It’s a big day in the copyright world.  Golan v. Holder was decided today by the Supreme Court.  See 2012 WL 125436.  Supreme Court oral arguments are at 2011 WL 4593952.  Find the “Petitions, Briefs, and Filings” links on either document for related court documents.

In addition, today is SOPA resistance day.  Several internet companies are protesting two anti-piracy bills by going dark:

The two bills are the “Stop Online Piracy Act” (HR 3261) and the “PROTECT IP Act” (S. 968) .  Westlaw/WestlawNext find citations to the bill documents are 2011 Cong US S 968 and 2011 Cong US HR 3261.

The President’s recent statement in response to “We the People Petitions on SOPA and Online Piracy” might generally summarize the opposition to these bills:

While we believe that online piracy by foreign websites is a serious problem that requires a serious legislative response, we will not support legislation that reduces freedom of expression, increases cybersecurity risk, or undermines the dynamic, innovative global Internet.

2012 wL 114502

Despite waning support for these bills, Nate Anderson of Ars Technica reported that November’s Congressional hearings were stacked ‘hugely’ in favor of those advocating adoption. The transcripts are interesting to read.  On Westlaw, try a query for, SOPA,  in the USPOLTRANS database.

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).

Dennis Crouch recently noted that more U.S. utility patents were issued in 2011 than in any other year. We emulated his  research by using the following queries:

On Thomson Innovation: PY=([year]) NOT KI=(S?) NOT PN=(usre*);

On Westlaw: da([year]) and u.s. in US-UTIL

The Thomson Innovation search eliminates design patents by excluding Kind Codes, “S.”  It eliminates  Reissues by excluding publication numbers beginning with, “USRE.”   Westlaw has separate collections for Design and Utility patents (US-Design, US-Util).  Our results:

* We used Thomson Innovation’s US Class filter to acquire these results.

Thomson Innovation displays a maximum of 60K patents.  The Patent Office hasn’t issued fewer than 60K patents in a single year for quite some time. In 1950, there were 42,851 granted utility patents (Top US class was 346/033R or “Combined with external recording operating means”).  In 1900, there were 28,657 granted utility patents. (Top U.S. class was 431/110 or “Supported above upwardly facing fuel discharger”).  For this post, we did not do the work of breaking the  search into several parts in order to generate fewer than 60K results.  So, analysis for Top US class might vary with a more nuanced search.

An impressive collection of  America Invents Act resources (free and paid-for) is being collected at a LinkedIn Group sponsored by Thomson Reuters.  They include BitLaw’s red-lined version of Title 35, a Husch Blackwell slide presentation, LegalEdCenter CLEs, and many others.  Several of these resources – and access to the LinkedIn group – can also be found at Thomson Reuter’s new America Invents site.

A recent story out on the AP wire highlights the newest phenomenon in trademark filings: the rush to trademark all things Occupy.

In recent weeks, the U.S. Patent and Trademark Office has received a spate of applications from enterprising merchandisers, lawyers and others seeking to win exclusive commercial rights to such phrases as “We are the 99 percent,” “Occupy” and “Occupy DC 2012.”

Organizers of the protest centered in Manhattan’s Zuccotti Park went so far as to file for a trademark of “Occupy Wall Street” after several other applications connected to the demonstrations were filed with the U.S. Patent and Trademark Office.

Wylie Stecklow, a lawyer representing the protesters, said the Oct. 24 filing was done to prevent profiteering from a movement many say is a protest of corporate greed.

“I would like to ensure that this isn’t coopted for commercial purposes,” Stecklow said. “The trademark can be used for noncommercial purposes.”

Stecklow’s application was one of three filed with the U.S. PTO seeking to trademark either “Occupy Wall Street” or “Occupy Wall St.”

2011 WLNR 22941622

All of these filings are available in the TRADEMARKSCAN – All (ALL-TM) database.  A search for all filings for Occupy to date this year yields 10 documents.

You can also limit your search to US filings.  In FED-TM, try

tm(!occupy! !ninety-nine-percent! !99%! !wall-street! !1%! !one-percent!)

Note that with this search, we’re using root expanders at the beginning of each term — wouldn’t want to miss the application for de-occupy.  View your result list as a sortable table and export the data to an Excel file .  This  should allow you to analyze the data.  Here, for example is a pie chart of the 2011 ‘Occupy’ marks organized by international class:

Click to Enlarge

For purposes of this research, however, what’s more interesting is who might be filing these applications and when they’ve been filed.  According to an article from American University Washington College of Law’s Intellectual Property Brief, some second-comers might be 1-percenters.

