Published in Landslide® magazine, Volume 13, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
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COPYRIGHTS By John C. Gatz
Decisions in Brief
U.S.P.Q.2d 10304 (Fed. Cir. 2020). The Federal Circuit Court
of Appeals reversed the district court’s grant of summary judg-
ment of invalidity under § 102(a) prior knowledge and use,
and under the § 102(b) public use and on-sale bars. Regarding
the public use bar, the Federal Circuit held that while mem-
bers of the public were given access to the Sanwet process via
plant tours, public articles, and videos, there was a genuine
issue as to whether the elements of the Sanwet process were
either known or obvious to one skilled in the art, or whether
they were still concealed from the public. Additionally, the
court rejected the view that the public use bar applied to a third
party’s secret commercial use, instead reiterating that such an
application was inconsistent with the policies underlying the
public use bar. The Federal Circuit reversed the district court’s
view that a license agreement or acquisition related to the San-
wet process triggered the on-sale bar. The Federal Circuit noted
that while the license agreement may have enabled the third
party to perform the Sanwet process, the essential features of
the claimed and licensed process were never embodied in a
product sold or offered for sale.
U.S.P.Q.2d 10393 (Fed. Cir. 2020). The Federal Circuit
afrmed in part, vacated in part, and remanded the district
court’s ndings on assignor estoppel. One patent was found to
be invalid during an inter partes review (IPR) instituted by the
defendant (a company founded by the assignor of the patent).
The Federal Circuit held that assignor estoppel does not pre-
clude an assignor from instituting an IPR and then beneting in
district court if the IPR results in the patent being invalidated.
However, the Federal Circuit did nd that assignor estoppel
precluded a company in privity with the assignor of the patent
from asserting an invalidity defense to that patent.
Annotated Statutes Found Not Copyrightable
2020 U.S.P.Q.2d 10419 (2020). The U.S. Supreme Court
ruled that copyright protection does not extend to the
annotations in the Ofcial Code of Georgia Annotated
(OCGA). The OCGA includes a complete recitation of
the Georgia statutes and annotations comprised of sum-
maries of judicial decisions, summaries of relevant
opinions of the state attorney general, a list of associ-
ated law review articles, and other reference materials, as
well as editor’s notes providing information on the stat-
utes’ origins and history. Public.Resource.Org (PRO) is
an organization dedicated to providing public access to
government records and legal materials. PRO posted the
OCGA on a number of websites for download at no cost
and distributed copies to organizations and ofcials with-
out permission. Georgia sued PRO, alleging copyright
infringement of the OCGA’s annotations. The district court
found for Georgia on the basis that the annotations are
subject to copyright protection. The Eleventh Circuit Court
of Appeals reversed the district court’s decision, and the
Supreme Court granted certiorari.
The Supreme Court held that the OCGA annotations
are not protectable by copyright based on the animating
principle that no one can own the law and that all should
know and have free access to the law. Thus, the annota-
tions are not subject to copyright.
Factual Issues Reverse Authorship Repudiation
Everly v. Everly, 958 F.3d 442, 2020 U.S.P.Q.2d 10477 (6th Cir.
2020). The Everly Brothers were a famous music duo that had
many hit songs, including “Cathy’s Clown.” Don Everly sued
Phil Everly’s successors in interest (collectively, Phil), seek-
ing a declaratory judgment that Don was the sole author of the
song. Don and Phil signed an agreement in 1980 where Phil
transferred all of his rights in the song, including his claim as a
co-composer, to Don. In 2011, Don used his termination rights
to regain copyright ownership in the work. Don moved for sum-
mary judgment that he was the sole author of “Cathy’s Clown”
and that any counterclaims led by Phil were banned by the stat-
ute of limitations. The district court granted Don’s summary
judgment and found that Phil was on notice by 2011 that Phil’s
authorship had been expressly repudiated. Phil appealed.
The Sixth Circuit Court of Appeals reversed. The court began
by looking at whether a repudiation of authorship occurred
between Don and Phil. The Sixth Circuit identied three types
of repudiation of authorship: direct repudiation from one author
to another author, publication of a work without credit, and non-
receipt of royalties. The Sixth Circuit determined that the 1980
agreement between Don and Phil did not establish as a mat-
ter of law that Don had repudiated Phil’s authorship. The 1980
agreement could be viewed as a repudiation, but it could also be
viewed as a copyright ownership transfer. Therefore, an issue of
material fact existed, and summary judgment was inappropriate.
John C. Gatz is a member of the rm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers:
Copyrights: Jenni Psihoules, Nixon Peabody LLP; and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K. Barnett,
Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP;
Robert W. (Bill) Mason, Southwest Research Institute; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan,
FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki, Blumeneld & Shereff LLP.