Ask Dr. Copyright …

September 30th, 2014

copyright question

Dear Doc:

I read recently that music stars Robin Thicke, Pharrell “Hat” Williams and Clifford “TI” Harris Jr. have sued the late Marvin Gaye’s kids. Thicke and his buddies, according to the news, claim that they did not steal parts of Gaye’s song “Got to Give it Up” in the hit from a year ago called “Blurred Lines” and they want a judge to say so, too. Of course, the Gaye kids have countersued (doesn’t everyone?) So what gives, and what about the deposition that Thicke gave in the case?

Signed,

Thicke and Tired of Dumb Litigation

Dear T&T:

You’ve got the facts basically right. The Gaye kids said in public that Thicke et al. (that’s lawyer talk for “all y’all”) misappropriated (that’s lawyer talk for “done ripped off”) certain musical elements of “Gotta Give it Up”,¬†Gaye’s blockbuster 1977 hit. The Gaye kids claim that “Blurred Lines” is an infringement of their copyright in their dad’s song (and to make matters legally complex, they don’t own all of the copyright rights, just some of them.)

Courts decide these kinds of cases by comparing the two compositions, and trying to figure out if one is either a direct copy of the other, or whether the writers of the allegedly infringing music had access to the original, and produced another composition that is “substantially similar” to the original. Such determinations are often made with the help of expert witnesses (musicologists) who discuss the structure of the musical components (bass lines, melodies, rhythms, etc.). Then it’s up to a jury to sort it all out.

During his deposition in the case last April, Robin Thicke was a textbook example of how not to give testimony. He complained about having to listen to a “mashup” of the two songs, saying, “It’s like nails on a f-ing chalkboard. … This is [like] Stanley Kubrick’s movie Clockwork Orange. Where he has to sit there and watch … Mozart would be rolling in his grave right now.”

Thicke was asked about an interview that he gave to GQ Magazine in which he said, “Pharrell and I were in the studio and I told him that one of my favorite songs of all time was Marvin Gaye’s ‘Got to Give It Up.’ I was like, ‘Damn, we should make something like that, something with that groove.’ Then he started playing a little something and we literally wrote the song in about a half hour and recorded it.” Thicke replied that he, “had a drug and alcohol problem for the year” and “didn’t do a sober interview” (full transcript).

Thicke was then asked about the song:

“Q: Were you present during the creation of ‘Blurred Lines’?

Thicke: I was present. Obviously, I sang it. I had to be there.

Q: When the rhythm track was being created, were you there with Pharrell?

Thicke: To be honest, that’s the only part where – I was high on Vicodin and alcohol when I showed up at the studio. So my recollection is when we made the song, I thought I wanted – I¬† – I wanted to be more involved than I actually was by the time, nine months later, it became a huge hit and I wanted credit. So I started kind of convincing myself that I was a little more part of it than I was and I – because I didn’t want him – I wanted some credit for this big hit. But the reality is, is that Pharrell had the beat and he wrote almost every single part of the song.”

Remember, this is just a deposition. Whether that testimony ever makes it in front of a jury, and whether they determine that there has been copyright infringement is still in the future. For now, though, the lesson of the case for the “Doc” is very un-blurred. Before you give a deposition, know your lines, and before you go into the studio, try to be clear. Oh, and try not to throw your friends under the litigation bus if you can by being truthful and cooperative.

Until next time,

The Doc

— Lawrence A. Husick, Esq.

LWH Scores Another Success Against Domainer

September 30th, 2014

domains Lipton, Weinberger & Husick (“LWH”) recently scored another success against domainer, Marchex, Inc.¬† Here’s some background.

Domainers – those who speculate in domain names – set up web sites for purposes of selling a domain or obtaining pay-per-click revenues. When the domain is identical or similar to another company’s trademark, trademark owners will attempt to enforce their rights.¬† Some of the larger domainers are willing to accept push back from trademark owners as the cost of doing business.¬† Once such domainer, Marchex, Inc. (“Marchex”), which sells domains from its considerably large portfolio through its Archeo Domains Marketplace, concedes in its corporate filings that defending trademark disputes is part of its business.

