Intellectual Property

Laches, a judicially created defense based on the plaintiff’s delay and prejudice to the defendant, is a proper defense to the recovery of damages in a patent infringement suit, even though the Supreme Court ruled in 2014 that laches does not apply in copyright infringement cases.

A divided en banc Federal Circuit Court of Appeals held in SCA Hygiene Products v. First Quality Baby Products (September 18, 2015) 2015 U.S. App. LEXIS 16621 that Congress specifically provided for a laches defense in the Patent Act, unlike the Copyright Act.

SCA owned a patent for adult incontinence devices; First Quality was a competitor. In 2003, SCA sent First Quality a letter stating that it believed First Quality’s products infringed SCA’s patent. First Quality replied that SCA’s patent was invalid based on a prior art patent. In 2004, SCA filed a petition for reexamination of its patent in the Patent and Trademark Office, citing the prior art patent. In 2007, the PTO upheld SCA’s patent. SCA had not informed First Quality of the reexamination because the reexamination proceedings were public, but First Quality believed that SCA had dropped its accusation in response to First Quality’s letter. During this time, First Quality had made significant investments in its business. SCA knew First Quality was expanding its business, but did not inform First Quality of the reexamination decision. In 2010, seven years after its last communication with First Quality, SCA sued First Quality for patent infringement.

The trial court granted First Quality’s motion for summary judgment on laches and equitable estoppel. SCA appealed. A panel of the Federal Circuit affirmed the trial court’s decision on the laches defense and reversed it on the equitable estoppel defense.

On rehearing before the en banc Federal Circuit, SCA contended that the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962 (2014) eliminated laches as a defense. In Petrella, the Supreme Court held that laches is not a defense to a claim of copyright infringement brought within the Copyright Act’s statute of limitations. SCA argued that laches should not apply as a defense in patent infringement cases within the Patent Act’s six-year period for obtaining damages.

The Federal Circuit held that the Patent Act was not like the Copyright Act because the patent statutes expressly provided for both a six-year time limit on the recovery of monetary damages and a defense of laches.

The court explained that laches was codified in 35 U.S.C. §282(b)(1), which sets forth, in general terms, that defenses of “absence of liability” are permitted. The court relied on the commentary of the drafters of the Patent Act, which specifically stated that laches was a proper defense. The court noted that its holding is not new, as courts have interpreted §282 to permit laches as a proper defense to patent infringement claims for decades.

The court next addressed whether laches is a defense only to equitable relief (injunctions) or whether it is also a defense to legal relief (monetary damages). Although the patent statutes do not provide the answer to this question, the court concluded that laches is a defense to all forms of relief, based on this state of the case law in 1952 when the patent statutes were enacted. At that time, courts applied laches to bar both equitable and legal relief, and Congress intended to codify existing law in enacting the Patent Act. In analyzing Patrella, the court explained that the Supreme Court had:

“eliminate[d] copyright’s judicially-created laches defense because Congress, through a statute of limitations, has already spoken on the timeliness of the copyright infringement claims, so there is no room for a judicially-created timeliness doctrine.”

This is in contrast to the Patent Act, which the court explained as follows:

“The statutory scheme in patent law, however, is different. While Congress has spoken on the timeliness of patent damages claims, Congress also codified laches defense in §282. Thus, because §286 provides for a time limitation on the recovery of legal remedies, and §282 provides for laches as a defense to legal relief, the separation of powers concern is not present. . . . Laches therefore remains a viable defense to legal relief in patent law.”

Lastly, the court clarified that laches is a proper defense to a permanent injunction, but not to an ongoing royalty for a defendant’s continuing infringement. The factors considered in laches (the plaintiff’s delay and prejudice to the defendant) are relevant in deciding whether an injunction is appropriate, but the plaintiff’s delay should not bar it from recovering ongoing royalties for the defendant’s current infringement.

The court also distinguished the defense of equitable estoppel from laches. Equitable estoppel is a bar to the entire claim of patent infringement, precluding any relief. This is because equitable estoppel is premised on conduct by the patent owner that demonstrates acquiescence in the defendant’s infringing acts, essentially granting the defendant a license under the patent for the patent’s term.

In concluding, the court said that Congress can certainly change the law if it so chooses, but for now, laches survives. In that case, patent owners should be vigilant in protecting their rights.

