In Fox v. FCC,  the Second Circuit held that the FCC’s indecency policy is impermissibly vague and violates free speech.  The citation to the Second Circuit’s opinion is 613 F.3d 317. The Supreme Court granted Certiorari in this case and heard oral arguments Tuesday, January 10th. The citation to the petition for writ of cert is 2011 WL 1540430.

The Second Circuit addressed the dangers of the FCC’s current three-factor “patently offensive” test. The Court pointed out inconsistencies in how this test has been applied and also a lack of discussion as to how each factor is applied, thus resulting in a failure to provide notice to broadcasters as to how the Commission will apply the factors in the future.

The Court also noted that the same vagueness issues exist with the Commission’s presumption that words like “f*ck” and “sh*t” are prohibited. Under the current policy, all variations of the two terms are prohibited unless they fall under the “bona fide news” exception or the “artistic necessity” exception. The Court stated that the Commission has failed to explain the “bona fide news” exception except to concede that it is not absolute. The “artistic necessity” exception permits the use of “fleeting expletives” if they are “demonstrably essential to the nature of an artistic or educational work or essential to informing viewers on a matter of public importance.” You can read more about the “artistic necessity” exception in the Commission’s omnibus order available at 2006 WL 656783.

The Second Circuit explained that while the currently policy provides the most flexibility to the Commission, that flexibility is dangerous, stating:

“The FCC’s current indecency policy undoubtedly gives the FCC more flexibility, but this flexibility comes at a price. The “artistic necessity” and “ bona fide news” exceptions allow the FCC to decide, in each case, whether the First Amendment is implicated. The policy may maximize the amount of speech that the FCC can prohibit, but it results in a standard that even the FCC cannot articulate or apply consistently”. 613 F.3d 317, 332.

The Second Circuit also expressed concern over the chilling effect this vague policy has on speech, citing examples of  broadcasters deciding not to air particular programming for fear of being fined or losing their license. The court warned:

“If the FCC’s policy is allowed to remain in place, there will undoubtedly be countless other situations where broadcasters will exercise their editorial judgment and decline to pursue contentious people or subjects, or will eschew live programming altogether, in order to avoid the FCC’s fines. This chill reaches speech at the heart of the First Amendment.” 613 F.3d 317, 334.

If you are interested in seeing how the Commission has applied these tests you can search in FCC materials.

On Westlaw go to the database Federal Communications – FCC Record (FCOM-FCC)

On WestlawNext, type FCC into the Search bar and when it says “looking for this?” click on Federal Communications Commission (FCC).

Sample Search: (“patently offensive” /10 three-factor) (presum! /5 profan! indecen!)

Transcipts: The Supreme Court oral argument transcripts are available at this citation: 2012 WL 72459

If you would like to be alerted when the Supreme Court’s decision comes out, set up a WestClip with this as your query: ti(Fed! & Fox) in the SCT database. The steps for setting up a WestClip are available here: Westlaw Quick Reference Guide: Using Westclip (pdf).

The Supreme Court is back to business Monday, January 9th. The court will hear 3 cases Perry v. Perez/Perry v. Davis, Kappos v. Hyatt and Sacket v. E.P.A. This post’s research covers Kappos.  Perry and Sacket posts are forthcoming.

Kappos v. Hyatt: Overview

In Hyatt v. Kappos, the Federal Circuit held that when a patent applicant files suit under 35 U.S.C. § 145, the only limitation on the admissibility of evidence for issues raised before the Patent Office are the Federal Rules of Evidence and the Federal Rules of Civil Procedure. The citation to the Federal Circuit opinion is 625 F.3d 1320.

In this case the Director of the PTO argued that an applicant in a § 145 action can only present new evidence to the District Court if the evidence could not reasonably have been provided to the Patent Office. The Federal Circuit rejected this argument citing Butterworth v. Hoe (112 U.S. 50), “It is not a technical appeal from the patent-office, like that authorized in section 4911, confined to the case as made in the record of that office, but is prepared and heard upon all competent evidence adduced, and upon the whole merits.”

The Director also argued that allowing applicants to introduce new evidence would conflict with the doctrine that parties may not raise issues in the district court that were not raised before the Patent Office. The Federal Circuit rejected this argument as well and clarified that an applicant cannot raise new issues but can provide new evidence as to issues raised before the Patent Office.

The Federal Circuit identified two different standards of review for the District Court in a §145 action. The First applies in situations where the applicant does not introduce new evidence. In this instance, the court reviews the case on the administrative record and must apply the APA’s substantial evidence standard to the Patent Office findings of fact. Second, when the applicant does introduce new evidence, the district court is not limited to the administrative record, instead the court must make de novo findings of fact that relate to the new evidence.

Ronald Mann’s overview at SCOTUSblog notes…

The arguments of the parties are squarely drawn.  Although the parties argue at length about the state of the law at the time when the various predecessors to Section 145 were adopted and amended (the statute dates to 1839), the central debate really pits the language of the statute against considerations of institutional design.

We nevertheless spent some time finding the old statutes. The Federal Circuit opinion looks at the legislative history of 35 U.S.C.A. § 145 and discusses § 4915 of the Revised Statutes at length.  Section 4915 and other 145 predecessors can be found in the US-STATLRG database.   For example, we found 44 Stat. 1335 by searching for,  patent and da(1927).  Searching clues can be found under the Historical and Statutory Notes at 35 USCA 145.

The Supreme Court has granted certiorari and hears oral arguments on Monday, January 9th. The Petition for Writ of Cert can be found at 2011 WL 1336431.

To read the briefs filed in this case run this search in the SCT-BRIEF database: ti(kappos & hyatt) or, find the link for filings links at the case from the Federal Circuit opinion.

The transcript will be available soon after the oral argument, to access that you can go to the Transcripts of the U.S. Supreme Court Oral Arguments database (SCT-ORALARG) and enter Kappos in one party name box and Hyatt in the other party name box. We’ll also update this post when the citation becomes available. [Update: Oral Arguments Transcript is here: 2012 WL 38640]

If you would like to be alerted when the Supreme Court’s decision comes out, set up a WestClip with this as your query: ti(kappos & hyatt) in the SCT database. The steps for setting up a WestClip are available here: Westlaw Quick Reference Guide: Using Westclip (pdf).

Oyez, Oyez, Oyez! Last week the Court heard 2 patent-related cases on vastly different issues.

Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, No.10-844

The Caraco case was argued last Monday, December 5th (trascript available at 2011 WL 6020517). In this case the court must consider whether a generic manufacturer can bring a counterclaim against a pioneer manufacturer under the Hatch-Waxman Act (Drug Price Competition and Patent Term Restoration Act of 1984).

In Caraco, “[T]he Court of Appeals for the Federal Circuit held that the Hatch-Waxman Act allowed a prospective manufacturer of a generic version of a drug to bring a counterclaim against a patentee, in a Paragraph IV patent infringement action triggered by the generic manufacturer’s abbreviated new drug application (ANDA), only if the drug patent did not claim any approved methods of using the listed drug, and thus, a counterclaim was not available on the ground that the drug patent did not claim all approved methods of using the drug.”

176 Intellectual Property Counselor 5

The question presented in Caraco’s petition for certiorari was:

“Whether this counterclaim provision applies where (1) there is “an approved method of using the drug” that “the patent does not claim,” and (2) the brand submits “patent information” to the FDA that misstates the patent’s scope, requiring “correct[ion].”” (You can find the Petition for Writ of Cert at this citation 2010 WL 5399206)

The counterclaim provision referred to above can be found at 21 U.S.C. § 355(j)(5)(C)(ii)(I)

Also remember,  the patent in suit is available from the KeyCite History links:

Research Trail:

COUNTER-CLAIM /P PATENT! /P DRUG & CARACO in Intellectual Property – Law Reviews, Texts & Bar Journals (IP-TP) database on Westlaw or in All Intellectual Property Secondary Sources in WestlawNext

Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150

The Prometheus case was argued last Wednesday, December 7th (transcript available at 2011 WL 6077582). In this case the patent covered a method of determining the proper dosage of thiopurine, a drug used to treat gastrointestinal and autoimmune diseases. The Supreme Court vacated and remanded the Federal Circuit’s prior decision (581 F.3d 1336) for further review in light of Bilski v. Kapppos, 130 S.Ct. 3218 (2010). On remand from the Supreme Court, the Federal Circuit held that this claimed method was patent eligible. 628 F.3d 1347.

In the Bilski case, the Supreme Court held that the court is not limited to the machine-or-transformation test as the only test for determining whether a process is patent eligible. This test provides that a claimed invention is not patentable it if is not tied to a machine and does not transform an article. The Supreme Court held that, while the machine-or-transformation test can be a useful tool for determining whether or not a process is patent eligible, this test is not the only means available for making this determination.

The Petition for Writ of Cert is available at this citation 2011 WL 992001

Research Trail:

PROMETHEUS /P METHOD PROCESS /10 PATENT! in in Intellectual Property – Law Reviews, Texts & Bar Journals (IP-TP) database on Westlaw or in All Intellectual Property Secondary Sources in WestlawNext

Lastly, you might want to be alerted when these 2 cases are decided. We have yet to outline the steps for setting up a Westclip in this blog. So, here they are:

In Westlaw, click on the Alert Center link the upper right corner of the screen. In WestlawNext, from the homepage click the Tools tab and then click on the Alert Center link.

Follow these steps:

1. Where it says WestClip follow the blue line to the right of the screen and click on Create.
2. Name your clip in the “Name of clip” box
3. Type in your Client ID (if you don’t have one just type in anything you wish, I use my initials).
4. In the Database box type SCT
5. In the Query box type TI(CARACO) or TI(PROMETHEUS) depending on which one you want this clip to grab.
6. Now click the Edit link to the right of Delivery Settings
7. Select the frequency with which you would like the WestClip to check for new cases
8. Select E-mail for Destination and click the Properties button to input the correct email
9. I recommend List of All Citations as your Result Format
10. To the right of “No older than” make sure the number is 0 is in the Days box
11. Uncheck the “Inform me of no results” box to avoid getting an email everyday telling you the opinion is not out yet.
12. Click Save
13. This will bring you back to the page where we named the clip, click Save again.
14. Now you can see your clip listed under WestClip in your Alert Center.



According to the Des Moines Register, three civil rights investigators at the Iowa Civil Rights Commission were  fired recently after an unrelated investigation uncovered thousands of offensive and gossip-filled e-mails between the three women. The e-mails frequently gossiped about co-workers and supervisors and included “nicknames” like “Roid Rage”, “Psycho”, “Homeless McGee”, “Stoned Intern” and “Rainman.”  Two supervisors were referred to as “Teen Wolf” and “Night Ranger.”

The three employees were denied unemployment. Administrative Law Judge James Timberland wrote that the emails, “made fun of and/or ridiculed obese people, gay, transgendered and/or transvestite people, elderly people, Wal-Mart customers, African-American men, white high school students, white men and white people generally.”

The Commission’s Executive Director, Beth Townsend (“Night Ranger”), testified at the unemployment hearing that the emails were so frequent she thought they may have taken up the majority of the workday, according to the Des Moines Register.

To read more and read some excerpts of the emails published go to this article.

E-mailing in the workplace is not a new problem, but it is a persistent one. So how do employers keep employees on their toes when it comes to personal e-mail and internet use, without invading privacy? Try,

pr,ti(internet e-mail electronic-communication /5 policy)

In Westlaw:

Labor & Employment – Law Reviews, Texts & Bar Journals (LB-TP), or

Employment Law FormFinder (FORMFINDER-EMPL)

        In WestlawNext:

From the Topics tab, choose Labor & Employment.  You can run a search in any content that is related to Labor & Employment now by searching in the search box at the top, or narrow further by clicking on All Labor & Employment Secondary Sources or Labor & Employment Form Finder.

“Storage Wars” is a popular television show on the A & E cable network. The show follows a regular group of bidders who purchase storage units in an auction format in hopes of finding valuable items they can turn into a profit.  These units come up for sale based on the owner of the units goods failing to pay their bill or abandoning their property. Due to the buzz generated by the show, and other shows like it, this exciting form of “gambling” is growing in popularity.

After watching a few episodes, I couldn’t help but feel a little bad for the original owner of these storage unit items. It’s often evident that these items have sentimental value or are possibly family heirlooms. Check out this article from the Great Falls Tribune that tells the story of these auctions and the reality of how profitable they can be.

The brother of a friend of mine recently got into this game. As it turns out,  the original owner of the goods in the storage unit he purchased found out his name and where he lived. The owner was angry that he would not return her items and began to lurk around their neighborhood and elsewhere. She threatened to sue him on multiple occasions. This got me thinking about the legal aspects of this interesting way to earn an income.

The first search I ran was simple plain language search in WestlawNext to peruse the secondary sources that came up.

Plain Language Search: storage unit lien

The first secondary source that comes up is 93 C.J.S. Warehousemen and Safe Depositories § 107. This provides a good overview of a Warehousemen lien.  It’s a great starting off point.

After doing some research, it seems that most, if not every state,  has a statute pertaining to this type of lien.

Try this general search in your state to see what kind of cases, statutes or secondary sources might assist should a client walk through your door with this type of quandary.

self-storage mini-storage warehous! /10 lien

When I ran this in WestlawNext with Texas as my jurisdiction,  I immediately found 2 cases that were on point as well as a statute section on “Conduct of Sale” in the Chapter for Self-Service Storage Facility Liens. After clicking into that statute, you can click on the “Table of Contents” link to see the other statutes around this one.

This method should work for you in any jurisdiction to get a good footing on this topic.

I’m a fan of the Westlaw Welcome page.  It’s a great place to find hot topic lawsuits. Click on the Westlaw logo in the upper left corner of the screen.  At the Welcome page you will find interesting recent audio transcripts as well as new trial court documents including  the derivative suit by investors against Rupert Murdoch for the hacking scandal (2011 WL 2790646) and the complaint in a lawsuit against Jersey Shore’s “The Situation” brought by a former manager (2011 WL 2661094).  I also read the Simon Fuller pleadings:

Simon Fuller, creator of American Idol, has filed suit against Fox Broadcasting Company and FremantleMedia North America (including other Doe defendants). In the complaint (2011 WL 2870835), filed July 20, 2011 in California state court, Fuller alleges that Simon Cowell created X Factor, “a singing competition television program which was strikingly similar to Idol. In October 2004, X Factor premiered on British television, which constituted an infringement of Fuller’s intellectual property rights in the Idol franchise.” Fuller and his production companies then filed suit against Cowell and his production company. According to Fuller’s complaint, Fox “feared that the dispute between Fuller and Cowell would hurt both shows and would undermine the large profits Fox would realize from American Idol. Accordingly, in order to protect its investment in both American Idol and X Factor, Fox encouraged Fuller and Cowell to a settle their disputes amicably.”

Fuller further alleges that Fox, in order to induce a settlement between Fuller and Cowell (and their respective companies) “promised, among other things, to give Fuller an executive producer credit on the X Factor show and to pay Fuller an executive producer fee ‘commensurate with his duties and stature in the entertainment industry.’” Fuller and Cowell did indeed settle their lawsuit. Fuller alleges that he settled his suit in reliance on the promises made by Fox and Fremantle. According to the complaint, in the settlement the parties agreed that Cowell would remain a judge on American Idol for at least five more seasons and X Factor would not air in the United States until 2011. Fuller is now suing for breach of contract, breach of implied covenant of good faith and fair dealing, promissory estoppel and declaratory relief.

If you are the kind of person who prefers browsing to searching and  you like to regularly keep up on the most recent case opinions for your jurisdiction WestlawNext makes this very easy to do.

Say you want to see the most recent cases from the California Supreme Court. From the home page in WestlawNext, click on the State Materials tab, choose your state (in this case California) then choose your court (in this case the California Supreme Court). Once you click on the link it brings you to a page where it is already listing the 10 most recent decisions from that court, without having to run a search at all.

This also works really well for News on WestlawNext. For instance, if you are a New York practitioner you might find New York News & Insight Summaries really helpful. You can run a search this, like anything else on WestlawNext, or you can simply access the page and see the 10 most recent documents. From the home page under All Content click on News and to the right under Tools & Resources you will see a link to New York News & Insight Summaries.

If you are still in the mood to browse and not search, but you want to see more than the 10 most recent, this is your solution. To the right of the Search button click on the “advanced” link. The only thing you need to do is click the Date drop-down menu under “Document Fields” and choose the selection that works best for you. Then you can be even lazier still, you do not need dashes or slashes or names of months. You can choose All Dates After for instance and then just type in 6 1 2011 and click OK and WestlawNext puts this in the right format for you. That is all you need, click Advanced Search and you will have your list.

Keep in mind WestlawNext defaults by sorting by relevance. If you want to see these results in order, at the top of your result list in the middle click the drop down next to “Sort by:” and choose date.

Recently, in Brown v. Entertainment Merchants Ass’n (2011 WL 2518809), the U.S. Supreme Court upheld decisions striking down a law prohibiting the sale or rental of a video game to a minor “that has been labeled as a violent video game”. You can read the statute on Westlaw by putting this in Find by Citation: CA CIVIL § 1746.1

Violent video games have been a hot topic for a long time now. As a kid, Mario was never decapitating Luigi or deflowering the Princess, but I do remember in my middle school years a lot of my friends were not allowed to play Mortal Kombat. I am not going to lie, not only were my brother and I allowed to play Mortal Kombat, we were even allowed to use the blood code (If I remember right I think it was ABA CABB on the old Sega). This allowed you to pull your opponents head off with his or her spine still attached. When you struck your opponent you could see the blood and you could even send them to land in a pit of spikes if you ended the match delivering a violent upper cut. While we were probably on a 32 bit system at the time, it really was the first “gory” video game I remember playing. This is of course, mild compared to the current games. As technology gets better and we all become even more desensitized, the games are going to get even more realistic and I am sure more violent and controversial.

California is not the only state that has attempted to block the sale of these games to minors and they probably will not be the last. According to CNET News:

“California is one of a string of states that enacted similar laws restricting minors’ rights to buy violent video games–legislation that has been repeatedly rejected by lower courts. Laws in Illinois and Michigan were blocked by federal judges on First Amendment grounds in 2005.” The Illinois statute (720 ILCS 5/12A-15) was interpreted as violating the First Amendment by Entertainment Software Ass’n v. Blagojevich, 404 F.Supp.2d 1051 (N.D.Ill.2005).

To find the laws mentioned here as well as others try this search:

In Westlaw use the LEGIS-OLD database to see session laws from previous legislative sessions in any state. You will get 22 results with this search. (LEGIS-ALL covers session laws from the current legislative sessions).

VIOLEN! INDECENT! LEWD OBSCEN! /20 VIDEO-GAME GAME /P CHILD! MINOR

To run the search in WestlawNext, select Proposed & Enacted Legislation from the homepage under All Content.

Try this search in the BILLTRK database to see which states currently have bills on this issue:

VIOLEN! INDECENT! LEWD OBSCEN! /20 VIDEO-GAME GAME /P CHILD! MINOR

If you are looking for some good law review articles on the topic, you will not find yourself in short supply. Try this search in the JLR or LAWREV-PRO database.

VIOLEN! INDECENT! LEWD OBSCEN! /10 VIDEO-GAME /P SELL! SALE /P CHILD! MINOR & DA(LAST 10 YEARS)

At one time Wellington R. Burt was one of the top 8 wealthiest men in America, among names like John D. Rockefeller and Henry Ford. Now, 12 heirs of the lumber tycoon will finally receive their share of an estate currently worth over 100 million dollars, from a man they have never known. Burt’s will stated that the majority of his estate would pass to his surviving heirs 21 years after the death of his last surviving grandchild. His last surviving grandchild passed in November 1989 which started the 21 year waiting game. While he is now most famous for his unusual will and the 92 years that would pass before any of his family would realize the greater part of his fortune, he was a charitable man. According to The Saginaw News he built schools and libraries for his workers as well as a women’s hospital, a Salvation Army and a YMCA.  Justin Engle of the Saginaw News has a great 4 part article about this unusual story.

Finding estate planning/probate type research can be difficult due to the simple word “will”.

The word “will” appears everywhere.

“The Court will . . . .”

“The jury will . . .”

But, when you are looking for a case that deals with a will, as in a Testator’s will, searching can get frustrating. Here is  what I do when I am looking for cases that deal with a will.

(testator decedent deceased #the #a +1 will) & [whatever else you are searching for]

Here is an example of how this can improve your results.

Say you need to find some basic cases dealing with a will, creditors, and a mortgage. Normally you could get away with a simple search like this:

will /p creditor /p mortgage but in California State Cases for instance (CA-CS) this gets 474 documents

By changing the search with what I recommend above which looks like this:

(testator decedent deceased #the #a +1 will) /p creditor /p mortgage you get 9 documents