Intellectual Property Law Blog

"Avatar" Alleged to Infringe Novel by Local Author

Tue, 06 Jul 2010 11:28:07 GMT

A local author named Cynthia J. Clay recently filed a copyright infringement lawsuit alleging that the motion picture Avatar infringes her novel, entitled Zollocco: A Novel of Another Universe. The complaint, which was filed in the Southern District of Florida federal court, alleges instances of "strikingly similar" copying of portions of the novel, and claims that the name of the novel, Zollocco, was used as a war chant by principal characters in a critical scene in the movie (allegedly "Zha-lah-coooh").

The Defendants in the lawsuit include James Cameron and Twentieth Century Fox. As with any lawsuit alleging copyright infringement, the issues to be determined will include: (1) the Defendants' access to the novel; and (2) the degree of similarity between the accused work and the copyrighted work ("substantial similarity" if access can be proven, otherwise the alleged infringing work must be "strikingly similar").

The complaint offers just a few examples of the copying found in the screenplay for the film, which are alleged to be "strikingly similar" to portions of the 242-page novel, including the following:

"Sky people can not learn. You do not See." pg. 41, Avatar.

"It is impossible to commune with most humans," pg. 8, Zollocco.

"You go back." pg. 42, Avatar.

"Get back in your can! . . . Go back to your own kind!" pg. 8, Zollocco.

"His alien smell fills my nose." pg. 45, Avatar.

"Beat it, you smelly old human!" pg. 8, Zollocco.

In light of these examples, and the few others that are referenced in the complaint, it is anticipated that it will be met with an early motion to dismiss the action. The case has been assigned to the Honorable Adalberto Jordan, and seeks an injunction and award based on the Defendants' profits. According to reports, the film Avatar has grossed over $2.7 billion around the world to date.

The Narrow Scope of Bilski

Mon, 28 Jun 2010 14:23:13 GMT

As noted previously, the U.S. Supreme Court issued its long-awaited opinion in Bilski v. Kappos today. Although the Bilksi patent in dispute was drawn to particular business method claims for hedging risk and the application of that concept to energy markets, many in the field of intellectual property have been curious of the possible effects a decision in Bilski could have for other business methods, such as software and medical diagnostic methods.

For now, the intellectual property community will have to continue to wait. In Bilski, the U.S. Supreme Court limited their decision to the patentability of the particular methods of the patent at issue, and declined to address the patentability of business method claims in general, much less other specific kinds of business methods. Accordingly, other business methods, such as software and medical diagnostics methods, have not been ruled on, nor have they been ruled out.

Bilski v. Kappos: Business Methods Survive

Mon, 28 Jun 2010 13:41:00 GMT

Earlier today the Supreme Court issued its opinion in the highly anticipated case of Bilski v. Kappos involving the fate of business method patents. The Supreme Court opinion can be obtained here.

Briefly, the Court refused to categorically exclude business methods from the scope of patentable subject matter set forth in 35 U.S.C. 101. The Court further declined to impose limitations on the Patent Act that are inconsistent with its text stating that the "machine-or-transformation" test is not the sole test for determining patent eligibility under Section 101:

The Court is unaware of any "ordinary, contemporary, common meaning," of the definitional terms "process, art or method" that would require those terms to be tied to a machine or transform an article.

Nevertheless, the Court acknowledges that the "machine-or-transformation test is a useful and important clue, and investigative tool, for determining whether some claimed inventions are processes under §101."

The Fork in the Patent Examination Road

Tue, 08 Jun 2010 12:47:54 GMT

David Kappos, Director of the U.S. Patent and Trademark Office (USPTO), has recently announced the Office is considering a new initiative for the examination of patent applications filed in the USPTO. Referred to as the “Three Track” scheme, the applicant has the option of choosing how quickly or slowly they want their patent application examined. The three options are as follows:

Track I: accelerated examination (proposed 4 months to first Office Action; 12 months to final disposition)

Track II: traditional examination as currently applied (default track if one of the other tracks is not designated at filing)

Track III: delayed examination for up to 30 months (for non-continuing applications first filed in the USPTO)

The USPTO hopes that allowing the applicant to direct the timing of the prosecution will help the USPTO in reducing the current backlog the Office is experiencing. Importantly, it will allow applicants to more strategically plan their patent, and correspondingly, IP protection in general. For instance, the accelerated Track I could be beneficial for biotechnology and pharmaceutical inventions, as these technologies tend to evolve quickly and may benefit from faster examination. On the other hand, the slower Track III allows an applicant to delay payment of certain fees, and also provides time to assess the invention to determine whether to abandon or prosecute the application.

