One of the most common defenses to patent infringement is that the asserted patent is invalid. The reasons for invalidity regularly range from lack of utility, to incorrect inventorship, and even to fraud (as I’ve recently written about). Often, the defendant asserts that the patent is invalid for lack of novelty or non-obviousness–pointing to some piece of evidence that the defendant says conclusively shows that the invention was already in the public domain before the plaintiff even applied for the patent. That evidence is called invalidating “prior art.”

Prior art can spell the unexpected demise of an otherwise valid patent, and it comes in many forms. For several decades, published prior art (not to be confused with prior art in the form of prior uses or sales) consisted of already-existing patents (and applications), trade journals, drawings, articles, websites, standards, whitepapers, etc. But Congress expanded the scope of published prior art dramatically in passing the America Invents Act in 2012. Whereas before prior art consisted merely of “printed publications,” post-AIA, prior art also encompasses things that are “otherwise available to the public.”

The larger–and more modern–universe of possible published prior art is easy to imagine. For example, prior art references are no longer limited to traditional publications and documentary evidence. Instead, additional forms of multimedia come into play–which is fitting in today’s multimedia-packed times. Videos, movies, broadcasts, and recordings all now qualify as prior art, so long as they are available to the public.

But despite this expansion, litigants have not yet fully taken advantage of the change. There have been a few recent uses of video as prior art, such as the iconic iPhone keynote speech made by the late Steve Jobs demonstrating a technology described in an Apple patent. Ironically, in commenting on the “bounce-back” effect that was the subject of the patent, Steve Jobs stated, “boy have we patented it.” But Apple failed to patent it fast enough after the speech.

https://youtu.be/-3gw1XddJuc?t=29m7s

Samsung used clips from Stanley Kubrick’s 2001: A Space Odyssey to argue that Apple’s design patent for the shape of a tablet was invalidating prior art.

Apple really seems to be taking the brunt of video prior art challenges.

Just one week ago, a Federal district judge in the Northern District of Florida addressed–apparently for the first time–whether a YouTube video could constitute prior art. The court, in HVLPO2, LLC v. Oxygen Frog, LLC, 4:16-CV-336 (MW/CAS) (Dkt. No. 133), held that a YouTube video can constitute prior art and that YouTube videos are “sufficiently accessible to the public interested in the art.” Not exactly a groundbreaking finding to someone of my generation, who grew up with YouTube and the internet. Indeed, the USPTO’s own training guides (slide 15) specifically state that YouTube videos are a perfectly acceptable form of prior art. The USPTO has stated that videos qualified prior to the AIA, but there is conflicting authority.

The plaintiff in HVLPO2 had argued that the particular YouTube video in question was uploaded on a random account, so no one interested in the art would have found it. The court pushed back in eccentric fashion, stating:

It appears that Plaintiff is unfamiliar with how YouTube works. A familiar user would know that you don’t need to search for a particular channel to watch the videos uploaded on it. For example, if you want to watch a video of a cat skateboarding, you can search “cat skateboarding”; you don’t need to know that it might have been “CatLady83” who uploaded the video you end up watching.

The court held that the YouTube video in question appeared within the first 20 videos when using appropriate search terms on the site. “Surely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the ‘reasonable diligence’ that the law expects of a hypothetical prior art subject.” I couldn’t agree more, and I recommend this fun cat skateboarding video:

But even though most YouTube videos are generally accessible, not all are available to the public. For example, YouTube videos may be “private” or “unlisted,” potentially removing them from the “otherwise available to the public” category or at least undermining the argument for their accessibility. Thus, as even the court in HVLPO2 noted, the defendant still has to prove the existence of public access to the video prior to the applicable date. This can be accomplished by proffering screenshots of the video in the browser and evidence of that video’s publication date (which is disclosed on the YouTube website and many other video sharing platforms).

Besides the above, there are few other examples of videos (online or otherwise) being used as prior art. This is probably due in part to the current difficulty of searching the vast amount of video and audio–as opposed to text, for example–available on the internet. But as computer learning gets better and better, I expect audiovisual prior art will play a bigger role in both patent prosecution and litigation, so long as that prior art is “otherwise available to the public.”

There is a battle brewing over songs by Minnesota’s own Prince.  I, for one, am anxious for the dispute to be resolved so we can enjoy these recordings. Who knows, there may be another worldwide hit “Purple Rain” out there.

The initial lawsuit was brought by Prince’s company Paisley Park Enterprises, which is now owned by his estate and its representative Comerica Bank & Trust, N.A.  (Collectively “Prince’s Estate”). Prince’s estate filed a Statement of Claim against George Boxill who was the sound engineer who worked with Prince on several music performance recordings. Before working with Prince, Mr. Boxill signed a confidentiality agreement. Prince’s estate states that the agreement explicitly stated that all recordings from the consultation remained the property of Paisley Park Enterprise. In 2006, Boxill worked with Prince to record five songs that have not been released yet. Other songs from this work were released on Prince’s album titled 3/21, which credited Boxill as a sound engineer. However, that same year, Boxill refused to return the five recordings to Paisley Park Enterprises. Prince’s estate now argues that this refusal to return the musical recordings violated his agreement.

A year after Prince’s untimely and tragic death, and ten years after working with Prince, Boxill mixed and edited the Prince songs. Boxill and Rogue Music Alliance, LLC and Deliverance, LLC (“music companies”) began promoting and selling the recordings under the name of “Prince” on the website www.princerogersnelson.com (the artist’s full name). They issued a press release announcing a nationwide release of an EP titled Deliverance that included songs by the late iconic Prince. This caused Prince’s estate to commence arbitration against Boxill and another case against Boxill and the music companies in federal court to stop the release of the songs and return them to Prince’s estate.

On April 20, 2018 (five days before the evidentiary hearing in the arbitration proceedings), Boxill and the music companies filed an emergency motion in the United States District Court for the District of Minnesota to enjoin the arbitration. United States District Court Judge Wilhelmina Wright denied the motion.

Boxill and the companies filed another motion to stay the hearing, arguing that the Copyright Act preempted the state law claims asserted in the arbitration proceedings. Judge Wright again denied the motion and ruled that the Eight Circuit lacked jurisdiction to review her order.  Despite this second order, Boxill filed the appeal.  Prince’s estate not only opposed the appeal but also asked for sanctions against Boxill and the record companies. The Eighth Circuit denied both motions.

Hopefully, this dispute will be resolved quickly and we can all enjoy recordings from the late great Prince.

This is the question a court in the Southern District of New York will be dealing with in a recent lawsuit filed against Destiny Hope, a/k/a Miley Cyrus and others.  Does Miley’s chart topping 2013 hit song “We Can’t Stop” infringe on a song written by Michael May?

Jamaican songwriter and deejay Michael May goes by the stage name “Flourgon.”  This name was given to him because of his love of dumplings.  Specifically, Flourgon alleges that Miley and others, including her co-songwriters and record company, infringed on the copyright he has for the song “We Run Things.”  In the complaint, Flourgon alleges that  Miley’s co-writers acknowledge the Caribbean musical influence behind Miley’s song.

Trying to shake her sweet Disney image (i.e., Hannah Montana), Miley came out with her fourth album with the edgy song “We Can’t Stop.”  The sexy star in the racy video for the song stands in stark contrast with her wholesome Disney image.

The lawsuit highlights Miley’s lyrics “We run things/ Things don’t run we.”   Flourgon asserts that his “unique, original and creative lyrical phrasing ‘We run things, Things no run we’ is not syntactically correct, and is a conspicuous departure from proper English grammar with its improper sentence construction such that it is noticeably unique, creative and original thereby mandating further inquiry, which should have been conducted by Defendants . . .”

In addition to damages, Flourgon seeks injunctive relief to prevent Miley from selling or performing the song. Miley and the others will be filing an answer denying the allegations or another pleading in the coming weeks.

You can compare the lyrics of Miley’s song by looking at the lyrics here versus Flourgon’s song here. What do you think?

–James Mahoney, Razor’s Edge Communications

Recently violinists Rhett Price and Shiva Chaitoo got two very different lessons on the downside of posting performances on the Internet.

