Decisions in Brief

• Author: John C. Gatz
• Pages: 60-63

Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

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PATENTS

Decisions in Brief

COPYRIGHTS By John C. Gatz

Dating Book’s Copyright Not Infringed

Parker v. PayPal, Inc., 2017 U.S. Dist. LEXIS 130800, 2017

WL 3508759 (E.D. P.A. 2017). Parker wrote and published

a dating advice book. This book was later sold as part of a

compilation of dating advice articles on a website. Parker

sued a number of entities including Amazon for copyright

infringement, unfair competition under the Lanham Act,

misappropriation of likeness, breach of contract, and unjust

enrichment. Amazon moved to be dismissed from the case.

The court granted Amazon’s motion to dismiss. The dis-

trict court found that Parker failed to state a claim for copyright

infringement against Amazon as an internet service provider for

hosting the unauthorized copies of his book. The district court

cited a Fourth Circuit case that found hosting content is like

owning a copying machine that the public may access where the

owner does not actually copy the materials. The district court

found the passive act of hosting copyrighted material is not

direct copyright infringement, contributory or vicarious copy-

right infringement. Additionally, the district court found that the

Copyright Act preempted any state law breach of contract claim

against Amazon for hosting an infringing version of Parker’s

work on their servers, as that conduct is the same conduct that

Parker alleged showed copyright infringement. Therefore, the

contract claim is equivalent to an exclusive right granted by the

Copyright Act, and is preempted by the Copyright Act.

YouTube Video Critical of Another Video Is Fair Use

Hosseinzadeh v. Klein, Inc., 2017 U.S. Dist. LEXIS 134910,

2017 WL 3668846 (S.D.N.Y. 2017). Matt Hosseinzadeh

created several YouTube videos featuring a character he cre-

ated, “Bold Guy.” In these videos, Bold Guy generally hits

on women in a variety of different settings. Ethan and Hila

Klein are also YouTube personalities, and they posted a video

that was critical of one of Hosseinzadeh’s videos, “Bold Guy

vs. Parkour Girl.” In their critique, the Kleins interspersed

clips from the Hosseinzadeh video with clips of themselves

criticizing and generally making fun of Bold Guy and his

attempted wooing of Parkour Girl. Hosseinzadeh submitted a

DMCA takedown notication to YouTube, the Kleins submit-

ted a counter-takedown notication, and Hosseinzadeh sued

the Kleins for copyright infringement, for misrepresentation

in their counter-takedown notice, and for defamation.

The district court sided entirely with the Kleins, nding

that their use of the video was fair use and that their video

did not in any way replace the market for the original video.

The criticism and commentary of the Kleins’ video weighed

heavily in favor of a nding of fair use. As for the defamation

claim, the district court determined that Kleins’ statements

were clearly statements of opinion or otherwise non-action-

able. The Kleins’ motion for summary judgment was granted

in its entirety.

Appealability/Covered Business Method Review/

Patentable Subject Matter

Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 123

U.S.P.Q.2d 1813 (Fed. Cir. 2017). The Federal Circuit found

that it had authority to review the PTAB’s determination that

the petitioner had standing under AIA in a review of a cov-

ered business method (CBM) patent. The Federal Circuit then

held that the United States Postal Service had standing within

the meaning of AIA §18 because it was sued for infringement

in the US Federal Court of Federal Claims. As to the merits,

the Federal Circuit held that the claims were directed to the

abstract idea of relaying mailing address data.

Appellate Jurisdiction/ BPCIA

Amgen Inc. v. Hospira, Inc., 866 F.3d 1355, 123 U.S.P.Q.2d

1697 (Fed. Cir. 2017). The Federal Circuit held that the collat-

eral order doctrine did not provide appellate jurisdiction over the

district court’s denial of a motion to compel, and further denied

Amgen’s mandamus request on the same. The Biologics Price

Competition and Innovation Act (BPCIA) provides details on the

information exchange that is to occur and the timing for those

exchanges with respect to possible litigation relating to biologi-

cal products. In the rst phase of the exchange, an applicant

seeking an abbreviated approval from the FDA of its biosimilar

drug is required to provide the patent holder of the already-

approved biologic drug (referred to as a “sponsor”) information

about the biosimilar and the process used to manufacture it. The

sponsor is then required to provide the applicant with a list of

patents the sponsor believes the applicant may be infringing;

only those identied patents can form the basis of a subsequent

lawsuit. The sponsor, Amgen, provided a patent list that did not

include any patents relating to the cell-culture medium used to

create these types of drugs, arguing that it could not reasonably

identify such potentially infringed patents because the appli-

cant failed to provide sufcient disclosure of the processes it

used. During litigation, Amgen sought to compel discovery on

the Applicant’s cell-culture medium. The district court denied

Amgen’s motion, nding that because Amgen did not assert its

process patents, the information it sought was not relevant. The

Federal Circuit agreed. Accordingly, the Federal Circuit declined

to apply the collateral order doctrine. The Federal Circuit also

denied mandamus based on its ndings that Amgen misinter-

preted the BPCIA. Specically, the Federal Circuit Court found

that Amgen could have identied the cell-culture medium pat-

ents. Amgen argued that it could not have asserted those patents

for fear of sanctions under Rule 11. The Federal Circuit held

there would be no sanctions under the facts of this case.

Attorney Fees

AIA Am., Inc. v. Avid Radiopharmaceuticals, 866 F.3d 1369,

123 U.S.P.Q.2d 1703 (Fed. Cir. 2017). The Federal Circuit

afrmed the district court’s award of attorney fees under 35