IP Law Watch – Page 42 – Legal issues, law and regulations concerning the world of IP

Sometimes Borrowing Isn’t Stealing: De Minimis Sampling of Music Sound Recordings Isn’t Copyright Infringement, Say Two Key Courts in the United States and Germany

Jun 16 2016

Setting music sampling up for a potential U.S. Supreme Court battle, the Ninth Circuit sided with Madonna Louise Veronica Ciccone and her producer (Shep Pettibone) in emphatically rejecting the Sixth Circuit’s bright-line rule that all unlicensed sampling constitutes copyright infringement. Just days earlier, Germany’s highest court ruled against seminal electronic band Kraftwerk in a similar dispute. While the reasoning in both cases overlapped in some respects, the German court went further by expressly protecting the artistic freedom of samplers and rejecting the requirement — which the Ninth Circuit embraced — that the sample not be recognizable as coming from the plaintiff’s song.

Music sampling, which is common in some musical genres, is the use of snippets from a sound recording — often altered or enhanced in some manner — in a new sound recording. In Ciccone, the Ninth Circuit affirmed the district court’s grant of summary judgment in favor of defendants Madonna, Pettibone and their associated record labels, music publishers and distributors on the grounds that — contrary to the Sixth Circuit rule set forth in Bridgeport — the de minimis exception to copyright infringement applies to sound recordings just as it does to other types of copyrighted works. The samples in question were “horn hits” (punctuation-like snippets of horn section chords) that lasted, respectively, less than a second and less than a quarter-second, and the court found that the average listener was unlikely to recognize their source. In the Kraftwerk case, which involved a two-second drum loop, Germany’s Federal Constitutional Court overturned a finding that electropop producer Moses Pelham had infringed, reasoning that the lower court had not sufficiently considered whether the impact of the sample on Kraftwerk might be negligible.

To read the full alert, please click here.

By Mark Wittow and Eliza Hall

When the Designer Using his Patronymic Infringes Third Parties’ Rights

Jun 16 2016

The Italian Supreme Court Finally Stated on the Long-Standing Fiorucci Case

On 25 May 2016, the Italian Supreme Court released an interesting decision on the use of patronymic as a trademark, which might have significant impact for many fashion and design firms which identify themselves with the name of their founders.

Edwin Co. Ltd., Edwin International and F. Design Office, which had previously acquired from Mr. Elio Fiorucci the ownership and the right of use of several trademarks containing the name ” Fiorucci”, filed an action against the designer because he was using and applying for registration of the trademark “Love Therapy by Elio Fiorucci” to identify a wide range of goods.

Italian Supreme Court on Secondary Meaning: When a Registered Generic Sign can Become a Trademark

Jun 14 2016

On 19 April 2016, the Italian Supreme Court passed on secondary meaning, overruling two sets of proceedings of the courts of merits which declared the invalidity of a trademark.

The case arose some debate among professionals since the trademark declared invalid was registered by a very well-known bathroom tissue producer which invested substantial efforts for decades to ensure that its registered generic sign (“Rotoloni” which literally means big toilet roll) had acquired distinctiveness by way of secondary meaning.

As a result of its efforts, the defendant offered a public opinion survey evidencing that 51% of interviewed consumers were recognizing the generic sign at issue as distinctive of products coming from a specific company. Read More

When a picture can be considered deceptively similar to a word

Jun 14 2016

The Trade Marks Office has taken a sword to the hopes of applicants wanting to register device trade marks which are perceived to match existing registered word marks in its decision on the SAMURAI WARRIOR (device) submitted for registration by Teraglow Pty Ltd.

IP Australia repeatedly rejected the SAMURAI WARRIOR mark at examination stage under s 44(1) of the Trade Marks Act 1995 (Cth), citing prior registered word mark SAMURAI, owned by Globeride Inc.

Federal Circuit Holds That an Offer to Sell a Drug Product Was a Patent-Invalidating Offer for Sale under Pre-AIA § 102(b) Even Though the Offer Lacked “Safety and Liability Terms”

Jun 07 2016

On May 13, 2016, the Federal Circuit determined that Merck’s crystalline calcium salt of tetrahydrofolic acid (“MTHF”) had been the subject of a commercial offer for sale, and held Merck’s MTHF claim in U.S. Patent No. 6,441,168 is invalid under the on-sale bar provision of pre-AIA § 102(b). Specifically, the Federal Circuit held that Merck made an invalidating offer to sell MTHF when it sent a fax that included price, quantity, and delivery terms, and rejected the district court’s determination that additional, industry standard “safety and liability terms” were required for there to have been an “offer for sale.”

Please click here to view the alert.

by Trevor M. Gates, Theodore J. Angelis, Peter Giunta

ANDA Filing May Subject a Pharmaceutical Company to Personal Jurisdiction in Patent Infringement Suits Anywhere in the U.S.