In addition, the initiative provides that if a US application is based on an earlier filed foreign application, the US application will not be examined until the foreign patent office has completed a search, provided a first Office Action, and the applicant has responded to the same. Once this has occurred, a US applicant can opt for accelerated or traditional examination in the US. In this manner, the USPTO aims to avoid duplicating work and increase their efficiency.

At this time, the initiative is a proposal and the USPTO is accepting comments. There will be a public meeting on this initiative on July 20, 2010 at 1:30 pm EST, in the USPTO’s Madison building, 600 Dulany Street, Alexandria, Virginia (registration is required by July 16, 2010 by 5:00 pm). Written comments can be submitted until August 20, 2010 by emailing 3trackscomments@uspto.gov or mailing to Mail Stop Comments-Patents, Commissioner for Patents, P.O.Box 1450, Alexandria, VA 22313–1450, marked to the attention of Robert A. Clarke.

FALSE MARKING - REAL DAMAGES

Wed, 26 May 2010 19:26:05 GMT

On remand from the Federal Circuit, the U.S. District Court for the Southern District of Texas based a damages award for false patent marking on the highest selling price of the falsely marked products.

In Forest Group Inc. v. Bon Tool Co., 2010 U.S. Dist. LEXIS 41291 (S.D. Tex. Apr. 27, 2010), the Court found "the appropriate fine in this case is $180.00 per article, the highest point of the [sales] price range. This will deprive Forest of more than it received for the falsely marked stilts, fulfilling the deterrent goal of §292's fine provision." (emphasis added).

As previously reported herein, the Federal Circuit decision in Forest Group Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009) radically changed the legal landscape with regard to false patent marking under 35 U.S.C. §292, which prohibits the use of patent or patent pending designations "for the purpose of deceiving the public" and provides for a maximum penalty of $500 "for every such offense." Prior to the Federal Circuit's decision, courts typically treated the false marking of multiple units of a product as a single "offense", thereby limiting damages to $500 per decision, however, in Forest Group, the Federal Circuit held that a fine must be imposed separately for each falsely marked product. The Federal Circuit did note that in some cases the appropriate measure of damages may only be a fraction of penny per article.

While the resultant total damages award by the District Court in Forest Group is relatively nominal ($6,840.00) due to the limited number of the falsely marked products sold, it is noteworthy that the Court elected to strip Forest Group of "more than it received", perhaps signaling an end to the era of lax enforcement under §292.

COURT RULES THAT THERE'S NO "I" IN "NFL"

Thu, 27 May 2010 10:50:51 GMT

In a unanimous decision released yesterday afternoon, the U.S. Supreme Court held that the National Football League (NFL) is not immune from antitrust laws and should be considered an umbrella organization consisting of thirty-two separate teams rather than a single entity. The Court's ruling will allow an antitrust lawsuit filed against the NFL by American Needle -- a clothing manufacturer -- to move forward. Writing for the Court, Justice Stevens stated that "[d]ecisions by NFL teams to license their separately owned trademarks . . . to only one vendor are decisions that deprive the marketplace of . . . actual or potential competition."

American Needle filed the suit after it was prohibited from continuing to produce branded clothing for NFL teams following the NFL's execution of a ten-year exclusive licensing agreement with Reebok. Should American Needle ultimately prevail, the structure of NFL license schemes will change dramatically and individual teams will be permitted to negotiate their own license deals. For this reason, the decision may likego down as one of the landmark sports law and licensing decisions of the past few decades.

For more information click here.

A NEW TWIST – “HAVANA CLUB” RUM

Mon, 24 May 2010 22:04:12 GMT

On April 6, 2010, the District of Delaware ruled in favor of defendant Bacardi U.S.A., Inc. in a false advertising action brought by Pernod Ricard USA LLC. This was the latest development in a lengthy dispute over the right to use “HAVANA CLUB” on rum, in the United States.

In finding that Bacardi U.S.A.’s rum labels were neither false nor misleading, the Court pointed to two alternative interpretations regarding the scope of “geographical origin” as used in Lanham Act Section 43(a)(1)(B). One interpretation was that “geographical origin” would implicate the place of manufacture. A broader interpretation would take “geographical origin” to encompass the source of a product’s heritage or some aspect of a product’s history. The Court indicated that it reached the same result under both alternatives, due to the prominent display of the actual place of manufacture (Puerto Rico) on the labels as well as a clear demonstration of the product’s Cuban heritage (Bacardi was originally a Cuban company, and the recipe for its Havana Club rum was derived primarily from a historically Cuban recipe).

The Opinion also provides an interesting summary of related prior litigation which includes various issues associated with the U.S. embargo against Cuba.

