IP Intelligence

IP Intelligence

Insight on Intellectual Property

Another Step in the Long March from Campbell v. Acuff-Rose toward Fair Use Free-for-All?

Fox News Network, LLC v. TVEyes, Inc., 2014 WL 4444043 (S.D.N.Y. Sept. 9, 2014)

TVEyes is a media-monitoring subscription service that “records the entire content of television and radio broadcasts and creates a searchable database of that content.” This service allows subscribers to search keywords or phrases to determine and review an aggregation of instances of the search term appearing in the media. Subscribers include businesses and governmental agencies such as the White House, United States Army, and local and state police departments; the service is not available to members of the general public. Clips are limited to ten minutes in length, and a majority of the clips are two minutes or less; users are required to agree to use the clips for internal purposes only.

Fox News took issue with TVEyes’ commercialization of its copyrighted broadcasts, and sued for infringement. It contended that TVEyes’ service would have a detrimental effect on the existing market for rebroadcasts of its copyrighted content, which Fox News made available online and also licensed to third parties. Continue Reading

All Native Advertising is Not Equal: Why that Matters Under the First Amendment and Why it Should Matter to the FTC – Part IV

In this five part series, originally published in the Summer 2014 edition of the Media Law Resource Center Bulletin,[1] we take an in-depth look at the native advertising phenomenon and the legal issues surrounding the practice.  After canvassing the many faces of native advertising and the applicable law, the series ultimately examines the pervasive assumption that all native advertising is, and should be regulated as, “commercial speech.”  This assumption presumes that all native advertising is equal under the eyes of the law, and we come to the conclusion that it probably isn’t. Native advertising that is closer to pure content than pure commercial speech may deserve greater or even full First Amendment protection, which would carry significant implications for government regulation[2].

Part 1: Introduction to Native Advertising

Part 2: Early Native Advertising and the Current FTC Regulatory Landscape

Part 3: Evolution of the Commercial Speech Doctrine

Part 4 below examines the important legal distinction between “Commercial Speech” and “Non-Commercial / Inextricably Intertwined Speech” 

—PART IV—

Commercial and Noncommercial Inextricably Intertwined Speech

The Bolger court found that the mailings constituted commercial speech “notwithstanding the fact that [informational pamphlets] contain[ed] discussions of important public issues.”[3] Advertising that “links a product to a current public debate” is not automatically transformed into constitutionally protected noncommercial speech.[4] This is because “a company has the full panoply of protections available to its direct comments on public issues, so there is no reason for providing similar constitutional protection when such statements are made in the context of commercial transactions.”[5] And in that circumstance, “advertisers should not be permitted to immunize false or misleading product information from government regulation simply by including references to public issues.”[6] Continue Reading

Apparel Designs and the “Metaphysics” of Copyright Protection

Varsity Brands, Inc. v. Star Athlectica, LLC, 110 U.S.P.Q.2d 1150 (W.D. Tenn. 2014)

Metaphysics is usually thought to be the province of philosophers or theologians.  A recent decision by a U.S. District Court in Tennessee, Varsity Brands, Inc. v. Star Athletica, LLC, 110 U.S.P.Q.2d 1150 (W.D. Tenn. 2014), reminds us that copyright law can also require courts to confront some pretty thorny metaphysical issues in distinguishing between copyrightable expression and non-copyrightable utilitarian designs.  As Professor Paul Goldstein has written, “[o]f the many fine lines that run through the Copyright Act, none is more troublesome than the line between protectable pictorial, graphic and sculptural works and unprotectible utilitarian elements of industrial design.”

Section 101 of the Copyright Act frames the distinction between copyrightable and utilitarian works.  The Copyright Act defines “pictorial, graphic, and sculptural works” to include “two-dimension and three-dimensional works” but makes clear that copyright protection does not extend to “their mechanical or utilitarian aspects,” and further states:

“the design of a useful article . . . shall be considered [protected by copyright] only if, and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”   Continue Reading

All Native Advertising is Not Equal: Why that Matters Under the First Amendment and Why it Should Matter to the FTC – Part III

In this five part series, originally published in the Summer 2014 edition of the Media Law Resource Center Bulletin,[1] we take an in-depth look at the native advertising phenomenon and the legal issues surrounding the practice.  After canvassing the many faces of native advertising and the applicable law, the series ultimately examines the pervasive assumption that all native advertising is, and should be regulated as, “commercial speech.”  This assumption presumes that all native advertising is equal under the eyes of the law, and we come to the conclusion that it probably isn’t. Native advertising that is closer to pure content than pure commercial speech may deserve greater or even full First Amendment protection, which would carry significant implications for government regulation[2].

