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Aereo, Marvel, .wine, Jones Day, Pitbull, damages report – the week in IP



Michael Loney


A copyright lawsuit over Pitbull’s song “Timber”, a new patent litigation damages report, EFF calling Jones Day a trade mark bully, an IIPI amicus brief in support of the heirs of cartoonist Jack Kirby, and disgreement over .wine at ICANN were among the intellectual property stories hitting the headlines this week

It was another big week for intellectual property at the Supreme Court, with the opinion in ABC v Aereo being released.

You can read our report on ABC v Aereo here, and view our round-up of the best reactions from around the internet here.

Below is a selection of other intellectual property stories attracting attention on the internet in the past week that were not covered on www.managingip.com (see the bottom of this blog post for the top stories published by Managing IP this week).


Superhero fight may make it to Supreme Court

The International Intellectual Property Institute’s chairman Bruce Lehman and senior board member Ralph Oman, have filed an amicus brief at the US Supreme Court in support of the heirs of author and cartoonist, Jack Kirby, who created some of the most famous comic book characters and storylines including The Hulk, The Avengers, The Amazing Spider-Man, and The Fantastic Four. The case is Kirby v Marvel.

Lehman, a former USPTO director and Oman, former US Register of Copyrights, worked together in the 1970s as lawyers for the House and Senate Judiciary Committees drafting the 1976 Copyright Act.

They asked the high court to grant the certiorari petition of Kirby’s four children seeking review and reversal of a Second Circuit Federal Appeals Court decision that stripped the Kirbys of a right to recind previous transfers of copyrights to their father’s publisher, Marvel Comics. The so-called "termination right" permits authors and their heirs to take back previously transferred copyrights for the additional 19 years of copyright term Congress provided in the 1976 Act.

In their amicus brief on behalf of IIPI, the 60,000 member Artists’ Rights Society, 12 artists’ professional organisations, Doonesbury creator Gary Trudeau and five other Pulitzer Prize wining cartoonists, Lehman and Oman argue that Second Circuit failed to follow Supreme Court precedent in the 1989 case of CCNV v Reid . That case held that work commissioned from a freelance artist could not be "work-made-for-hire" of the kind created by a salaried employee and adopted the position laid out in an amicus brief Oman had filed as Register of Copyrights.

In their brief Lehman and Oman reviewed moe than 70 years of judicial precedent and legislative history and concluded that the Second Circuit had disregarded the definition of "employer" as "it was universally understood at the time Jack Kirby created works in question" and rendered "meaningless the termination right established for the benefit of freelance authors and artists" under the 1976 Act.

In explaining the decision to intervene on behalf of the Kirby family Lehman stated: "When the founders of this country wrote copyrights and patents into the Constitution they clearly were thinking of the need to incent and reward the creative genious of individual human beings. They would be appalled if they knew that centuries later deep pocket interests could twist their words into a 'game of gotcha’ to deny authors and inventors the rights they intended to bestow."


A damaging report

More than $15 billion in damages, fees, costs and interest have been awarded over the past 14 years in the US, according to the new Patent Litigation Damages Report released by Lex Machina. The paper analyses both total and median damages awarded in 36,629 patent cases filed and terminated from 2000 through 2013.

While only 708 cases – or 1.9% – involve damage awards, total awards made in these cases involved large dollar amounts. The more than $15 billion in damages, fees, costs and interest awarded over the past 14 years includes $13 billion in compensatory damages, almost $1 billion in enhanced damages and more than $200 million in attorneys’ fees.

The 10 largest awards, including three for $1 billion or more, account for nearly half the $15 billion total, while the median compensatory award of around $400,000 is far less than the typical cost of litigating a patent case to verdict. The report says this highlights a disconnect between the $3 million to $5 million required to take a patent case through trial and the remote chances of recovering that amount as damages.


Whining over .wine, but no agreement

European government ministers have failed to agree on objection to the .wine and .vin generic top-level domains. France, Italy, Luxembourg, Portugal, Spain, Switzerland and the UK want special protection for some geographical indications.

"There was further discussion on the issue of .win/.vinm, but no agreement was reached because of the sensitive nature of the matter," said ICANN, which held a meeting in London this week. "The matter of .wine and .vin was raised at the High Level Governmental Meeting, where some members expressed concerns in terms of ICANN’s accountability and public policy. These concerns are not shared by all members."

Those objecting to the gTLDs feel terms such as "Champagne" and Bordeaux" should be reserved to prevent those outside the geographical indications regions selling goods on websites that include the indications.

France has been particularly vocal in its anger at ICANN. French minister Axele Lemaire said the association needed to be more transparent in the run-up to ICANN’s meeting in London this week.

In a letter to ICANN, Lemaire said: "The lack of adequate redress mechanisms and, above all, the lack of accountability demonstrate the need for significant reform of ICANN even before the current debate on the global internet governance system comes to a conclusion."


Pitbull in doghouse with songwriters

Three songwriters are seeking $3 million in damages, alleging their 1978 song " San Francisco Bay" was used without permission in the Pitbull featuring Ke$ha song "Timber", which was a number one hit in the US.

In papers filed in Manhattan Federal Court, Lee Oskar, Keri Oskar and Greg Errico say Pitbull’s song borrows from theirs and that his record label has not been paying them for copyright infringement.

The suit says the harmonica player on "Timber’ had been told to "emulate" Lee Oskar’s harmonica performance on "San Francisco Bay". The suit notes that Sony, Pitbull’s label, "might have obtained a licence" to use 'San Francisco Bay" but did not get it from the songwriters. Pitbull and Ke$ha are not defendants in the case.


EFF slams "trade mark bully"

The Electronic Frontier Foundation (EFF) has taken on law firm Jones Day, accusing it of acting like a "trade mark bully".

Jones Day had sent a cease and desist letter to the registrant of a website critical of Detroit’s emergency manager, who is a former Jones Day partner. The website criticises Kevyn Orr, Jones Day, and other individuals and corporations, and includes the logos of a number of corporations under the tagline: "Detroit’s Economic Coup d’Etat has been brought to you by …"

Jones Day demanded that its trade marks be removed from the site. EFF stepped in on behalf of the website’s creator, responding to Jones Day that the website does not violate any of the law firm’s rights an advising it to withdraw what EFF calls its "spurious and censorious, demand".

"In its letter, Jones Day suggested that copyright fair use would not protect our client’s use of its trade marks," said EFF. "But surely Jones Day should know that trademark law includes its own fair use protection, including the nominative fair use doctrine which protects the use of marks for the purposes of comparison or criticism. As we note in our letter, the copyright reference smacks of a deliberate effort to intimidate and confuse a target the firm expected to be unfamiliar with the law."

Managing IP published the following stories this week, available to subscribers and trialists:

French IP firm opens Africa office

UK consults on plain packaging – again

Foxconn subsidiary takes on Japanese rivals in Delaware

China releases new draft revision to Copyright Law

UK set for new rules on copyright collective licensing

Concern over Aereo's cloud impact despite "limited holding"

USPTO releases preliminary Alice v CLS guidance

Broadcasters win in Supreme Court’s ABC v Aereo opinion

The best women lawyers, and best firms for women

Report reveals biotech's biggest filers

ADNDRC releases its first URS decisions

Interview: Protecting the World Cup trade marks

Snap reaction to Supreme Court’s Alice v CLS opinion

Canada Trade-marks Act changes get Royal Assent

From the blog:

Reactions to US Supreme Court ruling 6-3 against Aereo

In the debate about IP enforcement, words matter

Alice v CLS reaction from around the internet

Half of the human race

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Our editor James Nurton will be attending the @MarquesIP conference in Prague #marques17 from tomorrow. Say hi if y… https://t.co/FRjH4VdKuk

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New online: How do US, UK and EPO tribunals compare in patent infringement disputes? By Ilya Kazi of @Mathys_Squire… https://t.co/IxmyhKpGHI

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#ipwomen member Lara Kayode has written a paper on 5 common questions about IP protection in Africa (KE, NG & ZA) https://t.co/GqpObS9lk6

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