District of Delaware Opinion issued April 6, 2010 [some additional navigation may be required]

http://www.ded.uscourts.gov/SLRmain.htm

Why Facebook's New Privacy Policy might result in Litigation

Tue, 18 May 2010 14:00:53 GMT

At first I was reluctant to write yet another blog entry on Facebook, but after noticing that more than fifty percent of my Facebook friends are complaining about the new privacy policy in their status I decided that non-Facebook users might want to know what all the cyber chatter is about. As you will recall, it was forecasted some months ago in Wired Magazine that Facebook would eventually harness its users’ information and offer the same to search engines. Following the article, Facebook changed its default privacy setting to allow advertisers to use their users’ pictures. The change resulted in many Facebook users logging in to alter the default setting. Now there are more changes to your Facebook default settings which the New York Times cleverly placed in a chart to make sense of the privacy mess.

I took a few a minutes to change my default settings but according to Facebook I am in the minority. However given the length of the new policy, I think it’s safe to predict that sooner rather than later someone will challenge Facebook’s new policy and sue them for Copyright infringement and/or Right of Publicity. And while Facebook claims that users acquiesce to the policy by using the service, as the policy gets longer and more complicated, Facebook's ability to prove consent in court gets more and more difficult.

Till then I am, as Facebook put it when I changed the default setting, happy to decline the many benefits of the "New Facebook Experience."

LimeWire Liable to RIAA for Copyright Infringement

Thu, 13 May 2010 09:59:31 GMT

The Recording Industry Association of America (RIAA) has prevailed in its copyright infringement lawsuit against LimeWire, one of the largest remaining commercial peer-to-peer services. The Court ruled that LimeWire was liable for copyright infringement because its users commit a "substantial amount of copyright infringement" and the company behind the software "has not taken meaningful steps to mitigate infringement."

RIAA has alleged that at least 93 percent of LimeWire’s file sharing traffic was unauthorized copyrighted material. The RIAA is seeking up to $150,000 per violation, although the final damages have not yet been determined.

This was the first case against a file sharing software maker after the 2005 Grokster decision, in which the U.S. Supreme Court upheld lawsuits against companies that induced or encouraged file sharing.

Click here to read the Court 's Opinion.

A Matter of Import: High Court to Review First Sale Doctrine

Mon, 19 Apr 2010 14:51:33 GMT

Earlier today, the United States Supreme Court granted a request by Costco, the wholesale retailer, to review a federal appellate decision involving the first-sale doctrine under copyright law, in connection with the purchase and resale by Costco of Omega brand watches that were purchased on the gray-market (also known as parallel imports). In general, the first-sale doctrine allows the owner of a particular copy of a copyrighted work which was "lawfully made" to resell that copy without permission from the copyright holder.

In the proceedings below, Costco argued that it could not be held liable for copyright infringement for reselling the gray-market goods, after the initial foreign sale of the goods by Omega to another entity (which then re-sold the watches to Costco via the so-called "gray-market"). The trial court ruled in Costco's favor, but that ruling was overturned on appeal.

The appellate court below, the Ninth Circuit Court of Appeals, ruled that the first-sale doctrine did not apply to imported goods manufactured abroad, and thus Costco did not have a defense under the first-sale doctrine to resell the gray-market Omega watches without Omega's authority. The United States Supreme Court will now likely determine whether the first-sale doctrine applies to imported goods that are manufactured abroad, including the gray-market goods at issue in the case.

The decision of the Ninth Circuit Court of Appeals can be found here.

A revealing approach to social networking is unveiled

Tue, 20 Apr 2010 14:07:55 GMT

If you were concerned about Facebook, wait until you hear about Unvarnished. Getunvarnished.com, which just launched in beta, has been described as a website wherein Yelp meets LinkedIn.

The site with the tag “truth in reputation” allows users to create profiles and rate other users in the hopes of revealing the truth about the individual. However, the social networking site has been severely criticized for having little to no security controls. Specifically, the site only verifies a user’s identity through Facebook to insure that he/she is not a minor and then proves the user with carte blanche to create profiles and rate individuals anonymously. And since the purpose of the “reviews” is to reveal who an individual “really is” the user, who is being rated, is unable to delete and/or vote on negative posts about himself/herself.

Supporters of the site have said that the truth will bear out and that users can have their friends post positive comments that will offset any erroneous or negative comments. The co-founder of the site even insists that it will not turn into a burn book but rather an opportunity for people to see what others really think of them. Time will tell if Unvarnished becomes a useful social networking site or the perfect platform for defamation. Either way, the sites very existence continues to expand the private/public distinction and limits the scope of personal privacy. Not surprisingly, like Facebook, My Space, Twitter and Yelp it is one more site that may require legal monitoring.

