SoCal IP Law Group

The SoCal IP Law Blog

SoCal IP Institute :: March 18, 2013 :: Divided Infringement and Fair Use

Our weekly SoCal IP Institute meeting on Monday, March 18, 2013 will be a discussion of one Federal Circuit case regarding patent divided infringement and a 9th Circuit case regarding copyright fair use.  Brief synopses of the cases appear below.

Aristocrat Technologies Australia PTY Ltd. et al. v. IGT, Case No. 2010-1426 (Fed. Circ. March 13, 2013) (available here).

This is a gambling-related patent suit stemming from a method of offering a patron a reward from a secondary game after a patron has taken part in a first game.  One of the steps of the process is “making a wager at a particular gaming machine in the network of gaming machines,” which the district court construed as requiring the patron to place a bet.  As a result, the district court granted IGT’s motion for summary judgment because all claims require two separate actors, the operator of the gaming machine and the player.  Aristocrat appealed the claim construction and the divided infringement decision.

On appeal, the Federal Circuit agreed with the district court’s construction of the “making a wager” limitation.  Next, they indicated that no single actor performs all of the required step and, therefore, there can be no direct infringement.  However, the Federal Circuit remanded the case for a determination whether here was indirect infringement of the patent under the recent Akamai decision.  The case was, therefore, affirmed in part, vacated and remanded in part.

SOFA Entertainment, Inc. v. Dodger Prod., Inc. Etc. D.C. No. 2:08-cv-02616 (9th Cir. March 11,, 2013) (available here).

This 9th Circuit decision affirmed the district court’s grant of summary judgment and award of attorneys’ fees in a copyright infringement suit regarding a seven-second clip of Ed Sullivan’s introduction of the Four Seasons on The Ed Sullivan Show.  The panel held that the defendants were entitled to prevail on their fair use defense as a matter of law.

The defendants used the clip in Jersey Boys, a musical about the Four Seasons, to mark a historical point in the band’s career. The panel held that this was a fair use because by using the clip for its historical significance, the defendants had imbued it with new meaning and had done so without usurping whatever demand there was for the original clip.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 18, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

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