Gene has asked me to write an executive summary that conveys the essence of my new book, The Software IP Detective’s Handbook: Measurement, Comparison, and Infringement Detection. While I definitely appreciate his request, I hope I’m not completely successful because that would mean that the two years of nights and weekends I spent writing the book, not to mention the years developing the mathematical algorithms and the methodologies described in the book, could have been done in a single evening.

I’ve personally been working as an expert witness in intellectual property disputes, specializing in software cases, for about 15 years. When I began working in this area, I found that most experts used a combination of off-the-shelf computer code analysis programs, home-grown analysis programs, and lots of long hours and late nights poring over lines of code. Some experts used tools available from universities that are called “software plagiarism detection tools” that produced dubious results even when they executed correctly. Expert reports were then written and rebutted. Arguments often got very technical and detailed and could easily confuse a non-technical judge or jury. Different experts often had different definitions of plagiarism or found different signs that they considered markers for copied code. Some parties to a litigation, and some experts they hired I’m sad to say, seemed to purposely cloud the issue to justify illicit or at least questionable behavior. I decided that a standard measure of software copying that could be objectively tested was needed, and so I developed code correlation.

On Monday, December 13, 2010, the United States Supreme Court issued a non-decision in the matter of Costco Wholesale Corporation v. Omega, S.A. The Per Curiam decision simply read: “The judgment is affirmed by an equally divided Court. Justice Kagan took no part in the consideration or decision of this case.”  That meant that the 2008 decision of the United States Court of Appeals for the Ninth Circuit remained unchanged.  But this was not the last to be heard of this controversial case.

On November 9, 2011, the United States District Court for the Eastern District of California, per Senior Judge Terry J. Hatter, Jr., granted Costco a summary judgment victory due to the fact that Omega engaged in copyright misuse.  Yes, the plot thickened.  The district court originally granted summary judgment to Costco on the basis of the first sale doctrine, which was overturned by the Ninth Circuit and then affirmed by the Supreme Court in the tie decision, or non-decision of December 2010.  That meant that the case would proceed because the first sale doctrine summary judgment victory was erased.  But not so fast!  Judge Hatter had other ideas!

The digital age is upon us and there is no turning back. People all over the world are becoming increasingly connected via the global telecommunications network that we call the Internet. Perhaps the best, and certainly the most cited, definition of the Internet can be found in the now famous district court decision in American Civil Liberties Union v. Reno, 929 F.Supp. 824, 830-31 (E.D. Pa. 1996), which defines the Internet as follows: “The Internet is not a physical or tangible entity, but rather a giant network which interconnects innumerable smaller groups of linked computer networks. It is thus a network of networks.”

This network of networks connects people from far away places as if they are in the next room. The Internet has revolutionized communications and the way we live, making virtual friends online that we are likely to never even meet; namely, those from far away locations that we share similar interests with and connect with via LinkedIn, befriend on Facebook or those we play fantasy sports in the same ESPN league. But for all the good and enjoyable that comes from the Internet there are ever present downsides. Loss of privacy, being constantly tethered to a machine or device and, of course, the crimes that become so much easier to perpetrate.

Copyright protection does not exist for an idea, procedure, process, method of operation, concept, principle, or discovery. This is true because a copyright protects only the form of expression rather than the subject matter of the resulting creation. Furthermore, a copyright is not “granted” in the same manner as patents or trademarks. A copyright is provided to the authors of “original works of authorship,” regardless of whether the work has been published and regardless of whether the work has been formally federally registered.

Unlike filing a patent application, copyrights come into being at the moment an original work is fixed in a tangible medium of expression. While federal registration of a copyright does have significant advantages, no registration is required in order for a copyright to exist. Likewise, no registration is required for an author to begin using the familiar copyright symbol – ©.  Nevertheless, anyone serious about building an intellectual property portfolio to protect their creative endeavors absolutely must apply for federally registered copyrights.  Simply stated, the cost is negligible, the rights obtained stronger than the cost would ever suggest and the protection is too long lasting to be ignored.

With the new school year rapidly approaching I thought I might take this opportunity to provide some answers to questions I am frequently asked relating to copyrights by educators and administrators. I have tried to be as thorough as possible, but thorough and complete answers are well beyond the scope of this article.  Complete thoroughness is also difficult any time you are dealing with copyrights, particularly in an educational context, because the creator owns “exclusive rights,” but “fair use” grants permission to anyone, particular educators, to use at least portions of copyrighted works.

In some cases reference to this article together with reference to United States Copyright Office Circular 21 may provide the guidance that is necessary. More than likely, however, it will be necessary to seek either: (1) permission to use the work of another; or (2) the advice of an attorney who can thoroughly analyze the unique facts presented by your situation. Having said this, when in doubt it is always the better practice to seek permission. In my experience most copyright owners are more than happy to comply with the reasonable request of an educator. Indeed, many copyright owners are honored by the fact that a teacher or professor would want to use their work in their classroom.

Congratulations are in order for the Google Legal Team! Yesterday Corporate Counsel announced that Google Inc. was selected as the winner of the 2011 Best Legal Department competition. United Parcel Service, Inc., and WellPoint, Inc., were also given honorable mention recognition. The detailed profiles of all three will be published in the magazine’s June issue and also available online.

