Yoga as Copyrightable IP: Bikram v. Yoga to the People

By Rachel Cannon

Bikram Choudhury, a celebrity of sorts in the yogic world, is known for being the founder of Bikram yoga, as well as for being an unusually litigious yogi.  He has famously filed many suits in the past decade in order to protect a number of his trademarks and copyrights – see page 8 of his most recent complaint for a full description of each.  Choudhury is notorious for strictly controlling the Bikram Yoga experience, and for his willingness to take legal action to do so.  Few people dispute Choudhury’s right to protect his trademarks against studios that use his name without permission.  Of more interest is his copyright for his 26 pose sequence performed in a humid 105-degree room.  He has previously sued studios for altering the class structure as he envisions it, including those changing portions of his signature sequence, for adding music to his classes, or for lowering the temperature of the room.

It is not hard to understand why Choudhury would want to control the use of a product that he developed with his own time and effort.  However, the primary question has been whether Choudhury’s copyright protections extend as far as he would like them to.  While each of Choudhury’s suits represented an opportunity for courts to create some common law on how yoga postures and sequencing should be classified, each of these cases has settled out of court and, therefore, none has produced any precedent.

His most recent suit is against Yoga to the People, an organization based on changing the growing reality that yoga was becoming an activity reserved for the socioeconomically elite group who could afford expensive studio fees.  YTTP’s classes are often donation-based and represent a major economic shift in the business of yoga.  Gregory Gumucio, a Manhattan yoga instructor for YTTP and a graduate of Bikram’s training, offers a “traditional hot yoga” class for less than half the price of a Bikram studio.  Choudhury is suing YTTP and Gumucio for the use of his copyrighted sequence, among other claims.

The validity of this claim has been debated by IP experts.  If Bikram Yoga is a system comprised by a unique organization of non-copyrightable content, such a system cannot be registered under Baker v Selden (a U.S. Supreme Court case from 1879 where Baker had tried to copyright a system of bookkeeping).  Similarly, if it is classified as a scripted sports play, it also would not be afforded copyright protection, as those are considered to be ideas.  Choudhury could have been protected under patent law if he could argue that his method is a functional process.  However, this issue is moot, as he has no such patents.  As these other claims fail, Choudhury has relied on the argument that his sequencing was more akin to choreography, which has previously been afforded U.S. copyright protection.  This core argument supporting his copyright claims has recently been dealt a major blow; the U.S. Copyright Office stated on December 7th that, upon review, they have changed their position so that sequences of yoga exercises are no longer protectable as choreography.  This effectively bars Choudhury from making the legal claims he has relied upon for years in order to legally browbeat deviating studios into submission.

To many yogis, this opinion from the U.S. Copyright Office is the beginning of the swan song that effectively ends Bikram’s reign of legal intimidation.  While it does not functionally end the litigation (there are still other claims, such as breach of contract, that are not settled – for more on these, see the complaint and defendant’s answer), it does drastically affect the legal power Choudhury has zealously wielded against studios that deviate from his strict standards.  He has successfully bullied studios into settlement in part due to his economic power, which allows him to afford litigation expenses, but also because no one knew how a court would come down on the copyright issue.  This is a victory for the traditional notion that no one should own the ancient practice of yoga, and perhaps will help tamp down the decidedly un-yogic legal practices in which Choudhury has engaged in the past decade.

 

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by on January 17, 2012  •  Permalink
Posted in General Interest
Posted by jpkim01 on January 17, 2012

http://sips.blogs.wm.edu/2012/01/17/yoga-as-copyrightable-ip-bikram-v-yoga-to-the-people/

On Software Patents and Patent Trolls

by Mark Rawls

Patent litigation can be a real mess. James Bessen, of Boston University, estimates that roughly half a trillion dollars was spent in the last twenty years fighting “patent trolls,” including legal costs and an estimated decline in market value. Just ask Microsoft, Google, Apple, Facebook, Amazon, . . . and the list goes on. Each has been sued, often repeatedly, for patent infringement. Then there are smaller companies, or startups, or individuals, who are either sued or chilled by the potential costs of such suits, even if frivolous. Consider Interval Licensing v. Google et al., which Lee Gomes at Forbes describes as “yet another example of the cynical use of the American legal system to extort money out of successful companies — in the name of protecting innovation and innovators. Shame on Paul Allen [Microsoft co-founder] for being part of it.” Further examples of patent trolls abound.

In an effort to shield themselves from liability, big businesses, especially technology businesses (and 75% of patents from the last 20 years are in “computer and communications technology”), amass large war chests of patents, in a sort of mutually assured destruction strategy. “Large stockpiles of patents can lead to a legal détente between tech giants simply because both companies own enough patents to sue the other repeatedly.” Google, for instance, while in the middle of patent litigation with Oracle (see my previous post), recently acquired Motorola Mobility – and their approximately 17,000 patents. Microsoft formed CPTN Holding, with members including Apple, Oracle, and EMC, and in a deal with Novell acquired a patent portfolio of some 882 patents. As part of the deal, a judge required the patents to be shared with Open Invention Network, a company designed to pool patents together for open source developers.

But patent war chests don’t help against patent trolls. In a recent article about patent trolls, Popular Mechanic defined the term to mean, “firms that produce little and exist mainly to buy other people’s patents and enforce licenses.” Their business model turns around collecting royalties – and, often, this means suing for patent infringement, sometimes to collect damages, sometimes just to “convince” other companies that paying royalties is cheaper than litigating. Given the purported intent of patents to “promote the Progress of Science and useful Arts,” the existence of such firms seems troubling, as does the social and economic costs they allegedly cause. To an outsider (well, at least a 1L who hasn’t taken any patent law courses yet), this doesn’t look like a terribly efficient system.

Read the full post »

by on December 8, 2011  •  Permalink
Posted in Patent
Posted by Jarred Taylor on December 8, 2011

http://sips.blogs.wm.edu/2011/12/08/on-software-patents-and-patent-trolls/

Here we go: the first major copyright dispute of the 2012 elections

by Jarred Taylor

Last year, I wrote two posts describing the growing role that copyright is beginning to play in electoral politics.  The gist: using either the courts or the takedown process provided by the Digital Millennium Copyright Act, political campaigns are facing copyright claims against their political ads from content owners such as news outlets or musicians.

While court battles can take months or longer and pose little threat to the immediate political effects of disputed videos, the DMCA takedown regime takes a “shoot first ask later” approach — the platform provider (e.g. YouTube) must immediately remove any video that a content owner claims violates their copyright, and only upon a decision by the original poster to dispute the claim will the video be reinstated.  Reinstatement can take days or weeks, which is precious lost time in the heat of political battle.  Then, of course, the parties will likely proceed to costly litigation.

There were a few campaign ad copyright claims over the summer: for example, a claim by ABC Sports against the campaign of former candidate Tim Pawlenty for using footage of the famous 1980 “Miracle on Ice” American hockey victory without permission in a campaign ad.  But as we now approach the one-year mark until the election, and only a few months until the first primary ballots, it is inevitable that the campaign ads — especially attack ads — will multiply.  And what better way to attack an opponent than to show their gaffes from televised debates?

Read the full post »

by on October 20, 2011  •  Permalink
Posted in Censorship, Copyright, Copyright Infringement, DMCA
Posted by Jarred Taylor on October 20, 2011

http://sips.blogs.wm.edu/2011/10/20/here-we-go-the-first-major-copyright-dispute-of-the-2012-elections/

Oracle v. Google

By Mark Rawls

Oracle, which recently acquired Sun Microsystems, initiated a lawsuit against Google in August 2010. The suit has attracted a lot of attention due to the prominence of Android, and has angered a number of people in the software community (see here). Oracle asserts (1) the claim that Google’s implementation of the Android operating system infringes on several of their patents, and (2) a copyright infringement claim. The trial, which is scheduled for the end of October, is likely to be delayed due to unrelated issues on the court’s docket (see here).

If you haven’t been paying attention, Android is big business.  Multiple cell phone providers offer Android-based phones.  Numerous developers create Android-based applications. Even the government is interested in the system for certain military applications, in part because of its openness. (Full disclosure: I worked for several years for a company where part of my responsibilities included developing software to run on the Android platform.)

For those unaware, Sun developed the Java programming language and virtual machine (see also here and here), which are popular, widely-used tools in the software community. In turn, Google, through the Open Handset Alliance, developed the Android operating system, which includes the Dalvik virtual machine. Dalvik can be used to run code compiled from a dialect of Java. In light of a copyright claim, Dalvik was supposedly developed as a “clean room” version of Java. For more details on what Dalvik is, see Mark Murphy’s summary.

