This decision has been much commented on. See the SCOTUSBlog coverage, for instance, which provides both the briefs filed in the case and commentary. Or Dennis Crouch at Patnetly O (also explaining the USPTO’s preliminary internal memo on the case). The decision has sparked some sharp criticism: a series of guest posts at Patently O by attorney Robert R. Sachs (1, 2, 3, and 4), goes on at length about what he calls the “logical and legal errors in the Court’s decision.” At IPWatchdog, attorney Gene Quinn begins with “The Sky is Falling!” and calls the Court’s opinion “terrible,” and even “pathetic, [and] narrow-minded” (hoping that Congress acts to affirmatively reverse the Court). In a post by Michael Risch, co-author of Life after Bilski, a paper cited by the Court’s opinion, Risch, for his part, thinks the decision is “hardly earth shattering.” And over at Groklaw, there is predictable glee about the outcome. Rob Tiller, VP and assistant general counsel at Red Had, has a brief post on the case, looking at it from the perspective of software patents. (On software patents more generally, see my previous post.) The Washington Post has also commented on the case.

So what is this case about? Prometheus Laboratories obtained a patent on a medical process, which it claimed Mayo infringed. Risch summarizes: “In short, the patent covered the following: administer a drug, measure the residual effects of the drug, decide whether more or less of the drug should be administered based on the findings.” The drug in question, a thiopurine drug, has been known for over fifty years and used for various medical purposes. But it is toxic at certain levels, and there is apparently some difference among individuals about the right level to use. As the Court’s opinion states, at the time of the patent, the medical community knew that the level of certain metabolites in a patient’s blood were correlated with the likelihood that a particular dosage would either be harmful or effective. What Prometheus Laboratories did was to identify this correlation with some precision. Thus they created a process where doctors could give a certain dosage of the drug, measure the blood level, and decide whether a further dosage was required. Prometheus marketed this test, Mayo bought and used the test for some time, but eventually decided that it would begin using and selling its own test, with somewhat altered thresholds.

Prometheus, then, contributed the knowledge of particular threshold values in monitoring certain metabolites in the blood. The drugs, their medical use, and the vague knowledge of the metabolites correlating to the effectiveness of the drugs, were all known. The Court ultimately held that these threshold values are laws of nature or natural phenomenon, and that Prometheus did not add anything inventive to those natural facts to be patentable. The Court elaborates:

A patent, for example, could not simply recite a law of nature and then add the instruction “apply the law.” Einstein, we assume, could not have patented his famous law by claiming a process consisting of simply telling linear accelerator operators to refer to the law to determine how much energy an amount of mass has produced (or vice versa). Nor could Archimedes have secured a patent for his famous principle of flotation by claiming a process consisting of simply telling boat builders to refer to that principle in order to determine whether an object will float.

This is, essentially, the reasoning of the Court. It is a long-standing doctrine that laws of nature are not patentable; Prometheus, supposedly, has only identified an existing natural condition (granted, with some specificity not before known), but all the processes it attached to that natural condition were well known and practiced before its patent application. (For a critique of this law of nature or natural phenomenon reasoning, see in particular Sach’s first post in his series at Patently O; for a critique of the argument that not “enough” is added to the thresholds, see his third post.)

In light of this decision, the court vacated and remanded the case Ass’n for Molecular Pathology v. Myriad Genetics. (See Dennis Crouch at Patently O or Groklaw about the remand.) This case concerns the question, as presented in the petition for certiorari, “Are human genes patentable.” The Federal Circuit had reached the conclusion that human genes were patentable under certain circumstances. In particular, Myriad had isolated the gene (using well known techniques), and the court reasoned that while the DNA molecules exist in a certain form naturally in the human body, they do not exist in an isolated form and so the isolated form is a distinct chemical entity. The court relied on precedent where, for instance, scientists had engineered certain microorganisms with beneficial properties, where such organisms existed in nature but not with the unique characteristics given to them. The Supreme Court had previously upheld such patents. (See Diamond v. Chakrabarty.) The losing party, for its part, argued that the DNA sequence, which is what controls the gene, is the same as that found in nature. To be sure, the Court’s remanding this case doesn’t say one way or another what it believes the outcome should be, but Dennis Crouch has speculated that one possible interpretation of Prometheus is that the gene in Myriad is unpatentable. This is a big issue because of the progress of medical biology. As the Federal Circuit’s opinion in Myriad states, while the average risk in women of breast cancer is around 12%, this climbs to 50-80% when certain gene mutations are present. On the one hand, patents may be necessary to fuel this research; on the other, the public might not be served by having critical medical testing controlled by a state enforced monopoly. This is too close a question to resolve in the confines of a blog post, especially one by a first year law student who has yet to take patents. But rest assured that in the wake of the Prometheus decision, this is a topic of active discussion in the patent community.

