Ask Dr. Copyright …

June 28th, 2014

copyright question Dear Doc:

Ever since you wrote about Aereo, the company with bazillions of tiny TV antennas and video recorders, I have been waiting for them to come to my town, so that I could get a decent television picture (no more of that digital BRAAAAP every 16 seconds unless I stand next to the TV holding up the antenna like some version of Lady Liberty!) What’s this I hear about six old folks deciding to shut down this wonderful service?

Signed,

My Arm Is Getting Really Tired

Dear MAIGRT:

On June 25, by a 6-3 majority, the Supreme Court decided that Aereo’s service violated the copyrights of the broadcasters. Now, I have to say that the Doc is having a hard time understanding this ruling. As I wrote in a past article, it seemed under the decision in the Sony Betamax case, that Aereo was just doing the same thing as having a videotape recorder: allowing a consumer to receive a free, over-the-air broadcast using an antenna, recording it, and playing it back later for herself. The difference was the location of the antenna, recorder, and screen. In 1976, the antenna was on your roof, connected by a 50′ wire to the recorder in your den, which was then connected by a 10′ wire to your TV. For Aereo, the antennas were on a roof somewhere (but not yours), connected to the recorder by the Internet, which was connected to your screen (TV, computer, tablet, or smart phone) also by the Internet. Like phones (which used to use long wires, and now use the Internet) and faxes (same), and movie rentals (your car going to Blockbuster, now Netflix over the Internet)… well, you see where this is going.

Nope! Not so fast. The grandmas and grandpas on our Supreme Court have just stepped onto the porch and yelled at Aereo to stay off their lawns. The majority expressly said that because Aereo’s system appears to be similar to a cable television system, that’s good enough. Never mind that the system does nothing until a subscriber “tunes” in a program, and never mind that each antenna and recording is individual and private. If it looks like a duck…shut it down.

As the Court said, “why should any of these technological differences matter? They concern the behind-the-scenes way in which Aereo delivers television programming to its viewers’ screens. … Why would a subscriber who wishes to watch a television show care much whether images and sounds are delivered to his screen via a large multisubscriber antenna or one small dedicated antenna, whether they arrive instantaneously or after a few seconds’ delay, or whether they are transmitted directly or after a personal copy is made?”

The three dissenting justices think that these things do matter. They term the majority’s approach “Guilt By Resemblance” but as they are the minority, the public is left to wonder what will become of Aereo. The company’s founder, Barry Diller, who also started the Fox Network, said that it’s, “Game Over”.¬† Score another one for big business.

One thing, however, is true: more and more people are “cutting the cord” and refusing to subscribe to cable television services. The next few years will be bumpy, but in the end, innovative services like Aereo are likely to prevail. Broadcast television started out as a public trust, using the public airwaves. Anyone was free to receive the signals. Broadcast television, operated in the public interest is dying. That seems to be fine with the cable companies. It seems to be fine with the FCC. The Doc likes a good book, anyway.

Interested in innovating new services? Talk to the attorneys at LW&H. They receive, store, and respond, without engaging in unauthorized public performances.

– Lawrence A. Husick, Esq.

Skins Lose Trademark Game Before the TTAB

June 28th, 2014

If you haven’t heard by now, this past week the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office canceled several trademarks owned by Pro-Football, Inc. (“Pro Football”) for the term “Redskins” on grounds that the marks were “disparaging to Native Americans.”¬† This issue has been around for some time and has been the subject of previous lawsuits in which Pro Football has prevailed.¬† Here’s a link to the latest opinion of the TTAB, which, if you’re interested, contains a summary of the previous litigation. Rather than try to summarize The TTAB’s 177-page opinion in this short column,¬† let’s briefly examine two questions raised by the decision:

  • Under what authority does the TTAB act to cancel a trademark for being disparaging?
  • Is Pro Football free to use the term “Redskins” even though the TTAB has cancelled its marks?

When a party wishes to cancel another party’s trademark, it has two options:¬† file a trademark cancellation proceeding with the TTAB, an administrative body that has the legal responsibility of adjudicating issues related to trademark applications and registrations, or file a lawsuit in United States federal court.¬† In the Redskins matter, the “plaintiffs,” five native Americans, chose the administrative route.

Section 2 of the Lanham Act, the law that controls trademarks, spells out under what circumstances a trademark may not be registrable, the first criterion being any trademark that

Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute ….

