IP Intelligence | Intellectual Property Lawyers

Patent Watch: Dey, L.P. v. Sunovion Pharms., Inc.

By Dr. Lawrence M. Sung on May 21, 2013 Posted in Uncategorized

“[A]n agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a ‘public use’ where there is not commercial exploitation” [even] when an unaffiliated third party is responsible for the allegedly public use.

On May 20, 2013, in Dey, L.P. v. Sunovion Pharms., Inc., the U.S. Court of Appeals for the Federal Circuit (Newman, Bryson,* O’Malley) reversed and remanded the district court’s summary judgment that U.S. Patents No. 7,348,362, No. 7,462,645, No. 7,465,756, No. 7,473,710 and No. 7,541,385, which related to the treatment of chronic obstructive pulmonary disease (COPD) by storing the compound formoterol in an aqueous solution and administering it through a nebulizer, were invalid under the public use bar of 35 U.S.C. § 102(b). The Federal Circuit stated:

An applicant may not receive a patent for an invention that was “in public use . . . in this country, more than one year prior to the date of the application for patent in the United States.” To decide whether a prior use constitutes an invalidating “public use,” we ask “whether the purported use: (1) was accessible to the public; or (2) was commercially exploited.” [T]he policies underlying the public use bar inform its scope and that one such policy is “discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available.” [The] factors that may be helpful in analyzing the question of public use, include[e] “‘the nature of the activity that occurred in public; the public access to and knowledge of the public use; [and] whether there was any confidentiality obligation imposed on persons who observed the use.’” [A] public use may occur when “a completed invention is used in public, without restriction.” Such formulations are designed to capture the commonsense notion that whether an invention is “accessible to the public” or “reasonably . . . believe[d] [to be] freely available” depends, at least in part, on the degree of confidentiality surrounding its use: “[A]n agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a ‘public use’ where there is not commercial exploitation.”

The same is true when an unaffiliated third party is responsible for the allegedly public use. Although prior uses are often carried out by or at the direction of the inventor-patentee, we have held that “third party prior use accessible to the public is a section 102(b) bar.” But even in the case of third-party uses, being “accessible to the public” still requires public availability; secret or confidential third-party uses do not invalidate later-filed patents. For that reason, we have applied section 102(b) to invalidate a patent based on third-party use when the third party “made no attempt to maintain confidentiality or to deliberately evade disclosure,” made no “discernible effort to maintain the [invention] as confidential,” or “made no efforts to conceal the device or keep anything about it secret.”

The degree of confidentiality necessary to avoid a finding of public use naturally depends on the circumstances. For example, if there is no confidentiality agreement in place, the skill and knowledge of those observing an invention can shed light on the degree to which it was kept confidential. Even limited disclosure to those who are skilled enough to know, understand, and “easily demonstrate the invention to others,” may mean that there was no reasonable expectation of secrecy and that the invention was therefore in public use. By contrast, when disclosure is limited to a small number of uninformed observers there may be no reason to believe “that a viewer . . . could thereby learn anything of [the later-patented invention]” and disclose the invention to others. In such cases, a finder of fact might reasonably conclude that the third party’s use remained confidential and that the invention was not “accessible to the public.” . . .

The district court held that Sunovion was entitled to summary judgment of invalidity because Sunovion’s own clinical trial constituted clear and convincing evidence of a third-party public use of Dey’s inventions. We disagree. Important issues of fact remain in dispute, principally whether sufficient precautions were taken to exclude members of the public from obtaining information about the potentially invalidating prior art (i.e., Batch 3501A).On the record of this case, we do not agree with the district court that no reasonable jury could return a verdict for Dey. . . . This case does not involve undisputed evidence of a complete lack of confidentiality protections . . . . And the fact that no formal obligation of secrecy was imposed on the study subjects does not automatically transform Sunovion’s clinical trial into a public use. We have never required a formal confidentiality agreement to show non-public use; in the absence of such an agreement, we simply ask whether there were “circumstances creating a similar expectation of secrecy.” The “public use” inquiry is replete with factual considerations, such as the (disputed) extent to which study participants were informed of and able to disclose the pertinent details of the claimed prior art. Because a finder of fact could conclude that the study was conducted with a reasonable expectation of confidentiality as to the nature of the formulations being tested, summary judgment on the public use issue was inappropriate. . . .

