Using Copyrighted Articles in Patent Prosecution Is A Fair Use.

In a battle of intellectual property lawyers, U.S. Magistrate Judge Jeffrey Keyes recently sided with the patent attorneys. He ruled that a law firm’s use of copyrighted scientific journal articles in prosecuting patent applications constituted fair use.

American Institute of Physics v. Schwegman Lundberg & Woessner involved science and technology articles published by Plaintiffs American Institute of Physics and John Wiley & Sons, Inc. The law firm of Schwegman Lundberg & Woessner (Schwegman) obtained and later copied eighteen of the Plaintiffs’ copyrighted journal articles for use in its patent prosecution practice. The Plaintiffs allege that by obtaining the copies without paying for a license, and by making internal copies within the law office, Schwegman committed copyright infringement. The Plaintiff agreed submitting copies to the Patent Office was permissible. Both Schwegman and the USPTO maintain that Schwegman’s copying of the articles for their files and review constitutes a non-infringing “fair use.”  The publishers disagreed.

In holding that fair use applied, the court applied the fair use provisions of the copyright statute which requires the courts to consider the following factors in deciding this issue:

  • The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  • The nature of the copyrighted work;
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • The effect of the use upon the potential market for or value of the copyrighted work.

In this case, the court determined that all four fair use factors weighed in favor of finding that Schwegman’s use is fair as a matter of law. As explained by Magistrate Keyes:

The record demonstrates no genuine dispute that Schwegman’s use of the Articles was new and different and did not merely supersede the original purpose of the Articles. Also, the undisputed facts demonstrate that the nature of the Articles is predominantly informational. Further, although Schwegman did make complete copies of the Articles in its patent prosecution practice, the only reasonable inference to draw from the record is that Schwegman’s copying of the Articles was consistent with the new and different purpose and character of Schwegman’s use. And there is no evidence to suggest that Schwegman’s copying impacted a traditional, reasonable, or likely to be developed market for the Articles.

The decision is good news for fair use advocates and patent lawyers, but it must still be affirmed by the district court.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Tech Industry Testifies Before Congress on Copyright Reform.

Businesses that rely on the fair use doctrine and open source technology recently testified before the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet. The hearing featured testimony from representatives of crowdfunding website Indiegogo Inc., nonprofit software developer Beneficent Technology Inc., manufacturer SparkFun Electronics Inc., television monitoring company SnapStream Media Inc., and cloud-computing company Rackspace Inc.

The hearing was part of Congress’s broad review of U.S. copyright laws with the goal of updating the country’s copyright protection scheme. In prior testimony, content creators from the music and film industries argued for stronger protections to combat infringement in the digital age, particularly online piracy.

In the latest hearing, the tech companies called on Congress to protect their business models as part of any future copyright reform. They stressed that innovation and intellectual property protection do not always have to go hand in hand. “Innovation doesn’t just come from control” of the intellectual property, Van Lindberg, Rackspace’s vice president of intellectual property, told the committee.

Jim Fruchterman, president and chief executive officer of Beneficent Technology, stressed that his company relies on fair use. “Intellectual property laws, at their best, can encourage technological advances, reward creativity, and bring benefits to society,” Fruchterman said. “To make this possible, we must keep the balance in copyright. We need to defend fair use as a laboratory for creativity.”

Finally, Danae Ringelmann, Indiegogo co-founder and chief customer officer, suggested a new approach is needed in a digital world where everything can be easily copied and distributed. “Rather than try to fight it, because it’s like water rolling down a hill, try to embrace it,” Ringelmann said.

Source: Corporate Counsel

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Department of Commerce Report on Copyright Policy in the Digital Age.

As Congress continues to hear testimony regarding potential changes to the U.S. copyright system, the Department of Commerce issued a green paper on Copyright Policy, Creativity, and Innovation in the Digital Economy. It addresses striking the proper balance between the rights of copyright holders and the innovative power of the Internet and the free flow of information.

“Copyright law strikes a number of important balances in delineating what is protectable and what is not, determining what uses are permitted without a license, and establishing appropriate enforcement mechanisms to combat piracy, so that all stakeholders benefit from the protection afforded by copyright,” said U.S. Secretary of Commerce Penny Pritzker. “Ensuring that our copyright policy provides incentives for creativity while promoting innovation on the Internet is a critical and challenging task. The Green Paper released today is an important step toward ensuring that the United States’ creative industries continue to have a substantial impact on strengthening our nation’s economy.”

The green paper was prepared by the Department of Commerce’s Internet Policy Task Force (IPTF) with input from the U.S. Patent and Trademark Office (USPTO) and the National Telecommunications and Information Administration (NTIA). According to the USPTO, it is the most thorough and comprehensive analysis of digital copyright policy issued by any administration since 1995.

