SoCal IP Law Group

The SoCal IP Law Blog

Category Archives: Copyright

SoCal IP Institute :: November 3, 2014 :: S.D.Cal Denies Attorneys Fees in Copyright Case; N.D. Cal holds no patent infringement where sales are made abroad

Our weekly SoCal IP Institute meeting on Monday, October 27, 2014 will be a discussion of two recent California District Court Cases:

Reinicke v. Creative Empire LLC, Case No. 12-vc-1405 (S.D. Cal 10/22/14) (available here).  Here, the district court denied CE’s motion for an award of fees and costs despite Plaintiff’s inability to establish copyright infringement.  The Court held there was a reasonable legal and factual basis to support the copyright infringement claim. Further, the court did not want to discourage individual language developers from asserting copyright ownership.

Ziptronix v. OmniVision Tech., Case No. 10-05525 (ND Cal 10/21/14) (available here). Here, Ziptronix sued OmniVision, Taiwan Semiconductor Manufacturing Co., Ltd and TSMC North America Corp. (both referred to as “TSMC”) for nine counts of patent infringement involving image sensor technology used in smartphones. TSMC prevailed on summary judgment because the subject wafers –thin slices of semiconductor material, such as a crystalline silicon, used in electronics — were not sold within the United States.  Ziptronix’s position that TSMC and OmniVision negotiated and executed contracts for the sale of the wafers in the United States failed as the Court held that the contracts contemplated delivery and performance outside the US.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 3, 2014 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 Smith by 9 am Monday morning.

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SoCal IP Institute :: October 20, 2014 :: Copyrights

Our weekly SoCal IP Institute meeting on Monday, October 20, 2014 will be a discussion of copyrights. Chris Kopitzke will present a summary of the State Bar of California’s, “Copyright Office Comes to California” event. In addition, we will discuss the following two cases (one of which was previously discussed, but is a good refresher).

Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc. (4th Cir. 7/17/2013) (available here).  The plaintiff, MRIS, offers an online multiple listing service for real estate brokers and agents. Subscribers must pay a fee for MRIS’s service, which allows subscribers to upload their real estate listings. Subscribers must agree to assign to MRIS the copyrights in each photograph included in a listing. The defendant, AHRN is a California real estate broker that owns and operates the website NeighborCity.com. Plaintiff sued defendant and requested a preliminary injunction against defendant’s use of plaintiff’s photographs on its website. The district court granted plaintiff a preliminary injunction, and the 9th Circuit affirmed the district court’s preliminary injunction order.

Alaska Stock v. Houghton Mifflin, Docket No. 10-36010 (9th Cir. March 18, 2014) (available here). Reversing the district court’s dismissal of a copyright infringement action, the panel held that copyright registration of a collective work registers the component works within it. The panel held that the Register of Copyrights had authority to prescribe a form and grant certificates extending registration to individual stock photographs within a collection where the names of each of the photographers, and titles for each of the photographs, were not provided on the registration applications. Agreeing with other Circuits, and deferring to the Copyright Office’s interpretation of the Copyright Act, the 9th Circuit panel held that where the photographers had assigned their ownership of their copyrights in their images to the stock agency, and the stock agency had registered the collection, both the collection as a whole and the individual images were registered.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 20, 2014 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 Smith by 9 am Monday morning.

SoCal IP Institute :: September 22, 2014 :: A Glance at Current Copyright Happenings

Our weekly SoCal IP Institute meeting on Monday, September 22, 2014 will be a discussion of recent copyright cases. Brief synopses of the cases we will discuss appear below.

Princeton Payment Solutions, LLC v. ACI Worldwide, Inc. et al, No. 1:13-vc-852 (ED Va. August 15, 2014) (available here). In this computer software copyright case, the Court granted summary judgment in favor of the defendants.  This summary judgment opinion hinged on the issue of who owned the software where the software was developed by an independent contractor who did not assign her rights to plaintiff until after the commencement of this suit.