The district court’s decision was also premised on several misconceptions about the reach of section 102(b). First, the court found it significant that the patent holder, Dey, did not control Sunovion’s clinical studies and that study participants did not owe any obligation of confidentiality to Dey. [W]e measure the adequacy of the confidentiality guarantees by looking to the party in control of the allegedly invalidating prior use. In third-party use cases, that is the third party. . . . Because a secret third-party use is not invalidating, our task is to assess whether the third party’s use was sufficiently “public” to impose the section 102 bar. That Sunovion’s trial subjects owed no duty of confidentiality to Dey is, of course, true, but it does not bear on that question. . . .

During experimentation, the public might have knowledge of an invention (because they see it), but may not be using the invention within the meaning of the statute (because the inventor is experimenting). . . . Put another way, although Sunovion is correct that we do not ask for an “‘enablement-type inquiry’” under section 102(b), a court still must decide whether the “claimed features of the patents [were placed] in the public’s possession.” And here, a reasonable jury could conclude that if members of the public are not informed of, and cannot readily discern, the claimed features of the invention in the allegedly invalidating prior art, the public has not been put in possession of those features. . . .

If you have questions about the material presented above, please contact Dr. Lawrence M. Sung (lsung@bakerlaw.com or 202.861.1537) or any member of our Intellectual Property Team.

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Cars Lawsuit Runs Out of Gas

By Elizabeth Stamoulis on May 9, 2013 Posted in Uncategorized

The United States Supreme Court recently brought final resolution to Mandeville-Anthony v. Walt Disney Co., a dispute over the ownership of Disney and Pixar’s animated movies “Cars” and “Cars 2,” and the spin-off television series “Cars Toon.” The plaintiff originally filed the case in 2011 in the Central District of California alleging two claims. First, Mandeville-Anthony claimed that the movies infringed his copyrights in his works “Cookie & Co.” and “Cars/Auto-Excess/Cars Chaos,” which, like Disney/Pixar’s Cars franchise, featured anthropomorphic cars without human characters. Plaintiff specifically alleged that Disney’s “Mater” character, below left, infringed his “Manny Morris” character, below right.

Second, the plaintiff sued for breach of implied contract based on his claim that that Disney stole the idea from works that he had submitted to Disney and Pixar employees. Mandeville-Anthony alleged that he had mailed his works, unsolicited, to various production companies and movie studios, including Walt Disney, and also that he had met and personally delivered his proposals to Jim Morris, then an executive at Lucasfilm, who later joined Pixar.

In a brief, one-page decision, the district court granted the defendants’ motion for judgment on the pleadings. The court dismissed the copyright infringement claim because it found that the works were not substantially similar as a matter of law. The court also dismissed the breach of implied contract claim, holding that the two-year statute of limitations began running on the date the defendants first began to use the plaintiff’s idea without compensation, and therefore had expired.

On appeal, the Ninth Circuit affirmed without oral argument. In an unpublished opinion, the Ninth Circuit held that there “was no substantial similarity between the works as a matter of law, and any similarity in the general concepts of car racing and anthropomorphic cars is unprotected.” It also affirmed the district court’s ruling that the breach of implied contract claim was barred by the statute of limitations, holding that no exceptions were applicable.

On April 29, the Supreme Court denied Mandeville-Anthony’s petition for certiorari in the case without comment, marking the end of the road for Mandeville-Anthony’s claims.

Potential Bad News for UGC Music Sites: Pre-1972 Tracks May Not Be Covered By the DMCA’s Safe Harbor

By Fernando A. Bohorquez, Jr. on May 6, 2013 Posted in Uncategorized

Co-authored by: Julian Darwall

When you think of “Peggy Sue” by Buddy Holly, “Johnny B. Goode” by Chuck Berry, and “My Girl” by the Temptations, you think classic, iconic, rock and roll. Now, in light of the most recent legal setback against music sharing website Grooveshark, these songs may also represent a potentially significant limitation by the drafters of the Digital Millennium Copyright Act’s (DMCA) Online Copyright Safe Harbor provision – providers, including user-generated content (UGC) websites, may not have safe harbor protection for pre-1972 sound recordings.

Grooveshark is a music sharing website that allows users to upload music files and stream music content uploaded by other users. Universal Music Group (UMG) owns the rights to many recordings shared on Grooveshark, including pre-1972 recordings like Peggy Sue, Johnny B. Goode, and My Girl. UMG sued Grooveshark in New York state court for copyright infringement based on its users’ uploads and music streaming. In pressing its case, UMG argued that the DMCA’s safe harbor provisions did not apply to the pre-1972 sound recordings shared on Grooveshark’s website. Last July, the New York state court rejected UMG’s argument relying heavily on the New York federal court decision Capitol v. MP3Tunes, which held that the safe harbor applied to both pre- and post-1972 recordings. UMG appealed, and last week a New York appellate state court overturned the lower court’s decision,based on precisely the opposite reading of the DMCA from the lower state court and MP3Tunes interpretation.

For the uninitiated, the DMCA is a 1998 law that provides a “safe harbor” to UGC websites from online copyright infringement liability caused by their users. In a nutshell, a UGC website can claim the benefit of the DMCA’s safe harbor so long as it (1) has reasonably implemented a copyright offender policy which includes a registered agent with the copyright office to address copyright complaints and (2) does not have knowledge of the infringing material posted by its users (or is not aware of facts from which infringing activity is apparent) or after obtaining such knowledge or awareness, the UGC website expeditiously removes the infringing content, e.g., in response to a “takedown notice” sent by a copyright holder to the UGC’s designated DMCA notice agent. The DMCA Safe Harbor paved the way for the explosion of UGC websites over the last 15 years. No DMCA Safe Harbor, no UGC websites. And certainly no Grooveshark. Although Grooveshark takes certain measures to protect against infringement (like entering into license agreements with some music recording owners and licensees of music recordings), Grooveshark’s business model hinges on the presumption that it is shielded from copyright liability by the DMCA for all the music content shared on its site.

UMG challenged Grooveshark’s presumption, specifically arguing that the DMCA does not provide “safe harbor” for sound recordings before 1972 because these recordings are governed by state law and not U.S. copyright law or the DMCA. The New York state appellate court agreed, concluding that the plain language of section 301(c) of the Copyright Act states that no “rights or remedies” under common law copyright shall be “annulled or limited” and applying the DMCA’s safe harbor provisions to pre-1972 recordings would do just that, i.e., prevent UMG from immediately suing Grooveshark for New York state common law copyright infringement and restricting UMG’s initial remedy to a takedown notice. The court noted that if Congress intended to modify section 301(c) when it enacted the DMCA, then it easily could have said so and it did not.

So what does all this mean for UGC websites? First, the law on whether the DMCA safe harbor applies to pre-1972 sounds recordings is conflicted. The MP3Tunes case – which the lower New York state court had relied on – explicitly rejected the logic endorsed by the New York state appellate court on Section 301(c) and the DMCA. MP3Tunes held that such an “interpretation of 301(c) would eviscerate the purpose of the DMCA . . . the DMCA was enacted to clarify copyright law for internet service providers in order to foster fast and robust development of the internet. Limiting the DMCA to recordings after 1972, while excluding recordings before 1972, would spawn legal uncertainty and subject otherwise innocent internet services providers to liability for the acts of third parties.” Moreover, the Ninth Circuit Court of Appeals held in Perfect 10 v. ccBill that all state intellectual property claims against UGC websites were preempted by federal law under Section 230 of the 1996 Communications Decency Act. Both cases stand in sharp contrast to the New York state appellate court’s Grooveshark decision.

Second, if the ruling sticks, it presents an intractable and potentially insurmountable problem for music sharing sites like Grooveshark. In order to screen for pre-1972 sound recordings Grooveshark would have to pre-screen all files to make sure it has segregated the pre-1972 files into one bucket and the post-1972 files into another. As many commentators have already noted, how Grooveshark is supposed to do that is unclear. And how it could do so without spending an enormous amount of time and money is an even more difficult question. Pre-screening all UGC content also raises the possible risk that Grooveshark would fall out of the DMCA safe harbor for post-1972 infringing files that it fails to catch by not acting expeditiously to remove or disable access to that material.

Unsurprisingly, Grooveshark has indicated that it will appeal the decision and lobby on the Hill to address the apparent drafting flaw in the DMCA. Stay tuned.

Texas Court Allows Defamation Claim Against Landowner to Proceed

By Maryanne Stanganelli on April 29, 2013 Posted in Uncategorized

Last Monday, Texas’s Second District Court of Appeals partially affirmed a District Court order allowing Range Resources Corporation’s defamation and business disparagement claims against a landowner to proceed. This is the latest development in a case that gained notoriety when a video purporting to show water from the landowners’ well ignite went viral. See full blog post by Cassie J. Dallas on the North America Shale Blog, here.

Appropriation Art Alive and Well after Second Circuit Ruling in Cariou v. Prince

By Maryanne Stanganelli on April 25, 2013 Posted in Uncategorized

Today, the Second Circuit handed down its much anticipated decision in Cariou v. Prince regarding the legality of appropriation art by artist Richard Prince.

Just over two years ago, in federal district court in New York, Judge Batts ordered that paintings by Richard Prince be destroyed. She did so on the basis that the art, which consisted of images from Patrick Cariou’s Yes Rasta book along with Prince’s own painting over the figures face (or “lozenges”) and other alterations, was not covered by the fair use defense to copyright infringement under 17 U.S.C. §107. She reasoned that these paintings, from Prince’s series Canal Zone, could not be transformative because they did not comment on the original work, the original artist or aspects of popular culture closely associated with the two. The ruling sent the contemporary art world into an uproar, and there was concern over the chilling effect the decision had on artist’s creativity.

Left, two photos from Yes Rasta. Right, Richard Prince, James Brown Disco Ball, both referred in the decision at p. 6.

Prince’s paintings range from ones with slight alteration where most of Cariou’s photograph is recognizable, to others like the example above where the photos are nearly completely obscured. In its appeal to the Second Circuit, Prince argued that Cariou’s photographs conveyed “the natural beauty of the Rastafarians’ tropical home,” whereas Prince “crudely collages the images together with torn edges and marks of transparent tape, critiquing the naïve vision of that beauty.” And, further, that critics of Prince’s work have seen it as presenting “a post-apocalyptic world in which music, sex and drugs are culture’s surviving artifacts” in contrast to Cariou’s “romantic and reverential” photos.

Transformative Use Need Not Be Limited to Critique

The major question for the Second Circuit, then, was whether it was necessary to comment on an original work or popular culture in order to be transformative. Some works will—and the decision made reference to the seminal Supreme Court case on fair use Campbell v Acuff Rose Music and 2 Live Crew’s parody of Roy Orbison’s “Oh, Pretty Woman” as an example of fair use clearly intended to parody the original work. However, the Court acknowledged this is not necessarily so. The standard has always been that “a new work generally must alter the original with ‘new expression, meaning, or message.’” (quoting Campbell v Acuff Rose Music). The court also referred to its 2006 decision, Blanch v. Koons, in support of the standard. In that case, the Second Circuit affirmed a finding of fair use for a collage painting by appropriation artist Jeff Koons that copied and altered part of a photograph. With that standard in mind, the Second Circuit found that in all but five of the thirty pieces of artwork, Prince’s artwork “manifest[s] an entirely different aesthetic from Cariou’s photographs.”

Five Paintings Remanded To District Court

Left, Patrick Cariou’s photograph from Yes Rasta. Right, Richard Prince’s Graduation, referred in the decision at p. 7.

While ruling that fair use is not circumscribed to specific criticism, the Second Circuit was careful not to state that any alteration of a photograph would result in the requisite ‘something new.’ It also stopped short of finding fair use in all of Prince’s works. The above, Prince’s Graduation, is one of the five remaining works that is now still in question. The court acknowledged that Graduation creates a sense of discomfort in the viewer that does not occur in the original photo, but it could not say whether it constitutes fair use. The Court remanded the decision on whether these works are transformative back to the district court. To the extent that Larry Gagosian and the Gagosian Gallery, which had exhibited the works, are liable for contributory or vicarious infringement in connection with the five remaining works, that would also be decided by the district court.

Dissent Questions Court’s Authority to Judge Art

Another interesting aspect of the decision is the concurrence in part and dissent in part by Judge Wallace. He takes issue with the entire exercise by the appellate court in parsing out which photographs convey something new and which do not. He also sees no reason to disregard Prince’s own statements regarding the works in reviewing fair use. The Court had rejected Cariou’s argument that the fact that Prince had testified that he didn’t care about Cariou’s intent and had no real message was damming to his case.

As far as determining fair use in these specific circumstances, Judge Wallace sees this as the role of the district court, where perhaps new evidence or expert opinions would now be necessary based on the Court’s finding on the applicable standard. He writes: “[i]f the district court is in the best position to determine fair use as to some paintings, why is the same not true as to all paintings? Certainly we are not merely to use our personal art views to make the new legal application to the facts of this case.”

Final thoughts

Whatever your opinion about how far fair use should go in this circumstance, it is an interesting point that the Second Circuit felt comfortable assessing the transformative nature of some, but not others, of Prince’s works. As to those remaining, we will have to wait and see how the district court decides. If those are found to be infringing, there will remain some gray area as to degree of appropriation allowed under the law where there artist leaves much of the appropriated work intact. Nonetheless, the decision makes clear that reports of the demise of appropriation art were greatly exaggerated.

Federal Judge Orders Service of Process through Facebook

By Alan Pate on April 4, 2013 Posted in Uncategorized

In March, Judge Paul Engelmayer of the Southern District of New York ordered service of process on several international defendants through novel means—Facebook.

The case, FTC v. PCCare247, Inc., involves a group of individuals based in India who allegedly “tricked American consumers into spending money to fix non-existent problems with their computers.” After problems with more conventional methods of international service, the court exercised its authority under the federal rules to fashion its own means of service. As Judge Engelmayer’s order explains, Fed. R. Civ. P. 4(f)(3) allows a judge to order a means of service of process so long as it is “(1) not prohibited by international agreement; and (2) comports with constitutional notions of due process.” In this case, service by Facebook was not specifically prohibited by relevant international agreement, including the Hague Service Convention, to which India and the United States are signatories. Further, the circumstances in which the Facebook accounts would be served ensured service was constitutionally proper.

In particular, the order ensured due process by using a two pronged approach: email as the primary method of service and service through a Facebook message (similar to email but within Facebook) only as a secondary method. The order took care to point out that service on a known email address has been held to, and would here, satisfy constitutional norms of due process. Email therefore served as a constitutional “backstop” should service by Facebook fail. Additionally, Judge Engelmayer’s order explained, several circumstances about these particular Facebook accounts ensured service was “reasonably calculated” to afford the defendants notice. For instance, the emails under which the Facebook accounts were registered had been previously identified as addresses allegedly involved with the scam. Other relevant facts? The defendants were all friends with each other on Facebook, and two of the defendants had actually listed in their Facebook profiles job titles at the defendant companies.

While the order may at first seem unusual, Facebook messaging worked here in large part due to its strong similarity to email. Furthermore, several circumstances made these Facebook accounts particularly likely to belong to the correct defendants. On the one hand, service via Facebook may be a reflection of the law catching-up with how people communicate. On the other hand, it perhaps opens the door to the argument that other social networks should be utilized for service on hard to reach defendants. It is an interesting thought to ponder, though we may not see sepia-toned service on Instagram or service in 140 characters on Twitter anytime soon.

Federal Circuit Affirms Finding of Infringement in SynQor v. Artesyn Techs.

By Dr. Lawrence M. Sung on March 25, 2013 Posted in Uncategorized

“This court also sees no reason why [the plaintiff's] decision not to argue pre-verdict willful infringement at trial should preclude the district court from finding willful infringement for post-verdict sales.”

