A different kind of Oscar award
Just in time for the Oscars this weekend, Foley
Hoag’s Trademark & Copyright Law blog has
excellent look at IP litigation related to "Best Picture"
winners over the years.
The whole article is worth reading, with tidbits about such
classic films as Gone with the Wind, Casablanca, The Bridge on
the River Kwai, The French Connection, Annie Hall, Forest Gump
and Titanic. Some of the highlights are below.
The producers of The Godfather films sought a declaratory
judgment against the estate of author Mario Puzo after it
intended to release a sequel novel called The Family Corleone.
The producers claimed their 1969 contract to buy the franchise
rights from Puzo barred the estate from producing derivative
works. The estate filed breach of contract counterclaims,
arguing that certain language that had been stricken from the
contract granting producers the right "to publish said work
and/or adaptations thereof" was proof Puzo retained the right
to publish a sequel. The court held the estate’s
counterclaims were not pre-empted by the Copyright Act, the
case settled, and the book went on sale.
Screenwriter Timothy Anderson claimed that MGM and Sylvester
Stallone used his treatment for the fourth Rocky film, the
first of which had won the Oscar for Best Picture. Anderson had
submitted to MGM a treatment involving an East German boxer and
a boxing match in the shadow of the Berlin Wall. Rocky IV
featured Dolph Lundgren as Soviet
Boxer Ivan Drago. A California court held that the
treatment was not entitled to copyright protection because it
was an unauthorised derivative work using characters created by
Stallone, who penned the first three Rocky films. The court
also found there no substantial similarity between the
treatment and the final film.
Million Dollar Baby, the winner in 2004, resulted in a rare
patent case. The film included boxing scenes with many fans in
the background. On closer inspection these turned out to be
"inflatable humanoid forms" created by the Inflatable Crowd
Company. The inventor of "Crowd in a Box" claimed that its
patents were infringed and sued. The court granted the
defendant’s motion for summary judgment, holding
that the patents were invalid for obviousness.
Most recently, composer Richard Freidman
filed a copyright complaint alleging that the music in last
year’s winner 12 Years a Slave was substantially
similar to his work. Friedman alleges that soundtrack
heavyweight Hans Zimmer incorporated his copyrighted music
composition into the film’s main musical
Regular readers of the blog will recall last
year’s Oscar ceremony resulted in a heated debate
who owned a selfie that included an impressive array of
Musk says free means
Tesla’s CEO Elon Musk has clarified his
firm’s high-profile move last year to open up all
of Tesla’s patents and not sue anyone for using
June’s announcement was met with praise,
although some questioned Tesla’s caveat of not
initiating patent lawsuits against anyone who "in good faith"
wants to use its technology.
technology website Techdirt reports, Musk at the recent
Detroit Auto Show said that he meant to make
Tesla’s patents completely free for anyone to use,
no questions asked.
"We actually don't require any formal discussions. So they
can just go ahead and use the," said Musk.
Musk said there is no licensing process. "You just use them,"
he said. "Which I think is better because then we don't need to
get into any kind of discussions or whatever. So we don't know.
I think you'll see it in the cars that come out, should they
choose to use them."
This lawsuit is not a
BlackBerry is once again suing Typo, a start-up founded by
television and radio host Ryan Seacrest, over the design of its
BlackBerry sued Typo over its first keyboard, with a court
issuing an injunction barring it from being sold. Typo was hit
with $860,000 in sanctions after trying to get around the
The Verge reported, now that Typo 2 is out BlackBerry is
claiming its design has again been infringed.
"Just as they did with the Typo Keyboard, Defendants have
again copied numerous proprietary designs and patents in the
Typo 2 Keyboard,"
says the complaint. "The Typo2 Keyboard still blatantly
copies BlackBerry’s iconic keyboard trade dress
designs that have been embodied in numerous BlackBerry
smartphones from the 2007 BlackBerry 8800 to the current Q10
and Classic models," the complaint reads.
Myriad gives up BRCA
The one remaining matter in Myriad’s BRCA
litigation has been settled,
as the Patent Docs blog reported. This week Myriad and
GeneDx reached a settlement, following
similar agreements with companies including LabCorp,
Invitae, Pathway Genomics, Ambry.
This may not be the end of the BRCA story, however, as
Patent Docs noted. The blog said GeneDx has not moved yet to
dismiss its inter partes review (IPR) challenge of 11 Myriad
patents at the Patent and Trial Appeal Board. The blog noted
that the Board could choose to pursue the IPRs even if the two
"While such a decision would likely be a waste of taxpayer
time and money, there may be some sentiment within the Office
(which seems to have taken to heart criticisms from the Supreme
Court and elsewhere regarding granting 'gene
patents’ in the first place) to render an
invalidity decision once and for all on these patents," said
Kevin Noonan, partner at McDonnell Boehnen Hulbert &
on the Patent Docs blog. "Of course, because IPRs are
limited to patentability challenges under §§ 102 and
103, the Board could arrive at the (politically) anomalous
result that Myriad's claims are patentable despite being patent
ineligible under § 101. The PTAB has previously avoided
this outcome in the Sequenom/Isis claims in an earlier IPR by
refusing to permit claims to be amended in view of a district
court's determination that the claims at issue in that IPR were
patent ineligible under § 101, but those circumstances are
unlikely to recur here."
Tumblr is clamping down on copyright infringement by its
according to Billboard. The blogging platform has
reportedly been enforcing a "three strikes" policy and shutting
down some accounts. It is also blocking uploads of copyrighted
The policy allows a user three uncontested strikes, defined
as a violation of the copyright policies without a successful
appeal, in an 18-month period.
Also on the blog this week:
Managing IP research timetable 2015
Special awards to celebrate a decade of IP
In-house counsel: take our Unitary Patent
In our news and analysis this week:
PTAB reverses controversial joinder decision
in landmark opinion
Reed Smith adds energy IP partner in
Arent Fox adds two ex-Dickstein Shapiro
partners in New York
Lessons on eligibility from recent SPC
Jury orders Samsung to pay Rembrandt
New Dutch IP firm opening on March 1
2,000 websites suspended by UK police
CIPA calls for EPO Boards of Appeal director
to be appointed
Preview: Exclusive interview with Judge Chen
Jinchuan - vice president of the Beijing IP Court
US and Japan join the Hague System
Managing IP – North America awards