Fer-Eng Investments appears to be a shell corporation with the only officer named as “The Ferraro-Eng Family Trust.” The names provided on the address refer to Vincent Ferraro and Wee Nah Eng. Interestingly enough, Ferraro, a Stanford Business School grad, is the former Vice-President of Worldwide Marketing for Hewlett-Packard, where he met his wife Wee Nah Eng. Ferraro now serves as the Vice President and Chief Marketing Officer of Global Marketing for Eastman Kodak, and also appears to hold several consulting positions. Now, I don’t know what type of compensation Ferraro receives, but based on his title, position, and impressive (publicly accessible) Linkedin resume, I would be willing to give anyone 10:1 odds that the Ferraro-Eng household is bringing in enough to meet the $380K a year threshold for the “top 1%.”

Coincidentally, there have also been 52 filings for “tea party” in ALLTM.

On this day, in 1998, PL 105-304 became effective.  That makes the Digital Millenium Copyright Act (DMCA) about the same age as blogs, 3 years older than Grokster, 6 years older than Facebook, 7 years older than YouTube, and 8 years older than Twitter.  The DMCA provides – among other things – immunity to Online Service Providers (OSPs) who meet certain conditions outlinded under 512(c) of the Copyright Act.  OSPs who respond expeditiously to statutory take-down notices fall within the safe harbor.  So, when Judge Stanton determined YouTube met these burdens, he granted YouTube’s summary judgment motion inViacom’s billion-dollar lawsuit (718 F.Supp.2d 514).

Now, however, two pending bills effectively provide content owners with an end-run around these safe harbors by creating an ”expedited process for cracking down on rogue Internet sites by targeting the domain names associated with those sites through injunctive relief ” S. REP. 112-39.  Stemming massive piracy from abroad is clearly a stated-target (er, pretext?) of these bills.  So is jobs. Search protect-ip and china jobs in USPOLTRANS.   But,  the Electronic Frontier Foundation called the Stop Online Priracy Act (2011 CONG US HR 3261 - WL link) and the PROTECT-IP Act (2011 CONG US S 968 - WL link), “the worst piece of IP legislation we’ve seen in the last decade…”

Research References

BLOGSOD: Your RSS feed, if you still use one, might serve the purpose of finding straight talk on a hot button issue like this one.  Even so, I  like the Blogs on Demand service where I might run simple full-text searches and alerts.  Simply try, sopa, for example in the BLOGSOD database.

CR: Consumer groups are launching letter-writing campaigns.  Wondering whether your member of Congress stands for or against the legislation? It can be hard to tell.  But, additional co-sponsors are read into the Congressional Record.  Try this in the Congressional Record:

CO-SPONSOR /10 H.R.-3261 S-968 /s [your member of Congress here]

As most of you are aware, Congress passed the Leahy-Smith America Invents Act.  Today, President Obama signs this legislation into law during a visit to the Thomas Jefferson High School for Science and Technology in Virginia. The enrolled version can be found at 2011 CONG US HR 1249. This Act significantly reforms US Patent Law.  Plenty has been written but PLI has a great overview of these changes.  See 1058 PLI/Pat 503.  We will, from time to time cover the research angle.  Or, feel free to submit patent reform research questions to west.referenceattorneys@thomson.com.

One of the primary changes relates to the priority system, changing the US Patent system from “First-to-Invent” priority system to a “First-to-File” system.  Of course, this isn’t the first time Congress considered aligning our priority rules with the rest of the world.  Simple queries got in the FED-LH database got us as far back as 1971.  Here are the comments of H. Dale Grubb, NASA’s Assitant Administrator for Legislative Affairs:

…In commenting on this original bill, we indicated that we believe the major features to be abolishment of the one-year grace period ; issuance of a patent to the first to file an application, together with the complete elimination of interference practice ; institution of a preliminary application procedure; mandatory publication of applications during pendency ; provision for art more broadly so as to encompass use and sale outside the United States and all disclosure of knowledge in tangible form ; streamlining the judicial process for patent infringement litigation; the making of computer programs unpatentable; and the provision for optional deferred examination of applications in the Patent Office. Now, some four years later, it appears that each of these major features has been completely discarded or significantly modified.

Hearings before the Subcommittee on Patents, Trademarks, and Copyrights, May 13, 1971.  (Our search was “first to file” /10 patent in the FED-LH database).

