May 30, 2008

Yesterday, the USPTO announced that it will be holding a town hall meeting on the protection of industrial designs on June 16, 2008, at USPTO headquarters in Alexandria, Virginia. According to the USPTO press release (link below), design patents can offer protection for the appearance, for example, of automobiles, noting that the automotive industry “invests millions of dollars creating unique and distinctive designs for motor vehicles.” The USPTO takes an objective view on this type of protection, noting that “[w]hile the automotive industry is interested in strong IP protection for their creative efforts, other industry and consumer groups argue that IP protection of automotive designs may be contrary to the public interest.” This particular meeting is open to the public, noting the “business community such as the auto industry and insurance companies, independent parts manufacturers, organizations representing business, consumer and other groups, patent attorneys, patent agents, and independent inventors or anyone else interested in the protection of industrial designs” in particular. This meeting follows an initial meeting held earlier this month at Ford Motor Company in Dearborn, Michigan, reported in the DDIP article linked below.

USPTO Announcement: LINK
May 5 DDIP Article: LINK

May 28, 2008

As you may know, in March of 2007, Viacom, Comedy Partners, and other plaintiffs filed a $1B copyright infringement lawsuit against YouTube and Google. In a recently filed “DEFENDANTS’ ANSWER TO FIRST AMENDED COMPLAINT AND DEMAND FOR JURY TRIAL,” YouTube not only responded paragraph by paragraph to the amended complaint, but also included a number of statements which have become widely reported.

The original lawsuit contains a challenge to the protections offered to YouTube under the Digital Millennium Copyright Act (“DMCA”) enacted a decade ago. In the Defendants’ answer, they state that the DMCA was enacted by Congress “to encourage the development of services like YouTube,” noting further that “Congress recognized that such services could not and would not exist if they faced liability for copyright infringement based on materials users uploaded to their services.” The answer continues with the following statement:

“Looking at the online world today, there is no question that Congress made the correct policy choice. Legitimate services like YouTube provide the world with free and authorized access to extraordinary libraries of information that would not be available without the DMCA -- information created by users who have every right to share it. YouTube fulfills Congress’s vision for the DMCA. YouTube also fulfills its end of the DMCA bargain, and indeed goes far beyond its legal obligations in assisting content owners to protect their works. By seeking to make carriers and hosting providers liable for internet communications, Viacom's complaint threatens the way hundreds of millions of people legitimately exchange information, news, entertainment, and political and artistic expression.”

In response to paragraph #39 of the first amended complaint, YouTube states in part that “Defendants admit that the Terms of Use contain certain content-based restrictions on the types of videos users may upload and store on the service, and that YouTube reserves the right to remove from the service material uploaded in violation of YouTube’s Terms of Use.” Furthermore, in response to paragraph #41, the answer states “Defendants admit that the YouTube service provides copyright protection tools that help copyright owners find clips that users have uploaded that the copyright holders may contend infringe their copyrights. Defendants further admit that these tools can prevent the reloading of copies of the same video clip after it has been removed from YouTube’s service following notice of alleged infringement from a copyright holder.”

According to The Register (UK) article (link below), “Viacom sought more than $1bn in punitive damages, despite the copyright legislation only allowing actual or statutory damages. The court ruled in March that it could not seek punitive damages.”

Links to the original complaint, the aforementioned answer, the free Justia docket for this case through March 7, 2008, and The Register’s comments regarding the same are provided below.

Defendant’s Answer to FAC: LINK
Original Complaint: LINK
The Register Article: LINK
Docket through March 7, 2008: LINK

May 27, 2008

Last Friday, the European Patent Office (EPO) announced the April launch of a 16M Euro initiative with the Chinese State Intellectual Property Office (SIPO), the Chinese government, and the European Commission. As referenced within the EPO article (link below), “Although China's legal framework for protecting intellectual property rights (IPR) is now in line with international standards, the actual enforcement of IPR remains a critical issue. Concerns about copyright infringement and patent rights violations persist, and over 70 percent of counterfeit products worldwide originate in China.” The project (referred to as the “EU-China Project on the Protection of Intellectual Property Rights,” or IPR2) is funded 2/3 by the EU and 1/3 by China, with the EPO having responsibility for educating all parties involved on IP rights. A number of “key issues” are highlighted in this program, including enhanced IP enforcement, guidance for IP rights holders, a synchronized legal framework, increased IP personnel, education and awareness, and a seamless information exchange. Additional information on this program can be found at the two links below.

