Published in Landslide® magazine, Volume 9, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This
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John C. Gatz Copyrights:
Patents: Cynthia K.
Trade Secrets: Trademarks: Janet
MP3tunes Faces Greater Loss on Appeal
EMI Christian Music Grp., Inc. v. MP3tunes, LLC, 840 F.3d 69,
won a trial verdict of over $20 million in a copyright infringe-
ment case against MP3tunes, which provided a forum for users
to upload music. That damages’ verdict was reduced from a
jury-awarded $48 million, based on the district court’s determi-
nation that MP3tunes t within the safe harbor provisions of the
DMCA. Capitol appealed, seeking to reverse that determination.
The Second Circuit evaluated whether MP3tunes quali-
ed for safe harbor under the DMCA. The Second Circuit
disagreed with the district court’s nding that “repeat infring-
ers” as used in the DMCA required an understanding of the
intent of parties uploading music. Rather, the Second Cir-
cuit stated that “repeat infringers” meant exactly that, and
would place a burden on MP3tunes and similar services to
track and remove users who repeatedly post infringing con-
tent, regardless of those users’ knowledge or intent in posting
that content. The Second Circuit reversed the district court’s
safe harbor nding, stating: “Based on the available evidence,
a reasonable jury could have concluded that it was reasonable
for MP3tunes to track users who repeatedly created links to
infringing content….” Further, the Second Circuit determined
that with respect to some types of content, MP3tunes and its
executives had “red ag knowledge” of infringement on its
service. For example, some content included Beatles songs
that had, at the time of uploading, never been authorized for
distribution as MP3s.
‘Who’s on First’ Rightsholders End Up in Second
and others are owned by the heirs of the comedy duo Abbott
and Costello. The defendants are related to the Broadway
play “Hand to God”, in which a character performs a portion
of the “Who’s on First?” routine made famous by Abbott and
Costello. In the play, a teenage boy from the Bible Belt per-
forms the routine with a sock puppet that represents his alter
ego. The district court found that defendant’s use of the com-
edy routine was highly transformative, and thus entitled to
protection as fair use. The Second Circuit noted that despite
the different context of the play, the routine was performed
almost verbatim. The Second Circuit therefore felt the nd-
ing of “transformation” at the motion to dismiss stage was
improper. However, the Second Circuit also held that plaintiff
TCA Television could not prove ownership of the copyright,
and therefore still dismissed the claim against defendants.
(Fed. Cir. 2016). The Federal Circuit afrmed the jury’
ings on infringement, validity, and damages related to apparatus
and method claims directed to plasticized soft tissue grafts suit-
able for transplantation into humans. One of the issues weighing
against LifeCell was that it did not timely request a new or modi-
ed claim construction. The Federal Circuit also found that direct
infringement existed because the nal product that left LifeCell’s
hands was complete and was infringed in that condition.
afrmed the district court’s claim construction of several
terms. Use of the ordinary meaning was afrmed where there
was no clear and unmistakable disclaimer and where the spec-
ication did not limit the disputed terms.
(Fed. Cir. 2016). The en banc
Federal Circuit afrmed and
reinstated the district court judgment as to three of the patents.
The Federal Circuit reinstated portions of the panel decision that
pertained to the four other patents in suit, for which the panel
decision had afrmed the district court’s rulings on all issues
of those patents. The Federal Circuit remanded the willfulness
issue for the district court for consideration under the Supreme
Court’s Halo standard. The panel had reversed nearly a dozen
jury fact ndings, despite the fact that some of the ndings were
not appealed and the applicable substantial evidence standard
of review was not mentioned. The panel improperly consulted
extra-record evidence in its analysis.
reversed the district court’s nding of the asserted claims as
invalid under § 112, ¶2. The Federal Circuit found the term
“processing system” in method claims played no discernable
role in dening the scope of the claims. Thus, it is difcult to
see how this term would prevent the claims (the remainder of
which Cox did not challenge on indeniteness grounds) from
serving their notice function under §112.
By John C. Gatz
Decisions in Brief