IP Intelligence

IP Intelligence

Insight on Intellectual Property

Bikram Yoga in the Hot Seat As Ninth Circuit Affirms Yoga Sequence Not Copyrightable

yoga_iStock_000016864957SmallNo matter how graceful the flow or beautiful the poses may be, the Federal Appeals Court for the Ninth Circuit held that Bikram Choudhury’s sequence known as Bikram Yoga – 26 poses performed in the same order over 90 minutes at temperatures around 100°F – is not within the subject matter of copyright. The decision is consistent with the policy statement of the Copyright Office issued in June 2012, which we wrote about here, down to its holding that the sequence does not constitute choreography because the bodily movement is part of a process designed to improve health, and not a dance. Essentially, the sequence failed the idea/expression dichotomy test that is central to copyright law – the sequence is the idea, rather than the expression of that idea. Judge Wardlaw, writing the opinion for the panel, wrote: “[I]f it is entitled to protection at all, that protection is more properly sought through the patent process.”  Continue Reading

BakerHostetler’s Oren Warshavsky, a Law360’s Voices of the Bar for Intellectual Property, comments on “What Shall We Do About ‘Orphan Works’?”

WARSHAVSKY_Oren_CAM_1_2007On September 22, Law360 published an article positing the question, “What should be done to more fairly enable the use of orphan works?” after the ruling determining that Warner/Chappell Music, Inc. does not own a valid copyright on “Happy Birthday to You.” Oren Warshavsky, head of BakerHostetler’s national Copyright, Content, and Platforms team and one of Law360’s Voices on the Bar commented:

“Discussions concerning new paradigms for orphan works tend to focus on old works whose authors have long been forgotten. Examples abound of researchers in dusty archives stumbling upon rare photographs, which publishers then eschew due to risk of suit. Any solution to the orphan works dilemma has an obvious centerpiece: a compulsory license system. But an orphan work regime must also consider newer works and protect against works being opportunistically thrust into “orphanage.” The proliferation of new media has resulted in all copyright owners — from the largest publishers to individual artists — finding their work exploited without license or attribution. Before treating a work as an “orphan,” the new regime should require a diligent search — and eliminate the temptation to utilize unauthorized or uncredited uses of the copyrighted work as a predicate to labeling the work an “orphan” and subjecting its owner to a compulsory license. Diligence requirements vary by work; to balance competing concerns, diligence standards should be established by agreement among the government, rights holders and industry organizations. Once an unsuccessful, diligent search for the copyright owner is documented, a compulsory license to the orphan copyright should be made available.”

Read the full article on Law360.com (subscription required).

Ninth Circuit: “Holy Copyright Law, Batman!” The Batmobile Is Copyrightable

batmobile 1The Ninth Circuit Court of Appeals held that the Batmobile is a copyrightable character. The Ninth Circuit’s opinion explaining its ruling begins with the sentence “Holy copyright law, Batman!,” and goes on to quote Adam West and invoke other pop culture references.  “

Since 1939, Batman has been featured in numerous publications by DC Comics, as well as in feature films and television shows. Since 1941, many of the comic books, films, and other works featuring Batman also depict his vehicle, the Batmobile.

At issue in this case were the versions of the Batmobile from the Batman television show (featuring Adam West as Batman) and the Tim Burton movies, featuring Michael Keaton as Batman. Continue Reading

California Court Rules No Copyright Protection for “Happy Birthday to You”

Birthday Candles B&WThis week, in Rupa Marya, et al. v. Warner/Chappel Music, Inc., et al., No. CV 13-4460-GHK (C.D. Cal. Sept. 22, 2015), U.S. District Judge George H. King ruled that defendant Warner/Chappel Music has no enforceable copyright for the ubiquitous song “Happy Birthday to You.” The ruling resolves cross motions for summary judgment filed in November 2014 by Warner and by the representative plaintiffs in this class action suit, challenging Warner’s assertion of copyright of the song and seeking recoupment of millions of dollars of licensing fees collected by Warner over the years. It was Warner’s demand that plaintiff Good Morning to You Productions, which planned to make a documentary about the song, pay a $1,500 license fee as a condition for incorporating “Happy Birthday” into its production that was the catalyst for this litigation. Continue Reading