Jun 06 2016

By: Trevor M. Gates, Theodore J. Angelis, and Peter Giunta

The Federal Circuit recently held that filing an abbreviated new drug application with the FDA for a generic drug product, and thus indicating an intention to sell that product in every state (including Delaware), subjected Mylan to specific personal jurisdiction in Delaware.

To read the alert, click here.

Star Athletica, LLC v. Varsity Brands, Inc. and the Challenge of Copyright Protection for Garment Design

May 31 2016

By: John Cotter and Shamus Hyland

Under the U.S. Copyright Act, a “useful article” such as a chair, a dress, or a uniform may obtain copyright protection, but only for elements that “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101. For apparel, this generally means that the overall design of a garment is not protected by copyright, but certain ornamental features (such as a pattern woven into the fabric) may be protectable. In practice, the Copyright Act protects fabric designs, not dress designs. Recently, the U.S. Supreme Court decided to tackle this uncertain area, granting certiorari in Star Athletica, LLC v. Varsity Brands, Inc. In that case, the Sixth Circuit Court of Appeals ruled 2 – 1 that the design features of Varsity Brands’ cheerleader uniform (e.g. “stripes, chevrons, color blocks, and zigzags”) were separable from the utilitarian aspects of the uniform, and thus eligible for copyright protection. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).

The majority opinion identified nine specific approaches plus hybrids that various courts and the Copyright Office have formulated over the years to analyze how copyrightable design features can be separated from utilitarian elements, and the extent to which design features can achieve copyright protection. Id. at 484-87. The majority then employed its own hybrid five-part test grounded in the text of the Copyright Act, finding that the designs at issue played no role in the overall function of the article as a cheerleading uniform. The majority broadly defined the function of a cheerleading uniform: “to cover the body, permit free movement, and wick moisture.” Id. at 492. The dissent, meanwhile, took a more “particularized” view of the function of the uniform. Id. at 496. It pointed out that the design elements at issue do serve a utilitarian function because they identify the wearer as a cheerleader and should therefore be afforded no protection under the Copyright Act. Id.

The dissent in Varsity Brands characterized the law of copyright protection for design elements of useful articles as “a mess.” Id. at 496-97. The consequences of this mess are significant for businesses with stakes in garment design. As the dissent observed, clarity is needed to alleviate the courts’ confusion and protect business interests. Id. The Supreme Court now has an opportunity to spell out a more consistent approach to the “metaphysical quandary” of design-functionality in garment copyright protection. Ideally, the Court will clarify the boundaries of copyright protection, and specify the appropriate factors for courts to weigh when separating expressive elements from utilitarian functions. Star Athletica’s opening brief is due around late June, and we will continue to monitor this case.

U.S. Patent Office Issues New Examples of Patent Eligibility Analysis of Life Sciences Claims

May 12 2016

By Aaron J. Morrow, Margaux L. Nair and Robert M. Barrett

United States Intellectual Property Alert

On May 4, 2016, the United States Patent Office published a subject matter eligibility update for determining patent eligibility under 35 U.S.C. § 101. The Update supplements the previous guidelines and includes additional life science claim examples to assist patent examiners (“Examiners”) in making eligibility determinations. The Update indicates that Examiners should use the additional claim examples in conjunction with the prior guidelines which were published by the Patent Office on December 16, 2014. The additional examples include illustrative claim sets directed to vaccines, methods of diagnosing and treating a disorder, dietary sweeteners, gene screening, a paper-making machine, and a method of hydrolyzing fat.

To read the full alert, click here.

In Role-Playing Card Games, Where is the Line Between Protectable Expression and Unprotectable Rules of the Game?

May 11 2016

By Mark Wittow and Eliza Hall

The United States District Court for the Southern District of Texas recently examined the scope of copyright protection for role-playing card games, parsing the use of parallel themes and characters. The court ultimately granted summary judgment in favor of a distributor accused of infringing a role-playing card game by creating a substantially similar game, but in a parallel (different) setting. This case provides guidance to companies that create games in traditional or digital media, clarifying where the line should be drawn between the protectable expressive aspects of a game and unprotectable rules or underlying ideas and concepts. The court’s decision also provides a helpful illustration of the differing standards applied to motions to dismiss and motions for summary judgment.

What You Need to Know About the Recent Federal Circuit Rule Changes

May 02 2016

By: Devon C. Beane, Jason A. Engel, and Theodore J. Angelis

The U.S. Court of Appeals for the Federal Circuit recently implemented significant amendments to its Rules of Practice. The changes apply to all cases docked on or after April 1, 2016. In large part, the amendments were made to comport existing practices or requirements for electronic case filing with the Rules. Other changes, such as those relating to confidentiality, reflect a wholesale shift in Federal Circuit practice. This alert provides a brief overview of some of the more significant amendments. Please click here to read the full alert.