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Myriad Genetics to Appeal S.D.N.Y. Ruling

Yesterday, Myriad Genetics expressed their disappointment and announced their plans to appeal Monday’s ruling which invalidated seven patents related to BRCA1 and BRCA2 genes and diagnostic testing for breast and ovarian cancer.

Given the highly contentious nature of patents related to human genetic material, it’s not really surprising that Myriad plans to appeal.  I would even expect this litigation to be drawn out over the next several years–potentially to the point of Supreme Court review.

Another thing to keep in mind is that because these patents involve claims over methods of diagnostic processes (which arguably consist of mental steps) and gene isolation techniques, these types of patents may be subject to the Bilski case, which is still pending before the Supreme Court.  The highly anticipated Bilski ruling is expected in the coming months.

Keep in mind we’ll be covering this case on this week’s podcast!

Comments Off Posted in: Commentary on March 31, 2010

Google Search Broken in China

After just discussing the Google/China spat on our last podcast, this story emerged today.

According to several media stories, Google search results were unavailable on their Chinese website as of today.  Apparently, users could access the Google search page, but were unable to yield results when attempting to search.  This news comes just a week after Google began redirecting their site to their Hong Kong servers at where censorship restrictions are more lax.

Some reports were that China had begun blocking the GOOG through the Great Firewall.  However, it now appears that an internalized error was the cause of the problem.  Somehow an errant text string was inserting itself into the URL of search result pages and caused the search engine to display an error.

For the most current info on the effects of the larger dispute between Google and China dispute, Google has a website which is tracking the status of their online services in mainland China:

Comments Off Posted in: Links on March 30, 2010

ACLU v. Myriad: S.D.N.Y. Invalidates Human Gene Patents

After nearly three years of litigation in ACLU v. Myriad Genetics, the Southern District of New York issued a landmark ruling today in favor of the ACLU and declared several human gene patents to be invalid.

The patents claimed ownership to methods and materials related to the isolation of BRCA1 and BRCA2, which are part of the tumor suppressor gene family in humans.  The patents further claim ownership over methods of comparing these genes to healthy genes for the purposes of detecting abnormalities or genetic mutations in DNA sequences .  A skilled clinician can then determine the presence of breast and ovarian cancer, or if a person has a strong likelihood of developing those cancers in their lifetime (somewhere around 70%, if memory serves).

Collectively, Myriad owns or has the exclusive rights to seven patents which deal with the DNA sequencing of BRCA1 and BRCA2 genes.  The effect from this ownership, the ACLU argues, is that Myriad Genetics owns a legal monopoly on all diagnostic processes, which hurts women’s public health at large and restricts cancer research and development.

We’ve yet to read the lengthy 152-page court ruling (read it here at the New York Times), but we’ll get through it over the next several days.   In the meantime, you can also find multiple articles on the ruling circulating in the media, including:  TechDirt, LATimes, Newsweek, Wired

Make no mistake, this is a huge case and a highly significant ruling.  Stayed tuned. We’ll cover it on our next podcast with detailed analysis.

1 Comment Posted in: Commentary, Links on March 29, 2010

YouTube, Google, and Viacom–a brief overview of secondary liability

Yesterday, we recorded a special edition of our podcast and devoted approximately 2/3 of the show to discussing the Viacom v. YouTube/Google arguments which were presented in their respective cross-motions for summary judgment. One of the most important pieces of the litigation is whether the DMCA section 512(c) safeharbor will apply to Google and whether Google might be secondarily liable for copyright infringement.  I felt it would be helpful to provide a quick and dirty guide to some of the liability principles at stake in the case.

