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Biggest IP cases of 2002
scubacuda writes "Law.com's article, The Biggest IP Cases of 2002, has a nice summary of some of the intellectual property cases that have caught our attention this last year. Of particular interest to slashdotters: Kelly v. Arriba Soft Corp. (regarding Arriba's visual search engine), Enzo Biochem Inc. v. Gen-Probe Inc. (regarding
a gene patent being invalid because it did not meet the written description requirement), an Illinois federal court injunction against Aimster, United States v. Elcom Ltd a/k/a Elcomsoft Co. Ltd. , and Playboy Enterprises Inc. v. Welles (regarding Playmate of the Year, Terri Welles, using Playboy's marks and metatags on her website)."
I am getting tired of
"Playboy's biggest breasts of the year"
etc
Mouse powered Chips, Open source Processors and Lego
....i think all discussion on this article will center around that Playboy Playmate.
Isn't this woman setting herself up for an obsessive stalker? I understand she wants to make money off her birthday looks, fine, and it wouldn't be her fault if/when some nutcase targets her, but the risk of harassment is huge given that her identity is so clearly established and the website purports to sell a way to get "close" to her.
As for typing into the Playboy mark, whatever. I suppose it makes your attractiveness prestigious?
...each passing year that the DMCA is up and 'legal', there will be more and more such cases (and abuses). 2003 will put 2002 to shame.
Dude, where's my packet?
The law is an ass. (which by implication must mean it's best not to feed it or it will shit on you.)
Sorry, but my karma just ran over your dogma.
just have one porn site sue another, and get links to both on the /. frontpage.
not that the truth can be "owned", butt IT certainly can be mangled/MiSmanaged buy giaNT stock markup FraUD/softwar/?pr? ?firms?, making them the owners of... your eyeballs, at the momeNT.
The ongoing case against the retroactive extension of copyright duration is also very important to many people, including The Mutopia Project. Though of course, which cases are most important depends on your point of view.
perl -e 'fork||print for split//,"hahahaha"'
Did you read Terri Welles' FAQ? LOL!
Is it true that you have to sleep with Hef to get Playmate Of The Year?
No, but, see previous question...heheheh
Previous question:
Who Chooses the Playmate of the Year.?
Hef. He makes all the decisions in regards to Playmate of the Year. He takes into consideration the concensus of the fans, but, ultimately the decision is his.
Put a catchy IP trial header.
Put it as a Top 10 list of the year
Mix in Playboy in the summary
Now that you've got everyone's attention, put one of the top playmates's personnal webpage address, and witness the explosive results
--- Metamoderating abusive downgraders since my 300th post.
that's right, almost buy common law, folks who question the motives/practices of uber-"geeks"/IPO losers, will have decretion over use of the -1 digit in the gnu millennium.
156.102.116.238
*Crosses fingers*
Fuck this. I'm a lawyer, and it chafes my ass to see this godman stupid point made over and over again. Let me ask you this question: How many lawsuits do you think you saw in Soviet Russia?
I mean it. Lawsuits are a sign of freedom. They're a sign that the government has decided to leave as much as possible to the free market and the law of contract and tort, and not to come in with a big wet fucking nanny agency. Which of course still generates work for lawyers through a regulatory practice, but less open and less honest work.
Would you rather Big Fucking Brother came in and spent fifty fucking years drawing up a piece of legislation precisely specifiyng what information could and couldn't be collected? All stuffed with pork, and with a big-ass federal agency to enforce it? Or would you rather this was decided in terms of general principles of tort and property, in an open court?
Well, I've got news for you, dickhead, the second method involves lawsuits. And those lawsuits have to be argued by lawyers. And that means that lawyers get rich. Check out the alternative any time you grudge us our big fucken' payoff. We don't get stock options, you know.
It's like a free market, only it's better than a free market because the smartest lawyer with the best argument always wins. How many other industries are there where the best product always wins? Not software.
Lawsuits are freedom. That's why we have so many in America, and they have so many government agencies in Europe.
AC posting allows an educated professional like me to swear like a thug in public. I say fucken keep it.
you've slashdotted Playboy!!!
It took me moment to realize this /. article was neither about large case mods nor about large Internet Protocol frames. Whew.
