20 July, 2014

Patenting Drugs - The Case of Marijuana

Drugs are very much a sensitive subject, especially when the law is concerned. Yet, with the ever-growing movement to legalize marijuana, which is gaining a lot of head-wind in the United States, the topic has to be considered from the perspective of business much rather than the perspective of disdain. This would entail revisiting the patentability of at least some sub-sets of drugs in the name of protecting the legitimate business interests of marijuana growers. Would such a change be desirable, and is it possible under today's laws?

In the States of Colorado, where marijuana was legalized in February of this year, sales have been incredible, with the business raking in over 20 million dollars in the first 6 months alone and some estimates seeing it grow to over 100 million dollars in the full year of 2014. Clearly business is booming, and could be argued to only grow if more States enact similar laws. In the market right now there are at least dozens of different strains of cannabis, and much like other commercial products with distinct features of their own, could merit protecting to ensure their viability in the marketplace.

Under 35 USC 161: "Whoever invents or discovers and asexually reproduces any distinct and new variety of plant... may obtain a patent [for that plant]". On the face of it, one could easily argue that cannabis plants could be patentable subject matter. This is overshadowed by the fact that marijuana still remains a controlled substance federally under 21 USC 812. It is because of this a federal patent cannot be issued over marijuana plants, effectively making them unpatentable. As the public perception and acceptance of cannabis and its use change, the laws might allow for the patenting of cannabis plants and plant varieties; however this change seems unlikely in the immediate future.

Alan was confused why the police asked about his bag of oregano
Plant varieties could be protected through trademarks, albeit only in name. The USPTO briefly added a category for marijuana in 2010, promptly removing it stating it was "...a mistake". Nevertheless marijuana strains could potentially be protected under trademark legislation, which was well explained by Kal Raustiala: "...trademark protection under both state and federal law does not require registration of the trademark with the government, but merely that the mark actually be used in commerce to identify the source of a particular product or service". Simply put protection is possible, but whether protection would be afforded by the courts is a question that will remain to be answered. One still has to note that trademark protection does not protect the plant strain itself, but merely the name as a badge of origin for that particular product. Trademarks will not necessarily prevent a competitor from using the plant strain and selling it, as long as they use a different name for the product.

As one can see, cannabis is, and will be, a hot-button issue in IP for years to come, and it'll be truly interesting to see where the law will go especially when considering the movement to legalize the substances gains more momentum. From a purely pragmatic, business point of view, the law should accommodate the change and allow for such plant variations to be protected. Whether this will happen will remain to be seen, but this writer for one sees it as almost an inevitability.

Source: Bloomberg

12 July, 2014

Sherlock Holmes Stays in the Public Domain, Yet Again

A case which this blog has discussed quite extensively during its life cycle in the United States' courts (early discussion can be found here, some more here), is the Sherlock Holmes case, where a long and arduous battle has been waged over the protectability of the crime fighting genius. battered, beaten and discussed at length, the case could have finally come to its end, and it seems that Mr. Holmes could be more usable to all of us as a result, after the US Court of Appeals published its decision almost a month ago.

For the uninitiated, the case of Leslie Klinger v Conan Doyle Estate dealt with Leslie Klinger, who intended to publish a book called In the Company of Sherlock Holmes; a sequel to his book A Study in Sherlock Holmes, a book very much written under the blessing of the Conan Arthur Doyle Estate (through a gracious licensing agreement, surely). As a result the book was refused by its publisher Pegasus, and instead of yielding and seeking a licence from the Estate Mr. Klinger sought a declaratory judgment from the court stating that Sherlock Holmes belongs in the public domain, and would therefore be free for everyone to use. At first instance Mr. Klinger was granted the summary judgment he had sought, however this resulted in the Estate appealing the decision, which landed softly on the Court of Appeals' lap.

In the court's decision, delivered by Justice Posner, the Estate appealed the summary judgment under two grounds: that the court did not have jurisdiction over the matter as there was no dispute to be decided, and should they be decided to have jurisdiction, the Estate argued that the 'complex character' of Sherlock Holmes, cultivated over the years of story telling in the character's universe, would only be out of copyright once the latter stories have seen their copyright protection period end, as many former stories have already fallen out of copyright protection. The latter argument was well presented by Justice Posner: "...[even though the] early stories... are already in the public domain does not permit their less than fully "complexified" characters in the early stories to be copied even though the stories themselves are in the public domain".

Even Sherlock was tired of this constant bickering
Justice Posner first tackled the issue of jurisdiction which, under 28 USC section 2201, is limited to only cases which pertain to an 'actual controversy'. This relates to declaratory judgments alone, and as Mr. Klinger sought such a declaration, his matter would have to pertain to a controversy (i.e. a legal dispute) for the court to be able to give the aforementioned declaration. Due to Mr. Klinger's prior knowledge of the Estate's actions should he publish the book, he had intimate knowledge of a potential dispute, giving jurisdiction to the court to give a declaratory judgment as there was a true legal dispute.

The meat of the case was in whether a 'complex' character could bring protectability to earlier works, or to the character as a whole in the series through his or her development in that particular series. Justice Posner rightfully opened with the notion that, under US law currently, there is no possibility to extend copyright protection on something which has ceased to be protected, even if the character lives on in the series and in works which are under copyright still. Quoting Silverman v CBS, Justice Posner stated that "[t]he copyrights on the derivative works, corresponding to the copyrights on the ten last Sherlock Holmes stories, were not extended by virtue of the incremental additions of originality in the derivative works". The latter ten works, which are still under copyright, remain protectable only to those part which have been added and are truly original to the author or authors of those parts; the rest remain unprotectable.

Although the Estate argued that, should copyright protection not be afforded to character which are developed in a longer span of time, there will be less incentive for authors to create those works. Justice Posner effectively rejected this notion, and put forth that the dissemination of works and the incentive to do so even with materials which are in the public domain, is important as well and should not be wholly dissuaded by law. Even though the characters were, through the Estates argument, 'rounded off' in the later issues of the Sherlock Holmes saga, this does not extend their copyright protection to the entire 'complex' character even in the former parts of the series. Justice Posner affirmed the prior decision, and Sherlock Holmes effectively stayed in the public domain as a result.

The Estate's argument was indeed a novel one, and did provoke at least this humble writer to ponder whether complexity is defined through longevity, as opposed to the initial originality. Incremental developments of characters and stories happen all the time, almost organically, yet that does not mean the essence of the very character you first met on those first few pages was somehow altered beyond recognition. Who and what Sherlock and his companions were will not cease to exist the moment they're created upon and added to by others, but they'll live on stronger, renewed and revitalized, and I for one am sure that younger generations will appreciate those works just as much as Sit Doyle's works.

Source: IPKat

03 July, 2014

Retrospective - Trademarks and the Internet

The Internet has shaped our world in too many ways to even count, and the law and its application has not been exempt from this radical change. What had to apply in only a largely physical and restricted world, now has to operate in one which knows practically no physical or territorial bounds. Through this the use of intellectual property has become international, and the law's confides of struggle to fill the gaps left in this transition to a digital domain. An example of this is the use of trademarks, and whether their use online can infringe on the mark of others, even if done in a different jurisdiction. The answer, at least on the outset, is not an obvious one, but was faced by the United Kingdom Court of Appeals over a decade ago.

The case in question is 1-800 Flowers Inc v Phonenames Ltd, decided in the very first year of the second millennium, which dealt with the phone number "800-FLOWERS", registered in the US as a trademark in the mid 1980s by the company 800-Flowers Inc. The company ran a floral telemarketing company, selling flowers and floral products via telephone to those who called the number 1-800-FLOWERS (or numerically 1-800-356-9377), via the Internet and through physical locations, to destinations both in the US and outside of the country. Phonenames were a business which dealt with alpha-numerical phone numbers in the UK, much like the one above, acquiring them and selling them on to business who wish to use them. Phonenames acquired the number which equated to 800-FLOWERS in the early 1990s from British Telecom, although ownership of the number still remained with BT. 800-Flowers had applied for the same number prior to Phonenames, failing to acquire it while still advertising the new service in newspapers. 800-Flowers then appealed the issuing of the phone number, arguing it would lead to confusion as they could establish a firm presence and goodwill within the US. The matter was ultimately appealed to the Court of Appeals for a final decision.

The case included deliberations on sections 10, 11 and 17 of the Trade Marks Act 1938. Section 10, which deal with whether the mark is capable of distinguishing the 800-Flowers' service in the UK, allowing for its protection, was the first consideration. Lord Justice Parker saw that the usage of alpha-numerical numbers was foreseeable in the UK during the number's registration in 1993, however even then the number was only just that; a phone number, and would not be capable of distinguishing the appellant's services from others in purely that form. The appeal also failed under section 11, as there could not be any confusion since the appellant had not used the number in the UK, creating no prior use which consumers could reasonably believe would be the appellant's service.

What is more relevant to the question posed is under section 17. Under the provision a mark has to be used in the UK (emphasis the court's) to be considered a 'proprietor', defined more specifically under section 68. If no use is found, the appellant cannot be considered to owning the trademark in the UK. This is very important in the proposed Internet context, as the Internet spans vastly beyond the origin country where a website is ran or owned. Lord Justice Parker indicated a website does not necessarily in itself cause for there to be use in the UK, specifying that "...the evidence (such as it is) concerning the Applicant's internet website [is not] sufficient to justify the conclusion that accessing the website amounts to use of the mark at the point of access". Among other considerations, Lord Justice Parker refused the appeal, as there was no sufficient use on 800-FLOWER's part within the UK, even with the existence of the phone number and a website.

Lord Justice Buxton further considered the Internet in his deliberations, still agreeing with the majority's decision. In his mind the matter is still quite open, and needed to be addressed directly:

"The implications of internet use for issues of jurisdiction are clearly wide-ranging, and will need to be worked out with care both in domestic and in private international law... I do venture to suggest that the essence of the problem is to fit the factual circumstances of internet use into the substantive rules of law applying to the many and very different legal issues that the internet affects. It is therefore unlikely, and it is nowhere suggested, that there will be one uniform rule, specific to the internet, that can be applied in all cases of internet use. That consideration is of importance in our present case, because it was a significant part of the applicant's submissions that, for instance, "publication" of statements in a particular jurisdiction by downloading from the internet according to the rules of the law of defamation or of misrepresentation was of at least strong analogical relevance to whether a trade mark downloaded from the internet had been "used" in the jurisdiction to which it was downloaded; and, even more directly, that when A placed a mark on the internet that was downloaded by B, the same criteria should apply in determining whether A thereby used the mark as determine whether A thereby infringed the same mark in the jurisdiction where B was located."

Greg now understood that she wanted flowers, not carrots - a typical mistake
His honor finally rejected the potential notion that use on the Internet would amount to use in every jurisdiction the mark might be potentially accessed from, even via the net: "I would wish to approach these arguments, and particularly the last of them, with caution. There is something inherently unrealistic in saying that A "uses" his mark in the United Kingdom when all that he does is to place the mark on the internet, from a location outside the United Kingdom, and simply wait in the hope that someone from the United Kingdom will download it and thereby create use on the part of A". One can easily agree with Lord Justice Buxton, and as he further states, 'use' should entail a more active component than just passively placing in in a sphere where it is easily accessed from, even by accident. The active part could be an advertisement in that country, or something which encourages the use of the web facilities. To summarize one can quote Justice Jacob in the case's first appeal in the High Court: "...the mere fact that websites can be accessed anywhere in the world does not mean, for trade mark purposes that the law should be regarded as being used everywhere in the world. It all depends upon the circumstances, particularly the intention of the website owner and what the reader will understand if he accesses the site. In other fields of law, publication on a website may well amount to universal publication".

As one can see the Internet poses an interesting sphere where trademarks present their owners with an abundance of opportunities for exposure; however this has to be balanced with regulation and limiting the Internet's scope in terms of use. The Lords above are quite correct, but one can say the Internet has not had its last impact on trademarks.

28 June, 2014

Aereo's Streaming Service Infringes Copyright, Says Supreme Court

Having discussed the Aereo saga quite extensively through its litigation life cycle (speculation on the Supreme Court decision can be found here, discussion on the District Court decision here), this writer for one bated his breath waiting for the US Supreme Court decision on the case. Arguably the outcome of the Justices' deliberation is important, especially as the Internet is slowly overtaking traditional means of media distribution all over the world. Netflix alone has over 30 million subscribers, showcasing how the paradigm is shifting towards a more convenient, on-demand consumption of media. In the end the final word was the Supreme Court's.