Some years ago, LWH won a case against Marchex on behalf of its client, Superior Play Systems¬† (“SPS”).¬† SPS’ goal was to obtain the superiorplaysystems.com domain name from Marchex.¬† The key to prevailing in that case was that SPS was using SUPERIOR PLAY SYSTEMS as a common law trademark years before Marchex acquired the superiorplaysystems.com domain.¬† Had Marchex performed a simple Internet search before registering its domain, it would have learned that it was identical to another companies’ trademark.¬† That was a good enough reason for the arbitrators to order Marchex to transfer the domain name to its rightful owner, Superior Play Systems (NAB Claim No. FA1103001379684).

This month, LWH had another success against Marchex.¬† In this case, like the Superior Play Systems situation, Marchex apparently purchased the “bequick.com” domain name during the same period that our client, BeQuick Software, Inc. (“BeQuick”), was already using BEQUICK as a common law trademark.¬† Rather than litigate, BeQuick decided to purchase bequick.com from Marchex.¬† A series of purchase offers were made, culminating in an offer of $12,500, which BeQuick justified to Marchex as similar if not in excess of other sales of similar domain names.¬† Marchex rebuffed the offer, ignored the justification, and refused to counter offer.¬† Holding out for high five figures, Marchex invited BeQuick to make yet another offer.¬† Rather than continue to bid against itself, BeQuick authorized LWH to reclaim its domain name by filing a Uniform Domain Name Dispute Resolution Policy (“UDRP”) complaint against Marchex with the National Arbitration Forum.¬† Once the complaint was filed, Marchex quickly settled and BeQuick obtained its domain name.¬† You can review the complaint here.

Despite these successes, domainers often prevail because owning a domain name — even if it is similar to another company’s trademark — is not necessarily infringement or constitute “bad faith” under UDRP precedents.¬† Domainers have created very successful businesses selling domains and parking them for pay-per-click revenue.¬† Under the right circumstances, however, when a domainer acquires a domain without due diligence, exercises bad faith in the sales process, or creates confusion in the market place, a trademark owner may have a good shot at reclaiming its domain.

Adam G. Garson, Esq.

Commentary: Queen of Hearts: “Off with His Head!”

September 30th, 2014

Supreme Court Seal Readers may recall that in our July newsletter we reported on the wonderland Supreme Court decision in Alice v. CLS Bank. The offspring of the mischief that decision created have now formed a deluge of cases during the past month and a half (for example, see the above article).

To briefly review, the Court has grafted onto statutory (Congress enacted) patent law the concepts that one cannot obtain a patent on a law of nature, a natural phenomenon, or an abstract idea. In particular, the Court has refused to define what it means by “abstract.” In fact, in Alice, the Court expressly refused to delimit the contours of what an abstract idea is. Like its previous case of In Re Bilski, which also concerned an “abstract” business method, the Court in Alice decided another well established business method was abstract. Further, the Court said that merely using a generic computer to implement the abstract method does not make the method patentable. One could conclude that well established business methods were abstract and the matter could end there.

However, the language in Alice can and has been read more generally to suggest that methods of organizing human interactions are mere ideas and therefore are abstract. Following this suggestion in Alice, the lower courts have been having a field day declaring that granted patents are invalid because they merely implement an abstract idea with a computer. So far approximately (at last count) 12 issued patents have been declared invalid during August and September. A few examples: 1) a method of guaranteeing a financial transaction over the internet; 2) a method of playing bingo repetitively with many numbers; 3) a method for exchanging identities between anonymous parties on the internet; 4) a method of up-selling over the internet (pointing out additional items a buyer may want); 5) a method of exchanging loyalty points accrued from one vendor with another vendor; 6) a computerized method for rounding-up credit and debit transactions to the nearest dollar and then using the money for special use; and finally, 7) a non-business method claim for a method to animate lip synchronization with sound and facial expressions of animated characters.

