Listen up, all you internet users (which is basically everybody but my mother, who still views the Internet as the work of the devil, and will quote from the book of Revelation in support of her theory).  Three bills you need to be aware of, because they may change the way you view (or more correctly, the way you are allowed to view) the Internet.  and from what I’m reading, there are some pretty darned big sites and companies that are ready to either “go dark” in protest (Wikipedia, for example, which is where I do most of my legal research) or lend a big supporting hand to the protests of the current bills being considered (Google is one – who can live a day without Googling something?  I mean for cryin’ out loud the Company has made itself into a verb!!).  Those bills are:

Welcome one and all to something that will undoubtedly change both history and the world as we know it:  the first installment of what will hopefully be a regular publication which we have decided to call From the “What the…?”File.  Basically, I’ll be picking up on out-of-the-mainstream stuff which any of us could have lived without knowing, but it will at least be stuff that is both interesting and has a bit of a twist.  At least in theory, anyway.  So, without further ado, here goes the collector’s item first issue.  I can confidentially say that that when you’re done, you too will be saying “What the…?”

European Copyright – The Write Stuff?

OK, not many of us care about Euro Copyright issues – I fully admit that.  But this is actually kind of interesting (even if it is Euro-centric).  It seems that way back in 2006, a Hollywood-funded, Netherlands-based anti-piracy group (known as ‘BREIN’, and please don’t ask me what it stands for) asked a musician to compose music for an anti-piracy video. The video in question was to be shown at a local film festival, and under these strict conditions the composer accepted the job.

However, the anti-piracy ad was recycled for various other purposes apparently without the composer’s permission. When the composer bought a Harry Potter DVD early 2007 (presumably a licensed one), he noticed that the campaign video with his music was on it. According to the composer And this was no isolated incident. He is now claiming that his work has been used on tens of millions of Dutch DVDs, without him receiving any compensation for it. The total claimed lost revenue is roughly a million Euros (which is about $1.3 mil US). 

But wait -- there’s more.  You’d think that the guy would have received some collection support from local rights societies.  You’d think.  But soon after he discovered the unauthorized distribution and after contacting a local music royalty collection agency not only did he not receive any royalties, one of their Board members offered to help ONLY if the composer assigned all his rights to the organization AND gave the guy a third of what was collected.   Ultimately the board member resigned and the anti-piracy group denied it was their fault in the first place.  But what’s more shocking – that anti-pirates are pirates themselves, or that there is corruption in the music industry? Hmmm – tough question.

Former NBA legend Bill Russell has recently brought a suit against the National Collegiate Athletic Association (“NCAA”) (Russell v. NAT’L Coll. Athletic Ass’n., 11-04938, U.S. District Court, Northern District of California).  Russell’s suit is one of several the NCAA is currently facing revolving around alleged violations of federal antitrust laws.  Russell alleges the NCAA used his likeness from his days as a collegiate athlete at the University of San Francisco, where he led the men’s basketball team to national championships in 1955 and 1956.  He also claims that the NCAA has violated federal antitrust laws by preventing former student athletes (football and basketball) from being compensated for the commercial use of their images and likenesses.  Russell alleges that the NCAA sells videos of the championship games he led his team in for $150, without compensating the featured athletes.

The Topps Company (“Topps”) is suing fellow baseball trading card manufacturer Leaf Trading Cards (“Leaf”) for copyright and trademark infringement in a lawsuit recently filed in federal court (The Topps Company, Inc. v. Leaf Trading Cards, LLC, USDC SDNY, No. 11-civ-5585).  Topps claims that Leaf does not have the right to use pictures of old Topps cards featuring the company’s logos and players it has under exclusive contract.  The dispute arose over Leaf’s recent advertisement for its “2011 Leaf Best of Baseball” product.  The Best of Baseball pack, available to collectors, consists of one Leaf-created cut signature card and a PSA or BGS graded and authenticated card previous issued by various other manufacturers.  Some of the cards included in the packs are a 1952 Topps Mickey Mantle, a 1972 Carlton Fisk rookie, a 2001 Albert Pujols rookie, as well as cards autographed by teenage phenom Bryce Harper. One-pack boxes have been selling at retail for $235-275.

DRI member, Robert Wagner of Picadio Sneath Miller & Norton, P.C., provides commentary on the recent SCOTUS opinion in Microsoft Corp. v. i4i Limited Partnership on his firm's PIT IP Tech Blog.

Today, the Supreme Court confirmed that parties challenging the validity of a patent have the burden to prove invalidity by clear and convincing evidence. Justice Sotomayor delivered the unanimous opinion for the Court in its decision in Microsoft Corp. v. i4i Limited Partnership (No. 10-290), which affirmed the Federal Circuit. Justice Breyer filed a concurring opinion, and Justice Thomas filed an opinion concurring in judgment. Chief Justice Roberts took no part in the decision.

Read the full post here.

Intellectual Property News reports “that Charlie Sheen has been adding to his growing trademark portfolio again.  His two most recently filed trademark applications are for Masheen and Sheenius.  Both applications were filed in one class of goods but the descriptions cover many different classes which means that the U.S. Patent and Trademark Office is certain to issue Office Actions, and then Sheen will have 6 months to file appropriate responses.  At that time, he will have to cough up an additional $2,000+ in government filing fees if he truly intends to use the trademarks for all of the goods and services listed.”

So what?  Why should Charlie Sheen capitalize on what otherwise will end up in the hands of cyber-squatters?  I say more power to him.  Other people will (to the extent that it isn't already happening) try to make money on his catch phrases, maybe selling t-shirts, hats, sunglasses, beer bottle holders and the like of typical trinkets.  Big corporations try to hold onto a number of trademarks through the intent to use process while they conduct focus groups studies and hone in on the one or ones that ultimately they believe will bring in the most consumers.  And, it does not appear that Mr. Sheen cannot afford the office actions.  Filing in one class to start off is savvy.  Let the examining attorney make the determination of exactly how many classes there are in the goods/services description; there's no prohibition against it.  Is it really that unimaginable that Mr. Sheen comes forth with a cologne, clothes, accessories, beverages (alcohol or not), bars/restaurants.  Rock stars, athletes and other actors all have done this long before Mr. Sheen's trademark filings.  Let his entrepreneurial spirit soar.  He has a fan base and if he sells to them, they will buy.  Good then for him to have federal trademark protection to enforce his rights against infringers who only wish that they got there first.

A recent article from Bloomberg News discusses the effect a company called Trademarkia has had on IP attorneys that are generally hired to file patent requests.  Bloomberg reports “While entrepreneurs can file trademark applications with the U.S. Patent and Trademark Office (USPTO) on their own, many pay attorneys $150 to $500 per hour to handle the complex process. Since Trademarkia made its debut in 2009, the legal website has streamlined and made the task cheaper.”  Trademarkia -- it is not about "angering IP lawyers," but rather it is about the disservice to unknowing and unsuspecting applicants who save a little money at the start but miss out on opportunities to obtain really valuable intellectual property rights that can add significant value to their business' bottom line. Treating the trademark filing and registration process as a mere "task" misses a major component of legal advice to clients.  Foresight is the key to success.  

A licensed attorney well versed in U.S. Patent and Trademark Office practice and procedure may be able to make filing a trademark application result in increasing a company's bottom line in terms of asset valuation.  A solid trademark registration can make the difference between an investment that increases over time for its owner rather than one that is nothing more than a money pit.  Many believe that the process of filing a trademark is simple and straightforward – plug and chug.  However, in my experience, picking up the pieces of a rejected application often leads the applicant to sour to the whole government process unnecessarily. 

Careful examination of the applicant’s goals in terms of breadth of protection, enforcement opportunities or “policing” responsibilities should take place before clicking “submit”.  The consequences, and there are always consequences, of an apparent initial cost savings incurred by avoiding retaining the services of a proficient trademark attorney who considers the ramifications of a well-worded identification of goods and/or services and the benefits of certain filing bases is ultimately lost once the applications hits the examining attorney's desk and is rejected.  At that point, there may be no resuscitating the application and even if something can be salvaged for protection, the breadth of protection may be so narrow that the applicant is left wondering what it was all for in the first place. 

A trademark registration may be useful for defensive purposes only.  In other words, just to keep others from legitimately claiming that the registrant is an infringer.  A trademark registration may be useful for so much more.  Consideration of issues such as whether to claim color or have a design registered in black and white, claim a special font or use plain block lettering, or how to describe the goods and/or services to accurately cover the spectrum of the business are just a few examples of an experienced trademark attorney adds significant value to the initial filing process.  Lesson to be learned:  Once the application is filed, changes can be made only to narrow or clarify what is covered and not to broaden it; that would require a whole new filing. 

It seems Cameron and Tyler Winklevoss have exhausted every possible legal remedy.  It is highly unlikely the Supreme Court will grant certiorari with no new or novel legal issues at stake.  Whether their protracted post-settlemet fight was about positioning for more dollars or about a legitimate legal position we will never know.  But it seems apparent Mark Zuckerberg has gotten the best of his Harvard classmates in the end (although at a settlement price tag of $65 million, the Winklevosses should be as upset as that appear to be).

At face value (and not knowing the details of the protracted dispute), it seems to overturn a negotiated settlement, as the “Winklevi” have sought to do, would do a grave injustice to courts’ long-held public policy to discourage litigation and encourage voluntary resolution.  Parties want to know when it’s done, it’s done.  No one wants to sign a release or pay a settlement and still fear the possibility they might not have extinguished liability or may not be fully compensated.  Perhaps caveat emptor applies here; if you are buying peace be sure you know what you are buying.

The Federal Circuit issued another opinion yesterday reinforcing the standard for establishing joint infringement in method patent cases where more than one party performs the steps of an asserted method claim.  In McKesson Technologies, Inc., v. Epic Systems Corporation, Case No. 2010-1291, the Federal Circuit again held that in such situations, there can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps.

The patent at issue in McKesson is directed to an interactive electronic method of communication between healthcare providers and patients involving personalized web pages for doctors and their patients that, among other things, allows patients to access visit-specific content online following every doctor visit.

The first step of the asserted method claims requires “initiating a communication by one of the plurality of users to the provider for information wherein the provider has established a preexisting medical record for each user.”  The parties did not dispute that Epic’s customers, i.e., the healthcare providers, did not directly perform the first step of the asserted method claims.  Rather, the healthcare providers’ patients performed the first “initiating a communication step.”

The Federal Circuit, affirming the district court’s grant of summary judgment of non-infringement, reinforced that “[w]ithout an agency relationship or contractual obligation” the users’, i.e., the patients’, actions could not be attributed to the providers, i.e., the healthcare providers.  Because no one party performed each step of the claimed method, there was no direct infringement and consequently, no induced or indirect infringement, which required a direct infringer.

The Federal Circuit rejected McKesson’s invitation to depart from its precedents, explaining that ‘[p]atent law is a creature of statute and ‘expanding the rules governing direct infringement to reach independent conduct of multiple actors would subvert the statutory scheme for indirect infringement.”

Judge Bryson issued a concurring opinion, finding the court’s decision correct in light of the court’s precedent, but further commenting that “[w]hether those decisions are correct is another question, one that is close enough and important enough that it may warrant review by the en banc court in an appropriate case.”

Judge Newman issued a dissenting opinion, arguing that the court was departing from the “prior panel rule,” encouraging en banc resolution of the issue, and commenting that the court’s decision essentially “eliminates the patent incentive for such interactive procedures, rendering McKesson’s new method, and all such interactive methods, open for infringement without redress.”

The Senate Judiciary Committee is holding hearings on on-line intellectual property piracy.  A recent blog post described the hearing held on February 16, 2011.  One might be skeptical when a report purports to suggest that internet piracy costs 2.5 million jobs or goods valued at over $650 million, but the wary might do well to be concerned about the scope of the investigation.

It is one thing-- and probably a good one-- if the topic of discussion is counterfeit products, especially those such as pharmaceutical products that implicate health hazards.  However, the hearing also ranged from counterfeiting to other types of infringement, to keyword advertising, to "piracy."  These are all different topics, far too broad to be swept under one rug or covered in one bill.  The issues raised by counterfeiting are fundamentally different in nature from the public policy considerations-- addressed by the courts regularly-- that arise in keyword advertising disputes.  And it is not proper to talk about "infringement" as "piracy."  In short, the issues are nuanced, with different factors to be considered for different aspects of intellectual property infringement.  Congress would do well if it took the time to understand these nuances, and to legislate accordingly.