Oracle claims infringement of seven of its patents related to its virtual machine technology. Originally there were 132 claims from the seven patents, but Oracle was ordered to reduce the number of claims down to three over a three-stage process, though it has fought that order. It currently is pressing 15 claims — or 26, due to disagreement with Google on how to count what Oracle calls “mirrored” claims. Of these claims, several have been subject to reexamination by the USPTO at Google’s insistence.

Three of the claims have been confirmed in a first action.  Three have yet to be heard.  Nine have been rejected in a first action. Google asserts that the number of claims pressed by Oracle is still too much to explain to a jury in the allotted time for trial. Google has also limited its defenses to a minimum of three per claim, as required by an earlier order of the court.

Oracle’s original damage claims ran in excess of $6 billion. Google, objecting to the report which was compiled by Professor Cockburn of Boston University, filed a motion for a Daubert hearing. Google claimed that Cockburn’s estimate on damages ignored prior negotiations between Sun and Google and other licensing transactions where Sun licensed the patents for a fraction of Cockburn’s estimate, and was improperly based on worldwide sales of Android instead of limited to the infringement which takes place in the U.S. The trial judge has agreed, at least in part, with Google, inviting Oracle to correct and resubmit its damages report (see here).

Of particular note with respect to damages, Oracle is claiming that Google’s actions have been “willful, deliberate, and in reckless disregard” of Oracle’s patent rights, which, if true, could entitle Oracle to treble damages (provided that the patent claims hold up in court). In proof of this supposed willful and deliberate behavior, Oracle has stumbled upon what is being called the Lindholm e-mail. This was an e-mail prepared by a senior engineer at Google, and sent to Google’s in-house counsel; its contents show that Google thought it needed to negotiate a license with Sun.

According to Oracle, the email is evidence of Google’s willful, deliberate, and reckless disregard of Oracle’s patent rights. Google claims that the e-mail is privileged attorney-client communication or work product and should not be admissible. The details are a little complicated, but it appears that the e-mail was inappropriately made public by Oracle (see here). Google has so far lost its fight on this issue (though Google plans to use one of its in limine motions with respect to the email), but one of Oracle’s arguments is worth pointing out because of its seemingly far-reaching consequences.

It is generally held that if a party is claiming something should be kept confidential, any public disclosure by that party destroys the confidentiality; the twist here is that Oracle published the letter online, which was later indexed by Google’s search engine and appeared in its cache. Oracle claims that Google waived its privilege by this action. If this theory of Oracle’s were to hold, it may have serious implications for other search engines. Although the court has so far sided with Oracle on the admissibility of the Lindholm email, it did not mention this argument in its opinion.

In response to Oracle’s patent claims, Google denies that the patent claims are legitimate.  Google claims that the patents are invalid, Oracle’s claims are barred by either the doctrines of laches, equitable estoppel, and/or waiver, and by the doctrine of “unclean hands.” Google claims the patents are “invalid under 35 U.S.C. § 101 because one or more claims are directed to abstract ideas or other non-statutory subject matter.” Google also claims that none of the patents “can be properly construed to cover any of Google’s products.” As noted above, Google has requested the USPTO to reexamine some of Oracle’s claims.

There is disagreement between the parties on almost every point. As noted above, they can’t even agree on how to count the number of claims that Oracle is pressing. With the trial fast approaching, the parties have also complained to the judge about the opposing party’s forthrightness in discovery requests. One particular incident concerns Oracle: sometime after Oracle acquired Sun and after the initiation of the lawsuit, Oracle revamped the Sun website. Google wants access to the original website, which included a number of documents relevant to some of Google’s defenses.

Oracle turned over a corrupted version of the old site, which neither party could access. As one commenter notes, “If this were Sears or Victoria’s Secret or some other company that isn’t in the primary business of selling technology, one might understand challenges in reproducing an old website…. But Oracle is in the technology business. They know how to do technical tasks like this, one presumes. If not, why would you buy any technical products from them?” (see here).

The case is getting ready to head for trial, which is currently scheduled for October 31, although it will likely be delayed. To see the different claims being pressed and the defenses presented, or to follow the case in more detail, Groklaw has court filings (available as text or pdf) and commentary available.

by on October 12, 2011  •  Permalink
Posted in General Interest
Posted by jpkim01 on October 12, 2011

http://sips.blogs.wm.edu/2011/10/12/oracle-v-google/

Twitter, Inc. v. Twittad, LLC

By Kristin Bergman

(Updated 10/31/2011 — see end of post)

Twitter owns a family of TWEET marks — cotweet, retweet, and tweetdeck — but in December 2010, its application to register the famous TWEET mark itself was denied. Why? In October 2009, the PTO granted registration of LET YOUR AD MEET TWEETS to Filmfitti, LLC, who assigned it to Twittad, a provider of online advertising. In the PTO’s denial of Twitter’s application, they cited a conflict with Twittad’s registration as LET YOUR AD MEET TWEETS and TWEET would be too similar from the consumer’s perspective.

After some ineffective attempts at resolving this dispute, Twitter has filed a complaint with the United States District Court in Northern California for the cancellation of Twittad’s registration under 15 U.S.C. §1119, which holds that “in any action involving a registered mark the court may determine the right to registration [and] order the cancellation of registrations, in whole or in part.”

In suing Twittad under the Lanham Act, Twitter alleges a dispute of the validity and “registerability” of Twittad’s mark. As the registration was issued less than five years ago, there are no available claims of incontestability to the petition to cancel a registration. 15 U.S.C. §1064(1) (2006).

Twitter alleges that Twittad’s registration of the mark “unfairly exploits the widespread association by the consuming public of the mark TWEET with Twitter, and threatens to block Twitter from its registration and legitimate uses of the mark.” Twitter argues that Twittad’s use of LET YOUR AD MEET TWEETS is a generic reference but for TWEETS and its association with Twitter, and on these grounds cannot serve as a mark. In addition, an applicant for registration must show use of the mark in United States commerce to qualify for registration. 15 U.S.C. §1051 (2002). If these grounds do not render the registration subject to cancellation, Twitter also argues that Twittad’s use of the mark considering Twitter’s preexisting rights in the TWEET mark constitutes trademark infringement under 15 U.S.C. §1052(d) (2006).

Twitter has a fairly strong case for its investment in the mark TWEET. In respect to the family of TWEET marks mentioned earlier, Twitter argues that consumers would face confusion as LET YOUR AD MEET TWEETS would mistakenly seem like part of this family. Similarly, Twitter emphasizes its role in giving meaning to TWEET. After Twitter’s launch, TWEET gained significant consumer recognition due to its association with this social networking site. Prior to this, the public simply associated TWEET with a bird’s call. Now the public knows TWEET as “an indication of services that originate from Twitter,” even found in the dictionary with this association.  Still, Twitter’s significant delay in filing a trademark application could be problematic.

If Twitter wins this case and Twittad’s registration is cancelled, Twitter will still face a challenge in applying to register its famous TWEET mark. With the popularity of the mark, TWEET is already on its way to becoming generic, and may be too far in this direction to allow Twitter to successfully register at this time. Nevertheless, considering Facebook’s limited ownership of “face,” despite the difficultly faced in this application process, how the USPTO would go is anyone’s guess. (http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78980756).

–

Update (10/31/2011):   Twitter’s lawsuit against Twittad has been dropped, Twittad’s Twitter account is being restored, and now Twittad has agreed to transfer its registration of the “tweet” trademark over to Twitter. In an interview with the Wall Street Journal, Twitter spokeswoman Lynn Fox announced, “We’ve arrived at a resolution with Twittad that recognizes consistent use of Tweet while supporting the continued success of Twitter ecosystem partners like Twittad.” Due to confidentiality agreements, there’s no news on whether compensation or other exchanges took place between parties to enable this settlement. Still, Twittad’s CEO, James Eliason, uses this situation to remind people going forward: “The moral of the story is to make sure you trademark and patent-protect everything.”

 

by on September 21, 2011  •  Permalink
Posted in Trademark
Posted by jpkim01 on September 21, 2011

http://sips.blogs.wm.edu/2011/09/21/twitter-inc-v-twittad-llc/

Trouble for Paul Allen’s Enormous Patent Litigation

Detour signBy Joseph Kamien

A judge has ordered a stay (PDF) in Paul Allen’s massive patent suit against 11 different technology companies to give the Patent Office time to complete its reexamination of the patents in question. As IPWatchdog pointed out, “reexamination has become quite popular among sophisticated defendants in patent infringement cases in recent years because it offers a forum far more favorable than the District Courts. There is no statutory presumption of validity, as in the courts.”

The SIPS Blog covered this litigation in an earlier post in which I opined that the main reason for Mr. Allen’s lawsuit was that Microsoft wanted clarity in the law (post-Bilski) so that it would know the true value of its massive patent portfolio. If that’s the case, Mr. Allen will likely be disappointed because reexamination will probably hinge on specific prior art relevant to these patents, not on the general patentability of these inventions.

Image courtesy Flickr user DaCosta1

by on June 29, 2011  •  Permalink
Posted in Patent
Posted by jtkamien on June 29, 2011

http://sips.blogs.wm.edu/2011/06/29/trouble-for-paul-allens-enormous-patent-litigation/

A Right To Be Forgotten

By Natch Greyes

Several European countries want individuals to be able to control data about themselves online. The European Union (EU) has already endorsed clarifying the so-called ‘right to be forgotten’ (“the right of individuals to have their data no longer processed and deleted when they are no longer needed for legitimate purposes“) and greatly expanding the control individuals have over their online data. Essentially, the EU is looking to adopt Judge Kozinski’s view of the majority opinion in White v. Samsung Electronic America, Inc., 971 F.2d 1395, and apply it to all individuals within the EU. “Every…person now has an exclusive right to anything that reminds the viewer of [him or] her.”

The EU’s view is nuanced and evolving but it appears to endow individuals with an absolute right in their personae online.  The current language of the EU’s proposal regarding protection of personal data suggests that the EU would like a scheme in which every individual implicitly licenses his or her persona for online use but retains the right to revoke that license at any time. It appears as though the mechanism for removing  ’anything that reminds the viewer of him or her’ will rest solely on the shoulders of the companies who aggregate the data.  In other words, the EU would require a company like Google to respond to user requests to curate search results.

The first fights over the online ‘right to be forgotten’ have already been fought in Spain.  One of Google’s underlying contentions – that it would be remarkably inefficient to manually curate results – is a serious issue for policy makers.  The entire search process developed by Google (and other search providers) would break down.  The algorithm designed to find the “most relevant” information based on a query would be useless when confronted by names of individuals.  And, other search terms, if closely aligned with an individual, would also have to be pruned.  In short, Google would have to run every possible search and then have one of its employees go through and manually edit out the results to which someone objected.

Further, the process would be necessarily complicated by someone with a common name.  If, for instance, John Smith wanted search results for “John Smith” to be curated search engine employees would be confronted with the problematic issue of verifying that the results for “John Smith” actually referenced the John Smith making the request and not some other John Smith.  The EU’s proposal does not seem to imagine any sort of verification procedure.  Without a verification procedure it is hard to imagine how a search engine’s employees will be able to readily verify that the John Smith making the request is the same “John Smith” in the search results since, presumably, both will have access to the same publicly available information through the search engine.

The EU’s proposal attempts to deal with the issue ex-Google CEO Eric Schmidt predict[ed], “that every young person one day will be entitled automatically to change his or her name on reaching adulthood in order to disown youthful hi jinks stored on their friends’ social media sites,” without resorting to allowing individuals to change their names.  How effective the expansion of individual rights to persona will be in addressing the issue of online reputation remains to be seen.

Meanwhile, the clamor for the ‘right to be forgotten’ has not yet reached the United States. The current legal standard, if there is one, is for individuals to expect themselves to be Googled and, if redress is needed, to sue under defamation. (See, e.g., Too Much Media LLC v. Hale).  This standard necessarily limits the type of data which individuals can control to defamatory postings (and, of course, whatever they themselves post). Since law suits are expensive and defendants are sometimes unknown this type of data control is not without its problems.

