Technically Legal

Technology and the law. Done right.

Do You Believe In Magic?

Teller, of Penn & Teller, recently won a resounding victory in Federal District Court in Nevada.

This case has stretched on for about two years, due mostly to the foreign defendant avoiding participation in the case, and representing himself.

In 2012, Defendant Gerard Dogge posted a video on YouTube showing an improved version of Teller’s famous Shadows illusion (seen here with commentary). The improved routine consisted of the same effect, with nearly identical staging and progression. The main differences were that a clear vase was used, and water was poured from the vase after the illusion finished.

Generally, magic effects are not subject to IP protection. However, in the mid 80s, Teller had the foresight to copyright the pantomime presentation of his effect. While the effect itself cannot be copyrighted, the way in which the effect is presented may.

Teller initiated this copyright infringement and unfair competition (based on use of Teller’s name in marketing the knock-off illusion). In March the judge granted Teller summary judgment of copyright infringement, and in late-September the court granted Teller’s motion for default judgment on the unfair competition and willful infringement counts due to the Defendant’s continued lack of meaningful participation in the litigation.

There are a couple of worrying elements of the opinion. First, on page 8, the judge states the wrong standard for a permanent injunction. He includes the element “a likelihood of success on the merits,” which is an element of a preliminary injunction (before a decision on the merits of the claims). Here, the judge already decided that Teller succeeded, so it should be clear that the likelihood of his success should not factor into whether an injunction should issue.

Second, the judge, at least partially, based Lanham Act and Copyright Act counts on the same underlying work. It’s a nuanced issue, that due to the defendant representing himself likely did not get the attention it deserves. But the judge essentially held that you can infringe copyright by performing Teller’s trick, and that you can infringe trademark by performing Teller’s trick – because the trick is a “signature trick.” Typically you only get one kind of intellectual property protection per item.

Finally, the judge awarded Teller a strikingly broad injunction, which is worrisome in any case involving speech.

I point these out not to pick a fight with Teller, whom I deeply respect, but just to highlight some interesting issues in what is a serious win for magicians protecting their IP.

1 Comment Posted in: Analysis, Commentary on October 8, 2014

Don’t Be Concerned About Being Served Papers Over Facebook

Slashdot, via the NY Post, have articles about a recent case from Staten Island where a judge allowed papers to be served over Facebook. The titles of the stories imply that this is a new day in service of legal papers. It is not.

The judge in this case made an exception to the traditionally accepted modes of service because those all failed. It is not likely, as the Post says, that your, “next Facebook ‘poke’ could be from a process server.” (Unless you are friends with a process server who likes to poke you on Facebook. Then it’s decently likely.)

More importantly, this isn’t new. Every few months there is a story about a judge allowing service over social media when the defendant has taken steps to make service difficult for the plaintiff. In March 2013, a Federal Judge allowed service of a foreign company over e-mail and Facebook. There are instances in the US and around the world dating back further than 2011 of allowing service via e-mail and social media.

This phenomenon is neither new or worrisome. Service by traditional means is preferred, but when that fails either due to the Defendant avoiding service, or being incredibly (and perhaps intentionally) hard to find, US Courts have long allowed service by other means.

Comments Off Posted in: Analysis, Commentary on September 21, 2014

Massachusetts Dealers Can’t Sue Tesla for Operating in MA

This morning, the Supreme Judicial Court (SJC) of Massachusetts held that unaffiliated automobile dealers in Massachusetts do not have standing to sue Tesla over alleged violation of Massachusetts Auto Dealer statutes.

For some background on this topic, listen to this great Planet Money story that outlines the common statutes. In a nut-shell: states have laws that prohibit automobile manufacturers from selling cars directly to consumers. Affiliated dealerships are set up in each state, and have certain agreements with the car makers. Those state laws often have protections baked in that protect the local dealerships from the car makers revoking the dealer’s right to sell that make of cars.

Tesla currently has one showroom in Massachusetts. It is not an independent dealership, nor is it licensed under Massachusetts dealership laws. The Massachusetts State Automobile Dealers Association and a few dealerships sued for injunctive relief, asking the court to shut the showroom down.

The SJC had previously held that the law did not allow dealerships to sue unaffiliated automakers. A Honda dealership can sue Honda, but a Kia dealership can’t sue Honda. There were some amendments to the law since the last time the SJC decided this issue, but the court ultimately held that the changes, like the rest of law, was meant to protect local dealership from their affiliated car makers, and not dealerships from other competition.

Comments Off Posted in: Analysis, Commentary on September 15, 2014

Video King Wins at Bingo

In 2002, based on a patent application filed in 2000, Melange Computer Systems was awarded a patent on a bingo playing machine (and method). The term “bingo playing machine” immediately evokes an image of an elderly person huddled over several bingo cards, stamping them manically or laying down plastic chips as the numbers are called. And therein was the problem for Planet Bingo, the current owner of the aforementioned, and another, patent.

Planet Bingo sued Video King for infringing two patents related to electronic bingo. After claim construction, the district court found that the asserted claims were drawn to an abstract idea, and were not patentable subject matter. On appeal, the Federal Circuit agreed.

The claims were drawn to “managing a bingo game while allowing a player to repeatedly play the same sets of numbers in multiple sessions. The district court correctly concluded that managing the
game of bingo ‘consists solely of mental steps which can be carried out by a human using pen and paper.'” There was no meaningful distinction between the method and system claims at issue, a common problem with software (and abstract) patents.

The Federal Circuit also held that there was no transformation sufficient to save the claims. That the invention allegedly included complex computer code was of no moment when the “claims recite[d] a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers.”

This was an unpublished opinion, and there is no new guidance regarding whether a claim is drawn to an abstract idea, but it does enforce the idea that if the method and system claims are essentially identical, that the claims may be invalid – even if those claims contain printers, video screens, and input and output terminals, as some of the claims in this case did.

Comments Off Posted in: Analysis, Commentary on August 26, 2014

A More Enforceable Terms and Conditions

After the news yesterday of the Ninth Circuit holding that Barnes & Noble’s Terms of Service were never agreed to, I wanted to highlight the “Terms and Conditions” on the Jack Rudy Cocktail Co. site.

The Terms and Conditions are never explicitly agreed to by the customer, but that’s OK, because they don’t require agreement by the customer. They are reproduced in full below:


Customer Service
Bottom line, we are a small company, and we are positioned to ensure your experience with us is pleasant. If it isn’t, give us a call. We’ll answer.

Privacy Notice
We don’t give away your information, because that’s not nice, and we are nice people.

Return Information
You’ll love our products. If you don’t, send them back within 60 days and we’ll take care of it.

Comments Off Posted in: Commentary, Links on August 19, 2014

9th Circuit: Users Have to Agree to TOS to Be Bound By It

In 2011, retailers across the country steeply discounted the ill-fated HP Touchpad. After being inundated with requests for the short-lived WebOS device, retailers including Barnes & Noble cancelled many of the orders. One spurned customer filed a class action lawsuit against Barnes & Noble in state court, which then removed the case to federal court, and sought to compel arbitration, as required in Barnes & Noble terms of service.

But, as in many cases, there was a rub. Barnes & Noble’s website did not require users to assent to their terms of service at any time, nor do they require it to this day.

The Federal Circuit begins its opinion with a pair of apt quotes from the Second Circuit:

“While new commerce on the Internet has exposed courts to many new situations, it has not fundamentally changed the principles of contract.” Register.com, Inc. v. Verio, Inc., 356 F.3d 393, 403 (2d Cir. 2004). One such principle is the requirement that “[m]utual manifestation of assent, whether by written or spoken word or by conduct, is the touchstone of contract.” Specht v. Netscape Commc’ns Corp., 306 F.3d 17, 29 (2d Cir. 2002) (applying California law).

The court distinguished this browsewrap agreement (through which assent is implied through continued use of the website, or sometimes a button click with a link to the terms) and clickwrap agreements (through which assent is affirmatively given through clicking a button accompanied by the terms of service themselves).

Thus far, courts have occasionally enforced browsewrap agreements where parties had knowledge of the terms of the contract. But in this case, there was no evidence on the record that the named plaintiff had any such knowledge, and Barnes & Noble’s argument that “the placement of the ‘Terms of Use’ hyperlink in the bottom left-hand corner of every page on the Barnes & Noble website, and its close proximity to the buttons a user must click on to complete an online purchase, is enough to place a reasonably prudent user on constructive notice,” was unavailing.

I would be curious to know if there was A/B testing on pages with “Click to button to indicate you agree to the TOS” against pages without a TOS to see if there’s a sales difference. Part of me has trouble imagining that the lost sales, if any, would weigh against the actual risk of your terms not being enforceable, but the continued and varied efforts to make their terms harder to find would indicate otherwise.

Comments Off Posted in: Analysis, Commentary on August 18, 2014

Inequitable Conduct Not Dead Yet

Unenforceability of a patent through inequitable conduct is a equitable defense to a claim of patent infringement. It exists when a defendant can prove that the patent they are being accused of infringing was obtained through misrepresentations or omissions to the Patent Office, intentionally committed by the patentee with an intent to deceive.

In 2011, the Federal Circuit Court of Appeals decided Therasense v. Becton, Dickenson, and Co., a case that was hailed by some as the death of inequitable conduct. There have been only a handful of cases since 2011 finding, or upholding findings of inequitable conduct.

