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101 opinions, Robin Williams, PTAB, Jay-Z, Perfect 10 – the week in IP

The latest statistics on patents invalidated under 101, Robin Williams restricting use of his image before his death, patentees’ recent success at the PTAB, the Big Pimpin’ case latest, and a “copyright troll” being ordered to pay fees were in the IP headlines this week

Busy period for Alice opinions

The period between March 20 and March 31 was busy for district court decisions invalidating patents under 101, as tracked by Fenwick & West’s Bilski Blog.

There were four decisions in the district court, two of which went favourably for the patentee.

This means there have now been a total of 69 Federal Circuit and district court decisions on 101 since Alice, with 51 invalidating patents ­– or 74%. This includes 149 patents, 112 of which have been invalidated. 

Robin Williams’ restricted image

This week it was revealed that Robin Williams took steps to restrict usage of any images of himself for 25 years after his death, reports The Guardian.

The actor passed on rights to his name, signature and likeness to the Windfall Foundation. This means the actor cannot be digitally inserted into any films or adverts for 25 years.

“It’s believed to be a new form of privacy contract based on the availability of new technologies, which Williams and his lawyers were clearly aware of and one which might affect future usage of deceased celebrities,” said The Guardian.

Patent owners on a roll at the PTAB

Patentees have been more successful at the Patent Trial and Appeal Board recently, according to Oblon’s Patents Post-Grant blog.

In a post outlining Spring trends, Scott McKeown (right) said the PTAB in the past several weeks has sided with patent owners on the merits in more than two dozen denials of institution ad final written decisions.

“Whether by dint of less low hanging fruit (ie, stronger target patents), poor petition drafting practice, a tightening of PTAB standards, or a combination of all of these factors, patentees are seeing more success of late,” wrote McKeown.

He added: “Over the past several weeks the PTAB sided with Patent Owners on the merits in well over two dozen denials of institution and final written decisions. The Board is reading both the prior art disclosures and the petitioners' arguments narrowly. The Board has been quite comfortable finding that petitioners did not carry their burden, even for simple technologies.”

Big Pimpin’ nears trial

The judge in the copyright dispute over the sample in Jay-Z’s 2000 hit Big Pimpin’ this week indicated she would likely deny summary judgment against the rapper, according to The Hollywood Reporter. The trial is set for October 13.

The dispute is over a sample from “Khosara, Khosara”, which featured in the 1960 Egyptian film Fata ahlami. Osama Ahmed Fahmy claims he is an heir of the composer of the tune, and sued Jay-Z and producer Timbaland for copyright infringement.

Fahmy contends that the record company that licensed the tune never had the rights to the song. “That’s the real problem here," argued Keith Wesley of Browne George Ross on March 30. "Sout el Phan said, 'EMI Arabia, you can use it, but you can't go out and give away rights to someone else. I don’t have authority to do that, and the copyright owner hasn’t given me rights to do that.' "

Judge Christina Snyder agreed the licensing terms were issues that could go to trial.

Giganews awarded fees from “copyright troll”

Perfect 10 has been told to pay $5.2 million in attorneys fees by a Central District of California judge.

According to an Ars Technica article that refers to Perfect 10 as a “copyright troll”, the company sued Giganews in April 2011 saying its copyright had been infringed by Giganews employees directly uploading infringing images onto its network. Giganews won the case.

Perfect 10 owner Norman Zada founded the company as a softcore print magazine in 1997 and also a website advertising the “world’s most beautiful natural women”. He starting suing companies alleging infringement of the content.

In a lengthy order, Judge Andre Birotte awarded fees. “All of the evidence before the Court demonstrates that Perfect 10 is in the business of litigation, not protecting its copyrights or ‘stimulat[ing] artistic creativity for the general public good’… Perfect 10 has never been a self-sustaining business, and to date, has lost more than $50 million dollars, if not more,” Birotte wrote.

He added: “Rather than bringing suit for the purpose of protecting its copyrights and stimulating artistic creativity, the evidence reveals that Zada’s interest in the copyrights held by his ‘tax write-off’ is solely in litigation.”

Also on the blog this week:

A focus on China

Twitter Q&A with Professor Hugh Hansen - the highlights

Guest post: ASIPI debates IP in agriculture

In our news and analysis this week:

Bass and Spangenberg target another pharma company through IPR

Data – Apple and Toyota dominate March PTAB filings

What is Spiderman's take on post-expiration patent royalties?

USPTO appoints deputy trade mark commissioner

US Supreme Court tackles intent in induced infringement

Arnold writes short judgment

Sirius and Pandora cases raise fundamental IP issues

Time to put strategies in place for 3D printing

Starbucks v Sky: a report from the UK Supreme Court

EBA backs plant patents in tomatoes and broccoli cases

Supreme Court's B&B decision raises the stakes at TTAB

Texas Judge Leonard Davis to join Fish & Richardson

Court of Appeal backs Mattel over Scramble marks

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