Justia Intellectual Property Opinion Summaries

Arthur Conan Doyle published his first Sherlock Holmes story in 1887 and his last in 1927. Because of statutory extensions of copyright protection culminating in the 1998 Copyright Term Extension Act, American copyrights on the final stories will not expire until 2018-2022. The copyrights on the other 46 stories and four novels have expired, making them part of the public domain. Klinger is co-editor of an anthology: A Study in Sherlock: Stories Inspired by the Sherlock Holmes Canon (2011). Klinger’s publisher, paid the estate $5000 for a license. Klinger decided to create a sequel: In the Company of Sherlock Holmes. The estate learned of the project and threatened to prevent distribution of the book. Klinger obtained a declaratory judgment that he is free to use material in the 50 Sherlock Holmes stories and novels that are no longer under copyright, but may use nothing in the 10 stories still under copyright that has sufficient originality to be copyrightable. The Seventh Circuit affirmed, first rejecting an argument that the court had no subject-matter jurisdiction because there was no actual case or controversy, then rejecting an argument that copyright on a “complex” character, such as Holmes or Watson, whose full complexity is not revealed until a later story, remains under copyright until the later story falls into the public domain. The Constitution, Art. I, section 8, authorizes copyright protection only for “limited Times.” The estate sought “near-perpetual copyright” in seeking 135 years of protection for the character of Sherlock Holmes. View "Klinger v. Conan Doyle Estate, Ltd." on Justia Law

This appeal concerned the HathiTrust Digital Library (HDL). At issue was whether the HDL's use of copyrighted material is protected against a claim of copyright infringement under the doctrine of fair use. Plaintiffs appealed the district court's grant of summary judgment in favor of defendants and dismissal of their claims of copyright infringement. The district court also dismissed the claims of certain plaintiffs for lack of standing and dismissed other copyright claims as unripe. The court held that three authors' associations lacked standing to bring suit on behalf of their members and were properly dismissed from the suit and the remaining four authors' associations do have standing to bring suit on behalf of their members; the doctrine of fair use allowed defendants to create a full-text searchable database of copyrighted works and to provide those works in formats accessible to those with disabilities; and claims predicated upon the Orphan Works Project are not ripe for adjudication. Therefore, the court affirmed as to those issues. The court vacated the judgment, in part, insofar as it rests on the district court's holding related to the claim of infringement predicated upon defendants' preservation of copyrighted works and remanded for further proceedings. View "Authors Guild, Inc. v. HathiTrust" on Justia Law

Plaintiff, an architect, and the company through which he does business, filed suit asserting that he created then licensed numerous designs for colonial homes to two construction companies and that these companies and their contractors infringed his copyright in these designs by using them in ways the licenses did not permit after the licenses had expired. Plaintiff also alleged that defendants' actions violated the Digital Millennium Copyright Act (DMCA), 17 U.S.C. 1202(b). The district court dismissed plaintiff's claims against some defendants, granted summary judgment in favor of the remaining defendants, and granted attorney's fees to two defendants. The court affirmed in part and held that (1) any copying of plaintiff's designs extended only to unprotected elements of his works, and (2) plaintiff failed to plead a violation of the DMCA. The court vacated in part and held that the district court misapplied the incorrect legal standard in awarding attorney's fees, remanding for the district court to apply the correct standard. View "Zalewski v. Cicero Builder Dev., Inc." on Justia Law

Cubatabaco, a Cuban entity, and General, a Delaware company, manufacture and distribute cigars using the COHIBA mark. General owns trademark registrations issued in 1981 and 1995. Cubatabaco owns the mark in Cuba and uses it worldwide. Cuban Assets Control Regulations (CACR), prohibit Cubatabaco from selling cigars in the U.S.; 31 C.F.R. 515.201(b) prohibits “transfer of property rights . . . to a Cuban entity,” but a general or specific license allows Cuban entities to engage in otherwise prohibited transactions. General licenses are available for transactions “related to the registration and renewal” of U.S. trademark. Specific licenses issue from the Office of Foreign Assets Control. Cubatabaco used a general license to attempt to register the COHIBA mark in 1997, relying on 15 U.S.C. 1126(e), which allows reliance on a foreign registration if the applicant has a bona fide intent to use the mark in commerce. Cubatabaco also sought to cancel General’s registrations, which the PTO cited as a basis for likelihood of confusion. Cubatabaco obtained a special license to sue General. The district court held that General had abandoned its registration by non-use and enjoined General’s use of the COHIBA mark, finding that Cubatabaco had acquired ownership under the famous marks doctrine. The Second Circuit reversed, holding that injunctive relief would involve a prohibited transfer under CACR because Cubatabaco would acquire ownership of the mark and later affirmed denial of General’s motion concerning cancellation of its registrations. The Board then dismissed Cubatabaco’s petition, stating that it need not address preclusion because Cubatabaco lacked standing. The Federal Circuit vacated, finding that Cubatabaco has a statutory cause of action to petition to cancel the registrations and that issue and claim preclusion do not bar that petition View "Empresa Cubana del Tabaco v. General Cigar Co., Inc." on Justia Law

In 1987, Krauser, a periodontist, designed a dental implant system. He paid BHI’s predecessor to produce drawings and prototypes. In1991, the parties entered into a written agreement that specified that Krauser would develop new products for the company to produce and sell and that the drawings were “property of [BHI].” Krauser was entitled to royalties. Krauser obtained a patent covering one component of the system and listing Krauser as the inventor. The company subsequently secured patents covering dental implant systems, naming Shaw as the sole inventor. Krauser sued the company and Shaw for a declaration of ownership rights and for copyright and patent infringement. While the suits were pending, the company filed for bankruptcy, and Krauser filed claims in bankruptcy court. In a settlement agreement, Krauser granted the company a 10-year patent license and “all rights . . . [to] the dental implant system currently being manufactured.” The bankruptcy court approved the agreement. Later, several patents on dental implant systems issued to BHI. None listed Krauser as an inventor. Krauser alleged that BHI failed to pay the full amount of royalties or submit to required audits and claimed default. The district court granted BHI summary judgment, construing the settlement to apply only to implants being manufactured in 1996, not implants manufactured at the time of litigation, and finding that Krauser had no ownership rights. The Eleventh Circuit transferred the case “[b]ecause the Federal Circuit has exclusive appellate jurisdiction … relating to patents.” The Federal Circuit transferred the case back, noting that Krauser had dropped his claim of inventorship. View "Krauser v. Biohorizons, Inc." on Justia Law

AF Holdings, represented by Prenda Law, filed suit in district court against 1,058 unnamed John Does who it alleged had illegally downloaded and shared the pornographic film "Popular Demand" using a file-sharing service known as BitTorrent. Prenda Law's general approach was to identify certain unknown persons whose IP addresses were used to download pornographic films, sue them in gigantic multi-defendant suits that minimized filing fees, discover the identities of the persons to whom these IP addresses were assigned by serving subpoenas on the Internet service providers to which the addresses pertained, and then negotiate settlements with the underlying subscriber. The providers refused to comply with the district court's issuance of subpoenas compelling them to turn over information about the underlying subscribers, arguing that the subpoenas are unduly burdensome because venue is improper, personal jurisdiction over these Doe defendants is lacking, and defendants could not properly be joined together in one action. The court agreed, concluding that AF Holdings clearly abused the discovery process by not seeking information because of its relevance to the issues that might actually be litigated here. AF Holdings could not possibly have had a good faith belief that it could successfully sue the overwhelming majority of the John Doe defendants in this district. Although AF Holdings might possibly seek discovery regarding individual defendants in the judicial districts in which they are likely located, what it certainly may not do is improperly use court processes by attempting to gain information about hundreds of IP addresses located all over the country in a single action, especially when many of those addresses fall outside of the court's jurisdiction. Given AF Holdings' decision to name and seek discovery regarding a vast number of defendants who downloaded the film weeks and even months apart - defendants who could not possibly be joined in this litigation - one can easily infer that its purpose was to attain information that was not, and could not be, relevant to this particular suit. Accordingly, the court vacated the order and remanded for further proceedings, including a determination of sanctions, if any, for AF Holdings' use of a possible forgery in support of its claim. View "AF Holdings, LLC v. Does 1-1058" on Justia Law

Suffolk owns a patent directed to methods and systems for controlling a server that supplies files to computers rendering web pages. The patent discloses using the address of the referring web page to determine whether to serve a file, and if so, which file. The district court entered summary judgment of invalidity, holding that claims 1, 7, and 9 were anticipated by a Usenet newsgroup post. Suffolk then stipulated that, in light of the district court’s prior art, claim construction, and expert testimony rulings, claim 6 was also anticipated. The Federal Circuit affirmed. View "Suffolk Techs., LLC v. AOL Inc." on Justia Law

Fuqua, a computational linguist, was hired by SVOX in 2009 to help market linguistic products. A few months later, SVOX approached Fuqua with a new employment contract that contained an inventions assignment clause that required Fuqua to disclose and assign to SVOX intellectual property that he made, conceived, or developed in the past and required assignment of his rights to patents, copyrights, trademarks, trade secrets, and royalties to SVOX. Fuqua believed that the disclosure required by the new agreement would violate state and federal laws and refused to sign the contract. SVOX terminated Fuqua’s employment. Fuqua filed a complaint with the Office of Inspector General of the Department of Defense (OIG), alleging violation of the American Recovery and Reinvestment Act of 2009, which prohibits reprisals for disclosures of wrongdoing relating to covered funds under the act. The OIG found that SVOX did not receive Recovery Act funds and declined to investigate further. The district court dismissed, finding that SVOX did not receive covered funds. The Seventh Circuit affirmed. View "Fuqua v. SVOX USA, Inc." on Justia Law

Sun developed the Java computer programming platform, released in 1996, to eliminate the need for different versions of computer programs for different operating systems or devices. With Java, a programmer could “write once, run anywhere.” The Java virtual machine (JVM) takes source code that has been converted to bytecode and converts it to binary machine code. Oracle wrote 37 packages of computer source code, “application programming interfaces” (API), in the Java language, and licenses them to others for writing “apps” for computers, tablets, smartphones, and other devices. Oracle alleged that Google’s Android mobile operating system infringed Oracle’s patents and copyrights. The jury found no patent infringement, but that Google infringed copyrights in the 37 Java packages and a specific routine, “rangeCheck.” It returned a noninfringement verdict as to eight decompiled security files. The jury deadlocked on Google’s fair use defense. The district court held that the replicated elements of the 37 API packages, including the declaring code and the structure, sequence, and organization, were not subject to copyright and entered final judgment in favor of Google on copyright infringement claims, except with respect to rangeCheck and the eight decompiled files. The Federal Circuit affirmed as to the eight decompiled files that Google copied into Android and rangeCheck. The court reversed in part, finding that the declaring code and the structure, sequence, and organization of the API packages are entitled to copyright protection, and remanded for consideration of fair use.View "Oracle Am., Inc. v. Google Inc." on Justia Law

Rapid-prototyping “additive technology” creates parts by building layer upon layer of plastics, metals, or ceramics. Subtractive technology starts with a block and cuts away layers. Additive technology include SL, fused deposition modeling, laser sintering, 3D printing, direct metal laser sintering, and digital light processing. 3DS is the sole U.S. supplier of SL machines, which use an ultraviolet laser to trace a cross section of an object on a vat of liquid polymer resin. The laser solidifies the resin it touches, while untouched, areas remain liquid. After one cross-section has solidified, the newly formed layer is lowered below the surface of the resin. The process is repeated until the object is completed. Users of SL machines often own many machines with varying sizes, speeds, and accuracy levels. 3DS began equipping some of its SL machines with wireless technology that allows a receiver to communicate with a transmitter on the cap of a resin bottle. A software-based lockout feature shuts the machine off upon detection of a resin not approved by 3DD. 3DS has approved two of Desotech’s resins and entered into negotiations for approval of additional resins. After negotiations broke down, Desotech sued, alleging tying, unreasonable restraint of trade, and attempted monopolization under the Sherman Act; tying under the Clayton Act; patent infringement; and violations of the Illinois Antitrust and Uniform Deceptive Trade Practices Acts. The district court granted 3DS summary judgment on the antitrust claims and certain state-law claims. The parties stipulated to dismissal of the remaining claims. The Federal Circuit affirmed. View "DSM Desotech Inc. v. 3D Sys. Corp." on Justia Law