On September 9, 2015, the United States District Court for the Southern District of New York ruled that Costco was willfully infringing Tiffany & Co.’s trademarks by selling diamond engagement rings bearing the renowned jewelry retailer’s name. The suit started back in 2012 when a patron of Costco in Huntington Beach, California decided to reach out to Tiffany to express her disappointment in Tiffany offering its rings for sale at Costco. She also stated that the rings were being promoted on signs within the store as Tiffany diamond engagement rings. After receiving the complaint and knowing that it did not sell its rings through Costco, Tiffany launched an investigation revealing that the Huntington Beach Costco was in fact displaying diamond engagement rings in a case labeled with the word Tiffany. The investigation also revealed that the Costco salespeople were referring to them as Tiffany engagement rings. Accordingly, Tiffany took action.

According to the Court’s ruling, prior to the lawsuit, Costco promised that it would remove references to Tiffany from its display case signs and even sent a letter to customers who bought the rings offering a full refund if they were not satisfied. Irrespective of these acts, Tiffany filed suit, ironically enough, on February 14, 2013. In response, Costco filed a counterclaim alleging that Tiffany’s trademarks were invalid because they sought to prevent others from using the word “Tiffany” as a generic description of a type of ring setting. Almost a year and a half later, the Court ruled in favor of Tiffany and against Costco. Specifically, Judge Laura Taylor Swain ruled that the evidence established that Costco had infringed Tiffany’s trademarks by selling engagement rings and had confused consumers by using the word Tiffany in display cases. Judge Swain ruled that “Despite Costco’s arguments to the contrary, the court finds that, based on the record evidence, no rational finder of fact could conclude that Costco acted in good faith in adopting the Tiffany mark.”

Under the ruling, Tiffany may now seek damages from Costco through a jury trial. These damages could include disgorgement of Costco’s related profits from the rings, as well as punitive damages. It seems likely that because of the egregious nature of the infringement, a jury will award Tiffany Costco’s related profits, with punitive damages to punish Costco’s seemingly intentional and deceptive conduct. That, however, assumes that the matter gets to the jury. The Court ordered the parties to “make good faith efforts to settle the outstanding issues” and given the unpredictability of juries, I believe the parties will reach a resolution on damages before a jury comes into play. With that said, it is debatable how much leverage Costco has to negotiate at this point with the Court already finding that it infringed Tiffany’s mark.

General Counsel for Tiffany, Leigh Harlan, stated that “We believe this decision further validates the strength and value of the Tiffany mark and reinforces our continuing efforts to protect the brand.” Ms. Harlan’s statements are bolstered by the .55% increase in the Tiffany stock to $82.32 the day after the issuance of Judge Swain’s ruling. Interestingly, Costco’s stock also went up .04% to $141.48 per share the same morning.

This ruling should not come as a surprise to many. The strength of the Tiffany mark in the realm of diamond rings is in my opinion second to none. So when an unpermitted party chooses to use the word Tiffany in conjunction with its sale of diamond rings, consumer confusion is almost inevitable. It would certainly be interesting to see how many consumers were duped into purchasing these Costco rings under the impression that they were getting a Tiffany ring at a substantial discount. Personally, I think it would be more interesting to see how the consumers who purchased these rings pawned them off on their significant others as a Tiffany ring without the distinctive Tiffany Blue Box. But that’s just me.

The Federal Circuit Court of Appeals has established a new test for “divided” patent infringement. Direct infringement of a method patent exists when a single party performs all of the steps of the claimed method. 35 U.S.C. §271(a). Divided infringement occurs when all of the steps are not performed by a single party, but by two or more parties under circumstances such that one party is still responsible for the infringement.

The law of divided infringement has been a subject of much debate. The question is: should direct infringement be expanded so that a single party is liable for infringement of a method claim even if another party performed some of the steps of the method? Those who say “no” argue that one party cannot infringe a method patent if it does not perform all of the steps of the claimed method, and that any other interpretation is so broad that it would make infringers out of innocent parties. Those who say “yes,” however, argue that infringers can escape liability for patent infringement simply by dividing up the steps of the claimed method among two or more parties.

In its previous decision in this case, a panel at the Federal Circuit had held that a party can be liable for divided infringement if it shares a principal-agent relationship, a contract, or a joint enterprise with the other party who performs some of the steps. On appeal to the United States Supreme Court, however, the Supreme Court vacated that decision and remanded the case to the Federal Circuit, stating that the Federal Circuit’s test for divided infringement may have been too narrow.

