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Utynam’s Heirs




A monthly column devoted to IP curiosities and controversies, named in honour of John of Utynam

Fortnite dance moves lawsuits dropped for now

Following the US Supreme Court's March 4 Fourth Estate Public Benefit v Wall-Street.com decision, which ruled that copyright owners must obtain a registration before they can sue for infringement, a spate of copyright infringement lawsuits against the popular video-game Fortnite were dropped. The game allows players to buy emotes, which enable characters to bust into popular dance moves in the interactive game world.

The self-proclaimed owners of the disputed dance moves – including Alfonso Ribeiro, the Backpack Kid, the Orange Shirt Kid and 2 Milly, who popularised the Carlton, flossing, the random, and Milly Rock, respectively – withdrew their claims after Fourth Estate because they had not yet registered the dances with the Copyright Office. Because the suits were voluntarily dismissed without prejudice, they may be re-filed once copyright registrations have been obtained.

Obtaining proper registrations may be more difficult than they originally anticipated, however. The Copyright Office rejected Ribeiro's application to register the Carlton as a choreographic work in February because it said the three-step combination was too simple to be classified as a choreographed work. The registrability of the other disputed dance moves remains to be seen, but precedent suggests it will be a tough sell.

State sovereign immunity

The US Court of Appeals for the Federal Circuit appeared unconvinced by the University of Minnesota's March 11 arguments that state sovereign immunity protects patents from inter partes review (IPR) and is meaningfully distinct from tribal sovereign immunity. In its 2018 Saint Regis Mohawk Tribe v Mylan Pharmaceuticals decision, the court found that IPRs are not sufficiently similar to Article III proceedings to warrant the sovereign immunity granted by the US Constitution.

The Mohawk tribe has appealed to the Supreme Court; if the court grants certiorari it will throw the state of both tribal and state sovereign immunity into question, but until that happens the two flavours of immunity appear to be tied.

Matt Rizzolo, partner at Ropes & Gray, points out an interesting distinction from the Saint Regis decision: "The Patent Trial and Appeal Board (PTAB) found that state sovereign immunity actually did apply, but that the university waived that immunity by bringing patent infringement suits in district court. This waiver decision by the PTAB seems to contradict prior holdings from the Federal Circuit in cases such as A123 Systems v Hydro Quebec."

Reminder: public domain rules are national

Late writer JD Salinger's trust's recently-concluded copyright dispute with the publisher Devault-Graves Agency serves as a reminder that works in the public domain in the US are not necessarily in the public domain around the rest of the world. Rights that have expired in the US may be worth enforcing abroad.

Devault-Graves repackaged and sold volumes of Salinger's short stories because they had been originally published in the 1940s and fell into the public domain in the US. However, other countries do not recognise the same expiration of copyright.

When Devault-Graves began licensing the work to foreign publishers for publication abroad, the Salinger Trust stepped in and asserted its rights overseas. The trust achieved a recall in Germany and was even awarded damages in Italy in January 2019. The Italian court also held that its ruling finding the stories protected by copyright applied throughout the EU.

The case has ramifications for any industry that deals with copyrighted material that has fallen into the public domain in the US because they will likely be able to retain and enforce their rights elsewhere.

Rocket docket powers forward

The Eastern District of Virginia (EDVA) is renowned as the fastest federal court in the US.

Counsel Wendy McGraw and partner Charles Ossola of Hunton Andrews Kurth tell Managing IP that in 2019, "the EDVA continues to attract complex cases and to move those cases forward on exceptionally fast schedules".

The number of patent filings has decreased over the years, which McGraw and Ossola attribute to "stricter venue rules and the use of Section 101 to invalidate patents". They expect the EDVA to be an increasingly popular venue as filings in the Eastern District of Texas decline and Delaware's capacity is maxed out.

McGraw and Ossola warn that the EDVA is particularly strict around patent damages methodologies, and offer these practice tips: retain patent damages experts early; test proposed methodologies through peer review before their presentation to the court; and prepare for and anticipate challenges to those methodologies before trial.


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