August 26th, 2010

The Lion Sleeps Tonight by The Tokens George David Weiss of The Tokens, the group that brought The Lion Sleeps Tonight to worldwide fame, died yesterday.

I always thought that The Tokens had written the song. Turns out I was wrong. The tune was written by a Solomon Linda, who lived outside of Johannesburg. He sold the rights to his song to a movie for less than $1. That tune went on to make millions, but the songwriter died in squalor. He was so destitute at the time of his death in 1962 that his wife couldn’t afford a headstone. Meanwhile the song was raking in millions of dollars for the copyright holder.

Mr. Linda’s estate sued the copyright holder in 2000, and the copyright holder agreed to pay royalties on the song retroactive to 1987. There was really no reason for the copyright holder to agree to share the wealth with the songwriter’s estate. The copyright had been sold in 1952, before the song came into its own. The purchase and sale transferred the rights to the song to the purchaser. It was really very decent of the studio to agree to share the wealth. It was, in fact, the right thing to do.

Tags: Copyright, George David Weiss, music, The Lion Sleeps Tonight
Posted in Uncategorized | No Comments »

August 11th, 2010

This case is about copyright and the burden of proof to obtain an injunction in the Second Circuit.

Up until this case came down in April 2010, the courts in the Second Circuit held just about automatically that a preliminary injunction should be granted when a copyright holder claimed irreparable damage. This is one of the features of second-circuit case law that made it so very popular with plaintiffs; most circuits hold that the test for a preliminary injunction is that “[a] plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. eBay, Inc. v. MercExchange, LLC, 547 US 388, 391 (2006).

In Salinger, the Second Circuit holds that the law of eBay, a patent infringement case, specifically applies to copyright cases.

So what does this mean for the average copyright holder? It means that, to obtain a preliminary injunction in the Second Circuit, a plaintiff must show that:

(1) it has suffered an irreparable injury; accomplish this by showing that defendant has infringed copyright, thereby depriving plaintiff of benefits other than money that are available to it under the copyright law.

(2) remedies available at law, such as monetary damages, are inadequate to compensate for that injury; accomplish this by showing that the damage done cannot be fixed by throwing money at the problem.

(3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; show this by showing that plaintiff suffers more harm through the lack of a preliminary injunction than defendant suffers under a preliminary injunction.

(4) that the public interest would not be disserved by a permanent injunction; show this by showing how the plaintiff’s case advances the public interest in maintaining a bundle of rights exclusive to copyright owners.

This is a much higher standard of proof than previously existed in the Second Circuit for preliminary injunctions in copyright matters. It remains to be seen whether the additional burdens of proof will impact the number and quality of preliminary injunctions issued in the Second Circuit.

Stay tuned….

Tags: Copyright, injunctive relief, new law, preliminary injunction, Salinger, Second Circuit
Posted in Copyright, US Supreme Court | No Comments »

April 15th, 2010

Copyright turns 300 – Boing Boing.

The Statute of Anne, the first modern copyright law, is now 300 years old. The Statute of Anne is the precursor of the copyright law as it exists today in the US and in Great Britain today, although those two progeny sets of law differ in several of their details. I write from the point of view of a lawyer in the US.

I disagree with this author, who thinks copyright is in place to stifle the creative muse. Copyright is in place “…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; …” United States Constitution, Article I, Section 8, Clause 8.

The author states: “Today, ‘copyright curriculum’ warns schoolchildren not to be ‘copycats’ – to come up with their own original notions.”

Copyright does not protect notions (ideas). Copyright protects the expression of ideas. I cannot read your mind to show that you, in your mind, copied someone else’s work; to show infringement, I must show that a “substantially similar” copy exists of a work that is protected by a valid copyright. We do have a problem with uncredited copying of others’ materials; that is both copyright infringement and plagiarism.

The author of this piece says he learned to write by picking Star Wars apart. As a copyright lawyer in the USA, I have no problem with that; it’s a fine way to learn to write. The author was engaging in making a fair-use derivative of Star Wars: he copied the story for educational purposes, and I doubt very much that he ever published his Star Wars derivative. Fair use is an absolute defense to the copyright of others.

However, there are those who would, if given the legal chance, be more than happy to copy Star Wars (or any other successful franchise). The intellectual property laws are in place to protect the originators and owners of the successful (and not so successful) products of human thought.