Where this will all end is up in the air. We will continue to pay close attention to the currents of the developing case law in order to best advise our clients. Needless to say, a lot of time, money, and effort expended by inventors to obtain their patents has been undercut by the Court without statutory basis or clear guidance. It may well be time for Congress to step in and try to clean up the mess.

— Laurence Weinberger, Esq.

See the Amazing Shrinking Software Patent (Before It’s Gone)

September 30th, 2014

As discussed above, the Alice v CLS Bank decision of the United States Supreme Court has the potential to preclude patent protection for many software and computer-implemented inventions and to invalidate many issued patents for those inventions.  The Court gave only the sketchiest guidance on how to determine when a claimed invention is too abstract.

The lower courts now are applying the Alice decision to computer-related inventions unrelated to old business methods.   This month, the Central District of California decided Planet Blue v Activision, which involved patents related to automating the process of synchronizing movement of the lips of an animated character with a pre-recorded sound track.  The Planet Blue invention was new and solved a real technical problem in computer animation.

The trial court decided that the Planet Blue patent claims nonetheless did not address patentable subject matter under Alice because the claims of the patent were, effectively, too broad.¬† The court identified what was new about the invention as included in the claims; namely, using ‘rules, rather than artists,’ to set particular parameters for lip movement as the animated character transitioned from one sound to another.¬† Although there was considerable detail in the claims, that detail was old and the claims did not include specifics of the rules.¬† The court concluded that the claims stated an abstract idea and effectively said ‘apply it,’ which Alice determined was not patentable.

If the Planet Blue approach becomes the law of the land (it’s not yet), then software patents likely will become very narrow.¬† This area of the law is in rapid flux and we anticipate that the Planet Blue decision will be reviewed by the Federal Circuit Court of Appeals.

— Robert Yarbrough, Esq.

Ask Dr. Copyright …

August 29th, 2014

copyright question Dear Doc:

What do an elephant, a monkey, and the United States Federal Government have in common?

Signed,

The Riddler

Dear Riddler:

The answer to your query is: none of them can own copyrights! (Bet you didn’t see that one coming! BIFF! POW! BAM!!)

Under federal copyright law (17 U.S.C. ¬ß101 et seq.) works created by the federal government cannot be protected by copyright law – the taxpayers paid for it, so we all get the right to use it. For entirely other reasons, non-human animals cannot be authors, and there is no copyright for what they create – it’s also in the public domain. Now, I know what you’re thinking…if corporations can be authors under federal law, and can author works in which they own copyright, what sense does it make to say that highly intelligent, not to mention cute elephants that paint wonderful watercolors, and monkeys who are photographers can’t be legal authors? Besides, how do we KNOW that monkeys don’t have copyrights?

Well “Rid”, in 2011, photographer David Slater had his camera taken by a very self-aware monkey in Indonesia. The monkey snapped a “selfie” which later made its way into the web site Wikimedia Commons. Here’s the photo in question:



When Mr. Slater wrote to Wikimedia, demanding that it remove the photo, their response was, in effect, “monkeys don’t have copyrights, so the photo is in the public domain, and we don’t care that it was your camera.” That may sound harsh, but the United States Copyright Office, in a recently-published proposed guideline said the same thing:

The Office will not register works produced by nature, animals, or plants. Likewise, the Office cannot register a work purportedly created by divine or supernatural beings, although the Office may register a work where the application or the deposit copy(ies) state that the work was inspired by a divine spirit. Examples: A photograph taken by a monkey. A mural painted by an elephant….

It turns out that the legal justification for this policy is, “The copyright law only protects “the fruits of intellectual labor” that “are founded in the creative powers of the mind.” (ZAP!) – So…it turns out that the reasoning IS the same! When was the last time that you thought that there was even a shred of “creative powers of the mind” in the government?

It may yet turn out that animals (at least smart ones like dolphins) have “creative powers of the mind”. That would certainly make a monkey out of the guys at the Copyright Office.

As Douglas Adams wrote in “A Hitchhiker’s Guide to the Galaxy,”

…on the planet Earth, man had always assumed that he was more intelligent than dolphins because he had achieved so much-the wheel, New York, wars and so on-whilst all the dolphins had ever done was muck about in the water having a good time. But conversely, the dolphins had always believed that they were far more intelligent than man-for precisely the same reasons.

So…if you have a talented pet that is especially creative, I suggest that you do what all great teachers do: take all the credit. Then call an attorney at LW&H to register copyright, but don’t dare tell them that your Norwegian Blue is the author. After all, the plumage don’t enter into it! (Just kidding!)

The Doc.

— Lawrence A. Husick, Esq.

Hit Show Upsets Pennsylvanians (and others)!

August 29th, 2014

You may have heard about the Discovery channel’s popular TV series, Amish Mafia.¬† The Discovery Channel describes the show:

Untrusting of outside law enforcement, some Amish in Lancaster County, PA have for many years regularly turned to a small organized group of men for protection and justice. Discovery’s new series Amish Mafia provides a first-ever look at the men who protect and maintain peace and order within the Amish community in Lancaster.

This has the Amish community quite upset because, they say, there has never been a so-called Amish Mafia and that any suggestion that the Amish would be involved in such an endeavor is disparaging, insulting and bigoted.¬† Amish culture values pacifism and harmony, not “violence and retaliation.”

According to the Philadelphia Inquirer, there are a number of Lancaster County activists taking the bull by the horn.  Mary Haverstick has the led the charge by creating the respectAmish.org web site. Governor Corbett and congressional officials have sent a letter to the Discovery Channel requesting it to pull the show.

So why are we writing about this?¬† Is there an intellectual property angle here?¬† Of course.¬† The Inquirer also reports that Brad Igou, president of the “Amish Experience” has created an “Amish Mafia Exposed” tour.¬† So, predictably, the Discovery Channel wrote Mr. Igou a cease and desist letter, accusing him of trademark infringement.¬† Well, maybe, but how strong is that allegation?¬† You may recall that we wrote recently about the Washington Redskins’ troubles at the USPTO.¬† Its trademark registrations were cancelled by the Trademark Trial and Appeal Board on the basis that they are disparaging to Native Americans.

We took a look at the trademark filing for AMISH MAFIA as it pertains to entertainment services and, consistent with the Redskins case, the USPTO denied the Discovery Channel’s application on grounds that

AMISH MAFIA as used for the applicant’s entertainment services conveys the idea of a criminal organization composed of members of the Amish religious sect, and such a meaning is disparaging to a substantial composite of that religious sect.

Of course, the Discovery Channel has appealed but, in the meantime, all it has are common law trademark rights governed by Pennsylvania law.¬† No doubt, under Pennsylvania statutory law, the Discovery Channel would have the same problems registering AMISH MAFIA in Pennsylvania as it does on the federal level.¬† Pennsylvania law prohibits registration of trademarks that disparage a person’s beliefs or bring them in disrepute.¬† Whether Pennsylvania courts apply this standard to a common law trademark, to the best of our knowledge, has not been determined.¬† This will be an interesting story to follow.

— Adam G. Garson, Esq.

Patent Litigation: Collecting Attorney’s Fees Just Got Easier!

August 29th, 2014
Supreme Court

Patent infringement litigation usually is high stakes and very expensive.  The cost of the litigation can easily reach seven figures or more.  In the United States, each party to litigation generally bears its own costs, with exceptions.   Section 285 of the patent statute contains the exception for patent litigation.  The statute is short and sweet:

The court in exceptional cases may award reasonable attorney fees to the prevailing party.  (Emphasis supplied).

