Mary Siceloff

Periscope (owned by Twitter) and Meerkat are two new “live streaming” apps which allow users to live stream videos from their phones.  These applications could potentially change the way live sporting or music events are broadcast or change the way news footage is gathered.  They can also be used by a viewer to re-broadcast copyrighted content.  HBO was recently on the receiving end of that lesson when it found out that dozens of viewers were live streaming the season premiere of Game of Thrones.

HBO said that Periscope was responsive to its take down notices, but also added “We feel developers should have tools which proactively prevent mass copyright infringement from occurring on their apps and not be solely reliant upon notification.”   This sounds very similar to the argument Viacom initially made in its protracted copyright infringement litigation against YouTube.  However, in 2010 U.S. District Court Judge Louis Stanton rejected this argument when he found that the Digital Millennium Copyright Act (the “DMCA”) insulated YouTube/Google from Viacom’s infringement claims and granted YouTube’s motion for summary judgment.

Under the DMCA, a “Service Provider” may be entitled to immunity from claims of copyright infringement in four areas: 1) transitory communications; 2) system caching; 3) storage of information on systems or networks at direction of users; and 4) information location tools. While each area would appear to have some application to Periscope and Meerkat’s business, the information storage category is of primary focus.

Under the information storage safe harbor, the Service Provider: (i) must not have actual knowledge that the material is infringing; (ii) must not be aware of facts or circumstances from which infringing activity is apparent; and (iii) upon becoming aware of the existence of such infringement material, acts promptly to remove or disable access to the infringing material. In addition, in order to be entitled to copyright infringement immunity under this provision, the Service Provider must not receive a financial benefit directly attributable to the infringing material where it has the right and ability to control it. Additionally, the Service Provider must, upon notification of a claim of infringement, quickly remove or disable access to the infringing material.

Under the DMCA, Periscope and Meerkat cannot refuse or fail to take action when infringement is brought to their attention, but they have no legal obligation to take affirmative steps to screen content or build new technology that prevents the use of their application to infringe the copyright of third parties.

Clearly HBO has the right to pursue the Periscope users that live stream Game of Thrones (or any other HBO program).  But what about streaming live events – such as the “Fight of the Century” between Floyd Mayweather and Manny Pacquiao.   HBO (and Showtime) paid handsomely for the live broadcast rights to the fight and prior to the fight, were taking aggressive steps to prevent free live streaming.  HBO, Showtime and fight promoter Top Rank, Inc. filed suit against two livestream websites, boxinghd.net and sportship.org, claiming that they would livestream the TV broadcast of the fight for free.  A Federal District court granted HBO’s injunction.

But what about Periscope users that stream directly from the fight?  Apparently numerous Periscope and Meerkat users streamed live from the fight.  HBO, Showtime and Top Rank were none too pleased; Top Rank promised legal action.  However, if Top Rank follows through with its threat and sues either Periscope or Meerkat, it may face an early TKO.  As long as Periscope and Meerkat respond promptly to take down requests, the DMCA will protect them from copyright infringement claims. If Top Rank sued the Periscope or Meerkat users that filmed and streamed the fight from their seats at the arena, it would have to be on grounds other than copyright infringement.

For the full article, click here.

With so many new microbreweries popping up in Sacramento, the Bay Area, and the Greater San Diego area, I felt compelled to write the present piece for the benefit of the aspiring, as well as the established, microbrew entrepreneur. These individuals undoubtedly pour (excuse the pun) their hearts, souls, and hard-earned money into the development of their breweries and their attempts to formulate the perfect brew. However, from my own research and analysis it seems clear that these entrepreneurs are regularly overlooking one thing in particular—their intellectual property rights.

The thought first occurred to me when I was sitting in San Diego having an IPA with a couple of my friends. As I stared at the bottle on the table it occurred to me that despite my everyday involvement with intellectual property, I had never looked into whether some of these companies were properly safeguarding their intellectual property rights. I immediately went to the United States Patent and Trademark Office (“USPTO”) website on my cellphone and began searching for some of my favorite breweries and their assorted brews on the database. I quickly learned that some of the companies were prudently protecting their intellectual property in their company’s name, certain brews, and certain designs/graphics. However, I also learned that some of my favorite breweries were not doing anything to protect their intellectual property. I discussed the matter with my friends and express how I could not understand why these companies would not try to protect their intellectual property. Then, it occurred to me that some of them probably never thought about it, or were simply unaware what types of protection exist under the intellectual property laws. After all, prior to my involvement in the intellectual property world, I never thought about trademarks, trade dress, copyrights, or patents. Accordingly, I decide to draft this brief, non-exhaustive discussion of trademark law’s application to the microbrewery industry and suggest that breweries consider protecting their rights as they grow as businesses.