Umm... so if I go take a dump in a public toilet, I own a patent on what I 'deposited'...? U.S. Patent law is insane!
you say they may be coming for our eyeballs?
what are they planning to use them for, fish bait?
0, i get IT, your eyes are the root to yOUR wallet. i get IT. l0l? that's 'net lingo, for: grin on you chuckleheads(tm)
I hit no when it asked to set a cookie, and now, right after the page loads, I get kicked over to: http://www.law.com/law/bad_cookie.html
Dango.
riding round the world on an old motorcycle
When I saw this excerpt, I wondered whether there was a more mundane sort of link that covered more routine and basic regulatory issues for small web hosting companies who deal with large telcos. For example, if a spammer successfully sends spam through a small web hosting company's mail server across the circuits of several large telcos, may any or all of the telcos respond by blocking ALL traffic to and from the entire mail server from its ciruits? Is doing so be fair or unfair? (i.e., worth it to get rid of the spam?) What procedural mechanisms exist to resolve any disputes which cannot be resolved informally? The FTC and related agencies are available for consumer complaints but what about small companies?
Eldred is a very interesting case. I'm optimistic the retroactive portion of the law stands a 50:50 chance of being struck down, despite the Court's conservatism and traditional deference to Congress in similar matters. As for prospective copyright terms, I really doubt the court will intervene, because the life+70/95 terms are not obviously unreasonable, esp. when compared to law in other countries -- even if they do seem a tad long as a matter of judgment.
EFF has done a nice job collecting legal materials as its website, useful as a reference even if one disagrees with their position.
What to make some money while testing your legal and psychic prowess? Try this contest.
divec wrote: "The ongoing [aaronsw.com] case against the retroactive extension of copyright duration [eldred.cc] is also very important to many people.."
I agree that eldred.cc [http://eon.law.harvard.edu/openlaw/] is a very important case, but it seems that the authors of the article have included only those cases where there is already a court decison.
Mo "Telephone call for IP Freely, IP Freely? IP Freely anyone? Oh dang kids! when I catch them!"
(1) The best argument doesn't always win. Sometimes the lawyer who wins is the one who gets the ideologically sympathetic judge.
... or makes the most persuasive case that the judge's life hangs in the balance. Maybe these things don't happen (much) in America, but they do happen around the world (e.g. Colombia vs. Medellin cartel) and throughout history (e.g. late Roman republic).
... but Big Money? To my thinking, it's teachers and garbage collectors who deserve the Big Money -- try running a civilzation without those professions, see how ugly things get real quick.
Worse: in some systems, the lawyer who wins is the one who makes the biggest payoff to the judge
(2) What makes lawyers so deserving of Big Money? A living wage, sure
Of course, some lawyers work pro bono for the causes in which they believe. That's not good capitalism, but it's truly heroic.
That said, I agree with your point: better a free market legal system than a bloated bureaucracy.
-kgj
My signature has had the biggest IP of anyone here for months..
Cover your eyes and click this link!
MacAndrew wrote: "because the life+70/95 terms are not obviously unreasonable, esp. when compared to law in other countries ..."
I wonder if you know any other country having a longer term than the US (life+70/95)? To the best of my knowledge all other countries have had lower terms. Those that have changed have done so after US "nudging". Only one country, Australia has publicly stated they will not increase it over 70, India has 60 years limit, and Taiwan has refused to accept US demands to increase it to 95 years.
Yes, but just a couple. Some very industrious people compiled this list.
Even were the US the longest, it would have to be so by a good margin to stick out. Again, I don't necessarily think the current terms are appropriate. Judge Posner has criticized them well, and noted that the main problem is that because it is difficult to make money off materials in the public domain, there was little opposition to the Sonny Bono Act.
Thanks for the list.r oast-pi g-copyright-102202.html
It seems to me that the Eldred v. Ashcroft is not so much a challenge to the number of years, but rather to the very right of Congress to make such extensions indefinitely.
Lawrence Lessig, says:
http://www.redherring.com/insider/2002/10/
"The Constitution says that copyrights are to be "for limited Times." The framers initially set those "limited Times" to be quite short--14 years, renewable once. After a limited time, copyrighted work was to pass into the public domain--a lawyer-free zone where publishers and creators can draw upon creative work without fear of legal liability. This text, the challengers say, forbids the extension of existing terms."