Part 1: Introduction to Native Advertising

Part 2: Early Native Advertising and the Current FTC Regulatory Landscape

Part 3 below provides a quick overview of the commercial speech doctrine the protections traditionally afforded to advertisers by the First Amendment

 

—PART III—

Commercial Speech and the First Amendment

One question that curiously has only sporadically come up in the native discussion is the level of First Amendment protection that should be afforded to such speech. From a constitutional and regulatory perspective, the critical question is whether native is considered “commercial” speech under Supreme Court precedent. If native is considered commercial speech, then government regulations are subject to intermediate judicial scrutiny. If native is considered noncommercial, then government regulations are subject to the more heightened strict scrutiny standard.[3] This section provides a primer on the First Amendment and commercial speech before turning to its application to Native Advertising. Continue Reading

All Native Advertising is Not Equal: Why that Matters Under the First Amendment and Why it Should Matter to the FTC – Part II

Editor’s Note: This blog post was originally published on September 8, 2014, courtesy of iMedia Connection’s Blog. It is repurposed with permission.

In this five part series, originally published in the Summer 2014 edition of the Media Law Resource Center Bulletin,[1] we take an in-depth look at the native advertising phenomenon and the legal issues surrounding the practice.  After canvassing the many faces of native advertising and the applicable law, the series ultimately examines the pervasive assumption that all native advertising is, and should be regulated as, “commercial speech.”  This assumption presumes that all native advertising is equal under the eyes of the law, and we come to the conclusion that it probably isn’t. Native advertising that is closer to pure content than pure commercial speech may deserve greater or even full First Amendment protection, which would carry significant implications for government regulation[2].

Part 1: Introduction to Native Advertising

Part 2 below examines the genesis of native advertising and how existing FTC regulations may be applicable to the practice today. 

— PART II —

The Early Days of Native: Advertorials, Infomercials and Hybrid Ads

With all the hype surrounding native, you would think it is a new development. However, native advertising has actually been around in one form or another for over a century.[3] Some have cited so-called “reading notices” in the late 19th century as the genesis of sponsored content.[4] In this pre-FTC era, these reading notices were essentially paid news stories mentioning a brand or company.  These practices were then followed by what some would say was the first golden age of native if you will, the early days of radio. Programs like the Texaco Star Theater,[5] sponsored by the Texaco Oil Company (now Chevron), presented sponsored content as long-form radio dramas. A generation later, with more and more newspapers and magazines relying on ads to generate revenue, the FTC questioned whether restaurant ads in the format of news articles that failed to identify themselves as ads to consumers required disclosure.[6] A generation after that brought the TV infomercials and advertorials that plagued the late night TV landscape of the 80’s and 90’s. Many view native today as simply the next evolution of print and television ad practices often dubbed as “hybrid advertising” by regulators. Continue Reading

All Native Advertising is Not Equal: Why that Matters Under the First Amendment and Why it Should Matter to the FTC – Part I

Editor’s Note: This blog post was originally published on September 2, 2014, courtesy of iMedia Connection’s Blog. It is repurposed with permission.

In this five part series, originally published in the Summer 2014 edition of the Media Law Resource Center Bulletin,[1] we take an in-depth look at the native advertising phenomenon and the legal issues surrounding the practice. After canvassing the many faces of native advertising and the applicable law, the series ultimately examines the pervasive assumption that all native advertising is, and should be regulated as, “commercial speech.” This assumption presumes that all native advertising is equal under the eyes of the law, and we come to the conclusion that it probably isn’t. Native advertising that is closer to pure content than pure commercial speech may deserve greater or even full First Amendment protection, which would carry significant implications for government regulation[2].

Part 1 below provides an overview of the series and introduces the concept and practice of native advertising.