The DMCA Through the ‘Lenz’ of Fair Use: The Ninth Circuit Finds Fair Use Analysis Required Before Sending a DMCA Takedown Notice

copyright ThinkstockPhotos-493835891Yesterday the Ninth Circuit issued an opinion in the heavily followed “dancing baby case,” holding that copyright owners must consider an alleged infringer’s defense of fair use before sending a notice under the Digital Millennium Copyright Act (“DMCA”). Moreover, a copyright owner that fails to conduct a fair use analysis prior to sending a DMCA notice could be subject to a damages claim.

The facts of the case originate in 2007, when Stephanie Lenz posted a video to YouTube entitled “Let’s Go Crazy #1,” a 29-second video of a baby dancing to Prince and the Revolution’s 1984 hit song “Let’s Go Crazy.” Universal Music Corp. and related entities (“Universal”), which controlled the Prince song, evaluated whether the song “was recognizable, was in a significant portion of the video or was the general focus of the video” according to its enforcement guidelines. After considering (i) that the music played loudly in the background, (ii) the music played throughout the entire video, (iii) the song name was the title of the video, and (iv) the song was discussed during the video (the mother asks her dancing son: “What do you think of the music?”), Universal issued a takedown notification to YouTube.

Lenz received a letter from YouTube explaining that “Let’s Go Crazy #1” was taken down from YouTube. In response, Lenz issued a DMCA counter-notification and eventually succeeded in restoring “Let’s Go Crazy #1” to YouTube. Lenz also sued Universal on the basis that Universal misrepresented that it had a good faith belief that the video infringed Prince’s song. The video is available on YouTube, here. Lenz’s claims were winnowed to one cause of action under the DMCA Section 512(f), which imposes liability where a copyright owner “knowingly materially misrepresents … that material or activity is infringing.”

Continue Reading

USPTO Pilot Program: Trademark Registrations May Now Be Broadened To Account For Evolving Technology

Laptop, mobile phone and digital tablet pc. 3dTrademark Office rules generally prohibit the broadening of goods and services identified in existing trademark registrations. But on September 1, the USPTO announced a new pilot program that will create a limited exception to this rule. Beginning September 1, trademark owners may now petition to broaden their registrations’ identified goods and services where such changes are the result of transitioning from “old” to “new” technology. The Technology Evolution Pilot Program could affect brand owners whose offerings are now provided in a different form or medium than when their trademark registrations first issued.

In the United States, trademark owners must routinely submit declarations of continuing use as to the goods and services identified in their trademark registrations. In cases where none of the goods and services is offered exactly as described in the registration, the trademark owner has historically been forced to abandon the registration, with the possibility of filing a new application to cover any updated or replacement goods and services. Now, in cases where the change in goods and services is simply the result of changing technology, the pilot program offers the possibility of maintaining the existing registration. This will allow trademark owners to extend the protections afforded by their existing registrations while possibly enjoying meaningful cost savings.  Continue Reading

Attorney Fees for Post-Grant Patent Challenge Proceedings Before the USPTO May Be Recoverable in Exceptional Cases Under 35 U.S.C. § 285

Patent147631712Parties accused of patent infringement are turning more and more to post-grant challenge proceedings at the United States Patent and Trademark Office (“USPTO”) as a faster and cheaper means for invalidating the asserted claims. A recent federal district court order indicates that the fees and costs associated with such proceedings may be recoverable if the underlying infringement suit is declared “exceptional” under 35 U.S.C. § 285.