According to an article in The Boston Globe, a fan of Price alerted him to a video of Chaitoo’s playing. Turns out, Chaitoo was pulling a Milli Vanilli, fingering his violin over a sound-track of Price’s recordings. And he’d been doing it for at least a couple of years, and getting paid gigs from people who’ve seen the vids or his “live” performances.

Long story short: Price isn’t looking for anything more than for Chaitoo to stop his “tribute.”

What’s really interesting about the situation, though, is the copyright aspect of it, and the apparent lack of legal remedies available to Price.

According to Paul Litwin, a partner of Shames & Litwin entertainment lawyers, when Price posted his videos on YouTube and offered free downloads in exchange for email addresses, he essentially granted some use-rights. YouTube’s terms of service include “a worldwide, non-exclusive, royalty-free, sub-licenseable and transferable license to use.”

Litwin says, “If you buy and download a song, you can pretend to play and sing along with it. By posting his music on YouTube, Rhett is allowing the YouTube community to use it. [Chaitoo] isn’t saying he’s Rhett, so from a legal standpoint, he does not appear to be infringing copyright laws.”

Really? The YouTube T&S notwithstanding, it seems to me that this would usually come under fair-use category. Since Chaitoo used it for a marketing tool (and probably also “performed” the tracks at his paid gigs), I think he hit some very sour copyright notes. There’s a world of difference between playing air-violin in your living room and what Chaitoo did.

As I’ve mentioned often before, I’m no lawyer (though I play one in the living room by reading aloud Steve Baird postings as if they were my own), so what do you knowledgeable folks think about both the situation and Lawyer Litwin’s assessment?

And one final factor to consider: Chaitoo lives and works in Trinidad and Tobago, which may complicate the copyright issue and Price’s available recourse.

This is the question being presented in a lawsuit pending in the Southern District of New York against the iconic band U2 and a majority of its band mates.  Paul David Hewson (more well known as lead singer Bono), David Howell Evans (more well known as guitarist extraordinaire the Edge), drummer Laurence Joseph Mullen Jr., and bassist Adam Clayton were all named as defendants in the Amended Complaint filed by British recording artist Paul Rose (“Rose”) in June of this year.  He contends that U2’s The Fly from the 1991 Atchung Baby album ripped off his musical composition Nae Slappin.

Atchung Baby and Nae Slappin
Atchung Baby and Nae Slappin

Rose contends he dropped off a demo tape at Island Records.  U2 recorded at Island Records and allegedly listened to the demo tape.  Both Rose and U2 were often in the Island Records offices.   Rose claims that the renowned guitarist The Edge changed his approach to guitar playing after hearing Rose’s work.

Rose claims that the lyrics of The Fly concede that U2’s new musical sound and direction was not really new.  As the great Bono sings:  “Every artist is a cannibal, every poet is a thief.”  Rose contends that this rings true with U2.

In its recently filed motion to dismiss, the iconic band argues that Nae Slappin is a different animal than The Fly.   Rose’s “Nae Slappin is essentially an extended guitar solo consisting mostly of multiple guitar tracks, with percussion accompaniment.”  “There are no vocals, no lyrics, no subject, and no theme.”  It is experimental and acts as a vehicle for Mr. Rose to showcase his guitar skills.  In stark contrast, U2’s The Fly is a “‘song’ in the true sense of the word, with everything that comes with it:  vocals, lyrics, a subject and a theme.”  “‘The Fly’ is a direct reference to ‘The Metamorphosis’ by Frank Kafka, in which the protagonist changes overnight from a travelling salesman to a giant insect, or fly.”   I must admit I did not like the movie with Jeff Goldblum and Geena Davis that is based on Kafke’s novella.  However, it looks like I was in the minority as Rotten Tomatoes shows a 91% rating by critics and 83% rating by audiences.  I might have to re-watch the movie now that I am an adult.  But, I digress.

While writing this blog post, I watched an old YouTube video of U2’s song for the first time.  See below.

I liked the song (and the video).                

