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Premier League, Vringo, Google, USPTO, Washington Redskins, North Carolina troll bill – the week in IP

The English Premier League’s copyright clampdown, a victory for Google over Vringo at the Federal Circuit, the Washington Redskins’ trade mark appeal, criticism of the USPTO’s telework programme, and a patent troll bill being signed into law in North Carolina – some of the IP-related news you may have missed this week

Below is a selection of intellectual property stories attracting interest on the internet in the past week that were not covered on (see the bottom of this blog post for the top stories published by Managing IP this week).

Sticking the boot in

The English Premier League is to clamp down on fans posting videos of goals online, according to the BBC. The 2014/15 soccer season starts this weekend.

Websites such as Vine, which hosts six-second videos, have made it easier for fans to share videos recorded from television. The Premier League has said that tweeting copyrighted material is illegal, however.

In an interview with Newsbeat, Dan Johnson, director of communications at the Premier League, said: "It's a breach of copyright and we would discourage fans from doing it, we're developing technologies like gif crawlers, Vine crawlers, working with Twitter to look to curtail this kind of activity."

He added: "I know it sounds as if we're killjoys but we have to protect our intellectual property."

Sky Sports and BT Sport paid £3 billion for the television rights for Premier League football. Newspaper titles The Sun and The Times have the online rights.

The issue is thorny, however, as noted in a post by Eleonora Rosati on the IPKat blog. She said the 2011 decision of the Court of Justice of the European Union held that the Premier League cannot claim copyright in Premier League matches themselves because they cannot be classified as works. She said the question becomes whether a video extract is protected by copyright and whether unauthorised use may be permitted under the UK copyright exception for news reporting.

“Overall, despite being arguable that copyright subsists in goal videos, it would seem equally arguable that those uploading them onto social media might be able to invoke the news reporting exception successfully, of course provided that their dealing is fair, ie limited to reporting the newsworthy moment, which isthe scoring of the goal, and not other moments,” said Rosati.

Google’s Federal Circuit victory

The Federal Circuit has overturned a $30.5 million patent infringement verdict against Google and others, a verdict that sent the share price of patent licensing firm Vringo down more than 70%. Vringo’s share price closed yesterday at $3.15, but was trading at $0.88 by 3.35pm today after the verdict was announced.

The Federal Circuit found that the two patents in the case were invalid. They related to a method for filtering internet search results that Vringo claims was being infringed by Google’s AdWords, AdSense for Search and AdSense for Mobile Search systems.

In November 2012, a jury found that the Google defendants had infringed all asserted claims and awarded damages of $30.5 million. The Federal Circuit today overturned this in a 2-1 decision.

In the decision, the Federal Circuit said: “The Google Defendants argue that I/P Engine’s claimed invention is obvious as a matter of law because it simply combines content-based and collaborative filtering, two information filtering methods that were well-known in the art. They assert, moreover, that the prior art contained explicit statements describing the advantages of combining these two filtering techniques, and that it would have been obvious to include a user’s query in the filtering process. See Br. of Defendants-Appellants at 35-38.

“We agree and hold that no reasonable jury could conclude otherwise. “

Vringo said in a statement it was “evaluating its options with respect to the case.” The New York-based company can ask the Federal Circuit panel to reconsider its decision, have the case heard before all active judges, or appeal to the Supreme Court.

USPTO’s Redskins call challenged

US NFL team the Washington Redskins filed a lawsuit in a district court this week in a bid to overturn the USPTO cancelling six of its trade marks that include the term “Redskins”.

The Redskins is suing five Native Americans that in June won a case to have the trade marks cancelled because they are disparaging.

“We believe that the Trademark Trial and Appeal Board ignored both federal case law and the weight of the evidence, and we look forward to having a federal court review this obviously flawed decision,” said Bob Raskopf, trade mark attorney for the Washington Redskins, in a statement.

The complaint was filed in the District Court for the Eastern District of Virginia. It also asks the federal court to consider Constitutional issues such as whether the Trademark Trial and Appeal Board improperly penalised the Washington Redskins based on the content of the team’s speech in violation of the First Amendment. The complaint also alleges that the team has been unfairly deprived of its valuable and long-held intellectual property rights in violation of the Fifth Amendment.

“The Washington Redskins look forward to all of the issues in the case being heard in federal court under the federal rules of evidence. The team is optimistic that the court will correctly and carefully evaluate the proofs, listen to the arguments, and confirm the validity of the Washington Redskins’ federal trademark registrations, just as another federal court has already found in a virtually identical case,” Raskopf said.

Working from home?

The USPTO has been receiving some bad press recently. This trend continued this week with a report in the Washington Post on an internal investigation began two years ago of the USPTO’s award-winning telework programme.

According to the Post, some patent examiners “repeatedly lied about the hours they were putting in, and many were receiving bonuses for work they didn’t do”. Further, supervisors with evidence of fraud requesting to have the employee’s computer records pulled “were rebuffed by top agency officials, ensuring that few cheaters were disciplined”, according to the Post.

The investigators concluded that oversight of the telework programme was “completely ineffective”.

The Post alleges that the USPTO left out the most damaging revelations when it gave its findings to Commerce Department Inspector General Todd Zinser last summer.

“What we hoped to see was an unfiltered response,” said Zinser. “That’s not what this was. It’s a lot less sensational. The true extent of the problem was not being conveyed to us.”

The Post obtained a copy of the original report, which was twice as long as the 16 page document submitted. The Post quotes USPTO chief communications officer Todd Elmer calling the original report a “rough draft for discussion purposes” that was an “initial attempt to describe the full investigation record.”

About 3,800 patent examiners work full time from home, with an addition 2,700 teleworking on a part time.

North Carolina tackles trolls

North Carolina governor Pat McCrory (right) has signed patent troll legislation into law. SB 648 is described by McCrory’s office as “a bill creating transparency in contracts between the Attorney General and private attorneys, to prevent the abuse of patents and more”.

The NC Commerce Protection Act of 2014 makes it unlawful to make a patent infringement claim in bad faith. It gives jurisdiction to a state court over a person or business that sends a demand letter to a state-based company.

It also provides courts specific factors to consider when evaluating a potentially abusive claim such as whether a claimant has filed similar claims against multiple targets or demanded payment by unreasonable deadlines.

Lastly, it allows patent abuse victims to recover some cost by seeking equitable relief, damages and attorneys’ fees. If a patent troll is unable to pay the court may join an interested party such a shell company’s parent and order it to pay instead.

Other blog posts published this week:

What do in-house counsel think about the Unitary Patent & UPC?

Trade secrets get sexy

Also on Managing IP this week (subscription or trial needed for full access):

The innumerable lives of a patent in Italy

Philip Morris explains how it will fight UK plain packaging plans

Interview: Brian Hinman, chief IP officer, Royal Philips

Perkins Coie hires IP trial lawyer in New York

Novak Druce adds four litigators

PTAB proceedings catching on with pharma industry

Vringo suffers setback against ZTE in India tussle

CPA Global acquires Landon IP

Preu Bohlig expands in Munich

Speakers line up for Women’s Leadership Forum in Silicon Valley

China-based private investigators receive prison terms

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