This story caught my eye because Anthony Paonita, Editor in Chief of Corporate Counsel, cited the selection of Google as the winner due to the fact that the company “has had to deal with the sometimes messy consequences of its frequent marketplace disruptions.”  Paonita went on to explain that the Google “win stems from these cases that “test the limits of laws perpetually lagging behind new technology. Can advertisers use trademarked terms in Google ads? Can Google scan and make available copyrighted but out-of-print books? Is the company liable if results of its search engine direct users to counterfeit or pirated products?”  But wasn’t the resolution of the trademark terms a loss for Google at least indirectly?  Isn’t the so-called Google Book Settlement on hold having been rejected by the district court?  And didn’t Google just set aside $500 million to cover the cost of fines relating to an antitrust investigation initiated by the Department of Justice? See Google puts $500 million in antitrust pot.

It seems that two or three times a week I am sending a DMCA take down notice to a website hosting company to complain about the blatant and willful copyright infringement certain customers of theirs are engaging in.  They will literally cut and paste entire articles without as much as changing a single word.  Copyright infringement is rampant on the Internet and if you are creating original content you must do something to inform yourself about what others are doing and take appropriate and immediate steps to get copyright infringers to stop.

By now you would expect that virtually everyone knows that you cannot cut and paste the work of others onto your website without their permission, but I am not sure that is the case.  Whenever I talk to people about copyright law and the copyright infringement we deal with they ask “so they just copied your work without any link back to you?”  In some cases I can answer that question “yes,” but in other cases the answer is “no.”  It is amazing to me that people can actually think they can copy the work of others if only they provide a citations or link back.

The theft of intellectual property rights enabled by the Internet is growing to alarming rates. The primary concerns are digital piracy and the sale of counterfeit goods, and even medicines. For example, see Counterfeiting Costs US Businesses $200 Billion Annually and US Trade Representative Issues Annual Report on Global IP Rights. But we shouldn’t fool ourselves and try and pretend that the lack of respect for intellectual property rights is limited to those who seek to share movies, music or make a buck selling knock-off products. Everyone who produces original content on the Internet is at risk of having that content stolen; simply cut and pasted onto some other website or blog. Even if it is not passed off as original content and you do get “credit” the copyist is using your work for their own benefit. They are stealing eyeballs, diverting traffic and likely costing you money. At the very least, they are free riding, which is a hard pill to swallow.

From the shameless commerce division, with at least a mild dose of self promotion, I am here to tell you about some of the intellectual property programs that the Practising Law Institute (PLI) has in store for the Winter 2011 season.

By now practically everyone probably knows that PLI is a sponsor, and that I teach the PLI Patent Bar Review Course, so I suppose you can take what I say with a grain of salt, but I am really looking forward to these PLI programs in particular.  I will be signed up to attend via webcast the programs I cannot make live, and I will be in in Chicago, IL in March for the Patent Bar Review Course and in New York City for the 5th Annual Patent Law Institute from February 17-18, 2011.  If your firm is a privileged member you can attend these and all other PLI programs for free, with the exception of the Patent Bar Review Course.

On July 23, 2008, the United States Patent & Trademark Office published an interesting notice in the Federal Register reminding patent attorneys and patent agents that there appears to be widespread and open violations of the Export Administration Regulations within the industry. Shortly after the aforementioned Federal Register Notice was published I wrote, rather naively in hindsight, that this announcement “should signal an end to the $2.2 billion per year patent outsourcing to India.”  See USPTO Ends Patent Outsourcing to India.

Obviously, that hasn’t happened. It seems more and more patent outsourcing is occurring, despite the fact that it is against the law, which seems to bother no one; that is no one other than those in the industry that are losing their jobs to the shoddy work provided by outsourcing companies in India. But what of the ethical concerns? What about the conflict of interest nightmares that India presents? What about the lack of respect for intellectual property rights? Everything seems to be fine and dandy, and likely will remain so right up until things are neither fine nor dandy, but by then it will be too late.

Ladies and Gentlemen, allow me to take this opportunity to introduce you to intellectual property’s latest monster- the copyright troll. Please hold your applause. It looks like patents have an uglier, even meaner stepsister.

Copyright trolls are a relatively new beast, and it’s hard to nail down a definition, so I’m just going to fall back on the immortal words of Justice Stewart’s famed copout “I shall not today attempt further to define the kinds of material I understand to be embraced . . . but I know it when I see it . . .” Boy, you said it, Justice Stewart. Of course, he was talking about obscenity and I’m talking about troglodytes. But to me, copyright trolls are like patent trolls. They have very little or no interest in the progress of the arts and brandish their copyright like a sword. They threaten to sue anyone and everyone who even looks at their copyrighted material without permission.

Earlier today, at 2:32 pm Pacific Time, a jury in the United States Federal District Court for the Northern District of California handed down the largest copyright damages verdict in United States history, ordering SAP AG to pay Oracle USA, Inc. the sum of $1.3 billion.  After polling, the jury was excused at 2:33 pm and the Court adjourned at 2:35 pm, but this case is certainly long from over.  There will likely be innumerable post trial motions and the inevitable bluster about an appeal, which is all but guaranteed.  But for today, renowned trial attorney David Bois and his capable team can savor an enormous victory in this monumental case.