EPO Article: LINK
IPR2 Website: LINK

May 20, 2008

I will be taking a "blog vacation" until Tuesday, May 27th, to enjoy May in Indianapolis (the Indy 500 over Memorial Day weekend). Posts on the Daily Dose of IP blog will resume on the 27th. Thank you for visiting and please join the e-mail list for posts direct to your inbox!

May 16, 2008

It was recently announced that Anascape Ltd. obtained a $21M verdict against Nintendo of America Inc. for patent infringement regarding various Nintendo gaming controllers. The lawsuit, filed on July 31, 2006 in the U.S. District Court for the Eastern District of Texas (Lufkin), alleged infringement of eleven of Anascape’s patents by Microsoft Corp. and five of Anascape’s patent by Nintendo, and sought damages, attorney’s fees, and a permanent injunction. According to the Yahoo! news article (link below), the infringing controllers included the Wii Classic, WaveBird, and Gamecube controllers, but did not include the wandlike Wii and Nuncheck controls “which mimic movements by users in games such as tennis and boxing.” Microsoft Corp. settled with Anascape on May 1st prior to the start of the trial. The first 147 documents of record in this case (from the complaint through a notice of a request for patent reexamination on October 12, 2007), are provided in the second link below via the free Justia docket website. According to the Yahoo! article, Nintendo plans to appeal this decision.

Yahoo! News Article: LINK
Initial Anascape Lawsuit Documents: LINK

May 14, 2008

The USPTO recently announced that it will be hosting the 2008 Sally Ride Science TOYchallenge East Coast National Showcase this Saturday, May 17th at the main USPTO campus. According to the USPTO press release (link below), “[t]he TOYchallenge is a national toy design competition for 5th – 8th graders designed to introduce girls and boys to engineering. It shows them that engineering is collaborative, creative and all around them,” whereby “students from across the country can participate in creative competition that reflects the engineering process.” Over 100 teams comprising approximately 450 students are participating this year in themed categories including Games for the Family, Get Out and Play, and Toys that Teach. Additional information regarding how the toys are judged and other related initiatives of the USPTO are provided in the link below.

USPTO Press Release: LINK

May 13, 2008

By Jay Gordon Taylor

Just as competition in the world economy is purportedly becoming flat due to advances in technology as described in Thomas L. Friedman's best selling book, The World is Flat, the law of patent infringement is likewise becoming flat due to internet technology. In the recent decision of the U.S. District Court for the Southern District of Texas in Renhcol, Inc. v. Don Best Sports, et al., Judge Davis decided that patent claims directed to a "computer" and a "computer storage media" programmed to perform specific functions could be directly infringed in the United States under 35 U.S.C. §271(a) by foreign defendants even though the defendants and their computers and the computer storage media were located totally outside the United States. Judge Davis reasoned that because the computer and software could be accessed and controlled over the internet by users in the United States, "the situs of use of the allegedly infringing computer storage medium [and computer] is the United States." Unfortunately, Judge Davis ignored the issue of who was actually performing the allegedly infringing acts of "use" in the United States in reaching his conclusions of infringement by the foreign defendants.