On remand, in a unanimous, en banc decision, the Federal Circuit established a new, more expansive test for divided infringement. The court held that a party can be liable for infringement of a method claim when another party performs some of the steps of the claimed method in two situations: (1) where the first party directs or controls the actions of the other party; and (2) where the first party and the other party form a joint enterprise.

The court explained that the first situation exists if there is principle-agent or contractual relationship, but also exists if the accused party conditions participation or receipt of a benefit upon performance of the step of the method and determines the manner or timing of the other party’s performance. Under these circumstances, the actions of the other party are attributed to the accused party. The second situation exists if there is a joint enterprise between two or more parties, such that all parties are responsible for acts of the others.

The court emphasized that its new test is a “governing legal framework” and that future cases may present differing factual situations in which liability will be found. The court stated: “[g]oing forward, principles of attribution are to be considered in context of the particular facts presented.”

In this case, plaintiff Akamai Technologies, Inc. owned a patent covering methods of delivering content over the Internet. Akamai sued Limelight Networks, Inc. for patent infringement. At trial, the parties agreed that the customers of Limelight, not Limelight itself, performed two steps of the claimed method – “tagging” and “serving.” The jury found that Limelight infringed the patent based on its finding that Limelight directed or controlled its customers’ performance of the tagging and serving steps. However, the district court entered judgment as a matter of law in favor of Limelight.

On appeal, a panel of the Federal Circuit affirmed the decision on the grounds that Limelight did not directly control its customers’ acts because there was no principal-agent relationship, contract, or joint enterprise.

In its second decision in this case, after the Supreme Court vacated the first decision, the Federal Circuit reversed the district court’s judgment and reinstated the jury’s verdict against Limelight. The court found that Limelight was liable under the new test for divided infringement because there was substantial evidence that Limelight had directed and controlled its customers’ acts. Limelight had conditioned its customers’ use of Limelight’s service on the customers’ proper performance of tagging and serving, and had set forth the manner and timing of its customers’ performance of these steps. These actions satisfied the court’s new test, in which a party can be held to direct or control another’s performance if it conditions participation or receipt of a benefit upon performance of a step of the patented method and also sets forth the manner or timing of the performance. Because Limelight was held to direct or control the acts of its customers, even if Limelight itself did not perform these two steps, the steps were attributable to Limelight. Because all of the steps of the claimed method were either performed by Limelight itself or attributable to Limelight, Limelight was liable for directly infringing Akamai’s patent.

This case provides a new basis for plaintiffs in divided infringement cases to prove liability among multiple actors performing a method claim. The case is also a warning to businesses who believe they are immune from patent infringement because they only perform some of the steps of a claimed method – liability may arise if another party performs the remaining steps.

Companies and employers around the country seek to protect their intellectual property by, among other things, using non-compete provisions in employment agreements. Generally, these provisions are intended to prevent an employee from soliciting or doing business with a former employer’s customer/clients over a set period of time and/or in regard to a set geographical area. Under California law, and specifically Business and Professions Code section 16600, such provisions are unenforceable unless they fall within one of the statutory exceptions, i.e., primarily in connection with the sale of a business interest. For years, although California state courts would refuse to enforce such provisions under section 16600, federal courts in California sometimes applied a narrow court-created exception and allow such provisions to be enforced provided that they were narrowly tailored as to time and geographical area. In 2008, the California Supreme Court unequivocally ruled that such provisions were unenforceable under section 16600 and rejected the “narrowly restricted” exception used by federal courts. (See Edwards v. Arthur Andersen, LP, 44 Cal.4th 937 (2008).)

In response to the Edwards decision, many California companies and employers began to omit such provisions from their new employment agreements or re-write them with specific language restricting an employee from using trade secret information to unfairly compete. However, other companies and employers left their old agreements untouched and in place thinking merely that they would not enforce them should the need arise. A recent court decision, Couch v. Morgan Stanley & Co., Inc. (E.D. Cal. Aug. 7, 2015), reveals the risk an employer or company faces in failing to update their older employment agreements to remove or revise such provisions.

In Couch, plaintiff was employed as a financial adviser for Morgan Stanley Smith Barney from September 2007 until January 2013. At the time of his hire in 2007, he signed an employment agreement that included a provision that he would not solicit customers of Morgan Stanley for one year following the termination of his employment. Although the employment agreement was signed in 2007, Morgan Stanley never updated this particular agreement with plaintiff following the California Supreme Court’s decision in the Edwards case in 2008.

