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Transformation or Derivation: Modern Trends in the Fair Use Doctrine from Software to Photography

“Fair Use” is a flexible defense to claims of copyright infringement. It is a doctrine that evolves as technology and the way in which people use copyrighted works advance. As an exception to the general law prohibiting copying others’ works, it permits copying for a limited and “transformative” purpose, such as commentary, criticism, teaching, news reporting, scholarship, or research. Naturally, the way courts analyze the “fair use” defense must adapt as technology advances and the way in which creative content is developed evolves. Earlier this year, for example, the U.S. Supreme Court ruled on a landmark fair use case involving the “copying” of an Application Programming Interface (API).

Faegre Drinker is Seeking an Intellectual Property Associate

The Faegre Drinker Trademark, Copyright, Advertising and Media (T-CAM) Team is seeking an attorney to join its thriving Intellectual Property practice. Faegre Drinker Biddle & Reath LLP is an Am Law 50 firm with offices located throughout the U.S., Europe, and China. This full-time, permanent partnership track position offers the opportunity to play a key role in growing our existing T-CAM practice in our Chicago, Indianapolis, Minneapolis, Washington D.C., San Francisco, or Denver offices. Reduced hour and non-partnership track arrangements are also available. 

The State of the SEP Ecosystem: Eight Takeaway Messages from SEP 2021

Last week, IPWatchdog hosted its annual SEP conference, which once again took place in virtual format. I either moderated or directed/produced all the panels, so I stayed busy throughout the week, but still managed to pay attention to what was being said by the panelists. For some panels I participated more, making it a bit more challenging to take notes, so when I say what follows are statements that particularly piqued my interest, I am by no means suggesting there weren’t many more golden nuggets of wisdom imparted to the over 900 registrants over our four-day program.

Google Wins Transfer as CAFC Continues Mandamus Spree Against Albright

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday continued its trend of granting mandamus directing Judge Alan Albright of the U.S. District Court for the Western District of Texas to transfer a case to the Northern District of California. In the latest order, Google LLC petitioned the CAFC to direct Albright to transfer the case after he denied it based on the expected time to trial “despite the court itself finding that the transferee venue was otherwise more convenient,” wrote the CAFC, adding that this was a clear abuse of discretion.

CAFC Emphasizes the Importance of Contract Principles in Arbitrability Determination

On November 12, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the U.S. District Court for the Northern District of California that compelled arbitration and dismissed Rohm Semiconductor USA’s declaratory judgment action without prejudice, holding that an arbitrator must determine arbitrability. In 2007, Rohm Japan and MaxPower Semiconductor entered into a technology licensing agreement (TLA). According to the TLA, Rohm Japan and its subsidiaries were permitted to use certain power-related technologies of MaxPower developed under a Development and Stock Purchase Agreement in exchange for royalties paid to MaxPower. In 2011, the TLA was amended to include an agreement to arbitrate “any dispute, controversy, or claims arising out of or in relation to this Agreement or at law, or the breach, termination, or validity thereof.” Further, the amendments provide that arbitration must be conducted “in accordance with the provisions of the California Code of Civil Procedure (CCCP).”

B.E. Technology Dubs IPR Process a ‘Kafkaesque Nightmare’ in Mandamus Petition to CAFC

B.E. Technology, a company owned by Martin David Hoyle, developer of internet advertising technology who has been embroiled in litigation with big tech companies like Facebook, Twitter and Google for close to a decade now, today filed a petition for writ of mandamus with the U.S. Court of Appeals for the Federal Circuit (CAFC). The petition asks the court to intervene to “prevent an unconstitutional deprivation of B.E.’s property rights in the onslaught of IPR proceedings that have been brought to challenge the validity of its most critical patents.” B.E. specifically asks the CAFC to direct the Patent Trial and Appeal Board  (PTAB) to vacate its decisions to grant institution in four separate inter partes review (IPR) proceedings: Twitter, Inc. and Google LLC v. B.E. Technology, L.L.C., Nos. IPR2021-00482, IPR2021-00483, IPR2021-00484, and IPR2021-00485. The question presented is: “Whether a writ of mandamus should issue to prevent an unconstitutional deprivation of the Petitioner patent owner’s property rights without due process of law?”

This Week in Washington IP: Leahy Announces He Won’t Run Again; Demystifying Crypto Assets, and Building Resilience Against Ransomware in the United States.

This week in Washington IP events, Senator Patrick Leahy (D-VT), the current Chair of the Senate Judiciary Committee’s Subcommittee on Intellectual Property, announces that he will not seek reelection in 2022; the Joint Congressional Economic Committee gears up for a hearing on demystifying both cryptocurrencies and the federal government’s role in regulating those digital assets. Over in the House of Representatives, the House Energy Committee hosts a mid-week hearing to discuss the potential impacts of supporting research and development in the field of nuclear fusion technology, while the House Oversight Committee explores efforts that U.S. law enforcement officials have been taking to curb the rising threat of ransomware. Elsewhere, The Brookings Institution hosts a conversation with U.S. Labor Secretary Marty Walsh to discuss the impact of 21st century innovations on the American workforce, while the Center for Data Innovation discusses the impact of decisions by major Internet browser providers to end third-party cookies for tracking browser activity.

Patent Infringement, Antitrust, and the Discovery Rule

On September 20, 2021, Judge John Robert Blakey in the Northern District of Illinois issued an opinion in a Walker Process patent fraud antitrust case denying defendants’ motion for summary judgment on their statute of limitations defense. TCS John Huxley America, Inc. v. Scientific Games Corp., No. 1:19-cv-1846, 2021 WL 4264403 (N.D. Ill. Sept. 20, 2021). The opinion established important principles regarding application of the statute of limitations to the “discovery rule” in a Walker Process antitrust case. The author’s firm, Freeborn & Peters, was one of the firms representing the plaintiffs. The plaintiffs had sued Scientific Games Corp. alleging a violation of Section 2 of the Sherman Act. The complaint alleged that Scientific Games, through its acquired entity, SHFL Entertainment, brought patent infringement litigation in 2009 and 2012 based on fraudulently obtained patents for automatic card shufflers used in licensed casinos.