The standard for determining copyright infringement is whether the “total concept and overall feel” are the same.  U2 alleges that the two works: The Fly and Nae Slappin do not meet this standard.  The band accuses Rose of parsing the two works. For example, he points to a 7-second clip from Nae Slappin and a 12-second clip from the band’s The Fly.  Rose also asserts claims about the “percussion” or a “beat” that the band claims is inappropriate.   Relying on previous case law, U2 asserts that the beats alone “are too common of a musical technique to be protectable.”  Further, U2 complains that there cannot be protectable expression in a “chord change” from “E7 to A7.”        

U2 asserts that “musical ideas” are not protectable—only “artistic impressions.”  Accordingly, U2 contends that Rose’s Amended Complaint should be dismissed.

U2 also argues that Rose waited too long to bring this lawsuit.  He waited 25 years.  We will have to see how Rose counteracts this argument.  In his Amended Complaint, Rose asserts that he has a “witness who had provided the Rose demo tape to the Island Records executives,” who had only come forth recently because she was previously concerned about losing her job.  This may be a reason Rose will assert that he waited.

Rose asserts an equitable claim for right of attribution and writing credit for The Fly.  U2 contends that this claim is really a claim for ownership of the copyright which is barred by the three-year statute of limitations.  This is different than laches (you waited too long).  Rather, a statute of limitations cuts off your right to make a claim (except if there are tolling arguments, fraud or the like).

Will U2 prevail on its motion? Will U2 play The Fly when the iconic band comes to Minneapolis to play at the US Bank stadium in September?

-Wes Anderson, Attorney

A bit belated, but I finally caught a screening of Star Wars: The Force Awakens. Unbeknownst to me, the film was missing a part of the Star Wars experience many fans hold dear. And it’s all about branding.

Note: No spoilers of the film itself follow here, unless you consider a discussion of the pre-opening titles a “spoiler” unto itself. A further note: I do not hold myself in any way to be a competent Star Wars nerd, so please excuse any missteps or general unfamiliarity with the lore surrounding the films.

When most people think of the Star Wars opening titles, they probably think of the John Williams score’s opening flourish and a giant yellow STAR WARS outlining flashing on the screen before zooming into space to make way for the iconic scrolling text to introduce the film’s story. But many fans also immediately think of what precedes all of that – the 20th Century Fox “spotlights” logo and its associated fanfare.

20thcentury

 

It turns out that prior to the release of the first Star Wars film in 1977, 20th Century Fox had abandoned the logo and fanfare in the opening titles for films it distributed. But George Lucas loved it so much he insisted that it precede the Star Wars opening titles. It’s said that John Williams went so far as to record the soundtrack’s opening titles in the same key as the Fox fanfare, so as to truly integrate 20th Century Fox’s branding into the fabric of Star Wars. The Fox fanfare was reborn.

This all changed in 2013, after Disney purchased Lucasfilm and the rights to the Star Wars franchise. When releasing the library of Star Wars films in digital download format, Disney removed the 20th Century Fox fanfare from the opening titles. A logical move, it would seem, but it irked many Star Wars fans who considered it an indispensable part of the films. Many worried that Disney’s first new Star Wars film, “The Force Awakens,” would feature an amalgam of Disney / J.J. Abrams branding that would clash with history, as conceptualized in this YouTube video.

Screen Shot 2016-01-15 at 6.57.37 AM

Some even wondered if it would be possible for Disney to license the 20th Century Fox fanfare. While all things are possible in trademark licensing, this would likely be a step too far for 20th Century Fox, which now uses the fanfare and spotlights logo for all of its films.

Fortunately, these Disney-fication fears did not come to fruition – The Force Awakens begins silently, displaying only the Lucasfilm logo, before the iconic text “A long time ago in a galaxy far, far away…” appears on screen, and the John Williams score takes over. The Disney logo never appears (at least I didn’t notice it, unless it snuck into the film’s closing credits). And yet, despite its visual absence, I was acutely aware that this movie had Disney’s fingerprints all over it.

In making branding decisions, sometimes less can be much, much more.

Let’s suppose you conduct sightseeing tours using a tram car, maybe on the boardwalk in New Jersey. Maybe even a famous tram car service you’ve operated since 1949?

Let’s further suppose your passengers may get on or off anywhere along the route, as it travels along Wildwoods Boardwalk.

