Who Knew?

Trademark

Who knew that law practice group names have been trademark registered? I wonder how many law firms have an employment law group that is marketed as their "Employment Law Group"? I'm guessing a lot. It is interesting to note, however, that the PTO has issued a trademark registration for "The Employment Law Group" in Class 42 for legal services (Reg. No. 3436135). There is also a pending application for "Intellectual Property Law" (Ser. No. 85205240) for legal services, a registration for the "Litigation Media Group" (Reg. No. 3051750) for legal services, for "Intellectual Property" (stylized design) (Reg. No. 1690628) for legal services, and "The Construction Law Group" (Reg. No. 2129634) for legal services. These are but a few of numerous trademark filings related to very common legal service offerings of the type provided by, I imagine, thousands of lawyers and law firms. Who knew that these common legal service descriptions could be registered?

Copyright

Who knew that there is no copyright protection for the idea of a crime fighting hair dresser? We should all be cautiously optimistic that the issue of copyright infringement relating to crime fighting hair stylists has been, apparently, resolved. In Cabell v. Sony Pictures Entertainment, the Second Circuit affirmed in last week's unpublished decision that the plaintiff's idea of a crimefightinghairdresser brandishing a hair dryer in stock fighting poses is not protectable in copyright. Here is the plaintiff's artwork:

Here is Sony's movie art for You Don't Mess With The Zohan:

DMCA

Who knew? Notwithstanding the warnings from Lenz v. Universal Music Group, new cases continue to be filed over liability for claimed wrongful takedown notices. Under the Digital Millennium Copyright Act, a copyright claimant can employ the takedown notice procedure in order to remove claimed infringing postings from the Internet. But wrongful takedown notices create the potential for liability for a wrongful takedown. Lenz posted a 29 second video on the Internet of her infant daughter dancing in the kitchen to the music of Prince's "Let's Go Crazy." Universal sent a takedown notice to the ISP claiming that the video infringed the copyright interest in the song and performance. Lenz sued for the wrongful takedown, arguing that the takedown was wrongful because her posting was protected by fair use of the Prince song. The court agreed. The court in Lenz made clear that liability attaches when the claimant who sends the takedown notice does not have a viable copyright claim in light of the poster's fair use. Now comes word that a similar DMCA case is pending in federal court in Ohio. In Smith v. Summit Entertainment, N.D. Ohio, 3:11cv348, Summit sent a takedown notice claiming to own a copyright interest in Smith's musical work posted on line. The music was taken down. Subsequently, Summit acknowledged that it did not have a copyright interest in Smith's music. Smith sued under several theories, including wrongful takedown under the DMCA, plus defamation and other theories. The court allowed several of Smith's claims to proceed forward in ruling on Summit's motion to dismiss, stating in part: "While defendant post hoc and promptly acknowledged that it has no copyright interest in plaintiff's song, that does not matter. Plaintiff alleges that defendant made an unquestionably false assertion in take down notices and the song was taken down." Lawsuits for wrongful takedowns are tracking up out there! Who knew?

July 4th

The Fourth of July is around the corner. Be careful out there!

Washington State Has A New IP Law: Stolen Or Misappropriated Information Technology

Washington State's new law that takes effect on July 22, 2011 creates state-based liability for use of so-called stolen or misappropriated information technology. In particular, the new act creates liability for the use without authorization, as a component in an "article or product," of stolen or misappropriated hardware or software that was available for retail purchase on a stand-alone basis. Before liability is imposed, the law requires advance notice from the claimant and an opportunity to cure. Liability only applies when the product containing the stolen or misappropriated information technology causes "a material competitive injury as a result of the stolen or misappropriated information technology."

The Washington Attorney General is authorized to bring a claim under this new law, as are private claimants. But the law does not identify who can bring a private claim. Certainly, it appears that the owner of the stolen IP can sue, but the new act does not appear to limit claims to parties who themselves have experienced a material competitive injury. At any rate, the law allows for several remedies, including an injunction, plus damages consisting of "actual direct damages" or "statutory damages of no more than the retail price of the stolen or misappropriated information technology." If the misuse is found to be willful, the court can treble the damage award and assess costs and reasonable attorneys' fees.

The foregoing is but a brief and incomplete description of the new Washington law. Interested persons should review the session law and make an independent determination as to its meaning, application and merit. But from my perspective, this law appears to have a very high burden to overcome -- preemption. That is, the very definition of stolen or misappropriated information technology, and the use thereof, appears to fall squarely within the four corners of a patent infringement claim or a copyright infringement claim. Indeed, even though the so-called "information technology" is not the subject of an issued patent or copyright does not take the potential claim out from under the foot of preemption jurisprudence.

In any event, this may all be sorted out in the future. The fun begins on July 22, 2011!

Death on the Plains

This weekend marks the anniversary of Custer's Last Stand. Fought in southeastern Montana in the area of rolling hills and prairie dogs around the Little Bighorn River, some 600 members of the U.S. Seventh Cavalry were outmanned by Sitting Bull's combined force of some 20,000 Sioux and Cheyenne.

On June 25, 1876, Custer's army came upon the Indian village, peacefully camping along the Little Bighorn, and elected to attack. Custer did not believe the information from his scouts as to the true size of the Indian position. Custer separated the army into several columns; he lead one, General Reno another and General Benteen a third. A fourth column stayed in the rear to protect the army's horses. Custer's column was completely and swiftly annihilated while Reno lost about a third of his column.

Reno ordered a retreat that became chaotic, and for the next day fought off the attacking Indians in a holding action from his entrenched positions. The Indians withdrew at noon on June 26th.



Reno was severely criticized for his actions in not coming to Custer's aid. While he was exonerated following an 1879 formal inquiry, Reno's career and legacy were seriously harmed.

A Question Of Infringement: Digital Course Packets Used In University Instruction

A current copyright infringement lawsuit, pending in the federal court in Georgia, concerns the practice by instructors at Georgia State University of posting electronic versions of copyrighted material on the GSU computer system for use by course students. Importantly, from the point of view of the plaintiffs (Cambridge University Press, Oxford University Press and Sage Publications), GSU fails to obtain permission and pay for the electronic posting of the copyrighted course materials. Although GSU does apparently obtain permission and pay rights fees for traditional paper course packets, it takes the position that the electronic course packets are fair use. As such, the three publishers are seeking an injunction to prevent further postings of electronic course packets at Georgia State without permission.

Both parties are fighting hard. A bench trial was held several weeks ago and the parties are presently participating in post-trial briefing. A decision should be forthcoming from Judge Orinda D. Evans sometime this summer, hopefully prior to the start of fall classes.

The mechanism employed at GSU to electronically post course materials is interesting. The university has two systems in place for this purpose. In one system, the instructor fills out a fair use check list form, makes an initial determination whether fair use does or does not exist by, apparently, adding up the pro and con check marks, and then submits the form to the library for review. If the checks add up to fair use, then the library will digitally copy the copyrighted material and electronically post the digital file on the university's computer system for access by course students. In the second system, a similar fair use check-off system is employed by the instructor but the instructor uploads the copyrighted material directly to the university's computer system. In either case, the instructor will assign the digital course packets to class students as part of the class requirements.

The publishers argue that there is no practical difference in terms of copyright harm between distributing the course packet in paper form or in digital form. [The case of Princeton University Press v. Michigan Document Services, Inc. is one of the leading cases finding that the production of paper course packets by a commercial printing service does not constitute fair use.]

The fair use check-off form is of interest. A copy of the form is reproduced below. It takes the various fair use elements from the Copyright Act and case law and creates two columns, for and against fair use. Here is the form:

The problem with this form, as I see it, is not that the form omits any of the key elements of a fair use analysis, but rather that the form compels the application of equal weight to all of the factors across the board. In counting up the check marks, it certainly appears that the result will constitute fair use in all circumstances. If the fair use exemption were this broad, then no educational institution would be liable for copyright misuse since in virtually all instances of educational use the check marks will tally toward fair use. Logically, this cannot be. Indeed, if greater weight were applied to certain of the factors, and less or no weight to others, then the exemption calculus might produce different results than merely adding up the equally-weighted check marks.

Georgia State is not the only educational institution to employ an equally-weighted fair use check-off form. Columbia University, as an additional example, provides a similar form to its instructors.

It will be interesting to learn Judge Evans' view on all of this once the trial opinion is entered. Stay tuned.

There Is No i In Apple

For some reason, Apple is in love with the letter i -- using it on its products (iPad, etc.) and services (iTunes, etc.). For some other reason, Apple does not pay enough attention to the need for trademark clearance searches. Last week, Apple was sued by iCloud Communications of Phoenix for trademark infringement of the mark iCloud. Now comes word that a small New York publisher, J.T. Colby, is suing Apple (S.D.N.Y., 11-cv-4060-DAB) for use of the trademark ibooks for Apple's electronic library service. Colby claims to own the common law trademarks "ibooks" and "ipicturebooks," asserting that it acquired priority rights to ibooks going back to 1999 from a predecessor user. Note to Apple, it costs a lot less to obtain and analyze a good trademark clearance report than to litigate trademark claims after a product launch.

It's Not Just .com Anymore!

It's official. This morning in Singapore the Internet Corporation for Assigned Names and Numbers (ICANN) voted to open up the filing of generic top level domains (gTLDs). The new world of .xxx, .disney, .coke, .(your tradename here) is now upon us.

The Hangover: Part II -- Case Settled?

Reuters is carrying a report this morning that the copyright infringement claim relating to a face tattoo has been settled. There is no present report as to how much money, if any, was paid in settlement and there is no filing in the case records relating to the settlement as of this morning. My prior blogs on the topic of the copyrightability of facial tattoos were published on May 26 and May 30.

Investment Firms Lose Their News To News Aggregators

News aggregators won a big victory today in the Second Circuit Court of Appeals in the case of Barclays Capital v. theflyonthewall.com. The Second Circuit held that it is not a violation of the Copyright Act for a news distributor to report the fact that a stock analyst makes an investment recommendation. Nor is it a violation of the "hot news" misappropration tort when the news distributor accurately reports that the investment recommendation originates from its true source.

In the early hours prior to the opening of the stock exchange, Barclays and other investment firms provide investment analysis and recommendations to their subscribers and clients. The sales staff of the investment firms then contact their customers in an effort to procure investment transactions based on the recommendations. theflyonthewall is a news gatherer, or aggregator, that claims to be the "fastest news feed on the web." theflyonthewall somehow obtains the recommendations from the investment firms early in the day, often before the markets open, and distributes the recommendations to its subscribers. In doing so, the investment firms claim that theflyonthewall undercuts their research service and ability to trade on the hot news of their recommendations.

The Second Circuit held that there is no hot news claim if all that is done by theflyonthewall is to truthfully report that an investment firm makes a certain investment recommendation. The fact that an investment firm makes a recommendation is, itself, news. theflyonthewall is merely distributing this news without improperly "free riding." The Second Circuit observed that if theflyonthewall copies the recommendation report of the investment firms so as to induce a customer into believing that the recommendation originates with theflyonthewall, then this would be impermissible free riding and violation of the hot news tort. But theflyonthewall accurately reports a recommendation and the origin of the recommendation from the particular investment firm. In this circumstance, the hot news tort is preempted by the Copyright Act since the recommendations come within the subject matter of copyright and the scope of copyright protection. And because the Copyright Act does not extend protection to facts, the fact that an investment firm makes an in investment recommendation is not protected in copyright, either.

So, in the end, the investment firms who invest significantly in investment research are not able to control their own investment recommendations to their customers. Their recommendations are not protectable by copyright as non-protectable news or fact. Their recommendations are not protectable under the hot news misappropriation theory. This is the case even in relation to a fast acting news distributor who can distribute the recommendation quicker, at potentially less expense, and then seek to direct the customer to make a transaction from a discount trader. It appears that the news distribution problems impacting the newspaper industry now squarely have reached the stock analysts desks on Wall Street.

Stanford Lost A Fortune: Faulty Drafting Of An Inventorship Agreement

The wrong word choices can lead to devastating results -- just ask Stanford University!

Last week’s Supreme Court decision underscores the necessity of careful drafting in employment and inventorship agreements. Stanford University lost out on the ownership of valuable patent rights because of poor word choices. The problem? Stanford's assignment form used the future tense (I agree to assign) rather than the present tense (I hereby assign).

The factual circumstance was not all that unusual. Stanford hired a research fellow, Dr. Mark Holodniy, to work on HIV research. At the time of the hire, Dr. Holodniy signed Stanford’s Copyright and Patent Agreement, by which he “agree[d] to assign” to Stanford his “right, title and interest in” inventions resulting from his employment at the University. Thereafter, Stanford loaned Holodniy to a small California research firm, Cetus, to collaborate on HIV research. Cetus required Holodniy to sign its Visitor’s Confidentiality Agreement that provided Holodniy “will assign and do[es] hereby assign” to Cetus his “right, title and interest in each of the ideas, inventions and improvements” made “as a consequence of [his] access” to Cetus.

Holodniy worked at Cetus for a period of time on HIV testing processes before returning to Stanford. As a result of further research conducted at Stanford by Holodniy and others, Stanford was awarded several patents relating to HIV measurement techniques. Cetus was eventually acquired by Roche Molecular Systems, by which Roche specifically acquired all rights that Cetus owned in its Visitor’s Confidentiality Agreement. Thereafter, Roche commercialized the HIV quantification methods developed by Holodniy at Cetus, and now sells its HIV test kits to hospitals and HIV clinics world-wide.

Stanford sued Roche for patent infringement, claiming that Roche’s HIV test kits infringed Stanford’s HIV measurement patents. Roche argued that it had an ownership interest in the HIV inventions by virtue of its acquisition of Holodniy’s Visitor’s Confidentiality Agreement. Stanford disputed Roche's ownership interest, pointing out that Holodniy had no rights to assign to Cetus since he had earlier signed Stanford’s Copyright and Patent Agreement.

The district found that Cetus’ Visitor’s Confidentiality Agreement transferred Holodniy’s inventorship rights to Cetus. However, the district court also held that, because the development of the HIV measurement technique was funded by federal money, the Bayh-Dole Act superseded the assignment to Cetus and placed ownership of Holodniy’s invention with the recipient of the federal funds, Stanford.