The report includes recommendations to establish a stakeholder dialogue on improving the operation of the notice and takedown system under the Digital Millennium Copyright Act (DMCA) as well as proposals to solicit public comments and convene roundtables on:

  • The legal framework for the creation of remixes;
  • The relevance and scope of the first sale doctrine in the digital environment;
  • The application of statutory damages in the context of individual file-sharers and secondary liability for large-scale online infringement;
  • The appropriate role for the government, if any, to help improve the online licensing environment, including access to comprehensive public and private databases of rights information.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

DCMA Takedown Of San Francisco TV Station’s Embarrassing Footage.

The Digital Millennium Copyright Act (DCMA) exempts certain online service providers from liability for copyright infringing acts by its users, provided that certain conditions are satisfied. It can also be a powerful tool to remove infringing content from the Internet.  Online service providers must remove user-generated content at the content owners request or face significant monetary penalties.

In an unusual move, a San Francisco television station used a DCMA takedown notice for a unique reason:  to remove embarrassing footage from the Internet.  Shortly after the crash of Asiana flight 214, a KTVU anchor unintentionally read fake (and racially insensitive) names of the pilots involved in the crash on the air. An intern with the National Transportation Safety Board erroneously confirmed the names to the station.

The television station relied on copyright law to serve double duty.  After publicly apologizing for the gaff, KTVU vowed to remove the online versions of the broadcast. “The accidental mistake we made was insensitive and offensive. By now, most people have seen it. At this point, continuing to show the video is also insensitive and offensive, especially to the many in our Asian community who were offended. Consistent with our apology, we are carrying through on our responsibility to minimize the thoughtless repetition of the video by others,” said the station’s general manager and vice president, Tom Raponi.

How Can I Help?

As this case highlights, IP protections can provide a range of benefits. To find out more about protecting your IP rights online, I encourage you to contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Dish Network’s Ad-Skipping Technology Survives.

The Dish Network satellite service recently scored a significant victory before the Ninth Circuit Court of Appeals. The panel denied Fox Broadcasting’s appeal to overturn a lower court decision denying an injunction to stop Dish from offering its “AutoHop,” “Hopper” and “PrimeTime Anytime” services, which provide commercial free content to users.

The Ninth Circuit concluded that Fox had not demonstrated a likelihood of success on its copyright infringement claims.

“Infringement of the reproduction right requires ‘copying by the defendant,” the opinion states. “Fox argues that because Dish participates in the operation of PrimeTime Anytime on a daily basis, Dish made the copies, either alone or concurrently with its users. However, operating a system used to make copies at the user’s command does not mean that the system operator, rather than the user, caused copies to be made. Here, Dish’s program creates the copy only in response to the user’s command.”

The Ninth Circuit also rejected Fox’s argument that Dish could be held liable for contributory infringement, finding that the customers’ recording of the content constituted fair use. In so ruling, the appeals court relied heavily on Sony Pictures, Inc. v. Universal Studios, Inc., 464 U.S. 417 (1984), in which the Supreme Court held that “time-shifting” is a fair use recording of copyrighted broadcast content.

“If recording an entire copyrighted program is a fair use, the fact that viewers do not watch the ads not copyrighted by Fox cannot transform the recording into a copyright violation. Indeed, a recording made with PrimeTime Anytime still includes commercials; AutoHop simply skips those recorded commercials unless a viewer manually rewinds or fast-forwards into a commercial break. Thus, any analysis of the market harm should exclude consideration of AutoHop because ad-skipping does not implicate Fox’s copyright interests,” the panel concluded.

This case, along with the litigation against start-up Aereo, Inc., highlights the growing tension between broadcast networks and service providers. While new technology provides consumers with more options for viewing content, it also threatens the long-standing business model of the networks.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Copyright Holders Call on Congress for Stronger Protections.

 In the first of several hearings regarding the future of the U.S. copyright system, content creators argued for stronger protections before the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet. The hearing featured testimony from representatives of the Copyright Alliance, Getty Images Inc., the American Society of Media Photographers, Yep Roc Records and Redeye Distribution Inc., and 3-D moviemaker Stereo D LLC

Congress has recently embarked on a broad review of U.S. copyright laws with the goal of updating the country’s copyright protection scheme. With the exception of the Digital Millennium Copyright Act, most other portions of the Copyright Act date back to 1976.

In their testimony before the committee, copyright holders argued that strong protections are needed to combat infringement in the digital age, particularly online piracy.

“Our goal in reviewing licensure laws should be to protect creativity and still allow for an active and intelligent marketplace for searching and licensing creative works,” John Lapham, senior vice president and general counsel of Getty Images, testified. “When we do so we can all benefit from content that moves, inspires, provokes, educates, and encourages.”

Representatives from the music and film industries expressed concerns about file sharing and other forms of piracy. “If an environment exists that does not provide adequate copyright protection and blockbuster films become unaffordable and unprofitable due to the threat of piracy, this new and thriving 3-D industry will be significantly hampered and severely impacted,” said William Sherak, Stereo D’s president. “The reason being that 3-D conversions are normally undertaken on major blockbuster films—the very films that are often the greatest targets of piracy.”

The committee will next meet with representatives of the tech community.

Source: Corporate Counsel

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman