The IP Law Blog

Focusing on legal trends in data security, cloud computing, data privacy, and anything E

SCOTUS Rules That North Carolina is Protected from Copyright Infringement Claims by Sovereign Immunity

Posted in Copyright Law, IP

The Supreme Court of the United States has held that the state government is free to infringe copyrights without fear of retribution. In Allen v. Cooper, the Supreme Court decided whether the state of North Carolina could be held liable under the Copyright Act for infringing filmmaker Frederick Allen’s copyright relating to Queen Anne’s Revenge. If that name sounds familiar, it’s probably because it is, in fact, the flagship of the infamous pirate Blackbeard.

The facts giving rise to this dispute go back to the 1990s. Well, to be clear, the facts giving rise to the dispute go back to 1717 when Blackbeard was using Queen Anne’s Revenge to carry out his plunderous activities. In any event, in the 1990s, a research firm located the shipwreck and hired Frederick Allen to film their recovery efforts. During this process, Allen’s company recorded video and took photographs, which were registered with the United States Copyright Office. Continue Reading

Stay Away; No Trademark for Social Distancing and other Informational Terms

Posted in IP, Trademark Law

Call me a pessimist, but it was surprising to me when I recently checked the USPTO trademark database that I did not find an application to register “Social Distancing” for some other novelty item.  (It is also surprising that the tag #socialdistancing has only 159,000 uses on Instagram.) Nevertheless, I am sure some entrepreneurs will use it on a t-shirt or coffee mug, file a trademark application for “Social Distancing” and then try to prohibit others from using the term.  Chances are, however, that this entrepreneur will not be successful.

The trademark examiner assigned to an application to register SOCIAL DISTANCING will likely refuse registration because it fails to function as a trademark because it merely conveys an informational message. Where a term is merely informational, the context of its use in the marketplace would cause consumers to perceive the term as merely conveying an informational message, and not a means to identify and distinguish goods/services from those of others. Continue Reading

District Court Stays Discovery Deadlines Because of Coronavirus Threat but Keeps Markman Hearing on Calendar

Posted in IP, Patent Law

On March 6, 2020, a Central District Court in UPL NA Inc. f/k/a United Phosphorous, Inc. v. Tide International (USA), Inc. et al, 8-19-cv-01201 (CDCA 2020-03-06, Order) (Ronald S.W. Lew), issued an order that may become more common place across courts.  At the request of the parties, the Court issued a temporary stay of all discovery in the action because of the threat posed by the Coronavirus.

Specifically, the Court noted that the parties had jointly stipulated that “discovery efforts are being significantly impacted by the outbreak of coronavirus. Both parties have sought materials and testimony from witnesses who are located outside of the United States, including in China, and given current travel restrictions and quarantine rules, obtaining the discovery sought at this time is impractical, if not impossible.”  Therefore, the Court found good cause to temporarily vacate the discovery dates presented in the parties’ joint request. Continue Reading

YouTube and the First Amendment

Posted in IP

Is the privately-owned YouTube site really a “state actor” subject to judicial scrutiny under the First Amendment? That’s the claim made in a lawsuit by Prager University, which is not really a university. The Ninth Circuit was recently called upon to address PragerU’s claim that the widely popular internet site operated by a private entity should be treated as a “state actor” subject to the First Amendment.  Unsurprisingly, the Ninth Circuit reaffirmed well-established case authority to hold that the First Amendment’s protections apply only as to protect against governmental action, not to private companies such as YouTube.

PragerU claims that its mission is purportedly “to ‘provide conservative view points and perspective on public issues that it believes are often overlooked.’”  PragerU creates videos that target younger audiences and has posted hundreds of videos on YouTube. Continue Reading

Google’s Servers Do Not Constitute a Regular and Established Place of Business for Patent Venue

Posted in IP, Patent Law

It has become commonplace for companies such as Google to use local servers to provide faster service to customers.  This practice has raised the question as to whether those local servers constitute “a regular and established place of business” for the purposes of establishing venue in patent infringement suits in the districts where the servers are located.

Specifically, the patent venue statute, 28 U.S.C. § 1400(b), limits the districts where patent infringement cases can be filed to either (1) where the defendant resides, which for a corporation is where it is incorporated, or (2) where the defendant has a regular and established place of business and has committed acts of infringement. Continue Reading

IPRs Cannot Be Used to Challenge Patents for Indefiniteness

Posted in IP, Patent Law

There are a number of requirements that must be met for an invention to be patentable. The invention must be novel (unique) and nonobvious (i.e., a person skilled in the field of the invention would not have found the invention obvious based on the existing knowledge in the field). In addition, the patent application must meet other requirements, including written description (the application must contain a detailed, clear, and definite written description of the invention) and enablement (the application must describe how to make and use the invention). If the patent application satisfies all of the requirements, a patent is issued.

A third party can challenge an issued patent on several different grounds, either in litigation or in the Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). If the challenge is successful, some or all of the patent’s claims will be invalidated. If only some of the claims are invalidated, those claims will be canceled from the patent and the remaining claims will be enforceable. Continue Reading

Lil Nas X Takes His Horse to the Old Town Road and Moves to Dismiss Producers’ Copyright Infringement Action Concerning “Rodeo”

Posted in Copyright Law, IP

Lil Nas X broke onto the scene in spectacular fashion when he released the viral sensation “Old Town Road,” featuring Billy Ray Cyrus. Old Town Road broke the prior record for most consecutive weeks at No. 1 on the Billboard Hot 100 charts and eventually resulted in Lil Nas X receiving a Grammy award. Unfortunately, fortune and fame comes with its share of problems.

Lil Nas X was sued by producers Don Lee and Glen Keith (the “Producers”) in October 2019 for allegedly infringing their copyrighted material with his track “Rodeo.” According to the Producers, Rodeo bears a substantial similarity to their 2017 song “GwenXdonlee4-142[,]” which was subsequently incorporated into a song called “Broad Day” by PuertoReefa and Sakrite Duexe. Specifically, the lawsuit claims that there are substantial similarities between the chord progression, use of instruments, drumbeats, and other protectable characteristics from “GwenXdonlee4-142” and “Broad Day.” According to the Producers, the song was widely distributed in locations including Lil Nas X’s Continue Reading

No Trademark Protection In Book or Movie Titles?!?

Posted in IP, Trademark Law

Generally, the title to a single motion picture is not entitled to trademark protection.  This is the same for the title to single books, songs and other singular creative works.  Most non-trademark attorneys are surprised when I tell them this.  I am sure you may be scratching your head as well.  The logic behind the legal principle that the title to a single creative work cannot function as a trademark is as follows:  a title to a single creative work such as a book serves to identify only the book and not the source of that book.  Another reason trademark law generally refuses to acknowledge trademark rights in the title to a single creative work, such as a book, results from the interplay between copyright and trademark law. While trademarks endure as long as the mark is used, copyrights eventually expire. When a work falls into the public domain, others would have the right to reproduce the literary work.  However, if the title to the book enjoyed trademark protection, this would compromise the policy of public domain under copyright law because a book with a trademarked title could only be published under a different title. Continue Reading

Inequitable Conduct Can Render all Patents in a Patent Family Unenforceable through Infectious Unenforceability

Posted in Intellectual Property Litigation, Patent Law

In Guardant Health, Inc. v. Foundation Medicine, Inc., 1-17-cv-01616 (DDE 2020-01-07, Order), the Court rejected the Plaintiff’s argument that an inequitable conduct claim must be related only to the prosecution of the patent-at-issue in ruling on plaintiff’s motion to dismiss defendants’ infectious unenforceability counterclaims.  In the case, the Defendants’ theory as to the unenforceability of U.S. Patent No. 9,902,992 (the ’992 patent) was not based on inequitable conduct said to have occurred during the ’992 patent’s prosecution.  Instead, it rested on the relationship between the ’992 patent and the prosecution of other related patents.

As some background, inequitable conduct regarding any single claim in the prosecution of a patent renders the entire patent unenforceable, not just that specific claim. Moreover, a finding of inequitable conduct can affect not just the improperly-prosecuted patent, but can also render unenforceable any other related patents and applications in the same patent family. This concept is what courts have referred to as the doctrine of “infectious unenforceability.” Continue Reading

Is Your Competitor Objectionable? The Scope of Immunity Under the Communications Decency Act

Posted in IP

In February 1996, faced with increasing public concern about the availability of pornography on the internet, as well as recent court decisions that seem to deter efforts to filter out such content, Congress enacted the Communications Decency Act (“CDA”).  As part of the CDA, Congress granted immunity to internet service providers from liability for actions they took to help users block online content that a user found to be offensive or objectionable.  Congress further declared its goals in enacting the CDA, and its immunity provision, were “to encourage the development of technologies which maximize user control;” “to empower parents to restrict their children’s access to objectionable or inappropriate online content;” and “to preserve the vibrant and competitive free market that presently exists for the internet and other interactive computer services.”  In 2009, the Ninth Circuit decided the case, Zango, Inc. v. Kaspersky Lab, Inc., 568 F.3d 1169, which held that the immunity provisions of the CDA applied to computer software developers whose programs were intended to help users filter out or block objectionable material.  It is against the backdrop of the history of the CDA and its decision in the Zango case that the Ninth Circuit was called upon to explore the limits of the immunity provided by the CDA in the case, Enigma Software Group USA, LLC v. Malwarebytes, Inc., decided December 31, 2019.  In essence, the Ninth Circuit was called upon to determine whether the immunity provisions of the CDA, specifically section 230(c)(2), immunizes a software company whose blocking and filtering decisions are driven “by anti-competitive animus,” i.e., to deter users from accessing or using a competitor’s software products. Continue Reading