The Federal Circuit held that in order to support a finding of inequitable conduct, the party raising the claim has to prove that an alleged bad act was material to patentability, and that the act was undertaken with intent to deceive. Intent to deceive would be difficult to prove, and the number of successful claims of inequitable conduct dropped.

Proving that the doctrine isn’t dead yet, the Federal Circuit affirmed a finding of inequitable conduct by a district court. But don’t hold your breath that the doctrine is revived, the facts in this case are absurd.

In and around 2000, Apotex filed a patent application in Canada for moexipril magnesium, a blood pressure medication. In 2001, Apotex filed a related American application. There were two other medications, Univasc and Uniretic, that used the same active ingredient and were on sale for several years before Apotex applied for a patent.

During the prosecution of the patent, the inventor, Dr. Sherman, became aware of facts that he should have disclosed to the Patent Office. Specifically, he became aware that Univasc was likely made by the same process that he claimed in his application, and withheld that information.

Sherman was familiar with patent prosecution and would have known of his duty to disclose this information to the Patent Office, but he did not. Sherman, in lab notes, indicated that he believed the prior art overlapped with his claimed invention, but submitted misleading test results to show otherwise.

When confronted with many of these allegations at trial, “Dr. Sherman selectively displayed. . . a lack of memory and responsibility that led the court to conclude he was not a credible witness.” There were several additional acts that violated his duty of candor to the Patent Office that I have not recounted here.

This is still a pretty high bar to reach, and a finding of unenforceability is likely possible without such overwhelming evidence of intent to deceive the patent office. Regardless, it’s good to know that such findings are still possible under the heightened standard.

Comments Off Posted in: Analysis, Commentary on August 16, 2014

Federal Circuit Lacks Jurisdiction on Consumer Protection Action

MPHJ Technology Investments, LLC (MPHJ) is the owner of several patents relating to scanning documents on network-attached hardware. MPHJ has forty wholly-owned shell subsidiary companies.

Each shell company purported to be the exclusive licensee of MPHJ’s patents with respect to certain geographic areas, or commercial fields. These companies identified business in Vermont and around the country that they thought infringed the MPHJ patents and would then send a form letter stating that they believed there was infringement, and requesting that the businesses confirm they do not infringe, or take a license. If no response came (and allegedly, in some cases where no initial letter was sent) the shell company would send second and third follow-up letters asking for a response and threatening litigation. At no time did MPHJ or any shell company file a patent infringement suit in Vermont, nor did they retain counsel.

Vermont’s Attorney General, after receiving several complaints, began an investigation and eventually filed suit in state court for violation of the Vermont Consumer Protection Act, alleging that the defendants made deceptive statements in these letters.

MPHJ, a Delaware LLC, removed the case to Federal Court based on federal subject matter (relating to patents) and diversity between MPHJ and the State of Vermont. After some motion practice, the State Amended its complaint, and the Federal Circuit remanded the case to state Court. MPHJ petitioned the Federal Circuit for a writ of mandamus, seeking review of the remand order.

In its original complaint the State of Vermont was alleging that MPHJ’s enforcement of its patent rights was giving rise to the violations of the Consumer Protection Act. However, in the amended complaint Vermont narrowed that allegation to MPHJ’s deceptive tactics, and removed a request for a permanent injunction to stop MPHJ from threatening Vermont businesses. In the eyes of the district court, these amendments removed federal subject matter jurisdiction. Diversity jurisdiction would have been defeated by there not being more than $75,000 at issue.

The Federal Circuit heard the case on a petition for mandamus. Because the district court remanded for lack of subject matter jurisdiction under 28 USC 1447(c), the Federal Circuit lacked jurisdiction over the appeal under 1447(d), which states:

An order remanding a case to the State court from which it was removed is not reviewable on appeal or otherwise.

In its demand letters, the MPHJ subsidiaries would often request license fees in excess of $900 per employee. The letters were often sent to small businesses and non-profits. Businesses without the ability to means to mount a legal defense to a patent infringement case – not that it appears MPHJ was willing to mount a case. However, MPHJ would grant licenses to these businesses for less than $900 if the business called to negotiate with the shell company.

Interestingly, this case was one of two opinions released today by Federal Circuit Courts of Appeal relating to Section 1447. The other was from the Seventh Circuit.

Comments Off Posted in: Analysis, Commentary on August 11, 2014

Mexican Trademark Law Potentially Relevant in Evaluating an Injunction in US

Quinta Real is an upscale hotel that has operated in Mexico since the 1980s. La Quinta is an American hotel chain that operates in over 80 major cities, and has been operating the US since the 1960s.

