By Audrey A. Millemann

The Court of Appeals for the Federal Circuit recently addressed the issue of the patentability of process (method) claims in one of the first cases decided since the Supreme Court’s 2010 decision in Bilski v. Kappos, 130 S. Ct. 3218 (2010). The case is CyberSource Corp. v. Retail Decisions, Inc., 2011 U.S. App. LEXIS 16871 (Fed. Cir. Aug. 16, 2011).

The plaintiff, CyberSource, owned a patent for a method and system of detecting fraud in a credit card transaction between a purchaser and a merchant over the Internet. According to the patent’s specification, the prior art systems for detecting credit card fraud worked well in face-to-face transactions, but did not work in transactions for the sale of downloadable content over the Internet. The invention, as described in the patent, overcame the problems of the prior art by using Internet address information (e.g., IP addresses, email addresses, etc.) to analyze whether the purchaser’s Internet address was the same as the Internet address previously used with the same credit card number. 

Continue Reading Federal Circuit Limits Patentable Processes

By Scott Hervey

In what must be the wildest of luck, professional photographer David Slater was visiting a national park in Indonesia when a black macaque grabbed an errant camera and took an array of pictures and self-portraits.   These amazing pictures ran in a July 5 UK news article about the incident. Two of the four pictures featured in the article included a copyright notice indicating Caters News Agency as the owner.

 

Can Canters News Agency own the copyright in the photos taken by this highly intelligent and obviously photogenic monkey?   In order for this to be the case, the monkey would have to be an author under the Copyright Act.    And if a monkey can be considered an author, he or she would have to assign or transfer the copyright in the photos to Caters News Agency.

 

Section 201(a) of the Copyright Act provides that the initial ownership of the copyright in a work protected under the Act vests initially in the author or authors of the work. The authors of a joint work are co-owners of copyright in the work. So who can be considered an author? According to the Copyright Office FAQ page, "[u]nder the copyright law, the creator of the original expression in a work is its author." Since the monkey was the creator of the pictures in question, is the monkey the author for the purposes of copyright ownership? According to the internal Copyright Offices practices, as codified in Rule 503.03, the monkey may not be considered the author. Rule 503.03(a) states:

 

Continue Reading Copyright Ownership Claim Of Pictures Taken By Wild Ape is Monkey Business

By Nathan Geronimo

Until recently, if a plaintiff in a copyright infringement case sought an injunction against continued infringement, a reasonable showing that plaintiff was likely to prevail on the merits of the infringement claim gave rise to a presumption of irreparable harm, which is a necessary element a plaintiff must prove in order for a court to issue an injunction. However, in early August 2011, the Ninth Circuit in Perfect 10, Inc. v. Google, Inc., citing the United States Supreme Court decision in eBay Inc. v. MercExchange, L.L.C., stated that this presumption of irreparable harm no longer exists.

Perfect 10, Inc. sought a preliminary injunction against Google for alleged copyright infringement. Perfect 10 creates and copyrights photographs of nude models for commercial distribution on its website, perfect10.com. Access to the website is limited to members who pay a monthly fee.

Perfect 10 alleged that Google’s web search and caching feature allows internet users to access Perfect 10’s copyrighted images for free, which constitutes copyright infringement. Perfect 10 also alleged that because the images are available through Google’s search engine, people are unwilling to pay for a subscription to view the images. This has caused Perfect 10 to lose over $60 million in revenue over the last fifteen years.

Continue Reading Ninth Circuit Says No Presumption of Irreparable Harm in Copyright Infringement Cases

By James Kachmar

Although courts routinely grant permanent injunctions to curtail deceptive marketing practices, they sometimes struggle with whether an injunction impermissibly violates a party’s rights under the First Amendment. In TrafficSchool.com, Inc. v. EDriver Inc., the Ninth Circuit struck down one such injunction finding that it was overbroad and violated the defendants’ First Amendment Constitutional rights to free speech.

In TrafficSchool.com, the defendants owned and managed several for-profit websites, including DMV.org, whose mission was to save their customer “time, money and even a trip to the DMV.” People could visit the defendants’ website “for help renewing drivers’ licenses, buying car insurance, viewing driving records, beating traffic tickets, registering vehicles and even finding DUI/DWI attorneys.” The defendants generated revenue from the DMV.org website based on the number of visitors it attracted. Given the website name DMV.org, as well as its layouts, many visitors confused the website with the one that was run by California’s actual Department of Motor Vehicles. In addition to consumers, law enforcement officials and DMV employees from other states also confused DMV.org with the real California DMV website.

Continue Reading The First Amendment and Anti-Trust False Advertising Injunctions

By Zachary Wadlé

The term “geek” is no longer a pejorative term. Just ask consumer electronic retail giant Best Buy. The chain recently threatened online rival Newegg.com with legal action, arguing that its Geek On advertising slogan sounded too similar to Best Buy’s tech support service, Geek Squad. Newegg responded by posting Best Buy’s cease-and-desist letter on Facebook and suggesting that Best Buy was attempting to subjugate geeks everywhere. Newegg.com’s posting generated substantial negative reaction towards Best Buy from other self-professed geeks who took issue with Best Buy’s efforts to claim sole rights to “geek” status (and trademark rights).

In its defense, Best Buy says it is just narrowly protecting its Geek Squad trademark against overzealous competitors like Newegg.com. In fact, federal records show that Best Buy has disputed more than a dozen geek-themed trademarks in the past decade, including Rent a Geek, Geek Rescue and Speak With A Geek. But why does a company like Best Buy risk the negative publicity associated with threatening competitors like Newegg.com with legal action over “geek” terminology? The answer is that companies that don’t aggressively defend trademarks, even against seemingly innocuous intrusions, risk having courts decide that they abandoned the trademarks later when more substantive disputes crop up.

Continue Reading Best Buy Gets “Geeked Up” Over Trademark Protection