Almost anyone who has been even remotely acquainted with the legal profession is familiar with the Westlaw and LexisNexis search engines. For those who aren’t familiar, these search engines provide access to databases containing statutes, cases, briefs and much more for a fee.  While most of us see these one-stop shops to legal briefs, cases, and statutes as lifesavers for legal research, a new lawsuit threatens to shut these engines down for good.  Edward White, an Oklahoma City lawyer along with Kenneth Elan, have brought suit against the companies for wholesale copying of copyright-protected materials, namely briefs, and motions.  They allege that these articles are owned by the lawyers and law firms that created them. White and Elan are seeking injunctive relief, damages, and profit disgorgement.

This is a very interesting case as apparently filing briefs in court does not waive any copyright protection. Therefore, this case will most likely turn into a fair use question. The fair use doctrine is detailed in Title 17 Section 107 of the U.S. Code.  Education and reporting are normally considered fair use.  However,  fair use usually turns on the four factor test as outlined in the Code. The test includes analysis on: 1) The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes, 2) The nature of the copyrighted work, 3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole, and 4)  The effect of the use upon the potential market for, or value of, the copyrighted work. In my opinion, the make-or-break of this case will be how the court rules on the fourth factor. Some things it may consider are the usefulness to the public, whether there is a market for these briefs, and whether the search engines are in competition with lawyers.

I am also interested in seeing exactly which documents will be affected by this ruling. Are statutes affected?  Court opinions?  Would these be allowed on websites?  Are these items simply facts that are not subject to copyright protection or is this something different? This is definitely a case I will be tuned into as it definitely will have some major effects for us all.

Links for further reading:

http://www.techdirt.com/articles/20120223/15284617857/westlaw-lexis-nexis-sued-again-over-claims-that-theyre-infringing-copyrights-legal-filings-themselves.shtml

http://www.jdjournal.com/2012/02/23/lexisnexis-and-westlaw-sued-by-lawyers/

http://blogs.wsj.com/law/2012/02/22/keep-your-hands-off-my-briefs-lawyers-sue-westlaw-lexis/

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 7^th 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.

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.

There is certainly a lot of noise against patent trolls. Some of that is part of a wider movement against software patents more generally. The Free Software Foundation, for instance, advocates for not allowing software patents at all. Richard Stallman of GNU, has long expressed distaste for software patents, and the threat they pose to open source developers. There have even been several petitions on the White House’s “we the people project” about ending software patents. Wikipedia has a long article describing the debate. But there is by no means any unanimity in the software community about patents. As long ago as 1992, the ACM published an article in one of its journals called Debunking the Software Patent Myths, focussing on nine supposedly “absurd” software patents specifically. Paul Graham, an influential figure in the software community, has also expressed support for software patents, while noting serious problems with the current system.

One contention among software patent opponents is that software just isn’t patentable subject matter. Software is mathematics; it is algorithms and data. This claim is certainly true abstractly. But the line between software and hardware (which usually is considered patentable by this crowd) is a fine one to draw: is firmware software? microcode? What about FPGAs (including ones that can only be “programmed” once and are then fixed)? Paul Graham explains the problem by suggesting that even mechanical patents might be thought of as patenting an algorithm:

Patent law in most countries says that algorithms aren’t patentable. This rule is left over from a time when “algorithm” meant something like the Sieve of Eratosthenes. In 1800, people could not see as readily as we can that a great many patents on mechanical objects were really patents on the algorithms they embodied. Patent lawyers still have to pretend that’s what they’re doing when they patent algorithms. . . . If you want to patent an algorithm, you have to frame it as a computer system executing that algorithm. Then it’s mechanical; phew. (Seehere.)

But despite all the fuss about patent trolls, maybe they are serving a valuable function. By providing a market for patents, they might encourage inventors. Bessen and his co-authors, however, examined the literature on this topic, and concluded that the cost inflicted by software trolls is, in economic terms, a deadweight loss. But they don’t offer any solutions. And it’s not clear whether all so-called “non-practicing entities” (a somewhat less conclusory term that “troll”) are harmful to the system. Getting rid of software patents seems heavy-handed; a bit like throwing the baby out with the bathwater. All sorts of notable technology companies have depended to no small degree on the protection afforded by software patents. And it’s not clear that software patents are really all that different in kind from other patents, except perhaps for giving the patent office more trouble in determining what is “obvious” to a person of reasonable skill in the art. Can you have a reasonable judicial standard on what constitutes a “patent troll,” as distinguished from a legitimate “non-practicing entity”? There are a few ideas being discussed, but not all that many that I can find. In light of the potential chilling effects of patent trolls, it is interesting to note what advice Paul Graham gives to startups (he funds technological startups as a venture capitalist): “[N]o one will sue you for patent infringement till you have money, and once you have money, people will sue you whether they have grounds to or not. . . . Don’t waste your time worrying about patent infringement.” But should the legal system be spending more time worrying about patent trolls?

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?

That’s exactly what Mitt Romney’s presidential campaign sought to do in its recent scathing web ad against competitor Rick Perry.  (Note: the video has since been officially retracted and removed by the Romney campaign.  The following is a copy of it captured by the American Bridge organization.)

Instead of suing or going through the DMCA takedown process, CNN approached the Romney campaign directly. The campaign decided to remove the ad, at first without explanation.  Later, the campaign had this to say:

“While the use of the CNN clips was fully within our rights under the law, we respect and appreciate the role CNN has played as host in debates over the last several months,” [campaign spokesman] Saul said. “For this reason, we are honoring their request to remove the video.”

The Romney campaign implies that its video was protected under the fair use doctrine, an affirmative defense to copyright infringement intended to strike a  balance between creative and free speech rights by permitting third parties to reuse copyrighted works in certain circumstances.  The fair use test weighs four factors: how transformative the new work is of the original; how creative the original work was; how much of the original was used in the new work; and whether the new work affects the market for the original.

The fair use test is very much a case-by-case analysis.  Looking at this ad, it is composed essentially entirely of audio and video clips from news organizations, including CNN and Fox News.  However, there is a strong argument that the ad is transformative because of the visual effects added and the use of the ad to politically attack rather than journalistically analyze; there is an equally strong argument that the original works were not very creative in that most simply captured discrete political events without substantive alteration or augmentation.  Very short clips of each original work were used to stitch together a narrative composed of dozens of individual clips, and it would be hard to argue that the campaign ad affects or substitutes for the news outlets’ original programming when such short and out-of-context moments are used.  It helps that the video includes clips from a variety of outlets and several different debates so as to avoid the claim – like that levied in the Carnahan case – that the ad consists of clips drawn from a single segment, anchored by a single journalist.

Of course, it is important to note that it is not unlikely that CNN is not motivated by copyright concerns at all, but rather concerns over false endorsement or viewer confusion.  As has been pointed out by the Center for Democracy & Technology (in reliance on scholarship by William & Mary’s own Professor Laura Heymann), these are not interests that copyright is designed to protect. Copyright seeks to protect economic rights in works so that creators can collect returns on their creative investment and thus be incentivized to produce more.  If CNN is not losing revenue or potential revenue, and is not disincentivized to continue its pursuits, then a copyright-based claim would be inappropriate.

It is good that CNN chose to approach the campaign instead of taking immediate legal action, although it is unclear whether CNN would have taken advantage of the DMCA or the courts if the campaign had refused to comply.  With so many Republican candidates left in the field, only a few months until the primaries, and the President beginning to spin up his own campaign, expect copyright to play a larger role than ever in the continuing battle for the White House.

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.

(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.”

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

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.

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.