Two of the defendants in the Renhcol case, one of whom was a Canadian corporation whose computer and software was located in Canada and one of whom was an Irish corporation whose computer and software was located in Ireland, moved for summary judgment of non-infringement under §271(a) because "the code for the accused websites is, and has always been, written outside the United States and the computers and servers that host the code are, and have always been, located outside the United States." Nonetheless, Judge Davis concluded that there was direct infringement under §271(a) by the defendants based upon the Blackberry case, NIP, Inc. v. Research in Motion, Ltd. 418 F.3d 1282 (Fed. Cir. 2005). In the NIP case, direct infringement of an apparatus claim was found under §271(a) although one element of the apparatus was located in Canada because the users in the United States "derive beneficial use from a device located overseas that infringes a claimed system." However, in the NIP case, the defendant and all elements of the allegedly infringing system except one resided in the U.S. Moreover, the holding in NIP was based upon an earlier Court of Claims decision, Decca Ltd. v. U.S., 544 F.2d 1070 (Ct. Cl. 1976) which held the United States Government liable for direct patent infringement of a patented radio navigation system under 35 U.S.C. §271(a) even though one of three radio antennas of that system was located in Norway. The court in Decca concluded there was direct infringement by the United States because of "ownership of the equipment by the Untied States, control of the equipment from the United States [by the United States] and … the actual beneficial use of the system [by the United States] within the United States." On the other hand, in the Renhcol case, all of the defendants and all of the allegedly infringed elements of the claims were located outside the United States, and the defendants themselves were not using or controlling the system in the United States.

While Judge Davis' logic for concluding direct infringement under §271(a) in Renhcol appears faulty as the foreign defendants were not the parties using the computer and computer media in the United States, liability under other theories appears quite justified. The foreign defendants in Renhcol performed no acts that constituted "use" of the system within the United States. Only the consumers, i.e., those who accessed the web pages on the internet and controlled the use of the software, performed such infringing acts of use within the United States. Thus, while there may have been infringing "use" of the invention in the United States by those consumers, Judge Davis held the foreign defendants themselves were directly infringing under 35 U.S.C. §271(a) as well. There is no justification under either NIP or Decca for such a result as both cases involved defendants residing in the United States who performed acts of control over the system within the United States. By Judge Davis' logic, a foreign manufacture whose product is purchased abroad and shipped into the United States by an unrelated third party, could be charged with infringing "use" in the United States when the purchaser of the allegedly infringing product uses it in the United States because "the situs of use of the allegedly infringing … [product] … is the United States."

Notwithstanding the weakness of Judge Davis logic for finding direct infringement under 35 U.S.C. §271(a) by the foreign defendants, liability for inducement of infringement and contributory infringement under 35 U.S.C. §271(b) and (c) appears quite justified. Both Decca and NIP can be read to hold that beneficial control over and use of a computer system resident either partially or wholly outside the United States by a party within the United States constitutes infringing use by that using party within the United States under §271(a). Thus, the requirement of direct infringement is satisfied and the foreign defendants could be liable for either inducement of infringement [to extent to which specific intent to induce infringement can be established] or contributory infringement as a result of making the allegedly infringing system available for use on the internet and inducing its infringing use in the United States.

The lesson to be learned from the Renhcol case is that foreign businesses that place interactive software on line from a foreign location for use by parties accessing the internet in the United States may be faced with patent infringement claims in United States courts. While the situs of the computer server and software may be totally outside the United States, beneficial use and control by U.S. consumers may subject those foreign businesses to liability in the United States for at least inducement of infringement or contributory infringement and possibly direct infringement.

Jay Taylor is a Partner with Ice Miller LLP focusing his efforts on patent, trademark, copyright, and trade secret litigation.

