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Ultramercial, Seattle Seahawks, Beastie Boys, US Supreme Court, Copyright Week, USPTO’s Michelle Lee – the week in IP



Michael Loney


Ultramercial’s request for a Federal Circuit review, the Seattle Seahawks’ aggressive IP strategy, a Beastie Boys motion for fees in a copyright case, the most sarcastic SCOTUS Justice, Copyright Week, and Michelle Lee’s Senate hearing were in the IP headlines this week

The return of Ultramercial?

The long-running Ultramercial v Hulu case could be set to run for a while longer. Ultramercial has petitioned the Federal Circuit for en banc review on the grounds that the November Federal Circuit verdict in the case went beyond the limits of the Supreme Court’s Alice ruling and that the Federal Circuit’s subsequent December decision to not invalidate the patent at issue in DDR Holding v Hotels.com means 101 is in a state of disarray.

After twice finding the claims at issue in the Ultramercial case patent-eligible, the Federal Circuit in its November decision found them to be ineligible in light of Alice.

In its petition, Ultramercial argues that any clarity brought to 101 jurisprudence after Alice has been shattered by the two Federal Circuit decisions, as outlined in an analysis piece on the Patents Doc blog.

The company says that its claims are similar to those in DDR and thus the Federal Circuit is just as divided as it was before Alice. It added that its invention was counter-conventional and new. In addition, it said the Federal Circuit previously found the "claims recite more than the age-old idea that advertising can serve as currency, but instead disclose a practical application of this idea" that was an "improvement to prior art technology".

Michael Borella on the Patents Doc blog said it is not surprising that Ultramercial is not ready to give up, given the long history involving its patent.

"Ultramercial's position that the dispositions of its claims and those of DDR are incompatible may be enough to convince the Federal Circuit judges to meet en banc, but ultimately may not win the day," wrote Borella. "The Court may instead take the opportunity to synthesize these cases, and could point out that Ultramercial merely added use of the Internet to an otherwise disembodied transaction, while DDR fundamentally changed how an aspect of the Internet operates."

He added: "But, given the gray area at issue, the Federal Circuit might decide that the claims of Ultramercial and DDR rise or fall together. As DDR is the only post-Alice § 101 case reviewed by the Court that has found claims to be patent-eligible, it is a currently valuable data point for applicants and patentees. Losing this data point would deepen the mystery of what claims incorporating an abstract idea need to recite in order to be patentable."


An aggressive IP team

NFL team the Seattle Seahawks last week aggressively came from behind to book a spot in this year’s Super Bowl. But, as the Seattle Times reported this week, the team is also extremely competitive when it comes to intellectual property.

The Seattle Times reported entertainment lawyer Scott Andresen as saying: "They’ve always been a little aggressive about securing intellectual property for themselves. They’ve really taken the position that the more intellectual property, the better."

The Seahawks have filed two dozen trade mark applications since October 2013, including seeking to trade mark "boom", "Go Hawks" and even the number "12".

Both the NBA and NHL have objected to the attempt to trade mark "Go Hawks" because of the Atlanta Hawks and Chicago Blackhawks teams. The Seahawks’ owners were also sued by Texas A&M University in 2006 for the use of the phrase "12th Man" to describe its loud fans, with the Seahawks agreeing to pay a licence fee to use the term in limited circumstances.

The Seahawks have also been active objecting to other companies’ attempts to trade mark terms similar to the ones they want to trade mark. This includes a movie company’s efforts to trade mark the use of the phrase "District 12" from the Hunger Games movies and Heritage Distilling Companies’ vodka and gin products under the "Batch No. 12" name.


Beasties’ saga can’t, won’t, don’t stop

 The Beastie Boys are seeking legal fees from Monster Energy in the copyright case in which the rap group was awarded a $1.7 million jury award.

As the ABA Journal reports, the Beastie Boys lawyers from Sheppard Mullin Richter & Hampton wrote in a motion for fees that the conduct of Monster Energy’s legal team was "objectively unreasonable" and "exceeded the bounds of zealous advocacy".

The energy drink maker used a number of Beastie Boys songs in a video promoting a snowboard event.

