Managing IP was busy reporting from the INTA Annual Meeting
last week (read the highlights
here) so this week’s round-up includes stories
from the past two weeks.
#Googacle ends in victory for Google
The biggest story in the past two weeks was the verdict in
the Oracle v Google trial. A jury found that
Google’s use of 37 Java package names and 11,000
lines of "declaring code" in its android operating system was
lawful fair use.
The Google verdict was hailed in
some quarters is a validation of the idea that developing
interoperable software need not require permission or a
"Still, the fair use victory is bittersweet," noted the
Electronic Frontier Foundation. "Judge William Alsup's previous
opinion that the API labels in question are not copyrightable
was the correct one, based on a reasonable reading of the
copyright law in question. The Federal Circuit decision to
reverse that opinion was not just wrong but dangerous. While
developers of interoperable software can take some comfort in
the fact that reimplementation may be fair use, a simpler and
fairer solution would simply have been to recognize API labels
as a system or method of operation not restricted by
Oracle has announced it will appeal to the Federal Circuit,
with a reported $9 billion still on the line.
Coke’s bid for exclusive "Zero" rights falls
The Trademark Trial and Appeal Board has ruled that
Coca-Cola doesn’t have exclusive rights to use
"zero" but agreed to register the word for the
reports The Wall Street Journal.
The company has been attempting to
register the US rights to the word "zero" since 2003. Dr Pepper
opposed, arguing that "zero" is generic.
The TTAB’s mixed ruling said that Dr Pepper had
not proven that "zero" is a generic term, but said that Dr
Pepper could use the word in its products as well because the
full name made it "inherently distinctive".
John Welch on the TTABlog provided
a thorough analysis of the ruling.
Star Trek lawsuit boldly dropped
A lawsuit that was set to decide whether Klingon is
copyrightable has been dropped by the owners of Star
according to the Gurwin’s Keyboard blog.
As this blog
has previously reported, Paramount and CBS sued over a
crowdfunded Star Trek fan film called Axanar. One of the
elements the plaintiffs claimed was covered by copyright was
the Klingon language.
The fan film community was critical of the decision to sue
over Axanar. Previous Star trek fan films had been tolerated if
done as homages and not for profit. The funding for Axanar was
considerably higher than previous films, however.
"Well, rest easy, Trekkies," reported Gurwin’s
Keyboard. "At a recent Star Trek fan event, Star Trek Beyond
Executive Producer JJ Abrams announced that the lawsuit was
'going away’. Apparently, Paramount realized that,
not only was the lawsuit engendering very bad feelings with its
audience and fan base for the studio Star Trek films, but that
the lawsuit could prove to be a logistical and procedural
nightmare for the studio."
First DTSA lawsuit filed
Days after the Defend Trade Secrets Act was signed by
President Obama, a plaintiff sued under the new law in the
Southern District of Florida. In MC Dean v City of Miami Beach
Florida, a subcontractor for the Miami Beach Convention Center
renovation project sued under both the new law and under state
law, accusing the city of improperly giving the International
Brotherhood of Electrical Workers confidential employee
However, some observers believe the claim under the new
federal law will be short lived. MC Dean is alleging that on
March 21, a city clerk improperly disclosed information to the
Union, and that the subcontractor learned of this on March
Crowell & Moring
on its Trade Secrets Trends blog commented: "While it is
uncertain whether the information allegedly misappropriated
rises to the level of a trade secret, under either the DTSA or
federal state law, unless the allegations of misappropriation
occurred after May 11 2016, the DTSA claims should be
dismissed. This is because under 18 USC Section 1836, the DTSA
provides: '(e) Effective date.—The amendments made by
this section shall apply with respect to any misappropriation
of a trade secret (as defined in section 1839 of title 18,
United States Code, as amended by this section) for which any
act occurs on or after the date of the enactment of this
Finjan and Proofpoint settle
Proofpoint has agreed to a license to the Finjan global
patent portfolio. "While a settlement has been agreed to, the
case dismissal is pending a final definitive licensing and
Finjan said in a statement.
The terms of the agreement were
reportedly worth $10.9 million to Finjan. "We consider the
settlement of our patent infringement suit with Proofpoint to
be a timely decision given the quickly approaching trial in
June," said Phil Hartstein, Finjan's president and CEO.
Finjan has pending infringement lawsuits against FireEye,
Sophos, Symantec, Palo Alto Networks and Blue Coat Systems
relating to, collectively, more than 20 patents in the Finjan
Supreme Court rebuffs Dow
The US Supreme Court denied Dow Chemical’s
petition to hear a case in which the Federal Circuit threw out
$28 million of supplemental damages for Nova infringing its
Kraftwerk loses at German Constitution Court
The German Constitutional Court has ruled against pioneering
electronic band Kraftwerk in a dispute over a two-second sample
of its song "Metal On Metal", reports
Kraftwerk’s Ralf Huttler sued hip hop artist
Moses Pelham over the use of the sample looped repeatedly in
the song Nur Mir (Only Me) by Sabrina Setlur. The court said
blocking the sample would "practically exclude the creation of
pieces of music in a particular style".
