Newsletter Issue 64 - June 2014
In this issue:
Supreme Court kills Aereo
Trademark for 'Redskins'
Supreme Court IP docket
Ask Dr. Copyright ...
Ever since you wrote about Aereo, the company with bazillions of tiny TV antennas and video recorders, I have been waiting for them to come to my town, so that I could get a decent television picture (no more of that digital BRAAAAP every 16 seconds unless I stand next to the TV holding up the antenna like some version of Lady Liberty!) What's this I hear about six old folks deciding to shut down this wonderful service?
My Arm Is Getting Really Tired
On June 25, by a 6-3 majority, the Supreme Court decided that Aereo's service violated the copyrights of the broadcasters. Now, I have to say that the Doc is having a hard time understanding this ruling. As I wrote in a past article, it seemed under the decision in the Sony Betamax case, that Aereo was just doing the same thing as having a videotape recorder: allowing a consumer to receive a free, over-the-air broadcast using an antenna, recording it, and playing it back later for herself. The difference was the location of the antenna, recorder, and screen. In 1976, the antenna was on your roof, connected by a 50' wire to the recorder in your den, which was then connected by a 10' wire to your TV. For Aereo, the antennas were on a roof somewhere (but not yours), connected to the recorder by the Internet, which was connected to your screen (TV, computer, tablet, or smart phone) also by the Internet. Like phones (which used to use long wires, and now use the Internet) and faxes (same), and movie rentals (your car going to Blockbuster, now Netflix over the Internet)... well, you see where this is going.
Nope! Not so fast. The grandmas and grandpas on our Supreme Court have just stepped onto the porch and yelled at Aereo to stay off their lawns. The majority expressly said that because Aereo's system appears to be similar to a cable television system, that's good enough. Never mind that the system does nothing until a subscriber "tunes" in a program, and never mind that each antenna and recording is individual and private. If it looks like a duck...shut it down.
As the Court said, "why should any of these technological differences matter? They concern the behind-the-scenes way in which Aereo delivers television programming to its viewers' screens. ... Why would a subscriber who wishes to watch a television show care much whether images and sounds are delivered to his screen via a large multisubscriber antenna or one small dedicated antenna, whether they arrive instantaneously or after a few seconds' delay, or whether they are transmitted directly or after a personal copy is made?"
The three dissenting justices think that these things do matter. They term the majority's approach "Guilt By Resemblance" but as they are the minority, the public is left to wonder what will become of Aereo. The company's founder, Barry Diller, who also started the Fox Network, said that it's, "Game Over". Score another one for big business.
One thing, however, is true: more and more people are "cutting the cord" and refusing to subscribe to cable television services. The next few years will be bumpy, but in the end, innovative services like Aereo are likely to prevail. Broadcast television started out as a public trust, using the public airwaves. Anyone was free to receive the signals. Broadcast television, operated in the public interest is dying. That seems to be fine with the cable companies. It seems to be fine with the FCC. The Doc likes a good book, anyway.
Interested in innovating new services? Talk to the attorneys at LW&H. They receive, store, and respond, without engaging in unauthorized public performances.
Skins Lose Trademark Game Before the TTAB
If you haven't heard by now, this past week
Trial and Appeal Board ("TTAB") of the United States Patent and
Trademark Office canceled several trademarks owned by Pro-Football,
Inc. ("Pro Football") for the term "Redskins" on grounds that the
marks were "disparaging to Native Americans." This issue has been
around for some time and has been the subject of previous lawsuits
in which Pro Football has prevailed. Rather than try to summarize The TTAB's
177-page opinion in this short column, let's briefly examine two
questions raised by the decision:
• Under what authority does the TTAB act to cancel a trademark for being disparaging?
• Is Pro Football free to use the term "Redskins" even though the TTAB has cancelled its marks?
When a party wishes to cancel another party's trademark, it has two options: file a trademark cancellation proceeding with the TTAB, an administrative body that has the legal responsibility of adjudicating issues related to trademark applications and registrations, or file a lawsuit in United States federal court. In the Redskins matter, the "plaintiffs," five native Americans, chose the administrative route.
Section 2 of the Lanham Act, the law that controls trademarks, spells out under what circumstances a trademark may not be registrable, the first criterion being any trademark that
Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute ....
15 USC 1052(a). Under this authority a court or administrative body such as the TTAB may cancel the registration of a "disparaging" trademark. Actually, it's not quite that simple. The important question is how does a court determine whether a trademark is "disparaging?" With respect to native Americans, the courts have devised a two-part test:
 What is the meaning of the matter in question, as it appears the marks and as those marks are used in connection with the goods and services identified in the registrations?
 Is the meaning of the marks one that may disparage Native Americans?
With respect to the second question, the law states that whether a term such as "redskins" is disparaging to Native Americans, one must reference the views of Native Americans, not the the American public as a whole. Based upon the evidence before it, the TTAB determined that, indeed, Native Americans viewed the term as disparaging and, as a consequence, it cancelled Pro Football's trademark registrations.
Okay, so now that Pro Football no longer has registered trademarks, can it still use the term "RedSkin"? The TTAB, as it noted, does not have the legal authority "to issue rulings concerning the right to use trademarks." Why? That's because trademark rights arise from use, not from registration. For example, if you have used an unregistered trademark (referred to as a common law trademark) first in time, you will prevail in litigation over a trademark holder that may own a registration but began using it later in time. Because these so-called common law rights are unaffected by a federal registration, Pro Football is free to use "Redskin." A word of warning! Common law trademarks are governed by state law so if state law disqualifies disparaging marks, Pro Football has a problem, particularly if it tries to enforce its trademarks in court. Of course, whether continued use of "Redskins" is a good idea from a branding and marketing perspective after all the negative publicity is another question.
Busy, Busy, Busy
The Supreme Court has had a busy time of it in June stirring the
patent pot, with decisions in three cases and arguments in a
fourth. The general rule is that whenever the Supreme Court decides
a patent case, the law is left in worse shape than it was before.
The recent decisions are no exception. This month, we'll take a
look at Limelight v Akamai, decided June 2, 2014.
In Limelight, the Court considered "inducement of infringement." Inducement of infringement occurs when one person causes, or induces, another person to infringe a patent. Where the patent is to a method of doing something, the inducement rule for many years has been that (a) one person must induce another person to infringe the patent, and (b) the other person must actually perform all of the steps of the method and thus infringe the patent. The person who caused someone else to infringe is liable for infringement, just is the person who actually infringed.
This rule worked fine when things were made from steel and wood, but has been a problem for Internet-implemented inventions that can be performed over a computer network by different people in different locations and even different countries.
The stage is set for Limelight and Akamai.
MIT owned patents relating to storage and retrieval of content over the Internet. MIT licensed the patents to Akamai, which runs a service utilizing the MIT patent to store and retrieve content. The patent (and the Akamai service) involves storing large files on servers located in different locations, and, hopefully, near the user who wants access to the file. Local storage of the large files allowed faster access by the user. One of the steps of the patent is that Akamai 'tags' which of a customer's files are to be stored in the local servers.
Limelight operates a competing service that is just like Akamai's service, but with one important difference - Limelight does not 'tag' the files. Instead, Limelight's customers tag their own files, using advice and assistance from Limelight. Because Limelight does not tag the files, no one person performs all of the steps of the patent and there is no one that Akamai can sue for direct infringement. Because no one person performs all of the steps of the patent, under the old rule Limelight cannot be liable for inducement of infringement. Akamai has no remedy. Seems unfair, doesn't it?
The Federal Circuit Court of Appeals thought so. It decided that the old rule did not work in the information age and that Limelight's actions in copying Akamai's business but avoiding the patent should not be tolerated and that Limelight should be liable for inducement of infringement.
The Supreme Court reversed and reinstated the old rule, seeing no reason to change. As a result of the Supreme Court's decision, Akamai is without remedy and Internet copyists are free to cut a step from a method patent, instruct someone else to perform the missing step, and avoid patent infringement altogether. The value of Internet inventions, or in fact any method patent that can be performed by different people, has just dropped.
"Be Afraid. Be Very Afraid."1
1'The Fly,' 1986, Jeff Goldblum and Geena Davis.
A cyber security firm called Norse maintains what it claims to be
a dynamic, real-time map of cyber attacks as they happen, showing
cities of origin and targets. The first thing you'll do after
viewing this constantly-changing map is update your security
software. The second is to clean the cobwebs out of your filing