For the uninitiated, the American Broadcasting Companies Inc v Aereo Inc case dealt with the web-based service Aereo, which offered, for a subscription fee, the streaming, recording and live watching of TV programming. This was done on an individual basis, and relied on the subscribes' request to watch a given show, live or not. Subsequently several broadcast companies objected to this as the service potentially infringed on their copyright, and took Aereo to court. Initial judgments have gone Aereo's way, and the final word fell on the Supreme Court.

The question for the court boiled down to whether Aereo's service was a public performance of copyrighted works under 17 USC section 106, or in other words a transmission of a performance, and as such, infringed the provision. In the vein of the historical decisions of Fortnightly and Teleprompter, the court equated Aereo's service to those of cable providers, with Justice Breyer (in the majority's opinion) stating that "[t]he subscribers of the Fortnightly and Teleprompter cable systems also selected what programs to display on their receiving sets... The same is true of an Aereo subscriber". Through this likeness the court decided that Aereo was indeed performing for the purposes of the provision, and Congress' intent was to prevent just that with the amendments after the aforementioned cases. The latter part of whether this performance was public remained in the Justices' deliberation.

Justice Breyer's decision assessed whether the performance was a transmission to the public mostly through the court's view on Congress' legislative intent, largely ignoring technological differences of the transmissions. Whether the transmissions are made to individuals makes no difference as "...the members of the public capable of receiving the performance... receive it in the same place or inseparate places and at the same time or at different times", which does not make a difference to whether it is to 'a public'. As long as several people have the potential to watch those programs, the transmission is to a public within the scope of the provision.

Sharon was distraught after the decision
Justice Breyer summarized the judgment well: "...having considered the details of Aereo's practices,we find them highly similar to those of the CATV systems in Fortnightly and Teleprompter. And those are activities that the 1976 amendments sought to bring within thescope of the Copyright Act. Insofar as there are differences, those differences concern not the nature of the service that Aereo provides so much as the technologicalmanner in which it provides the service. We conclude that those differences are not adequate to place Aereo's activities outside the scope of the Act". Aereo therefore infringed the copyright of the TV broadcasts it transmitted, and was held liable.

Justice Scalia in the dissenting opinion saw things differently, and equated the service to more of a library card rather than an on-demand video service, as users access freely available content through a small antenna. The service is not automatic, and wholly relies on the user, furthering Justice Scalia's opinion. He outright rejects the majority's opinion on Aereo's potential performance, stating that "...Aereo does not “perform” for the sole and simple reason that it does not make the choice of content. And because Aereo does not perform, it cannot be held directly liable for infringing the Networks’ public-performance right".

The majority's opinion is an odd one, at least from the stand-point of argumentation. It relies heavily on Congress' intent, rather than the wording of the provisions. As was presented by Mitch Stoltz from SCOTUSBlog: "...the majority’s approach in Aereo transformed interpretation of the transmission clause into a common-law-style exercise in judicial discretion", leaving the provision very open to future application. Mr. Stoltz further argues that "[t]he opinion sets out guidelines that more closely resemble the open-ended fair use analysis, or perhaps the proximate cause analysis in a tort case", which one can wholly agree with. The future of the Transmit Clause remains less certain after the ruling, and its future effects on Internet service like Aereo will remain to be seen. Aereo for one will have to take steps and modify its service to remain usable.

Source: The Verge

22 June, 2014

Thoughts on the Cancelled Washington Redskins' Trademarks

After having discussed what is inappropriate in trademarks a few months ago, the topic has since emerged in the global trademarks discussion after an update regarding the often debated Washington Redskins mark emerged. The discussion has largely focused on the reasoning of the US Trademark Trial and Appeal Board, and has yielded a certain level of hyperbole and misinformation regarding the mark and trademarks in general. It is because of this this humble writer thought it would be appropriate to expand more on what has happened and what the decision's impact truly is.

In the decision issued a few days ago, the TTAB cancelled the trademark "REDSKINS" (and five other marks) as a result of an appeal proceeding brought over by several Native American appellants who argued that the mark was disparaging to Native Americans, violating 15 USC 1052. The court found that at least 1/3 of Native Americans found the mark disparaging, satisfying the requirement under section 1052. As such the marks were cancelled; however this is not the end of the matter entirely.

