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
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.
A recent federal district court decision denied a motion to dismiss a complaint brought by Artifex Software Inc. (“Artifex”) for breach of contract and copyright infringement claims against Defendant Hancom, Inc. based on breach of an open source software license. The software, referred to as Ghostscript, was dual-licensed under the GPL license and a commercial license. According to the Plaintiff, those seeking to commercially distribute Ghostscript could obtain a commercial license to use, modify, copy, and/or distribute Ghostscript for a fee. Otherwise, the software was available without a fee under the GNU GPL, which required users to comply with certain open-source licensing requirements. The requirements included an obligation to “convey the machine-readable Corresponding Source under the terms of this License” of any covered code. In other words, under the open source license option, certain combinations of proprietary software with Ghostscript are governed by the terms of the GNU GPL. Continue Reading
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.
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.
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.
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.
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.” Notably, the proposed privilege would not extend to communications relating to district court litigation.
In a ruling that neatly illustrates some of the challenges a company is likely to face when trying to enforce trademark rights in an advertising tagline, a federal judge in the Northern District of California recently denied a motion for a preliminary injunction seeking to enjoin Yelp’s use of a trademarked tagline.
The U.S. Copyright Office’s new electronic system for copyright-agent registration and maintenance goes into effect on December 1, 2016, and with it comes new rules. Beginning December 1, all online service providers must submit new designated-agent information to the Copyright Office through the online registration system. Electronic designations should be filed on December 1, 2016, or as soon as possible thereafter. Service providers who fail to timely submit electronic designations will be ineligible for the safe harbor from copyright-infringement liability provided by § 512(c) of the Digital Millennium Copyright Act.