Blueprint of a gear train.

 Robert J. Yarbrough
Patent Attorney

 Patents - Inventions - Trademarks 

Newsletter Issue 63 - May 2014

In this issue:

Expansion of copyright
Delay in copyright enforcement
Employers- get assignments

Ask Dr. Copyright ...Dr. Copyright logo

Dear Doc:

I have heard that the music and movie industries want Congress to add a new part to the Copyright Law, one that would say that it is a violation of a copyright owner's rights to "make available" a copy of a work, even if the copy is never accessed by anyone. What gives?

Marian the Librarian

Dear Marian:

Here at the Gary Conservatory of Copyright, we were taught that copyright protects authors, songwriters, and other creative types from the evils of people taking their work without paying for it (literally, that the creators control the right to copy.) How wrong our professors turned out to be!  You see, Congress has been adding more and more "exclusive rights" to the Copyright law for many years. Section 106 of the law (17 U.S.C. 106) lists six separate rights: (1) to reproduce ...; (2) to prepare derivative works ...; (3) to distribute ... by sale or other transfer of ownership, or by rental, lease, or lending; (4) perform the copyrighted work publicly; (5) ... to display the copyrighted work publicly; and (6) perform ... by means of a digital audio transmission. This system of rights has grown up over the years as owners of works saw that technologies made new kinds of value possible. They have gone to Congress with an argument of, "if value, then right" and Congress, sensing that large campaign contributions might be involved, has usually gone right along with them.

Of course, some legal scholars have argued that the Constitutional mandate for Copyright, found in Article I, Section 8, Clause 8, is supposed, "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." They have made this argument, most recently to the Supreme Court, in trying to say that you can't achieve this goal by stretching the term of copyright protection to far beyond the life of the author (since you can't promote her doing anything about progress after she's dead.)  Sadly, the Supreme Court just punted by saying (if you can believe this) that Congress knew what it was doing when it extended the term to life plus 70 years in the "Mickey Mouse Copyright Extension Act" (here is a very complete history of copyright extension).

Now, the recording and movie industries, together with other publishers, want a new right that they claim arises from international treaties that the United States signed a few years ago: the "making available" right. Recent court decisions in cases about Internet file sharing have required that the plaintiffs show that files were actually downloaded from the defendant's computer (thus running afoul of the "reproduce" and "distribute" rights, if not some of the others.) The trouble, say the RIAA and MPAA, is that they should not have to prove this, because peer-to-peer software, such as BitTorrent, makes it hard to prove. Just putting a file into your shared folder on your hard disk should be enough, according to industry lawyers. Some cases also back them up. In one such case, penalties were handed down for just putting a book on a library shelf, even though there was no evidence that the book was ever checked out, or even taken from the shelf and read.

One of the dangers of doing away with proof of actual downloading is that it may exacerbate the problem of copyright porno-trolls. What, you ask, is a porno-troll???  Porno-trolls are companies that produce and own the copyrights to pornographic videos, and that sue people who they believe have downloaded such videos for copyright infringement. They usually sue a number of unnamed defendants (called the "Does" after that well-known defendant, John Doe and his significant other, Jane.) They usually offer to settle for a sum of money, and in return agree to a confidentiality provision that keeps the real name of the Does secret. Since most Does would rather not have their taste in video entertainment made public, this is a very successful business model, and one company, Malibu Media, filed almost one-third of all copyright law suits in the United States last year.  Some courts defend this practice as legitimate, but other judges have been critical of the scheme.

So, Marian, that is why the Doc went to Washington, DC this month to testify at a Copyright Office meeting about this "making available" change to the copyright law. It's complicated stuff, but in the end, the Doc thinks that Copyright has gotten out of hand, gone off the rails, and that the inmates are running the copyright asylum. What's the chance that the Doc's view will prevail? Hard to say, but at the meeting, there were a handful of folks saying that this needs a lot of careful thought, and dozens of lawyers from record companies, copyright troll companies (see last month's column on that), the movie industry, and others, all demanding more rights and easier standards for winning law suits. The Doc does not condone any kind of copyright infringement, but when we have a law that is out of step with both ordinary behavior of citizens and with its foundational principles, something's wrong. The Doc thinks we need to address that, rather than making it more wrong.

Until next month, if you have a copyright question, or get a threatening letter from Malibu Media (oops!), talk to one of the attorneys at LW&H... they eat this stuff for breakfast.

"Raging Bull" and "Stairway to Heaven" --  Old But Not ForgottenSupreme Court

This week, the United States Supreme Court issued an opinion of great importance to those wishing to enforce their copyrights. In Petrella v. Metro-Goldwyn-Mayer, Inc., the Supreme Court clarified confusion among lower courts about whether the doctrine of laches (also known as unreasonable delay) could bar a lawsuit for copyright infringement.  While the court's opinion may read to lay persons as legal mumbo-jumbo, it is of significant importance to copyright owners.

In Petrella, the copyright owners of the screenplay for "Raging Bull," the movie directed by Martin Scorsese in 1980, sued MGM for damages resulting from the studio's infringement.  Surely, you may ask, MGM had rights to the screenplay.  Well, at one time it did.  Petrella's father and his co-author boxer, Jake LaMotta. assigned the rights to MGM, which registered the copyright in 1980.  However, when Petrella died in 1981, by law, the rights reverted back to his daughter.  MGM failed to obtain the rights after that event.  Petrella's daughter waited until 2009 to sue the studio.  Because of her delay, MGM argued that her lawsuit is barred by the doctrine of "laches" or unreasonable delay.  The lower courts agreed but not the Supreme Court.  The Supremes held that laches was irrelevant to infringement, which is controlled by a three-year statue of limitations, and Petrella had a right to sue for any infringements - of which there were many - that occurred within the three-year period preceding her filing of the lawsuit.  

During the same week that the Supreme Court handed down this decision, we also learned that the estate of Randy California, guitarist in the band Spirit, is suing Led Zeppelin for copyright infringement, claiming that the one of the greatest rock songs ever written, "Stairway to Heaven" uses riffs that California wrote for an instrumental called "Taurus."  Stairway to Heaven was written in 1970, two years after Led Zeppelin and Spirit "shared stages" together during their U.S. tour.  Regardless of the lawsuits merits, it would appear that the estate of Randy California unreasonably delayed its lawsuit, particularly since it has been bandied about for years that Jimmy Page, the author of Stairway to Heaven, stole the opening riff from Randy California.  After Petrella, however, the 40 year delay does not appear to be a hindrance.

Employer's To-Do List: Get Invention Assignments from All EmployeesPeregrine Semiconductor logo

Do your employees create new inventions, products or designs?  Have all of your employees assigned all company inventions to the company?  If not, then the company does not own the invention, even if the invention was created on company time and with company resources and in the course of the employee's work for the company.

That's the takeaway from  Peregrine Semiconductor v RF Micro Devices (S.D. Cal. 2014). 

Peregrine developed new products and obtained patents for those products.  Peregrine sued RF Micro Devices for infringement of the patents.  During the course of the litigation, the parties learned that a former Peregrine employee should have been named as an inventor on the patents, but was not.  Peregrine usually obtained assignments of patent rights from all employees, but could find no such assignment from the former employee and the former employee had no recollection of signing such an assignment to Peregrine.  Instead, the former employee subsequently assigned his patent rights to RF Micro Devices, the accused infringer.

Peregrine now finds itself in the embarrassing position of co-owning the invention with RF Micro Devices,.

The case includes a discussion of the 'hired to invent' doctrine, in which a person is employed to solve a particular problem.  Under Federal common law; that is, law made by judges in their decisions, an invention created by a person hired to solve a particular problem is owned by the employer even if the inventor did not sign an assignment.  In the Peregrine situation, the former employee had performed several different functions for the company during the course of his employment and was not hired to solve a particular problem. He was not 'hired to invent' and Peregrine did not own his rights to the invention.

The result was that a preliminary injunction against RF Micro Devices was denied.

The bottom line?  Make absolutely sure that every employee has signed an agreement assigning patent rights to all company inventions to the company. The agreement can be in the employment agreement and can apply to inventions that the employee has not yet created..

Robert J. Yarbrough was awarded an 'AV' (highest possible) rating by the Martindale 
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