PTO Considers Deferred Patent Fee Program (and Deferred Examination) - Your Thoughts?

Tue, 06 Apr 2010 20:23:41 GMT

The U.S. Patent and Trademark Office is considering a new program which will provide applicants the option to defer payment of a considerable portion of the fees due upon filing certain U.S. patent applications for up to 12-months. The program is intended to allow applicants additional time to evaluate the market potential of their invention, before incurring the full costs of pursuing a U.S. patent.

The fee deferral program is proposed for applicants filing non-provisional applications which claim priority to a provisional patent application, within the 12-month provisional period. Applicants electing to take advantage of the deferred fee option would not be entitled to file a Request for Non-Publication with the non-provisional application. Under the proposal, applicants would only be required to pay the basis filing fee, currently $330 (or $165 for small entities), and would be allowed up to 12-months from filing a qualifying non-provisional patent application to pay the search and examination fees, currently $760 (or $380 for a small entity), along with a surcharge and any additional fees which may have been incurred. Of course, until the additional fees have been paid, the application will not be placed into the queue for examination by the PTO.

In addition to deferring fees for applicants,, the PTO believes the program, if implemented, will help decrease the backlog of pending applications, as at least some portion of applicants filing under the proposed program are expected to simply allow their applications to go abandoned.

The PTO is seeking public comment on this proposed program, so let them know what you think!

For more information click here.

Gene Patents Invalid?

Mon, 05 Apr 2010 18:42:31 GMT

Gene patents are currently a hotly debated topic, having caught the attention of the public and the media, including the news program 60 Minutes^TM. The debate essentially pivots around the interpretation of whether a gene patent improperly covers a gene as it occurs within the human (or when isolated is no different from the natural gene), as opponents contend, or whether the patent is merely protecting an isolated version of the gene as produced by the hand of man (and therefore is no different than any other chemical compound), as proponents maintain.

The debate has been raging in federal court in New York since last May, concerning several patents owned by Myriad Genetics that involve the BRCA1 and BRCA2 genes, which are implicated in breast cancer. Last week, the judge in that case ruled that several claims of the patents were invalid for encompassing non-statutory subject matter. Association for Molecular Pathology, et al. v. United States Patent and Trademark Office, et al. (S.D.N.Y.). Some interpret this to mean that gene patents are invalid.

But before leaping to that conclusion, consider: only some of the claims were found invalid, leaving many other claims valid. Also, the decision concerned particular claims of certain patents; the Court did not address the broader constitutionality aspects of the case, so this decision is narrowed in its scope. Additionally, the Defendants are appealing this judgment to the Court of Appeals for the Federal Circuit, who will review the decision and may overturn it. It seems likely, though, that since this is such a significant case, it could go all the way to the U.S. Supreme Court before the public, and patentees, have a final answer on this important question.

A GLIMPSE INTO MICROSOFT'S NEW MOBILE OS

Fri, 02 Apr 2010 11:19:58 GMT

Yesterday, on April 1, 2010, the U.S. Patent & Trademark Office published Microsoft Corporation's patent application for a "Panoramic Graphical User Interface" (U.S. Patent App. Pub. No. 2010/0083165). As seen below, the panoramic GUI includes a "contiguous background" and a collection of mixed-media content, such as music, video, games, and podcasts.

The panoramic GUI may extend beyond the boundaries of the display screen in either a vertial or horizontal orientation, and is capable of being panned in a smooth, unrestricted manner to any desired position. In other words, the GUI need not pan by increments the same width or dimension of the display screen.

The "Panoramic Graphical Unser Interface" is a feature which will likely be found in the new, and widely anticipated Windows Phone 7 Series as well as the Zune HD.

SELLER OF "YAAGBOMB" CUPS SUED FOR PATENT INFRINGEMENT

Thu, 01 Apr 2010 11:35:09 GMT

A Bradenton, Florida company has sued Cup Solutions, Inc., an online seller of cups used for mixing drinks with shots of hard liquor, alleging that the Defendant's "YAAGBOMB" cups, pictured below, infringe a patent owned by Hurricane Shooters, LLC, the Plaintiff.

In the complaint, Hurricane Shooters alleges that it owns U.S. Patent 7,243,812, for a "Plural Chamber Drinking Cup," and claims the cup was invented in 2005 by two Bradenton, Florida residents. Some of the drawings from the patent appear below.

The complaint, which seeks damages, injunctive relief, and attorneys' fees, is pending before United States District Judge Richard A. Lazzara, of the Middle District of Florida, Tampa Division.