— PART I —

Overview of the Five Part Series

Last December, the Federal Trade Commission held a workshop entitled “Blurred Lines: Advertising or Content” to address the latest and greatest darling of the digital media advertising world – Native Advertising, otherwise known as sponsored content, sponsor generated content, branded content, brand journalism, or some would say, the less flattering infomercial or advertorial. The FTC Workshop capped a year where Native Advertising moved to the forefront of the publishing and advertising industries and the FTC. On its surface, much of the debate at the FTC Workshop and elsewhere centers on deception, namely whether consumers can distinguish between paid ads and editorial content. As FTC Chairwoman Edith Ramirez put it: “while native advertising may bring some benefits to consumers, it has to be done lawfully…by presenting ads that resemble editorial content, an advertiser risks implying, deceptively that information comes from a non-biased source.” This may hold true for certain forms of native advertising but maybe not for all. As the FTC Workshop industry panelists explained, native advertising covers a broad range of material, from in feed ads for products, to editorial content that may not even reference a product or a brand. To a certain extent, the native advertising regulation discussion presumes that all native advertising constitutes commercial speech under the First Amendment. However, whether native is classified as “commercial” is a profound legal determination as commercial speech is traditionally subject to less First Amendment protection and more regulation than other forms of more protected speech. The current debate therefore begs the underlying constitutional question—is all native advertising actually commercial speech?

Continue Reading

Third Circuit Rejects Presumption of Irreparable Harm in Lanham Act Cases

The Third Circuit ruled in Ferring Pharmaceuticals v. Watson Pharmaceuticals on August 26 that “a party seeking a preliminary injunction in a Lanham Act case is not entitled to a presumption of irreparable harm but rather is required to demonstrate that she is likely to suffer irreparable harm if an injunction is not granted.” (Slip op. at 21.)

The Third Circuit observed that while it had never recognized such a presumption in false advertising cases, the presumption had long been applied in trademark infringement cases. However, the presumption is no longer tenable in light of the Supreme Court’s rejection of categorical rules that would replace the traditional four-factor test for injunctions in eBay, Inc. v. MercExchange, 547 U.S. 403 (2006), and requirement in Winter v. NRDC, 555 U.S. 7 (2008) that a party seeking a preliminary injunction must demonstrate a probability, not possibility, of irreparable harm.

Although eBay had arisen in the patent context, the court found its reasoning equally applicable to Lanham Act cases, joining the Ninth Circuit in so finding. See Herb Reed Enters. v. Fl. Entm’t Mgmt., 736 F.3d 1239 (9th Cir. 2013). A petition for a writ of certiorari is pending in Herb Reed Enterprises. INTA has submitted an amicus brief in support of a grant of cert.

Addressing Section 101 Issues Through Reissue

The contraction of patent eligible subject matter under 35 U.S.C. 101 that Alice, Mayo, Bilski, and other recent court cases have triggered has placed a cloud of uncertainty over a large number of patents.  [1]  Fortunately, though, the law provides patent owners with a process for taking remedial steps to address Section 101 risks in their patent portfolios.  A viable remedial measure that may help minimize subject matter eligibility attacks is filing a reissue application. This article briefly discusses patent eligibility and how a reissue may be a good way to address the negative impact of these recent cases on issued patents.

Judge Moore’s warning that Alice “is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents…” looks more and more like an accurate assessment of Alice’s impact. [2]  Since Alice was decided earlier this summer, the Federal Circuit has affirmed summary judgment of invalidity on patent eligibility grounds in Planet Bingo v. VKGS (Fed. Cir. 2014) available here) and, remarkably (at least to this author) affirmed judgment of invalidity in another case based on the pleadings.  See buySAFE v. Google (Fed. Cir. 2014) available here.  The USPTO has been at it as well, issuing examination guidelines in light of Alice as we have reported here and hereAlice and its growing progeny have left us with the following test, although vague, for patent eligibility under Section 101: (1) determine whether the patent claim is directed to subject matter in one of the three excluded categories (abstract idea, law of nature, or natural phenomena), and (2) if so, determine whether the additional elements of the claim supply an inventive concept that is significantly more than the ineligible matter itself.  Recitation of a general purpose computer, in and of itself, is not normally enough to supply the so-called inventive concept to a claim directed to patent ineligible matter. [1]  A reissue application may be an avenue to add the so-called “inventive concept” to a claim with patent eligibility risk under Alice. Continue Reading

Challenging Delegated Top-Level Domains: ICANN’s Trademark Post Delegation Dispute Resolution Procedure

This year, hundreds of new generic top-level domains (gTLDs) are changing the landscape of the Internet.  The long-awaited result of ICANN’s new gTLD program, top-level domains such as .NYC, .WINE, and .WTF will now join the familiar ranks of domains such as .COM and .NET.  As we’ve written about previously, ICANN provided brand owners, trademark holders, and distinct communities the opportunity to object to proposed gTLDs before they were approved or “delegated” to registry operators.  The window for filing these objections ended in March of 2013 and the final objections were resolved in early 2014.  While some top-level domains were successfully blocked by this objection process, the majority of objected-to domains were cleared for delegation.  However, even though ICANN’s gTLD Objection Procedure has closed, brand owners may now have a second opportunity to object to top-level domain registry operators’ complicity or participation in trademark infringement, whether stemming from use of a gTLD string itself or second-level domains registered in the domain. Continue Reading

Public Comments to USPTO’s Preliminary Examination Instructions in View of Supreme Court Decision in Alice Case

As reported here last month, the USPTO recently issued a memorandum to the Examination Corps, entitled “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” The memorandum provides preliminary instructions to the Patent Examining Corps relating to subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas. The USPTO requested public comments, and the comment period closed last week on July 31, 2014.[1]

Two of the country’s leading IP bar associations, AIPLA[2] and IPO[3], submitted comments. The following is a brief summary of these comments:

AIPLA Comments

AIPLA’s comments were submitted in a 10-page letter that included 12 subheadings (recited below). In addition, the following specific interrelated points were emphasized as underlying most of the issues identified:

  1. There’s been no substantive change in the law. The opinion in Alice applies settled principles for applying the abstract idea exception to patent eligibility of process claims, making no substantive changes to that law. It applied pre-existing law and appears to be limited to the particular facts of the case.
  2. Care must be taken to avoid extending the holding in Alice. The Office does not have substantive rule-making authority, and AIPLA urges the Office to exercise caution in instructing Examiners on Alice to ensure that adequate attention is given to the factual context of the Court’s reasoning and to discourage extrapolations that lead to new and unsupported rules of law. The Federal Circuit, and many others, have struggled over the years to understand and explain the decisions of the Supreme Court on subject matter eligibility, and they have often ended up being corrected by the Supreme Court.
  3. The Office and its examiners must tread carefully.” Though the Court declined to explain, and thus “delimit,” what an “abstract idea” might be, it also warned, “we tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Alice, 573 U.S. ___ (slip. op. at 6) (citing Diamond v. Chakrabarty, 447 U.S. 303 (1980)). This is an admonition and should be observed by the Office and Examiners alike.

The 12 sub-sections are directed to the following points:

  1. Alice made no major changes to the framework for determining patent eligibility.
  2. Alice does not require substantive changes to current examination guidance.
  3. Prior guidance remains viable; the two-part Mayo framework is not exclusive, and may not be appropriate for every claim.
  4. Generalizations and overly broad interpretations should be avoided.
  5. Examiners should be instructed to err on the side of finding eligible subject matter.
  6. The burden rests on the Office to fully support a rejection under section 101 and to take into account evidence submitted by an applicant.
  7. Abstract ideas are those that have always existed or been long prevalent.
  8.  Claim as a whole must be considered when evaluated whether it is directed to an abstract idea.
  9. Guidance to examiners should emphasize adherence to the concrete examples of “abstract idea” found in current case law as opposed to any extension of or addition to the narrow pool of ineligible subject matter.
  10. A complete examination is required.
  11. Each claim type should receive a separate analysis for “something more”.
  12. The “something more” requirement must consider a claim as a whole.

IPO Comments

In its 4-page submission, IPO first reminded the USPTO of its overarching view, expressed in the organization’s amicus brief to the U.S. Supreme Court in the Alice case. In sum, IPO stated that: (1) patent eligibility for computer-implemented inventions is vital to IPO members and the broader U.S. economy; (2) nearly every economic sector depends on computer-implemented innovations that improve products and services, increase productivity and efficiency, and strengthen competitiveness; (3) the patentability of new and useful technological advancements should not be constrained by overbroad subject matter rejections; and (4) the standard of patentability for computer-implemented inventions should not be higher than the standard applied to innovations in other technological fields.

