The Marking Requirement is Alive and Well; Don’t Forget about Virtual Marking

The Federal Circuit recently faced a patent marking issue in Arctic Cat Inc. v. Bombardier Recreational Products Inc., [2017-1475] (December 8, 2017).  In that case, the patent owner Arctic Cat had previously licensed the patents in suit to Honda. The license agreement with Honda specifically stated that Honda “shall have no obligation or requirement to mark” its licensed products.  While this provision no doubt made sense to Arctic Cat at the time, it put at risk the damage award against accused infringer Bombardier for the period of time before Arctic Cat received actual notice of infringement.

The Federal Circuit held that an alleged infringer who challenges the patentee’s  compliance with § 287 bears an initial burden of production to articulate the products it believes are unmarked “patented articles” subject to § 287. Once the alleged infringer meets its burden of production, however, the patentee bears the burden to prove the products identified do not practice the patented invention.

Compliance with the patent marking statute can be difficult because the patent owner may have to change the molds or other equipment used in manufacture as the patent issues, and again as the patents expire or are invalidated (lest the patent owner be accused of false marking).  This obligation also extends to the patent owner’s licensees, but it is easy to understand why a licensee, such as Honda in this case, would not want to be bothered with marking.

 

However many patent owners appear to be unaware that the AIA made it easier for patent owners (and their licensees) to comply with the patent marking requirement.  While it could not have helped Arctic Cat and its licensee Honda in their pre-AIA license, amended §287(a) now allows the patentee to mark by “fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent.”  Thus when patents issue or expire, a patent owner simply has to update a website – not change molds or printing plates.

A Report to Congress on virtual marking in 2014 concluded that “virtual marking has likely met its intended objectives of reducing manufacturing costs and facilitating public notice in certain situations.”  This assessment was probably correct, but virtual marking remains under-utilized.  Among virtual markers, some provide online lists:

TIVO: www.tivo.com/patents

Nanoleaf: http://nanoleaf.me/patents/

Densify: http://www.densify.com/company/virtual-patent-marking.htm

Arthrex: www.arthrex.com/corporate/virtual-patent-marking

Hill-Rom: http://www2.hill-rom.com/usa/PDF/Patent_20120609.pdf

 Actifio: https://www.actifio.com/patents/

some provide a downloadable list:

Bunn: www.bunn.com/patents

some provide lists for individual products:

Kimberly Clark www.kimberly-clark.com/patents

and some provide a searchable database:

St. Jude Medical: http://patent.sjmneuro.com/Public.

Virtual patent marking is one of the few benefits of the AIA, but inventors and their assignees do not appear to be taking advantage of it.

 

Copyright Claim from Out of the Blue

Leslie Weller has sued Gillian Flynn, author of the book Gone Girl, and a host of others for infringing Wellers’s copyright in a novel titled Out of the Blue.  What is interesting about this case (aside from the fact that every successful movie seems to be based upon copyright infringement) is the case for access by defendant.  Plaintiff emailed her script to a consultant whose books were edited by who was represented by the Levine Greenberg  who also represented defendant Flynn

Plaintiff’s claim is on its face plausible, but so convoluted, that defendant may be able to break the chain.  However, this Complaint, and others like it, are a reminder of the importance of keeping records of development, whether its a story as here, or a computer program or some other work, to be able to prove independent creation.

Plaintiff’s Complaint does identify a number of similarities in between Gone Girl and Out of the Blue, and it will be interesting to see the defendants response.  If there was no infringement, hopefully defendants have records to show the independent creation.

 

For God’s Sake, Copyright Does Not Protect Ideas, Only Expression

On December 6, 2107, Judge Louis Stanton dismissed Randy Brown’s copyright law suit again Time Warner, Turner Broadcasting, Cartoon Network, and others, based upon the claim that the television series Black Jesus infringed his short story Thank You Jesus.

Judge Stanton’s opinion concisely stated what every copyright owner needs to remember:

It is a principle fundamental to copyright law that a copyright does not protect an idea, but only the expression of the idea.

Judge Stanton found that there are “no similarities between the two works beyond the abstract and unprotected idea of an African American male protagonist named Jesus who believes that he is the Son of God.”  Review plot, characters, setting, themes and total concept and feel, he concluded that the concept of an African American Jesus who engages in allegedly “un-Jesuslike” conduct is an abstract idea, which is illustrated and expressed differently by entirely different stories in each work.  Judge Stanton found that no reasonable jury, properly instructed, could finding that the expressions of Thank You Jesus are substantially related to Black Jesus.

While the law does provided limited protection for ideas under certain circumstances, copyright does not.  Merely because a second work is based upon the same idea as a first work does not mean it infringes the copyright in the first work.

