Oscars, Tesla, BlackBerry, Typo, Myriad, Tumblr – the week in IP
Oscars intellectual property litigation through the years, Elon Musk clarifying Tesla’s free patent policy, BlackBerry suing Typo again, Myriad settling its last BRCA matter, and Tumblr clamping down on copyright infringement were in the IP headlines this week
A different kind of Oscar award
Just in time for the Oscars this weekend, Foley Hoag’s Trademark & Copyright Law blog has compiled an 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 theme.
Regular readers of the blog will recall last year’s Oscar ceremony resulted in a heated debate about who owned a selfie that included an impressive array of celebrities.
elon20musk300.jpg Musk says free means free
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 them.
Last 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.
As 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.”
blackberry.jpg This lawsuit is not a typo
BlackBerry is once again suing Typo, a start-up founded by television and radio host Ryan Seacrest, over the design of its keyboard case.
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 sanctions.
As 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.
myriad20logo.jpg Myriad gives up BRCA matters
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 parties settled.
“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 & Berghoff, 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.”
tumblr20logo20new.jpg Tumblr’s harder stance
Tumblr is clamping down on copyright infringement by its users, 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 songs.
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:
In our news and analysis this week: