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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.

Are you telling new hires and those currently employed all that you are required to tell them?  Below is a link to the Department of Labor Standards Enforcement Notice to Employee form which employers may use to fulfill their obligations under Wage Theft Protection Act that passed several years ago.  Click here to view the form.

That section requires that the employer notify the employees in writing of any changes to the information set forth in the written notice within seven calendar days after the time of the change unless one of the following applies:  (a) all changes are reflected in a timely wage statement furnished in accordance with Labor Code section 226; or (b) notice of all changes is provided in another writing required by law within seven days of the changes.

North Jersey Media Group Inc. is the copyright owner of the iconic photograph of three firefighters raising an American flag at the ruins of the World Trade Center on September 11, 2001. On September 11, 2013, a Fox News producer posted a photograph that juxtaposed the 9/11 photograph with a World War II photograph of four U.S. Marines raising an American flag on Iwo Jima on the Facebook page for the Fox News’ television program Justice with Judge Jeanine. North Jersey Media Group sued Fox, claiming that the posting of the combined image infringed its copyright. Fox news argued that the use was protected “fair use” and moved for summary judgment. The court denied Fox’s motion and Fox is now appealing to the 2nd Circuit.

Fox’s appeal centers around the lower court’s analysis of the first fair use factor: the purpose and character of the use. The purpose of this factor is to test whether the allegedly infringing work is “transformative.” A work is transformative when it adds something new to the work allegedly infringed, with a further purpose or different character, altering the original work with new expression, meaning, or message. A work is transformative if it does something more than repackage or republish the original copyrighted work. A transformative work is one that serves a new and different function from the original work and is not a substitute for it. As the Supreme Court noted in Campbell v. Acuff-Rose Music, Inc., “the more transformative the new work, the less will be the significance of other factors, … that may weigh against a finding of fair use.”

Although acknowledging that Fox News did alter the image and message of the original work, the lower court noted that it did so “only minimally”. The lower court stated that it could not conclude as a matter of law that the physical alterations made to the original photograph transformed the new work sufficiently to merit protection as fair use.

Fox believes the lower court’s focus on physical alteration to the original image was incorrect and that the court should have considered the other aspects of Fox’s use. Namely, Fox contends that in analyzing the transformative nature of its use, the lower court should have considered the use of the photo as having been used “in an inherently transformative context: on social media.” Fox argues that “[e]xpression on social media, and on Facebook in particular, is inherently intertwined with “comment” and “criticism,” purposes that the Copyright Act sets forth as presumptively fair” since “[e]very post is an invitation for others to comment and criticize…”

Fox argues that the lower court failed to recognize the applicability Bill Graham Archives v. Dorling Kindersley Ltd. In that case the 2nd Circuit held that a publisher’s use of an old concert poster in a “coffee table” book documenting the history of the Grateful Dead was fair use. In finding the use to be “transformative,” the court focused on the context of the publishers use – use for a biographical purpose – as opposed to the concert promoter’s use, Fox contends that the lower court relied on case law such as Cariou v. Prince and Blanch v. Koons which based transformativeness on physical alterations of the original work. The apparent conflict between the Bill Graham and the Cariou modes of analysis, Fox argues, make appellate review appropriate.

Fox argues that a context-sensitive test for transformativeness must consider that “Facebook and other social media sites are by design used for purposes of “comment” and “criticism,” and such a test will inevitably favor uses on social media.” It seems that Fox is arguing that publication of a work on social media is transformative in and of itself. Does this argument go too far; this author thinks that it does. However, there is merit to Fox’s argument that the lower court focused solely on the physical alterations to the image and failed to consider whether the context of Fox’s use was transformative.

The United State Supreme Court issued its much anticipated decision in the case of Young v. UPS on March 24, 2015.  As of now, Young’s pregnancy discrimination claim remains alive and well.

Below is a summary of the court’s ruling:

Factual and Procedural Background.