Tags: copyright law, Proof of copyright infringement, Statute of Anne
Posted in Copyright | No Comments »

March 23rd, 2010

From the American Intellectual Property Law Association’s website:

“Section 112, first paragraph of the Patent Act requires that a patent specification not only describe the manner of making and using a claimed invention, but also separately requires a written description of the claimed invention itself, the en banc Federal Circuit held March 22, 2010, in a 9-2 decision.”

…

“The Court rejected the argument that the required written description of the invention is only for purposes of identifying what is to be enabled, concluding that the statutory phrase “to enable” pertains only to the required description of making and using the invention. If Congress meant to require only a description of enablement, the statute would have been written differently, Judge Lourie pointed out. He added that the Patent Act has always required a description of the invention as a basic element of the quid pro quo bargain for exclusive rights.”

I’ve been writing patent applications to include a written description of the invention itself since I started writing patents. It’s just common sense: a patent, which is an exercise in disclosure, requires that the inventor disclose not only what the invention is but also the best mode of making and using the invention. How do you do that without providing a written description of the invention?

Read the slip opinion here.

Tags: 35 USC 112 1st Paragraph, Court of Appeals for the Federal Circuit, Patent Law, Written Description Requirement
Posted in Patent | No Comments »

March 22nd, 2010

Analysis Of Google And Viacom’s Arguments Over YouTube: A Lot Of He Said/She Said | Techdirt is a nice analysis of the Viacom v. Google copyright infringement suit as it currently stands. The article leans heavily toward Google’s side of the argument.

Viacom vs. YouTube Unsealed! YouTube’s Steve Chen on Copyrighted Content: ‘Steal It!’ is a nice analysis of Viacom v. Google. The article leans heavily toward Viacom’s position.

This case tests the Title II of the Digital Millenium Copyright Act (DMCA), the Online Copyright Infringement Liability Limitation Act (OCILLA). OCILLA provides ISPs with a “safe harbor” from a copyright infringement suit provided the ISP follows the guidelines. In the current case, Viacom, a motion picture studio that has produced many popular films, has sued YouTube, an ISP that hosts user-posted video content, some of which is taken directly from Viacom’s movies. YouTube is using OCILLA to say it has no responsibility to Viacom after following the statutory guidelines.

The question is whether YouTube actually followed the safe harbor guidelines. To get to that answer, the case must determine just how much knowledge of infringement on the part of the ISP is too much knowledge. Should YouTube, sua sponte, have taken down the copyrighted materials even before Viacom complained to them about the infringement by YouTube users?

The two blog posts cited here give you the summary judgment motions of both parties

Me, I tend toward Viacom’s side in this one. The presence of what I know to be copyrighted materials on YouTube has always bugged me.

Tags: Copyright, DMCA, OCILLA, Viacom v. Google
Posted in Copyright | No Comments »

March 19th, 2010

There’s a new patent infringement case in effect now. In SEB, S.A. v. Montgomery Ward & Co., Inc., the Federal Circuit held that the “knowledge-of-the-patent” requirement for proving inducement of patent infringement can be satisfied by a showing of “deliberate indifference” on the part of the accused infringer, such as when the accused infringer copies a patentee’s product and fails to inform its patent attorney of that fact when obtaining a “right to use” opinion.

Posted in Uncategorized | No Comments »

February 8th, 2010

Backlog Reduction for Small Entity Inventors Pilot Will Allow Small Entities to Gain Advancement for a Pending Application In Exchange for Abandoning Another Application.

Now isn’t this interesting. If a small inventor (presumably this means someone who can legitimately click “SMALL ENTITY” on the patent application forms) abandons one application, they can get another application moved up in the system.

I’m not quite sure how abandoning one invention in favor of another protects an inventor, but it’s certainly an option worth discussing with your patent attorney. It’ll save you the cost of a double patent prosecution, if nothing else, but it doesn’t sound like it will protect the abandoned invention at all, so I intend to advise my clients to consider this very carefully before proceeding.

The USPTO is always trying to come up with ways to diminish their backlog of patent applications that await first office actions. Certainly getting an inventor to abandon an application would do that, but at what cost to the inventor?

Clearly, this option is not for everyone. Maybe for some, yes, but not for everyone.

