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USPTO’s “staggering incompetence”, NSA parody settlement, Nicki Minaj wig dispute – the week in IP



Michael Loney


A USPTO patent granted to a disgraced scientist, an NSA settlement with an online retailer over parody t-shirts and a lawsuit brought against Nicki Minaj claiming $30 million of losses from stolen wig designs were among the intellectual property-related stories hitting the headlines this week

The USPTO's "staggering incompetence"

On the eve of the White House announcing three new executive actions to strengthen the patent system, the USPTO was embarrassed by news breaking that it had granted a patent to a disgraced scientist.

A decade ago Hwang Woo-suk claimed to have created the world's first cloned human embryos. The work was found to be fraudulent and the researcher was fired from his university and convicted of embezzling research funds and buying human eggs.

The USPTO this week issued Hwang a patent covering some of the disputed work. The patent covers a human embryonic cell lined derived through cloning and methods for creating that line. This left some scientists shocked and one observer embarrassed on the USPTO's behalf and labelling the news "nothing short of staggering incompetence".

The USPTO pointed to the system operating on an honour code and that patent examiners cannot independently verify claims. The patent is "definitely not an assertion by the US government that everything he is claiming is accurate," the New York Times quoted USPTO spokesman Patrick Ross saying of Hwang.

Hwang is attempting a comeback through the Sooam Biotech Research Foundation, which he heads.

NSA finally takes a joke

The National Security Agency listens to a lot, but it does not always like what it hears. The NSA and Department of Homeland Security have settled with online retailer Zazzle.

Dan McCall had been making and selling t-shirts through Zazzle parodying the NSA, including one with the tagline "the only part of the government that actually listens". McCall was forced to take certain t-shirts and mugs off Zazzle after the NSA and DHS sent cease and desist letters to Zazzle threatening litigation and prosecution unless the offending items were taken down.

McCall started selling NSA parody t-shirts through CafePress instead, and filed a lawsuit last October claiming his t-shirts were parodies and therefore protected under the First Amendment.

The NSA and DHS have come round to his thinking. They have agreed to send letters to Zazzle saying the statutes they cited do not prevent the use of agency seals to identify the subjects of commentary such as parody and that they were wrong to demand the designs be taken off the market.

"It's bad enough that these agencies have us under constant surveillance; forbidding citizens from criticizing them is beyond the pale," technology website Ars Technica quoted Public Citizen's Paul Levy, who filed the suit on McCall's behalf, as saying.

Nicki Minaj sued for hair-raising amount

Songwriter Nicki Minaj is being sued for $30 million of losses by one of her former wig designers. Terence Davidson is accusing Minaj, whose real name is Onika Maraj, and Pink Personality of misappropriating his wig designs, breaking implied contracts and going back on discussions to launch a reality TV show and wig line. The lawsuit was filed in a district court in Atlanta.

"She lied, cheated, she stole from him," the New York Times quoted Christopher Chestnut, who is representing Davidson, as saying. "That's a misappropriation of his intellectual property."

Davidson started work as Minaj's hair stylist in 2010. He claims he was urged by a Minaj representative to turn down a contract for a reality TV show.

Minaj may not be too worried. Howard Hogan, IP partner at Gibson Dunn, said Davidson has asserted a "grab bag of tort and quasi contract claims" but noted the law often does not protect designs.

'Mr Davidson's complaint implicitly acknowledges that it would be very difficult for him to advance traditional intellectual property claims based on his wig designs, because he has not asserted any copyright claims and to the extent his wigs function as trademarks, most consumers are likely to associate them with Nicki Minaj anyway," said Hogan.


Broadcasters win first victory over Aereo

Broadcasters won their first court victory over internet TV service Aereo after a district court judge in Utah ruled that the service must shut down in some US states. Siding with broadcasters including Twenty-First Century Fox, Judge Dale Kimball found the service violates copyright law because it allows users to stream terrestrial TV signals online and does not pay royalty fees to broadcasters.

He granted a temporary injunction preventing Aereo from providing the service to users in Utah, Colorado, Kansas, New Mexico, Oklahoma, Wyoming and some parts of Montana and Idaho.

Last year, a New York appeals court ruled in favor of Aereo and refused to grant an injunction against the start-up. Broadcasters appealed, and the ultimate fate of the service will be decided at the Supreme Court on April 22. A decision is expected by the end of June.

The injunction from the Utah court will stay in place while the Supreme Court case is decided, but other aspects of the case will be put on hold until the higher court issues a decision.

Aereo's service, which it provides to users for a monthly fee, was designed to circumvent copyright law. It works by assigning a remote antenna to each subscriber. The subscriber can tune in to publicly accessible broadcast television signals online and make a personal recording using a remote digital video recorder. The subscriber can then play the recording back to watch the program.

In his ruling, Judge Kimball said that despite Aereo's efforts to design a service that falls outside of the scope of the 1976 Copyright Act, it transmits the broadcasters' copyrighted programs to the public.

"The public has an interest in continuing to receive unique, local programming provided by the plaintiffs," he said.

"Original local programming, covering local news, sports, and other areas of interest, costs millions of dollars to produce and deliver to the public and the public interest plainly lies in enjoining copyright infringement that threatens the continued viability of such local programming."

Aereo CEO Chet Kanojia said in a statement to TechCrunch: "We are extremely disappointed that the District Court in Utah has chosen to take a different path than every other Court that has reviewed the Aereo technology."

"Consumers have a fundamental right to watch over the air broadcast television via an antenna and to record copies for their personal use. The Copyright Act provides no justification to curtail that right simply because the consumer is using modern, remotely located equipment."

Fox told Variety in a statement: "We are very pleased that the US District Court in Utah has granted our request for a preliminary injunction. This injunction will prohibit Aereo from stealing our broadcast signal in Utah, New Mexico, Colorado, Oklahoma, Wyoming and Montana."

The Utah case is Community Television of Utah et al v Aereo. Andrew Baum of Foley & Lardner provided analysis of the Supreme Court case in January for Managing IP's IP clinic.


To kill a trade mark dispute

Author Harper Lee has settled with a museum in her Alabama hometown that was using her name and that of her most famous book, To Kill A Mockingbird. Lee reached an undisclosed agreement with The Monroe County Heritage Museum in Monroeville, which is located in the former courthouse that inspired her book.

Lee had launched legal action claiming the museum was taking advantage of her trade marks to sell souvenirs such as clothing. The agreement was reached soon after a judge refused to dismiss the case. The museum's website has also been changed from www.tokillamockingbird.com to www.monroecountymuseum.org.

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