The Federal Court of Justice in 2012 had ruled that the song
should no longer be promoted because it infringed
VirnetX seeks FaceTime injunction
Following on from its $625 million award from a Texas jury,
VirnetX is asking a judge to shut down Apple’s
FaceTime and iMessage features while the case goes to appeal,
Apple is also facing new threats
from elsewhere. The California Institute of Technology has sued
Broadcom and Apple for patent infringement,
reports the Patently Apple website.
The lawsuit concerns Apple products including iPhone 5 and
6, iPad, MacBook Air and Apple Watch.
The institute alleges infringement of our patents related to
seminal improvement to coding systems and methods for wifi
encoders and decoders.
Churrascos deemed generic
The Federal Circuit recently held that the Trademark Trial
and Appeal Board did not err in its decision to refuse
registration to a new, stylized version of CHURRASCOS,
reports Akerman’s Marks, Works & Secrets
In re Cordua Restaurants ruling provided guidance on
whether an applied-for mark is generic. The USPTO had refused
to register the mark in stylized font in connection with "bar
and restaurant services; catering", despite the owner in 2008
obtaining the registration for mark CHURRASCOS in standard
character format in the nearly identical "restaurant and bar
In rejecting the application, the USPTO had said the
applied-for mark was generic for the services. The TTAB
affirmed the ruling, agreeing that it is simply the generic
term for a type of cooked meat and "a generic term for a
restaurant featuring churrasco steaks".
The Federal Circuit in
its ruling reasoned that if the relevant public would
understand a term denoting a specialty dish to refer to an
important aspect of restaurant services, and then the term is
generic for those restaurant services in general. In this case,
there was substantial evidence that "churrascos" refers to a
key aspect of a class of restaurants because those restaurants
are commonly referred to as "churrasco restaurants".
EFF takes on Shipping & Transit
The Electronic Frontier Foundation is helping a Maryland
business hit back at an entity it views as a patent troll.
In January, Shipping & Transit
sent a demand letter to Triple7Vaping , run by Jason Cugle,
demanding a licence fee of $25,000 for "tracking and messaging
technologies" that the company’s website allegedly
EFF explained: "When Jason tried to explain that his
business didn’t operate the way Shipping and
Transit claimed, Shipping and Transit tried to force Jason to
sign an affidavit with confusing and unclear language under
penalty of perjury. When Jason didn’t respond to
Shipping and Transit’s demands, Shipping and
Transit sent Jason a document making it seem like his company
had been sued, even though no lawsuit had been filed."
Triple7Vaping, through EFF and pro bono assistance from
Turner Boyd and Kaplan Young & Moll Parrón, have
sued Shipping & Transit, asking the court to reject the
idea that the company owes anything to Shipping & Transit.
In addition, the lawsuit seeks to show how Shipping &
Transit makes frivolous claims of infringement in order to
extract nuisance value settlements.
"Shipping & Transit has filed over 500 lawsuits alleging
patent infringement," said EFF. "Despite this remarkable number
of lawsuits, no court has ever decided the merits of Shipping
& Transit’s claims."
It added: "This is not the first time EFF has encountered
Shipping & Transit. As we wrote about last year, Shipping
& Transit used to be known as ArrivalStar. ArrivalStar
notoriously sued local municipalities for telling their
citizens when a bus was due to arrive. Now, its campaign is
focused on small businesses who ship packages through carriers
like FedEx, UPS, and USPS, based on the fact that these small
businesses allow their customers to track their packages."
Huawei sues Samsung
Huawei has sued Samsung in the US, alleging infringement of
11 patents related to mobile devices and
reports Wall Street Journal.
"The lawsuit marks the first major
legal challenge by a Chinese smartphone maker against Samsung,
which has dominated world-wide sales over the past several
years," noted the Journal.
Huawei also filed suit in the Shenzhen Intermediate
People’s Court in China.
The Korea Times reported that Samsung told reporters that
it plans to file a countersuit against Huawei.
Getting schooled in patent lawsuits
ran an interesting piece looking at the billions at stake
in US university patent fights.
One example is UC Berkley v Broad Institute of MIT and
Harvard, pitting the research institution first reported to be
using a particular gene-editing technology against the one that
received a special expedited patent for the technique.
Bloomberg said this is the latest in a trend of universities
commercialising research discoveries. "But since university
discoveries are funded primarily through tax dollars,
shouldn’t schools be sharing intellectual property
rather than fighting over it?" the article asked
The article features many useful infographics, including one
showing that 15 schools produced 70% of all patent licence
royalties for US universities in 2014.