On August 19, 2015, the United States District Court of the Southern District of California awarded defendant Southwest Airlines Co. nearly $400,000 in attorney fees and costs related to an inter partes reexamination of U.S. Patent No. 6,738,770 (the “’770 patent”). Order Granting Def’ts Application for Fees and Costs, Deep Sky Software, Inc. v. Southwest Airlines Co., Case No. 10-cv-1234-CAB, Dkt. No. 49 (S.D. Cal. Aug. 19, 2015). Southwest was sued for infringement of the ’770 patent in June 2010 by patent owner Deep Sky. Southwest filed a request for inter partes reexamination in April 2011, and the parties jointly moved for a stay pending the outcome of the reexamination, to which the court agreed. The reexamination concluded in December 2014, with all of the asserted claims of the ’770 patent found invalid by the Patent Trial and Appeal Board. Continue Reading

Favoring a Holistic Approach, the Federal Circuit Overturns TTAB Decision to Refuse Paw Print Logo

Last week, the United States Court of Appeals for the Federal Circuit reviewed a TTAB decision that had refused outdoor apparel company Jack Wolfskin’s application to register its paw print logo. Jack Wolfskin Ausrustung fur Draussen GmBH & Co. KGaA v. New Millennium Sports SLU, 14-1789 (Fed. Cir. August 19, 2015). New Millennium Sports SLU (“New Millennium”), the company that owns sportswear label Kelme, had opposed the mark stating there was a likelihood of confusion with its registered mark that also employed a paw print. The two marks are compared side by side, below. Continue Reading

USPTO Updates Guidance on Subject Matter Eligibility

Patent147631712[For background, see our prior posts on July 2, 2014, August 5, 2014, December 18, 2014, and March 23, 2015.]

On July 30, 2015, the United States Patent & Trademark Office (USPTO) published an update to its 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG) published on December 16, 2014.[1] Comments to the 2014 IEG were solicited from the public, and the update purports to respond to six major themes from the public comments, including

  • requests for additional examples, particularly for claims directed to abstract ideas and laws of nature;
  • further explanation of the markedly different characteristics (MDC) analysis;
  • further information regarding how examiners identify abstract ideas;
  • discussion of the prima facie case and the role of evidence with respect to eligibility rejections;
  • information regarding application of the 2014 IEG in the examiner corps; and
  • explanation of the role of preemption in the eligibility analysis, including a discussion of the streamlined analysis.

The Quick Reference Sheet summarizes the Office’s views on the prima facie case requirement, and the requirements for identifying abstract ideas in Step 2A of the Alice analysis. Continue Reading

The Supreme Court Again Rejects Post-Expiration Patent Royalties

Patent147631712Authored by: Samuel McMahon, 2015 Summer Associate

In Kimble v. Marvel Entertainment, LLC, No. 13-720 (U.S. June 22, 2015), the Supreme Court, in a 6-3 decision with Justice Kagan writing for the majority, upheld its 1964 decision in Brulotte v. Thys, 379 U.S. 29, reaffirming that a patent owner cannot charge royalties for use of the patent after the patent term expires.

Stephen Kimble patented a device that allows the user to shoot pressurized foam string from the palm of the hand, like Spider-Man shooting web. He pitched his idea to Marvel, and the company’s representatives apparently liked it but nonetheless declined to engage Kimble in a licensing agreement. Kimble sued for patent infringement when Marvel began manufacturing and selling its own “Web Blaster” toy. Pursuant to a settlement agreement, Marvel purchased the patent for a lump sum and agreed to pay Kimble a 3 percent royalty on future sales. The parties did not negotiate an end date for the royalty payments, but before the patent term expired, Marvel asked for and received from federal district court in Arizona a declaratory judgment that it could avoid the royalty payments upon expiration of the patent. Relying on Brulotte, the district court held that the agreement to pay royalties was unenforceable after expiration of the patent term. The Ninth Circuit affirmed, and Kimble appealed. Continue Reading