15 USC 1052(a).¬† Under this authority a court or administrative body such as the TTAB may cancel the registration of a “disparaging” trademark.¬† Actually, it’s not quite that simple.¬† The important question is how does a court determine whether a trademark is “disparaging?”¬† With respect to native Americans, the courts have devised a two-part test:


[1]  What is the meaning of the matter in question, as it appears the marks and as those marks are used in connection with the goods and services identified in the registrations?

[2]  Is the meaning of the marks one that may disparage Native Americans?

With respect to the second question, the law states that¬† whether a term such as “redskins” is disparaging to Native Americans, one must reference the views of Native Americans, not the the American public as a whole.¬† Based upon the evidence before it, the TTAB determined that, indeed, Native Americans viewed the term as disparaging and, as a consequence, it cancelled Pro Football’s trademark registrations.

Okay, so now that Pro Football no longer has registered trademarks, can it still use the term “RedSkin”?¬† The TTAB, as it noted, does not have the legal authority “to issue rulings concerning the right to use trademarks.”¬† Why?¬† That’s because trademark rights arise from use, not from registration. For example, if you have used an unregistered trademark (referred to as a common law trademark) first in time, you will prevail in litigation over a trademark holder that may own a registration but began using it later in time.¬† Because these so-called common law rights are unaffected by a federal registration, Pro Football is free to use “Redskin.”¬† A word of warning!¬† Common law trademarks are governed by state law so if state law disqualifies disparaging marks, Pro Football has a problem, particularly if it tries to enforce its trademarks in court.¬† Of course, whether continued use of “Redskins” is a good idea from a branding and marketing perspective after all the negative publicity is another question.

– Adam G. Garson, Esq.

Busy, Busy, Busy

June 28th, 2014

Supreme CourtThe Supreme Court has had a busy time of it in June stirring the patent pot, with decisions in three cases and arguments in a fourth. The general rule is that whenever the Supreme Court decides a patent case, the law is left in worse shape than it was before. The recent decisions are no exception. This month, we’ll take a look at Limelight v Akamai, decided June 2, 2014.

In Limelight, the Court considered “inducement of infringement.” Inducement of infringement occurs when one person causes, or induces, another person to infringe a patent. Where the patent is to a method of doing something, the inducement rule for many years has been that (a) one person must induce another person to infringe the patent, and (b) the other person must actually perform all of the steps of the method and thus infringe the patent. The person who caused someone else to infringe is liable for infringement, just is the person who actually infringed.

This rule worked fine when things were made from steel and wood, but has been a problem for Internet-implemented inventions that can be performed over a computer network by different people in different locations and even different countries.

The stage is set for Limelight and Akamai.

MIT owned patents relating to storage and retrieval of content over the Internet. MIT licensed the patents to Akamai, which runs a service utilizing the MIT patent to store and retrieve content. The patent (and the Akamai service) involves storing large files on servers located in different locations, and, hopefully, near the user who wants access to the file. Local storage of the large files allowed faster access by the user. One of the steps of the patent is that Akamai ‘tags’ which of a customer’s files are to be stored in the local servers.

Limelight operates a competing service that is just like Akamai’s service, but with one important difference – Limelight does not ‘tag’ the files. Instead, Limelight’s customers tag their own files, using advice and assistance from Limelight. Because Limelight does not tag the files, no one person performs all of the steps of the patent and there is no one that Akamai can sue for direct infringement. Because no one person performs all of the steps of the patent, under the old rule Limelight cannot be liable for inducement of infringement. Akamai has no remedy. Seems unfair, doesn’t it?

The Federal Circuit Court of Appeals thought so. It decided that the old rule did not work in the information age and that Limelight’s actions in copying Akamai’s business but avoiding the patent should not be tolerated and that Limelight should be liable for inducement of infringement.

The Supreme Court reversed and reinstated the old rule, seeing no reason to change. As a result of the Supreme Court’s decision, Akamai is without remedy and Internet copyists are free to cut a step from a method patent, instruct someone else to perform the missing step, and avoid patent infringement altogether. The value of Internet inventions, or in fact any method patent that can be performed by different people, has just dropped.

–Robert Yarbrough, Esq.

Be Afraid. Be Very Afraid.1

June 28th, 2014

A cyber security firm called Norse maintains what it claims to be a dynamic, real-time map of cyber attacks as they happen, showing cities of origin and targets.¬† The first thing you’ll do after viewing this constantly-changing map is update your security software.¬† The second is to clean the cobwebs out of your filing cabinet.

1. ‘The Fly,’ 1986, Jeff Goldblum and Geena Davis.

– Robert Yarbrough, Esq.