In addition, IPO’s comments included the following main points:

  1. Prima Facie Case of Patent-Ineligible Subject Matter

IPO urges that the final instructions should require examiners to make a detailed prima facie showing that each part of the two-part test[4] has been met. Per IPO, examiners should be instructed to support any conclusions with reasoned logic rather than general statements parroting language from stock rejections. Similar to the detailed analysis required to prove prima facie obviousness, it is not enough for an examiner to merely assert that a claim recites an abstract idea and nothing “significantly more.” The USPTO training materials showing examples of improper rejections under section 103 are instructive. In the final instructions, the Office should provide some reliable “indicia of abstractness” to ensure uniform and comprehensive application of the two-part test.

IPO also argues that examiners should not automatically conclude that any business method or software-related claim is directed to an abstract idea. Alice did not create a per se excluded category of business methods or software, or impose any special requirements for eligibility of business methods or software. The final instructions should emphasize this point and provide examples of business method and software claims that are not directed to abstract ideas.

In respect to Part 2 of the two-part test, the question is not whether an abstract idea is “present,” but whether the claim is “directed to” an abstract idea. Part 2 should be amended accordingly.

In evaluating whether the claim amounts to “significantly more” than the abstract idea, examiners should again avoid conflating section 101 with sections 102 and 103. To this end, the final instructions should clearly explain what will qualify as significantly more. The final instructions should explain whether “significantly more” is the only criterion for establishing patent-eligibility of a claim directed to an abstract idea. Alice listed other criteria including:

an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application;

additional features’ to ensure ‘that the claim is more than a drafting effort designed to monopolize the abstract idea’;

application[s] of such concepts ‘to a new and useful end’… remain eligible for patent protection; and

distinguish[ing] between patents that claim the ‘building blocks’ of human ingenuity and those that integrate the building blocks into something more, thereby ‘transforming’ them into a patent-eligible invention.

Alice Corp. (emphasis added) (internal citations omitted).

The preliminary instructions correctly state that, in evaluating whether added limitations qualify as “significantly more,” the claims should be considered as a whole by considering all claim limitations, both individually and in combination.

The preliminary instructions provide three examples of limitations that would qualify as “significantly more”: (1) improvements to another technology or technical field; (2) improvements to the functioning of the computer itself; or (3) meaningful limitations beyond generally linking use of an abstract idea to a particular technological environment. The final instructions should ideally include even more examples of limitations that would qualify as “significantly more.” The final instructions should also require examiners to identify all claim limitations and articulate detailed reasons why they are not “improvements” under examples (1) or (2) or “meaningful” under example (3).

  1. Scope of Examination Under Preliminary Instructions

There is some concern that examiners may be using introductory statements in the preliminary instructions to support claim rejections under section 101. Examiners should avoid extending the scope of the preliminary instructions beyond the two-part test and the precise and narrow holding in Alice. In Alice, the Supreme Court stated, “the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea…using some unspecified, generic computer.” [Citation omitted.] This statement is repeated in the introductory section of the preliminary instructions. Examiners should not use this as a basis to reject every claim directed to an abstract idea that includes a generic (or conventional) computer, since the statement does not mean that a conventional computer is never significant to the claim as a whole.

  1. Miscellaneous Suggestions

The preliminary instructions should remind examiners to avoid focusing on issues of patent-eligibility under section 101 to the detriment of other patentability requirements. Examiners should also be instructed to review the disclosure as a whole and, where appropriate, proactively suggest language that would be acceptable to overcome subject matter rejections. The Office should implement the final instructions and provide adequate training and resources as soon as possible.


[1] The comments are purportedly available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the USPTO Internet Web site.

[2] AIPLA is a national bar association with approximately 15,000 members engaged in private and corporate practice, in government service, and in academia. AIPLA members represent a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, copyright and trademark law, as well as other fields of law affecting intellectual property.

[3] IPO is a trade association representing companies and individuals in all industries and fields of technology who own or are interested in intellectual property rights. IPO’s membership includes more than 200 companies and more than 12,000 individuals who are involved in the association either through their companies or through other classes of membership.

[4] “Part 1: Determine whether the claim is directed to an abstract idea.” “Part 2: If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.” USPTO memo of June 25, 2014 (emphasis in original).