Would you think you could own a sound trademark, if your tram played, since 1971, a sound recording saying these cautionary words over and over again: Watch the tram car, please!“?

Back in June, during the heat of the season, it appears the operator of the tram car service believed it did, filing a federal service mark application for a sensory mark described this way: “The mark is a sound. The mark consists of the spoken phrase, ‘Watch the tram car, please’.”

I’m guessing the operator is having second thoughts now, given the USPTO’s registration refusal issued just last week, sounding the death knell to this baseless trademark claim:

“Registration is refused because the applied-for mark merely conveys an informational warning/cautionary message; it does not function as a service mark to indicate the source of applicant’s services and to identify and distinguish them from others.”

“Because consumers would regard the phrase as indicating an important command to give attention to the tram car so that nothing bad or unwanted happens, they would regard the phrase as informational rather than as a source indicator. This notion is reinforced by applicant’s specimen, which shows that the mark is presented to consumers as the tram car approaches, in the fashion of a warning. The specimen does not show the mark being presented to consumers at other non-warning times, such as when purchasing tickets or visiting a website. Instead, the sound is played when the consumers are in need of a safety warning that a heavy vehicle is moving toward the vicinity.”

Honestly, I’m mystified by this trademark claim. Really, putting aside the merits, what’s the point? What’s the purpose, the ultimate goal? Prevent others from issuing similar cautionary messages on competing transportation methods?

I suppose if there was some distinctive music in the background to carry the merely informational words, there might be some possibility of disclaiming the words and still having something left to own as a mark, but the spoken words alone, I’m not seeing it.

Perhaps the applicant confused “look for advertising” with their cautionary and merely informational “watch the tram” message?

I’m thinking there is no amount of evidence that can turn the Watch the tram car, please! phrase into a mark for tram car services, do you agree?

Is this a good reminder to watch the informational refusals, please, at least when making silly, overreaching non-traditional trademark claims?

-Wes Anderson, Attorney

It has been a tumultuous year for copyright owners. The old cliche is “if you love something, set it free,” but it seems plenty of third parties are happy to take on that task when it comes to copyrighted content.

Now that mainstream smartphones allow anyone to capture high definition video, mobile apps in particular have been fertile ground for uploading and sharing infringing content. The Mayweather-Pacquiao fight in May may have smashed revenue records, but it also exposed novel methods for pirating digital content.

And even-newer apps are never far away. Earlier this month, filmmaker and popular YouTube video creator Casey Neistat released his new mobile app, “Beme” (pronounced “beam,” but also a play on “be me”). Pitched as “the simplest and most authentic way to share your experience on video,” the app takes a new approach to sharing in the same vein as Snapchat. It allows users to share video without touching a button – just by holding or blocking the iPhone’s proximity sensor near the earpiece. The app takes a four-second video and then immediately posts it on Beme’s network for followers (and strangers) to access. Once viewed, the videos disappear from a user’s timeline.

The Beme app, as seen at https://www.youtube.com/watch?t=139&v=mixsze6uJPg
The Beme app, as seen at https://www.youtube.com/watch?t=139&v=mixsze6uJPg

Beme may give pause to copyright owners given recent history. Consider the plight of Periscope, the live-streaming app owned by Twitter that launched in March 2015 to enormous fanfare. During the aforementioned Mayweather-Pacquiao fight, Periscope was the app du jour for watching unauthorized streams of the pay-per-view fight. It was as simple as streaming a TV screen to millions online. Periscope also became known as a popular platform for watching the latest Game of Thrones episode, much to the consternation of HBO. Twitter quickly found it did not have the adequate measures in place to police all those live streams on such a novel platform.

Is Beme the next Periscope? It’s clear that Periscope is a different breed of app – it allows a user to “stream” video live for an indefinite period of time, and videos remain accessible to the public for up to 24 hours after broadcast. Periscope also allows viewing across various mobile platforms.

As for Beme, it certainly isn’t built with the intent of sharing copyrighted content. As discussed in this video, Beme videos are limited to four seconds, and they play in relatively low quality compared to traditional HD video. The app is iPhone-only, with no Android app or web access as of yet. But there are some features that may facilitate, rather than hinder, piracy. Users can stitch an indefinite amount of four-second videos together to create a longer series of videos — and, unlike Periscope, Beme videos aren’t accessible via a public link, so infringing content could go undiscovered.

