Interesting article in the New York Times Magazine concerning Plumpy'nut, a patented peanut product that has worked wonders at re-nourishing starving children in the Third World. The Peanut Solution dips a toe into the debate over whether limitations should be included in the patent regime for inventions with humanitarian implications.
Here is a link to an informative article written by some colleagues at Fox Rothschild concerning recent developments in false marking jurisprudence. False marking issues were the subject of April 4, 2010 and June 16, 2010 posts on this blog.
I finally had a chance to read the article in the New York Times Magazine about music performing rights societies (mostly BMI) and the people that work there, titled The Music-Copyright Enforcers. I found it entertaining and informative. It was published August 6.
I’m not sure why we can’t seem to settle the question of what IP litigation is covered under the typical Comprehensive General Liability insurance policy. Whether it is because the form is continually evolving, insureds are ever-clever in their strategies for seeking coverage, or the language in the policies is just so bad, we cannot. As a result, every single time a potential coverage issue arises, insureds should check both their policy and the case law in the likely forum for litigation to see if there may be grounds to assert coverage.
A case from the Ninth Circuit, Hyundai Motor v. Nat’l Union Fire Ins. Co., is the latest reminder that it pays to re-evaluate coverage every time. Hyundai was sued for patent infringement based on its “build your own car” feature on its Website. Patent infringement is not covered under the typical CGL policy. On that basis, the insurer declined coverage and declined to defend the lawsuit.
Hyundai reasoned that its build your own car feature was a form of advertising, and should have been covered under "advertising injury" clause in the policy. It sued the insurer and won. The court reasoned that the patents-in-suit involved advertising methods, therefore the patent infringement claims involved misappropriation of advertising ideas, and the claims were covered under the advertising injury clause.
Just goes to show you don’t ever know, so it pays to check both the policy and the case law every single time.
I definitely want one of these for Christmas.iplawwatch.foxrothschild.com/uploads/file/int75.PDF
Businesses involved in design patent litigation would be well-served to consult IP counsel with copyright expertise. Recent Federal Circuit decisions, Crocs v. ITC, Int’l Seaway v. Walgreens, and Egyptian Goddess v. Swisa, require that the standard to be employed when evaluating both design patent infringement and design patent validity, is one similar to that used in copyright infringement cases: the ordinary observer test.
Generally, to prove patent infringement, one must prove that the accused device meets every limitation of the claim, either literally or under the doctrine of equivalents. That analysis has very little to do with copyright jurisprudence. With respect to design patents, however, the question is whether an ordinary observer, familiar with the prior art, would believe that the accused product was the same as the patented design. That test is very similar to the “more discerning ordinary observer” test employed in copyright infringement cases, which asks: whether the ordinary observer, putting aside the copyrighted work’s unprotected elements, would think that the plaintiff’s work was taken by the defendant.
Copyright lawyers should be more comfortable with the more amorphous ordinary observer test and its more "touchy feely" application than patent practitioners, who are more accustomed to precise evaluation of claim limitations. For that reason, businesses involved in design patent lawsuits may be well-served to include a copyright litigator on the litigation team.
If one discovers infringement of an unregistered copyrighted work, one needs to consider the forum of the potential infringement litigation to determine whether one can sue immediately after the Copyright Office receives the completed application, or must wait for the certificate to issue before suing. The implications are obvious, particularly for one who wants to seek a TRO or preliminary injunction.
In Cosmetic ideas v. IAC/InteractiveCorp, the Ninth Circuit weighed in on whether the pre-litigation registration requirement in Section 411 of the Copyright Law requires that the Copyright Office actually register a work before one can sue for infringement, or it is sufficient for the completed application to have been received by the Copyright Office. Courts have been split on this issue. The Ninth Circuit opinion lists the courts in each camp. Notably the Fifth and Seventh Circuits have held that submission of the application is sufficient, and the Tenth and Eleventh Circuits require issuance of the registration certificate. The Ninth Circuit held that submission of a completed application is all that is required.
Where this is likely to matter is in cases involving what one might call non-monetized copyrighted works, works that generally earn the author no direct revenue and therefore generally go unregistered, like this blog or maybe a sales brochure, flyer, catalog or Web page. It may not be worthwhile to register those as a matter of course, but if a competitor copies any of them, one might want to sue.
Interesting discussion from the Fox Rothschild Employment Group last week concerning employer searching of employee after-hour pager messages. The alert highlights a recent Supreme Court decision concerning an employer's right to search such materials.
Privacy and fourth amendment issues aside, employers should consider taking steps to avoid copyright issues when performing such searches. In many instances, the employee author might own the copyright in such writings. If the employer copies or displays the message without employee authorization, wouldn't that be an infringement? Couple that thought with last week's Ninth Circuit decision that delivery of a completed copyright application to the Copyright Office satisfies the pre-suit registration requirement (the subject of my next post), and this begins to look a little more real world.
A court might imply a permission to display or copy an electronic message by virtue of the fact that the employee created and stored the work on the employer's systems, but employers might be on safer footing if at a minimum they addressed copyright issues in their electronic communication policies.
Following up on my April 4, 2010 post concerning false patent marking, the Federal Circuit ruled last week in the Pequignot v. Solo Cup case. Here is my take away.
1. Marking a product with an expired patent number is false marking. Solo Cup argued that because the public could look up the patent, marking with an expired number was not misleading. The Court explained that it is not so simple to determine when a patent expires and so it could be misleading.
2. Marking a product with a legend that says something like "this product may be protected by one or more patents" is not false marking, but neither is it adequate marking under 35 U.S.C. 287, so that does not seem like a very effective strategy.
3. To be actionable, false marking must be intentional. The marking must be for the purpose of deceiving the public.
4. Proof that a marking is false and that the marker knew of its falsity, creates a rebuttable presumption of intent to deceive.
5. The accused can rebut the presumption by proving, by a preponderance of the evidence, that he did not consciously desire that the public be deceived. One way to do that would be to prove that the accused relied on reasonable advice of counsel. Merely asserting that one had no such intent will not be sufficient.
On a related note, on remand the district court in the Forest Group case awarded damages in the amount of the highest price for which the 38 falsely marked stilts at issue in that case sold ($180, prices ranged from $103-$180). The total award was only $6,840, but if courts are going to award what amounts to gross revenues on products sold for $500 or less, penalties for false marking could be severe.
WIPO, the World Intellectual Property Organization, recently launched the WIPO Gold website. WIPO Gold functions as a portal through which one can access all of the various WIPO online resources, including for domain name arbitrations, patents and trademarks. I spent some time trying it out and found it very useful. If you use any of the WIPO resources or have international IP issues, WIPO Gold is worth visiting.
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