Decisions in Brief

• Author: John C. Gatz
• Position: John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois. 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,...
• Pages: 62-66

Published in Landslide® magazine, Volume 9, Number 5 , 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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Anticipation

REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954,

120 U.S.P.Q.2d 1729 (Fed. Cir. 2016). The Federal Circuit

afrmed-in-part, reversed-in-part, and remanded the PTAB’s

unpatentability determinations and exclusion of certain evi-

dence. The Federal Circuit upheld the PTAB’s nding of

certain claims invalid in view of prior art. Regarding other

claims, the Federal Circuit found that certain evidence was

improperly excluded, and that such evidence proved a con-

ception date prior to the ling date of the applicable prior art.

Appealability

Wi-Fi One, LLC v. Broadcom Corp.,________, 121 U.S.P.Q.2d

John C. Gatz is a member of the rm Nixon Peabody in Chicago, Illinois. 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. McCoy, Faegre Baker Daniels LLP; Robert W. (Bill) Mason,

CeloNova BioSciences, Inc.; Peter J. Prommer, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Janet

M. Garetto and Elizabeth W. Baio, Nixon Peabody LLP; Amy L. Sierocki.

COPYRIGHTS By John C. Gatz

Decisions in Brief

Video Censoring Service Courts Copyright Trouble

Disney Enterprises Inc. v. VidAngel Inc., 121 U.S.P.Q.2d 1212

(C.D. Cal. 2016). Plaintiffs Disney and other lm studios alleged

that their copyrights were infringed by the defendant VidAngel,

who provides the streaming of ltered versions of movies and tele-

vision shows having objectionable content removed. The service

starts by a customer purchasing the physical DVD from VidAn-

gel, then selecting from a list of potentially objectionable content

to be ltered, and then streaming the ltered content instantly. To

provide this service, VidAngel decrypts the content, tags it for the

potentially objectionable materials, and stores the les in the cloud

for streaming. Customers may sell the DVD back to VidAngel the

next day for $1 less than the purchase price.

The district court preliminarily enjoined VidAngel’s video

editing and streaming services, nding that the plaintiffs

had demonstrated a likelihood of success on their copyright

infringement claims. The district court rst noted that mul-

tiple courts, the Librarian of Congress, and the Register of

Copyrights have all declined to adopt an exemption under

the DCMA for space-shifting. The district court also rejected

VidAngel’s argument that its actions were permissible under

the Family Home Movie Act of 2005. Finally, the district court

found that all four fair use factors weighed against fair use.

N.Y. Court Retreats into Its Shell on Common-Law

Public Performance Protection

Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 121 U.S.P.Q.2d 1150

(2nd Cir. 2016). Flo & Eddie are two original members of the

band The Turtles and own the master recordings for a number

of successful songs recorded before 1972. Sirius XM is a sat-

ellite radio provider that features some channels playing songs

recorded before 1972, and has not paid any fees to broadcast

these songs. The Turtles sued XM alleging New York common-

law copyright infringement. The district court denied XM’s

summary judgment motion and ruled that New York has a com-

mon-law right of public performance for sound recordings. XM

led an interlocutory appeal to the Second Circuit, which pre-

sented a certied question to the New York Court of Appeals

as to whether New York has a common-law copyright to cover

public performance of pre-1972 sound recordings. The Second

Circuit ruled that no such right exists under New York law.

The Second Circuit began its analysis by looking at the

history of the U.S. Copyright Act, and noted that historically

sound recordings were not protected until 1972, and Congress

explicitly excluded the right of public performance from the

owners of the copyright for a sound recording from the 1972

Act. The Second Circuit noted that Congress passed the 1995

Digital Performance Right in Sound Recordings Act (DPRA)

to cover the public performance rights for digital transmissions,

but also set up a complex statutory licensing scheme to allow

service providers like XM to license the post-1972 works.

Turning to New York common-law copyright cases, the

Second Circuit noted that previous common-law copyright

decisions focused on making illegal copies of works, not

publicly performing a lawfully obtained copy of a work. To

establish common-law copyright infringement in New York, a

plaintiff must show (1) the existence of a valid copyright; and

(2) unauthorized reproduction of the work protected by the

copyright. Therefore, the Second Circuit found that the unau-

thorized performance of a work was not sufcient to show

infringement. Thus, common-law copyright protection in New

York only protects the unauthorized reproduction of a sound

recording, but once a copy of a sound recording is lawfully

purchased, the purchaser may use that copy in any way seen t.

PATENTS

1133 (Fed. Cir. 2017). The Federal Circuit granted the peti-

tions for en banc rehearing, vacated the earlier opinions panel

opinions, and reinstated the appeals. Wi-Fi One petitioned for

rehearing en banc in three appeals. The Federal Circuit granted

the petition and requested briefs on whether the Federal Circuit

should overrule Achates Reference Publishing, Inc. v. Apple

Inc., and hold that judicial review is available for a patent

owner to challenge the PTO’s determination that the petitioner

satised the timeliness requirement of 35 U.S.C. § 315(b) gov-

erning the petitions for inter partes review.

Claim Construction

D’Agostino v. Mastercard Int’l, 844 F.3d 945, 121 U.S.P.Q.2d