 

Not All Pirates are in the Caribbean

On November 14, 2017, Arthur Alfred II, Ezequiel Martinez, Jr., and Tova Laiter sued The Walt Disney Company in the District of Colorado, alleging copyright infringement, and claiming that the Pirates of the Caribbean franchise of films, video games, theme park attractions, merchandising, casino games, literature and other related items infringe their screenplay of the same name.  The focus of the Complaint is that the Captain Jack Sparrow character in the Disney productions is substantially similar to the character Davy Jones in their screenplay.

Plaintiffs claim that Jack Sparrow is “an expression of a uniquely new ‘pirate.'”  Interestingly, the “idea” of humorous pirates may have been the idea of the rides original designer, Marc Davis, who realizing actual pirates were not particularly glamorous, opted for a more whimsical and romanticized approach that was less threatening to younger audiences.  Moreover Johnny Depp has claimed that his portrayal of Jack Sparrow was his own invention, and almost got him fired.

The court will have to decide whether Jack Sparrow and Davy Jones are similar because they are embodiments of the same idea or because they share the same expression.

He Who Lives by the Suit, Dies by the Suit

CBS Broadcasting Inc. has sued photographer Jon Tannen for posting still images from the Gunsmoke episode “Dooley Surrenders,” first aired on March 8, 1958. On line posting of images from classic television is fairly common, leaving one to wonder whether there isn’t more to the story, and it turns out there is.  As CBS Broadcasting explains in Paragraph 1 of its Complaint: “Tannen hypocritically engaged in this act of infringement while simultaneously bring suit against Plaintiff’s sister company, CBS Interactive Inc., claiming it had violated his own copyright.”

Tannen sued CBS Interactive in February, claiming that the online division of CBS had used two of his photographs without permission to illustrate an article about high school football player Sofian Massoud.

Despite being created by statute (17 USC 107) the only thing certain about copyright fair use is that it not as broad as everyone thinks it is.  Grabbing pictures from Google image searches to make a point or make a joke is common, but not every such use is technically a “fair use.” Although the widespread use of images in this manner probably is broadening the definition of fair use.  The Tannen v. CBS v. Tannen situation is a reminder that not all online uses of images are fair uses, and more importantly, if you are going to complain about something, you better not be doing what you are complaining about.

 

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Technology Policies Protect The Company and its IP

A computer and technology policy is an important part of protecting and managing intellectual property.  A business should consider establishing a policy addressing the following points:

Use of Company Technology

The technology provided by the company, including computer systems, communications networks, company-related work records and other electronically stored information in general should be used for only for the business of the company. Whatever the purpose, employees should be prohibited from transmitting, retrieving, or storing any communications or other content of a defamatory, discriminatory, harassing or pornographic nature. No messages with derogatory or inflammatory remarks about an individual’s race, age, disability, religion, national origin, physical attributes or sexual preference may be transmitted. Harassment of any kind should be prohibited.

Restricted Access to Computer Systems and Data.

The  Federal Computer Fraud and Abuse Act (18 U.S.C. §1030) provides protection against the improper accessing of computer systems and data, but the key to its protection is that the access is unauthorized.  Because an employee is generally authorized to access the company’s computer system, the protections of the CFAA are frequently held not to apply to the actions of employees.  By carefully defining what employees are authorized to do with the company’s computer systems and data, and what an employee is not authorized to do, the company may be able to extend the protections of the CFAA to disloyal that activities of disloyal employees.  Many states have laws that parallel the CFAA, for example Missouri’s Computer Tampering Statute Mo.Rev.Stat. §537.525.

 

Unlicensed Software

Employees downloading, installing, and running software can jeopardize the company’s computer system, and their installing and running unlicensed software can create substantial copyright liability.  Civil damage awards of up to $150,000, plus attorneys’ fees and costs, are possible as well as criminal penalties including substantial fines and imprisonment.  Employees should be restricted from downloading software and plug-ins without permission from IT, and Employees should be prohibited from installing unlicensed software on company computers.  Employees should further be prohibited from using unlicensed software on their personal computer to perform work for the Company.

Copyrighted Material

Copyrighted materials belonging to third parties should not be transmitted or stored on the company’s network without permission of the copyright holder. Employees should be encouraged to share links rather than actual copies.  Employees should be educated about the limits of fair use an incorporating copyrighted materials into company work product.

Social Media

The company should consider whether it wants employees posting anything about the company (good or bad).  Even well-intentioned posts can interfere with the coherent message that the company is trying to project.  At a minimum the company should instruct employees about the message that the company is trying to project on social medial.

The company should also consider whether it wants employees to identify themselves as employees of the company when participating in social media. Views expressed by employees could be attributed to the company by the mere fact of their employment,

Using Company email and email Addresses

The company should consider whether it wants employees using company email and in particular a company email address in conducting personal business.  Having the company’s email address associated with on-line postings could result in the employee’s personal opinions being attributed to the Company.  Email is also a tool for stealing electronic files.  The company should monitor employee emails, and advise employees that they are doing so.