May 08, 2008

In a judgment issued by the United States District Court for the Central District of California on Monday, a half dozen television and movie studios were awarded nearly $111M against the now-defunct file sharing service TorrentSpy. As reported within the Wired article (link below), “TorrentSpy, a U.S.-based torrent tacking service, shuttered in March after it lost its case against the MPAA,” noting that “TorrentSpy did not lose on the merits, but defaulted after it failed to produce internal records.” As noted within the judgment itself (PDF link below), the plaintiffs were awarded $30,000 per infringement for each of the demonstrated 3,699 infringements, resulting in a total judgment of $110,970,000 against three individually-named defendants and Valence Media LLC. In addition, the judgment states that “Defendant, and its officers, agents, servants, employees, and attorneys, and all those in active concert or participation with Defendant who receive actual notice of this Permanent Injunction shall immediately and permanently be enjoined from directly, indirectly, contributorily, or vicariously infringing in any manner any Copyrighted Works,” which are defined as the “copyrighted works, or portions thereof, whether now in existence or later created, in which any Plaintiff (or parent, subsidiary or affiliate of any Plaintiff) owns or controls an exclusive right under the United States Copyright Act, 17 U.S.C. §§ 101 et seq.” The per-violation damages amount represents the high-end of the spectrum under 17 U.S.C. § 504(c)(1), which states that a copyright owner may recover “a sum of not less than $750 or more than $30,000 as the court considers just” per copyright violation under that section.

Wired Article: LINK
TorrentSpy Decision: LINK
17 U.S.C. § 504: LINK

May 07, 2008

I was recently navigating through the World Intellectual Property Organization (WIPO) website and came across an interesting domain name dispute resolution resource webpage. This webpage (first link below) includes the following subparts with additional information included therein:

Resources – includes domain name resolution resources, frequently asked questions, a country code top level domain (ccTLD) database, internationalized domain name information, a trademark database portal, information on WIPO internet domain name processes, a legal index of WIPO UDRP decisions, and an overview of WIPO panel views

Procedures – includes procedural information on generic top level domains (gTLDs), ccTLDs, filing, panelists, fees, and the WIPO guide to the UDRP

Cases Filed – includes links to all filed WIPO domain name cases, filing statistics, and search functionality for WIPO UDRP cases (including a legal index)

Decisions – includes links to all WIPO domain name decisions, the ability to subscribe to receive e-mail updates, and search functionality for WIPO UDRP panel decisions (including a legal index). Direct links to the gTLD decisions webpage and the ccTLD decisions webpage are provided below, noting that the gTLD decisions date back to 1999, while the ccTLD decisions have varying dates based upon the individual countries.

In addition to the foregoing, and at the top of the first link below, WIPO provides a summary entitled “DNS Developments Feed Growing Cybersquatting Concerns” and three different legal index search category references dating back to August, 2007.

WIPO Domain Name Dispute Resolution Webpage: LINK
WIPO gTLD Decision Webpage: LINK
WIPO ccTLD Decision Webpage: LINK
WIPO Domains FAQ Webpage: LINK

May 06, 2008

Starting today, the USPTO is kicking off a series of meetings with major automobile manufacturers to discuss intellectual property protection related to the designs of automobiles. The first meeting, hosted by Margaret J.A. Peterlin, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, will include representatives from GM, Ford, Chrysler, Toyota, and the Auto Alliance, with future planned meetings to include insurance companies, independent parts manufacturers, and various consumer groups. According to the USPTO announcement (link below), “the ornamental appearance of vehicle exteriors can be protected by design patents,” and that “[t]he automotive industry invests millions of dollars creating unique and distinctive designs for motor vehicles, which can easily be copied,” noting further that “[i]ntellectual property protection is considered an extremely important tool to ensure automakers see a return on their investment.” Additional information on this initiative, including proposed legislation to amend Title 35 of the U.S. Code to create an infringement exception for certain repair parts, is provided within the link below.