J.E.M.: The Supreme Court’s Last Expansion of Patent Protection, 20 Years Ago

In 2001, the U.S. Supreme Court ruled for the first time that plants could be protected with utility patents. J.E.M. Ag Supply, Inc., v. Pioneer Hi-Bred International, Inc. 534 U.S. 124. This landmark decision, originating in the agricultural heartland of Iowa, was the last time the Supreme Court effectively increased patent protection for inventors and patent owners. Most, if not all, of the Supreme Court’s patent rulings in the past two decades have not been favorable to patent owners. Rather, these “recent” decisions have restricted patent rights and made it more difficult to enforce these rights against infringers.

CAFC Vacates TTAB Finding of No Fraud on the USPTO, Citing Two Legal Errors

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, November 12, vacated and remanded a decision of the Trademark Trial and Appeal Board (TTAB) that had found Galperti S.r.l (Galperti-Italy) had not committed fraud on the U.S. Patent and Trademark Office (USPTO) in asserting that it had substantially exclusive use of the mark GALPERTI in the five years preceding its registration. The appeal to the CAFC stems from Galperti, Inc.’s (Galperti-USA’s) petition for cancellation based on its own prior use of the same mark, in which the TTAB found that Galperti-USA had demonstrated only insignificant use of the mark and therefore had not proven fraud or falsity on the part of Galperti-Italy. The CAFC cited two legal errors in the TTAB’s analysis that warranted vacatur and remand.

Other Barks & Bites for Friday, November 12: NIH to File Suit Challenging Moderna’s Patent Ownership, EU General Court Affirms Massive Google Fine, and U.S. Government Warns Tech Companies About IP Risks in EU’s Digital Markets Act

This week in Other Barks & Bites: news reports indicate that the United States has warned American tech companies about disclosure rules in the EU’s Digital Markets Act threatening trade secrets; the Federal Circuit dismisses Apple’s latest appeal of Qualcomm IPRs over Judge Newman’s arguments that the licensing agreement between those companies creates standing; Johnson & Johnson and General Electric both announce corporate restructuring plans that will split those companies into multiple businesses; the EU’s General Court affirms a €2.42 billion fine by the EU Commission over Google’s anticompetitive online shopping practices; oral arguments at the Supreme Court indicate that a majority of Justices will side with Unicolors in its copyright case against H&M; NIH Director Collins tells reporters that his agency intends to file suit to challenge Moderna’s ownership of COVID-19 vaccine patents; and Rep. Massie introduces the Restoring America’s Leadership in Innovation Act to repeal much of the America Invents Act and clarify Section 101 subject matter eligibility.

Tai Tells Tillis Support for COVID-TRIPS Waiver is Not Political but Based on ‘Extraordinary Circumstances’ of the Pandemic

Following four letters sent by Senator Thom Tillis (R-NC) to United State Trade Representative (USTR) Katherine Tai regarding the proposed waiver of intellectual property rights under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, Tai on November 8 replied to a July 14  letter sent by Tillis and Senator Tom Cotton (R-AR). That letter referred Tai and Commerce Secretary Gina Raimondo to a May 19 letter in which Tillis, Cotton and 14 other senators requested responses to 10 questions on the proposal to waive IP rights for COVID-19 related technology. The May 19 letter had requested Tai and Raimondo’s responses by July 19, 2021.

WIPO Report Shows Economic Resilience During Pandemic, Buoyed by Massive Numbers of Chinese Patent, Trademark Filings

On November 8, the World Intellectual Property Organization (WIPO) released its World Intellectual Property Indicators 2021 report, the latest WIPO annual report to detail global IP filings across patents, trademarks and other forms of IP. As the key findings from the World IP Indicators report show, intellectual property filing activities, especially those related to trademarks, grew during 2020, showcasing a resilient global economy during the COVID-19 pandemic relative to other economic downturns in recent world history. Much of that activity is driven by domestic IP filings within China, which continues to dominate the world in sheer filing numbers across most forms of intellectual property.

Cloudflare Tests Limits of Contributory Copyright Infringement

One recurring thorn in the side of copyright owners is Cloudflare, the San Francisco-based web performance, optimization, and security company. Cloudflare offers many services to its customers, including a content delivery network that utilizes hundreds of servers around the world to cache its customers’ content. When an end user requests content from one of Cloudflare’s customers, it is delivered to that user from the cached copy on the nearest Cloudflare server—not the customer’s own web host server. This saves on bandwidth costs, improves security, and decreases page load times. It also raises important questions about Cloudflare’s liability for contributory copyright infringement when it knowingly allows infringing content to remain on its cache servers. Under Ninth Circuit precedent, web hosting services like Cloudflare can be held contributorily liable for assisting in the infringement under the material contribution theory. However, a recent district court decision misconstrued the case law to conclude otherwise in Mon Cheri v. Cloudflare.

Faegre Drinker is Seeking an Intellectual Property Counsel-Track Associate or Senior Attorney

The Faegre Drinker Trademark, Copyright, Advertising and Media (T-CAM) Team is seeking an attorney to join its thriving Intellectual Property practice. Faegre Drinker Biddle & Reath LLP is an Am Law 50 firm with offices located throughout the U.S., Europe, and China. This full-time, permanent counsel-track associate or senior attorney position offers the opportunity to play a key role in growing our existing T-CAM practice in any of our U.S. offices. Reduced hours arrangements are also available.