The Federal Circuit disagreed with the district court. It held that the choice of words in Stanford’s Copyright and Patent Agreement did not transfer to Stanford a present interest in Holodniy’s inventorship in HIV measurement research. The Federal Circuit determined that Stanford’s Copyright and Patent Agreement constituted only an agreement to assign in the future. On the other hand, there was an actual, present transfer of Holodniy’s inventorship rights by virtue of the present assignment provided for in Cetus’ Visitor’s Confidentiality Agreement. The Federal Circuit also held that the Bayh-Dole Act does not change normal invention ownership rules, even when the invention is developed with federal funds.

The Supreme Court granted certiorari on the issue whether the Bayh-Dole Act supersedes normal contract language pertaining to assignment of an inventorship interest when funding is provided by the federal government. The Supreme Court made clear that, since the initial patent act of 1790, an invention is owned in the first instance by the inventor, and there must be an actual present assignment of the rights in the invention in order to cause a transfer from the inventor. The Supreme Court further confirmed that the Bayh-Dole Act does not usurp this established law.

The problem with Stanford’s choice of words was that “agree to assign * * * right, title and interest in” only created a promise to assign in the future, not a present assignment. A further problem was that Stanford’s language related only to inventions, and did not seek to transfer broader rights for ideas, improvements and issued patents.

On the other hand, Cetus' agreement specifically provided that Holodniy “will assign and do[es] hereby assign.” The language assigned the inventor’s “right, title and interest in each of the ideas, inventions and improvements” made “as a consequence of [his] access” to Cetus. Not only does the Cetus language constitute a present-day assignment of Holodniy’s present and future inventions, but it provides an expansive assignment of ideas, inventions and improvements.

While the Supreme Court holds that the Bayh-Dole Act does not change, but supports, traditional law of patent ownership and transfer notwithstanding the use of federal funds in the development of the invention, Stanford lost exclusive patent rights from poor choice of language in its employment agreement with Holodniy. Critically:

1. The inventor is the initial owner of an invention, even if the invention is developed during the course of the inventor’s employment.
2. The inventor’s employer must obtain a present-day assignment in writing from the employee-inventor in order to obtain an interest in the invention. A promise to assign rights in the future is not good enough to create a present assignment.
3. An assignment of rights in an invention is too narrow. The employer should make certain that the assignment covers the ideas, improvements and issued patents, as well.
4. Funding of invention development by the federal government does not, without more, change these rules.

Liberty

On this date 126 years ago in 1885, a nice round number to be sure, the Statue of Liberty arrived at its permanent place of repose in New York Harbor. The 151 foot high statute was a gift from the people of France to commemorate the 100th anniversary of American independence.

Jack Boucher, photographer, 1984

The Supreme Court Tells Microsoft To Reboot

It must be tough being Microsoft. This huge multi-zillion dollar company just can't seem to catch a break. It gets no respect. Apple is floating in the clouds with its ultra-innovative efforts. Wasn't Microsoft claiming to be the great innovator at one point in time? Paul Allen is brow-beating his former Microsoft friends, telling the world who the real Idea Man truly is. In your face, Bill! And now, the Supreme Court is kicking sand at Microsoft.

In one corner, you have Microsoft, the Redmond behometh that outsources legal tasks overseas and tries to talk the Supreme Court into seeing things its way. In the other corner, you have nine Supreme Court justices who could care less about Word.

In Microsoft v. i4i, the Supreme Court today tells Microsoft that, while it is very sorry that Microsoft lost a huge jury award for willfuly infringing i4i's patent in some of Microsoft Word's products, too bad. Microsoft argued that its defense of patent invalidity should not be based on a clear and convincing standard but the less arduous preponderance of the evidence standard. Microsoft particularly argued that this should be the case when the Patent Office issues a patent without examining relevant prior art. Microsoft claimed that i4i's patented software contained elements of i4i's earlier software and therefore, because the earlier software failed to satisfy the on-sale bar, the Patent Office's issuance of i4i's current patent was faulty. Of note, the code for i4i's earlier software had been destroyed years prior to commencement of the litigation. i4i relied on the testimony of the inventors of the earlier software to explain verbally why the earlier destroyed software was not present in the patented software. [ I can only hope that the inventors did not use shadow puppets during their software testimony! ] In any event, Microsoft lost big time at trial even though i4i did not introduce into evidence its former code that was the subject of the on-sale bar! Brutal!

The Supreme Court explained that §282 of the Patent Act very clearly provides that an issued patent is presumed valid. The meaning of the term "presumed valid" is well settled in common law. Indeed, the Supreme Court cites to Justice Cardozo, and his analysis of over a century of case authority, confirming the clear and convincing burden of proof needed to overcome a presumption of validity.

