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Seth MacFarlane, Eli Lilly, Sherlock Holmes, Aereo, IP spending – the week in IP



Michael Loney


A dispute over the vulgar teddy bear character in Ted, the US Copyright Office’s response to Aereo, IP spending hitting $8.5 billion, Canada’s criticism of a NAFTA challenge by Eli Lilly, and Arthur Conan Doyle’s estate looking to the Supreme Court for help were among the intellectual property stories hitting the headlines this week

Below is a selection of intellectual property stories attracting interest 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).


An $8.5 billion expense

New research with more than 350 corporate counsel has revealed total spending at large companies in all aspects of intellectual property reached $8.45 billion in 2014, up $100 million over 2013.

A report by The BTI Consulting Group, BTI Intellectual Property Outlook 2015: Changes, Trends and Opportunities in IP and IP Litigation, found IP litigation and IP patent prosecution account for 76% of this spending.

"Intellectual property has grown into one of the largest and most influential portions of the legal landscape as technology continues to permeate our lives," opined Michael Rynowecer, president of The BTI Consulting Group.

"Corporate counsel plan to settle twice as many IP litigation matters as last year," he added, "suggesting a shift in strategy."

The average company saw a 12% decline in IP matters with an 8% increase expected through 2015. Rynowecer said corporate counsel "are becoming more comfortable managing IP risk and changing their management approach, which has big implications for law firms."

The research found companies using a single law firm for patent prosecution and IP litigation are substantially happier with their law firms than all others. "These firms are able to develop a deep understanding of the client’s IP portfolio and needs – providing both efficient handling of routine matters and strategic insight and guidance for more complex issues," added Rynowecer.


Stealing a swearing bear?

Seth MacFarlane’s company Fuzzy Door Productions, producer Media Rights Capital and distributor Universal Studios are being sued for allegedly stealing the idea for the vulgar teddy bear in the 2012 film Ted, according to the Hollywood Reporter.

According to a lawsuit filed this week in a district court in Los Angeles, Bengal Mangle Productions created a screenplay called Acting School Academy in 2008 that featured a foul-mouthed, womanising teddy bear named Charlie. Acting School Academy was a web series that got more than a million views between 2009 and 2012.

The suit says the Charlie character, like Ted, lives in a "human, adult world with all human friends. Charlie has a penchant for drinking, smoking, prostitutes, and is a generally vulgar yet humorous character."

The lawsuit suit said Ted "is strikingly similar to plaintiffs' Charlie character." It added the two bears look similar, share similar vulgar traits and have human friends.

The suit alleging copyright infringement seeks unspecified damages.


Aereo, no you’re not a cable company

The US Copyright Office has told Aereo that it does not consider it a "cable company", according to a letter CNBC obtained.

Aereo last week tried to reinvent itself by claiming it is a "cable system" after the Supreme Court ruled against it in its ABC v Aereo decision.

"In the view of the Copyright Office, internet retransmissions of broadcast television fall outside the scope of the Section 111 license," the Copyright Office wrote in the letter dated July 16.

The office added that it would not refuse Aereo's filings outright, but would only accept them provisionally since the company's case is still before the courts.

The Copyright Office is also asking the public for feedback for 30 days on what the Supreme Court’s Aereo ruling means for the future of copyright law, according to The Hill.

In a note published this week, the office said it is "is interested in commenters’ views regarding the Supreme Court’s opinion in Aereo and how that opinion may affect the scope of the rights of making available and communication to the public in the United States."

The office asked how the decision affects "unauthorised filesharing", the right to make content available and other aspects.

The request follows a roundtable discussion on copyright law and communication in May.


Canada hits back at Eli Lilly

Canada has said a $500 million NAFTA challenge against it from US pharmaceutical firm Eli Lilly is "wholly without merit" and should be rejected.

Eli Lilly had two of its patents invalidated in Canadian courts. It responded by using Chapter 11 of NAFTA, which allows foreign investors to bring government decisions before an arbitration panel.