Actuate Corp. v. Fidelity Nat’l., No. C 14-02274 RS  (N.D. Cal. August 21, 2014) (available here).  In this case, the Court granted Fidelity’s motion to dismiss regarding a claim for software copyright infringement, wherein the License Agreement that Fidelity allegedly breached failed to establish any numeric limits on Fidelity’s right to install and distribute the software, but instead merely required Fidelity to pay for the licenses it required according to a payment schedule attached to the agreement.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 22, 2014 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 Smith by 9 am Monday morning.

SoCal IP Institute :: July 14, 2014 :: Liens on IP do not Create Federal Questions and Receivership Over Some George Clinton Recordings Affirmed

Our weekly SoCal IP Institute meeting on Monday, July 14, 2014 will be a discussion of one 4th Circuit case regarding federal subject matter jurisdiction for liens enforced on intellectual property and a 9th Circuit decision on the appointment of a receiver and that receiver’s rights over IP held by an individual. Brief synopses of the cases appear below.

Flying Pigs, LLC v. RRAJ Franchising, LLC, No. 13-2135 (4th Cir. July 1, 2014) (available here). Through a very convoluted set of steps including foreclosure on a series of renters, two bankruptcy proceedings, an overarching settlement agreement across several parties, and removal (twice) of proceedings from Lenoir County, North Carolina Superior Court to the Eastern District of North Carolina, Flying Pigs came to bring a lien-related proceeding in Superior Court.  Defendant RRAJ removed the case under “federal question” subject matter jurisdiction.  The district court denied Flying Pigs’ remand motion and granted RRAJ a dismissal with prejudice.

The 4th Circuit vacated the district court’s dismissal order, and returned the matter to the Superior Court.  Specifically, the 4th Circuit held that the matter did not raise a federal question, but instead arose under state law–essentially as a lawsuit to enforce a lien in part against the IP.

Hendricks & Lewis PLLC v. Clinton, No. 13-35010 (June 23, 2014) (available here).  Hendricks & Lewis PLLC represented George Clinton in a series of legal matters over the course of a number of years.  Mr. Clinton failed to pay for those services. The bill totaled over $3 million, but was reduced to just over $1.5 million in arbitration proceedings in which Mr. Clinton did not participate.  A year after the arbitration, Clinton sued Hendricks & Lewis for malpractice.  They, in turn, sought to enforce the arbitration award.  The district court appointed a receiver for Mr. Clinton’s assets and authorized the license or sale of the copyrights in order to cover the fee award.

The 9th Circuit held that under Washington law Clinton’s copyrights in the masters were subject to execution to satisfy judgments made against him. The panel also held that § 201(e) of the federal Copyright Act did not protect Clinton from the involuntary transfer of his copyrighted works. The court further held that under Washington law the district court did not abuse its discretion by appointing a receiver to manage or sell ownership of the copyrights. The court also held that Clinton may raise claims of fraud on the court and judicial estoppel for the first time on appeal, but concluded that both claims were meritless. Finally, the court held that Clinton failed to raise his preemption, Erie doctrine, and due process arguments before the district court, and, therefore, they would generally not be considered, and in any event they were without merit.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 14, 2014 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 Smith by 9 am Monday morning.

SoCal IP Institute :: June 16, 2014 :: Supreme Court on Indefiniteness and Copyright

Our weekly SoCal IP Institute meeting on Monday, June 16, 2014 will be a discussion of two Supreme Court cases.  The first deals with indefiniteness and the second deals with copyright ownership. Brief synopses of the cases appear below.