Young was a part-time driver for UPS. When she became pregnant, her doctor advised her that she should not lift more than 20 pounds. UPS, however, re­quired drivers like Young to be able to lift up to 70 pounds. UPS told Young that she could not work while under a lifting restriction. Young subsequently filed a lawsuit under the federal Pregnancy Discrimination Act (the “Act”), claiming that UPS act­ed unlawfully in refusing to accommodate her pregnancy-related lift­ing restriction. She brought only a disparate-treatment (intentional) claim of dis­crimination, which a plaintiff can prove either by direct evidence that a workplace policy, practice, or decision relies expressly on a protect­ed characteristic, or by using the burden-shifting framework set forth in the case of McDonnell Douglas Corp. v. Green. Under the McDonnell Douglas framework, the plaintiff has “the initial burden” of “establishing a prima facie case” of discrimination.  If she carries her burden, the employer must have an opportunity “to articulate some legitimate, non-discriminatory reason[s] for” the difference in treatment.  If the employer articulates such reasons, the burden shifts back to the plaintiff who has “an opportunity to prove by a preponderance of the evidence that the reasons . . . were a pretext for discrimination.” (cites omitted)

UPS filed a summary judgment motion in the District Court. In reply, Young presented several favorable facts that she believed she could prove. In particular, she pointed to UPS policies that accommodated work­ers who had lifting restrictions similar to hers because they were either injured on the job or had disabilities covered by the Amer­icans with Disabilities Act   (ADA).  UPS policies also accommodated employees who couldn’t drive at all because they had lost Department of Transportation (DOT) certifications. Young argued that these policies showed that UPS discriminated against its pregnant employees because it had a light-duty-for-injury policy for numerous “other persons,” but not for pregnant workers. UPS responded that, since Young did not fall within the on-the-job injury, ADA, or DOT categories, it had not discriminated against Young on the basis of pregnancy, but had treated her just as it treated all “other relevant persons.”

The District Court granted UPS summary judgment, concluding, inter alia, that Young could not make out a prima facie case of dis­crimination under McDonnell Douglas. The court found that those with whom Young had compared herself—those falling within the on-the-job, DOT, or ADA categories—were too different to qualify as “similarly situated comparator[s].” The Fourth Circuit affirmed the District Court’s ruling and upheld summary judgment for UPS.

Supreme Court’s Review and Decision.

Young claimed that under the Act, as long as “an employer accommodates only a subset of workers with disabling conditions,” “pregnant work­ers who are similar in the ability to work [must] receive the same treatment even if still other non-pregnant workers do not receive accommodations.” The Fourth Circuit disagreed and said that it doubts that Congress intended to grant pregnant workers an unconditional “most-favored-nation” status, such that employers who provide one or two workers with an accommodation must provide similar accommodations to all pregnant workers, irre­spective of any other criteria. According to the Fourth Circuit, the second clause of the Act, when referring to non-pregnant persons with similar disabilities, uses the open-ended term “other persons.” It does not say that the em­ployer must treat pregnant employees the “same” as “any other per­sons” who are similar in their ability or inability to work, nor does it specify the particular “other persons” Congress had in mind as ap­propriate comparators for pregnant workers. Moreover, the Fourth Circuit said that disparate-treatment law normally allows an employer to implement policies that are not intended to harm members of a protected class, even if their implementation sometimes harms those members, as long as the employer has a legitimate, nondiscriminatory, non pretextual rea­son for doing so and there is no reason to think Congress intended its language in the Act to deviate from that approach.