During his employment, plaintiff held and ran for various elected offices. In 2012, he ran for and was elected to a seat on the Kern County Board of Supervisors. Given the time commitments such a position entailed, Morgan Stanley asked plaintiff to choose between serving on the Board or continuing as a financial adviser with the firm. After plaintiff indicated his unwillingness to resign his supervisor seat, Morgan Stanley terminated his employment.

In January 2014, plaintiff filed suit against Morgan Stanley and alleged various claims relating to his termination as well as two claims for interference with prospective economic relations. Plaintiff claimed, among other things, that the inclusion of the non-compete provision in his employment agreement by Morgan Stanley disrupted his potential economic relations with customers following the termination of his employment.

Morgan Stanley moved for summary judgment as to these intentional interference claims and raised a number of arguments. Morgan Stanley argued that plaintiff’s intentional interference claims should fail because: (1) the non-compete provision in the employment agreement was legal under then existing law in 2007; and (2) given that it had never sought to enforce the provision, it had not engaged in any conduct to interfere with plaintiff’s prospective economic relations. The district court rejected both of these contentions.

First, the Court recognized that while the non-compete provision may have been legal under pre-2007 Ninth Circuit case law, Morgan Stanley did not dispute that such provisions had become unlawful after the California Supreme Court’s decision in Edwards. The Court recognized that the California Supreme Court in Edwards specifically ruled that the Ninth Circuit’s “narrow restraint exception” was rejected and that any non-compete was unlawful unless it fell within one of the narrow statutory exceptions to section 16600. The Court continued by noting that neither it nor Morgan Stanley could find any legal authority for the proposition that a non-compete provision entered into before the Edwards decision “remains lawful even though it is unlawful post-Edwards.”

Next, the Court turned to Morgan Stanley’s argument that it had never sought to enforce the non-compete provision. The Court concluded that whether or not Morgan Stanley had ever sought to enforce its provisions was irrelevant. The Court reasoned that California state court cases had repeatedly held (especially post-Edwards) that non-compete provisions are “void and unenforceable under section 16600 and … their use violates section 17200 [of the Business and Professions Code].” Thus, the Court noted that the mere use of an unlawful non-compete provision in an employment agreement constitutes an unfair business practice under section 17200 and could supply the “wrongful act” requirement for an interference claim.

Luckily for Morgan Stanley, the Court granted judgment in its favor after finding that plaintiff could not establish that the inclusion of the non-compete provision in his employment agreement had caused him any damage. It therefore dismissed these claims against Morgan Stanley. Nevertheless, the Court’s reasoning concerning the “use” of such provisions should give companies and employers in California pause. To the extent employers and companies have elected not to revisit their older employment agreements to either delete or revise non-compete provisions, they are at risk of facing unfair business practices claims as well as other potential claims such as interference with prospective economic relations. Companies and employers in California are encouraged to review their older employment agreements to ensure they comply with current California law.

In the bustling craft brew economy brewers are faced with new issues every day. One that recently came to my attention arises when the craft brewery’s brewmaster or head brewer decides to either start his own craft brewery, or go to work for another brewery. While this may not initially seem like a big deal, it gets much more complicated when that brewmaster or brewer is responsible for the creation of your flagship brew. The question arises: who owns the intellectual property rights to that brew? Of course, the brewery is going to say that they have been selling, distributing, and promoting the brew, so it must be theirs. On the other hand, the brewer is going to say that he created it, so it must be his. The truth is that determining who owns the intellectual property rights to the brew formula can get quite complicated, encompassing numerous factors. But it does not have to be.

With a booming industry such as craft brew, it is imperative that the appropriate precautions be taken to protect the craft brewery’s most lucrative asset: the beer itself. In order to protect a brew formula from being taken from your company and utilized by a competitor when one of your brewers, the creator of the formula or not, leaves the company, the formula must be treated as a trade secret. The California Uniform Trade Secrets Act (“UTSA”) defines a trade secret as:

information, including a formula, pattern, compilation, program, device, method, or technique, or process, that:

(1) derives independent economic value, actual or potential, from not being generally known to the public, or to other persons who can obtain economic value from its disclosure or use; and

(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

A brew formula easily fits under the UTSA’s definition of a trade secret. It is obviously a formula that derives its independent economic value from not being generally known to others. Simply stated, the formula is valuable because it is not being duplicated by your competitors. If it was, no one would care if they were drinking Stone IPA or PBR. So the formula alone satisfies the first prong of the UTSA’s test for trade secrets, but the second prong can only be satisfied by the brewery itself. It is the responsibility of the brewery to exercise reasonable efforts to maintain its secrecy. What this means is that you cannot post the formula for your brews on the wall of the taproom, or have articles on your website demonstrating how to replicate your brews. And you definitely cannot invite consumers into your brewery to learn how to make your brews. If you do that, trade secret protection is gone. However, absent such actions, and a requirement that all employees execute a non-disclosure agreement promising not to disclose any of the company’s trade secret or proprietary information, it should be relatively easy to obtain trade secret protection.

