The Southern District of New York Finds “Work Made For Hire” Under Italian Copyright Law

By Edwin Komen and Chidera Anyanwu on October 23, 2017 Posted in Copyrights

Musical scores incorporated into films are usually produced with the specific film in mind. In the U.S., we call such works “works made for hire,” meaning that the artist does not retain authorship rights to the music. Instead, the commissioning party, which is typically the film producer or music publisher, is the author of the musical score for copyright purposes.

Internationally, however, most countries attribute authorship only to natural persons. To permit the exploitation of collaborative works, like motion pictures, the legal regimes of most of these countries grant the commissioning party the right to exclusively exercise the economic rights in the work. This does not, however, change the status of each individual creator as the “author” of his or her distinct contribution to the work. Continue Reading

Metallizing Forfeiture Post-Helsinn

By Sheppard Mullin on June 13, 2017 Posted in Patents

This article was originally published on PatentlyO.com.

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit had its first opportunity to address the impact of the “or otherwise available to the public” clause contained in post-AIA 35 U.S.C. § 102. In finding that the AIA “did not change the statutory meaning of ‘on sale’ in the circumstances involved here,” the Federal Circuit provided insight into the continued relevance of the forfeiture doctrine of Metallizing Engineering v. Kenyon Bearing. Continue Reading

Eleventh Circuit Joins Split Court Decisions on Registration Precondition for Copyright Suits

By Edwin Komen and Chidera Anyanwu on June 5, 2017 Posted in Copyrights

Section 411(a) of the Copyright Act generally requires copyright registration, or a refusal of registration, before a copyright action may be filed. This has led to a variety of decisions from the Circuit and District Courts interpreting the meaning of “registration.” It has even led to an intriguing gloss from the Supreme Court, Reed Elsevier, Inc., v. Muchnick, 559 U.S. 154 (2010), holding that Section 411(a) is not a jurisdictional requirement but merely a precondition. The Circuit Courts are now split into three groups, namely, “registration” (registration means what is says…a certificate or refusal in hand), “application” (all elements necessary for registration – an application, deposit copy and fee filed in the Copyright Office) and undecided. None of these positions can easily be harmonized potentially leading to inconsistent results and forum shopping. Continue Reading

Supreme Court Unanimously Changes Where Patents May Be Litigated

By Daniel C. Kloke on May 23, 2017 Posted in Patents

Yesterday, in TC Heartland LLC v. Kraft Foods Group Brands, No. 16-341, the United States Supreme Court significantly changed the geography where future patent infringement suits can be filed. The patent venue statute, 28 U.S.C § 1400(b), provides that a patent-infringement lawsuit may be brought either (1) in a State where the defendant resides or (2) where the defendant has committed acts of infringement and has a regular and established place of business. In TC Heartland, the Supreme Court concluded that the “residence requirement” of the patent venue statute refers only to the State of incorporation of domestic corporations. By interpreting “resides” as “is incorporated,” the Supreme Court has significantly restricted where patent owners can file infringement lawsuits.

Illinois Federal Judge Awards Treble Damages and Attorneys’ Fees in Kurt Vonnegut-Fueled Opinion

By Mark Patrick on February 23, 2017 Posted in Patents

On February 10, 2017, an Illinois federal judge determined that R-Boc Representatives violated an injunction issued following a jury trial on their alleged patent infringement. In a unique opinion replete with quotations from, and references to, literary works written by Kurt Vonnegut Jr., U.S. Magistrate Judge Jeffrey Cole addressed the current standards for determining willfulness under 35 U.S.C. § 284 and finding a case “exceptional” under 35 U.S.C. § 285 en route to awarding the patentee enhanced damages as well as attorneys’ fees.

You’re So Vague: Federal Circuit Sends IPR Decision Back to PTAB for More Thorough Analysis

By Daniel C. Kloke on February 15, 2017 Posted in Patents

In a precedential decision, the Federal Circuit reaffirmed that the Patent Trial and Appeal’s Board (PTAB) is required to explicitly state motivations to combine prior-art references in claim rejections for obviousness. Rejections that rely on mere statements that a person of ordinary skill in the art reading the prior-art references would understand that the combination would have allowed for claimed features is not enough.

Suing The United States Government For Patent Infringement And Defending Against A Claim Of Obviousness

By Bradley Graveline and Amy Harwath on January 25, 2017 Posted in Patents

A patentee may bring patent infringement claims against the United States government pursuant to 28 U.S.C. § 1498, in which Congress waived the sovereign immunity of the United States against such claims. Patent infringement actions against the government are similar to those brought against non-governmental entities, but they do have some idiosyncrasies. For example, patent owners can only sue the government for infringement in the United States Court of Federal Claims, as opposed to a district court, and jury trials are not available in the Court of Federal Claims.

New York Court of Appeals Says No Common Law Public Performance Right For Pre-1972 Sound Recordings

By Edwin Komen and Chidera Anyanwu on January 3, 2017 Posted in Copyrights

On December 20, 2016, the New York Court of Appeals, the highest court in the state, held that no common law public performance right exists for pre-1972 sound recordings. The issue of whether a common law public performance right exists for pre-1972 sound recordings in New York was an issue of first impression. Although this holding is only binding on New York state courts and federal cases decided under New York law, it is anticipated that, coming from a premier IP jurisdiction, it will also be highly influential for courts throughout the nation that are adjudicating or may adjudicate similar cases.
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Proposed “Patent Agent Privilege” Promises Protection For Patent Practitioners And Clients

By Bradley Graveline and Percival C. Olsen on November 23, 2016 Posted in Patents

The United States Patent and Trademark Office (“PTO”) recently proposed a patent-agent privilege that would bring needed consistency to the discovery phase of Patent Trial and Appeal Board (“PTAB”) proceedings.

The proposed rule would recognize a privilege for certain communications between clients and non-attorney U.S. patent agents and foreign patent practitioners (“Patent Practitioners”). The proposed privilege would only apply in PTAB proceedings, and then only “where the practitioner performs legal work authorized by the jurisdiction in which the practitioner practices.”^[1] Notably, the proposed privilege would not extend to communications relating to district court litigation.

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