Ask Dr. Copyright …

May 30th, 2014

copyright question Dear Doc:

I have heard that the music and movie industries want Congress to add a new part to the Copyright Law, one that would say that it is a violation of a copyright owner’s rights to “make available” a copy of a work, even if the copy is never accessed by anyone. What gives?

Signed,

Marian the Librarian

Dear Marian:

Here at the Gary Conservatory of Copyright, we were taught that copyright protects authors, songwriters, and other creative types from the evils of people taking their work without paying for it (literally, that the creators control the right to copy.) How wrong our professors turned out to be!¬† You see, Congress has been adding more and more “exclusive rights” to the Copyright law for many years. Section 106 of the law (17 U.S.C. ¬∂106) lists six separate rights: (1) to reproduce …; (2) to prepare derivative works …; (3) to distribute … by sale or other transfer of ownership, or by rental, lease, or lending; (4) …to perform the copyrighted work publicly; (5) … to display the copyrighted work publicly; and (6) …to perform … by means of a digital audio transmission. This system of rights has grown up over the years as owners of works saw that technologies made new kinds of value possible. They have gone to Congress with an argument of, “if value, then right” and Congress, sensing that large campaign contributions might be involved, has usually gone right along with them.

Of course, some legal scholars have argued that the Constitutional mandate for Copyright, found in Article I, Section 8, Clause 8, is supposed, “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” They have made this argument, most recently to the Supreme Court, in trying to say that you can’t achieve this goal by stretching the term of copyright protection to far beyond the life of the author (since you can’t promote her doing anything about progress after she’s dead.)¬† Sadly, the Supreme Court just punted by saying (if you can believe this) that Congress knew what it was doing when it extended the term to life plus 70 years in the “Mickey Mouse Copyright Extension Act” (for a very complete history, click here)

Now, the recording and movie industries, together with other publishers, want a new right that they claim arises from international treaties that the United States signed a few years ago: the “making available” right. Recent court decisions in cases about Internet file sharing have required that the plaintiffs show that files were actually downloaded from the defendant’s computer (thus running afoul of the “reproduce” and “distribute” rights, if not some of the others.) The trouble, say the RIAA and MPAA, is that they should not have to prove this, because peer-to-peer software, such as BitTorrent, makes it hard to prove. Just putting a file into your shared folder on your hard disk should be enough, according to industry lawyers. Some cases also back them up. In one such case, penalties were handed down for just putting a book on a library shelf, even though there was no evidence that the book was ever checked out, or even taken from the shelf and read.

One of the dangers of doing away with proof of actual downloading is that it may exacerbate the problem of copyright porno-trolls. What, you ask, is a porno-troll???¬† Porno-trolls are companies that produce and own the copyrights to pornographic videos, and that sue people who they believe have downloaded such videos for copyright infringement. They usually sue a number of unnamed defendants (called the “Does” after that well-known defendant, John Doe and his significant other, Jane.) They usually offer to settle for a sum of money, and in return agree to a confidentiality provision that keeps the real name of the Does secret. Since most Does would rather not have their taste in video entertainment made public, this is a very successful business model, and one company, Malibu Media, filed almost one-third of all copyright law suits in the United States last year. For the full story, click here. Some courts defend this practice as legitimate, but other judges have been critical of the scheme.

So, Marian, that is why the Doc went to Washington, DC this month to testify at a Copyright Office meeting about this “making available” change to the copyright law. It’s complicated stuff, but in the end, the Doc thinks that Copyright has gotten out of hand, gone off the rails, and that the inmates are running the copyright asylum. What’s the chance that the Doc’s view will prevail? Hard to say, but at the meeting, there were a handful of folks saying that this needs a lot of careful thought, and dozens of lawyers from record companies, copyright troll companies (see last month’s column on that), the movie industry, and others, all demanding more rights and easier standards for winning law suits. The Doc does not condone any kind of copyright infringement, but when we have a law that is out of step with both ordinary behavior of citizens and with its foundational principles, something’s wrong. The Doc thinks we need to address that, rather than making it more wrong.

Until next month, if you have a copyright question, or get a threatening letter from Malibu Media (oops!), talk to one of the attorneys at LW&H… they eat this stuff for breakfast.

– Lawrence A. Husick, Esq.

“Raging Bull” and “Stairway to Heaven” — Old But Not Forgotten

May 30th, 2014

Supreme Court This week, the United States Supreme Court issued an opinion of great importance to those wishing to enforce their copyrights. In Petrella v. Metro-Goldwyn-Mayer, Inc., the Supreme Court clarified confusion among lower courts about whether the doctrine of laches (also known as unreasonable delay) could bar a lawsuit for copyright infringement.¬† While the court’s opinion may read to lay persons as legal mumbo-jumbo, it is of significant importance to copyright owners.

In Petrella, the copyright owners of the screenplay for “Raging Bull,” the movie directed by Martin Scorsese in 1980, sued MGM for damages resulting from the studio’s infringement.¬† Surely, you may ask, MGM had rights to the screenplay.¬† Well, at one time it did.¬† Petrella’s father and his co-author boxer, Jake LaMotta. assigned the rights to MGM, which registered the copyright in 1980.¬† However, when Petrella died in 1981, by law, the rights reverted back to his daughter.¬† MGM failed to obtain the rights after that event.¬† Petrella’s daughter waited until 2009 to sue the studio.¬† Because of her delay, MGM argued that her lawsuit is barred by the doctrine of “laches” or unreasonable delay.¬† The lower courts agreed but not the Supreme Court.¬† The Supremes held that laches was irrelevant to infringement, which is controlled by a three-year statue of limitations, and Petrella had a right to sue for any infringements – of which there were many – that occurred within the three-year period preceding her filing of the lawsuit.

During the same week that the Supreme Court handed down this decision, we also learned that the estate of Randy California, guitarist in the band Spirit, is suing Led Zeppelin for copyright infringement, claiming that the one of the greatest rock songs ever written, “Stairway to Heaven” uses riffs that California wrote for an instrumental called “Taurus.”¬† Stairway to Heaven was written in 1970, two years after Led Zeppelin and Spirit “shared stages” together during their U.S. tour.¬† Regardless of the lawsuits merits, it would appear that the estate of Randy California unreasonably delayed its lawsuit, particularly since it has been bandied about for years that Jimmy Page, the author of Stairway to Heaven, stole the opening riff from Randy California.¬† After Petrella, however, the 40 year delay does not appear to be a hindrance.

– Adam G. Garson, Esq.

Employer’s To-Do List: Get Invention Assignments from All Employees

May 30th, 2014

Do your employees create new inventions, products or designs?¬† Have all of your employees assigned all company inventions to the company?¬† If not, then the company does not own the invention, even if the invention was created on company time and with company resources and in the course of the employee’s work for the company.

That’s the takeaway from ¬†Peregrine Semiconductor v RF Micro Devices (S.D. Cal. 2014).

Peregrine developed new products and obtained patents for those products.  Peregrine sued RF Micro Devices for infringement of the patents.  During the course of the litigation, the parties learned that a former Peregrine employee should have been named as an inventor on the patents, but was not.  Peregrine usually obtained assignments of patent rights from all employees, but could find no such assignment from the former employee and the former employee had no recollection of signing such an assignment to Peregrine.  Instead, the former employee subsequently assigned his patent rights to RF Micro Devices, the accused infringer.

Peregrine now finds itself in the embarrassing position of co-owning the invention with RF Micro Devices,.

The case includes a discussion of the ‘hired to invent’ doctrine, in which a person is employed to solve a particular problem.¬† Under Federal common law; that is, law made by judges in their decisions, an invention created by a person hired to solve a particular problem is owned by the employer even if the inventor did not sign an assignment.¬† In the Peregrine situation, the former employee had performed several different functions for the company during the course of his employment and was not hired to solve a particular problem. He was not ‘hired to invent’ and Peregrine did not own his rights to the invention.

The result was that a preliminary injunction against RF Micro Devices was denied.

The bottom line?  Make absolutely sure that every employee has signed an agreement assigning patent rights to all company inventions to the company. The agreement can be in the employment agreement and can apply to inventions that the employee has not yet created.

– Robert Yarbrough, Esq.

Ask Dr. Copyright …

April 30th, 2014

Ask Dr. Copyright

copyright question Dear Doc:

I write the songs that make the whole world sing. Unfortunately, with all that songwriting, I really don’t have the time to listen to every radio station that plays my songs, every online store that sells them, and every band, chorus, glee club, and lounge act that covers them so that I can collect royalties. I have heard that there are organizations that will do all of that for me, and even sue people who don’t pay up. What gives? I thought that “trolls” were the bad guys, but this sounds like just what us musicians need in order to make a living.

Barry M.