This leaves the brewer with one last problem protecting its formulas in the hypothetical described above: the ownership of the formula is disputed. Again, this could be quite complicated if there are no preventive measures taken in the situation. There would likely be a multi-factor analysis concerning whose resources were used, when the formula was developed, and other things of that sort. But with the proper agreements in place, it will be clear that the brewery owns the intellectual property rights. In most technology and science based companies, the employees and independent contractors are required to execute employment contracts requiring assignment of the employee’s invention rights. In plain English, this means that after signing such an agreement, any invention created by the employee, including beer formulas, in the scope of his or her employment, and/or utilizing the resources of the company, belongs to the company—not the individual. This instantly clears up the hypothetical posed above absent some exceptional circumstances that exceed the scope of this article. This, however, would not necessarily cover the situation where the brewer creates the brew prior to joining your brewery, but that would simply require an assignment of the intellectual property rights therein. Once that is taken care of, the brew becomes the intellectual property of the company and subject to the UTSA protections discussed above.

Although I have discussed this process as simple and straightforward, it should be left to the care of legal professionals. Again, the intellectual property rights to a brewery’s flagship brew may be its most valuable asset. If that asset was lost, there may not be anything to separate that brewery from the others. So it is of the utmost importance that appropriate measures be taken to ensure that these rights are protected. It may seem unnecessary now, but no one should wait until they have become a cautionary tale.

Patents covering software for use in the financial industry are increasingly being invalidated by the courts. Because of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), district courts are holding these patents invalid on the grounds that they are unpatentable abstract ideas, and the Federal Circuit Court of Appeals is affirming the district courts’ decisions.

Patents may cover one of four statutory categories of inventions: (1) machines; (2) articles of manufacture; (3) processes; and (4) compositions of matter. 35.U.S.C. §101. These types of inventions are called “patent-eligible subject matter.” The longstanding exceptions to these four categories are: natural phenomena, laws of nature, and abstract ideas. These types of inventions are called “patent-ineligible subject matter.”

In Alice Corp., the Supreme Court established a two-part test to determine the patentability of claims directed to patent-ineligible subject matter. The first step is to decide whether the claims in the patent are directed to patent ineligible subject matter, such as an abstract idea. If so, the second step is to determine whether the elements of the claim transform the abstract idea into a patent-eligible application.

Two recent cases illustrate the trend. In both cases, the claims covered software for use in the financial industry, as was true of the claims invalidated in Alice Corp.

In OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015), the district court for the Northern District of California granted Amazon’s motion to dismiss OIP’s complaint on the grounds that OIP’s patent was directed to a patent-ineligible abstract idea. OIP’s patent covered a method for pricing a product for sale, using “offer-based price optimization.” In affirming the district court’s decision, the Federal Circuit held that the patent was invalid under the Alice Corp. test. The first step of the test was met because the claims were directed to a patent-ineligible abstract idea (offer-based price optimization). The second step of the test was met because the elements of the claims did not transform the claims into a patent-eligible application. The court stated that the claims “merely recite ‘well-understood, routine conventional activities,’ either by requiring conventional computer activities or routine data-gathering.” The court emphasized at 1093, that:

“At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.

But relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.

These processes are well-understood, routine, conventional data-gathering activities that do not make the claims patent eligible.“

In Intellectual Ventures I LLC v. Capital One Bank, 2015 U.S. App. LEXIS 11537, the district court for the Eastern District of Virginia granted the defendant’s motion for summary judgment of invalidity of two patents. One patent covered methods of budgeting, including tracking and comparing a user’s purchase information to their budget. The other patent covered a method in which web page content was customized for the user based on the user’s prior Internet usage. The Federal Circuit affirmed the district court’s grant of summary judgment. As to the budgeting method patent, the court held that budgeting is clearly an abstract idea and that the other elements of the claim were generic computer elements which did not make the claims patentable. The court explained, at *11:

“[T]he budgeting calculations at issue here are unpatentable because they ‘could still be made using a pencil and paper’ with a simple notification device.”