The other thing they’re doing may work better for the reduction of the backlog in the long run: they’ve got a hiring frenzy going on right now. They’re looking for warm bodies to throw at the backlog (not always a good thing, but not always a bad thing, either). If you have any sort of technical expertise at all, and you like the idea of living in the DC/northern Virginia area, visit their website at www.uspto.gov to apply for the position of Patent Examiner. They have many open slots.

Posted in Patent, US Patent & Trademark Office | No Comments »

January 26th, 2010

The US Supreme Court yesterday (25 January 2010) decided Hemi Group, LLC v. City of New York,, ___ US ___ (2010). (The link goes to the slip opinion of the Court, which is a .pdf).

Hemi Group sells cigarettes over the internet. They are based in New Mexico, well outside of the usual jurisdictional reach of New York City and its ordinances.

New York City has a city ordinance putting a surcharge tax of $1.50 per pack on all cigarettes sold within the five boroughs.

New York City likes the $1.50 it gets for every pack of cigarettes sold in the City; that’s a lot of $1.50 payments rolling in, and it produces significant income to the City. They are backed up by federal law: the Jenkins Law 15 U. S. C. §§375-378, requires out-of-state sellers to
submit customer information to the States into which they ship cigarettes, and New York State has agreed to forward that information to the City.

Hemi Group sells its cigarettes over the internet without registering with anybody and they certainly do not disclose their customer list to some City agency. After all, customer lists are commonly acknowledged to be trade secrets, and Hemi’s customers don’t need the City chasing them down to tax them for their packs of cigarettes: why should Hemi divulge just so New York can collect its surcharge?

New York City sued Hemi Group, LLC under RICO to recover the lists to enable them to go after the City residents who bought tax-free cigarettes.

The City’s theory went something like this:

Hemi committed fraud by selling cigarettes to City residents and failing to submit the required customer information to the State. Without the reports from Hemi, the State could not pass on the information to the City. Therefore, some customers who were legally obligated to pay the cigarette tax to the City failed to do so. Because the City did not receive the customer information, it could not determine which customers had failed to pay the tax. Without that information, the City could not pursue those customers for payment. The City thereby was injured in the amount of the portion of back taxes that were never collected.

It turns out that the City chose the wrong statute under which to sue. RICO requires a direct causation link between the deed and the harm. There are just too many layers here, since the Jenkins Act goes through the State. Thus, under RICO, not only must “but-for” causation exist, but also proximate causation must be very proximate, especially when dealing with a case that transcends jurisdictional lines over the internet.

On the surface (and I haven’t had the chance yet to read this case much below the surface), I like this case. RICO is a tough statute that carries some stiff penalties, as well it should: racketeering and corruption are things that, as a society, we’d like to discourage. However, RICO is just a wee bit too much for a firm that simply fails to register with a state before doing business in that state. Heck, if RICO applies every time a business does business across state lines without registering first, many, if not most, small enterprises would be promptly out of business because their owners would be in the federal pen. This is true more than ever with the geographic seamlessness of the internet; people in California can get to the website of a small business here in Schenectady just as easily as can the next door neighbor to the business. Does the internet mean that every small business has to register in every state? This case, on first reading, indicates probably not. Thank goodness.

Tags: Cyberlaw, e-commerce, RICO, US Supreme Court
Posted in Cyberlaw, US Supreme Court | No Comments »

January 22nd, 2010

…for allowing cyberterrorism against it.

Evidently, hackers got into the baidu.com website and posted an Iranian flag and a broken Star of David. Baidu claims that this damaged its reputation in the world marketplace, and perhaps it did.

It’s going to be interesting watching this battle. Is Register.com responsible for the activities of the hackers? Should they have taken further steps to protect the baidu.com domain? If so, what should those steps have been?

Stay tuned for the answers to these and other questions….

Tags: baidu, Chinese search engine, hacker, trademark dilution, Trademark Infringement
Posted in Trade Dress, Trademark/Service Mark | No Comments »

January 10th, 2010

• RT @tweetmeme Geopocketing- When Twitter Gets Cool Again http://ff.im/-dRY6C. Nothing to do with law, but excellent suggestion for Twitter.. #

Powered by Twitter Tools

Tags: Tweets, Twitter
Posted in Uncategorized | No Comments »