USPTO Announcement: LINK

May 05, 2008

I came across this interesting resource and thought it would be worthy of sharing. Since 1998, the World Intellectual Property Organization (“WIPO”) has published an online and print version of WIPO Magazine, covering various intellectual-property related issues. Although the May-June 2008 issue should be out at any time, the current issue on the WIPO website (March-April 2008) contains a number of interesting articles, including the following:

IP and Business: IP Strategies in the Textile Industry - An SME faces the challenge – an article discussing intellectual property strategies of luxury textile company located in San Leucio, Italy

Climate Change: From Cows to Kilowatts – A Case Study in Successful Technology Transfer – the second article of a new series regarding the “Cows to Kilowatts” initiative in Nigeria which is a “partnership project which aims to reduce the water pollution and greenhouse gas emissions from slaughterhouse waste”

Climate Change: Green Branding - Cashing in on the Eco-Market – the third article of a new series regarding discussing the “flourishing business of green branding” and related certification marks and eco-labeling

In the Courts: Pursuing the P2P Pirates – Balancing Copyright and Privacy Rights – a discussion of a January European Court of Justice ruling seen as “a victory for Internet access providers over demands by record companies to disclose the identities of copyright-infringing file sharers”

The Digital Music Market - Educating Users – an article with statistics on the changes from traditional CD sales to sales of digital music, including the Digital Music Report 2008 by IFPI

A Day in the Life of an IP Blog-Meister – a discussion of Jeremy Phillips, his IPKat blog, legal blogging in general, and his perspective on “what it takes to run one successfully”

Record Demand for WIPO Services in 2007 – an article discussing the 2007 increase “in Patent Cooperation Treaty (PCT) applications and in international trademark registrations under the Madrid system, as well as an unprecedented number of complainants filing cybersquatting cases”

Debated Heroes from the Deep Sea - Marine Genetic Resources – an article discussion the United Natioins Law on the Sea and ownership of marine genetic IP

Invention Awards – a discussion on recent invention exhibitions held in Saudi Arabia, Switzerland and Thailand

Committee Meetings – a summary on recent committee meetings including the Intergovernmental Committee on Intellectual Property Traditional Knowledge, Genetic Resource, and Folklore, the Committee on Development and Intellectual Property, the Standing Committee on Copyright and Related Rights, and the extraordinary session of the WIPO Assemblies

In the News – a series of brief articles including “Indian Film Industry Losing Billions to Piracy,” “Copyright – Superman’s New Power?,” “Paris Convention - 125th Anniversary,” “Climate Change Focus of European Patent Forum 2008,” and “IP Auction: Sold! US$6 Million to the Bidder on the Phone!”

Letters and Comment – a series of letters from individuals around the world related to intellectual property

Book Review: Teaching of Intellectual Property - Principles and Methods – a synopsis of this new book whereby “internationally renowned IP professors and practitioners share their teaching techniques and offer advice on what to include in coursework”

Links to each article are available above, and links to the current issue and the PDF archive of past issues are provided below.

Current Issue of WIPO Magazine: LINK
Archive of Prior Issues (PDFs): LINK

May 02, 2008

According to a recent Yahoo! News article (link below), the Japanese finance ministry has been forced to stop production of one of its latest commemorative coins based on a claim of copyright infringement. The original commemorative coin showed bronze sculptures of a family standing in Brazil to celebrate 100 years of Japanese emigration to Brazil, with an image of the sculptures appearing on approximately 5 million minted 500 yen coins. However, a private sculptor, and not an immigrants association in Brazil that entered into an agreement with the Japanese finance ministry, owns the rights to the works, and the sculptor decided not to allow Japan to reproduce the work on the coins. According to the Yahoo! article, the Japanese finance ministry will spend ~$50,000 - $100,000 (5-10 million yen) to redesign the coin, but as reported by the Japan Times (link below), “[t]he government has thus been forced to adopt a new design featuring a Brazilian map and the ship Kasato Maru, which transported the first Japanese emigrants to Santos.”

Yahoo! News Article: LINK
The Japan Times Article: LINK

WIPO Press Releases

WIPO General News

Patent References

Click HERE to search issued U.S. Patents

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Click HERE to search patent assignments recorded with the USPTO

Click HERE to search Title 37 of the Code of Federal Regulations (rev. 7/1/08)

Click HERE to browse Title 35 of the U.S. Code

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Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

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The DDIP Author

Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

Click HERE to view my full professional bio at Reichel IP LLC.


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