Sixth Circuit Rules in Favor of Songwriter’s Heirs in Copyright Termination Decision in Jackson Brumley et al. v. Albert Brumley & Sons Inc. et al.

In its May 16, 2016 decision in Jackson Brumley et al. v. Albert Brumley & Sons Inc. et al., the Sixth Circuit expressed skepticism of the Second Circuit’s and Ninth Circuit’s interpretation of the 304(c) termination provisions of the Copyright Act, despite ultimately deciding the case on an issue of contractual interpretation.  The Court handed down a decision respecting the termination rights of songwriter Albert Brumley’s heirs in the famous gospel song “I’ll Fly Away,” concluding that those termination rights had not been bargained away via a contract that did not specifically address termination.  Although the outcome of the case hinged on contract interpretation, rather than the specifics of the 1976 Copyright Act’s termination provisions under 304(c), opinion author Judge Sutton took the time to express skepticism of previous circuit court interpretations of the 304(c) termination provisions of the Copyright Act. Continue Reading

Federal Circuit Finds Software-Related Claims Patent Eligible in Enfish, LLC v. Microsoft Corp.

On May 12, 2016, the United States Court of Appeals for the Federal Circuit addressed the patent eligibility of software in Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016), concluding that the claimed database software was patent-eligible under 35 U.S.C. § 101 because the claims were not directed to an abstract idea.  The case marks only the second time the Federal Circuit has found software-related claims eligible for patent protection since the Supreme Court’s landmark decision in Alice Corp. v. CLS Bank International, ___ U.S. ___, 134 S. Ct. 2347 (2014).

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News of Note in IP: May 24, 2016

Each week, Sheppard Mullin brings you News of Note in IP: The latest news in the IP-related fields of technology, privacy, fashion, advertising, music, and social media, curated by our IP team.  Here are some of the stories that we’ve been reading:

Engineers Smash World Record for Solar Power

Australian engineers successfully harvested an unheard-of 34.5 percent of the sun’s energy without concentrators, demonstrating there are still advances to be made in photovoltaics research.

How the Hyperloop Will Change Travel

The internet is abuzz with the news of the recent Hyperloop test—even the Chinese Military is getting involved.  But what can the average traveler expect from advances in the tubular transport system?  Here are four ways the Hyperloop is expected to revolutionize travel.

Brewery Invests in Edible Six-Pack Rings to Save Marine Life

In your feel-good story of the week, a Florida brewery has developed biodegradable and compostable six-pack holders that are edible for marine wildlife.  Cheers to Saltwater Brewery for helping us save the world one six-pack at a time.

And the Patent goes to . . . Kevin Spacey!

The House of Cards star has been awarded U.S. Patent No. 8,306,877, which is directed to providing a way to screen and manage non-authorized emails—or, as his co-inventor put it, creating “a digital doorman at a velvet rope.”

Explosion of the Week: Scientists Blow Up Water with Lasers

For the first time ever, physicists were able to film X-ray bursts splitting a beam of water at speeds as fast as five-billionths of a second.  What did you do with your week?

High Court Takes on Laches and Patents

As published by The Daily Journal on May 11, 2016.

Businesses dread getting letters that make claims of patent infringement. Such letters often raise complex questions of patent law that require specialized advice and demand a license fee that eats into company profits.

Sometimes, however, the patent owner fails to follow up on the letter, and years pass. Other times, the patent owner starts a dialogue, only to let it trail off without resolution. Occasionally, a second letter (or a patent lawsuit) comes many years after the patent owner first learned of its potential claim for patent infringement. Does the passage of time mean that the accused infringer is safe?

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News of Note in IP: May 18, 2016

Each week, Sheppard Mullin brings you News of Note in IP: The latest news in the IP-related fields of technology, privacy, fashion, advertising, music, and social media, curated by our IP team.  Here are some of the stories that we’ve been reading:

New USPTO Guidance on Patent Eligibility of Diagnostic Methods

It was a big week for the USPTO.  The agency issued significant updated guidance on numerous topics, including a memorandum regarding subject-matter eligibility rejections, an index of eligibility examples, life-science specific eligibility examples, and PTAB Amendment Motions.  Additionally, the Board designated five more post-grant proceedings as precedential and updated its list of subject-matter-eligibility court decisions.

Tensions Between Trademark’s Prohibition on Disparagement and the First Amendment Come to a Head

The USPTO filed a writ of certiorari with the U.S. Supreme Court after a divided en banc Federal Circuit struck down its rule prohibiting the registration of offensive trademarks on constitutional grounds.  The tension has inspired lots of public commentary, legal and nonlegal alike.

Can Spoilers Implicate Copyright Law? HBO Targets YouTube Videos Containing Game of Thrones Spoilers.

HBO has invoked YouTube’s DMCA provision in its bid to take down a Spanish YouTuber’s videos discussing spoilers, which don’t contain any actual leaked audio or video footage.  But the predictions are unerringly accurate, raising the question of whether Copyright’s protection of plot points could give rise to an infringement claim.

ICC Report Reveals the Diversity of Specialized Jurisdictions

The International Chamber of Commerce (ICC) has released a report that examines specialized intellectual-property courts around the world.  The report aims to provide a better understanding such jurisdictions and the way they function to contributing to the pool of knowledge that countries can draw upon when considering how to establish or improve their systems for resolving IP disputes.

News of Note in IP: April 15, 2016

Each week, Sheppard Mullin brings you News of Note in IP: The latest news in the IP-related fields of technology, privacy, fashion, advertising, music, and social media, curated by our IP team.  Here are some of the stories that we’ve been reading:

House Subcommittee Holds Hearing on ITC Patent Litigation

The House’s Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet convened for a hearing focused patent litigation at the United States International Trade Commission (ITC).  The purpose of the hearing as to review how patent disputes are handled by the ITC to determine if the current arrangement complements district court litigation and produces fair and beneficial results.  The hearing focused a great deal on Section 337 investigations conducted by the ITC to look into complaints alleging unfair practices in import trade.  A high percentage of Section 337 investigations and the leveraging power they create in parallel litigation.

Buying a Stairway to . . . Trial

The opening riff from Led Zepplin’s “Stairway to Heaven” is headed to trial in the Central District of California on May 10 after the district court denied Led Zepplin’s motion for summary judgment.  In the Order, U.S. District Judge Gary Klausner found enough similar protectable expression for the copyright-infringement case to proceed to the jury.

USPTO Launches New Online Payment Tools

On April 9, the USPTO rolled out two new online fee payment tools to the public: Financial Manager and the Patent Maintenance Fees Storefront.  New features include bulk file payments, secure user permissions, and streamlined transactions reports or itemized receipts.  Existing deposit accounts and EFTs must be transferred to the new system by June 30, 2016.

Proposed Patent Venue Reform Bill Proves Controversial

Last month, the Senate Bill titled “Venue Equity and Non-Uniformity Elimination Act of 2016” was introduced in an effort to limit forum shopping and strike a blow to so-called patent trolls.  The legislation has garnered support from the Computer & Communications Industry Association and the Consumer Technology Association, while the 21st Century Patent Reform coalition—which consists of 43 corporations across industries—has criticized the bill.

News of Note in IP: April 8, 2016

Each week, Sheppard Mullin brings you News of Note in IP: The latest news in the IP-related fields of technology, privacy, fashion, advertising, music, and social media, curated by our IP team.  Here are some of the stories that we’ve been reading:

Senate Unanimously Approves Trade Secrets Bill

The bipartisan “Defend Trade Secrets Act of 2015” is intended to give owners of trade secrets the same legal protections as other intellectual-property owners, establishing for the first time a uniform, national trade-secret-protection standard.  The DTSA largely parallels the Uniform Trade Secrets Act, which has been passed in some form in nearly all states.

Copyright Remix—Via the Department of Commerce

The U.S. Department of Commerce recently issued recommendations for amendments to U.S. Copyright law. The recommendations call for providing courts with better guidance and greater flexibility in awarding copyright damages and address song remixes.

USPTO Finalizes New AIA Rules

The amendments affect inter partes review, post-grant review, and covered-business-method proceedings before the Patent Trial and Appeal Board.  Major revisions include confirmation that PTAB proceedings will continue to use the “broadest reasonable interpretation” standard for claim construction, permitting declarant testimony in preliminary responses, Rule-11 type certifications, and clarification on motions to amend.  The new rules go into effect May 1.

The Cold War—of Vodka

The 12-year battle over the trademark rights to Stolichnaya (“Stoli”) vodka post Soviet-Union collapse may be heading for the U.S. Supreme Court.  A request for a stay of the litigation pending a planned petition for a writ was filed in response to a Second Circuit ruling that a Russian state-owned company had standing to sue over the brand in U.S. court.

Google and Oracle Agree to Forego Research of Juror’s Social Media

The trial court determined in its discretion it could impose a total ban on social-media and internet searches, but gave Google and Oracle the choice between agreeing to such a ban or to disclose the details of the scope of their proposed research.  The parties agreed to rely on traditional voir dire to vet potential jurors.

Patent Trial & Appeal Board Institutes 17 Inter Partes Reviews for TCL Communication Technology Holdings, LTD.

In Fiscal Year 2015, the Patent Trial and Appeal Board (“PTAB”) instituted inter partes reviews (“IPR”) on approximately 68% of petitions filed.  Overcoming these odds, the PTAB recently instituted 17 out of 17 IPRs filed by Sheppard Mullin on behalf of TCL Communication Technology Holdings, LTD.  Not only was this a 100% institution rate, but also the institutions resulted in the Eastern District of Texas staying a patent infringement case less than three weeks before trial. Continue Reading

T.T.A.B. Emphasizes the Fame of the Movie ‘Jaws’ in Its Refusal to Register a Cooking Show’s Mark

On March 16, 2016, the TTAB affirmed the refusals of an applicant’s mark, JAWS DEVOUR YOUR HUNGER, for online streaming cooking shows, holding that it is confusingly similar to the registered mark from the movie JAWS. Though the Board will rarely consider the fame of a mark in its du Pont analysis, the fame of the JAWS mark played a predominant role in the decision here. In re Mr. Recipe, LLC, Serial Nos. 86040643 and 86040656 [precedential]. Continue Reading

Federal Circuit Limits Estoppel Provision of the AIA

On March 23, 2016, the Federal Circuit addressed the scope of the estoppel provision for inter partes reviews (“IPRs”) contained in Section 315 of the American Invents Act.  The Court relied on the plain reading of “during” to find that § 315(e) actually prohibits future estoppel on grounds for which an IPR was sought, but rejected—even if merely based on redundancy Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 2015-1116 (“Slip Op.”). Continue Reading