Nautilus, Inc. v. Biosig Instrum., Inc. 110 U.S.P.Q.2d 1688, 572 U.S.___  June 2, 2014) (available here). In Nautilus, the Supreme Court remanded to the Federal Circuit to determine whether claims to an exercise machine were indefinite under 35 U.S.C. §112,¶2. Procedurally, the District Court granted Nautilus’ summary judgment motion to dismiss on the basis of invalidity, but the Federal Circuit reversed saying the claim term at issue was not “insolubly ambiguous.”  In remanding, the Supreme Court stated that the “insolubly ambiguous” standard does not comport with the statute.  “To tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty.’ ”  The ball is back in the CAFC’s court to clearly define a definiteness test.

Side-issue brought up in Nautilus: What are “hybrid” apparatus/method claims, and when are they invalid?

Petrella v. Metro-Goldwyn-Mayer, Inc. et al., S.Ct. No. 12-1315 (May 19, 2014) (available here).  The screenplay for the movie “Raging Bull,” written by Jack Petrella and Jake LaMotta, was copyrighted in 1963 and assigned to MGM.  The movie was released in 1980, and upon Petrella’s death, his rights reverted to his daughter, plaintiff here.  She renewed the copyright in 1991, becoming its sole owner.  In 1998 she threatened MGM with an infringement suit, and in 2009 she sued, claiming monetary and injunctive relief limited to the three years prior to the date the suit was filed.  The Ninth Circuit granted summary judgment to MGM based on laches.  The Supreme Court reversed on a 6-3 vote, holding that laches does not apply to copyright claims for damages brought within the copyright statute’s prescribed three-year window.  In extraordinary circumstances, however, laches might curtail some forms of equitable relief.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 16, 2014 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 Smith by 9 am Monday morning.

SoCal IP Institute :: April 28, 2014 :: Preliminary Injunctive Relief and Trademark Infringement

Our weekly SoCal IP Institute meeting on Monday, April 28, 2014 will be a discussion of two cases.  The first relates to preliminary injunctive relief in patent cases and the second case relates to trademark infringement.  Brief synopses of the cases appear below.

Trebro Mfg. v. Firefly Equipment and Steven Aposhian, Case No. 2013-1347 (Fed Cir. April 9, 2014) (available here). Trebro Mfg. appeals the district court’s ruling denying Trebro’s preliminary injunction motion. On appeal, the Federal Circuit vacates the district court’s ruling and remands for further proceedings.

The Ohio State University v. Skreened, Ltd., (S.D. Ohio. April 18, 2014) (available here). The district court denied in part and granted in part Ohio State University’s motion for summary judgment relating to trademark infringement.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 28, 2014 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 Smith by 9 am Monday morning.

SoCal IP Institute :: April 21, 2014 :: Copyright Registration of Collective Works and Appeals of Ex Parte Reexams

Our weekly SoCal IP Institute meeting on Monday, April 21, 2014 will be a discussion of two cases.  The first relates to a copyright dispute involving a collection of photographs registered by a stock photo company and the second involves an appeal of an adverse ex parte reexamination decision by the patent owner.  Brief synopses of the cases appear below.

Alaska Stock v. Houghton Mifflin, Docket No. 10-36010 (9th Cir. March 18, 2014) (available here). Reversing the district court’s dismissal of a copyright infringement action, the panel held that copyright registration of a collective work registers the component works within it. The panel held that the Register of Copyrights had authority to prescribe a form and grant certificates extending registration to individual stock photographs within a collection where the names of each of the photographers, and titles for each of the photographs, were not provided on the registration applications.

Agreeing with other Circuits, and deferring to the Copyright Office’s interpretation of the Copyright Act, the 9th Circuit panel held that where the photographers had assigned their ownership of their copyrights in their images to the stock agency, and the stock agency had registered the collection, both the collection as a whole and the individual images were registered.

In re Teles AG Informationstechnologien et al., Docket No. 2012-1297 (Fed. Cir. April 4, 2014) (available here). Teles AG Informationstechnologien and Sigram Schindler Beteiligungsgesellschaft MBH  own all substantial rights in U.S. Patent No. 6,954,453 on a method and apparatus  for transmitting data in a telecommunications network.  The Patent and Trademark Office conducted an ex parte reexamination of the ’453 patent and rejected claims 34–36 and 38 as obvious under 35 U.S.C. § 103.  The Board of Patent Appeals and Interferences affirmed.