But what cases are ‘exceptional?’¬† In the past, the Federal Circuit Court of Appeals, which hears patent appeals, only allowed an award of attorneys fees if the claim or defense was ‘objectively baseless’ based on ‘clear and convincing evidence.’¬† This standard favored patent owners seeking to enforce patents and provided a bright-line, predictable result.

Earlier this year the Supreme Court in Icon Health & Fitness rejected the Federal Circuit bright-line standard, and, in keeping with the recent Supreme Court approach to patent cases, adopted a fuzzy-is-better standard:

¬†…an “exceptional” case is simply one that stands out from the others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated. District courts may determine whether a case is “exceptional” in the case-by-case exercise of their discretion, considering the totality of the circumstances…

The Federal Circuit recently considered the Icon Health & Fitness case on remand from the Supreme Court and sent the case back to the lower court for decision on the attorneys fee issues.¬† The Federal Circuit reminded the lower court that the attorneys fee decision does not stop with a determination that a case is ‘exceptional.’¬† The lower court has discretion to deny attorneys fees even in exceptional cases.¬† The decision of the lower court judge will be reviewed on appeal only to determine whether the judge abused his or her discretion, which means the Federal Circuit will defer to the lower court judge in almost all cases.

The effect of the decisions is to transfer power from the Federal Circuit to the district court judges who hear the witnesses, see the evidence, and observe the litigation behavior of the parties.  The effects on the parties are to reduce the predictability of patent litigation, to increase the risk to every patent litigant, and generally to discourage patent litigation.

— Robert Yarbrough, Esq.

Ask Dr. Copyright …

July 31st, 2014

copyright question Dear Doc:

Seems to me that us vegetarians don’t get no respect in court. I heard that “Lettuce Turnip the Beet” got ripped off by that infamous pirate and parachute flapping no-good Gymboree Corporation, and the judge wouldn’t lift a finger to help.¬† What gives?

Signed,

Rootin’ for the Little Guy

Dear Little Root:

Since 2011, Elektra Printz Gorski (wow, say THAT three times fast!) has sold T-shirts bearing the phrase, “lettuce turnip the beet” to people who, it seems, like to confuse small children with homophones (and don’t get me started on equal rights, or there’s gonna be a rumble…) She sold these clothes in the the SoHo neighborhood of New York, and on line at etsy.com. (By the way, SoHo is a contraction of the terms “So…Hope You Can Afford to Shop Here”, but the Doc digresses.) Gorski registered a copyright in her phrase, as well as two trademarks for it.¬† Gorski said that, “Gorski’s light grey heather shirt for children is widely considered one of the most popular children’s products ever pinned on Pinterest under their ‘Popular’ heading and has over 120,000 product views on Etsy making it one of the most popular products ever on Etsy.” Wow!

Then, quicker than you can sing “Gymbo the Clown Goes Up and Down” 731 times, the Gymboree Corporation starts selling shirts that say, you guessed it, “Lettuce Turnip the Beet”. Of course, Gorski sued. Gymbo moved to dismiss claiming that you can’t protect an “arrangement of a short phrase”.

Judge Lucy Koh, the same judge who has ruled on the giant law suits between Apple and Samsung that have involved over $1 BILLION DOLLARS in damages, ruled, at least in part, for Gymboree. Seems that copyright can’t protect just a few words – although how many is enough is not spelled out in her ruling.

On the bright side for Gorski, she also has two registered trademarks, and Judge Koh did not dismiss her trademark claims against Gymboree, finding that any defenses it may have are premature at this stage of the case.

The Doc certainly can sympathize with all the vegetarians out there. In fact, one of the Doc’s favorite revolutionary anthems supports vege-civil disobedience. If you, too, have a short phrase that you wrote on a slip of paper and mailed to yourself, thinking that you now have a copyright, be sure to speak to one of the attorneys at LW&H. They will gently tell you that you’ve wasted a stamp, and help you to get actual legal protection for your products.