Let's be clear. Whenever any court, including the Supreme Court, cites to Benjamin Cardozo, the appellant is going to lose. I am not aware of any court overturning Cardozo. Indeed, it should not have been necessary for Microsoft's counsel to read to the end of the Supreme Court opinion, where the court writes Affirmed, to know that Microsoft lost. This should be clear once Cardozo's name is mentioned early in the opinion. Hopefully, Microsoft will not be billed for any time reading past the name Cardozo.

Benjamin N. Cardozo (1870 - 1938):

So, bottom line, the proof of invalidity requires a clear and convincing showing, just as has been the case for decades. Further, a jury is willing to believe a software inventor's testimony concerning software code that is destroyed and not introduced into evidence. Microsoft just can't catch a break.

The Forfeiture of Le Marché

On November 16, 1981, the monotype Le Marché, created by Camille Pissarro, was stolen from the Musée Faure in the Alpine town of Aix-Les Bains in southeastern France. The print was transported into the U.S. by the alleged thief and consigned in 1985 to an art gallery in Texas, where it was ultimately sold to a corporate buyer. Sharyl Davis eventually acquired possession of the print in 1992 from its prior corporate owner and displayed the work in her home for more than ten years. Ms. Davis consigned the print in 2003 to Sotheby’s for auction. The French National Policy became aware of the impending sale of Le Marché and notified U.S. law enforcement who, in turn, requested that Sotheby’s withdraw the work from auction; and Sotheby’s complied. In 2006, the U.S. government brought a civil forfeiture action seeking to recover possession of Le Marché for return to France.

Faure Museum:

Contentious litigation thereafter ensued between the U.S. and Ms. Davis culminating in the recent decision by the Second Circuit Court of Appeals. The court held that notwithstanding Ms. Davis' status as an innocent purchaser, the stolen print was subject to civil forfeiture under U.S. customs law.

The print, Le Marché:

Specifically, in a two-step analysis, the government brought a claim under the customs law, 19 U.S.C. §1595(a), a part of the Tariff Act of 1930, that authorizes the forfeiture of merchandise brought into the U.S. contrary to law that is stolen, smuggled or clandestinely imported or introduced. The government argued that the print was stolen and brought into the U.S. contrary to law in that the possession or sale of stolen goods with a value of at least $5,000 that has moved in interstate or national commerce with knowledge that the goods are stolen violates the National Stolen Property Act. Because the thief stole the print, valued at more than $5,000, from the French museum and imported the work into the U.S., the government maintained that the National Stolen Property Act was violated and the print was subject to civil forfeiture under the Tariff Act.

Ms. Davis argued that she was an innocent owner, but the Second Circuit confirmed that the innocent-owner defense does not apply to a civil forfeiture claim under the customs law. "Indeed, the Supreme Court held, in a case addressing another provision of the Tariff Act of 1930, that 'forfeiture may be enforced even against innocent owners . . . . The penalty is at times a hard one, but it is imposed by the statute in terms too clear to be misread.' General Motors Acceptance Corp. v. United States, 286 U.S. 49, 57 (1932)."

The Second Circuit was mindful that the civil forfeiture law rendered a harsh result for Ms. Davis. Nonetheless, the return of stolen artwork that was introduced into the U.S. in violation of the customs laws represents the law and the enforceable position of the U.S., even when the art is presently owned by an innocent party. In this context, the rule of "buyer beware" aptly applies to art, particularly international art.

And The New Register Of Copyrights Is ...

The new Register of Copyrights is Maria Pallante, appointed to this permanent position by the Librarian of Congress on June 1st.

Ms. Pallante becomes the 12th Register in the history of the U.S. Copyright Office. She follows in the foot steps of the recently retired Marybeth Peters. Ms. Pallante has spent much of her career as IP counsel and director of licensing for the Guggenheim Museums in New York. More on this appointment is available from the Copyright Office press release.

Knowledge That Induces Patent Infringement -- Outsourcers Cannot Hide Under The Rug Of Foreign Law

The Supreme Court announced today its decision in the case of Global-Tech Appliances, Inc. v. SEB S.A., an opinion that speaks to the scienter standard for inducement of patent infringement.

In this case, SEB obtained a U.S. patent on its deep fryer. Sunbean had an interest in marketing a competing fryer and contacted Global-Tech's Hong Kong subsidiary to manufacture a fryer containing Sunbeam's specifications. The Hong Kong firm purchased an SEB fryer made for the foreign market that did not contain any patent marking. It copied the substantive elements of the SEB fryer except for certain cosmetic features. It further retained an attorney to conduct a patent right-to-use analysis, but did not disclose to the attorney that it had copied the SEB product. The attorney did not discover the SEB patent and concluded that the Hong Kong product did not infringe the patents that were discovered. The Hong Kong firm then manufactured and supplied its fryers to Sunbean and other firms (under their own brands) for sale in the U.S.

SEB sued Sunbeam for patent infringement, and Sunbeam notified the Hong Kong firm of the lawsuit. The Hong Kong firm continued to distribute its fryers to other brand owners for sale to the U.S. market. SEB settled with Sunbeam and sued Global-Tech for infringement by inducement under 35 USC §271(b). The issue before the Supreme Court centered on the knowledge standard on the part of Global-Tech for purposes of liability under an inducement theory.

The Federal Circuit held that liability for patent inducement under §271(b) occurs when the purported infringer knew or should have known that its actions would induce actual infringements. The Federal Circuit held that Global-Tech was liable on this basis since it deliberately disregarded a known risk that SEB's fryer was protected by a U.S. patent. As such, the Federal Circuit concluded that "deliberate disregard" is the same as "actual knowledge."

The Supreme Court rejected the Federal Circuit's deliberate disregard standard for knowledge and confirmed that actual knowledge that the induced acts constitute patent infringement remains the standard for infringement by inducement under §271(b). The Supreme Court makes clear that "deliberate indifference" to a known risk does not satisfy the knowledge standard. However, the Supreme Court agreed that the knowledge requirement can be satisfied by proof of "willful blindness." To satisfy the test for willful blindness, two elements must exist: (1) the purported infringer must subjectively believe that there is a high probability that a patent is infringed by its act, and (2) the purported infringer must take deliberate steps to avoid learning of this fact.

The Supreme Court held that, in this case, the following facts satisfy the test for willful blindness: (1) the defendant copied all of the features of SEB's fryer except for certain cosmetic traits, believing that these copied features were valuable, (2) the defendant copied an oversea's model of SEB's fryer aware that it did not contain a patent marking, and (3) the defendant failed to disclose to its attorney that the product under consideration was a knock-off of SEB's product.

Taken together, the Supreme Court affirms that this evidence satisfies the willful blindness test to establish knowing inducement, and the judgment against Global-Tech was affirmed.

This decision should be considered carefully by any U.S. manufacturer who outsources its manufacturing to overseas suppliers. It must also be considered by overseas manufacturers who look solely to their local law and fail to consider the merits of liability under U.S. law. Blindly failing to consider the requirements of U.S. patent law may constitute an element of "willful blindness."

As an aside, it will be interesting to learn whether the "willful blindness" synonym for "knowledge" will be of use to establish liability in the various patent marking claims that are pending around the U.S.

More of The Hangover

By all accounts, The Hangover: Part II flick appears to be a big financial hit, at least this weekend. Focusing on the facial tattoo that is prominently featured in the film, and further to my blog post of this past Thursday, I continue to be troubled by the prospect of copyright protection for a tattoo.

It is clear enough that Mike Tyson's facial tattoo is a work of graphic design and is included within the subject matter of copyright. It is also certain that the permanent tattoo is, well, permanent and fixed in a tangible medium. So, why should there be a question of copyrightability?

There are many items that adorn a human body that are not copyrightable for one reason or another. A hair stylist may be quite creative in designing a new coiffure, but the constant growth of hair -- and the resulting change in shape of the cut -- means that the hair design may not be sufficiently permanent and is, in any case, functional (hair must be cut periodically). The same can be said of a cosmetic artist who creates a highly stylized facial rainbow, and a cuticle stylist who adorns finger tips with creative designs. While this work of body adornment is high fashion, it is also functional (makeup and finger nail polish protect the skin and, secondarily, provide a bodily presentation that creates sexual attraction that leads eventually to procreation, etc.). Plus the need to wash the face and cut the cuticle means that the work is not sufficiently permanent. Add the aroma of pungent perfume to this mix of non-permanent, functional bodily accouterments.

The above examples pertain to work that is so intimately applied to the body that it becomes one with the body. They are not protectable in copyright either from lack of permanency or inherent functionality. Apparel is another item of bodily adornment. It is not copyrightable because of historical views of function that clothing provides to the body. Though apparel is of another class than the very intimate works of tattoo, cosmetics, nail paint and perfume that are applied directly to the body, the lack of copyrightability in the very things that humans wear to warm themselves, protect themselves and to become noticed supports the view that there are some things that simply are too closely associated with the body to merit copyright protection.

A tattoo seems to me to be so personal that, notwithstanding its permanency, it serves a very functional purpose of becoming the human body. Pulling skin into a tuck to hide its lack of elasticity, coloring hair to hide its natural lack of attractive color, reconfiguring a nose or acid washing the skin to correct perceived flaws, all may be creative but they are too personal to a human. The result of the work becomes the human. A tattoo is of this sort. Mike Tyson is now a tattoo-bearing human. His face has been altered by the ink just as his face would be altered by plastic surgery. Notwithstanding how creative the plastic surgery, the resulting transformation involves a surgical alteration of the body that, itself, becomes the body. And while the holder of the tattoo needle may be as skilled in his or her field as the plastic surgeon, the result is the same: an alteration of the human body that becomes the body. As the body, the result of the work is purely functional.