Regarding the ‘right to be forgotten’ the quandary for the United States is necessarily complicated by the Constitution. The free speech protections bestowed by the 1st Amendment afford individuals great leeway when engaging in “speech.” Curtails on “speech” (including written communication) are few in number and limited in scope. But, many ‘Cyber-Bullying’ Statutes (and some recent court decisions) seem aimed at expanding that scope, if ever so slightly, to, at the very least, allow government intervention in an area of law traditionally governed by private law suits. Whether these ‘Cyber-Bullying’ Statutes will help bolster a forthcoming effort to introduce a ‘right to be forgotten’ in the United States remains an open question.

by on June 17, 2011  •  Permalink
Posted in Online Censorship
Tagged , , , , , , , ,
Posted by natchgreyes on June 17, 2011

http://sips.blogs.wm.edu/2011/06/17/a-right-to-be-forgotten/

Summer IP Programs

By Nathan Lambeth

Yes, it is that time of year. I and my 1L compatriots have spent plenty of time worrying over the economy while submitting resume after resume, fine-tuning cover letters, and puzzling over how to walk that fine line between being “a real go-getter” and “creepily persistent.”

For those of you out there in a similar mindset, the wonderful people over at Patently-O have put together a post and accompanying spreadsheet detailing a myriad of summer programs focusing on intellectual property. Locations range from the US to Germany to China and more.

Should you consider getting some credits out of the way this summer rather than braving the job market, these programs are worth a look. Best of luck, fellow 1Ls.

“Taking care of business every day
Taking care of business every way
I’ve been taking care of business, it’s all mine
Taking care of business and working overtime”

- Takin’ Care of Business, Bachman-Turner Overdrive

Or at least, that’s the idea.

Photo courtesy of flickr user gamillos.

by on June 17, 2011  •  Permalink
Posted in Copyright, General Interest, Patent, Trademark
Posted by nwlambeth on June 17, 2011

http://sips.blogs.wm.edu/2011/06/17/summer-ip-programs/

From Bits to Atoms: 3D Printing and the Future of IP

by Jarred Taylor

The Economist (among others) has recently reported on a rising technology called “3D printing.”  A moderately-sized machine (that you can buy outright or build yourself) reads a design file on your computer and creates a desired object by “printing” it from bottom to top, layer-by-layer.  It’s been used to create everything from jewelry to replacement car parts, and there are efforts being made to print viable replacement bones, joints, and even organs.  And that’s not all: companies are already marketing 3D scanners that can create a detailed model of any object that you rotate in front of it.

That’s right: say hello to Star Trek‘s replicator.

For the past few decades, copyright law has been struggling with the relatively new ability for the average person to create perfect digital copies of music, videos, images, and text at effectively zero cost.  In the coming decades, copyright law will face an entirely new and potentially more harrowing challenge: the rise of the ability to create perfect physical copies of pretty much anything and everything, by anyone and everyone.

The implications are obvious.  Why would I buy a new box of Legos when I can just download the block designs and print my own?  Why would I go to the store to replace that comb I lost if I can just find the design on BitTorrent and print it in minutes?  But the possibilities for creativity are equally plain.  Just like blogging and social networking technology has inspired a world of citizen journalists, so might 3D printing inspire a world of citizen designers and manufacturers.

Many believe that 3D printing will never take off on a wide scale because the hardware is so expensive and the software too difficult to navigate.  Sound familiar?  It’s exactly the same skepticism leveled at personal computers a few decades ago.  Remember that not that long ago, the smallest computers took up entire rooms and operated using magnetic tape and punch cards.  Ken Olson, the former CEO of Digital Equipment Corporation, said in 1977 that “there is no good reason anyone would want a computer in their home.”  Today, that is probably true, because most people want their computers in the backpacks or in their pockets.

It is true that few people today know how to use 3D design software to create models suitable for 3D printing.  But nowadays, these skills are being offered to high school students.  What’s more, the software models are simple digital files: they can easily be traded online just like music and movies are today.  As with computers, the hardware costs are sure to go down as printers are perfected and components are standardized.

Any company that thought it was immune from digital piracy because its products were not readily reducible to or reproducible by 1′s and 0′s has a big surprise in store.  It looks like music and movie sales might have been only the first casualties in the wave of the disruption triggered by personal computing technology.  It will be fascinating to see how the law reacts to a technology that was positively inconceivable at copyright’s inception.  One hopes that lawmakers will reasonably account for the creative potential of this technology, and balance it against the justifiable fears of IP infringement.

by on June 17, 2011  •  Permalink
Posted in Copyright
Posted by Jarred Taylor on June 17, 2011

http://sips.blogs.wm.edu/2011/06/17/3d-printing-and-intellectual-propert/

Why IPWatchdog is Wrong and Computer Programmers Aren’t “Clueless”

