Decisions in Brief

• Author: John C. Gatz
• Position: John C. Gatz is a member of the firm Nixon Peabody in Chicago. Column contributors include the following writers: Copyrights: Zachary J. Smolinski, Smolinski Law PC; Michael N. Spink, Brinks, Hofer, Gilson & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M...
• Pages: 69-72

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

information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

John C. Gatz Copyrights:

Patents: Cynthia K.



Trade Secrets: Trademarks: Janet



COPYRIGHTS

PATENTS

MP3tunes Faces Greater Loss on Appeal

EMI Christian Music Grp., Inc. v. MP3tunes, LLC, 840 F.3d 69,

120 U.S.P.Q.2d 1449 (2nd Cir. 2016). Plaintiffs Capitol Records

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

Place

TCA Television Corp. v. McCollum, 839 F.3d 168, 120

U.S.P.Q.2d 1248 (2nd Cir. 2016). Plaintiffs TCA Television

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.

Claim Construction

LifeNet Health v. LifeCell Corp., 837 F.3d 1316, 120 U.S.P.Q.2d

1001 (Fed. Cir. 2016). The Federal Circuit afrmed the jury’s nd-

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.

Mass. Inst. Of Tech. v. Shire Pharm., Inc., 839 F.3d 1111,

120 U.S.P.Q.2d 1492 (Fed. Cir. 2016). The Federal Circuit

afrmed the district court’s claim construction of several

terms. Use of the ordinary meaning was afrmed where there

was no clear and unmistakable disclaimer and where the spec-

ication did not limit the disputed terms.

Evidence/Willfulness

Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 120 U.S.P.Q.2d

1400 (Fed. Cir. 2016). The en banc Federal Circuit afrmed 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 afrmed 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.

Indeniteness

Cox Commc’ns, Inc. v. Sprint Commc’n Co., 838 F.3d 1224,

120 U.S.P.Q.2d 1283 (Fed. Cir. 2016). The Federal Circuit

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 dening the scope of the claims. Thus, it is difcult to

see how this term would prevent the claims (the remainder of

which Cox did not challenge on indeniteness grounds) from

serving their notice function under §112.

By John C. Gatz

Decisions in Brief