In a statement of defence, the Canadian government calls Lilly a "disappointed litigant" and said its case is based on misstatements and misleadingly describes how the two patents were defeated. It added that Eli Lilly is trying to turn the NAFTA panel into a "supranational court of appeal from reasoned, principled, and procedurally just domestic court decisions".

Eli Lilly said in its NAFTA filing that Canadian judges are unfairly ruling that original patent applications should include more proof of a drug’s effectiveness, allowing generic companies to come along years later and have the patents tossed out in court.


Doyle estate looks to the Supreme Court

After losing its efforts to keep copyright over Sherlock Holmes in a case at the Seventh Circuit, the estate of author Sir Arthur Conan Doyle has filed a new legal plea at the Supreme Court.

The Seventh Circuit refused a stay of the case on July 9. The filing at the Supreme Court is only seeking a delay of the Seventh Circuit’s ruling until it can file a petition for review of the decision. But the Supreme Court will have to decide whether the legal claim has a chance of ultimately succeeding and who might be hurt if a stay is issued.

The application was filed with Justice Elena Kagan, who deals with requests for temporary legal orders from cases in the Seventh Circuit.

The Seventh Circuit ruled in Junethat Sherlock Holmes is in the public domain. This reaffirmed the expiration of copyright once owned by author Arthur Conan Doyle.

Judge Richard Posner of the United State Court of Appeals for the Seventh Circuit said the copyright on 46 stories and four novels have expired as a result of a series of copyright statutes. However, the copyright on 10 final stories published between 1923 and 1927 will not expire until 95 years after the date of original publication - between 2018 and 2022.

Doyle's estate had sued Leslie Klinger in 2011 as he was about to publish an anthology of modern fiction about Holmes called "A Study in Sherlock: Stories Inspired by the Sherlock Holmes Canon". The estate demanded a $5,000 licensing fee for using the Holmes character, which the publisher Random House paid.

However, when Klinger was working on a sequel, the Holmes estate again demanded a licensing fee. Klinger instead sued saying he was not infringing on the 10 stories that remained under copyright protection. These stories included distinctions such as how Holmes felt about dogs and details of Dr Watson's second marriage.

The estate argued that the last 10 stories made Holmes a more "round" character. Judge Posner disagreed.

"Flat characters thus don't evolve. Round characters do; Holmes and Watson, the estate argues, were not fully rounded off until the last story written by Doyle. What this has to do with copyright law eludes us," Judge Posner wrote.


Managing IP published the following stories this week available to subscribers and triallists (you can take a trial here):

EU mulls expansion of GI scheme

Asia's growth markets diverge in 2014 Global Innovation Index

CJEU opinion calls for more stem cell clarity post-Brüstle

Singapore amends copyright law

CAFC’s VirtualAgility verdict suggests stays pending CBM review should be granted

Effective strategies for fee motions after Octane

Indonesia considers unorthodox approach to trade mark examinations

US patent litigation cases filed up 25% in 2013 – report

Dentons hires former MetroPCS deputy general counsel in Dallas

Ethan Horwitz joins Carlton Fields in New York

Dickinson to leave AIPLA

From the blog:

What is innovation and how do you measure it?

Guest post: The Supreme Court shows unprecedented interest in IP issues

What role do governments play in innovation?

Comments






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RT @5thCircAppeals: Electronic filing! #SCOTUS https://t.co/t2Sc5HyqnY

Jul 24 2017 03:45 ·  reply ·  retweet ·  favourite
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RT @mdloney: "at least one organization predicts this bill of having as little as a 4% chance of being enacted" https://t.co/1iNz7RnTy6

Jul 24 2017 03:20 ·  reply ·  retweet ·  favourite
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Analysis of UKSC decision in Lilly v Actavis - incl. comparison table between old & new test & Protocol Qs #patent… https://t.co/VDilPUG7m5

Jul 24 2017 02:22 ·  reply ·  retweet ·  favourite

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