Also on the blog this week:
Join our next webinar on "PTAB Trials by the Numbers" on June
Latest IP developments in Asia
Is the PTAB too unfair on motions to amend?
And in our news and analysis:
Kyle Bass IPRs end up with 57% institution success rate
Americas Women in Business Law Awards: 2016 winners
Merck’s $200m patent damages award voided after
Mexico’s opposition system to come into force by
Can a foreign trade mark really trump a local one in
Latest people moves in Asia - June 2016
PAGBAM IP partner named president of Argentina’s
patent and trade mark office
Latest people moves in the Americas
Highlights from the PTAB Forum 2016
What in-house practitioners really want
Sequencing the future of IP in genomics
Circuit split over Madonna copyright case tipped to go to
SCOTUS Halo decision
The big news today is that the Supreme Court is out with its
Halo Electronics v Pulse Electronics decision.
The court in a unanimous ruling written by Chief Justice
Roberts held that the Seagate test for assessing whether
enhanced damages should be awarded is not consistent with
Section 284 of the Patent Act.
Managing IP will be publishing further analysis of the
opinion later this week.
Ed Sheeran has been sued by two
musicians claiming his song Photograph infringes the copyright
of one of their songs,
reports the BBC.
a lawsuit filed in the Central District of California,
Martin Harrington and Thomas Leonard claim the chorus of
Photograph shares 39 identical notes to their track Amazing.
The pair are represented by Richard Busch of King & Ballow,
the lawyer that won the Blurred Lines case.
The lawsuit states: "The copying of Amazing by Photograph is
breathtaking in its deliberateness, magnitude, and hubris."
The documents state that Photograph has sold more than 3.5
million copies. A version of Amazing by Matt Cardle has more
than one million views on YouTube.
Harrington and Leonard are seeking damages of more than $20
million and royalties.
Singer seeks Fat Axl removal
Another copyright story involves an actual photograph, with
Billboard reporting that Axl Rose has issued takedown
requests with Google to get an unflattering image of him that
went viral removed from the internet.
The photo inspired a "Fat Axl" meme, with social media users
mocking Rose by
making food puns on Guns 'N’ Roses songs.
Web Sheriff made a number of DMCA takedown requests on
behalf of Rose, listing a number of websites that were
allegedly infringing his copyright.
The snag? He may not own the copyright to the image in
question, which first appeared in a concert review in the
Winnipeg Free Press in January 2010. Web Sheriff told Billboard
that Rose receives sign off from all photographers at his shows
to transfer copyright to him.
The Winnipeg Free Press disputed this. "We’ve
had a number of requests for comment on the circulating memes
of Axl Rose based on a photo staff photographer Boris Minkevich
took in Winnipeg in January of 2010," it said in a statement.
"The Winnipeg Free Press holds editorial copyright on the image
and has not approved any third-party usage. We were only
recently made aware of these memes, and while we ethically
don’t approve, viral media is impossible for us to
regulate. Welcome to the jungle."
Judge upholds jury verdict in Oracle v Google
The presiding judge in the Oracle v
Google trial has rejected Oracle’s motion for
judgment as a matter of law. Oracle argued that no reasonable
jury could find against it, but Judge William Alsup ruled that
it was reasonable for a jury to find Google’s use
of Java software code was fair use, reports
a 20-page order applied the four statutory fair use
factors. "Overall, avoiding cross-system babel promoted the
progress of science and useful arts – or so our jury
could reasonably have found," said Alsup.
Disruptive Competition Project (DisCo) commented: "Oracle
almost certainly will appeal this order to the Federal Circuit.
But given how the district court meticulously found evidence in
the record supporting the reasonableness of the
jury’s fair use finding, it is hard to imagine
that the Federal Circuit will reverse it."
Google gets case transferred
Google received other good news recently when it was
successful in getting the Fujinomaki v Google case transferred
to the Northern District of California from the Eastern
District of Texas.
The transfer decision was granted on May 13 and made
official last week. Judge Roy Payne of the Eastern District of
an order granting Google’s transfer motion and
defendants’ joinders. He noted
defendants’ evidence at the hearing that the
majority of party and third-party witnesses who have knowledge
of the accused features are located in the Northern District of
California. "Plaintiff did not present meaningful
countervailing or rebuttal evidence," he said.
Judge Payne also noted that "[i]n
particular, no party identified any specific witness or piece
of evidence located in the Eastern District of Texas." He
concluded that "the Northern District of California is clearly
Plaintiff Ryujin Fujinomaki, a Japanese resident, filed a
complaint in July last year in the Eastern District of Texas
against Google, Samsung, Motorola, LG Electronics, ASUS, and
Huawei alleging that their Android-based smartphones and
wearables infringed his patent through their lock features.
Google filed a motion to transfer venue to the Northern
District of California in November.
Barry Bumgardner, Gordie Puckett, and Matthew Juren of
Bumgardner Nelson Casto and Shawn Latchford of the Albritton
Firm appeared for the plaintiff. Aaron Marks, Jonathan Waldrop,
Darcy Jones, Marcus Barber, Heather Kim and Jack Shaw of
Kasowitz Benson Torres & Friedman and James Mark Mann of
Mann Tindel & Thompson appeared on behalf of Google,
Motorola, LG, and ASUS. Thad Kodish and Jane Du of Fish &
Richardson appeared on behalf of Samsung, and David Airan and
Leonard Hua appeared on behalf of Huawei.
Getting a case transferred is a rarity. But the Federal
Circuit has been pushing back on the Eastern District of
Texas’s unwillingness to transfer cases in recent
years. Google was also involved in the Federal
Circuit’s decision last year in
In re Google, in which the appeals court directed Judge
Payne to stay proceedings brought by Brite Smart and decide a
motion to transfer that had been pending for more than nine
No sugar coating M&M’s Sweden ruling
A Swedish court has ruled that the lower-case "m" logo on
Mars’ M&M’s product is
confusingly similar to Mondelez’s Marabou product,
which sells lower-case "m"-marked chocolates.
According to brandchannel, the Stockholm Court of
Appeals ruled that Mars will have to use the capital M&M
logo in Sweden starting in July or face fines of up to
Mars did not sell M&M’s in Sweden until
2009, whereas Marbou has been sold since the 1960s.