Even after the mark has been cancelled the organization retains the rights in the marks during any appeal processes; something which Bob Raskopf, the trademark lawyer for the Redskins, has indicated they will do. Outside of the marks' registration the organization will still enjoy ample protection under both common law and federal legislation. Under 15 USC 1125 any person using of a mark to confuse the consumer as to its origins or quality, causing damage to the original user of that mark, can be held liable under the provision for damages resulting from that use. As such the Redskins could easily prevent the use of its mark even if their marks are cancelled. Under common law a mark is protectable through its use, or as was stated by Justice Pitney in United Drug Co v Theodore Rectans Co: "...the right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another's product as his". Through their extensive use of the Redskins mark since the team's beginnings in the 1930s, the team can protect the mark even outside of federal registration. This is highly important, and often forgotten.

A less offensive alternative?
It was however pointed out by Richard Biagi, a partner at a US intellectual property law firm, that: "[o]ne interesting twist is that owning a trademark registration is a requirement by Department of Homeland Security/US Customs in order to impound counterfeit goods entering the  US... So, it is possible that an overseas manufacturer of knock-off apparel or souvenirs bearing the REDSKINS mark could get their products through customs without any trouble – however, that still doesn't prohibit the NFL from suing the manufacturer for trademark infringement". A minor quibble, but worth mentioning in conjunction with the case.

As one can see the effects the decision potentially will have are minimal, at least in terms of the marks protection. The mark will be very much alive and worth protecting; however the negative perception of the mark and the team could damage its monetary worth. In addition 50 US Senators have put some pressure on the team to change its name in a recent letter to the NFL Commissioner Roger Goddell, further exasperating the team's current situation. The decision is symbolic at best, and it is still very likely it will be overturned on appeal.

The discussion surrounding the events has been lively, and has brought trademarks and their worth more into the consciousness of the general populous; yet the discussion has been riddled with inaccuracies as to the mark and its future and over its protectability as a result. Hopefully this article has cleared things up for some, and this writer for one will await the results of the forthcoming appeals process.

Source: Washington Post

18 June, 2014

APIs Protected By Copyright, Programmers Stand Aghast

The more and more information becomes digitized and hidden beyond a invisible wall to the layman in the form of code and programming languages, the more convoluted its application can become in the world of intellectual property law. One phenomenon of this world are APIs, or in other words, Application Programming Interfaces. APIs are software-to-software applications released by companies, like Google, which enable other developers to more easily access and use their services, such as embedding Google's search services onto a web blog allowing for readers to search the site more easily. Effectively it allows for the two applications to communicate between each other without any interference by the users themselves. APIs have been fought over for some time by the two tech giants, Google and Oracle, since 2012, and came to a head early last month in the US Court of Appeals.

The case, decided in May 2014, dealt with 37 API packages released by Oracle (at the time Sun Microsystems) which pertained to its Java platform. The two parties, Google and Oracle, attempted to reach an agreement to use the Java platform in Google's new mobile operating system, Android, but failed to do so eventually. Nevertheless Google developed its own similar platform to be used in Android, Dalvik, which consisted of over 160 APIs, of which 37 corresponded to the Java APIs in contention; something which Google had copied verbatim into its own code. Oracle subsequently took Google to court over copyright infringement, and in a decision by the District Court of California some two years ago the court saw that APIs were not copyrightable. Oracle appealed the decision, which ended up in the Court of Appeals last year.

Many developers' thoughts after the decision 
Under the 'merge' doctrine, if there is only a finite amount of ways through which an idea can be expressed it is said to 'merge' the idea-expression doctrine, or in other words, prevents copyright from protecting the expression as part and parcel to the idea. Should there only be a single way to implement said idea no copyright protection will be given to the merged idea. The District Court initially saw that Oracle could not protect its APIs as their expression was the idea, and could not be protected. On appeal the Court of Appeal saw different, deciding that the copied code could have been implemented in unlimited ways, not limiting the expression of the idea and warranting copyrightability. The declaration of the source code by Oracle therefore does not preclude its copyrightability, as was seen by the District Court initially. Even if the code consists of short phrases or sentences, i.e. lines of code, it does not preclude copyright protection.

Should the disputed APIs be merely a system or a method of operation, they cannot be protected under copyright. A myriad of cases have stated that programs and code cannot be protected by copyright; however the approach by the District Court was seen as being erroneous. Under the Court of Appeals' decision even though computer programs contain functional elements it does not fully leave out the possibility that they may contain elements which are protected by copyright. This does not completely cover the effect of the program, but merely the expression within that code for that function. Should Google have implemented that very function through a different expression, there would be no risk of infringement.

Google's last argument was for interoperability, in that the verbatim copying of Oracle's code was essential for the interoperability of Java and Android, initially supported by the District Court. However, the Court of Appeals saw differently, as precedent heavily approached interoperability as a fair use right, not as a requirement for copyrightability. This gave the final blow to Google's argument in the appeal case, with the Court of Appeals fully rejecting the District Court's initial decision and deciding that APIs could be protected by copyright.

Needless to say this decision has created quite the fervor and will undoubtedly be appealed on Google's part. The precedent set can be argued to be dangerous, and present a hurdle for the free development of technology, at least on the programming side. As more and more programs have to be able to interact with each other for a convenient, practical and fast experience for the consumer, locking down APIs can hinder this development quite significantly. Developers could be cherry-picked or even prevented from using certain APIs or even charged exorbitant amounts for their use; however this is pure speculation. Whether the case goes further will remain to be seen, and will set an interesting cloud over the programming sphere for the time being.

Source: Ars Technica

11 June, 2014

Copyright in Space - The Space Oddity

The worries of the 21st century artist are ones which no other before them has ever had to contemplate, nor even conceive. Due to this some interesting results can unfold in the world of copyright. Unbeknownst to most of us, our outer terrestrial conquests just might impact our creative output, or at least limit it to some extent.

Major Chris Hadfield, a Canadian astronaut who recent spent almost a half a year in space, recorded and shared his take on the David Bowie song "Space Oddity", receiving well over 22 million views on YouTube for the duration of the video's existence on the site. This particular video was made while he was on board the International Space Station, and thus leads us to a peculiar question begging an answer: does copyright apply in space?

The ISS is regulated under the International Space Station Intergovernmental Agreement, which sets out the framework in which the Station and the law operates. Although many other agreements expand on the framework outside of the ISSIA, it is the more important one within this context. As space is potentially beyond any particular jurisdiction, with the added complication of the ISS moving at 7,6 kilometers per second over most countries at any given time, which laws would apply to govern Mr. Hadfield's rendition? According to Article 5 of the ISSIA: "...each [country] shall retain jurisdiction and control over the elements [of the ISS] it registers". This means that any modules, parts of the ship and so forth (called elements), will be under the jurisdiction of the country which owns it (including The United States, Russia, Japan, and Europe respectively). It has been determined by The Economist that the elements in which Mr. Hadfield recorded his famous video would be ones owned by the US and Japan, subjecting his video to the copyright laws of those particular countries.

Phil was busy filming his modern interpretive dance video
Mr. Hadfield's music video does not in itself present much of a legal issue, as the rights for the distribution and recording of the song were duly negotiated between all interested parties; however it still remains a curiosity in the field. The licence for the YouTube distribution of the song has since ended, yet a new agreement is being sought for the continuation of said agreement to satiate our extra terrestrial musical needs.

Nevertheless, space still remains a big question mark, especially in the emerging markets of space tourism and our conquest for Mars or other planets. As J.A. Sterling discusses more in-depth in his article "Space Copyright Law: the new dimension", copyright will face challenges when being applied to our future outside of our blue planet. More specifically, which country's or countries' laws will apply if the work in question is created wholly or partially on another terrestrial body, such as Mars? If the work is created on a space ship or station, much like in Mr. Hadfield's situation, the application of laws is much easier, or at least potentially so; however should you film a video on Mars, it is uncertain which country's laws would apply. This only scratches the surface in relation to the difficulties space can cause in relation to the creation of copyrighted works, and I would advise anyone interested in the topic to read the article above.

In the end the loss of Major Hadfield's song, no matter how eloquent and beautiful it is, is but a temporary bump in the video's existence, which will undoubtedly continue soon (or so one can hope). Space is, indeed, the final frontier - or is it? Only out future beyond the comforts of our home planet will show where copyright will go, or how far at least.

Source: IP Brief