Computer

By Joseph Kamien

Have you ever wished your computer could respond to emails for you? I’m sure you can picture it now; it would be like having your own virtual secretary. You just sit back and relax on a beach while your little machine takes care of all your important correspondence. “But wait,” you may think. “My computer may be pretty smart but it doesn’t know everything. What if there’s an email it doesn’t know how to respond to? Or what if there are certain emails I always want to answer personally?” Simple enough: we’ll just add a feature to this hypothetical computer program which classifies emails into ones that can be handled automatically and ones that require a personal response. “Amazing,” you probably think next. “If I could create this program, I could make a lot of money.” There’s a problem though: another company has already created a program that does this. “So what?” you probably think. “This is America. I’ll just create a better program, and compete with that other company. There’s nothing illegal about doing that, right?” Well, actually…

The program I’ve just described is patented as U.S. Patent No. 6,411,947 (the ’947 patent). This patent has had a long and storied history, and its validity is a rather contentious issue in the blogosphere. One blog, aimed at computer programmers, calls the patent ridiculous and obvious. Gene Quinn at IPWatchdog, a venerable blog on intellectual property law, argues that the patent is not obvious and that computer programmers who complain about software patents are “just about completely clueless, at least with respect to patent law.” Mr. Quinn has two arguments for why the patent isn’t obvious, despite the “rants” of computer programmers who think otherwise. First, Mr. Quinn argues, computer programmers are clueless and didn’t read the claims of the ’947 patent to understand how they limit the scope of the invention. Second, software is often not obvious because it’s so difficult to make software that works (“things don’t go as they are predicted, that there is not cross platform operability, and that there are truly challenged users who deviate from the norm and find new and ever more creative ways to accidentally crash whole systems”). Though I respect Mr. Quinn, he is wrong on this issue. The ‘947 patent should never have been granted because the invention was obvious at the time of invention.

First, computer programmers are not clueless, at least when it comes to understanding computers. They tend to understand what a computer is at its most basic level: a device that takes an input, runs it through a series of rules, and then produces an output. Mr. Quinn’s demonstrates how clueless computer programmers are by quoting the first (and broadest) claim in the ‘947 patent:

1. A method for automatically processing a non-interactive electronic message using a computer, comprising the steps of:

(a) receiving the electronic message from a source;

(b) interpreting the electronic message using a rule base and case base knowledge engine; and

(c) classifying the electronic message as at least one of (i) being able to be responded to automatically; and (ii) requiring assistance from a human operator.

Does this look familiar? It’s essentially a patent on taking an input (“receiving the electronic message from a source”), running it through a series of rules (“interpreting the electronic message using a rule base and case base knowledge engine”) and producing an output (“classifying the electronic message…”). In other words, it’s a patent on using a computer as a computer. To those who understand computers, this is plainly apparent, and that’s why this patent is “ridiculous.” It doesn’t make any more sense than a patent on a process for using a hammer to put a nail through wood or a process for using a typewriter to write a letter. The Supreme Court has made clear that an invention isn’t patentable if it is merely a combination of two previous inventions using each prior invention’s known function. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Logically, using only one existing invention for its known function is certainly obvious. Computer programmers aren’t clueless; it just appears that way sometimes because they see computers for what they are.

Understanding this, it’s clear why Mr. Quinn’s second argument (that the patent isn’t obvious because software is difficult to write) isn’t valid either. Writing a letter is difficult. Most letters don’t work (in the sense that they don’t get their intended messages across). They often contain spelling and grammatical mistakes as well as errors in tone and voice. Still, this doesn’t mean that one could get a patent on a process for using a typewriter to write a letter. The immense effort and creativity required to write a good letter make it a worthwhile subject for copyright law, not patent law.

Ultimately, Mr. Quinn is wrong when it comes to the patentability of this invention and the cluelessness of programmers. The USPTO was right to invalidate claim 1 and many of the other claims of this patent.

Image from Microsoft Office clipart.
Correction An earlier version of this article erroneously summarized the second part of Mr. Quinn’s argument as claiming that all software is patentable.

by on June 17, 2011  •  Permalink
Posted in Patent
Posted by jtkamien on June 17, 2011

http://sips.blogs.wm.edu/2011/06/17/software-patents-computer-programmers-clueles/

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