Employees should be regularly reminded that company emails are business records that may be discoverable, and their content should be prepared accordingly

No outside media

Not only are flash drives and similar devices a tool for stealing electronic files, but they are a vector for computer viruses and other malware.  However they are beneficial and convenient and a complete prohibition could interfere with the proper conduct of the business.

 

 

 

Non-parties to an Arbitration Agreement are Generally Not Bound to Arbitrate

In Waymo LLC v. Uber Technologies, Inc., [2017-2130] (September 13, 2017), the Federal Circuit affirmed the district court decision that Uber Technologies, Ottomotto LLC, and Otto Trucking LLC could not compel Way merely because they Waymo was arbitrating a related dispute with Levandowski, who did have an arbitration agreement with Waymo.

The Federal Circuit said that Contract law principles hold that non-parties to a contract
are generally not bound by the contract, and a contract to arbitrate is not an exception. A party cannot be required to submit to arbitration any dispute which it has not agreed so to submit.  The Federal Circuit noted that the California courts have, in a few situations, compelled arbitration against an entity that was not a party to an arbitration agreement. The Federal Circuit said that the issue was whether the circumstances are such that Waymo can be compelled to arbitrate on equitable grounds, in Waymo’s suit against Uber, Ottomotto, and Otto Trucking, where there is no agreement to arbitrate.  The district court concluded that it could not, noting that Waymo had disclaimed reliance on the contracts with the employee, and Waymo need not rely on the terms of its written agreements merely because it makes reference to such agreements.

The Federal Circuit said that while equitable doctrines permit departure from the principle that non-parties cannot be compelled to arbitrate, when necessary to avoid
inequity, California precedent guides that unless the issues of the complaint are intimately intertwined with the non-party agreement containing an arbitration clause,
compulsion to arbitrate is inappropriate.  The Federal Circuit concluded that the district court correctly concluded that arbitration should not be compelled.

Subject of Internal Investigation Could not Block Disclosure of Report to Third Party

In Waymo LLC v. Uber Technologies, Inc., [2017-2235, 2017-2253] (September 13, 2017), the Federal Circuit denied intervenor  Levandowski’s petition for a writ of mandamus.  Waymo alleges that its former employee, Levandowski, improperly  downloaded thousands of documents related to Waymo’s driverless vehicle technology and then left Waymo to found Ottomotto, which Uber subsequently acquired.  Before the acquisition closed, counsel for Ottomotto and Uber (but not counsel for Mr. Levandowski) jointly retained a law firm to investigate Ottomotto employees previously employed by Waymo, including Mr. Levandowski.  Waymo sought to obtain the report, which the court permitted, and Levandowski unsuccessfully attempted to block with a write of mandamus.  The Federal Circuit said that a petitioner has to show three things to be entitled to the writ:

First, the party seeking issuance of the writ must have no other adequate means to attain the relief he desires—a condition designed to ensure that the writ will not be used as a substitute for the regular appeals process. Second, the petitioner must satisfy the burden of showing that his right to issuance of the writ is clear and indisputable. Third, even if the first two prerequisites have been met, the issuing court, in the exercise of its discretion, must be satisfied that the writ is appropriate
under the circumstances.

The Federal Circuit found that Levandowski failed the first test — establishing he had no other adequate remedy.  While Levandowski argued that an appeal after the disclosure was in effect no remedy, the Federal Circuit concluded that a post-judgment appeal by either Uber or Levandowski would suffice to protect the rights of Levandowski and ensure the vitality of attorney-client privilege.  The Federal Circuit went on to find that Levandowski failed to show that his right to issuance of the writ was clear and indisputable.  Finally, the Federal Circuit said that  Levandowski had not persuaded it to exercise its discretion here and overrule the District Court.

Dance Like No One is Watching; Email Like it’s Being Read Aloud at your Deposition

Dance like no one is watching; email like it’s being read aloud at your deposition — this sentiment was passed along this morning by a colleague.  It is good to be periodically reminded to be careful with your business and professional emails:

When [writing emails] creating exhibits for the inevitable law suit consider

  • Keep business email professional.
  • Write as if your mother were reading over your shoulder.
  • Consider the purpose of the communication.
  • Consider the audience/recipients of the information (including a judge and jury).
  • Be factual; where opinion is called for, identify it as opinion, and make sure that it is germane to the issues; do not give an opinion (e.g., legal) that you are not qualified to give.
  • Do not make mean or demeaning references to others.
  • Make your point, but avoid extreme emphasis!!!!
  • Keep business and personal messages separate.
  • Consider how your characterization of the Company and its activities would be perceived by an outsider.