UPS claimed that the Act’s second clause simply defines sex discrimination to include pregnancy discrimination.  But according to the U.S. Supreme Court that cannot be right, as the first clause of the Act accomplishes that objective. Reading the Act’s second clause as UPS proposed would render the first clause superfluous. According to the high Court, an individual pregnant worker who seeks to show disparate treatment may make out a prima facie case under the McDonnell Douglas framework by showing that she belongs to the protected class, that she sought accommodation, that the employer did not ac­commodate her, and that the employer did accommodate others “sim­ilar in their ability or inability to work.” The employer may then seek to justify its refusal to accommodate the plaintiff by relying on “legitimate, nondiscriminatory” reasons for denying accommodation.  That reason normally cannot consist simply of a claim that it is more expensive or less convenient to add pregnant women to the category of those whom the employer accommodates. If the employer offers a “legitimate, nondiscriminatory” reason, the plaintiff may show that it is in fact pretextual. The plaintiff may reach a jury on this issue by providing sufficient evidence that the employer’s policies impose a significant burden on pregnant workers, and that the employer’s “le­gitimate, nondiscriminatory” reasons are not sufficiently strong to justify the burden, but rather—when considered along with the bur­den imposed—give rise to an inference of intentional discrimination.  The plaintiff can create a genuine issue of material fact as to whether a significant burden exists by providing evidence that the employer accommodates a large percentage of non-pregnant workers while fail­ing to accommodate a large percentage of pregnant workers.  According to the Supreme Court, this approach is consistent with the longstanding rule that a plaintiff can use circumstantial proof to rebut an employer’s apparently legiti­mate, nondiscriminatory reasons.

Ultimately, the Supreme Court held that the record shows that Young created a genuine dispute as to whether UPS provided more favorable treatment to at least some employees whose situation cannot reasonably be distin­guished from hers, and found that it is left to the Fourth Circuit to determine on remand whether Young also created a genuine issue of material fact as to whether UPS’ reasons for having treated Young less favorably than these other non-pregnant employees were pretext for pregnancy discrimination.

Takeaway:  Employers should review their accommodation and light-duty policies to ensure that they do not discriminate against employees based on a protected class, including pregnancy.

Since his death in 1981, reggae superstar Bob Marley and his “image” continue to be broadly popular and command millions of dollars each year in merchandising revenue. His children own an entity called Fifth Six Hope Road, Music, Ltd. which was formed to acquire and exploit the assets, rights and commercial interests of their late father. In 1999, Hope Road granted Zion Rootswear, LLC, an exclusive license with regard to the use of Bob Marley’s image on various clothing and other merchandise.

After discovering that several companies had been selling t-shirts and other merchandise with the image of Bob Marley on them, Hope Road and Zion brought a lawsuit against them and included a claim for “false endorsement” under 15 USC §1125(a). (This article does not address the other claims pursued in this lawsuit.)

After trial, a jury found that the Defendants were liable under a false endorsement theory and awarded Plaintiffs almost $800,000 in damages plus their attorney’s fees of approximately $1.5 million. The Defendants appealed the decision to the Ninth Circuit arguing that there was not sufficient evidence to support a finding against them and that Plaintiffs’ use of the false endorsement claim under 15 USC §1125 effectively created a federal “right of privacy,” which Congress had not intended.

The primary issue facing the Ninth Circuit in the case Fifty Six Hope Road, Ltd., et al. v. A.V.E.A., Inc., et al. was “when does the use of the celebrity’s likeness or persona in connection with a product constitute false endorsement that is actionable under the Lanham Act.” The Court began by looking at the text of section 1125(a) which provides in relevant part, “any person who, on or in connection with any goods … uses in commerce any … name, symbol or device or any combination thereof … which … is likely to cause confusion or to cause mistake or to deceive as to … the origin, sponsorship or approval of his or her goods … by another person … shall be liable in a civil action by any person” who has been damaged.

The Defendants first argued that a celebrity’s “persona” was too “amorphous” to constitute a “name, symbol or device” under section 1125(a) to allege a Lanham Act violation. The Ninth Circuit rejected this and found that it had long been recognized that “a celebrity whose endorsement of a product is implied through the imitation of a distinctive attribute of the celebrity’s identity” can sue for such a violation. Given that the Defendants were appealing post-verdict, the Ninth Circuit was bound to construe the evidence in a light most favorable to plaintiffs given that they had won at trial.

The Ninth Circuit began by focusing on the “likelihood of confusion” inquiry which asks “whether a reasonably prudent consumer in the marketplace is likely to be confused” with regard to the goods bearing the marks at issue. In a celebrity case such as this one, the Court ordinarily uses an eight factor test to determine the likelihood of confusion: (1) the celebrity’s level of recognition in the intended market; (2) the link between the celebrity’s fame or success and the defendant’s product; (3) the similarity of the likeness used by defendant’s product to the celebrity; (4) evidence of actual confusion; (5) the marketing channels used by plaintiffs and defendants; (6) the degree of care exercised by the likely purchaser; (7) the intent by defendant to use the celebrity’s likeness; and (8) the likelihood of expansion of product lines. Given that the lawsuit was not brought by Bob Marley, the Court must also consider an additional factor concerning the strength of association of the mark and the Plaintiff. In analyzing these factors, the Ninth Circuit found that it could not conclude as a matter of law that the jury erred in finding a Lanham Act violation for false endorsement.

Factors 1-3. The Ninth Circuit found that evidence on these first three factors was essentially undisputed. Bob Marley’s image had a high level of recognition in the target market and had long been associated with clothing merchandise. In fact, while he was alive Bob Marley sold his own merchandise bearing his image and his heirs continued to do so following his passing. Furthermore, it was undisputed that Defendants were using photos of him on their merchandise.

Factor No. 4. Defendants’ primary argument was on the fourth factor that there was insufficient evidence of actual confusion. In proving their case, Plaintiffs provided data from a survey of interviews they conducted with two groups of people, those who were shown Defendants’ merchandise bearing Bob Marley’s image and a control group who were shown a t-shirt bearing the image of an unknown African American man with dreadlocks. Almost twice as many people in the first group responded that Bob Marley (or his heirs) had granted permission for the t-shirt to be sold as compared to the other group. The Ninth Circuit found that this bore some evidence of actual confusion. To the extent the Defendants contended that there were problems with the data or the survey process, this would have gone the survey’s probative value. Furthermore, the Ninth Circuit noted that while evidence of actual confusion is relevant to likelihood of confusion, it is not required in a false endorsement claim.

Factor No. 5. Plaintiffs produced evidence at trial that showed that Defendants had marketed their products in the same retail stores as Plaintiffs’ and their licensees.

Factor No. 6. The Court again found that Plaintiffs had produced sufficient evidence as to the low degree of purchaser care. In fact, Defendants’ representatives testified that given the cost of their merchandise between $7 and $15, the products were not generally expensive and were typically “a good value” and “an impulse purchase.” Defendants could not dispute the well standing legal principle “that low prices imply correspondingly low consumer care” when purchasing a certain product.

Factor No. 7. Here, the Ninth Circuit clarified that Plaintiffs were not required to prove that the Defendants knew that their actions were unlawful but only that “they intended to `confuse’ consumers concerning the endorsement of their products”. To satisfy this burden, Plaintiffs offered evidence that demonstrated that Defendants’ t-shirts contained a nearly identical photograph of Bob Marley with similar Rastifarian green, yellow and red stripes on a black t-shirt. The Court held that a reasonable jury could “infer that [Defendants] sought to associate their product with Plaintiffs by intentionally creating similar merchandise.”

None of the parties addressed the eight factor of likelihood of expanding product line and so the Court turned to the additional factor as to the association between Bob Marley and the Plaintiffs. The Court found that there was sufficient link here because Bob Marley himself sold merchandise bearing his image during his lifetime and his successors had continued to do so after his passing. Furthermore, over the years, Plaintiffs have actively prosecuted similar claims of improper uses of Bob Marley’s likeness and there was testimony offered that even Defendants were aware that Hope Road and Zion held the license to Bob Marley’s image based on “market knowledge.” Thus, the Ninth Circuit concluded that the jury properly found that there was a likelihood of confusion as to Bob Marley’s “endorsement” of Defendants’ products.

Defendants also argued that the claim for a false endorsement should fail because Bob Marley’s image had not been used to endorse some other product. The Court rejected this argument and held that the use of Bob Marley’s image on Defendants’ product itself was sufficient to state a claim under the Lanham Act since it had been “used directly on the Defendants’ goods,” as required by section 1125(a).

Finally, the Defendants argued that allowing Plaintiffs to prevail on their false endorsement claim under 15 USC §1125(a) would essentially create a “federal right of publicity.” The Ninth Circuit rejected this argument as well, recognizing that a claim under the Lanham Act for false endorsement was different than a state right of publicity claim because it added the additional element of likelihood of confusion. The Court found that the inclusion of this additional factor, coupled with the assumption as to Congress’ intent, led to the conclusion that a false endorsement claim under the Lanham Act was sufficiently different from and did not create a federal right of privacy claim.

One issue that permeates the Ninth Circuit’s opinion appears to be the fact that Defendants chose to waive or not pursue certain defenses as to Plaintiffs’ false endorsement claim. These included the aesthetic functionality defense as well as a defense under the Copyright Act that were not developed in the lower court. As a result, the Ninth Circuit was precluded from considering them and thus it is uncertain whether the assertion of these defenses would have led to a different result.

The Supreme Court recently decided a patent case involving a significant procedural issue.  In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (1/20/15), the question before the Court was whether the Federal Circuit Court of Appeals should review a district court’s factfindings in its claim construction decision under a de novo or a “clearly erroneous” standard.   The Court held that the proper standard of review, under Federal Rule of Civil Procedure 52(a)(6), is “clearly erroneous.”  The case establishes a two-part standard of review of a district court’s claim construction decision: a clearly erroneous standard for subsidiary facts and a de novo standard for the question of law.

The case involved Teva Pharmaceuticals’ patent for a method of making a drug to treat multiple sclerosis.  Sandoz began to sell a generic version of the drug.  Teva Pharmaceuticals sued Sandoz for patent infringement.  The claim at issue referred to a polymer having a specific molecular weight.  Sandoz argued that Teva Pharmaceuticals’ patent was invalid because the term “molecular weight” was indefinite.  Sandoz contended that there were three possible meanings of “molecular weight,” and that the patent did not explain which one was to be used.

The district court held that the patent was valid, based on expert testimony, finding that the term “molecular weight” was definite to a person skilled in the art.

Sandoz appealed.  The Federal Circuit Court of Appeals reversed, holding the patent invalid.  The appellate court reviewed the district court’s claim construction decision under a de novo standard of review, including the district court’s findings on the subsidiary facts.

The Supreme Court reversed the Federal Circuit’s decision.  Because the Federal Circuit reviews all district court decisions in patent infringement cases, and because the Federal Circuit has applied the de novostandard of review in all of its decisions, it was necessary for the Supreme Court to address the issue.  The Court explained that Rule 52(a)(6) provides that an appellate court cannot set aside a district court’s findings of fact unless those findings are clearly erroneous.  The Court held that this rule applies to the Federal Circuit’s review of a district court’s decision on subsidiary factual matters in its claim construction decision.  The Court said that there are no exceptions to the Rule – an appellate court cannot review findings of fact de novo.

The Court discussed its landmark claim construction decision, Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).  There, the Court had held that claim construction was strictly a question of law for the court, reasoning that the construction of written instruments (such as contracts and deeds to real property) is better performed by a judge than a jury.  The Court explained that its holding in Markman that the ultimate issue of claim construction was a question of law did not mean that there was an exception to Rule 52(a)’s requirement that appellate courts should review factual matters under a “clearly erroneous” standard.  In some patent cases, district courts must determine disputes over subsidiary facts, and Rule 52(a) requires that all such findings must be reviewed under the “clearly erroneous” standard.

The Court explained its rationale – the appellate court should employ a “clearly erroneous” standard to subsidiary facts in patent cases because such cases often involve scientific principles and facts and expert witnesses.  The trial judge is in a much better position to evaluate expert testimony, observe the invention, or appoint an expert for the court, and therefore, to resolve disputes over the underlying facts.

Then the court set forth how the appellate court should apply the two standards of review, at 841:

“. . . when the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo . . . In some cases, however, the district court will need to look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of at term in the relevant art during the relevant time period. . . . In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence.  These are the “evidentiary underpinning” of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.”

The practical application of the Court’s holding, at id., is that:

“The district judge, after deciding the factual dispute, will then interpret the patent claim in light of the facts as he has found them.  This ultimate interpretation is a legal conclusion.  The appellate court can still review the district court’s ultimate construction of the claim de novo.  But, to overturn the judge’s resolution of an underlying factual dispute, the Court of Appeals must find that the judge, in respect to those factual findings, has made a clear error.”

The Court emphasized that, sometimes, the resolution of subsidiary facts may determine the outcome of the question of law of claim construction, but that, in all cases, the ultimate question of claim construction remains a question of law.

Many of you may be familiar with the pop hit “Blurred Lines” by Robin Thicke, Clifford Harris, more popularly known as T.I., and Pharrell Williams (the “Composers”). If it does not sound familiar by title, perhaps you may recall it for its controversial nudity laden music video, or the fact that it was the song performed by Thicke and Miley Cyrus at the MTV Video Music Awards in 2013 when Miley’s scandalous conduct went viral and shocked the world—including Thicke’s spouse. However, what you may be less familiar with is the fact that the heirs of Motown great Marvin Gaye (the “Heirs”) have been threatening to sue the Composers since at least early 2013. The Heirs claim that “Blurred Lines” infringes their copyright in the Marvin Gaye song “Got to Give it Up.” However, in August 2013, after months of discussion on the issue, the Composers opted to file an action for declaratory relief in the United States District Court for the Central District of California, seeking a judgment that “Blurred Lines” does not infringe “Got to Give it Up.” The justification there was likely that sometimes the best defense is a strong offense. The Heirs then filed a counterclaim for copyright infringement alleging that “Blurred” Lines” does in fact infringe “Got to Give it Up” and also that another song by Robin Thicke and Paula Patton—“Love After War”—infringes Marvin Gaye’s song “After the Dance.” The trial on this matter began on February 24, 2015 and is currently ongoing.

In order to establish a claim for copyright infringement, a party must show that (1) the plaintiff owns a valid copyright in the work that allegedly has been infringed; and (2) the infringing party copied protected elements of the plaintiff’s work. “Because direct evidence of copying is not available in most cases, plaintiff may establish copying by showing that defendant had access to plaintiff’s work and that the two works are ‘substantially similar’ in idea and in expression of the idea.” Smith v. Jackson, 84 F.3d 1213, 1219 (9th Cir. 1996). In determining whether two works are substantially similar, a two-part analysis is employed. Swirsky v. Carey, 376 F.2d 841, 845 (9th Cir. 2004). This includes an objective extrinsic test and a subject intrinsic test. Id. The extrinsic test considers whether the two works share a similarity of ideas and expression of a work and expert testimony. Id. This analysis requires breaking the works down into their constituent elements and comparing those elements for proof of copying as measured by “substantial similarity.” In performing this analysis it is vital to remember that substantial similarity only considers similarity in expression—not ideas. Such elements are not protectable under applicable copyright law. Where the party cannot establish extrinsic similarity, the claim fails because a jury cannot find substantial similarity without evidence on both the extrinsic and intrinsic tests. Sony Pictures, 156 F.Supp.2d at 1157. However, if the extrinsic test is satisfied, then a jury is required to make a determination on the intrinsic test. The intrinsic test is an examination of an ordinary person’s subjective impression of the similarities between the two works. In order to establish infringement, both tests must be satisfied.

The Heirs base their claim on eight alleged similarities between “Got to Give It Up” and “Blurred Lines.” However, the Composers have taken the position that these alleged similarities are based on commonplace elements of Marvin Gaye’s sound recording of “Got to Give It Up” that were not included in the sheet music he submitted to the Copyright Office in 1977 to register his copyright, and thus they are not part of the copyrighted composition that the Heirs claim to own. Sound recordings and their underlying musical compositions are separate works with distinct copyrights. Newton v. Diamond, 204 F.Supp.2d 1244, 1248-1249 (C.D. Cal. 2002). To be clear, sound recording refers to musical elements not contained in the composition such as the sounds of the instruments, or other recording elements including backup vocals and other sound effects. The Composers claim that the Heirs do not own the Marvin Gaye sound recording—only the composition. Thus, the gist of the Composers’ argument is that there are no “substantial similarities” between the songs because the eight alleged similarities consist of unprotectable, commonplace ideas allegedly found in both songs—such as the idea of using a cowbell or the idea of using backup vocals. These are not compositional elements, but rather elements in Marvin Gaye’s sound recording. Copyright law only protects original expression—specific notes, rhythms, and harmonies—not mere ideas, such as the idea to use the aforementioned elements. Thus, Composers take the position that no such expression is remotely similar. Specifically, they claim there is no similarity in the melodies, the harmonies, the sequence of chords, the rhythms, the structures, or the lyrics. Pharrell Williams testified in support of this position earlier today when he took the stand. When the Heirs’ attorney asked whether he effectively captured the feel of the Marvin Gaye era, Pharrell responded, “[F]eel. Not infringed [sic].”

The Composers believe that the only reason the Heirs claim infringement is because Composers made certain comments in promoting their record about being inspired by Marvin Gaye. According to the Composers, the Heirs disregarded the fact that the two songs had no similarity in actual notes or phrases because they saw a potential opportunity to get paid. With respect to “Love After War” there is only one note in common with “After The Dance.” Thus, Composers argue that this second infringement claim is even more tenuous.

In contrast to the Composers’ position, the Heirs claim the following similarities:

• Signature phrase in the main vocal melodies;
• Hooks with similar notes;
• Hooks with back up vocals;
• The core theme in “Blurred Lines” and backup hook in “Got To Give It Up” are similar.
• Similar back up hooks;
• Bass melodies have similar rhythmic elements;
• Keyboard similarities;
• Unusual percussion sounds, including cowbell.

Obviously, the Heirs take a different position with respect to whether the foregoing similarities constitute protectable expression or mere ideas. The Heirs also contend that the aforementioned elements taken as a whole constitute a protectable interest. It is true that a combination of unprotectable elements may qualify for copyright protection, but this is only true where those elements are “numerous enough and their election and arrangement original enough that their combination constitutes an original work of authorship.” Satava v. Lowry, 323 F.3d 801, 811 (9th Cir. 2003). Composers contend that the elements are not so numerous as to constitute an original work, but they disagree. Furthermore, it should be noted that such compositions are only entitled to “thin protection” under copyright law. This means that any copying would have to be “virtually identical.”

Composers filed a motion for summary judgment on the grounds stated above, but the motion was denied because both sides proffered their respective expert’s analyses which provided indicia of a sufficient disagreement concerning substantial similarity to present a genuine issue of material fact. The Court found that the experts were in conflict with respect to the similarity of the signature phrases, hooks, bass lines, keyboard chords, harmonic structures, and vocal melodies. As such, the matter could not be decided as a matter of law. Because the matter could not be disposed of through summary judgment, the case proceeded to trial where it recently came out that Blurred Lines made $16,675,690 in profits. This essentially begs the question—will any or all of the Composers have to cough up any of that money to the Heirs? The answer to that question lies with the jury.

By: Labor and Employment Group

On February 25, 2015, the United States Department of Labor issued new rules designed to revise the regulatory definition of “spouse” under the Family and Medical Leave Act of 1993 (“FMLA”).  The new rules amend the regulatory definition of spouse under the FMLA so that it now specifically includes employees in legal same-sex marriages so that such employees will be permitted to take FMLA leave to care for their spouse or family member, regardless of their state of residence. This change will ensure that the FMLA will provide employees in same-sex marriages the same ability as all other employees to fully exercise their FMLA rights.  The new rule will become effective on March 27, 2015.

It is no secret that arbitration agreements may greatly reduce the risks that many employers face in disputes with employees. For example, when used correctly, such agreements can curb exposure to class actions by forcing employees to arbitrate disputes on an individual basis instead of a class basis. See, e.g., Iskanian v. CLS Transportation Los Angeles, LLC, 59 Cal.4th 348 (2014).

However, when such an agreement either contains certain language or fails to include other language, it may result in a class action or a representative action being litigated in front of an arbitrator instead of a court. This can be problematic for many reasons, not the least of which is that an arbitrator’s hourly charges typically are paid by the employer – and those fees can add up quickly in a complicated matter involving numerous parties.

Thus, instead of decreasing the cost of defending a class action or a representative action, a poorly drafted arbitration agreement could result in greatly escalating such costs. A pair of recent decisions from the California Court of Appeal for the Fourth Appellate District (in San Diego) underscore the need for employers to use great care in drafting such agreements to avoid such outcomes.

In Securitas Security Services USA, Inc. v. Superior Court, Cal. Ct. App. Case No. D066873, an employee filed a lawsuit alleging meal-and-rest-breaks violations. The lawsuit was fashioned both as a class action and as a representative action under California’s Private Attorneys General Act of 2004 (“PAGA”) Cal. Labor Code §§ 2698 et seq. The employer, Securitas Security Services USA, Inc. (“Securitas”), asked the trial court to (1) compel the lead plaintiff to arbitrate her individual claims, (2) dismiss and/or sever and stay the lead plaintiff’s class claims, and (3) dismiss and/or stay the PAGA claim.

Nothing out of the ordinary so far. The case took an unusual turn, however, when the trial court granted the motion to compel arbitration. It was a surprising twist not because the trial court granted the motion but because of the way it did so. Specifically, because the arbitration agreement included an invalid waiver of PAGA claims, the trial court ordered the parties to arbitrate the plaintiff’s entire complaint – including her PAGA claims.

This put Securitas in the awkward position of having to ask the appellate court to reverse a decision that granted Securitas’ own motion. Ultimately, California’s Fourth Appellate District reversed the trial court but voided the entire arbitration agreement on the ground that the invalid PAGA waiver could not be severed from the agreement. (Potential problems with clauses that bar the severability of a PAGA waiver are discussed in one of our prior blog posts, The New PAGA-Waiver Trap Door.)

This outcome, which put the parties back at square one and appears to allow the class-action and PAGA claims to proceed in civil court, amounted to an expensive ride on the merry-go-round for Securitas. At the same time, the very language of the arbitration agreement seemingly deprived Securitas of any benefit that it had hoped to gain from that agreement.

A different employer, Universal Protection Service, L.P. (“Universal”), suffered a similar fate before the same panel of the Fourth Appellate District. See Universal Protection Service, L.P. v. Superior Court, Case No. D066919. An employee in that case alleged that Universal had engaged in overtime, meal-and-rest-period, and indemnification violations. However, the employee took the unusual step of seeking arbitration of her putative class claims under the employer’s arbitration agreement, instead of filing a civil action in court.

Although the Universal likely would have been eager to arbitrate the employee’s individual claims, it had no taste for class arbitration. Thus, Universal was forced to take the unusual step of filing an action in state court to thwart the arbitration of an employment dispute.

Universal argued that it was for the court, and not the arbitrator, to decide if class claims could be arbitrated (presumably because arbitrators are thought to be far more inclin
ed to find that claims are subject to arbitration). The trial court agreed with the employee and compelled arbitration, finding that it was for the arbitrator to determine “whether the class action claims are arbitrable.”

While initially successful in persuading the Court of Appeal to take the rare step of reviewing the lower court’s decision by way of a writ petition, Universal ultimately was unable to avoid the impact of the trial court’s ruling. The appellate court agreed with Universal that the arbitration agreement did not expressly delegate to the arbitrator the determination of whether the class claims were arbitrable. Nonetheless, the Fourth Appellate District found that the arbitration agreement explicitly referenced the American Arbitration Association rules, “which unambiguously state that the arbitrator is to decide whether the parties’ arbitration agreement permits class arbitration.”

In sum, there are advantages and disadvantages to both having or refraining from using certain language in arbitration agreements. In light of these two new decisions, employers who wish to enhance the likelihood of enforcing their arbitration agreements should consult legal counsel to determine if amendments to their arbitration agreements are advisable.