IP Law Blog

By James Kachmar

We’ve become used to lawsuits being filed after a movie, TV show or song becomes a popular hit. Generally, once a show or song hits number one, someone files a lawsuit claiming that the song or show was their “idea”. ABC’s hit show “Lost” is no different. In 2009, Anthony Spinner, a television producer, writer and former studio executive brought an “idea submission” lawsuit against the American Broadcasting Company, Inc. (“ABC”) claiming that it used his ideas to develop the hit television series “Lost”. 

In the mid-1970s, Spinner was retained by ABC to develop a two-hour pilot tentatively called “L.O.S.T.” for $30,000. The script, which was completed in 1977, concerned a group of U.S. Olympians who survive a plane crash in the Himalayas. They proceed through a tunnel and discover a land inhabited by dinosaurs and prehistoric people. ABC decided to pass on the pilot, concluding it would be too expensive to produce. In 1991 and 1994, Spinner met with other executives at ABC to pitch a similar television show; however, the crash would take place in outer space. Once again, ABC passed on Spinner’s idea. 

Nearly 30 years later, an ABC executive came up with the idea of doing a show about a survivor on a desert island that would combine the elements of the hit movie “Castaway” with the hit TV show “Survivor”. He wanted to call this television show “Lost” based on a failed reality based TV show.

By Scott M. Plamondon

Over the years many articles have been published describing common misconceptions in connection with intellectual property laws, yet rarely do these articles address a common misunderstanding about patent laws which will fundamentally alter many readers’ beliefs regarding the value of obtaining a patent. Some will be shocked to learn that obtaining a patent relating to an invention does not allow the patent holder to actually practice the covered invention.

On many occasions when the subject of patent law arises in conversation, it quickly becomes obvious that many believe that a United States patent gives its holder the right to practice whatever invention is covered by that patent. This belief is incorrect, and operating under this misconception could lead to significant liability. How can this be? Although counterintuitive, the answer is based on the fact that the right acquired under a patent grant is a right to exclude others from practicing an invention. The grant is not an affirmative right to actually make, use, sell or offer for sale the subject matter of the patent.

By Anjani Mandavia

The question of what does or does not constitute “fair use” is probably one of the grayest areas of copyright law. But it is an area of heightened interest to those artists who practice what has come to be known as “appropriation art,” that is, art – mainly visual art – that incorporates and utilizes found images and photographs, which are often themselves the subject of copyright. Practitioners of “appropriation art” include sculptor Jeff Koons, graphic artist Barbara Kruger, and, of course, pop artist Andy Warhol. The grand daddy of them all was Marcel Duchamp, who, in the period following World War I, pioneered the concept of “readymades” or “found art.”  Koons, Kruger and Warhol all found themselves on the wrong end of copyright infringement lawsuits for their use of other artists’ copyrighted images in their art work. And if Leonardo Da Vinci had been born a few hundred years later, maybe Duchamp too would have found himself having to defend appropriating Da Vinci’s most famous work – the Mona Lisa – by drawing a mustache and a vulgarity on it, and calling it his own.

When bumping up against the strictures of the Copyright Act, appropriation artists turn to the doctrine of “fair use” as a defense, sometimes successfully, (see Blanch v. Koons 467 F.3d 249 (2d. Cir. 2006)), and other times not (see Rogers v. Koons 960 F.2d 301 (2d. Cir. 1992)). The defense itself is codified in the Copyright Act at Section 107, which sets forth four factors that courts should consider in determining if something is a “fair use” of a copyrighted work, and therefore not subject to an infringement claim: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the use; and (4) the effect on the potential market for the copyrighted work. Although the court’s inquiry is not required to be limited to these four factors, as a practical matter most fair use cases are analyzed within this structure.

In recent years the first statutory factor – the “purpose and character of the use” – has taken on increasing importance, and the inquiry on that topic has been described by the Supreme Court as

whether the new work merely “supersedes the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message[,]. . . in other words, whether and to what extent the new work is transformative. . .

By Audrey Millemann

Zombies have become part of our lives. We are fascinated with vampires, but we are obsessed with zombies.   

Our obsession is best evidenced by the tremendous success of AMC’s television series “The Walking Dead,” about the zombie apocalypse. The show first aired on Halloween night in 2010 and was watched by 5.35 million viewers. It premiered worldwide the same week, in 120 countries. The premier was preceded by a zombie invasion (orchestrated by AMC and Fox) on October 26, 2010 in 26 cities throughout the world, including Hong Kong, Taipei, and Los Angeles.  The show is now going strong in its fourth season.

Movies about zombies are also alive and well. Since 1980, zombie movies have brought in almost $1 billion. The highest grossing zombie movie was Sony’s 2009 “Zombieland,” bringing in $75 million since it opened.  “Warm Bodies,” one of several zom-rom-coms (as this genre is now called) has grossed $65 million since it opened three months ago. Other favorites include the “Resident Evil” and “Night of the Living Dead” series, and “Shaun of the Dead.”

Thus, even though zombies have been walking (slowly) among us for hundreds (thousands?) of years, we have really just recently (as evidenced by our 33 years of TV and movies) noticed them. Zombies have been here all along. In fact, they are way ahead of us in the intellectual property world.

By Lisa Y. Wang

Back in the day when I used a VCR to record TV shows (one that forwarded through commercials by itself no less), it was impossible to imagine that something like TiVo and DVRs would be in over 50% of American homes. In May 2012, Dish Network took digital recording a step further. Its customers who subscribe to Hopper don't even have to manually fast forward through the commercials using their remote control. The "Auto Hop" feature of the Hopper automatically skips through the commercials of the all the broadcast network's prime time lineup by moving from segment to segment of the television show and skipping the ads. The AutoHop feature, coupled with Dish's "PrimeTime Anytime" feature, essentially allows consumers to concurrently record all prime-time broadcasting programming on all four networks without watching a single commercial without having to move a finger. With Dish Networks' $14 billion in annual revenue and 14 million subscribers, that's a lot of commercial revenue going down the drain. As a result, Dish Network has been sued by all four major networks for copyright infringement, and its Chief Executive Officer Charles Ergen has been dubbed by The Hollywood Reporter as "The Most Hated Man in Hollywood." 

In November 2012, Fox Broadcasting filed for a preliminary injunction claiming that Dish Network committed contributory and direct copyright infringement. The judge did not issue the injunction because Fox could not show irreparable harm and sided with Dish. Dish claimed the defense of fair use, which allows for the limited use of copyrighted works without having to obtain permission. Dish argued that it is the customers, not Dish, who are copying the prime-time network broadcasts, and that copying constitutes fair use, and the court agreed. In finding that Dish was not secondarily liable for copyright infringement for their "PrimeTime Anytime" feature, the court cited the Supreme Court case Sony v. University City Studios, 464 U.S. 417 (1984).  Sony held that the copying of television programs by consumers for time shifting was fair use. Since the consumers were not liable for copyright infringement, it was not possible for Dish to be liable for secondary infringement.  Likewise, Dish was not liable for direct infringement by offering "PrimeTime Anytime" to its consumers because the consumer is the one who directs its Hopper to create copies of the broadcasts and Dish merely passively provides the technology used for copying. 

By Scott Hervey

What do Hooters, Twin Peaks, Canz, Tilted Kilt, and Mugs N Jugs have in common.  These are all “Breastaurants.” According to Wikipedia, a breastaurant is a “restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily dressed waitresses and barmaids.”    However, on October 23, 2012  the United States Patent and Trademark Office issued a trademark registration for the mark BREASTAURANT to Bikini Bar and Restaurant, LLC for bar and restaurant services on the Principal Register..  Even more interesting then someone having filed an application to register the mark BREASTAURANT, is that the USPTO allowed the mark to register on the Principal Register without challenging the mark as being merely descriptive.  

15 USC 1052 provides as follows:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it.... (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them....

Matter that “merely describes” the goods or services on or in connection with which it is used is not registrable on the Principal Register. As noted by the United States Court of Customs and Patent Appeal (the precursor to the Federal Circuit) in In re Abcor Dev. Corp):

The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

By  James Kachmar

The fair use doctrine is a defense that a defendant may raise in a copyright infringement action when an otherwise copyrighted work is used for purposes “such as criticism, comment, news reporting, teaching …, scholarship or research.”  (17 U.S.C. §107.)  Although Congress has listed four factors to guide courts in their analysis of the fair use doctrine, the Ninth Circuit has recognized that: “Many fair use cases still manage to approach `the metaphysics of the law, where the distinctions are or at least may be very subtle and refined and sometimes almost evanescent.’”  It is with that background that the Ninth Circuit recently considered the fair use doctrine as a defense to copyright infringement in the case, SOFA Entertainment, Inc. v. Dodger Productions, Inc.

SOFA owns the copyrights in a vast library of films and television shows which it allows others to use for a licensing fee.  SOFA’s library includes all of The Ed Sullivan Show episodes.

Dodger is the producer of the musical, Jersey Boys, which is about the history of The Four Seasons and its members.  At the end of the first act, the audience is shown a clip from the January 2, 1966 episode of The Ed Sullivan Show wherein Mr. Sullivan introduces the band The Four Seasons.  The clip lasts for approximately seven second and shows Mr. Sullivan in his “signature pose” as he introduces the band to his studio and television audiences.  

Join Us April 23!

Weintraub Tobin and the LAVA Digital Media Group will host a panel discussion: "How Has Digital Media Changed the Way We Interact with Food" on Tuesday, April 23.

Whether it's finding a place to eat, sharing recommendations on your favorite dishes or ordering food online, investors have been hungry (sorry for the terrible pun) to invest in web and mobile-based food applications and platforms - aka food tech.

Over the last year, almost $350 million has been invested in Food Tech and deal activity to the burgeoning sector grew over 37% vs the prior year.

Panelists include:

• Bruce Seidel, Digital Media Strategist, and former CEO, Electus' YouTube Food Channel.
• Corianda Dimes, New Media Strategist, Bullfrog and Baum
• Nik Bauman, cofounder of Foodzie.com and Tonx, Inc. Nik has focused his entire professional career on e-commerce and food
• Moderated by Scott Hervey, Shareholder, Weintraub Tobin

"How Has Digital Media Changed the Way We Interact with Food" takes place Tuesday, April 23 at ROC, 604 Arizona Street in Santa Monica. Enjoy a social hour from 6:30-7 p.m. followed by the panel discussion and a Q and A session. Register here.

Follow the event on Twitter: @weintraub_law

#wtdmg

By Audrey A. Millemann

Enablement is one of the requirements a patent application must satisfy in order for the patent to be granted. Enablement means that the specification (the written text and drawings) teaches a person skilled in the art how to make and use the invention. 35 U.S.C. §112, ¶1. The enablement requirement is satisfied if a person, after reading the specification, could make and use the invention without undue experimentation. 

In Cephalon, Inc. v. Watson Pharmaceuticals, Inc., 707 F.3d 1330, 2013 U.S.App. LEXIS 3203 (Fed. Cir., February 14, 2013), the Federal Circuit Court of Appeals held that experimentation is not “undue” even if it is “complicated and difficult.” 

Cephalon owned two patents covering a method of drug delivery, which used effervescent agents to increase the absorption of the drug. Cephalon sold the brand-name drug Fentora to treat breakthrough cancer pain, which utilized the patented method.

By Nathan H. Geronimo

A recent case in California’s Sixth District Court of Appeal, Winchester Mystery House, LLC v. Global Asylum, Inc., illustrates California’s treatment of trademark infringement with regard to claims involving artistic works.  Winchester Mystery House is a well-known tourist attraction in San Jose, California.  It is a large, Victorian-style mansion built and expanded by Sarah Winchester, the wife of William Winchester of Winchester Repeating Arms Co. fame.  Legend has it that after her husband’s death in 1881, Sarah Winchester became convinced that she and her family were haunted by the ghosts of those who fell to Winchester rifles.  To combat the haunting, Sarah Winchester bought a farmhouse in San Jose and began the unrelenting task of adding rooms and peculiar features to the house, such as stairways that lead to ceilings in an effort to confuse and thwart the ghosts.  Construction at the Winchester mansion continued constantly for 38 years until Sarah’s death in 1922.  By this time the mansion had swelled to 160 rooms.

The mansion was later bought and established as a museum, and is now controlled by Winchester Mystery House LLC (“Winchester”), which owns the “Winchester Mystery House” trademark and an architectural mark comprised of the three dimensional shape of the Winchester mansion.  In 2008, Winchester granted Imagination Design Works the exclusive right to film at the Winchester Mystery House as well as the rights to use Winchester’s marks and copyrights in association with a film about the house.  Defendant Global Asylum (“Global”) thereafter asked Winchester for permission to film at the mansion, at which time Winchester informed Global of its deal with Imagine Design Works.  Nonetheless, Global produced and distributed a film called, “Haunting of Winchester House.”  The film claims to be a true story about a family that moves into the 160 room mansion to act as caretakers and is haunted by Sarah Winchester and other ghosts.  Winchester sued Global for trademark infringement, alleging that Global’s use of the term “Winchester House” and images of a Victorian-style mansion exploited Winchester’s marks and lead the public to believe that the film was sponsored or otherwise sanctioned by Winchester.