While we are on the subject of patents and toilets, here is an interesting article at ZDnet:2 3791,00. html
http://news.zdnet.co.uk/story/0,,t269-s21
"IBM eliminates loo patent
08:37 Monday 14th October 2002
Troy Wolverton, CNET News.com
The computing giant decides not to press claims on a system for reserving a place in the toilet queue. The patent probably should not have been granted in the first place, an expert says
IBM has quietly eliminated a patent it received on a method for determining who gets to use the toilet next."
Perhaps I am asking the impossible here, but I believe it is up to folks like those who read /. to work towards the repeal of absurd laws like the DMCA, and others that result in these absurd law suits.
Believe it or not, your congressmen, senators, and governors WILL LISTEN if they get enough feedback. What does that entail? It entails writing a coherent, calm (avoid flames), SNAIL MAIL letter and sending it to every government representative in your area. Here are some URLs that might help:
http://www.house.gov/writerep/
http://www.visi.com/juan/congress/
Explain your opposition to laws like the DMCA, UCITA (http://www.gnu.org/philosophy/ucita.html), and similarly outrageous and disgusting laws.
-Michael
Threshold RPG
It does not appear that the Sonny Bono Act furthers the purposes of copyright law for a number of reasons. First, the Act applies retroactively to subsisting works. Second, adding another extension to the 70 year period does not appear to add any further incentive to authors. Third, simply because we were trying to conform with other countries does not mean the Congress is immune from limitations placed on it by the Constitution. And finally, it appears that the law was passed more to protect corporate interests than the public.
... the useful Arts", but instead allow the corporations to continue exploiting the works for another twenty years.
The constitution in Article I, 8 clause 8 says that "[t]o promote the Progress of Science and useful Arts" Congress may secure to authors and inventors the exclusive right to their writings and discoveries for "limited times." In other words, the founders noted that in order to create incentives for authors to create works, it was necessary to grant them an exclusive right for a limited time for the work they created. Otherwise, one could spend a great deal of time and skill creating a new work merely to have someone else make the profit. In applying the Sonny Bono Act to subsisting works, Congress appears to have broadened the grant of power given to them by the founders. For once the work has been created upon the existing notion of copyright protection, there is no longer the need to provide any incentive to the author. The founders appear to have conditioned Congress' ability to protect authored works for limited times to promote the useful Arts. Once that Art has been created, Congress has therefore fulfilled its duty in providing the incentive. A retroactive extension of the time period does not in any way affect the incentive to create a work that has already been created. Therefore, a retroactive extension of the copyright protection does not further the purposes of copyright law.
Secondly, though Congress was granted the ability to determine what "limited times" means, there has to be some point at which Congress has overstepped its authority. Clearly, if Congress granted copyright protection for 900 years, it would be, by definition, a "limited time", but also be beyond what was needed to create an incentive for authors. Arguably, Congress' extension of the existing time period defeats the purpose of the limited time limitation if Congress is then again free to add another extension. Were Congress to continue such a practice, "limited times" would be in name only. Rather, it would be, in essence, an unlimited time. Therefore, there must be a point at which Congress can no longer grant an extension to an existing time period, especially for subsisting works.
Thirdly, Congress cannot justify its actions based on international law. One of the reasons given for this law was to bring us up to the same time period as other European countries so we would receive the benefit of reciprocity. However, as noted during oral arguments, if France were to declare that all hate speech was unprotectable, Congress could not pass a law stating the same in the interest of international IP harmony.
Finally, the biggest proponents of the Act are the giant media corporations who do not wish to see works they own to fall into the public domain. Quite a bit of lobbying and campaign contributions went into pressuring Congress to pass the Act. As such, one has to wonder, when pondering the retroactive aspects of the bill, whether the purpose was merely to reward and protect the giant media corporations. If this is the case, and I think one could make a good argument that it is so, then Congress is clearly not trying to "promote
Therefore, taking into account that extending the period for subsisting works does nothing to promote the useful Arts, that continually extending the time period is, in essence, an unlimited time, and that a strong argument could be made that the Act was more about reward corporate interests than allowing works to fall into the public domain, it appears the Act does not further the purposes of copyright law.
First, there's Kelly vs. AribaSoft, which held that thumbnail images are fair use. That's a good decision; it means we can have image indices, like Google's.
Then there's Veeck v. Southern Bldg. Code Congress, regarding copyrights on the text of laws. Some states outsourced their building code creation to a semiprivate organization, which then claimed copyright on the text. The decision was clear: "'The law,' whether articulated in judicial opinions or legislative acts or ordinances, is in the public domain and thus not amenable to copyright." That's consistent with the general rule that when a government does something via a contractor, the government does not escape any obligations it would have if it did the job in-house. So you can scan in your local building code (or all the building codes in the country) and put it on line, even if some private company drafted the building code book.
I don't know if this is the biggest IP case of 2002, but it's one of the funniest: Mattel v. Universal [warning: pdf link], which concerns MCA Records' release of a single called "Barbie Girls" (which, of course, drew a lawsuit from lawsuit-happy Mattel). Judge Alex Kozinski, one of the most hilarious judicial opinion-writers of our time, called this "the battle between "speech-Zilla and trademark-Kong."
The reasoning behind the deposit requirement for biological material in a public repository is that many biologicals are literally impossible to fully *describe*. Think about it, can you really fully describe a bacterial strain or animal cell?
U.S. Patent law requires that the invention be "enabled" and have an adequate "written description" under 35 USC 112, first paragraph. The law has developed such that the inventor satisfies the "enablement" requirement (enabling others to make and use the invention) and the "written description" requirement (describing the invention in adequate written detail) by providing a reasonably detailed description along with the respository name and accession number of the material.
That is quite sane given the realities.
A story used the words "Intellectual" when referring to "Terri Welles" site!
There is no such thing as Intellectual Property.
:
This phrase is designed to help giving the impresion of pantents, copyrights being some sort of durable solid property, when in fact they are
1. limited rights granted by society
2. granted for a limited time and
3. granted in exchange for a specified service to society.
Using the phrase IP only help, to obcure these facts in the direction of 2 and 3 being removed.
The Biggest IP Cases of 2002
'Festo' again, plus other decisions that made an impact
Lewis R. Clayton
The National Law Journal
12-27-2002
Another year, another Festo headline. Two years ago in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki a deeply split en banc U.S. Court of Appeals for the Federal Circuit held that whenever a patent claim is amended, the patent holder may not claim any range of equivalents for the amended element. In the most significant patent case of the year, the U.S. Supreme Court emphatically reversed the decision.
The court affirmed its commitment to a robust doctrine of equivalents and rejected an absolute bar. The court ruled that a patentee must show that the amendment does not surrender the particular equivalent in question. That presumption of surrender would not apply, and infringement could be found, for example, "when a particular equivalent may have been unforeseeable," when the application was filed, or when "the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question."
While there wasn't much to recommend the absolute bar adopted by the Federal Circuit, the Supreme Court's flexible standard will do little to clear up the confusion surrounding the doctrine of equivalents. Indeed, the en banc Federal Circuit recently ordered a new round of briefing in Festo, to consider whether the rebuttable presumption established by the high court is a question of fact to be determined at trial or instead a question of law.
The high court considered another controversial issue -- the jurisdiction of the Federal Circuit -- in Holmes Group Inc. v. Vornado Air Circulation Systems Inc. Under federal law, the Federal Circuit has appellate jurisdiction in cases where original jurisdiction was based, in whole or in part on 28 U.S.C. 1338, the statute that gives district courts jurisdiction over patent claims. The Federal Circuit had interpreted the statute to confer jurisdiction even when a counterclaim, not the plaintiff's affirmative claim, arises under the patent laws. The Supreme Court disagreed, holding that a patent counterclaim cannot confer jurisdiction on the Federal Circuit.
Under this holding, appeals in cases with patent counterclaims will be decided outside of the Federal Circuit -- a development welcomed by Justice John Paul Stevens, who remarked in a concurrence that "occasional decisions by courts with broader jurisdiction will provide an antidote to the risk that the specialized court may develop an institutional bias." While Holmes is true to precedent, it will promote a race to the courthouse in cases in which the Federal Circuit differs with other circuits on nonpatent -- and particularly antitrust -- issues.
In Johnson & Johnston Assoc. Inc. v. R.E. Service Co. Inc., an en banc Federal Circuit again considered the doctrine of equivalents, holding that subject matter disclosed in the patent specification, but not made a part of the claims, is dedicated to the public, and may not be the basis of an infringement claim under the doctrine. The case illustrates the Federal Circuit's continuing skepticism about the doctrine of equivalents.
The Federal Circuit made news in the biotechnology world when a panel reversed on rehearing an opinion it had issued only three months before. In Enzo Biochem Inc. v. Gen-Probe Inc. the court held that deposit of biological material in a public facility may satisfy the written-description requirement of the Patent Act. The court remanded for a determination of whether the written specification, including information available from the deposits, adequately described each of the claims at issue.
Kelly v. Arriba Soft Corp. considered questions of fair use on the Internet. In response to a query, Arriba's visual search engine displays thumbnail and full-size images taken from other Web sites. Included among those images were photographs taken by plaintiff Leslie Kelly, which appear on Kelly's Web site.
The 9th U.S. Circuit Court of Appeals held that Arriba's use of thumbnail images of Kelly's photos was fair use. The use was transformative because the search engine "functions as a tool to help index and improve access to images on the Internet," and the market value was not affected because the thumbnails are too crude to substitute for the full-scale images. Arriba's display of full-size images, however, was not fair use, because it was not transformative and was likely to harm the market for Kelly's work by reducing visits to his Web site and allowing free downloads.
In Veeck v. Southern Bldg. Code Congress Int'l Inc., the 14 judges of the en banc 5th U.S. Circuit Court of Appeals debated whether the Copyright Act prohibits copying of the building codes of Anna and Savoy, two small Texas towns. Like many local governments, the towns had adopted verbatim a model code published by the Southern Building Code Congress. Splitting 8-to-6, the court held that, once enacted into law, the codes lost their copyright protection, because "'the law,' whether articulated in judicial opinions or legislative acts or ordinances, is in the public domain and thus not amenable to copyright."
The court also found that, when adopted, the codes became facts exempt from copyright protection. Surprisingly, the court never considered whether the license agreement under which the codes were provided, which prohibits copying, is enforceable as a matter of contract law.
An Illinois federal court handed the music industry another victory over a digital music service accused of copyright infringement in In re Aimster Copyright Litigation. The Aimster service used America Online's Instant Messaging feature to allow its subscribers to exchange copyrighted music files with one another. Granting a preliminary injunction, the court held that the plaintiffs, a group including record companies and music publishers, had shown a likelihood of success on claims of contributory and vicarious copyright infringement, and that Aimster could not take advantage of the safe harbor provisions of the Digital Millennium Copyright Act that apply to Internet service providers. While the court stressed that it was not bound by the 9th Circuit's rulings in A&M Records Inc. v. Napster Inc. (2001), it reached a similar result.
In United States v. Elcom Ltd a/k/a Elcomsoft Co. Ltd., the Northern District of California sanctioned criminal prosecution of a Russian software company and one of its employees for violation of the anticircumvention provisions of the DMCA. The defendants were prosecuted for selling software that allows users to remove copying restrictions embedded in digital books. The court rejected a host of constitutional challenges, finding that the statute is not overbroad or vague. The court determined that the statute does not prevent fair use of copyrighted materials, but merely limits the technological means of exercising those rights. The decision opens the way for vigorous criminal enforcement of the DMCA.
Playboy Enterprises failed in its attempt to prevent its 1981 Playmate of the Year, Terri Welles, from using Playboy's trademarks on her Web site. In Playboy Enterprises Inc. v. Welles, the 9th Circuit held that Welles' use of Playboy marks on her Web site -- in headlines, banner advertisements and in metatags (keywords used by search engines to identify Web sites) -- were proper.
The court applied a three-part test for nominative use: that the product or service is not readily identifiable without use of the trademark; that only so much of the mark as is reasonably necessary to identify the product or service is used; and that the user do nothing to suggest sponsorship or endorsement by the trademark holder.
Welles' use of a Playboy mark as part of the background "wallpaper" of the Web site, however, did not satisfy this test and was not protected from a claim of infringement or dilution.