Is Beme the next frontier for copyright owners? In essence, the app’s novelty makes it difficult to predict whether it will be a platform for pirated content – that’s up to the users. In the meantime, content owners would do well to remain vigilant. And to Beme’s credit, it has deployed some measures to control the content shared through its app. Despite being a fledgling app and company, Beme wisely deployed a robust Terms of Use and DMCA Policy on its website right as the app launched. Beme doesn’t yet have a “report” button in its app, and so the sole recourse for content owners is to send a DMCA notice to Beme under the Digital Millenium Copyright Act, or DMCA.

Beme's DMCA Policy
Beme’s DMCA Policy

Time will tell whether Beme’s listed contact is inundated with DMCA notices as the platform develops. If nothing else, Beme serves as a valuable case study: copyright owners must police an ever-growing library of content-sharing platforms, and mobile app developers should ensure the proper policies are in place – such as terms of use, privacy policies, and DMCA policies – to police infringing activities by users, however remote the possibility may seem.

You may, like me and hundreds of others, have had the “Blurred Lines” verses: “I know you want it, You’re a good girl, You’re far from plastic, Talk about getting blasted, I hate these blurred lines,” stuck in your head. And, who could forget the new word “twerk” with Robin Thicke’s performance with Miley Cyrus at the award show.

thickecyrusThis song is at the heart of a lawsuit brought by Robin Thicke and songwriter Pharrell Williams against Marvin Gaye’s children. Pharrell and Thicke wanted a court to declare that they had not infringed on the Gaye children’s copyright for the written music. The jury disagreed, returning a verdict awarding Gaye’s children $7.36 million in damages based on their rights in “Got to Give it Up.”

The Gaye children have filed an injunction to prevent future sales unless they attribute the writing to their father and provide them with compensation. In turn, Pharrell Williams and Robin Thicke want to file post-trial motions and possible appeals. The jury declined, however, to find Thicke and his ex-wife had infringed on the Gaye’s children’s copyright with their song “After the Dance.”

Only time will tell if Robin Thicke and Pharrell Williams can twerk their way out of the jury’s copyright infringement ruling.

A brand owner’s non-traditional trademark application will sometimes gain the critical attention of multiple direct competitors. Gibson Guitar’s unlucky number is apparently fifteen.

Last Thursday, Gibson’s guitar configuration application shown to the right and below was opposed by far more competitors than it has strings on the above ebony Gibson ES-339 Studio Electric Guitar:

  • U.S. Music Corporation
  • ESP Shibuya Enterprises, Inc.
  • Cordoba Music Group, Inc.
  • Collings Guitars, Inc.
  • Ed Roman Enterprises, Inc.
  • Armadillo Enterprises, Inc.
  • Schecter Guitar Research, Inc.
  • Westheimer Corporation
  • Peavey Electronics Corporation
  • Warwick GmbH & Co. Music Equipment KG
  • James Trussart Guitars, Inc.
  • JS Technologies, Inc.
  • Premier Builders Guild, LLC
  • Sadowsky Guitars, Ltd.
  • John Hornby Skewes & Co., Ltd.

The opposers contend that the shape of the guitar is either generic or lacking in distinctiveness as a result of the “rampant” use of identical or substantially similar designs by a multitude of third parties over the past half a century. They name names, decade by decade.

So, stay tuned as we follow this interesting trademark chord, anxiously awaiting to hear whether Gibson is able to play something more than a classic blues riff, perhaps on something like this 15 string bad boy:

It appears that the opposers have spent some time doing their homework; if even half of what they say can be proven, they’ll be strumming Gibson’s pain with their fingers, and killing the trademark application (not so) softly.

UPDATE: It appears we have officially reached the point where I can’t keep track of all our content, I’m reminded that Dan Kelly had a great post from 2010 dealing with the guitar head issue, enjoy:

https://www.duetsblog.com/2010/11/articles/trademarks/get-your-paper-jamz-guitars-while-you-can/