Let’s “ketchup” next month.¬† Until then, I remain your libertarian, nonsectarian, vegetarian (well, except for the occasional 42 oz. porterhouse) friend.

The Doc.

— Lawrence A. Husick, Esq.

Trademarks, Personal Names, and Chocolate

July 31st, 2014

A client recently asked whether he could apply to register his personal name as a trademark.¬† Of course, just ask Lebron James, Sarah Palin, Arnold Schwarzeneggr, or Elvis (if you catch sight of him), all of whom registered their names as trademarks.¬† Does that mean if your name is “Joe,” you can register “Joe’s Bar” for restaurant services?¬† Not exactly, there are some rules.

First, your name must be distinctive.¬† That is, when people see your name they have to first think of the goods or services you are branding, not you personally.¬† How does this happen?¬† Well, you use your name as a trademark, you spend a lot of money investing in the branding process, and, if you’re successful, it eventually happens.¬† It’s called “secondary meaning”.¬† We’ve written about secondary meaning or acquired distinctiveness before.

Second, your name cannot be confusingly similar with other trademarks in use.¬† So, if your name is Joe and you run a bar, imagine how hard its going to be to prevent confusion between your bar and “Joe’s Bar” on the other side of town.¬† (Of course, you cannot register a mark with the U.S. Patent and Trademark Office unless you are using it in interstate commerce).

Finally, if the person is still alive, you have to obtain that person’s permission to use his or her name as a trademark.¬† If it’s your name, you also have to file an affidavit saying so.

Having a famous name but not being famous can also get you into trouble.¬† Take for example the recent news story about Maryland State Senator Steve Hershey.¬† During his recent political campaign, Hershey was sued by Hershey Company for using brown rectangular boxes around his name in white lettering, resembling Hershey Company’s famous logo.¬† The Hershey Company didn’t object to Hershey’s using his name – after all, it’s his name – but it did object to his using “Hershey” in a manner that suggested an endorsement or sponsorship by the company.¬† Even stranger is that Hershey had the same dispute with the Hershey Company in previous campaigns.¬† On July 22nd, the federal district court issued an injunction against Hershey, preventing him from using his signs.¬† The court opined that his signage suggested an endorsement where no endorsement existed.¬† We still await a final ruling.

— Adam G. Garson, Esq.

Commentary: An Abstract Fairy Tail

July 31st, 2014

Supreme Court Last month the Supreme Court decided the case of Alice v. CLS Bank and wandered around once again in wonderland. Let me explain.¬† The U.S. Supreme Court, as judge made law, has grafted onto patent law the concepts that one cannot obtain a patent on a law of nature, a natural phenomenon, or an abstract idea. The problem from the perspective of a patent applicant is that the exclusions are relatively undefined. In particular, the definition, or lack thereof, for the term “abstract.”

Patent examiners routinely reject applications that seem to have a mathematical expression at their core, and during the past approximately 30 years attorneys at our firm have prosecuted sophisticated computer/software implemented inventions and have frequently had to overcome patent office rejections based upon the notion that software implemented inventions were “abstract.” Consequently, court decisions construing that term are of heightened interest to our clients.

There was hope that Alice would clarify the Court’s definition of abstract. Alice involved a computerized method for implementing the financial concept of an intermediate financial settlement. Without needing to go into the details of the financial concept, it is sufficient to note that the Court apparently takes a dim view of financial inventions. Alice was found to be no more than a fundamental economic practice and therefore “abstract” and unpatentable. Further, the Court concluded that the mere recitation of a computer cannot transform an abstract idea into a patent-eligible invention.

As for guidance, the Court said: “In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” Apparently, like pornography, the Court knows something is abstract when they see it. The rest of us are left to wander around looking for a way out of the rabbit hole.

— Laurence Weinberger, Esq.