Teles brought suit in the United States District Court for the District of Columbia, challenging the Board’s decision pursuant to 35 U.S.C. § 145 (2006). The Federal Circuit agreed with the district court that it lacked subject matter jurisdiction, and hold that the version of § 145 in effect at the time did not authorize a patent owner in an ex parte reexamination to bring suit in district court challenging the Board’s action. But The Federal Circuit held that the district court erred in dismissing the case and instead should have transferred the case as it attempted to do after the dismissal. The Federal Circuit treated the case as having been transferred to the Federal Circuit and considered it as an appeal from the Board’s decision. The Federal Circuit affirmed the Board’s rejection of claim 35 as obvious under § 103.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 21, 2014 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 Smith by 9 am Monday morning.

SoCal IP Institute :: April 14, 2014 :: eBook held not to be a new derivative work under Copyright Law; Fed Cir. upholds Rejection of Stone Lion Capitol Trademark.

Our weekly SoCal IP Institute meeting on Monday, April 14, 2014 will be a discussion of a recent copyright and trademark case:  Brief synopses appear below.

Peter Mayer Publishers, Inc. v. Shilovskaya, Case No. 12 Civ. 8867 (PGG)  (S.D.N. Y 3/31/14) (available here).  The issue was whether an eBook version of a commissioned English translation of a Russian novel The Master and Margarita, a Russian novel written by Mikhail Bulgakov, constituted a new derivative work. Shilovskaya owned the copyright in the subject Russian novel. Plaintiff wanted to publish the English version of the novel in the form of an eBook and argued that it had commissioned and copyrighted the translation of the book while the work was in the public domain. The court said it did not.

Stone Lion Capital v. Lion Capital LLP, Case No. 2013-1353 (Fed. Cir. 3/26/2014) (available here).  Stone Lion Capital Partners, L.P.  unsuccessfully appealed the Trademark Trial and Appeal Board’s decision refusing registration of the mark “STONE LION CAPITAL” due to a likelihood of confusion with opposer Lion Capital LLP’s  registered marks, “LION CAPITAL” and “LION.”

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 14, 2014 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 Smith by 9 am Monday morning.

SoCal IP Institute :: March 31, 2014 :: Reggaeton Arguments and the Meaning of “Substantially”

Our weekly SoCal IP Institute meeting on Monday, March 31, 2014 will be a discussion of two cases.  The first relates to a reggaeton copyright dispute and the second involves a discussion of the meaning of “substantially” in a patent claim.  Brief synopses of the cases appear below.

Alicea v. Machete Music, Miscellaneous Docket No. 12-1548 (1st Cir. March 7, 2014) (available here). In this case, a group of “reggaeton” musicians brought suit against Machete Music (a division of UMG Recordings, Inc. and several individuals) as infringing copyrights in seven songs they wrote and produced under contract with producer Fancisco Saldana.  Reggaeton music is described by the court as:

a musical genre originating in Puerto Rico and boasting such diverse origins as reggae, hip hop, salsa, and meringue

An example of one of the songs at issue appears here:

The melodies later sung by “Erre XI” (in the video above and other songs) are largely identical to those created by the plaintiffs, but the vocals and portions of the musical instruments were replaced on the tracks by other artists.  The plaintiffs brought suit after the albums were released in 2008, alleging copyright infringement of the compositions (not the sound recordings).  Several individual defendants were dismissed from the complaint prior to this opinion, with only UMG and Machete remaining until this opinion.

The plaintiffs only began the process of registering copyrights in the compositions six months after the lawsuit was filed.  Even then, the attempted registration in the composition was based upon earlier, unauthorized recordings of the original artists.   The district court dismissed the copyright claims pointing out that registration is a prerequisite under 17 U.S.C.  411(a) to filing a copyright infringement complaint.  Even after the magistrate’s recommendations to dismiss the case one year and almost two years after the case was filed, the plaintiff had still not convinced the Copyright Office to register the compositions or whether supplying recordings were adequate deposit copies for registration.  UMG and Machete sought summary judgment and the district court granted the motion.  Two of the copyright registration certificates issued after the dismissal and the plaintiffs sought reconsideration.  This request was denied.

The First Circuit pointed out that registration (or in some circuits an accepted, complete application to register) is a prerequisite to filing a copyright infringement lawsuit.  Because the record was clear that there was no registration and not even an accepted application in this case, dismissal was appropriate.

An individual claim by one plaintiff regarding an alleged agreement was dismissed (and affirmed by the 1st Circuit) for failure to proffer any evidence of such an agreement.  Another claim for the plaintiffs based upon an alleged profit sharing agreement regarding the songs was also dismissed (and affirmed) for failure to plead (or prove) any third party beneficiary relationship to the agreement which was with one plaintiff only. Several other issues, apparently in a poorly-drafted complaint and poorly-conducted litigation, were resolved in favor of the defendants and the decision below was affirmed in full.

Vederi v. Google, Docket No. 2013-1057, -1296 (Fed. Cir. March 14, 2014) (available here). In this case, Judge Kozinski, sitting by designation on at the Central District of California  is reversed for erring in claim construction of a crucial phrase in the case. Vederi sued Google for patent  infringement on October 15, 2010, alleging that Google’s “Street View” infringed various claims of four related patents.  The patents relate to methods for creating synthesized images of a geographic area through which a user may then visually navigate via a computer.  Verderi asserted the patents against Google’s “street view” product within its maps application.

The dispute on appeal concerns the “substantially elevations” limitation, which appears in all of the asserted claims. The district court concluded that Google did not infringe any asserted claims after construing the term “images depicting views of objects in a geographic area, the views being substantially elevations of the objects in the geographic area” as “vertical flat (as opposed to curved or spherical) depictions of front or side views.” Thus, under the trial court’s reading of the claims, spherical or curved images fell outside the scope of Vederi’s patent claims.  According to Google, it does not infringe the asserted patents because its product produces images and views that are curved or spherical, and never flat.

After Markman, the district court agreed, adopted a construction of the term “substantially elevations” as “vertical flat (as opposed to curved or spherical) depictions of front or side views.”  Google then won on summary judgment of non-infringement.

The Federal Circuit found that the district court here had given insufficient weight to the word “substantially” in the phrase “substantially elevations.”  Google contended otherwise on a number of bases, but the Federal Circuit found that the provisional application included a description of a 360 degree camera and that prosecution certainly included no clear disavowal of spherical or curved images.  As a result, the Federal Circuit vacated and remanded.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 31, 2014 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 Smith by 9 am Monday morning.

The Ventura BioCenter April 3, 2014 Biotech Law Seminar – 3D Printers: Intellectual Property Issues

On Thursday, April 3, 2014 from 7:30 to 9:00 am Steven C. Sereboff will be making a presentation for the Ventura BioCenter entitled “3D Printers: Intellectual Property Issues.”  The presentation will take place at the Ventura BioCenter located at 1176 Tourmaline Dr, Thousand Oaks, CA 91320  Admission is free to the public.  For lawyers seeking MCLE, the cost is $20 for non-VCBA Biotech members, and $15 for members.  Please RSVP using this email address.  The discussion will include consideration of the following:

  • Is my 3D printer making me a criminal?
  • Will my company be sued because my employees are having fun with the 3D printer?
  • Should I worry about competitors 3D-printing my products?
  • How can I stop the general public from ripping me off?
  • Why are laws applied to 3D-printing different than those applied to 2D-printing?

For more info, please contact:

Panda Kroll, Chair, VCBA Biotech Law Section
Greg Cauchon, Director, Ventura BioCenter