Federal Law, or the Lanham Act, defines “trademark” as any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. Thus, any words, symbols, or designs that consumers may use to identify the source of the product are trademarks. We see these everyday when we step outside of our homes. Common examples include McDonalds, Starbucks, or a more suitable example in the context of this article, West Coast IPA. The latter is a federally registered trademark by the Green Flash Brewing Co. It is a clear example of a trademark in that it is a series of words and/or a name that is used in commerce to identify and distinguish the goods of the manufacturer/seller. Unfortunately, I cannot take the credit for Green Flash Brewing Co.’s prudent protection of its intellectual property rights, but the up and coming microbreweries can certainly take a lesson from Green Flash Brewing Co.’s conduct and follow its lead.

In order to gain this type of protection under the federal trademark law, there cannot be any other mark that is “confusingly similar” to your mark such that it will create consumer confusion as to the product’s origin unless your use in commerce preceded that mark. On the other hand, if there are no marks that are confusingly similar to your own, priority of use does not come into play and the applicant seeking trademark registration can file what is known as an intent to use application. The latter essentially says that the registrant intends to begin using this product in commerce in the near future and seeks to register the mark in advance. This is an oversimplified explanation of the rules, but this article is intended to provide a general overview—not a detailed legal analysis.

Assuming the mark meets the requirements of the USPTO, and there are no successful challenges by other trademark owners, it will eventually be registered and the world will be deemed on constructive notice of its existence. The effect of this is that the registrant can then pursue anyone in the United States who uses a mark that is “confusingly similar” to the registrant’s duly registered mark. In the absence of such a registration, the party would be left with much less extensive trademark rights and remedies. Accordingly, it is prudent that up and coming microbreweries and established breweries that have yet to take action in protecting their intellectual property get in contact with an intellectual property attorney as soon as possible to develop a plan for protecting their intellectual property rights.

Although it is implicit in the discussion above regarding how a mark designates the product’s origin, it is important to completely understand why trademark protection is so important. Any entrepreneur I have ever met would tell you that they want to benefit in some form or another from the blood, sweat, and tears that they put into their work. One way that can be achieved is through building up goodwill in one’s mark and having consumers come to associate that mark with high quality. Ideally, a brewery would develop a brew that consumers associate with high quality microbrew. Specifically, they would come to associate the name of that brew with quality—for the sake of the example, let’s call it Weintraub California American Pale Ale. After developing such goodwill in the mark, it would be unfair if someone were allowed to benefit from the goodwill of the mark Weintraub California American Pale Ale by releasing Weintraub California India Pale Ale, thereby falsely indicating that the same brewery produced both products. Obviously, it would be fine if the same brewery created both products, but you can see how this creates a problem if the products are being produced by separate entities. That is exactly the type of problem that trademark protection seeks to prevent and that is exactly why it is imperative that new and established microbreweries immediately seek out intellectual property counseling if they have not already done so.

I’ve yet to encounter an area of the law where an inch of preventative measures would not have gone a mile later down the road. With that said, please drink and protect your intellectual property rights responsibly.

Enablement is the requirement that a patent teach a person skilled in the art (the field of the invention) how to make and use the invention without undue experimentation. In other words, a patent must describe the invention clearly enough so that a skilled person in the field can replicate the invention without having to perform experiments to determine how to make and use the invention. The enablement requirement is set forth in 35 U.S.C. §112, first paragraph. If a patent is not enabled, it can be invalidated.

In the fields of biology and chemistry, referred to in the patent world as the “unpredictable” arts, enablement is particularly important. Thus, biotechnology patents must clearly satisfy the enablement requirement or they are at risk of being challenged and held invalid. That is what happened in Promega Corp. v. Life Technologies Corp. (Fed. Cir. 2014) 773 F.3d 1338.
Promega sued Life Technologies for infringement of five patents. The patents covered methods and test kits for analyzing DNA samples and were used in forensic science. Promega alleged that Life Technologies manufactured and sold genetic test kits that infringed Promega’s patents.

