Just over one week ago Justice Antonin Scalia of the United States Supreme Court was interviewed by Piers Morgan of CNN. See Scalia CNN transcript. During the interview Justice Scalia said that the hardest decision he has had to make in his time on the Supreme Court was in a patent case. The patent case remained unnamed, which lead me to ask some within the industry to take a guess about which case Justice Scalia may have been referring to. See Justice Scalia: Hardest Decision “Probably a Patent Case”.
I received a few responses from those who did not opine as to what case Justice Scalia might be referring to, but rather commented generally about the interview and what Justice Scalia said relative to patent cases being difficult, dull and insignificant. What follows below are those musings from industry insiders.
The Associated Press recently sued Meltwater alleging in its complaint that “[Meltwater] has built its business on the willful exploitation and copying of the AP’s and other publishers’ news articles for profit.” AP asserts copyright infringement claims as well as a common law hot news misappropriation claim under N.Y. law. AP notes that it has to expend significant resources to create its news content. It complains that Meltwater free-rides on its efforts by misappropriating AP’s news and information which Meltwater can then sell for minimal cost via the Internet. It characterizes Meltwater’s actions as a “parasitic” service whose free-riding could make it cost-prohibitive for AP to profitably compete; and, therefore, AP’s economic incentive to continue its business could be significantly threatened.
AP’s common law misappropriation claim has its origins in a remarkably similar suit AP brought against a competing news service almost a century ago. In INS v. AP the Supreme Court, in 1918, enjoined INS, a competing news service, from free-riding on the work product of AP. The misappropriation action was based on INS re-distributing information to its customers which AP had previously released into the public domain. INS was enjoined from using the information for a limited time period while it was hot news (i.e. while it had commercial value as news). The Supreme Court’s decision was based on two rationales: (1) preventing unacceptable conduct in the form of a commercial enterprise free-riding on the investment of time and money by a competitor; and (2) avoiding the resulting ruinous competition that could result from a commercial enterprise free-riding on the efforts of a competitor.
It is that time of the year where we all start to look ahead to the new year, perhaps making some New Year resolutions that are sure to last for at least a few days. Over the past several years I write an article titled “Patent Wishes,” and two years ago I contacted a number of my industry contacts to ask them what they wish for moving into the New Year. See Industry Insiders Make Patent Wishes for 2010.
With that in mind I once again contacted some of my friends to get them to go on the record with their patent and innovation related wishes for 2012. I was lucky enough to get a number of very thoughtful responses from individuals with a variety of experiences.
So without further ado, here are the wishes of some industry insiders for 2012. Please feel free to add your own wishes to the comments, and stay tuned for my annual Patent Wishes article where I write about my own wishes for the year ahead.
As you may have seen, IPWatchdog.com has been named to the ABA Blawg 100, which recognizes the top 100 blogs on the Internet written by lawyers for lawyers. This marks the third year in a row we have been honored by the American Bar Association Journal as a top 100 blog.
Now the voting begins. Last year we were voted the top IP Law blog and greatly appreciate the support we received. Once again this year we are in the same category — IP Law — as is Professor Dennis Crouch’s widely popular PatentlyO blog. If you are inclined to vote for us we would once again greatly appreciate your support.
Over the years IPWatchdog.com has continued to try and add additional perspectives from a wide variety of guest contributors, ranging from well respected practicing attorneys and agents to high profile academics to inventors and pro-patent lobbyists. It is hard to imagine providing such depth of analysis on such an array of topics without having truly wonderful guest authors. So we take this moment to say a very special thank you and to shine the spotlight on them. Each deserve to share in any recognition of IPWatchdog.com. While I am loathe to single any guests out I would be remiss if I didn’t separately thank both Beth Hutchens (10 contributions) and Eric Guttag (9 contributions)!
Without further ado, here are the guest contributors in alphabetical order, along with their contributions for 2011.
If you are a user of Twitter you have probably seen more than a few tweets using “#FF” followed by a number of names. #FF stands for “Follow Friday.” On Fridays many Twitter users will suggest who others should follow by tweeting with the hashtag #FF. If this is gobbledygook to you where have you been? Twitter is a great way to stay up to day with news and information from the sources that you like the most. You need to get on the Twitter bandwagon and give it a try!
For me Twitter is about news and information. It is the way daily keep my finger on the pulse of what is happening, so I put a premium on those who convey information. Of course, you can follow me @ipwatchdogand Renee @ipwatchdog_too.
Below are some of my favorites, who in my humble opinion are excellent people to follow on Twitter.
As a law professor, engineer, and patent attorney, I am an advocate of strong intellectual property rights (IPR). However, the extent of what is currently protectable under U.S. IP law has become too expansive. Design patent law, copyright law, and trademark law have grown significantly over the past few decades. Design patent law was first enacted in the 1800s to cover the ornamental appearance of commercial products. This is often referred to as industrial design protection. According to legislative history it was needed to fill a gap in the existing law because neither utility patent law nor copyright law provided protection for such industrial design even though protection had long been available in Europe. Copyright law originally covered only the form of expression embodied in maps, charts, and books. Trademark law – a species of unfair competition law – protected the mental association between symbols, words and short phrases that identified products or services against third party commercial uses that would create consumer confusion.
Last summer J.D. Salinger sued the author/publisher of the book entitled “60 Years Later Coming Through the Rye” for copyright infringement. Salinger claimed that the book was a sequel to his famous book entitled “Catcher in the Rye” and therefore it was an infringing derivative work. Salinger sought and the district court granted a preliminary injunction barring publication of the book. On appeal, the U.S. Court of Appeal for the Second Circuit vacated the preliminary injunctionon April 30, 2010 and remanded the case to the district court.
Interestingly, the Second Circuit agreed with the district court that Salinger is likely to ultimately prevail in his lawsuit because the book is probably an infringing work which is not protected by the fair use exception to copyright infringement. However, the Second Circuit remanded because it held that the test used by the district court to decide whether to issue a preliminary injunction was no longer the proper test to use in light of the 2006 Supreme Court decision in eBay v. MercExchange, 547 U.S. 388.
The recent dispute involving Lindsay Lohan and ETrade (see AP report on YouTube) provides an opportunity for critically examining the right of publicity. The right of publicity is one of the newest intellectual property rights available under U.S. law. It allows a celebrity, such as Ms. Lohan, to control the commercial use of her name and/or likeness. This right is a distinct right that exists in addition to unfair competition and trademark rights.
Existing unfair competition law allows a celebrity to object to use of her name and/or likeness in a commercial context if the use is likely to confuse members of the intended market such that they believed the celebrity was endorsing the product. (See, e.g., 15 U.S.C. sec. 1125(a)). Additionally, a celebrity may be able to assert trademark rights in her name. But a trademark infringement action would also require demonstrating a likelihood of confusion among consumers. The right of publicity provides an additional right which enables a celebrity to object to use of her name and/or likeness even if no confusion exists among consumers.