As to the web page patent, the court found that the concept of tailoring information to the user is an “abstract, overly-broad concept, long practiced in our society” and that “merely adding computer functionality to increase the speed or efficiency of the process does confirm patent eligibility . . .”

These two cases are not unusual. In fact, they are becoming routine. Financial industry patents face serious problems. Because of Alice Corp., they are more difficult to obtain than patents for other types of inventions and they are much less likely to survive challenge.

By: Intellectual Property Group

Michael Jordan is considered by many to be the greatest basketball player of all time. Beyond his five MVP trophies and six NBA championship rings, however Jordan also was the one of the most widely marketed athletic personalities in history. His name and image ultimately became iconic when Nike developed a new type of basketball shoe named “Air Jordan,” marked with the “Jumpman” logo – a silhouetted image of Jordan in mid-flight on his way to delivering a one-handed slam dunk.

Jordan’s fame knows almost no boundaries. He and former Houston Rockets star Yao Ming are the most popular international basketball stars in China, where Jordan is known as “Qiaodan.” Not surprisingly, and in the marked absence of any “Air Ming” footwear, Air Qiaodan sneakers have become popular in China. “Air Qiaodan” products are not endorsed or backed by Michael Jordan, rather they are manufactured and distributed by Qiaodan Sports Co. Beyond merely using Jordan’s Chinese name, Qiaodan’s products carry a logo closely resembling the “Jumpman” used on Nike’s “Air Jordan” products.

Believing that Qiaodan’s actions were causing confusion among Chinese consumers by misleading them into believing that Qiaodan Sports Co. was affiliated with His Airness, Jordan sought to cancel Qiaodan’s trademark. The Chinese lower courts refused to cancel Qiaodan’s trademarks, and the case was appealed to the Beijing Higher People’s Court. The Beijing Higher People’s Court has now ruled against Jordan.

The court noted that “’Jordan’ is not the only possible reference for ‘Qiaodan’ in the trademark under dispute.” The court also commented that “’Jordan’ is a common surname used by Americans.” Explaining its decision regarding Qiaodan’s use of the Jumpman logo, the court reasoned that the logo is in the shape of a person with no facial features, so therefore it is difficult for consumers to identify the Jumpman as Michael Jordan. The court therefore concluded that there was insufficient evidence to prove the Qiaodan trademark referred to Michael Jordan or otherwise caused confusion among consumers.

While the Higher People’s Court’s ruling seems to be the outcome of a decision in search of an analysis, it should come as no surprise. China frequently reinforces its reputation of being a sanctuary for producers of counterfeit goods by failing to enforce international intellectual property rights.

Pending before the 9th Circuit is a case which may change the landscape for online copyright protection. The case, Lenz v. Universal, may make it more difficult for copyright owners to protect against infringement in today’s environment of hyper infringement. Defenders of Lenz argue that this case represents the quest for a legitimate balance between overzealous copyright enforcement and legitimate, non-infringing use.

The facts of Lenz are fairly simple. Lenz posted to YouTube a very short video of her young child dancing to a Prince song playing in the background. At the time, Universal Music Publishing was managing Prince’s music publishing. An attorney at Universal manually reviewed the posting but acknowledged that he did not consider whether the Lenz video was fair use. Universal sent a DMCA takedown notice to YouTube and YouTube removed access to the video. Most normal takedown situations end there; however, Lenz was upset and, after trying and failing to remedy the situation herself, sought the aid of attorneys at the Electronic Frontier Foundation.

The DMCA was enacted in 1999 as an attempt by Congress to stem the tide of rampant online copyright infringement. The DMCA offered copyright owners a streamlined process for taking down from the Internet allegedly infringing material and online service providers had great incentive to follow the process laid out in the DMCA; to not do so opened one up to potential secondary liability for their users’ activities. Congress included a requirement that the allegation of infringement in a takedown notice include a statement that the sender had a good faith belief that the posting of the allegedly infringing content was not authorized by law. Specifically, Section 512(c)(3)(A)(v) requires a takedown notice to include “[a] statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.”

Congress also included in the statute a prohibition against making a misrepresentation in a takedown notice. Section 512(f) provides:

(f) Misrepresentations — Any person who knowingly materially misrepresents under this section—

(1) that material or activity is infringing, or

(2) that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.

Lenz contends that Universal violated Section 512(f) when it failed to consider fair use prior to sending the takedown notice. The court made clear earlier in the case that fair use is a use authorized by law and a copyright owner must consider fair use before proceeding with a takedown notice under the DMCA. Universal acknowledged that while it considered other factors that are relevant to a fair use analysis, it did not engage in a fair use analysis per se. Is this sufficient to impose Section 512(f) liability on Universal? Lenz argues that it is. Lenz argues that her post was clearly fair use and that Universal’s failure to consider fair use was willful blindness. Universal argues that it is not. Universal argues that its failure to engage in a fair use analysis when it was unaware that such analysis was required is not a “knowing” misrepresentation and points to 9th Circuit precedent which holds that the good faith requirement in § 512(c)(3)(A)(v) is to be evaluated according to a subjective standard.

Whether or not Universal’s lack of actual knowledge that it should perform an initial fair use assessment before sending a takedown notice allows it to escape liability under Section 512(f) is just one issue at the center of the appeal. Another issue being pressed by Universal is whether, and to what degree, a copyright owner must engage in a fair use analysis before sending a takedown notice. The determination of this issue will have ramifications on the ability of all content owners to police online infringement.

At oral argument before the 9th Circuit on July 7, 2015, Universal argued that the DMCA takedown system “simply can’t function” if owners need to engage in a fact intensive fair use analysis prior to sending a takedown notice. “Is that an argument you should be making to Congress?” U.S. Circuit Judge Mary H. Murguia asked. “The plain text, a reading of it, says that fair use should, or could be, and likely needs to be, considered.”

The court acknowledged that such a requirement would impose a greater challenge on a copyright owner’s ability to police online infringement. In questioning Lenz’s attorney, the court asked “Doesn’t [the fact that millions of DMCA takedown notices are filed each year, and only a fraction of a percent of them are later disputed by the targeted users] suggest that copyright infringement is rampant all over the Internet and that what you’re asking for here is a clarification or an interpretation of the law that will make it more onerous on the copyright owners to get these takedowns accomplished against people who are truly infringing their copyright?”

In general, any appeal from a civil action involving claims of patent infringement must be made to the Federal Circuit in Washington, D.C. A recent case from the Ninth Circuit, Amity Rubberized Pen Company v. Market Quest Group, illustrates this principle as well as demonstrating the practical measures an appellate court will take to help an appeal survive.

In Amity Rubberized Pen Co., Amity held a patent for a device that dispensed both toothpicks and tablets such as breath mints. In 2006, Amity sued Market Quest Group alleging infringement of its patent and brought various other federal and state law claims. Counsel for Amity withdrew from the case during trial and the court declared a mistrial and ordered that Amity substitute in new counsel. It also awarded Market Quest its attorney’s fees and costs for the mistrial and warned Amity that it would dismiss the case if it failed to pay. Amity did not pay the fees and in 2010, the Court dismissed the case with prejudice.

Approximately three years later, in 2013, Amity filed a new lawsuit against Market Quest alleging similar claims as the previous action, including claims for patent infringement. Market Quest filed a motion to dismiss the lawsuit on the grounds of res judicata, arguing that the present actin was barred by the dismissal with prejudice of similar claims three years earlier. The District Court agreed and dismissed the 2013 lawsuit. Amity appealed this dismissal to the Ninth Circuit Court of Appeals instead of to the Federal Circuit.

The Ninth Circuit concluded that it lacked jurisdiction to hear Amity’s appeal. The Court recognized that generally it had appellate jurisdiction over appeals emanating “from the United States District Courts within the geographical boundaries of the Circuit.” The Court recognized, however, that this jurisdiction was not absolute in that Congress had granted the Federal Circuit “exclusive jurisdiction … of an appeal from a final decision of a district court of the United States … in any civil action arising under … any act of Congress relating to patents.” Although the dismissal was premised on the common law doctrine of res judicata, the Ninth Circuit recognized that “a case arises under the patent laws where `a well pleaded complaint establishes … that federal patent law creates the cause of action.’” Here, Amity had asserted a claim for patent infringement in the 2013 lawsuit against Market Quest thereby triggering the Federal Circuit’s appellate jurisdiction. Given this, the Ninth Circuit lacked the jurisdiction to determine the merits of Amity’s appeal.

However, rather than dismiss the appeal which, depending on certain timing issues would likely have barred Amity from refiling the appeal in the Federal Circuit, the Ninth Circuit decided to order that the appeal be transferred to the Federal Circuit. In reliance on 28 U.S.C. section 1631, the Ninth Circuit concluded that it had the authority to transfer the appeal to a federal court of competent jurisdiction provided: “(1) the Court to which the appeal is to be transferred would have had jurisdiction at the time the appeal was filed; and (2) transfer is `in the interest of justice’.” The Ninth Circuit also recognized that it could order the transfer of the appeal on its own without Amity filing a motion for such transfer.

