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Who’s on First?, Federal Circuit, global patent trends, PTAB, WIPO, Ghostface Killah, Kanye West – the week in IP



Michael Loney


A copyright case over Abbott & Costello’s “Who’s on First” routine being thrown out, criticism of Judge Mayer’s views of software patents, the Supreme Court denying cert to a PTAB case, an RWS inovia report on global patent trends, the closing of investigation cases against WIPO’s Francis Gurry, and two IP suits involving rappers were in the recent IP headlines

Also on the blog in the past week were:

US patent litigation falls 13% in third quarter

We’ve also posted the following articles in the past week (log in via subscription or free trial):  

TTAB issues final rules to increase efficiency

Trade Mark Amendment Act moves Thailand towards international harmonisation

En banc Federal Circuit reinstates $120m verdict in Apple v Samsung

Key takeaways from the IP Enforcement Forum 2016

Examining the Madrid Protocol in Africa

PTAB finds Shire patent valid in first Kyle Bass final decision

FTC report identifies two types of PAEs, makes recommendations

Costco ordered to pay $8m for selling "Tiffany" rings                                                                                               

Data: PTAB filing stabilises in third quarter

Kappos: McRO is CAFC’s "most important 101 case since Alice"

Game over for Who’s on First?

The Second US Circuit Court of Appeals has dismissed a copyright suit against the makers of a Broadway show that included dialogue taken from Abbott & Costello’s classic "Who’s on First" routine.

hand to godThe main character in "Hand to God" performs a minute excerpt of the routine with a sock puppet to impress a girl, before admitting it is a routine from the 1950s. 

The Southern District of New York last year dismissed the suit, saying it was transformative and assumed the audience recognised the original source.

This week the Second Circuit in  its opinion also dismissed the suit but cited different reasons. Judge Reena Raggi said the use of the routine was not fair use.

But as the Wall Street Journal reported: "The fair use question didn’t ultimately matter, she wrote, because the plaintiffs never established a valid copyright claim on the sketch. 'The parties cite various contracts and copyright filings spanning more than 40 years as relevant to claimed rights,’ she wrote, but she concludes none of the transactions prevented the routine from falling into the public domain decades ago."

Should Judge Mayer step down?

A concurring opinion in the Federal Circuit’s recent Intellectual Ventures I v Symantec case continues to send shockwaves among patent practitioners.

Judge Haldane Mayer wrote that:  "Most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents." He added: "It is well past time to return software to its historical dwelling place in the domain of copyright."

This has not been well received among patent attorneys. For example, IBM’s Manny Schecter tweeted: "#Copyright is not adequate to protect software so as to eliminate #patents. They are not the same, which is why we have both now."

More forcefully, Gene Quinn on the IP Watchdog blog called for Judge Mayer to stand down "and move quietly into retirement".

In an epic takedown, Quinn concludes: "Simply stated, the industry and the public deserve better than Judge Mayer. His anti-patent views seem to have matured into an irrational hatred that so cloud his judgment that he twists, exaggerates and misrepresents in order to attempt to impose his radical views into the law. There is no place for a judge like that."

Fenwick & West’s Stuart Meyer on the Bilski Blog said the concurrence shows the problem with judicially-created exceptions.

Supreme Court turns down PTAB case

The biggest IP story so far this week has been oral arguments in Samsung v Apple at the Supreme Court. But garnering less attention was the court denying cert in three Patent Trial and Appeal Board cases.

Supreme CourtAs Marshall Gerstein &Borun's PTABWatch blog reported: "Two of those petitions challenged the constitutionality of AIA trials and the Patent Office’s authority to cancel patent rights between private parties." These were Cooper v Lee and MCM Portfolio v Hewlett-Packard. The court also denied Merck’s petition challenging the Federal Circuit’s deferential standard of review of the PTAB’s AIA trial decisions, in Merck & Cie v Gnosis. 

This followed the court last week denying a petition seeking to limit the scope of technology that may be considered by the PTAB to fall within its CBM review jurisdiction, in Trading Techs Int’l v Lee.

Marshall Gerstein commented: "Although some practitioners remain hopeful that the Court will rein in the PTAB, so far, the Supreme Court has refused the invitation to do so."

The Supreme Court earlier this year heard its first PTAB-related case. In the Cuozzo decision, it affirmed the PTAB’s standard for claim construction.

Global patent trend report released

RWS inovia has released its annual report on global patent and IP trends.  

The report indicates that fallout from the Alice v CLS ruling was the dominating issue in the US in 2015, and the Unitary Patent was the main topic of concern for European applicants.

The Patent Docs blog summarised some of the report’s findings: "With respect to filing expectations, 79.2% of respondents said they filed as many patent applications as they expected to file in 2015, 8.3% filed more than they expected, and 12.5% filed less than they expected. The 2016 report indicates that 36.5% of survey respondents filed between four and nineteen patent families in 2015, 24% filed 1-3 patent families, 12.5% filed 20-49 patent families, 10.4% filed either no patent families or more than 100 patent families, and 6.3% filed 50-99 patent families. The report noted that respondents have been filing fewer patent families as compared to three years ago."

Some 41.4% of respondents reported IP budget cuts in 2015.

Investigations against Gurry closed

WIPO’s Coordination Committee, the governing body responsible for staff matters, has agreed to end their discussions on the UN’s Office of Internal Oversight Services investigation into allegations against WIPO Director General Francis Gurry.

The Coordination Committee reaffirmed the decision taken at their September 12 Extraordinary Session with respect to the decisions and recommendations of the Chairs of WIPO’s General Assembly and Coordination Committee, who were charged with managing this process. 

"Member states agreed unanimously to move forward in a constructive and positive spirit with the ongoing work at WIPO to review and strengthen internal procedures relating to procurement, internal oversight, and whistle-blower policy," said WIPO.

In brief – hip hop edition

Ghostface Killah Supreme Clientele-          Sony has settled a copyright lawsuit over rapper Ghostface Killah using the Iron Man theme song from the 1960s on two tracks on his 2000 Supreme Clientele album, reports Billboard. As this blog reported in August, the Second Circuit had revived the suit, which was brought by composer Jack Urbont, because it had factual issues that precluded summary judgment.

-          Finnegan’s Incontestable blog reports that the Southern District of New York recently dismissed a trade mark infringement complaint against Kanye West over the term "Loisaidas" on the ground the claims were precluded by the First Amendment.

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ICYMI: Our report on this week's #SCOTUS ruling in Star Athletica v Varsity Brands https://t.co/Rf3TWplNUrhttps://t.co/TrZ5YcvKQr

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@Oblon_IP @PatentPostGrant Congratulations Scott! #mipawards

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@KellyIPllp Well done to all at the firm!

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