Technically Legal

Technology and the law. Done right.

Tenenbaum Trial: Directed Verdict Granted

Judge Nancy Gertner granted a motion for directed verdict (also known to as a judgment as a matter of law) for the plaintiffs in Sony v. Tenenbaum.   The fatal blow to the trial was dealt after Tenenbaum himself took the stand and admitted “us[ing] P2P” and “lied about it” in response to a cross-examination question. The remaining issue in this portion of the litigation is a determination of damages.

A Judgment as a Matter of Law is a procedural device under the rules of Federal Civil Procedure (see F.R.C.P 50) whereby a party may make a motion requesting a verdict be granted by the judge.  The key inquiry is whether based on the evidence presented up to the point the motion is made, is there any way a reasonable jury could only come to one conclusion.  To ensure some measure of fairness, the motions are evaluated by the judge in “a light most favorable to the non-moving party.”  The judge must find that a “reasonable jury would not have a legally sufficient basis to find for the non-moving party on the issue.”

In a copyright infringement case, a key matter is whether the defendant was in fact responsible for a violation of the exclusive rights to a copyright holder.  At several points during the litigation, Tenenbaum has attempted to shift the blame to other people, claiming he was not responsible himself for the acts of infringement.  Once Tenenbaum admitted to using P2P software in his testimony it was a nail in the coffin on this particular issue.  This empowered the plaintiffs to move for a judgement as a matter of law; and, in effect, this killed the disputed factual elements of the case.

The next portion of the proceedings moves on to a determination of damages.  The jury will be responsible for this determination and must come up with an amount of damages based on the statutory scheme of the Copyright Act.  The Act provides a spectrum of figures that guide damage awards: $750 minimum to $150,000 maximum per infringement.  In this case, that means at a minimum Tenenbaum will be found liable on 30 songs for $22,500, and at maximum $4.5M.

What remains now is still a significant question:  what amount will the jury award?  At this point we’ve seen one other case go to a jury on a determination for damages (Jammie Thomas) which returned an award of $1.92M based on an infringement of 24 recordings.  Many critics of the statutory damages have challenged the nature of high damage rewards based on infringement of a small number of sound recordings, particularly where statutory damages are grossly disproportionate to the amount of actual damages suffered by a plaintiff.  Indeed, a ripe issue on appeal will be whether such damages can pass Constitutional muster.  This is sure to be hotly contested by Tenenbaum’s counsel following the damage award.

Update: As of 2 P.M. Friday, July 31, the case was handed off to the jury.  More to follow.

Update 2: The jury came back with the damages award, only a few hours after deliberations began.  Here’s the bad news:  $675,000 ($22,500 per song).

Comments Off on Tenenbaum Trial: Directed Verdict Granted Posted in: Analysis on July 31, 2009

VoloMedia Patents Podcasts

VoloMedia just announced that they’ve patented podcasting (thanks to ArsTechnica for the link).

No, really.

U.S. Patent Number 7,568,213 issued on July 28, 2009 for a “Method for providing episodic media content.”

Before we delve into the specifics on this patent, let’s take a step back and talk about patents in general.

Patents consist of specifications, drawings, and claims. The claims control the scope of what the patent actually protects. Claims fall into two types: independent and dependent. Independent claims, as the name suggests, stand alone, whereas dependent claims depend on independent claims. Dependent claims generally embellish on independent claims, adding specific details.

This patent has nine claims, organized into one independent claim and eight dependent claims. Claim 1, the independent claim, claims:

A method for providing episodic media, the method comprising: providing a user with access to a channel dedicated to episodic media, wherein the episodic media provided over the channel is pre-defined into one or more episodes by a remote publisher of the episodic media; receiving a subscription request to the channel dedicated to the episodic media from the user; automatically downloading updated episodic media associated with the channel dedicated to the episodic media to a computing device associated with the user in accordance with the subscription request upon availability of the updated episodic media, the automatic download occurring without further user interaction; and providing the user with: an indication of a maximum available channel depth, the channel depth indicating a size of episodic media yet to be downloaded from the channel and size of episodic media already downloaded from the channel, the channel depth being specified in playtime or storage resources, and the ability to modify the channel depth by deleting selected episodic media content, thereby overriding the previously configured channel depth.

VoloMedia notes that their patent actually protects more than just podcasts – it protects all episodic media, of which RSS-based podcasts are just the most common subset. But, because “episodic media” doesn’t quite roll off the tongue the same way podcast does, let’s analyze the independent claim in this patent using the word podcast instead.

Upon first inspection, we notice that this claim is for a method– the words “A method for” right at the start of the claim alert us to this fact. Method claims protect a way of doing something.

Method claims generally list several steps that someone needs to follow in order to perform the method. To fall under the protection of the method claim, each step in the method has to occur.

The Method Claim

Breaking down this patent’s method claim, we see:

  • A method for providing podcasts, the method comprising:
    1. providing a user with access to a channel dedicated to podcasts,
      1. wherein the podcasts provided over the channel is pre-defined into one or more episodes by a remote publisher of the podcasts;
    2. receiving a subscription request to the channel dedicated to the podcasts from the user;
    3. automatically downloading updated podcasts associated with the channel dedicated to the podcasts to a computing device associated with the user in accordance with the subscription request upon availability of the updated podcasts,
      1. the automatic download occurring without further user interaction;
    4. and providing the user with: an indication of a maximum available channel depth,
      1. the channel depth indicating a size of podcasts yet to be downloaded from the channel and size of podcasts already downloaded from the channel, the channel depth being specified in playtime or storage resources, and the ability to modify the channel depth by deleting selected podcasts content, thereby overriding the previously configured channel depth.

So, in simpler terms, this claim protects a method for showing a list of podcast episodes, letting a user subscribe to the podcast, downloading new podcasts, and showing a user which episodes haven’t downloaded yet.

That sounds a lot like iTunes’s podcast functionality, doesn’t it?

Does this mean that VoloMedia has lawyers racing to the courthouse to sue Apple and collect millions in royalties? Not necessarily.


Once a patent issues, a patent holder can choose to write nice letters to potential infringers, letting them know about the patent and inviting them to obtain a license (all for a reasonable license fee, of course). That’s generally the prettier route, as litigation involves far greater expense, both in terms of time and money.

ArsTechnica reports that VoloMedia apparently hasn’t yet moved towards licensing, and includes a quote from a company representative that says, “Our focus is to generate revenues through our products and technologies. VoloMedia is not entertaining or pursuing any licensing conversations.”

Declaratory Judgment

But say a potential infringer doesn’t look kindly on VoloMedia’s patent, and decides that they’d prefer to act first rather than wait for a lawsuit. They can file for a declaratory judgment in court, basically saying to the court, “We’d like to the court to rule that our product does not infringe this patent or that the patent is invalid.”


The potential infringer can argue non-infringement by disputing how to read the claims. This process generally happens in what’s called a Markman hearing, where, before trial actually starts, the court attempts to define any contested terms in the claim. Because patent litigation largely centers around claims, this hearing can make or break a case.


The potential infringer will typically also argue invalidity, saying “It doesn’t matter whether or not we infringe the patent, because the patent itself is invalid.” Courts generally find patents invalid on two grounds: lack of novelty and obviousness. Both grounds imply that the USPTO erred in issuing the patent.

Lack of Novelty

A potential infringer generally proves lack of novelty by finding prior art that precedes a patent’s priority date. In other words, the potential infringer finds evidence that someone out there publicly practiced or described the method in this patent before VoloMedia’s priority date – in this case, that priority date appears to stretch back to 2003.


To prove obviousness, a potential infringer argues that while the patent combines existing techniques in a new way, the combination itself is or should be obvious to a person having ordinary skill in the art (a PHOSITA). In other words, the patent covers something that’s such an obvious advance over what’s already out there that there shouldn’t be a patent at all.

Request for Reexamination

Apart from filing for a declaratory judgment, any third-party can also submit a request for reexamination. To do this, the third party needs a piece of prior art that precedes a patent’s priority date that appears to raise significant issues of patentability. The reexamination does not take place in court but instead happens in the USPTO. A reexamination can result in all the claims being thrown out, or patent narrowing what it claims.


The VoloMedia patent presents an interesting situation because podcasting has exploded online, fueled largely by the growth of Apple’s iPod. It’s likely that Apple or a third-party will file a request for reexamination with the USPTO, and the patent will either have its claims significantly narrowed or cancelled entirely, unless VoloMedia can successfully argue that it in fact was the first to invent the fine art of episodic media delivery. We’ll keep you posted as this story develops.

1 Comment Posted in: Analysis on July 30, 2009

Technically Legal Podcast: Episode 9

AP chooses DRM, Palm v. Apple: Part II, Is WestLaw infringing lawyer’s copyrights?

You can download the podcast here. Please e-mail us with questions, comments, and story requests at

The AP Chooses DRM

The AP, Stuck in a Hole, Digs Deeper
A.P. Cracks Down on Unpaid Use of Articles on Web
15 USC 107: Fair Use

Palm v. Apple: Part II

How Palm Re-Enabled iTunes Sync (The Plot Thickens)
USB Implementers Forum, Membership Agreement
Third Party Media Players Compatible with iTunes

Is Westlaw infringing Lawyers Trademarks

Do Lexis and Westlaw Infringe Copyright When They Post Briefs Filed in Court?
LexisNexis and Westlaw violating copyright?
15 USC 101: Work Made For Hire

Comments Off on Technically Legal Podcast: Episode 9 Posted in: Podcast on July 28, 2009

Judge Takes Fair Use Defense Off Table

At 1:37 this morning Judge Gertner denied Joel Tenenbaum the right to bring up fair use as a defense at his trial, which starts today. The court reasoned that the Defense had shown no facts that would lead to a conclusion that the defendant’s use was fair, other than the fact that it was non-commercial. That, in the eyes of the court, was not enough.

It seems like the only major issue in this trial, then, is damages, not whether or not the defendant infringed, like the Jammie Thomas case.

Comments Off on Judge Takes Fair Use Defense Off Table Posted in: Links on July 27, 2009

Microsoft Changes Laptop Hunters Ad

In response to either Apple’s phone call last week, or our podcast on Tuesday, Microsoft has edited a Laptop Hunters ad that misrepresented the current price of a MacBook Pro laptop.

Comments Off on Microsoft Changes Laptop Hunters Ad Posted in: Links on July 24, 2009

Shepard Fairey v. The AP: Fair Use

The folks at the IP Colloquium did a great podcast on the Shepard Fairey case. Briefly: He’s engaged in a lawsuit with the AP and a photographer over his use of a photograph in making his iconic “HOPE” Obama Poster. The podcast lays on the legal jargon thick in places, but is a great listen.

Comments Off on Shepard Fairey v. The AP: Fair Use Posted in: Links on July 21, 2009

Technically Legal Podcast: Episode 8

Microsoft Ads v. Apple Ads, Will Twitter Sue Tech Crunch, and Amazon breaches their own EULA.

Download the podcast here. Please e-mail us with comments at

Microsoft Ads v. Apple Ads

Microsoft Ads Rankle Apple
Will Apple Sue Microsoft (with ad)

Will Twitter Sue Tech Crunch

Will Twitter Sue Tech Crunch
Twitter, Even More Open Than We Wanted
In Our Inbox: Hundreds of Confidential Twitter Documents

Amazon breaches their own EULA Plays Big Brother with a Famous Book
Amazon Kindle EULA

. . . and Apple disables iTunes sync feature on Palm Pre.

Also, a former finance director at J.P. Morgan claims to have reverse engineered the grand-daddy of trade secrets KFC’s Secret Recipe.

2 Comments Posted in: Podcast on July 20, 2009

Amazon Breaches Kindle User Contracts

Amazon recently deleted copies of 1984 by George Orwell from both Kindles and the Kindle store.

The Kindle User License Agreement clearly states:

Upon your payment of the applicable fees set by Amazon, Amazon grants you the non-exclusive right to keep a permanent copy of the applicable Digital Content and to view, use, and display such Digital Content an unlimited number of times, solely on the Device. . .

So Amazon is pretty clearly in breach of their contract to Kindle users who purchased the book, as Amazon did not allow them to keep a permanent copy of the book on their device. However, the License Agreement goes on to disclaim any liability for breach of the contract, and requires confidential arbitration to resolve any disputes you have with Amazon over the device.

Look for more on this over the weekend.

8 Comments Posted in: Analysis, Links on July 17, 2009

De-FUD: Photographs of Paintings and TWiT:203

Only a few short hours ago I polished off the latest episode of This Week in Tech (TWiT).  For those unfamiliar, TWiT is a weekly technology news podcast that is hosted by Leo Laporte.  Each week Leo invites several technology news panelists onto the show and the group discusses weekly news stories.

For the last few weeks Leo has been out of country on vacation and guest hosts have taken over until his return.  Episode 203 sported Tom Merrit, who incidentally has his own daily technology news podcast at CNET. During the show, Tom brought up an interesting legal story about a United States Wikipedian user, Derek Coetzee, who received a legal notice from the National Portrait Gallery concerning the use of photographs picturing some 3,000 portraits of historic people that had been uploaded to Wikipedia.  The images, as you can see here, are high pixel reproductions of the portraits in the Gallery.  Tom and the panelists (Veronica Belmont, Ryan Block, Patrick Norton, Roger Chang, and Robert Llewellyn) dove head on into what is actually a very nuanced area of copyright law.

First, the TWiT panel glossed over the fact that the National Portraits Gallery is located in London, and  the legal notice they issued is based on a reading of English copyright law, not U.S. law.  This is significant because U.K. law is not bound by the same copyright principles as we recognize here in the U.S., even though based on similar principles and underpinnings.

Second, the panel seemed to confuse the claims on a tangential discussion of photographing of public domain art and its legal effects in public places.  In reality, the legal notice claims that Mr. Coetzee accessed these images from the National Portraits Gallery’s website, downloaded them, and then uploaded them to Wikipedia without authorization.  The notice does not mention that Mr. Coetzee actually took any photographs himself.

In 1999, the Southern District of New York (S.D.N.Y.) opined on this exact issue in Bridgeman Art Library v. Corel Corp., 36 F. Supp.2d 191.  In Bridgeman, an English company which sells reproductions of public domain art sued a Canadian defendant for copyright infringement based on, inter alia, unauthorized reproduction of their images.  After a multitude of complicated procedural maneuverings, the S.D.N.Y. held for the defendant, and declared the images were not protectable under the U.K. copyright law (The Copyright, Designs, and Patents Act 1998).

U.S. laws are limited by the principle of extraterritoriality— meaning, U.S. laws generally have no force outside the boundaries of U.S. soil.  The Bridgeman court decided that U.K. law applied to the claims of infringement under the Berne Convention.  The reasoning behind this focused on the fact that U.K. law bore the “most significant relationship” to the property and the parties in the dispute.  The court noted that the images were first affixed in the U.K. and first published in the U.K.  The fact that a U.S. court is deciding a case based on U.K copyright law probably seems confusing.  In reality, this is a common, albeit complicated, international intellectual property principle that is regularly applied in these scenarios under international IP treaties the U.S. is a party to (e.g., The Berne Convention, and Universal Copyright Convention).  Note though, not every case is treated identically to this one.  The method of determining international choice of law issues is fairly complicated and is done on a case-by-case basis.

Under U.K law, subject matter that qualifies as “original literary, dramatic, musical or artistic works” is copyrightable.  “Originality” hinges on whether a work “originates with an author” and “is not copied from another work.”  Similarly, under U.S. law, copyright attaches to original expression fixed in a tangible medium.  A work that is within the public domain is not protectable under copyright law.  The argument the defendant, Corel, successfully presented was that since the subject matter of the images is not protectable, any reproduction of the subject matter does not qualify as “original,” and therefore does not merit copyright protection under U.K law.

So, that’s a pretty good answer from a U.S. court on the issue, but it comes with a huge caveat.  Since a U.S. court decided the Bridgeman matter, a U.K. court is not actually bound by the decision in terms of precedential value.  This brings us back to the concept of legal territoriality:  U.S. courts simply have no power over U.K. courts.  Although the argument looks fairly persuasive under the U.S. holding, a U.K. court does not have to follow this particular interpretation of U.K. law.

The National Portrait Gallery noted this precise point in the notice to Mr. Coetzee.  The solicitors across the pond interpret the U.K. statute to cover certain aspects of the image database on the website as well as the photographs of the portraits themselves.  The Copyright, Designs, and Patents Act explicitly mentions “photographs” as protected works, but is silent on any requirements for the subject matter of such a photograph.   In any infringement lawsuit in either the U.S. or U.K., a plaintiff needs to establish that a valid copyright exists before the issue of infringement will be heard.   Without controlling U.K. precedent on the matter, this leaves a huge question mark in place of a legal outcome prediction.  Assuming the matter is heard and decided under U.K. law, the ultimate determination of whether protection applies will likely be dispositive.

If the National Portrait Gallery’s reading is correct, there is a colorable claim for infringement in the U.K.  Moreover, the legal notice also indicates that the National Portrait Gallery intends to pursue the matter in the U.K. legal system, not in the U.S. legal system.  On his Wikipedia page, Mr. Coetzee indicates he is currently seeking counsel, but no apparent legal response has been publicized.

Three cheers goes out to the TWiT panelists for taking on a very interesting legal story, even if they didn’t get it all correct!

4 Comments Posted in: Analysis on July 14, 2009

Technically Legal Podcast: Episode 7

Malware Blockers get protection under the CDA, Amazon kills an iPhone App, and Eric Schmidt and Apple

You can download the podcast here. If you have comments, e-mail us.

Ad-Blockers Immune under 230

Web Ad Blockers Have Broad Shield From Suits
9th Circuit Opinon

Amazon Kills an iPhone App

Amazon Killing Mobile Apps that Use It’s Data
Affiliate Program API Agreement

Schmidt, Chrome, Conflicts and Clayton

Google Plans PC Operating System
15 USC § 19, Clayton Anti-Trust Act
Mr. Schmidt, step down from that board

1 Comment Posted in: Podcast on July 13, 2009

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