Also, to review the progress of first-to-file over the past 5 years, try thse searches in the Congressional Bills and Legislative History databases.

patent /5 reform! & first /3 file invent (LH) 13 documents

patent /5 reform! & first /3 file invent (CONG-BILLTXT-ALL) 23 documents

In a recent June 6, 2011 decision, the United States Supreme Court construed the Bayh-Dole Act in resolving issues related to ownership of intellectual property rights and held that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions. Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 2011 WL 2175210.  In describing the Bayh-Dole Act, the Court stated, “In 1980, Congress passed the Bayh–Dole Act to ‘promote the utilization of inventions arising from federally supported research,’ ‘promote collaboration between commercial concerns and nonprofit organizations,’ and ‘ensure that the Government obtains sufficient rights in federally supported inventions.” 35 U.S.C. § 200. To achieve these aims, the Act allocates rights in federally funded “subject invention[s]” between the Federal Government and federal contractors (“any person, small business firm, or nonprofit organization that is a party to a funding agreement”). §§ 201(e), (c), 202(a). The Act defines “subject invention” as “any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.” § 201(e).”  You can see the text of the Bayh-Dole Act at PL 96-517.

The Bayh-Dole Act holds a particular significance for universities and is also known as the Bayh-Dole University and Small Business Patent Procedures Act. Technology commercialization has become a very important issue for universities, not only from the perspective of  bringing inventions to benefit the public but also as an additional stream of revenue. The database ECKLICN, Eckstrom’s Licensing in Foreign and Domestic Operations, provides great guidance for university licensing issues. Try the following search in this database: PR,TI(LICENSING /5 UNIVERSITY).

For general information on the Bayh-Dole Act a search in the texts and periodicals database TP-ALL is a good place to start. PR,CA,TI(BAYH-DOLE)

Anyone who has seen the latest in legal television drama – Fairly Legal –  knows what I am talking about when I say “red soled shoes.” In one of the most popular and well recognized clips of the show, Sarah Shahi, the star of the show, is shown walking provocatively away from the audience wearing a pair of high heeled red-soled shoes.

You might be wondering what a conversation of women’s red-soled shoes is doing in the Reference Attorney Blog? Trademark issues. Christian Louboutin S.A. (“CLSA”), the plaintiff and a French Company, has sued Yves Saint Laurent, another French Company in the Southern District of New York over red-soled shoes for, among other things, Trademark infringement. As per the complaint, this is an action for injunctive relief and damages for trademark infringement, unfair competition and false designation of origin, and trademark dilution. The plaintiff alleges that Mr. Louboutin is the first designer to develop the idea of having red soles on women’s shoes. Further the complaint states that the “Red Sole Mark” is the signature of CHRISTIAN LOUBOUTIN brand footwear and is instantly recognizable as a result of plaintiffs’ trademark red outsole. “The location of the bright color on the outsole of a women’s pump is said to provide an alluring ‘flash of red’ when a woman walks down the street, or on the red carpet of a special event.” Westlaw has the complaint and can be found at: 2011 WL 1327659. The complaint also lists numerous other famous celebrities and shows that have worn the Red Sole Mark shoes. You can track the progress of this case by tracking this docket on Westlaw.

Westlaw has a wealth of Trademark information online. You can also add a Trademark tab to access all Trademark related content in one place. Check out some of the following databases:

ALL-TM TRADEMARKSCAN-All has trademarks, service marks and pending applications registered in the U.S., Canada and some European states.

CCGTMLAW  Corporate Counsels Guide to Trademark Law and covers the basics of trademark law to help manage day-to-day legal issues

MCCARTHY McCarthy on Trademarks and Unfair Competition

FIPTM-CS Federal Intellectual Property Trademark Cases

TM-DOCK-SUM  Trademark Docket Summaries contains abstracts of docket and trademark information from trademark-related lawsuits filed in federal district courts.

Controversial “appropriation” artist Richard Prince suffered a loss in federal court (S.D.N.Y.) in March. The court rejected his “fair use” argument for reproducing, in virtually whole part, 28 images from photographer Patrick Cariou’s Rastafarian series “Yes, Rasta” for his own “Canal Zone” paintings. Finding no “transformative comment” on the original works, the court found the paintings infringed Cariou’s copyrights, and granted him summary judgment . (Cariou v. Prince, 2011 WL 1044915). Prince has appealed to the Second Circuit Court of Appeals. The appellate docket is available on Westlaw and WestlawNext. Just enter docket number “11-1197” in the search template for the Westlaw database DOCK-CTA2 or the Second Circuit Court of Appeals Dockets content page on WestlawNext.

Other “Appropriation” Research References

Fair Use KeyNumber: To produce a list of other “fair use” cases on Westlaw and WestlawNext, search West Key Number 99k53.2.

Patry on Copyright: See PATRYCOPY § 10:100, Specific Types of Uses-Appropriation Art

As Judge Posner and Professor Landes observed: “From the perspective of copyright law the very term “Appropriation Art” is a provocation; “appropriation” of a copyrighted works connotes stealing.”