In Karl Storz Endoscopy-America Inc. v. Surgical Technologies Inc., the 9th Circuit considered when repair of a trademarked item constitutes trademark infringement. Storz, a maker of surgical endoscopes, sued firms that repair those instruments for hospitals that own the items.
Reversing summary judgment for the defendant, the court held that repair is considered use in commerce of the mark (a jurisdictional requirement of the Lanham Act). Under this test, an owner is allowed to repair the item itself or to arrange for minor repairs by others, without infringing the mark. While this holding makes practical sense, it is difficult to square with the broad language of the Lanham Act, which deems a mark in use in commerce when goods are sold or transported in commerce.
Barcamerica Int'l USA Trust v. Tyfield Importers Inc. illustrates the risks of naked licensing -- licensing a trademark without adequate quality controls over the licensee. The 9th Circuit held that Barcamerica had abandoned its rights in a trademark for wine by failing to exercise even minimal supervision over a licensee's production.
Barcamerica had no contractual rights of inspection or supervision, had no organized testing program, and "failed to demonstrate any knowledge of, or reliance on, the actual quality controls" of the licensee. While the consequences of naked licensing are severe, it is easy to comply with the rule -- the court indicated that the result might have been different had Barcamerica simply sampled the licensee's product.
The 9th Circuit considered the impact of the First Amendment on trademark issues in Mattel Inc. v. MCA Records Inc., in which the owner of the Barbie trademark unsuccessfully challenged the mark's use in "Barbie Girl," a Top 40 song performed by the Danish band Aqua. Calling Barbie "not just a toy but a cultural icon," the court found that the song "pokes fun at Barbie and the values that Aqua contends she represents."
Under the 2nd Circuit's test in Rogers v. Grimaldi (1989), use of the mark in the song's title was not infringement because the title had artistic relevance to the song's content. A dilution claim was also dismissed, because the song qualified as noncommercial use under the exception to dilution liability in the Federal Trademark Dilution Act of 1995.
Lewis R. Clayton is a litigation partner at New York's Paul, Weiss, Rifkind, Wharton & Garrison and co-chair of the firm's IP litigation group.
Even more quietly, IBM fired whoever filed the paperwork for this patent in the first place.
hahahaha
Yep. There are two arguments in the quoted passage: First, that Congress has abused the meaning of "limited time"; second, that retroactive extensions of "existing terms" are prohibited. I'm sympathetic to the second, and think the first is for Congress not the courts.
I do sort of wish the Court would intervene to say the term has gotten too long, but don't want a precedent like that for the Court to do so in other cases. Historical experience has been that although unchecked power of Congress is bad, the unreviewable power of the Court can be worse, as when it was busy invalidating the New Deal. Given precedent, I don't think th Court will, and I'd prefer we petition Congress, as has happened with the DMCA.
But who cares what I think -- here is the transcript of the Oct. 9 oral argument, which discussion well describes the essentially simple dipute.
...one's missing from the list. That one would be PanIP v. everybody.
All I want is a kind word, a warm bed and unlimited power.
LOL! Is that the G-rated version? :)
It's not enough to bash in heads, you've got to bash in minds. - Captain Hammer
I made a spoof banner for LAW.COM years ago. . .let the lawsuits begin!
-- @rjamestaylor on Ello
Your version sounds much better. Where do you get access to Simpsons dialogue? is there a web site of all the scripts?
It's "modded" you stupid fuck. Don't make me Foe your ass.
Not exact scripts, but the Simpsons Archive has the highlights of each episode at least. Lot of cool stuff there :)
It's not enough to bash in heads, you've got to bash in minds. - Captain Hammer
Thanks a lot for the link, cheers!
Why do they take everything you own when you need help?
-1 Uncomfortable Truth
Umm... so if I go take a dump in a public toilet, I own a patent on what I 'deposited'...? U.S. Patent law is insane!
Only if what you have desposited is useful, original, and nonobvious to a "pracitioner of the art." If you can do that, then I'd see a gastroenterologist before a patent attorney if I were you.
If it's for-profit but free, you're not the customer -- you're the product (e.g., the Slashdot Beta's "audience").
The use of COBOL cripples the mind; its teaching should, therefore, be
regarded as a criminal offence.
-- Edsger W. Dijkstra, SIGPLAN Notices, Volume 17, Number 5
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