Over the past few decades, Quinta Real has made a two failed attempts to enter the US market. After Quinta Real’s most recent attempt to enter the US market, La Quinta filed a case seeking a permanent injunction preventing Quinta Real from using that name in US. After the district court granted that injunction, Quinta Real appealed on multiple grounds.

The Ninth Circuit affirmed the finding of a likelihood of confusion, but reversed the order of an injunction.

One of Quinta Real’s primary attacks on appeal was that the court lacked jurisdiction, because the Quinta Real name had never been used in commerce in the United States. The Ninth Circuit disagreed that “use in commerce” was a jurisdictional requirement. While it is necessary to prove use in commerce under certain provisions of the Lanham Act, the jurisdictional grant contains no such requirement.

When reviewing the court’s decision to grant an injunction, the court first recited the eBay factors:

(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of the hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

The court also noted that, “If the district court ‘identified and applied the correct legal rule to the relief requested,’ we will reverse only if the court’s decision ‘resulted from a factual finding that was illogical, implausible, or without support in inferences that may be drawn from the facts in the record.”

Somewhat bafflingly, the court found that the district court applied the proper test, but vacated the grant of an injunction, holding:

We are concerned that the district court’s analysis does not discuss a fact we think relevant to weighing the equities in this case: That a permanent injunction in favor of La Quinta here would bar Quinta Real from opening a hotel in the United States under its own name, while at the same time La Quinta would remain free to open hotels and do business in Mexico as “La Quinta.”

Traditionally, judges making determinations regarding equitable relief are granted broad discretion, and are not often overturned. While the court brings up a relevant fact, it strikes me as a stretch that the court’s perceived failure to consider an element of Mexican law demands that the district court’s order be vacated, particularly when the Ninth Circuit does “not decide that this fact is determinative and we express no opinion on whether the district court should issue a permanent injunction after having taken account of all the relevant facts.” Rather, the court believes that this may affect the balance of hardship analysis, and would like to see it addressed.

Since eBay, the likelihood of a party obtaining an injunction in an intellectual property case has dropped dramatically. There is little, if any, discussion of under what conditions La Quinta is allowed to operate in Mexico, and what aspects of Mexican Trademark law allow La Quinta, the junior user in Mexico, to have a name so similar to Quinta Real. It’s difficult to imagine how operation of Mexican trademark law would have a relevant bearing on whether to grant an injunction in the United States.

More worrisome is the application of this principle to patent cases. It is rare for anyone other than major corporations to have patents that cover many jurisdictions. This case brings a potentially new factor into determining whether to grant an injunction in patent cases. In what way are hardships affected if Samsung and Apple can both sell their devices in Japan, but Samsung is prohibited from selling certain devices in the USA? It is simply unclear how that question is relevant when discussing the operation of US Patent or Trademark law.

Comments Off Posted in: Analysis, Commentary on August 6, 2014

On Dismissing the Podcast Lawsuits

There’s been a lot of coverage of the past few years about a patent alleged to cover podcasting. The company behind the suit has dismissed several defendants recently, after realizing that there isn’t a lot of money in podcasting.

Details around this most recent spat are a little sparse, but Personal Audio, the company that owns the patent, put out a press release essentially saying “we offered to dismiss the case against Adam Corolla, but he said no.” Corolla has been crowd funding his defense against the patent lawsuit, and the press release is likely targeted to get the crowd funding to dry up.

Corolla responded, saying that he’s going to keep on fighting for the next guy down the line. He’s out to kill the patent.

Drawing some inferences here, it appears that Personal Audio approached Corolla offering to dismiss its claims of patent infringement, if Corolla also dismissed his counterclaims for declamatory judgment of invalidity and non-infringement: essentially an independent claim asking the court to find that the patent is invalid and not infringed. When Corolla declined to dismiss his counterclaims, Personal Audio declined to dismiss its affirmative claims of infringement.

Including counterclaims for declaratory judgement of non-infringement and invalidity is a common tactic in patent litigation. It’s a bargaining chip for instances exactly like this. The plaintiff wants out of the suit, but these counterclaims may prevent the plaintiff from backing away without giving something up to the defendants. Though, this practice has recently been called into question in some jurisdictions.

What’s unclear is if Personal Audio offered Corolla a settlement in exchange for dismissing his claims against them. The press releases stated that, “court orders prevent . . . Adam from discussing the matter in further detail.” A reasonable assumption is that the offer to dismiss the claims was part of some confidential settlement offer, potentially including compensation for dismissing the declaratory judgment claims. This would explain Corolla’s reluctance to expound on the matter, but it is only speculation.

Comments Off Posted in: Analysis, Commentary on July 31, 2014

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