On March 13, 2013, in SynQor, Inc. v. Artesyn Techs., Inc., the U.S. Court of Appeals for the Federal Circuit (Rader,* Lourie, Daniel) affirmed the district court’s summary judgment that the defendants infringed U.S. Patents No. 7,072,190, No. 7,272,021, No. 7,564,702, No. 7,558,083 and No. 7,269,034, which related to high-efficiency DC-DC power converter systems used to power circuitry in large computer systems and telecommunication and data communication equipment, and award of more than $95 million in lost profits damages. The Federal Circuit stated:

Liability for induced or contributory infringement under § 271(b) or (c) requires “knowledge that the induced acts constitute patent infringement.” This includes, in part, actual “knowledge of the existence of the patent that is infringed.” . . . The record contained sufficient evidence to support the jury’s conclusion that each Defendant had actual knowledge of the ’190 Patent when it issued.

SynQor did not present direct evidence that any Defendant possessed the ’190 Patent on the date it issued, nor did any Defendant admit it had actual knowledge of the ’190 Patent. Such direct evidence of knowledge is not required to support a finding of inducement. SynQor presented specific evidence for each Defendant that allowed the jury to infer actual pre-suit knowledge of the ’190 Patent. The district court recounted this evidence in detail and found it sufficient to support the jury’s verdict. Among other evidence, SynQor showed that each of the Defendants possessed SynQor datasheets or products marked with SynQor’s earlier patents, including U.S. Patent No. 5,999,417, to which the patents in suit claim priority. SynQor’s expert, Dr. Leeb, gave his opinion that “there was a significant effort by the Defendants in this case to cross/imitate SynQor’s products,” and that those efforts would have exposed Defendants to SynQor’s patents. Further, some Defendants admitted to monitoring SynQor’s patents and one was shown to have possessed the ’190 Patent prior to the time this suit was filed. After examining the record, this court concludes that it contains sufficient evidence from which a reasonable jury could infer that each Defendant had actual knowledge of the patents in suit during the relevant time period. Accordingly, this court affirms the denial of JMOL of noninfringement under § 271(b). . . .

“An award of damages by a jury is upheld on appellate review unless it is clearly not supported by evidence, grossly excessive, or based only on speculation and guesswork.” To establish entitlement to price erosion damages, SynQor had the “burden . . . to show that ‘but for’ infringement, it would have sold its product at higher prices.” A credible but-for analysis must account for the “effect of [a] higher price on demand for the product.” Further, because “a rational would-be infringer is likely to offer an acceptable noninfringing alternative, if available, to compete with the patent owner rather than leave the market altogether,” the analysis must consider the impact of such alternate technologies on the market as a whole.

Defendants argue the jury’s damages award is excessive because SynQor’s price erosion theory is unsupported by the evidence. To the contrary, the jury heard evidence that SynQor sold its bus converters for prices “in the 60s to as high as $110″ per unit when it first entered the market and made sales to Hewlett-Packard and Sun for $84 per unit in 2002. Additionally, SynQor sold about 18,500 converters to Cisco in 2010 at $70 and $81 per unit during a market shortage. [T]he jury reasonably could have concluded that testimony from some of Defendants’ witnesses indicated customers would not have switched to noninfringing alternatives in response to SynQor’s higher prices. Cisco’s representative admitted his company would have had to incur significant costs to redesign its end products to use any noninfringing power converter that was not a “drop-in replacement,” and that drop-in replacements did not exist as of August 2010. Similarly, a defense witness testified he was not aware of any customers that had actually switched from unregulated intermediate bus converters to any noninfringing alternative for the same application. Upon review of the entire record, this court detects sufficient evidence for the jury to have accepted Mr. Reed’s “but for” pricing. As such, both the lost-profits and reasonable royalty damages are supported by substantial evidence and not excessive or based only on speculation and guesswork. Accordingly, this court affirms the denial of Defendants’ motion for JMOL or a new trial. . . .

The court enhanced the damages award for Defendants’ post-verdict sales by 1.75 times, citing its authority to do so under 35 U.S.C. § 284. Defendants argue the award of enhanced damages was improper because the court did not expressly find willful infringement and because SynQor did not pursue a willfulness claim at trial. The district court found Defendants’ conduct “egregious[]” in continuing, and even increasing, sales in the face of an infringement verdict. The district court made the appropriate determination for an award of enhanced damages. The court’s enhancement of damages was squarely based on a recognition of Defendants’ willful infringement and the enhancement therefore was proper under § 284. This court also sees no reason why SynQor’s decision not to argue pre-verdict willful infringement at trial should preclude the district court from finding willful infringement for post-verdict sales. [T]he district court did not abuse its discretion by awarding enhanced damages for Defendants’ post-verdict infringement.

Know Your Remedy: ICANN’s New gTLD Objection Procedure and String Contention Auctions

By Alan Pate on March 11, 2013 Posted in Uncategorized

Last month we wrote about ICANN’s new gTLD objection procedure. Another aspect of the procedure is the possibility that disputing parties could be forced into an auction for the right to operate their applied-for gTLDs.

For Legal Rights, Limited Public Interest, and Community Objections, the result of winning an objection is relatively straightforward—the application is rejected. However, with String Confusion Objections, the result can be much different. Only if an objector already operates a gTLD (i.e., .com, .net, .edu, etc.) will the other applicant’s proposed gTLD be rejected. Otherwise, the result of winning String Confusion Objection is to drop BOTH applicants in to a “string contention set.”

What’s a string contention set? A string contention set is essentially ICANN’s process to sort out who gets identical or confusingly similar applied for gTLDs. Once applicants with similar or identical gTLDs are placed in a string contention set, either by a String Confusion Objection or through ICANN’s own review, there are essentially only four ways out: (1) withdrawal of an application, (2) “community priority evaluation,” (3) an agreement among the parties, or (4) a last-resort auction. These procedures are governed by Module 4 of ICANN’s Applicant Guidebook.

It’s not difficult to see how this procedure could escalate to auction quickly for many gTLD applicants. Unless an applicant withdraws, is a special “community based applicant”, or they reach a negotiated agreement among all the parties in their contention set, the only remaining option will be to hold an auction. The winner of this auction gets to keep his or her gTLD while the losers’ applications are rejected.

Thus, for many applicants filing a String Confusion Objection, the point is clear—winning a string contention objection might only be half the battle. In reality, it might just be setting up a second, perhaps very expensive fight for their proposed gTLD at auction.

Lastly, there is one other consideration all applicants/objectors should be aware of—the finality of ICANN’s gTLD Dispute Resolution Procedure. Unlike ICANN’s Uniform Dispute Resolution Procedure for domain name disputes (UDRP), with ICANN’s New gTLD Dispute Resolution Procedure, there is no built in right to appeal a gTLD objection determination to a court of law. There is however one important caveat: by filing a Legal Rights Objection with WIPO, applicants do not waive their ability to enforce their legal rights (such as trademark) in the courts.

Creative, But Perhaps Too Creative, Lawyering

By Lindsey Shoshany on March 6, 2013 Posted in Uncategorized

U.S. District Judge Rakoff ruled on whether copying legal filings amounts to copyright infringement. His verdict: it does not. Judge Rakoff granted summary judgment to defendants Lexis and Westlaw, dismissing plaintiffs’ allegation that reposting legal documents infringed plaintiffs’ copyrights. Though the Court’s Order does not state the basis for the ruling, the defendants argued that the republishing of federal court documents, which are publicly available, represented fair use of the material. For an earlier discussion of the matter’s initial filing, see Creative Lawyering.

Whether Judge Rakoff’s ruling represents the final word is yet to be seen, as the attorney class action plaintiffs previously made clear that they would appeal any unfavorable ruling to the Second Circuit. Nonetheless, Judge Rakoff’s opinion rings loud and clear. Speaking to plaintiffs last May, he commented “[y]ou are a brave soul to have made such a valiant stab at what I think is a creative, but perhaps too creative, attempt to glom the unregistered folks onto the much more colorable claims of the registered folks.” For more, see Order.

The case is White et al. v. West Publishing Corp. et al., case number 1:12-cv-01340, in the U.S. District Court for the Southern District of New York.

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