2011

Copyright Interlude: What is the Public Domain?

Patent

The Eighth Circuit Court of Appeals is holding court in the Missouri Law School this week. One of the appeals being heard is a copyright case involving the 1939 Wizard of Oz movie (as well as Gone with the Wind and Tom & Jerry). The case is captioned, Warner Bros. Entertainment, et al. v. X One X Productions, et al., App. No. 10-1743. TBS (now owned by TimeWarner) claims title to the copyright to the Wizard of Oz movie. The defendant apparently obtained a set of publicity posters and other material from the movie that are in the public domain and that were distributed prior to the movie being copyrighted. The public domain materials included images of Judy Garland playing Dorothy Gale, Jack Haley as the Tin Woodsman, etc. Using those public domain materials as a base, the defendant began manufacturing and selling t-shirts and trinkets showing the likeness of the well-known characters. To be clear, at least for the t-shirts, the defendant only used images cropped from the public domain materials. As the accused products below show, the defendant also included well known phrases from the movie such as “there’s no place like home.”

Warner (WB) sued the defendants alleging copyright infringement as well as liability under the Lanham Act. On summary judgment, the Missouri-based district court agreed that the defendant had not copied any images from the films, but still held that the defendant was liable for infringing the film copyrights. In particular, the lower court held that WB held copyright to the Wizard of Oz characters as portrayed in the movie:

i.e., Judy Garland as Dorothy Gale, Ray Bolger as Scarecrow, Jack Haley as Tin Man…. Each character has widely identifiable traits and is especially distinctive. Each has been extensively developed through the films. Be it Dorothy’s inherent wisdom coupled with her Midwestern farm girl innocence, … or the apparent inconsistencies of Scarecrow, (without a brain vs. wisdom and leader), Tin Man (without a heart vs. compassion and tenderness) and Cowardly Lion, (without courage vs. bravery and chivalrousness), they are especially distinctive.

Ironically (and without comment from the district court), the particular identifiable traits of the characters identified here (apart from the portraying actors) were all derived directly from L. Frank Baum’s 1900 Wonderful Wizard of Oz novel that is now out of copyright.

In focusing on the public domain materials, the district court indicated that merely copying the public domain material likely would not have created any copyright liability. Here, however, the defendant did not merely copy the posters. Rather,

they pluck from these pages images of Plaintiffs’ copyrighted characters such that Defendants’ images are no longer innocently copied publicity ads, but are indeed the characters themselves, to be embossed onto any number of trinkets, clothing and other collectibles. . . Notwithstanding Defendants have copied only the publicity materials, such actions violate the component parts of Plaintiffs’ copyrights in the films.

Based on the finding of copyright infringement, the district court issued a permanent injunction that prohibits the defendants from

using for commercial gain images from the film The Wizard of Oz as well as images of Judy Garland as Dorothy Gale, Ray Bolger as Scarecrow, Jack Haley as Tin Man, and Burt Lahr as Cowardly Lion [except] that Defendants are [may use] reproductions of public domain movie publicity materials, in their entirety and without alteration or modification.

On appeal, the defendants have argued that they should be able to use particular images of the Wizard of Oz characters so long as they are taken from the public domain materials.

Documents:

Wizard-of-oz-poster

Teresa Stanek Rea Takes Post as Patent Office Deputy Director

Patent

US Patent Office Director David Kappos has announced his new Deputy Director: longtime intellectual property law professional Teresa Stanek Rea. Ms. Rea is currently a partner at Crowell & Moring and was president of the AIPLA from 2008-2009 and was previously with Burns Doane. Ms. Rea replaces Sharon Barner who stepped-down this January after a short, but effective tenure.

Ms. Rea graduated from Wayne State Law School in 1980 and has been practicing patent law for over 25 years. Before that, she practiced as a pharmacist. Her technology focus has primarily been biotechnology. Her leadership in that area will be a welcome addition to the USPTO management team. In her role as AIPLA director, Ms. Rea has been involved in many of the recent major patent cases, including Tafas v. Kappos, Ariad v. Eli Lilly, Prometheus v. Mayo, and Cardiac v. St. Jude.

Joff Wild who edits the wonderful magazine IAM reported last week that Michelle Lee (Google’s IP Chief) and Shanna Winters (Congressional Counsel) were also under consideration for the post.