My thinking.

More BitTorrent Lawsuits

My May 4th post discussed a pending lawsuit brought by Liberty Media Holding against cable firms and ISPs in order to identify the owners of the internet protocol addresses that participated in claimed infringing downloads of copyright-protected film. This Liberty Media case is not the only case, of course, involving BitTorrent downloads. Of note, PC World recently reported on a new case brought by U.S. Copyright Group seeking the names of owners of IP addresses that downloaded "The Expendables" movie. The court has authorized USCG to obtain these names from the cable firms and ISPs. PC World has published the IP addresses and dates of download. The owners of these IP addresses may soon be receiving infringement claims from USCG.

Hangover: Part II -- The Case of the Mimic Tattoo

The movie Hangover II has opened and may enjoy a good box office this Memorial Day weekend. In the first Hangover, three friends give their buddy a wild bachelor party in Las Vegas, thereby encountering a multitude of problems. One critical issue concerns the misplacement of their buddy. The friends spend most of the film trying to locate him prior to the impending nuptials. During the friends' misdirected quest, they encounter Mike Tyson's tiger sleeping in their hotel bathroom. This is actually a good thing since the tiger is the cause of the friends' meeting with Mike Tyson, who was prominently brandishing a large facial tattoo.

Part II continues with the friends' pursuit of further intoxicating high jinx. The new film also prominently features a tattoo on actor Ed Helms' face. The tattoo appears very similar in design, location and size as the Tyson tattoo, although there are some apparent differences. Wherein lies the problem, according to the tattoo artist S. Victor Whitmill, who claims that the Helms' tattoo is an infringement of the tattoo he designed and affixed to Big Mike's face.

So, this being America, where a federal lawsuit can be filed for a court fee of $350, Mr. Whitmill filed a copyright infringement action against Warner Bros. in federal court in St. Louis. He sought to enjoin the release of Part II to preserve his copyright interest in the Tyson tattoo from claimed irreparable harm.

The court declined to enjoin the release of the new film, but news reports suggest that the court did not think much of the Warner Bros. defense. This will all be sorted out in time. This case raises several interesting issues in copyright, just as Part II raises interesting issues in filmatic humor, I'm sure.

One question present in the case tests whether copyright protection can -- or should -- extend to an image indelibly and permanently affixed to the human body. After all, Big Mike walks around town, perhaps with his tiger, meeting people while emblazoned with the permanent and public face art. If someone takes his photo, can this be infringement? If Big Mike appears in a motion picture, can this appearance (and the resulting display and distribution of the tattoo) be infringement? Indeed, Mike appeared in the first Hangover film and no lawsuit was filed by Mr. Whitmill. Is affixing to the human body sufficient for purposes of satisfying the fixation requirement of copyright? And if it is, should it be so? Should there be a human body fixation exception? Does copyright in a permanent aspect of a human body travel too close to the law of right of publicity? Are the exclusive rights of copyright too strict, notwithstanding fair use principles, to allow for first amendment protection when the human body becomes the walking canvas? These are but a few, I'm sure, of many more interesting copyright questions relating to human fixation.

A second question concerns the role of David Nimmer. He is both the present author of Nimmer on Copyright (written initially by his father Mel), a law teacher at UCLA and a practicing attorney with the firm of Irell and Manella. Mr. -- Professor -- Author Nimmer gave a declaration in behalf of Warner Bros. and in opposition to the preliminary injunction. In the declaration, he explains that he once believed that work can be affixed to the human body to satisfy the fixation requirement, but that he changed his mind years ago. Fair enough, he has the right to change his mind. But it appears that the current version of Nimmer on Copyright continues to posit that a work can be protected by copyright if affixed to the human body. See, §1.01[B][1], fn 392 (“For a tattoo may presumably qualify as a work of graphic art, regardless of the medium in which it is designed to be affixed (in this instance, human flesh)”).

So, Nimmer takes one position as an authority in his treatise, but takes a contrary position in his declaration as an advocate for Warner Bros. in this case. At least, that is the appearance. Is Nimmer's true role that of a scholar or advocate, and how can anyone tell? Should his legal position on this issue be consistent notwithstanding the several hats he wears? Indeed, is there now a hint of suggestion that the perceived independence and authority of the Nimmer treatise is called into question?

Was President Lincoln the First IP President?

Among President Lincoln's notable "firsts", and there were several (the first president to preside over a civil war, the first president to proclaim the release of slaves in Washington, DC, the first president to seize the family homestead of a rival military leader -- the Robert E. Lee family home in Arlington -- and others), he was the first president to obtain an issued patent. On this date, May 22, in 1849, the U.S. Patent Office issued a patent to Abraham Lincoln for his invention of affixing bellows to the undersides of a ship so that, upon inflating the bellows with air, the ship achieves greater buoyancy, thereby enhancing safe passage over sand bars and shoals.

