The Supreme Court has granted certiorari to address the standards to be applied in awarding attorney’s fees under 17 U.S.C.§505 of the Copyright Act. At issue is whether Supap Kirtsaeng, the prevailing defendant in a copyright lawsuit, should be awarded his attorney’s fees. This is Mr. Kirtsaeng’s second trip to the Supreme Court. The Court held in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013) that under the “first sale” doctrine (codified at 17 U.S.C. §109(a)), Kirtsaeng, as the lawful owner of the particular physical copy of the textbook purchased abroad, was permitted to resell that… Read more
Intellectual Property
Will the Patent Venue Statute be Reinterpreted?
Heartland is an Indiana limited liability company that is not registered to do business in Delaware and does not have any regular or established place of business in Delaware. It was sued for patent infringement in the District of Delaware and its motion to dismiss or transfer the action under 28 U.S.C. §1406 was denied. In the pending Federal Circuit mandamus action it filed, In re TC Heartland, Heartland has asked the court to reconsider its interpretation of the patent venue statute 28 U.S.C. §1400(b). For a court to adjudicate a case, it has to have jurisdiction, both personal jurisdiction… Read more
Google Books’ Fair, Transformative Use
“Transformative use” is not about a war between giant robots that can transform into vehicles and other objects, although there are similarities between the animated television series “The Transformers” and the war that has been taking place for more than a decade between Google and the publishing industry. Internet giant Google has been sued by publishing giants – in 2005, by the American Association of Publishers and, more recently, by the Authors Guild. Google’s Library Project, which began in 2004, involves agreements between Google and a number of the world’s major research libraries under which participating libraries selected books from… Read more
Conexx: America Israel Business Connector Announces Four-part Speaker Series
The Professional Connector of Conexx: the America Israel Business Connector, will be organizing a four-part speaker series in Atlanta that will feature exciting topics and speakers. The programming will address issues including how Americans and Israelis conduct business, key considerations for Israeli companies coming to America, new business models for Israeli startups, and the intricacies of high profile deals. Topics covered: How Do Americans and Israelis Conduct Business Coming to America: Key Considerations for Israeli Companies Israeli Startups: New Business Models The Art of the High Profile Deal Conexx (f/k/a the American-Israel Chamber of Commerce-Southeast) was established in 1992 as… Read more
The “Happy Birthday” Song (How Old Are You Now?)
According to the 1998 Guinness World Records, “Happy Birthday to You” is the most recognized song in the English language. The melody of “Happy Birthday to You” comes from the song “Good Morning to All,” which has been attributed to American siblings Patty Hill and Mildred J. Hill who wrote the melody in 1893. Patty was a kindergarten principal in Louisville, Kentucky; her sister Mildred was a pianist and composer. The Summy Company registered for copyright in 1935, crediting the lyrics to authors Preston Ware Orem and Mrs. R.R. Forman. In 1988, Warner/Chappell Music purchased the company owning the copyright… Read more
The Rise of Copyright Cases Against Retailers
By: Joyce Klemmer Copyright law is in the news again this week, including the rise in copyright infringement cases against retailers in copyright infringement cases over textile patterns. Retailers are now one of the top groups of defendants in copyright infringement cases brought by manufacturers of patterns and fabrics. According to a new report from legal strategist Lex Machina, the top four defendants are Ross Stores, TJX (parent of the T.J.Maxx, Marshalls and other brands), Amazon, and the Burlington Coat Factory. Other retailers targeted include Forever 21, J.C. Penney, Nordstrom, Sears, and Wal-Mart. According to Lex Machina, “They have a… Read more
Federal Circuit Expands the Definition of Direct Infringement
By J. Gibson Lanier, Ph.D. In what may turn out to be a landmark decision, the Court of Appeals for the Federal Circuit (CAFC) significantly expanded the definition of direct infringement with respect to divided infringement (i.e., the infringement occurs through the action of more than one party). In Akamai Technologies, Inc. v. Limelight Networks, Inc. (Fed. Cir. 2015) (en banc), on remand from the Supreme Court, the CAFC issued a unanimous decision adding two new situations where a party may be held directly liable as infringing a patent. The case concerns whether Limelight infringed claims to patents owned by… Read more
USPTO Releases New Subject Matter Eligibility Guidelines….Again
By: J. Gibson Lanier, Ph.D. On July 30, 2015, the USPTO issued its 3rd update to the subject matter eligibility guidelines. You can almost hear the finale for Rossini’s William Tell Overture playing upon its release. While this iteration like its predecessors may have flaws, that the USPTO has issued yet another update clearly shows that the USPTO is trying just as hard as the rest of us to understand the changed landscape in the world of patents with respect to subject matter eligibility. The most recent update provides additional examples relating to abstract ideas in light of recent court holdings… Read more
Can US Discovery Rules Be Used to Gather Evidence for Use in Foreign Proceedings?
By: Joyce Klemmer In intellectual property cases, it is not uncommon for the parties to be involved in ‘parallel proceedings’ — litigating related issues in more than one country simultaneously. The question often arises whether evidence gathered under liberal US discovery rules may be disclosed for use in foreign proceedings. 28 U.S. Code § 1782 (Assistance to foreign and international tribunals and to litigants before such tribunals) provides that, upon the application of any interested person, a district court may order a person/entity to give his testimony or produce a document for use in a proceeding in a foreign or international… Read more
Supreme Court Declines Ruling in Oracle v. Google Copyright Case
By: Joyce Klemmer Oracle sued Google in 2010 seeking more than one billion dollars in damages alleging that Google’s Android Smart Phone operating system infringed its copyrights in the Java platform. In May 2012, the trial judge ruled that Oracle’s Java application program interface (API) “plagiarized” by Google was not copyrightable. On May 9, 2014, the Federal Circuit ruled in Oracle’s favor on the copyrightability issue and remanded the issue of fair use to the district court. Following the decision, the Electronic Frontier Foundation noted: “The implications of [the Federal Circuit’s] decision are significant and dangerous. As we and others… Read more