Life Technologies moved for summary judgement of invalidity on four of the five Promega patents, arguing that the four patents were not enabled. The district court denied the motion. The court granted Promega’s motion for summary judgment, holding that the patents were infringed. The jury then awarded $52 million in damages to Promega, but the district court granted Life Technologies’ motion for judgment as a matter of law. The court then vacated its previous ruling of infringement.

Both parties appealed. In ruling on Life Technologies’ motion for summary judgment for lack of enablement, the Federal Circuit Court of Appeals considered the prosecution file histories for Promega’s patents. During prosecution, in order to overcome the patent examiner’s prior art rejections, Promega had stated that the prior art was not sufficient to disclose or predict the invention. The court also noted that Promega had taken inconsistent positions in the litigation. In opposing Life Technologies’ motion for invalidity, Promega had admitted that the field was unpredictable. In arguing for infringement, however, the court said “Promega sings a different tune” — Promega had asserted that its claims were broad enough to cover methods it had referred to as unpredictable.

The Federal Circuit explained that Promega cannot have it both ways. If Promega interpreted the language broadly enough to cover Life Technologies’ products, then the claims, as interpreted broadly, had to be enabled for the full scope of that coverage.

The court found that Promega’s patents covered “a virtually unlimited number” of DNA combinations. 773 F.3d at 1348. According to the court, the patents would not have enabled a person skilled in the field to develop Life Technologies’ products without undue experimentation. The court stated: “the claims at issue here similarly cover potentially thousands of undisclosed embodiments in an unpredictable field.” Id. at 1349. A person skilled in the field would have had to perform “laborious testing” (i.e., undue experimentation) to create Life Technologies’ products. Thus, the court held that the patents were invalid for failure to satisfy the enablement requirement, concluding that “Promega’s ‘difficultly in enabling the asserted claims is a problem of its own making.’” Id.

By: Intellectual Property Group

In 2008, former Mayor of Washington, D.C., and then council member Marion Barry became ill with a kidney disease. To survive the illness, Mr. Barry required a kidney transplant, and one of his friends, Ms. Kim Dickens, came to his aid and donated one of her kidneys. Although the transplant helped Mr. Barry survive for several more years, he passed away in November 2014. Ironically, Mr. Barry’s widow is now suing Ms. Dickens.

In a lawsuit filed by Cora Masters Barry against Kim Dickens, Mrs. Barry alleges that Ms. Dickens has unlawfully used her late husband’s celebrity identity in order to promote the “Barry Dickens Kidney Foundation,” a charity formed by Ms. Dickens. According to the website of the Barry Dickens Kidney Foundation, Marion Barry played a role in the formation of that group, and the website even features photographs of Mr. Barry along with a detailed story of how Ms. Dickens came to donate one of her kidneys to Mr. Barry.

Mrs. Barry’s claims against the Foundation are not without legal precedent. In 1993, Wheel of Fortune hostess Vanna White sued Samsung Electronics of America in connection with a television ad which depicted a robotic version of Ms. White to promote sales of Samsung’s video cassette recorder. Ruling in favor of Ms. White, the Court of Appeal determined that television and other media create “marketable celebrity identity value,” and a celebrity has an exclusive right to exploit this value by prohibiting unauthorized commercial exploitation of their identity.

The case brought on behalf of Mr. Barry’s estate may represent a new application of the holding in White v. Samsung Electronics. Although the Foundation obviously is using Mr. Barry’s “celebrity” image, there are several distinct differences between Vanna White and Mr. Barry as well as the circumstances in which each person’s image is used.  First, Vanna White is a somewhat typical celebrity who gained fame in connection with a popular television show, whereas Mr. Barry was a public figure, a politician who gained fame for his illustrious acts while in office and his opinions on matters of public concern. Additionally, as detailed in the appellate court’s holding, Samsung’s use of Ms. White’s celebrity identity was purely for commercial gain, while the Foundation’s use of Mr. Barry’s celebrity image is to advance a nonprofit organization’s goal to promote one of the more generous and merciful gifts one person could give another. As a result, the court first must determine if Mr. Barry’s name and image enjoy any “marketable celebrity identity value.” Even if an identifiable “marketable celebrity identity” exists in connection with Mr. Barry, the court also must consider whether or not such celebrity identity can be protected where it arises almost entirely from acts performed while serving in office. Although Ms. Dickens’ act of donating one of her kidneys to Mr. Barry is a gracious and laudable action, absent an express agreement allowing her to do so, it seems unlikely that Ms. Dickens’ kidney purchased the right to use Mr. Barry’s name and likeness.