, the United States Supreme Court stated the following in the context of First Amendment public forum analysis: “Property does not lose its private character merely because the public is generally invited to use it  . . . the essentially private character of a store and its privately owned abutting property does not change by virtue of being large or clustered with other stores in a modern shopping center.” Prune Yard Shopping Center v. Robins, 447 U.S. 74, 81 (1980).

In light of the foregoing, the logical conclusion is that an otherwise private place open to the public is still private and not a “public place” under the Copyright Act. Applying this conclusion to 17 U.S.C. § 102(a), interior spaces of buildings located on private property should be entitled to protection, because they are not located in or ordinarily visible from a public place. Whether a building’s exterior is protectable, however, would depend on whether the building is visible from a public place, such as a road or sidewalk. Assuming the building is not visible from a public place, your copyright entitles you to stop others from taking, displaying, and selling photographs of the building.

Article By

Zachary T. Gordon
Lewis Roca Rothgerber LLP

©2015 All Rights Reserved. Lewis Roca Rothgerber LLP

To Apple, Love Taylor: Apple Responds with Royalties

“To Apple, Love Taylor” has been the tweet heard ‘round the music world.  With more than 61 million followers, Taylor Swift has become the “loudest” voice for emerging and independent artists in the music-streaming realm.  As copyright lawsuits from record companies continue to crop up across the industry, music-streaming service providers have become far more sensitive to the demands of artists and the trend for higher royalty payments.  Case in point: when Taylor “streams” for royalties, Apple responds.

Taylor’s tweet to Apple explained, “with all due respect,” why she was planning to withhold her mega best-selling album 1989 from Apple’s new music-streaming service, Apple Music.  Apparently, Apple’s plan to withhold royalty payments from musicians during the service’s initial, free three-month trial period did not sit well with Swift.  Speaking primarily on behalf of emerging and independent artists, Swift deemed three months “a long time to go unpaid.”  Taylor’s stance followed a long line of objections from songwriters, artists, and labels over allegedly unfair payment by music-streaming services.  Recently, the Turtles and other performers brought suit against Sirius XM to collect royalty payments that had not been paid for songs produced before 1972.  Previously, big streamers like Sirius XM and Pandora were not paying royalties for songs launched before 1972 because they were not protected by federal copyright law.  In the wake of the Turtles suit, Apple was swift to respond to Swift’s plea.  Eddy Cue, Apple’s senior vice-president of internet software and services, tweeted “we hear you @taylorswift13 and indie artists” and called Taylor to deliver the news personally.  Apple had reconsidered its plan and will now be paying artists royalties at the outset of its Apple Music launch.

Clearly, Taylor’s attempt at flattery, saying that the initial decision to withhold royalty payments was surprising in light of Apple’s reputation as a “historically progressive and generous company,” got her everywhere.  Taylor claimed that her complaints were not the rantings of a “spoiled, petulant child,” but rather “echoed sentiments of every artist, writer, and producer in [her] social circles who [we]re afraid to speak up publicly because [they] admire and respect Apple so much.”  As she pointed out, Apple’s plan to offer royalty-free streaming during its initial start-up period could have had disastrous effects on artists planning to release new albums during that time.  While the cost of these royalties may not be relatively significant to Apple, the goodwill and favor fostered among artists, labels, and consumers is invaluable.  Apple’s move indicates that artists are finally succeeding in shifting royalty payments more toward their favor via lawsuits, negotiations, and now very public Twitter exchanges.  The power of public opinion is not only strong but, these days, instantaneously widespread, and Apple was smart to respond.

It seems that Sirius heard Apple too.  Just days after Eddy Cue’s public response to Taylor Swift, Sirius settled its lawsuit with the Turtles to the tune, no pun intended, of $210 million for its broadcast of songs produced before 1972.  Under the settlement, Sirius will continue to play the older songs until 2017, at which time it will strike new licensing deals with affected artists.  With this settlement in place and with the established prospect for older performers to collect royalties in the future, the Turtles and Sirius are once again “Happy Together.”

This public discourse over streamed music, copyrights, and royalty payments illustrates the fast-paced evolution of the industry since the introduction of digital music files in the Napster heyday.  Streaming services have been forced to anticipate and address the demands of artists, particularly that of the growing request for greater royalties.  While a voice as “loud” as that of Taylor Swift may warrant an immediate, calculated response, it is likely we will see more music royalties and other digital copyright litigation in the years to come.

ARTICLE BY

Annie Dike
IMS ExpertServices
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