Lincoln whittled the wooden specimen of his invention, and this carving now resides at the Smithsonian's National Museum of American History.

That Lincoln recognized the value of invention, and the importance of protecting invention, cannot be denied.

"The patent system . . . secured to the inventor, for a limited time, the exclusive use of his invention; and thereby added the fuel of interest to the fire of genius, in the discovery and production of new and useful things." A. Lincoln, Feb. 11, 1859.

Presently, the U.S. patent system is bowed under serious strain. Congress has appropriated PTO user fees for other government purposes. The PTO's expedited patent review program has been suspended due to these budget cuts. The PTO's program to open satellite offices around the country (beginning with Detroit) has been likewise suspended. The PTO's need to upgrade its computer system and examination processes are stifled under this budget stress.

For a country that many believe continues to lead the world in creative invention and innovation, the government's budgetary burden on the patent system fails to head the admonition of Lincoln to preserve the patent system, thereby causing the diminution of "the fuel of interest to the fires of genius."

Financial Assistance Available for New Inventions

Some of you public TV fans may be familiar with the show Everyday Edisons, an Emmy winning TV show on PBS now in its third season. The show, produced by Edison Nation, seeks to match investors to inventors of newly conceived inventions. The CEO of Edison Nation, Louis Foreman, an innovator who attempts to inspire others toward innovation, has spearheaded the formation of a $25 million new-invention fund managed by the Edison Nation Innovation Fund. For a fee of $25, an inventor can submit an idea to the Fund to potentially qualify for an investment up to $250,000 to assist in the commercialization of the invention. Foreman expects that the Fund will select about 100 ideas for investment. More information about the Fund and the investment program are available from Edison Nation and from this Reuters news report.

This blog does not recommend or encourage any inventor's participation in the Edison Nation Innovation Fund, or in any other invention development/funding programs, but offers the foregoing for informational purposes only.

Have You Seen Me? -- India's 44,000 Missing Trademark Files

For those of us wondering why it takes so long to obtain a trademark registration in India, we now have a bit of an answer. A public notice dated April 25, 2011 has been posted on the India Trade Mark Office website, explaining that 44,404 trademark files have gone missing.

The public notice, written by the India Comptroller of Patent, Designs and Trademarks, reads:

PUBLIC NOTICE

This Public Notice is issued in pursuance of the directions issued by the Hon'ble Delhi High Courtin Civil Writ Petition No.12505 of 2009 dated 6.4.2011. All the public and in particular the registered proprietors are hereby informed that a total of 44,404 files relating to registered trade marks are missing from different branches of the Trade Marks Registry. Branchwise missing list is attached to this notice. The Trade Marks Registry is having critical information in digital format in respect of all these missing files such as the trade mark applied for, the name of the applicant, the address for correspondence, agent on record as available in the Trade Marks Journal and details of renewal and subsequent changes available in the electronic history records of the concerned mark. However, in order to update the trade mark office records it has now become necessary to reconstitute these files with inputs from the registered proprietors. It would also be in the interest of the registered proprietors to have the files reconstituted for better protection and maintenance of their marks. All the registered proprietors/agents of registered trade marks attached to this notice are requested to furnish self attested copies of the available documents such as trade mark application in form TM-1, additional representation , Examination report, Acceptance order, registration certificate, all documents relating to assignment/ transmission, change in name and address of applicant, any court order on the matter and all other relevant documents if any before 31st July, 2011 at the appropriate Registry. The documents so furnished will be digitised and uploaded in the electronic server of the Registry so as to maintain electronic records as well. The Trade Marks Registry will follow the procedure for reconstitution issued by separate Office Circular. 

(P.H.Kurian)

Controller General of Patents, Designs and Trade Marks

What is interesting is that these missing files came to light not as a result of normal file maintenance practice but rather from the India Trade Mark Office's efforts to modernize its files. It is not clear what the risk may be, going forward, for further loses of files once the moderization process is completed. Further, no word yet as to how many patent files are unaccounted for. That patent modernization process may not have commenced yet, although this is also unclear.
 
And finally, no word on how any of this has impacted the commercial competitiveness of India businesses. Years ago, during the process of moving from one house to another, my family and I came to live out of boxes for an extended period of time. In fact, most of our non-essential possessions remained in boxes and in storage while we traversed from on house to another over an extended period. Once we finally arrived at our new home, it became clear to all of us that the items in the boxes, the access to which was denied to us for quite a while, were not as critical to our needs or happiness as we had once thought.
 
Wondering if the same can be said for the owners of the 44,404 lost Indian trademark files. If these trademark owners can go about their business without a trademark registration, and if no one was apparently aware -- until recently -- that the files were lost, then perhaps the need for an India trademark registration may not be all that important, after all. Something to ponder, I suppose.