Dear BM:

The organizations you’re referring to are called “Artists’ Rights Organizations” (AROs) and there are three big ones: Broadcast Music Inc. (BMI), American Society of Composers, Authors and Publishers (ASCAP) and the Harry Fox Agency (HFA). Each one of these companies is a nonprofit that licenses, collects, and distributes royalties on behalf of musical copyright owners. BMI and ASCAP license public performance rights to venues such as concert halls, bars, restaurants, stores, etc.. HFA licenses “mechanical” rights, which include the right to make CDs, records, tapes, and certain digital products. In addition, there are more than 200 similar organizations worldwide, and many have reciprocal agreements with one or more of the US-based AROs. Not to confuse you more, but record labels also license rights, and they have their own organization, the Recording Industry Association of America (RIAA).

It’s interesting to note that none of these companies writes any music at all! Nor do they arrange it or perform it. They just collect the royalties, and when someone refuses to pay up, they bring law suits, relying on the Copyright Law (17 U.S.C. ¬ß101, et seq.) which provides, among other things, that they can collect attorneys’ fees, and ask for statutory damages of up to $150,000 per song played or copied. But, I hear you shout, “Last month, Doc, you told us that this is pretty much exactly what companies that are being called “patent trolls” do with patented inventions! They don’t invent widgets, and they don’t make the widgets…they just offer to license patent rights, and when someone refuses to pay the royalty, they bring a law suit in which they demand a ‘reasonable royalty’”.

Yep…exactly! So there you have it. AROs are respected for the work that they do to help musicians make a living by licensing rights, collecting royalties, paying artists, and policing the use of the rights by using the legal system. They are important because, to quote the ASCAP website, “We know that there are many steps between creation and compensation. A music creator is like a small business, and we exist to ensure that ASCAP members are paid promptly and fairly when their compositions are performed publicly.” Now, to quote one “patent troll” website, “Patent licensing can be an effective and efficient way to maximize the profit potential of a patent. A patent license agreement grants a third-party user of the invention (an infringer) permission to practice the patented invention in exchange for remuneration.”

So there you have it. Patent trolls: BAD. Copyright trolls: GOOD.  Go figure!

If you have a question about how to license your intellectual property, give one of the attorneys at LW&H a call. They’re not trolls, but they do understand how to help creative people protect and profit from their creations, whether they are widgets, music, or some other wonderful new thing that will be the next hit.

Lawrence Husick, Esq.

Keeping the Cat In the Bag When Filing a Trademark Application

April 30th, 2014

safe One of the potential down sides of filing a trademark application with the United States Patent and Trademark Office is that the application, including the identity of the owner, is of public record, accessible to anybody.

If secrecy is important to your company’s marketing strategy then filing a trademark application is not an act to be taken lightly. So, if you are, say, Apple Computer, and you rely upon the anticipation of the product announcement to build up market hype and eventually sales, you will need to keep your trademark filings secret until the product announcement. How do you do that without spilling the beans?

The tried technique for maintaining secrecy is to create a dummy corporation that no one will recognize for filing your trademark applications.¬† Once the need for secrecy evaporates, the dummy corporation assigns the trademark to its true owner.¬† Apple, in fact, uses this technique. AppleInsider recently reported that a Delaware corporation called BrightFlash USA LLC recently filed a host of trademark applications for the iWatch trademark.¬† (Okay, everybody knows or thinks they know that Apple will be releasing a new product called the iWatch so what’s the point of keeping it secret? I guess it’s because nobody knows for sure.)

It’s not completely clear whether BrightFlash is actually an Apple Computer surrogate, however, numerous trademark filings for iWatch in the United States, the United Kingdom, the European Union, Australia, and Denmark, strongly suggest that Apple may be behind the trademark applications. AppleInsider also reported that there were numerous applications filed by BrightFlash for the iWatch trademark in smaller countries. Just an interesting tidbit from those who monitor trademark filings.

Adam G. Garson, Esq.

Provisional Patent Applications – File Early and Often

April 30th, 2014

USPTO Seal

A provisional patent application is a temporary application that provides patent-pending status for one year.  The provisional application can be a relatively low-cost way to preserve your patent rights while you develop your invention.  The protection offered by a provisional patent application is only as good as the information contained in the application and only addresses the invention as disclosed in the application.  The provisional application must include enough information in the specification (the narrative part of the application) and the drawings so that a person who is knowledgeable in the technical field of the invention can make and use the invention.

To have any continuing value, your provisional application must be followed within one year by a full U.S. non-provisional (utility) patent application.  If the invention is one for which you will seek international patent protection, your international patent application(s) also must be filed within one year of the provisional filing date.

If you develop improvements to your invention while your provisional application is pending, the improvements are not protected.   What to do? File another provisional application addressed to the improvements.

–Robert Yarbrough, Esq.