The Beastie Boys’ filings claims Monster’s lawyers failed to engage in good-faith settlement negotiations, and deliberately tried to increase the plaintiffs’ legal costs. One example given in the filings is Monster’s attorneys disputing the Beastie Boys’ copyright ownership, of which the filing said there could be "no reasonable dispute". The Beastie Boys hired a musicologist to testify as a result.

The Beastie Boys have a policy of not allowing their music to be used for commercial purposes. This was also requested in the will of Beastie Boy Adam Yauch, who died in 2012 from cancer.

Scalia the Sarcastic

It was a busy week for IP cases at the SU Supreme Court. On Tuesday the Court outlined a new rule for the Federal Circuit when reviewing the underlying facts in a district court’s claim construction, in its Teva v Sandoz opinion. And, on Wednesday, it held that the question of whether two trade marks may be tacked for purposes of determining priority was a question for the jury, in its Hana Financial v Hana Bank opinion.

It was timely, then, that this week the New York Times chose to shed some light on the personalities involved in the Supreme Court. The newspaper revealed that Justice Antonin Scalia is the most sarcastic of the Justices.

This claim is backed up by a Sarcasm Index developed by law professor Richard Hasen. Justice Scalia’s 2.78 score on the index put every other Justice in the shade, with Justice Samuel Alito registering a mere 0.43 in second place.

Perhaps anticipating the publishing of the index, Justice Scalia displayed his sarcasm just last week in oral argument for Clyde Reed v Town of Gilbert when a lawyer commented that the Justice was right, but only "in a literal sense". Justice Alito shot back: "Oh, I see. What sense are we talking here? Poetic?"


Celebrating copyright week

A number of groups are marking the second annual Copyright Week this week.

As the Electronic Frontier Foundation sums up: "This week, we'll be talking about critical copyright issues, and highlighting some of the key principles that should guide copyright policy. To emphasise the importance of public engagement, Copyright Week follows just after the three-year anniversary of the SOPA blackout protests, in which millions of people in the U.S. and around the globe pushed back against dangerous and unfair copyright restrictions – and won."

The organisers of the week believe that "copyright policy should foster the freedom to truly own your stuff: to tinker with it, repair it, reuse it, recycle it, read or watch or launch it on any device, lend it, and then give it away (or re-sell it) when you're done". You can read all the articles that have been posted this week by various parties for Copyright Week on the dedicated page here.

Lee back before the Senate

Michelle Lee, the nominee for USPTO director, attended a second confirmation hearing at the Senate this week, following the first one in December.

As the IPWatchdog blog reported, Lee was subjected to questioning by Senators on many issues such as fee shifting and post-grant proceedings. Inevitably, the subject of patent reform came up. "I believe there can and should be additional improvements to the patent system through legislation," Lee said.

Lee also commented that the quality of patents issued by the USPTO needs to be improved. This is a topic she doubled down on the next day in a speech at the Brookings Institute, when she revealed that enhancing the quality of issued patents was a priority for 2015. The Office is launching an enhanced patent quality initiative, and has this month appointed Valencia Martin-Wallace to the newly-created role of deputy commissioner for patent quality.



Also on the blog this week:

Why IP needs events aimed at women



In our news and analysis this week:

Considerations on big data licensing

IP Clinic: Should I set up my own IP boutique?

Shifting attitudes to injunctions in patent cases

Rihanna wins appeal in passing off case

UK presses ahead with plain packaging

Gilead's rejected patent application highlights Section 3(d) uncertainties

USPTO creates new patent quality role

CJEU clarifies copyright rules on exhaustion of distribution

Supreme Court rules that juries should determine trade mark tacking

55% of PTAB petitions in 2014 filed against NPEs – report

Russia: Medieval indulgence resuscitated

EPO: No novelty for new use of known medical device

Supreme Court overhauls Federal Circuit’s standard of claim construction review

The Unitary Patent for non-litigators

European patents expand to Africa

A mixed year for EU design cases

Rader lays out internationalist vision for patent system

Why international IP rights just got more expensive

Pirate Party copyright report set for MEP vote

Ellis Terry adds patent partner

China’s Ministry of Industry and Information Technology weighs in on FRAND obligations

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