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.