In applying the two prong test, the Ninth Circuit concluded that the Federal Circuit had original jurisdiction over the appeal at the time it was mistakenly filed in the Ninth Circuit. This was because 28 U.S.C. section 1295 gives the Federal Circuit exclusive appellate jurisdiction over patent infringement claims. The Ninth Circuit then turned to whether a transfer of the appeal would be “in the interest of justice” finding this a more complex issue.

The Ninth Circuit recognized that it had taken a broad view of when a transfer would be appropriate, having previously held a “transfer will be in the interest of justice because normally dismissal of an action that could be brought elsewhere is ‘time consuming and just as defeating’.” The Ninth Circuit had also recognized that transfer is often times a suitable remedy so as not to penalize a party for “an honest procedural mistake.” The Court continued that a transfer should be ordered “where … the plaintiffs appear to have been `unaware of or confused about the proper forum in which to file [their] action’ as well as having held that it was in the interest of justice to transfer a case `when the time period has elapsed to file in the appropriate court’.” Finally, the Ninth Circuit recognized that it had rarely held that it would not be in the interest of justice to order the transfer of a case to another court. Thus, unless the matter to be transferred “is frivolous or was filed in bad faith,” the Ninth Circuit concluded that it would be in the interest of justice to transfer the case to the Federal Circuit rather than dismissing the appeal.

The Amity decision is a reminder to counsel in litigating patent infringement claims that any appeal from an unfavorable ruling must be made to the Federal Circuit. However, at least in the Ninth Circuit, there does not appear to be the likelihood of the severe penalty of dismissal should counsel mistakenly appeal to the wrong court.

Unless you have been living under a rock for the last week, you know who Carli Lloyd is. If, however, you do not, she is the reigning World Cup MVP for Team USA. On Sunday, in perhaps the most astonishing World Cup performance of all time, Lloyd scored a hat trick in just the 16^th minute of the game, and propelled Team USA to its third Women’s World Cup championship. You may be wondering, how is this related to intellectual property, and I promise you, I am getting there.

After Lloyd scored her second goal in the first five minutes of Sunday’s World Cup final, her official website’s server crashed because it was getting so much traffic. Just eleven minutes later, Lloyd scored her third goal and transitioned into a household name. During the game alone, Lloyd gained 50,000 Twitter followers. By now, the connection between this article and intellectual property may be evident: Lloyd’s spike in popularity also caused a spike in the value of her likeness.

Merriam-Webster’s Dictionary defines likeness as (1) a picture of a person; or (2) the quality or state of being alike or similar especially in appearance. California law provides that the appropriation of a person’s name, voice, signature, photograph, or likeness for a commercial use is actionable. Thus, a celebrity is entitled to control the use of their likeness in the commercial context to their financial gain if they so desire. Simply put, Lloyd’s hat trick may have not just cemented her spot in World Cup history, but also greatly increased her wealth.

According to ESPN.com, an autographed card of Lloyd closed out during the game for $177.50, and another card closed out after the game for $218. Prior to the World Cup, Lloyd’s autographed cards sold for $15 to $20. Further, ESPN confirmed that personal appearances by Lloyd would now cost approximately $30,000 for two hours, which was up from $10,000 since the first round of the World Cup, and $15,000 since the U.S. beat Germany in the semifinals.

Prior to this year’s World Cup, Lloyd did not have many endorsement deals aside from Nike and Usana Health Sciences. However, as of last week, she closed a deal to represent Visa through the 2016 Olympics. As you may expect, there will be no shortage of endorsement deals for the superstar now. According to her agent, Josh Weil of William Morris Endeavor, Lloyd is in negotiations with an automobile company and a watch company. Weil said he would like to obtain a deal for Lloyd with a company like AT&T or McDonalds. However, his client has insisted that he put an emphasis on obtaining a deal in the nutrition and training industry. According to Weil, “food, wealth and wellness, is what she is always focused on.” My general inclination is that Lloyd will have no problem obtaining such a deal.

Of course the take away here is simple: score a hat trick in the World Cup Finals, and you too, can get mega endorsement deals. Okay, maybe that isn’t realistic, but what we can all take away from this example is that intellectual property rights can be highly lucrative. As such, corners should not be cut inadequately protecting them through all avenues provided by the law.