Secondary liability, or “indirect liability,” attaches liability to certain intermediary entities and other persons who are not participating in an infringing act, but are somehow contributing, profiting, or inducing another person’s act of infringement. For example, this might apply to a person who owns and operates a website for the sole purpose of facilitating copyright infringement of song recordings–that operator is not downloading or uploading the sound recordings herself, and therefore is not directly infringing any copyrights, but is providing a medium for others to participate in infringing activities.  For you legal history afficionados, secondary liability dates has been recognized in various forms by courts at least as far back as the late 19th century (see e.g., Fishel v. Lueckel, 53 F. 499 (S.D.N.Y. 1892) (recognizing liability for profiting from infringement as a joint tortfeasor)).  Despite this, secondary liability has still not been codified in the Copyright Act.  Consequently, across federal jurisdictions the standards of secondary liability vary a little from court-to-court.  Nonetheless, secondary liability can be parsed into two categories: (1) contributory liability and (2) vicarious liability.

Scholars and practitioners devote hundreds of pages to discussing contributory and vicarious infringement.  I’m not here to make your eyes bleed.  So, please consider the following points a very broad overview:

Contributory Infringement: When a person, who has knowledge of a direct instance of infringement (e.g., another person uploading a unauthorized video), materially contributes to, *or*, actively induces the infringing conduct.

By a Materially Contribution: The contribution generally needs to add something to the original act of infringement.  For example, some courts have ruled that adding either software, hardware, and webspace, to provide a conduit to unlawfully exchange copyrighted works is enough.  In another case, the Ninth Circuit held the operators of a swap meet where independent vendors sold unauthorized copies of copyrighted works was sufficient to survive a motion to dismiss. Note, however, that under a contributory liability theory, a defendant must have knowledge that an act of infringement is occurring to be liable.

Or, by Inducement:  In 2005, the Supreme Court held in MGM v. Grokster that a person is liable for contributory infringement when she “distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement.”

Vicarious Infringement: When a person has the right and ability to supervise an infringing activity and derives a direct financial interest from the infringing activity.  Some courts have interpreted that this does not necessarily mean earned revenue, merely deriving some form of financial interest or financial incentives for tolerating unlawful from the infringing activity may suffice.   For example, check out the Napster litigation from 2001: A&M v. Napster, 239 F.3d 1004 (9th Cir. 2001).

As a final note, it’s important to remember that both the contributory and vicarious liability theories require there to be an original act of direct infringement.  In other words, there has to be another individual who violates the Copyright Act by directly misappropriating the exclusive rights of a copyright owner.

Enter Google, YouTube, and Viacom. Among the most interesting factoids which have surfaced from the summary judgment motions in the Viacom v. YouTube case, is that prior to Google’s acquisition, the founders and executives at YouTube were aware that the website was being used to upload unauthorized copyrighted content. Viacom’s motion quotes email excerpts from the executives who discuss the importance of allowing users to upload arguably infringing content because it was driving up website traffic, making the site an attractive acquisition target based on traffic metrics. Along one line of reasoning, the executives were inducing users to upload infringing content and may have actually participated in some of this. This would be the “smoking gun” argument. See, once YouTube was acquired by Google, Google has arguably assumed liability from actions which took place before the closing date–this is a very common occurrence in any corporate acquisition, but is often subject to the language in the agreement (buyer and seller can negotiate for certain terms and indemnity of liabilities).

What remains unclear, to some extent, is the amount of knowledge needed by the operators to impute secondary liability beyond the DMCA safeharbor. For instance, just because the YouTube executives knew that some videos were likely to have been uploaded without authorization that doesn’t mean they *actually* knew they were unauthorized. Consider this theory plausible deniability. Unless the executives took the time to check with the actual copyright owners, or unless they received a takedown notice or cease and desist notice, they arguably didn’t know with certainty that a particular upload was expressly unauthorized.

Here’s where the DMCA section 512 safeharbor comes into play.  In the past on our podcast and blog (here’s a more thorough overview I wrote), we’ve beaten to death the 17 U.S.C. 512(c) language, but it’s helpful to take a fresh look to see how the precise wording of the statute comes into play:

(c) Information Residing on Systems or Networks At Direction of Users.—

(1) In general. A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider—


(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and

(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

Note 512(c)(1)(A)(i)-(iii), in bold above.  That’s the statutory language concerning the level of knowledge that potentially implicates a service provider with infringement by a user.   Of particular interest to me is (ii), which states that if a service provider is aware of “facts or circumstances from which infringing activity is apparent,” the service provider cannot take advantage of the safehabor.   Depending on how the court applies this language, Google might find themselves in hot water based on the email exchanges of the previous YouTube executives.   However, it’s not black and white.  Just last year, we saw the UMG v. Veoh case, in which a California Federal Court ruled that a “blanket notice” for the purposes of DMCA takedowns was insufficient to shift the burden of copyright policing to Veoh.  This is important, because if the Viacom and YouTube court decides to follow this reasoning,  it gives YouTube some of the aforementioned plausible deniability– if there were no notices specifically indicating the exact uploads which were infringing, it might be insufficient to impute actual knowledge on YouTube.

Google has separately argued in their motion that Viacom participated in stealth marketing tactics which would have made it very difficult to determine whether an upload was in fact authorized by Viacom but uploaded by another person.  Additionally, Google points to evidence that Viacom had disparate internal policies under which they allowed certain unauthorized videos to remain on YouTube, without flagging or sending any notices to YouTube.  This obviously would make it much more difficult for the YouTube executives to independently determine an upload to be infringing without notice.  You simply can’t act as a filter if you don’t actually know who is responsible for a particular file.

I do think this is a factually fascinating case and it’s too close to speculate what the court is likely to do.  There’s also more detail worthy of  discussion on this case that would make this post pages and pages long.  Check out the plethora of commentary from the legal blogosphere  for additional takes on this case.  It’s also worth listening to our show (which will post tonight, around 12AM EST) and hearing myself, Ben, and Dominik debate the merits from different points of view.  We dove into much deeper detail on the specifics.

Other Bloggers’ takes:

Ben Sheffner (Copyrights & Campaigns)

Eric Goldman (Technology Law and Marketing)

EFF (Deeplinks)

Mike Masnick (TechDirt)

Nate Anderson (Ars Technica)

Comments Off Posted in: Analysis, Commentary on March 22, 2010

Summary Judgment Filings in Viacom v. YouTube/Google Case Unsealed

As of today, summary judgment filings in the Viacom v. YouTube/Google case have been made public. Both Google and Viacom have cross filed for summary judgment–meaning both the defendant and the plaintiff believe the law should be interpreted in their favor.

These motions have been highly anticipated since the litigation began nearly three years ago. Google disputed the time frame of making these documents public, claiming it would have been a logistical nightmare in terms of making the necessary redactions for confidential information and trade secret information. Judge Stanton disagreed with Google, and ordered the filings to be made public this week.

TechCrunch has the filings on their site. After I get a chance to comb through them, more thoughts on the arguments of each side will be posted. Stay tuned.

Thanks to Ben Sheffner and TechCrunch for helpful posts.

Comments Off Posted in: Links on March 18, 2010

Another Google Adwords Suit Dismissed

On yesterday’s Podcast, we discussed how Rescuecom voluntarily withdrew their trademark infringement suit against Google’s Adwords program. Last week a similar suit against Google, Stratton Faxxon v. Google, was dismissed out of a Connecticut Superior Court. According to Eric Goldman, there have been approximately twelve similar lawsuits to date (primarily against Google) for the sale of trademarked phrases in the Adwords program.

Unlike Rescuecom, Stratton Faxon didn’t claim trademark infringement in this suit. Instead, their claims alleged interference of business relations and unfair competition. The details are somewhat unclear, and I don’t have access to the actual filings, but it appears that Google filed a “Motion for Judgment” which was granted last week. No order or opinion stating the reasoning for the dismissed seems to be publicly available. However, because Stratton Faxon did not sue on a theory of trademark infringement, they are not precluded from refiling another suit in Federal Court on a trademark theory.

The theory behind the bulk of these suits is fairly novel. To summarize, trademark owners are suing Google for selling their registered trademarks to competitors as search terms. After competitor successfully “buys” (or “bids” might be more appropriate) for a search term that consists of a registered trademark of another person, the competitor’s advertisement appears in the sponsored links section on the search Google search result page. This does not affect the organic results where you would presumably see any links related to the trademark owner. Rather, it only affects what appears as an advertisement which is clearly labeled “sponsored link.” The beef these trademark owners seem to have is that they don’t want any links to competitors, sponsored or not, appearing next to their organic search engine results. Unfortunately, not all uses of a trademarked phrase are protected by the law. See e.g., Nominative fair use.

As you might imagine, these suits have been challenged by Google and other defendants on a number of grounds. In an ordinary trademark infringement case, a plaintiff needs to establish that the defendant, (1) used his identical mark, or one that is confusingly similar, (2) in commerce, (3) in connection with the sale of goods or services, (4) and, that the use was causes a likelihood of confusion to the consumer. The two biggest points of contention that defendants have argued is that selling a trademarked phrase is not “in commerce” and that there is no “likelihood of confusion” that results from the sale of the mark. Before Rescuecom withdrew from litigation, the Second Circuit opined that the sale of trademarks in the Adwords program was enough to satisfy the “in commerce” requirement. As far as I know, no court has resolved the the “likelihood of confusion” issue on the merits. Nevertheless, it smells like an awfully tenuous argument given the layout and separation of sponsored links and organic search results.

Hat tip goes to Eric Goldman for his outstanding coverage on Google Adwords litigation.

Comments Off Posted in: Analysis on March 17, 2010

Hulu loses Daily Show and Colbert, Viacom to Sue Bloggers?

Hulu announced on March 2, 2010, that Comedy Central (owned by Viacom) is pulling The Daily Show and The Colbert Report from the website.

Why?! The answer, it turns out, starts with an “S” superimposed with a vertical line (or two, if you’re like me). According to the New York Times, the pull is the result of failed negotiations and the culmination of a contract term. Translation: Colbert and Stewart weren’t worth their weight in Hulu’s advertising currency.

Given the rising popularity of Hulu, I was pretty shocked that Colbert and Stewart weren’t making the bucks. However, even more disturbing is a post I came across on THR, Esq., which quotes Tony Fox, a Viacom/Comedy Central PR rep, with a rather pointed remark when asked “whether [Comedy Central] will now target websites and bloggers who post unauthorized clips from the show”:

“Yes, we intend to do so. My feeling is if (websites) are making money on our copyrighted content, then that is a problem.”

Too bad that fails to take into account that little thing called Fair Use, the same principle which allows comedy shows interlaced with news to take swipes at popular culture and media from other networks. Fox’s statement does sounds somewhat unintentionally overinclusive–surely he didn’t mean all embedded video clips are instances of infringement. Even the players on and allow embedding. Either way, the words were definitely provocative.

Tech Dirt followed up with the company and Viacom has since clarified the remarks:

“We have always tried to be as permissive as possible when looking at what might be fair use, and we haven’t changed our approach at all. Frankly, fair use works for us. I can’t recall a time we’ve ever sued a blogger for the use of a Comedy Central clip, and there’s no reason to believe that would be more likely to today.”

This answer is much more along the lines of what I would have expected from a PR representative. But does that make this PR fluff? Time will tell, I suppose. In the meantime, we’ll keep our eyes peeled for takedowns, nastygrams, and suits.

Comments Off Posted in: Commentary on March 4, 2010

Yet Another Thomas-Rasset Trial, Set for Oct 2010

This week, court documents were posted online indicating that Jammie Thomas-Rasset’s third trial is set for next October. Hat tip to Ben Sheffner for reporting this on Monday on his Copyrights & Campaigns blog.

A few weeks back on our Podcast and blog (see here, here, and here), we covered the first part of this story when Judge Davis granted a remittitur reducing the damages in the case from $1.92M ($80,000 per song infringed) to $54,000 ($2,250 per song infringed). As we noted, once a remittitur has been granted, the opposing party has the option to either accept the reduction in damages or have a new trial. They opted for the new trial, which will only concern the issue of damages.

A bigger question, as we (and Sheffner), have noted is whether the ultimate amount of damages will be capped in the new trial at $54,000 (based on the remittitur) or whether the plaintiffs will be able to cover any amount within the spectrum of statutory damages under the copyright act.

Comments Off Posted in: Commentary, Links on March 3, 2010

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