 

Patently-O Bits & Bytes

Patent

By Lawrence Higgins

Upcoming Events:

  • Judge Timothy Dyk will give a lecture on the commercial impact of complexity and confusion in patent law at the Lewis and Clark law school on March 1. [Link]
  • Berkeley Center for Law and Technology is hosting an event entitled “Beyond Piracy in the New China” on March 10. [Link]
  • 13th Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy will be held in Akron on March 21. Guest Speakers include Donald Chisum, Judge Paul Michel, and Marybeth Peters. [Link]
  • The University of Dayton School of Law will be hosting a symposium entitled “Killing the Golden Goose: How Today’s Innovations in the Patent System are Harming Innovation Itself“. The guest speaker is Professor F. Scott Kief. [Link]

USPTO Unveils Details of Fast-Track Patent Option

  • USPTO plans to offer accelerated patent examinations for an extra $4,000 fee. Under this option, applications would be processed within a year of filing. Currently it takes the USPTO roughly 2 years to initiate its first office action. [Link]

Supreme Court will hear Global-Tech Appliance v. SEB S.A.

  • On February 23rd the Supreme Court will hear oral arguments in Global-Tech Appliances v. SEB S.A. [Link] The question presented is, whether the legal standard for the state of mind element of a claim for actively inducing infringement under 35 U.S.C. § 271(b) is “deliberate indifference of a known risk” that an infringement may occur, or “purposeful, culpable expression and conduct” to encourage an infringement. [Link]

AT&T, Sprint, T-Mobile, Verizon, and MetroPCS has been sued by Sourceprose

  • Sourceprose has filed suit in the Western District of Texas alleging that the above companies infringed on patent #’s 7,142,217 and 7,161,604. The complaint contends that the defendant’s infringed on claim 1 of both patents. The technology is a mapping technology used in smartphones.

Google ask USPTO to reexamine 4 patents

  • In August 2010, Oracle sued Google for infringing seven of its Java patents. [Link]Google has asked the USPTO to reexamine 4 of the patents in suit. The patents are 5,966,702, 6,061,520, 6,125,447 & RE 38,104 – related to the Java platform. [Link] The alleged infringing technology is Google’s Android operating system for mobile phones.

Supreme Court will hear Microsoft v. i4i

  • On April 18th the Supreme Court will hear oral arguments in the important case of Microsoft v. i4i. [Link]The issue in the case is, whether Microsoft is required to prove invalidity of i4i’s patent by clear and convincing evidence. [Link]This case could change the way patent law is currently practiced, if the standard is changed from the clear and convincing evidence standard. [Link]

Patent Jobs:

  • HP is seeking an attorney with 1-10 years experience in patent prosecution. [Link]
  • Infinity Pharmaceuticals is searching for a patent agent with 2-5 years experience in the pharmaceutical field to work at their Cambridge location. [Link]
  • Amneal Pharmaceuticals is seeking a Director of Global Intellectual Property to work at their New Jersey location. [Link]
  • Wenderoth, Lind & Ponack is seeking an entry-level patent attorney with a BSEE. [Link]

Federal Circuit Dispositions, Part II

Patent

By Jason Rantanen

As discussed yesterday, the Federal Circuit disposed of approximately 19% of the patent infringement appeals it adjudicated in FY 2010 via Rule 36 summary orders/affirmances.  Although this datum is interesting, it begs the question whether the CAFC's use of Rule 36 affirmances has changed over time.  To answer that question, I searched WESTLAW for the court's Rule 36 orders and manually reviewed the results.  As the following table shows, aside from a modest rise in 2006 and 2007, the CAFC's use of Rule 36 affirmances has remained relatively constant over the last twelve years – with one important exception.

CAFC Rule 36 Dispositions 1999-2011
That exception is FY 2011, which so far has exhibited a notable uptick in Rule 36 orders.  The blue bar for 2011 reflects only the Rule 36 affirmances issued through the first four and a half months of the fiscal year, which runs from October 1 to September 30.  If the current rate continues, the CAFC will issue over a hundred Rule 36 affirmances in patent infringement cases -  50% more than the next closest year (FY 2007).

The below chart presents the data in a slightly different way, comparing it to total patent infringement appeals and panel dispositions for the years in which I have data.  Data for FY 2011 reflects appeals docketed and terminated through January 28, 2011.  Note that the termination data for FY 2011 is slightly different from previous years (those years reflect panel adjudications, not all terminations).  As a result, the number of actual panel adjudications is likely somewhat lower. 

CAFC Appeals and Dispositions FY 2006-2011

Limitations of this analysis: Because the data was obtained through searches of WESTLAW, it's possible that the number of Rule 36 dispositions is under-inclusive.  I suspect, however, that the variation is not particularly large, as the CAFC's own charts indicate that for patent infringement cases there were 42 summary affirmances in 2010, 55 in 2009, and 36 in 2008, an average variation from my data for those years of about 7. (Data for prior years is not readily available).

Federal Circuit Dispositions, Part I

Patent

By Jason Rantanen

The Federal Circuit's statistics page contains an array of information on both patent and non-patent appeals.  One of the court's most interesting visuals is a pie chart showing dispositions of appeals in patent infringement cases.  Below is the chart for the year ending on September 30, 2010.  (Note that, as one commenter pointed out, this chart shows only appeals in patent infringement cases (i.e.: appeals from district court determinations), an observation that is consistent with the data available here).

Federal Circuit Patent Terminations FY 2010

As the court's graph illustrates, the vast majority of patent appeals result in some form of substantive opinion, in many cases a precedential one.  Although the CAFC uses Rule 36 summary affirmances at about the same frequency when disposing of both patent and non-patent cases, it issues precedential opinions far more often when patents are involved in the appeal as the below chart illustrates:

Fed Cir Merits Terminations Excluding Patents Data sources: "Caseload Analysis" and "Pie chart for merit and non-merit dispositions, in a 12-month period," available at http://www.cafc.uscourts.gov/the-court/statistics.html.

Tomorrow I will dig deeper into the Federal Circuit's use of Rule 36 summary affirmances in connection with patent appeals.

USPTO Hopeful for Budget Increases

Patent

President Obama released his proposed budget for 2012. The new Budget would allow the USPTO “full access to its fee collections” and for a “temporary” but major fee surcharge. The proposed budget would include a 1.4% increase in fees based on the Consumer Price Index (CPI) increase and a 15% surcharge on patent fees. The projected collections for FY2012 would jump to $2.71 billion ($2,700,000,000.00), a 16% increase of FY2011 and a 34% increase of FY2010 spending.

The 2010-2012 increase works out to a little over $100,000 extra per examiner. Examiners should not, however, expect raises.

The increased budget is intended to help cut “the average overall processing time of a patent application from 35 months to 20 months by 2015” by hiring 1,500 new patent examiners and to implement a “much-needed 21st century information technology (IT) system” for the USPTO. The proposed budget is far less than the $1 billion infusion suggested by former Chief Judge Paul Michel.

Open Invitation for February 25th Event in Columbia Missouri

Patent

Dear Colleagues –

I am writing to invite you to the Missouri Law Review’s upcoming symposium that will be held here in Columbia at the University of Missouri School of Law on Friday, February 25, 2011. The focus of the event will be on the Jurisprudence of the Court of Appeals for the Federal Circuit – with a special emphasis on the Court’s patent law jurisprudence. David Kappos (Director of the US Patent & Trademark Office) will deliver the Earl F. Nelson Lecture. We have a set of great speakers coming that include Mark Lemley (Stanford) and Peter Menell (Berkeley). Two Mizzou Law grads will be presenting – Jason Mudd (’05) who is now an attorney at Shook Hardy and Ryan Vacca (’04) who is now a law professor at Akron.

Speakers include Professors Lisa Dolak (Syracuse) and Elizabeth Winston (Catholic) who have both been closely involved with Federal Circuit activities for a number of years. Their articles tend to show the type of insight that only comes from that type of experience. Professor Lee Petherbridge (Loyola LA) is one of the new leaders in empirical analysis of the court system. Many Patently-O readers know Professor Chris Holman (UMKC) from his biotech patent law blog. After practicing law for a number of years, Holman moved to academia and has written extensively on the role of patents in the biotechnology industry. Professor Greg Vetter (Houston) concentrates more on software related law and the interrelation between open source software and patent rights.

We have been approved for CLE credit in Missouri and are working on approval for neighboring states. This is a free event, but we apparently need to know how many will be there for lunch & cocktails. If you are planning to attend, please register.

Let me know if you have questions. dcrouch@patentlyo.com.

Links: