Welcome back to Legal Geek. This week, we review the decision in California this week regarding San Diego Comic Con and the ability of the organizers to protect against competition using the trademarked name Comic-Con.
https://archive.org/details/LegalGeekEp121
San Diego Comic Convention is the organizer of the huge annual gathering of the nerds and stars known as Comic-Con, and they have acquired registered U.S. trademarks covering this name. When a Salt Lake City comic convention refused to stop using Comic-Con as part of its name, or pay a license fee for the privilege, San Diego Comic Con sued for trademark infringement. This week, a jury found that the trademark registration is valid, and that the Utah convention organizers infringed the Comic-Con trademark.
What this means is that an injunction will likely be obtained against the Utah convention, which will then have to change its name moving forward. Other conventions in Baltimore and elsewhere using the name may also be challenged and forced to abandon the name Comic-Con. Many are asking how can this be fair, when the term Comic-Con is so descriptive of the event covered by the trademark?
Trademarks are generally classified into four categories of distinctiveness depending on how related the mark is to the goods or services covered. These categories include generic, descriptive, suggestive, and arbitrary. Terms that are generic such as paper are not protectable by U.S. trademark registrations, and the same is true of marks that are merely descriptive. However, if a descriptive mark acquires secondary meaning indicating the source of the goods as a result of long time use and promotion in the marketplace, those types of marks can be registered.
According to the jury in California, that must be where Comic-Con fits. The jury rejected Salt Lake's defense that the term Comic-Con is generic. Despite this, a shortening of the phrase comic convention is precisely descriptive of what happens at these events, so the jury and the U.S. trademark office have both come to the conclusion that the San Diego organizers have done enough in their 50 years in the marketplace to make this name acquire so-called secondary meaning. While some may come to opposite conclusions, this is a fact-based analysis based on things like survey evidence of what consumers believe, and therefore is unlikely to be overturned on appeal.
This is just the reality of how U.S. law has drawn the lines between what is protectable and what is not, and it makes sense based on the desire to allow competitors to be able to fairly describe their products but not trade on the goodwill earned through long efforts and marketing of other entities.
The San Diego organizers do run the risk of losing the trademark rights if they do not adequately police the use by other conventions, so expect this enforcement effort to expand and continue. Should you boycott San Diego Comic-Con over this? I'd argue no because this doesn't stop other conventions from happening, it just means they have to use a different name like Comic Expo, or the like. I would posit that even the longer form Comic Convention is likely acceptable and not covered by the trademark here. The protection is narrowly tailored and can be easily worked around, and therefore should have no real long-term effect on nerds who attend all these conventions.
The Bottom Line is, you may not personally like that a term like Comic-Con is protected by trademark and monopolized by the San Diego convention, but nerd culture has survived similar circumstances before, like when the term superheroes was trademarked. Conventions with as much success as the Salt Lake one, as I hear anecdotally, can honestly build up their own alternative brand name and then enjoy the consumer goodwill from that name. So it's not the end of the world, but don't expect to be going to anything literally called a Comic-Con outside of San Diego anytime soon.
Thanks to CareyT and MajorSpoilers on Twitter for suggesting this hot topic.
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Thursday, December 14, 2017
Friday, December 1, 2017
Legal Geek No. 120: Conflicts and Bias at the Supreme Court
Welcome back to Legal Geek. This week, we update you on an augmented reality game lawsuit we covered earlier, and then turn to rising issues of conflicts of interest at the Supreme Court and the need for better controls to avoid personal bias at the highest court of the land.
https://archive.org/details/LegalGeekEp120
A few months ago, Legal Geek covered the latest in a lawsuit pitting Milwaukee County in Wisconsin against augmented game makers like those who make Pokémon Go. As you'll recall, Milwaukee County enacted an ordinance in February requiring augmented reality game developers to go through a rigorous approval process with several very expensive requirement to operate in Milwaukee's parks. Candy Labs challenged this ordinance in federal court and won an injunction this summer against enforcement of the ordinance as potentially not being constitutional.
This case was slated to go to trial in a couple months, but a settlement agreement was reached this week. Under the settlement, Milwaukee will not enforce the ordinance and will pay attorney's fees to Candy Labs for this lawsuit. So rejoice Pokémon Go and other augmented reality game fans, as this legal victory should deter other localities from unfairly limiting use of public spaces to gamers like this.
Now to our main topic this week, conflicts of interest at the Supreme Court.
To describe conflicts of interest simply, judges are to be conflicted out of a case when they have personal involvement, such as by owning company stock, or prior involvement as an advocate on one side of a case they would be adjudicating. We don't want unfair bias in the court system, so when conflicts come up the judge is supposed to recuse themselves, AKA withdraw from the decision making. All lawyers also do conflict checks regularly to avoid representing two companies or persons that would be opponents to one another in court, so it's not unique to judges, nor is it a new concept to these seasoned attorneys who become Supreme Court justices.
Earlier this month, Justice Kagan recused herself from an immigration case that's been in hearings and re-hearings at the court for over 18 months. Despite participating in a first decision when the court had 8 justices and was deadlocked, and then participating in the oral arguments of the re-hearing this October, at no point in this process did Kagan or her staff identify the disqualifying conflict of interest she had from her prior job as a solicitor general. If Kagan had recused herself in a timely fashion, this case would be long wrapped up, and there would be no risk of bias based on her significant involvement in the oral argument and part of the decision-making process. But that did not happen here.
More troubling, this is the third straight year where this has happened on a Supreme Court case, with a late recusal by a Justice after significant participation in the case. The other two cases involved stock ownership in a company with stakes on the line in a Supreme Court case. How does this problem keep occurring, and why?
There are some formal standards and a Code of Conduct federal courts are supposed to follow, including automated software screening checks, but these were made by a conference of judges at all levels of the judiciary. The Supreme Court believes that by constitutional mandate, they are one court and not subject to policies or rules being forced upon them by lower courts. As a result, each justice handles these potential conflicts in their own independent way. As we can see, that's not working perfectly.
It is vital for the fairness and transparency of the judiciary that the highest court in the land be free from unfair biases. To accomplish that, the Supreme Court should institute at least some standard procedures to more quickly and accurately identify these issues for consideration before an oral argument is conducted.
The Bottom Line is, the public has faith in the courts because they are designed to be fair and impartial, but the Supreme Court has a long way to go to catch up to the rest of federal courts in avoiding conflicts and late recusals from cases. In a country so divided in partisanship in the other branches of government, we have to hope the courts lead by example and fix problems like this.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp120
A few months ago, Legal Geek covered the latest in a lawsuit pitting Milwaukee County in Wisconsin against augmented game makers like those who make Pokémon Go. As you'll recall, Milwaukee County enacted an ordinance in February requiring augmented reality game developers to go through a rigorous approval process with several very expensive requirement to operate in Milwaukee's parks. Candy Labs challenged this ordinance in federal court and won an injunction this summer against enforcement of the ordinance as potentially not being constitutional.
This case was slated to go to trial in a couple months, but a settlement agreement was reached this week. Under the settlement, Milwaukee will not enforce the ordinance and will pay attorney's fees to Candy Labs for this lawsuit. So rejoice Pokémon Go and other augmented reality game fans, as this legal victory should deter other localities from unfairly limiting use of public spaces to gamers like this.
Now to our main topic this week, conflicts of interest at the Supreme Court.
To describe conflicts of interest simply, judges are to be conflicted out of a case when they have personal involvement, such as by owning company stock, or prior involvement as an advocate on one side of a case they would be adjudicating. We don't want unfair bias in the court system, so when conflicts come up the judge is supposed to recuse themselves, AKA withdraw from the decision making. All lawyers also do conflict checks regularly to avoid representing two companies or persons that would be opponents to one another in court, so it's not unique to judges, nor is it a new concept to these seasoned attorneys who become Supreme Court justices.
Earlier this month, Justice Kagan recused herself from an immigration case that's been in hearings and re-hearings at the court for over 18 months. Despite participating in a first decision when the court had 8 justices and was deadlocked, and then participating in the oral arguments of the re-hearing this October, at no point in this process did Kagan or her staff identify the disqualifying conflict of interest she had from her prior job as a solicitor general. If Kagan had recused herself in a timely fashion, this case would be long wrapped up, and there would be no risk of bias based on her significant involvement in the oral argument and part of the decision-making process. But that did not happen here.
More troubling, this is the third straight year where this has happened on a Supreme Court case, with a late recusal by a Justice after significant participation in the case. The other two cases involved stock ownership in a company with stakes on the line in a Supreme Court case. How does this problem keep occurring, and why?
There are some formal standards and a Code of Conduct federal courts are supposed to follow, including automated software screening checks, but these were made by a conference of judges at all levels of the judiciary. The Supreme Court believes that by constitutional mandate, they are one court and not subject to policies or rules being forced upon them by lower courts. As a result, each justice handles these potential conflicts in their own independent way. As we can see, that's not working perfectly.
It is vital for the fairness and transparency of the judiciary that the highest court in the land be free from unfair biases. To accomplish that, the Supreme Court should institute at least some standard procedures to more quickly and accurately identify these issues for consideration before an oral argument is conducted.
The Bottom Line is, the public has faith in the courts because they are designed to be fair and impartial, but the Supreme Court has a long way to go to catch up to the rest of federal courts in avoiding conflicts and late recusals from cases. In a country so divided in partisanship in the other branches of government, we have to hope the courts lead by example and fix problems like this.
----------------------------------
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, November 16, 2017
Legal Geek No. 119: Freedom of Tweets
Welcome back to Legal Geek. This week, we discuss this week's news regarding Twitter pulling verified badges from some users and re-evaluating how those badges are granted to users of this social network.
https://archive.org/details/LegalGeekEp119
Twitter has continued to evolve with recent changes, including the notable shift to allow 280 character tweets for all users instead of the long standing 140. This week, the changes continued as Twitter shut down submissions for verification, which is the open process to request that your account get a verified badge indicating you are the true source material. In other words, the fake Donald Trump and Miley Cyrus accounts don't get the verified check, but those run by the actual celebrities or their PR agents do.
The reasons for this shut down were explained as follows. Twitter wants to introduce and apply new guidelines for verification, and also clear the decks of verified accounts that do not follow Twitter's rules and Terms of Service. For example, Twitter has begun removing the badge from users for allegedly promoting hate or violence, and for engaging in or inciting harassment. Twitter has claimed that the badge was being interpreted by some users as an endorsement or indicator of importance, but that was never the intent of the badge.
What made this story hit the news waves was the types of users who were in the first group to lose the verification badge. Many of these users were far right commentators or public figures such as Jason Kessler, who organized a Charlottesville march, and Richard Spencer, a white supremacist. Essentially, Twitter is deeming some radicals to be promoting hate, while other radicals have not faced the same type of repercussion.
So legally, is there any challenge that can be made by these users who have a status taken away? The short answer is, probably not. As a preliminary matter, tweets are not inherently protected free speech under the First Amendment. If this removal of a status badge is seen as a censorship of the speech, it is not done by a government or a company acting on behalf of a government. Yes, even though the President tweets all the darn time, this platform is not a government agency. There's no Freedom of Tweets in the Constitution, last I checked.
Twitter and other private social networks have the right to regulate their channels as they wish, as generally set forth in the Terms of Service for these programs. In the case of Twitter, the rules applied explicitly prohibit sharing a large number of things like misuse of other's intellectual property, excessive graphic violence, threats, hate or harassment materials, and private information. Twitter has full latitude to suspend or terminate accounts that do not follow these rules, above and beyond the removal of a verification badge.
If you use Twitter, you agree to abide by those rules, and for these users, that has allegedly not been happening. As such, the users likely have no reasonable recourse to overcome content control applied in this way by Twitter, and it would be similar with all the major social networks.
The Bottom Line is, as much as social networks like Twitter feel like the public open forum, they are still privately-owned channels of communication with rules and Terms of Service that provide wide latitude for controlling content and actions of users. The world is likely a better place without fringe or radial dialogue, but one hopes that Twitter's new rules and the application of the verification system can treat all sides fairly in this process.
Finally, if you want to find a further discussion of this story, and lots of other fun geek topics, please check out my appearance on the Ritual Misery podcast from this week.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp119
Twitter has continued to evolve with recent changes, including the notable shift to allow 280 character tweets for all users instead of the long standing 140. This week, the changes continued as Twitter shut down submissions for verification, which is the open process to request that your account get a verified badge indicating you are the true source material. In other words, the fake Donald Trump and Miley Cyrus accounts don't get the verified check, but those run by the actual celebrities or their PR agents do.
The reasons for this shut down were explained as follows. Twitter wants to introduce and apply new guidelines for verification, and also clear the decks of verified accounts that do not follow Twitter's rules and Terms of Service. For example, Twitter has begun removing the badge from users for allegedly promoting hate or violence, and for engaging in or inciting harassment. Twitter has claimed that the badge was being interpreted by some users as an endorsement or indicator of importance, but that was never the intent of the badge.
What made this story hit the news waves was the types of users who were in the first group to lose the verification badge. Many of these users were far right commentators or public figures such as Jason Kessler, who organized a Charlottesville march, and Richard Spencer, a white supremacist. Essentially, Twitter is deeming some radicals to be promoting hate, while other radicals have not faced the same type of repercussion.
So legally, is there any challenge that can be made by these users who have a status taken away? The short answer is, probably not. As a preliminary matter, tweets are not inherently protected free speech under the First Amendment. If this removal of a status badge is seen as a censorship of the speech, it is not done by a government or a company acting on behalf of a government. Yes, even though the President tweets all the darn time, this platform is not a government agency. There's no Freedom of Tweets in the Constitution, last I checked.
Twitter and other private social networks have the right to regulate their channels as they wish, as generally set forth in the Terms of Service for these programs. In the case of Twitter, the rules applied explicitly prohibit sharing a large number of things like misuse of other's intellectual property, excessive graphic violence, threats, hate or harassment materials, and private information. Twitter has full latitude to suspend or terminate accounts that do not follow these rules, above and beyond the removal of a verification badge.
If you use Twitter, you agree to abide by those rules, and for these users, that has allegedly not been happening. As such, the users likely have no reasonable recourse to overcome content control applied in this way by Twitter, and it would be similar with all the major social networks.
The Bottom Line is, as much as social networks like Twitter feel like the public open forum, they are still privately-owned channels of communication with rules and Terms of Service that provide wide latitude for controlling content and actions of users. The world is likely a better place without fringe or radial dialogue, but one hopes that Twitter's new rules and the application of the verification system can treat all sides fairly in this process.
Finally, if you want to find a further discussion of this story, and lots of other fun geek topics, please check out my appearance on the Ritual Misery podcast from this week.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, November 9, 2017
Legal Geek No. 118: Dominion and Call of Duty in the Legal Crosshairs
Welcome back to Legal Geek. This week, we update you on a couple of interesting legal cases dealing with popular games, the Dominion tabletop game and the Call of Duty series of video games.
https://archive.org/details/LegalGeekEp118
We start with Rio Grande Games, makers of Dominion, which all but created the deck building genre so popular in tabletop games the past 10 years. Rio Grande has recently sued a handful of Amazon sellers for allegedly selling counterfeit copies of this game Dominion.
Rio Grande did a bit of their own discovery work, anonymously ordering Dominion from these sources and then investigating whether the copies of the game received were genuine. They were not. For example, the knockoffs use significantly lower quality card stock, and a plastic insert much flimsier than the one included with original boxes of Dominion.
With all of the artwork and game name and logos copied, this lawsuit has plenty of claims including trade dress infringement and copyright infringement. An injunction seems likely in this circumstance, but it raises the question of will other fraudulent Amazon sellers pop up then, to take their place. It's a constant struggle for some manufacturers and fields, but perhaps not as prevalent in the board game industry. Thus, Rio Grande may be developing the cutting edge of what to do in these types of knockoff situations.
Unlike Rio Grande, who is suing others to protect their marketplace, Activision Blizzard, the makers of Call of Duty, is the target of a lawsuit filed this week for what they allegedly do with this series of games. AM General, the makers of military Humvee vehicles, is suing Activision for improper use of trademarks associated with this vehicles. AM General argues that humvees being prominently displayed in the video games and ancillary products like toys is Activision taking advantage of someone else's intellectual property.
This appears to be a bit of a cash grab by AM General, as the demands here are more for damages than for an injunction. The legal theory here for significant damages relies on a claim that the wild popularity and sales success of Call of Duty comes only at the expense of AM General and the consumers who are duped into believing these companies are aligned or licensing the trademarks to one another. That seems like it will be very difficult to prove, but perhaps a small amount of damages is warranted for unlicensed use of vehicle designs in these games.
The Bottom Line is, when gaming companies are successful and lead their marketplaces by making lots of sales and money, knockoffs or those with potential legal claims will always come out of the woodwork to try and claim a piece of the pie. In those circumstances, courts serve an important purpose in making sure everyone plays fair in the free market. It will be interesting to see what other game companies get entrenched in conflicts in the coming months, and if they are similar to these two.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp118
We start with Rio Grande Games, makers of Dominion, which all but created the deck building genre so popular in tabletop games the past 10 years. Rio Grande has recently sued a handful of Amazon sellers for allegedly selling counterfeit copies of this game Dominion.
Rio Grande did a bit of their own discovery work, anonymously ordering Dominion from these sources and then investigating whether the copies of the game received were genuine. They were not. For example, the knockoffs use significantly lower quality card stock, and a plastic insert much flimsier than the one included with original boxes of Dominion.
With all of the artwork and game name and logos copied, this lawsuit has plenty of claims including trade dress infringement and copyright infringement. An injunction seems likely in this circumstance, but it raises the question of will other fraudulent Amazon sellers pop up then, to take their place. It's a constant struggle for some manufacturers and fields, but perhaps not as prevalent in the board game industry. Thus, Rio Grande may be developing the cutting edge of what to do in these types of knockoff situations.
Unlike Rio Grande, who is suing others to protect their marketplace, Activision Blizzard, the makers of Call of Duty, is the target of a lawsuit filed this week for what they allegedly do with this series of games. AM General, the makers of military Humvee vehicles, is suing Activision for improper use of trademarks associated with this vehicles. AM General argues that humvees being prominently displayed in the video games and ancillary products like toys is Activision taking advantage of someone else's intellectual property.
This appears to be a bit of a cash grab by AM General, as the demands here are more for damages than for an injunction. The legal theory here for significant damages relies on a claim that the wild popularity and sales success of Call of Duty comes only at the expense of AM General and the consumers who are duped into believing these companies are aligned or licensing the trademarks to one another. That seems like it will be very difficult to prove, but perhaps a small amount of damages is warranted for unlicensed use of vehicle designs in these games.
The Bottom Line is, when gaming companies are successful and lead their marketplaces by making lots of sales and money, knockoffs or those with potential legal claims will always come out of the woodwork to try and claim a piece of the pie. In those circumstances, courts serve an important purpose in making sure everyone plays fair in the free market. It will be interesting to see what other game companies get entrenched in conflicts in the coming months, and if they are similar to these two.
----------------------------------
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Wednesday, October 11, 2017
Legal Geek No. 117: Ohio State sued by Famous Former Football Star
Welcome back to Legal Geek. This week, we celebrate my favorite sport college football being in full swing with a look at the latest frontier in lawsuits against universities for using the likeness of players in commercial contexts.
https://archive.org/details/LegalGeekEp117
NCAA football has been under a fairly constant barrage of legal challenges thanks to the money generation shooting to astronomical levels with very little compensation trickling down to the players that help make this product so popular. As you'll recall, the NCAA itself pulled out of the video game market thanks to a lawsuit from a former player for not sharing the wealth from those licensing deals, and current players have made moves as well like the Northwestern team considering unionizing, also previously covered on this segment.
The tide is rising in favor of compensating players, and another step in that direction took place a few weeks ago when Chris Spielman, a TV personality and former NFL player and linebacker at The Ohio State University, sued his alma mater in federal court as lead plaintiff of a class action lawsuit for antitrust violations associated with marketing activities done by OSU and their marketing firm IMG College. For any familiar with OSU football, the mere thought of a lawsuit entitled Spielman vs. OSU is shocking.
Spielman has promised to turn any winnings in the case back over to the university, so this is really just to make a point and push against the current way the university uses the likenesses of former players in marketing materials. For example, OSU and IMG do deals with companies like Nike and Honda, and banners will be hung in the stadium and elsewhere with old Buckeye greats and the company logos on them. Spielman, being one of the most iconic former OSU players, is typically one depicted. But he receives no royalty for the use of his likeness as a former player.
One under-the-radar reason Spielman is personally motivated to lead this lawsuit is that he has a 20-year relationship helping a Columbus, Ohio car dealership that sells Mazdas and Subarus. That makes his association with competitor Honda in such a public forum kind of problematic for his ability to leverage his own fame and likeness for profit in those endeavors.
That helps explain the antitrust claims in the lawsuit, claiming that OSU and its partners have illegally restrained trade on exploitation of likenesses of former players, which adversely affects the rights and opportunities for those former players. Spielman argues the players deserve some control in this matter, as well as compensation.
Once again, college football and universities are on the firing line for making a bunch of money without the participation of the players. Another salvo in the ongoing battle over the ever-increasing pots of money this sport generates.
OSU has recently moved to dismiss the federal case based on sovereign immunity of state agencies, while marketing firm IMG has filed a motion to dismiss based on failure to state an actionable claim. If those motions succeed, the lawsuit would move to state court, but Ohio does not have a right of publicity law that favors Spielman and former players in this type of circumstance. However, the cat may be out of the bag even if OSU succeeds, as other universities may then face challenges in states with more protective laws for these rights.
The Bottom Line is, as long as the money from marketing and television deals stays so ridiculously high, universities will likely remain under attack from multiple angles until players, current and former, are properly compensated. This case, while shocking to OSU fans, may be the next big landmark in progress towards what many believe to be fair: paying the players a reasonable wage, even in this so-called amateur context. We will keep our eyes on the courts in Ohio for further developments as much as we do the current teams fighting on the field for a national championship.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp117
NCAA football has been under a fairly constant barrage of legal challenges thanks to the money generation shooting to astronomical levels with very little compensation trickling down to the players that help make this product so popular. As you'll recall, the NCAA itself pulled out of the video game market thanks to a lawsuit from a former player for not sharing the wealth from those licensing deals, and current players have made moves as well like the Northwestern team considering unionizing, also previously covered on this segment.
The tide is rising in favor of compensating players, and another step in that direction took place a few weeks ago when Chris Spielman, a TV personality and former NFL player and linebacker at The Ohio State University, sued his alma mater in federal court as lead plaintiff of a class action lawsuit for antitrust violations associated with marketing activities done by OSU and their marketing firm IMG College. For any familiar with OSU football, the mere thought of a lawsuit entitled Spielman vs. OSU is shocking.
Spielman has promised to turn any winnings in the case back over to the university, so this is really just to make a point and push against the current way the university uses the likenesses of former players in marketing materials. For example, OSU and IMG do deals with companies like Nike and Honda, and banners will be hung in the stadium and elsewhere with old Buckeye greats and the company logos on them. Spielman, being one of the most iconic former OSU players, is typically one depicted. But he receives no royalty for the use of his likeness as a former player.
One under-the-radar reason Spielman is personally motivated to lead this lawsuit is that he has a 20-year relationship helping a Columbus, Ohio car dealership that sells Mazdas and Subarus. That makes his association with competitor Honda in such a public forum kind of problematic for his ability to leverage his own fame and likeness for profit in those endeavors.
That helps explain the antitrust claims in the lawsuit, claiming that OSU and its partners have illegally restrained trade on exploitation of likenesses of former players, which adversely affects the rights and opportunities for those former players. Spielman argues the players deserve some control in this matter, as well as compensation.
Once again, college football and universities are on the firing line for making a bunch of money without the participation of the players. Another salvo in the ongoing battle over the ever-increasing pots of money this sport generates.
OSU has recently moved to dismiss the federal case based on sovereign immunity of state agencies, while marketing firm IMG has filed a motion to dismiss based on failure to state an actionable claim. If those motions succeed, the lawsuit would move to state court, but Ohio does not have a right of publicity law that favors Spielman and former players in this type of circumstance. However, the cat may be out of the bag even if OSU succeeds, as other universities may then face challenges in states with more protective laws for these rights.
The Bottom Line is, as long as the money from marketing and television deals stays so ridiculously high, universities will likely remain under attack from multiple angles until players, current and former, are properly compensated. This case, while shocking to OSU fans, may be the next big landmark in progress towards what many believe to be fair: paying the players a reasonable wage, even in this so-called amateur context. We will keep our eyes on the courts in Ohio for further developments as much as we do the current teams fighting on the field for a national championship.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Friday, September 29, 2017
Legal Geek No. 116: The Gerrymandering Case
Welcome back to Legal Geek. This week, we take a look at one of the more interesting Supreme Court cases of this term about to come up for oral argument, the partisan gerrymandering case entitled Gill v. Whitford.
https://archive.org/details/LegalGeekEp116
https://archive.org/details/LegalGeekEp116
Gerrymandering is a fun word, but most people do not know what it means. Gerrymandering is the practice of drawing electoral district lines to determine what regions vote for what politicians, in such a manner that attempts to provide an advantage for a political party, or a race, or some other group. As most states reconsider and redraw their districts every 10 years following the Census, this practice is a concern that comes up periodically in some parts of the country.
This Supreme Court case stems from Wisconsin, where republicans narrowly took control of the state legislature and the governor's mansion in 2010 during the post-Obama rising tide of that party. This was the first time in over 100 years that party had such control of all branches of state government. When the Census came out and the electoral districts were to be re-drawn, the Wisconsin GOP leadership secretly planned and then pushed through a new set of electoral districts that was highly tailored to maximize all advantages Republicans could have in the state.
For example, one city in Wisconsin that had previously been a Democratic stronghold was split between two districts and combined with republican suburbs in such a way that Republicans held a strong lead in both new districts. Between 2008 and 2012, this district swung from being +20% for Obama to +8% for Romney. Gerrymandering can work because by drawing the lines in such a way that one party's votes are wasted more, such as by being in overwhelmingly one-sided districts in their favor or in close districts not in their favor, does end up having a big effect on outcome.
For example, the state of Wisconsin has swing back to leaning democrat, but despite having only 48% of the popular vote statewide, the republicans won 61% of seats in the state legislature last year. That's a 13% efficiency gap, and it all stems from this alleged gerrymandering. Other states beyond Wisconsin have had similar issues crop up, including in favor of Democrats, but none have reached this level of efficiency gap between popular vote and actual results. So this appears to be the perfect fact pattern to see if the Supreme Court will step in.
The last time this issue came up at the Supreme Court was 2004, and the decision was 5-4 declining to consider a gerrymandering claim. Four conservative justices deemed this outside the scope of courts, as a purely legislative matter, while Justice Kennedy was a fifth justice who wrote a concurring opinion noting that actual standards or a test would need to be developed for him to be comfortable with weighing in on such an issue. With Kennedy still being the swing vote on today's court, the plaintiffs are trying to create a fact pattern and a test based on the efficiency gap numbers and the actual intent of the legislature making the gerrymandering to address his concerns from 2004 regarding no clear test for what is constitutional and what is not.
The bottom line is, this will be a fascinating case, as it pits the conservative tendencies of Kennedy and other similar justices to say out of realms courts do not normally belong in, with the realities of legislatures going out of control and effectively stacking the deck against a majority of voters in a state like Wisconsin. If the Supreme Court does not act on this case, gerrymandering based on political partisanship is something that may never go away in some states. We will keep you apprised as the case develops further.
----------------------------------
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp116
https://archive.org/details/LegalGeekEp116
Gerrymandering is a fun word, but most people do not know what it means. Gerrymandering is the practice of drawing electoral district lines to determine what regions vote for what politicians, in such a manner that attempts to provide an advantage for a political party, or a race, or some other group. As most states reconsider and redraw their districts every 10 years following the Census, this practice is a concern that comes up periodically in some parts of the country.
This Supreme Court case stems from Wisconsin, where republicans narrowly took control of the state legislature and the governor's mansion in 2010 during the post-Obama rising tide of that party. This was the first time in over 100 years that party had such control of all branches of state government. When the Census came out and the electoral districts were to be re-drawn, the Wisconsin GOP leadership secretly planned and then pushed through a new set of electoral districts that was highly tailored to maximize all advantages Republicans could have in the state.
For example, one city in Wisconsin that had previously been a Democratic stronghold was split between two districts and combined with republican suburbs in such a way that Republicans held a strong lead in both new districts. Between 2008 and 2012, this district swung from being +20% for Obama to +8% for Romney. Gerrymandering can work because by drawing the lines in such a way that one party's votes are wasted more, such as by being in overwhelmingly one-sided districts in their favor or in close districts not in their favor, does end up having a big effect on outcome.
For example, the state of Wisconsin has swing back to leaning democrat, but despite having only 48% of the popular vote statewide, the republicans won 61% of seats in the state legislature last year. That's a 13% efficiency gap, and it all stems from this alleged gerrymandering. Other states beyond Wisconsin have had similar issues crop up, including in favor of Democrats, but none have reached this level of efficiency gap between popular vote and actual results. So this appears to be the perfect fact pattern to see if the Supreme Court will step in.
The last time this issue came up at the Supreme Court was 2004, and the decision was 5-4 declining to consider a gerrymandering claim. Four conservative justices deemed this outside the scope of courts, as a purely legislative matter, while Justice Kennedy was a fifth justice who wrote a concurring opinion noting that actual standards or a test would need to be developed for him to be comfortable with weighing in on such an issue. With Kennedy still being the swing vote on today's court, the plaintiffs are trying to create a fact pattern and a test based on the efficiency gap numbers and the actual intent of the legislature making the gerrymandering to address his concerns from 2004 regarding no clear test for what is constitutional and what is not.
The bottom line is, this will be a fascinating case, as it pits the conservative tendencies of Kennedy and other similar justices to say out of realms courts do not normally belong in, with the realities of legislatures going out of control and effectively stacking the deck against a majority of voters in a state like Wisconsin. If the Supreme Court does not act on this case, gerrymandering based on political partisanship is something that may never go away in some states. We will keep you apprised as the case develops further.
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Friday, September 22, 2017
Legal Geek No. 115: A Marriage between Tribal Sovereign Immunity and Pharma Patents
Welcome back to Legal Geek. This week, we briefly discuss the Stranger Things Cease & Desist letter story also covered on the main show, and then dive into an ever stranger thing: a marriage between pharmaceutical patents and tribal sovereign immunity.
https://archive.org/details/LegalGeekEp115
As discussed earlier, lawyers for Netflix earned a lot of positive press in sending a nice version of a Cease and Desist letter to a temporary pop-up bar that used the IP of the show Stranger Things without authorization or license. While it's not always appropriate to take a softer approach and have fun with in-jokes in this setting, dealing with fans of a brand is a tricky situation as we've covered before on this segment, and this approach shows great legal and PR savvy on the part of Netflix. Legal Geek approves and welcomes any other nerd IP company who needs a C&D written with in jokes to come contact me.
Now, on to our main course this week, which is also a bit of legal ingenuity. Pharmaceutical company Allergan, who makes the Restasis eyedrops that generate $1.5 billion dollars
per year, hit the legal newswaves in a big way this week as they defend from claims that their patents covering these eyedrops are invalid. Patents can be challenged in federal court lawsuits as well as in post grant review proceedings at the Patent Trial and Appeal Board of the Patent Office. However, both of these are federal bodies, and that brings us to the interesting legal theory Allergan is now employing.
Just like how states have sovereign immunity from federal lawsuits under the constitution, many Native American tribes have sovereign immunity from similar federal actions. Thus, Allergan has recently paid a New York tribe to transfer patents covering the eyedrops to the tribe and then implicitly license the rights back to make the eyedrop medication. The tribe, as the rightful owner of these patents being challenged, is now claiming that these challenges in the Patent Office and federal court should be dismissed because they have tribal sovereign immunity from such federal actions.
The legal theory of applying tribal immunity appears to be sound, as the same theory has worked to protect State University owned patents from similar reviews and challenges. But is this a sham transaction that opens a massive end around for companies to avoid challenges to their patents, or a legitimate legal and business arrangement? That question has opened some great public debate this week.
On one hand, the tribes who take advantage of this situation should be commended for finding ways beyond things like casinos to generate revenue and support their members. However, it could risk the legitimacy of applying tribal sovereign immunity in this and other contexts, should the courts or Congress deem it an improper abuse of the power. The patent world will be watching closely as this progresses to briefing and argument in the coming weeks, as if Allergan is successful, a whole new world of business opportunities will open up to the recognized tribes of the U.S.
The Bottom Line is, never doubt the ability of lawyers to come up with some interesting loophole or novel legal strategy, especially when billions of dollars are at stake. While it's certainly not great for the patent system if this is a valid workaround, it makes a great story and some money for Native American tribes who have had it rough, in some parts of the country. Now excuse me while I dial up my local tribe to set up a mutually beneficial business arrangement...
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp115
As discussed earlier, lawyers for Netflix earned a lot of positive press in sending a nice version of a Cease and Desist letter to a temporary pop-up bar that used the IP of the show Stranger Things without authorization or license. While it's not always appropriate to take a softer approach and have fun with in-jokes in this setting, dealing with fans of a brand is a tricky situation as we've covered before on this segment, and this approach shows great legal and PR savvy on the part of Netflix. Legal Geek approves and welcomes any other nerd IP company who needs a C&D written with in jokes to come contact me.
Now, on to our main course this week, which is also a bit of legal ingenuity. Pharmaceutical company Allergan, who makes the Restasis eyedrops that generate $1.5 billion dollars
per year, hit the legal newswaves in a big way this week as they defend from claims that their patents covering these eyedrops are invalid. Patents can be challenged in federal court lawsuits as well as in post grant review proceedings at the Patent Trial and Appeal Board of the Patent Office. However, both of these are federal bodies, and that brings us to the interesting legal theory Allergan is now employing.
Just like how states have sovereign immunity from federal lawsuits under the constitution, many Native American tribes have sovereign immunity from similar federal actions. Thus, Allergan has recently paid a New York tribe to transfer patents covering the eyedrops to the tribe and then implicitly license the rights back to make the eyedrop medication. The tribe, as the rightful owner of these patents being challenged, is now claiming that these challenges in the Patent Office and federal court should be dismissed because they have tribal sovereign immunity from such federal actions.
The legal theory of applying tribal immunity appears to be sound, as the same theory has worked to protect State University owned patents from similar reviews and challenges. But is this a sham transaction that opens a massive end around for companies to avoid challenges to their patents, or a legitimate legal and business arrangement? That question has opened some great public debate this week.
On one hand, the tribes who take advantage of this situation should be commended for finding ways beyond things like casinos to generate revenue and support their members. However, it could risk the legitimacy of applying tribal sovereign immunity in this and other contexts, should the courts or Congress deem it an improper abuse of the power. The patent world will be watching closely as this progresses to briefing and argument in the coming weeks, as if Allergan is successful, a whole new world of business opportunities will open up to the recognized tribes of the U.S.
The Bottom Line is, never doubt the ability of lawyers to come up with some interesting loophole or novel legal strategy, especially when billions of dollars are at stake. While it's certainly not great for the patent system if this is a valid workaround, it makes a great story and some money for Native American tribes who have had it rough, in some parts of the country. Now excuse me while I dial up my local tribe to set up a mutually beneficial business arrangement...
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Friday, September 15, 2017
Legal Geek No. 114: Rubik's Cube continues IP Enforcement
Welcome back to Legal Geek. This week, we review a recent lawsuit filed by the makers of the iconic Rubik's Cube against competitors, as it reveals how IP protection can extend for many decades in some contexts.
https://archive.org/details/LegalGeekEp114
A couple weeks ago, Rubik's Brand Limited, the company behind current sales and marketing of the Rubik's Cube puzzle, sued big companies Duncan Toys and Toys R Us in federal court in New York for a series of claims related to alleged knockoff cube puzzles made and sold by the latter. These claims include trademark infringement, false designation of origin, trademark dilution, and unfair business practice under state laws.
There are some differences between the products. While the traditional Rubik's Cube has black background behind the facets and generally square facet corners, the competitor design has white background and rounded edge facets. The competitor design sells for a cheaper price as well according to Toys R Us's website. But in all other ways, the 3 by 3 block puzzles are functionally the same. And those changes, according to Rubik's Brand, are not sufficient to avoid infringement of the intellectual property still pending on the original Rubik's Cube.
You may be asking yourself, how could a functional puzzle like the Rubik's Cube still be covered with it being widely available since the 1980s? This illustrates the difference between patent protection and trademark or design mark protection. The patents in the U.S. and elsewhere on the Rubik's Cube expired in 2000, so from a patent perspective on the general mechanics of a rotating face, cube-like puzzle, this puzzle is in the public domain.
However, companies can also bolster or make fallback protection on products like this by filing trademark applications. Trademarks can be filed on product names, as you know, but design marks are also possible if the product appearance itself is sufficiently distinctive to identify to a consumer the source of the goods. Logos are trademarked as a design mark, for example.
Rubik's secured two U.S. design marks that cover a black cube having nine color patches on each of its faces with the patches having the colors red, white, blue, green, yellow and orange. Note that the design includes color identifying features in this context rather than the general mechanics of the cube puzzle, as that would be what patent covers. As long as Rubik's continues to use that design by selling in commerce or licensing, these trademark rights can be maintained indefinitely. So while this is narrower coverage than patent claims, it continues on and creates the basis for lawsuits like this one.
So, how does this one come out? While I'm no expert with respect to New York business practice laws, the design mark infringement case has some merit. Even though the knockoff is a white cube instead of a black cube, the colors chosen for the facets are the same six colors, and one could argue that this is the core essence of the design mark. It probably comes down to survey evidence on whether consumers are likely to be confused about the Duncan version being authorized or from Rubik's, and that's at least plausible. I personally would feel more confident in Duncan's chances had it changed one or two of the facet colors on the competitor puzzle as well, but that's not what happened.
The Bottom Line is, just because a patent expires and puts a product in the public domain, that does not mean the creator has lost all potential rights. It is wise to check for and design around later patent filings on further developments as well as any trademark and copyright registrations, before bringing a product to market. Otherwise, you could be stuck in a Rubik's Cube of legalese and court orders!
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp114
A couple weeks ago, Rubik's Brand Limited, the company behind current sales and marketing of the Rubik's Cube puzzle, sued big companies Duncan Toys and Toys R Us in federal court in New York for a series of claims related to alleged knockoff cube puzzles made and sold by the latter. These claims include trademark infringement, false designation of origin, trademark dilution, and unfair business practice under state laws.
There are some differences between the products. While the traditional Rubik's Cube has black background behind the facets and generally square facet corners, the competitor design has white background and rounded edge facets. The competitor design sells for a cheaper price as well according to Toys R Us's website. But in all other ways, the 3 by 3 block puzzles are functionally the same. And those changes, according to Rubik's Brand, are not sufficient to avoid infringement of the intellectual property still pending on the original Rubik's Cube.
You may be asking yourself, how could a functional puzzle like the Rubik's Cube still be covered with it being widely available since the 1980s? This illustrates the difference between patent protection and trademark or design mark protection. The patents in the U.S. and elsewhere on the Rubik's Cube expired in 2000, so from a patent perspective on the general mechanics of a rotating face, cube-like puzzle, this puzzle is in the public domain.
However, companies can also bolster or make fallback protection on products like this by filing trademark applications. Trademarks can be filed on product names, as you know, but design marks are also possible if the product appearance itself is sufficiently distinctive to identify to a consumer the source of the goods. Logos are trademarked as a design mark, for example.
Rubik's secured two U.S. design marks that cover a black cube having nine color patches on each of its faces with the patches having the colors red, white, blue, green, yellow and orange. Note that the design includes color identifying features in this context rather than the general mechanics of the cube puzzle, as that would be what patent covers. As long as Rubik's continues to use that design by selling in commerce or licensing, these trademark rights can be maintained indefinitely. So while this is narrower coverage than patent claims, it continues on and creates the basis for lawsuits like this one.
So, how does this one come out? While I'm no expert with respect to New York business practice laws, the design mark infringement case has some merit. Even though the knockoff is a white cube instead of a black cube, the colors chosen for the facets are the same six colors, and one could argue that this is the core essence of the design mark. It probably comes down to survey evidence on whether consumers are likely to be confused about the Duncan version being authorized or from Rubik's, and that's at least plausible. I personally would feel more confident in Duncan's chances had it changed one or two of the facet colors on the competitor puzzle as well, but that's not what happened.
The Bottom Line is, just because a patent expires and puts a product in the public domain, that does not mean the creator has lost all potential rights. It is wise to check for and design around later patent filings on further developments as well as any trademark and copyright registrations, before bringing a product to market. Otherwise, you could be stuck in a Rubik's Cube of legalese and court orders!
----------------------------------
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, September 7, 2017
Legal Geek No. 113: Breaking Down Nintendo's 10M Patent Infringement Loss
Welcome back to Legal Geek. This week, we take a deep dive into the patent that Nintendo is accused of infringing in a Texas case, in only the way a patent attorney can do.
https://archive.org/details/LegalGeekEp113
https://archive.org/details/LegalGeekEp113
A Texas jury found last week that the Wii Remote used with Nintendo's Wii and Wii U consoles infringed a patent owned by iLife Technologies. While the $10 Million dollar verdict will certainly be fought further in summary judgement and appeals courts, and thus is not a final decision, it is a significant potential blow for one of our favorite game companies.
In patent world, inventions can be claimed broadly sometimes so as to cover future uses and expansions of those technologies. That is precisely what happened here.
iLife Technologies developed motion-sensing accelerometer technologies to advance their commercial products, which both monitor infants to help prevent sudden infant death syndrome, and monitor elderly adults for falls that require medical attention. iLife obtained 6 U.S. patents on innovations in this field which were then used as the basis of this lawsuit. Nintendo challenged the validity of all these patents in post grant review proceedings, and that knocked out all but one of the patents, which is what Nintendo has now been deemed to infringe.
U.S. Patent No. 6,864,796 is that patent, and it covers a system within a communications device and method of evaluating movement of a body relative to the surrounding environment. The broadest system claim requires only a sensor associable with the body, a processor that processes dynamic and static accelerative phenomena detected by the sensor to determine whether a body movement is within an environmental tolerance, and communicating tolerance indicia to an outside device in response to the determination.
Claim language is a special kind of legalese, so what does that claim mean, in English? In short, it covers any system that senses movements using accelerometers and then determines and communicates whether those movements are large enough to indicate a specific type of movement beyond just environmental noise. In other words, what a Wii Remote does when it detects intentional movements and communicates them to a console to interact with video game software.
When the claims were interpreted and construed during the lawsuit, the broad ordinary meanings of these terms were adopted by the court, rather than Nintendo's attempts to read the claims more narrowly onto fall detection devices only. Certainly the narrower patent claims on the detected movements being body falls and the like are not what Nintendo Wii systems do, but those broader claims are written to cover things like Wii Remotes, even though that's outside iLife's normal commercial products and markets. And if you can prove novelty and non-obviousness over prior art inventions for the broad invention, the patent will cover future devices like how the Wii Remote is likely covered here.
With Nintendo losing on claim interpretation, the most likely path to reversing the verdict would be to show clear error in that interpretation, or show that the patent is invalid and should not have been granted. As the '796 Patent has already survived post grant review, the chances look grim for Nintendo to avoid this verdict.
The Bottom Line is, in technology fields it is difficult to beat everyone to the patent office to file on innovative ideas, especially in view of the ability to broadly claim. By filing early and often with good patent counsel, iLife Technologies can protect their own life saving devices from knockoffs, but also create revenue streams from other companies who use the same technology in their own fields. Needless to say, a $10 Million dollar verdict would pay off that investment and then some. It's also why clearance searching for new products is so vital to avoid mistakes like this, which Nintendo can probably afford but others may not be able to afford.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp113
https://archive.org/details/LegalGeekEp113
A Texas jury found last week that the Wii Remote used with Nintendo's Wii and Wii U consoles infringed a patent owned by iLife Technologies. While the $10 Million dollar verdict will certainly be fought further in summary judgement and appeals courts, and thus is not a final decision, it is a significant potential blow for one of our favorite game companies.
In patent world, inventions can be claimed broadly sometimes so as to cover future uses and expansions of those technologies. That is precisely what happened here.
iLife Technologies developed motion-sensing accelerometer technologies to advance their commercial products, which both monitor infants to help prevent sudden infant death syndrome, and monitor elderly adults for falls that require medical attention. iLife obtained 6 U.S. patents on innovations in this field which were then used as the basis of this lawsuit. Nintendo challenged the validity of all these patents in post grant review proceedings, and that knocked out all but one of the patents, which is what Nintendo has now been deemed to infringe.
U.S. Patent No. 6,864,796 is that patent, and it covers a system within a communications device and method of evaluating movement of a body relative to the surrounding environment. The broadest system claim requires only a sensor associable with the body, a processor that processes dynamic and static accelerative phenomena detected by the sensor to determine whether a body movement is within an environmental tolerance, and communicating tolerance indicia to an outside device in response to the determination.
Claim language is a special kind of legalese, so what does that claim mean, in English? In short, it covers any system that senses movements using accelerometers and then determines and communicates whether those movements are large enough to indicate a specific type of movement beyond just environmental noise. In other words, what a Wii Remote does when it detects intentional movements and communicates them to a console to interact with video game software.
When the claims were interpreted and construed during the lawsuit, the broad ordinary meanings of these terms were adopted by the court, rather than Nintendo's attempts to read the claims more narrowly onto fall detection devices only. Certainly the narrower patent claims on the detected movements being body falls and the like are not what Nintendo Wii systems do, but those broader claims are written to cover things like Wii Remotes, even though that's outside iLife's normal commercial products and markets. And if you can prove novelty and non-obviousness over prior art inventions for the broad invention, the patent will cover future devices like how the Wii Remote is likely covered here.
With Nintendo losing on claim interpretation, the most likely path to reversing the verdict would be to show clear error in that interpretation, or show that the patent is invalid and should not have been granted. As the '796 Patent has already survived post grant review, the chances look grim for Nintendo to avoid this verdict.
The Bottom Line is, in technology fields it is difficult to beat everyone to the patent office to file on innovative ideas, especially in view of the ability to broadly claim. By filing early and often with good patent counsel, iLife Technologies can protect their own life saving devices from knockoffs, but also create revenue streams from other companies who use the same technology in their own fields. Needless to say, a $10 Million dollar verdict would pay off that investment and then some. It's also why clearance searching for new products is so vital to avoid mistakes like this, which Nintendo can probably afford but others may not be able to afford.
----------------------------------
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Monday, August 14, 2017
Legal Geek No. 112: John Oliver and Coal Baron duke it out in Court
Welcome back to Legal Geek. This week, we review the latest updates in a lawsuit where HBO Comedian John Oliver is being sued by coal baron Robert Murray for a critical show segment on Murray and the coal industry aired a few weeks ago.
https://archive.org/details/LegalGeekEp112
John Oliver has done well since spinning off from his role as lead British correspondent on Jon Stewart's The Daily Show. Last Week Tonight is his news and commentary show that plays weekly on HBO. In addition to covering current events, Oliver uses this platform to put together interesting satirical pieces on industries and organizations that may have things not quite right with them. His targets this summer season have included the Border Patrol, the dialysis industry, anti-vaxxers, and the coal industry.
And it's that coal topic that brings us to this lawsuit. Oliver focused on what he deemed an industry in decline for decades as a counterpoint to President Trump's repeated promises to bring back thousands of coal mining jobs, a critical promise in some of the blue-collar states that made the difference in the election. Apparently during research for preparing the segment, Robert Murray, the CEO of leading coal companies like Murray Energy, came to loggerheads with the comedian and his show runners. Murray threatened before the coal segment aired to sue Oliver and HBO for any defamation, harassment or other injury caused by the segment.
Of course, that threat did not deter Oliver. If anything, it made him go after Murray even more directly than originally intended. He called the coal executive a geriatric Dr. Evil when covering some of the lowlights of Murray's career, including a 2007 mine collapse in Utah and a questionable explanation of the reasons why. Oliver also recounted a silly story about Murray telling his workers that the idea for starting a mine company came to him from a squirrel. The segment ends in Oliver's typical over-the-top silly fashion, with a man in a squirrel costume holding a check made out to "Eat [BLANK] Bob!"
So while Oliver wanted to make a point about having an honest conversation about the realities of the coal industry, he ended up poking the bear. Murray did sue in West Virginia court, claiming that the segment was a planned ruthless character assassination intended to incite viewers to do harm to Mr. Murray and his company, as well as claiming that the statements made served as false light invasion of privacy and intentional infliction of emotional distress. That's a lot to cover, but it all can be essentially boiled down to what is basically a slander or defamation claim against Oliver.
A first volley in the case did not go Oliver's way this week, as a motion to remove this case to federal court instead of local state court in West Virginia failed when a federal judge decided that the alleged defamatory statements made by Oliver about Murray would also likely negatively impact Murray's business based on Murray's high visibility and deep ties to the coal industry and this company. Thus, Oliver and HBO will now need to fight this out in a jurisdiction that very well may not be favorable to them.
However, Oliver does have the national spotlight on this case and it invokes interesting questions of how far free speech protection goes. The ACLU, always ready to defend free speech, has filed a hilarious amicus brief that you can find online if you want a good laugh at a legal document with section headings like "Anyone can legally say Eat [BLANK] Bob." The ACLU makes strong arguments in defense of political satire and critical reporting, while also noting that Murray has unsuccessfully sued many other outlets for defamation type suits in the last decade when he didn't like what was expressed about him. So this high profile case could help define just how far free speech protection goes when it comes to these types of shows.
The Bottom Line is, it really should come as no surprise that the strong comedic commentary of Oliver and other similar comedians sometimes leads to lawsuits like this one. Oliver probably pushed the envelope a bit by pointing his ire so directly at Murray, but it's hard to see how a context like this is not protected by the broad free speech protections in the U.S. If this case happens to go against Oliver, it could mean significant changes for many similar shows, and likely cause a chill in the commentary that most find valuable, even if we don't always agree with the views of the commentary.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp112
John Oliver has done well since spinning off from his role as lead British correspondent on Jon Stewart's The Daily Show. Last Week Tonight is his news and commentary show that plays weekly on HBO. In addition to covering current events, Oliver uses this platform to put together interesting satirical pieces on industries and organizations that may have things not quite right with them. His targets this summer season have included the Border Patrol, the dialysis industry, anti-vaxxers, and the coal industry.
And it's that coal topic that brings us to this lawsuit. Oliver focused on what he deemed an industry in decline for decades as a counterpoint to President Trump's repeated promises to bring back thousands of coal mining jobs, a critical promise in some of the blue-collar states that made the difference in the election. Apparently during research for preparing the segment, Robert Murray, the CEO of leading coal companies like Murray Energy, came to loggerheads with the comedian and his show runners. Murray threatened before the coal segment aired to sue Oliver and HBO for any defamation, harassment or other injury caused by the segment.
Of course, that threat did not deter Oliver. If anything, it made him go after Murray even more directly than originally intended. He called the coal executive a geriatric Dr. Evil when covering some of the lowlights of Murray's career, including a 2007 mine collapse in Utah and a questionable explanation of the reasons why. Oliver also recounted a silly story about Murray telling his workers that the idea for starting a mine company came to him from a squirrel. The segment ends in Oliver's typical over-the-top silly fashion, with a man in a squirrel costume holding a check made out to "Eat [BLANK] Bob!"
So while Oliver wanted to make a point about having an honest conversation about the realities of the coal industry, he ended up poking the bear. Murray did sue in West Virginia court, claiming that the segment was a planned ruthless character assassination intended to incite viewers to do harm to Mr. Murray and his company, as well as claiming that the statements made served as false light invasion of privacy and intentional infliction of emotional distress. That's a lot to cover, but it all can be essentially boiled down to what is basically a slander or defamation claim against Oliver.
A first volley in the case did not go Oliver's way this week, as a motion to remove this case to federal court instead of local state court in West Virginia failed when a federal judge decided that the alleged defamatory statements made by Oliver about Murray would also likely negatively impact Murray's business based on Murray's high visibility and deep ties to the coal industry and this company. Thus, Oliver and HBO will now need to fight this out in a jurisdiction that very well may not be favorable to them.
However, Oliver does have the national spotlight on this case and it invokes interesting questions of how far free speech protection goes. The ACLU, always ready to defend free speech, has filed a hilarious amicus brief that you can find online if you want a good laugh at a legal document with section headings like "Anyone can legally say Eat [BLANK] Bob." The ACLU makes strong arguments in defense of political satire and critical reporting, while also noting that Murray has unsuccessfully sued many other outlets for defamation type suits in the last decade when he didn't like what was expressed about him. So this high profile case could help define just how far free speech protection goes when it comes to these types of shows.
The Bottom Line is, it really should come as no surprise that the strong comedic commentary of Oliver and other similar comedians sometimes leads to lawsuits like this one. Oliver probably pushed the envelope a bit by pointing his ire so directly at Murray, but it's hard to see how a context like this is not protected by the broad free speech protections in the U.S. If this case happens to go against Oliver, it could mean significant changes for many similar shows, and likely cause a chill in the commentary that most find valuable, even if we don't always agree with the views of the commentary.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Friday, August 11, 2017
Legal Geek No. 111: The Switch Hitch and Liability Laws
Welcome back to Legal Geek. This week, we review an interesting trademark battle brewing for Nintendo and answer a listener's question from last week's main show.
https://archive.org/details/LegalGeekEp111
Nintendo is having its best year at retail since the release of the Wii, and while it may be hard to get your hands on their classic and new systems, there's no debating that the Nintendo Switch has been a positive development for this company. Of course, as with any new huge product line, Nintendo has sought trademark registration for the Switch in the U.S. and other jurisdictions.
However, that trademark registration hit a snag recently in the U.S. when an opposition was filed against the allowed application for Switch. Every allowed trademark application goes through a short publication period where third parties can oppose the mark before a final registration occurs, and that's what happened here. The opposing party is Life Covenant Church Inc., an Oklahoma based chain of megachurches, which probably not exactly who you would expect. Life Covenant has a registration from 2005 for the word Switch, a name used by the church network for youth programs aimed at teenagers.
Nintendo's application covers a wide sprawling list of goods and services in different classes, including video games, toys, office supplies, internet services, software, and the like. Thus, Life Covenant has argued that the overlap between this sprawling list from Nintendo and their own trademark registration could lead to consumer confusion regarding these two parties being in some way connected, associated, or working together. That may seem far fetched to a common man, but this is the risk when big companies try to lock down important marks in tons of fields, not just their primary field, in this case video games.
So how does this play out? The parties could agree to co-exist, which might happen if Nintendo offers some compensation for use of the senior user's registered trademark. Alternatively, some of the goods and services covered by Nintendo's application could be deleted out to try and avoid the overlap between the parties. It's probably a minor hitch for the Switch branding, but perhaps this conflict could go to the courts as well if the parties don't become amicable. A church against video games...it's made for TV court drama already!
The Bottom Line is, even big companies need to be careful when tailoring their description of goods and services in trademark applications. If you shoot too broadly for the sake of branding, you risk some big expense and annoyances in the opposition process in the U.S. and other countries.
And now, this: (insert "Dave's not here, man" bumper)
MKB asked last week how we legally solve the local liability laws for self-driving cars. Tom gave a great answer regarding the cars just sending money into the current insurance system, but there's other options as well. Many states already allow for alternatives like posting an amount of bond money similar to minimum coverage limits, or self-insurance for fleets of vehicles. If self-driving cars don't fit neatly into a current exception or alternative, we could write new ones in state or federal law. Also, a different system could be made where cars pay taxes into a government fund that helps cover damages when accidents occur...it would dovetail with a government-assisted health care system, for example. The short answer is, if the current laws don't work right, that's what legislators are elected for, to change them! Thanks for your question.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp111
Nintendo is having its best year at retail since the release of the Wii, and while it may be hard to get your hands on their classic and new systems, there's no debating that the Nintendo Switch has been a positive development for this company. Of course, as with any new huge product line, Nintendo has sought trademark registration for the Switch in the U.S. and other jurisdictions.
However, that trademark registration hit a snag recently in the U.S. when an opposition was filed against the allowed application for Switch. Every allowed trademark application goes through a short publication period where third parties can oppose the mark before a final registration occurs, and that's what happened here. The opposing party is Life Covenant Church Inc., an Oklahoma based chain of megachurches, which probably not exactly who you would expect. Life Covenant has a registration from 2005 for the word Switch, a name used by the church network for youth programs aimed at teenagers.
Nintendo's application covers a wide sprawling list of goods and services in different classes, including video games, toys, office supplies, internet services, software, and the like. Thus, Life Covenant has argued that the overlap between this sprawling list from Nintendo and their own trademark registration could lead to consumer confusion regarding these two parties being in some way connected, associated, or working together. That may seem far fetched to a common man, but this is the risk when big companies try to lock down important marks in tons of fields, not just their primary field, in this case video games.
So how does this play out? The parties could agree to co-exist, which might happen if Nintendo offers some compensation for use of the senior user's registered trademark. Alternatively, some of the goods and services covered by Nintendo's application could be deleted out to try and avoid the overlap between the parties. It's probably a minor hitch for the Switch branding, but perhaps this conflict could go to the courts as well if the parties don't become amicable. A church against video games...it's made for TV court drama already!
The Bottom Line is, even big companies need to be careful when tailoring their description of goods and services in trademark applications. If you shoot too broadly for the sake of branding, you risk some big expense and annoyances in the opposition process in the U.S. and other countries.
And now, this: (insert "Dave's not here, man" bumper)
MKB asked last week how we legally solve the local liability laws for self-driving cars. Tom gave a great answer regarding the cars just sending money into the current insurance system, but there's other options as well. Many states already allow for alternatives like posting an amount of bond money similar to minimum coverage limits, or self-insurance for fleets of vehicles. If self-driving cars don't fit neatly into a current exception or alternative, we could write new ones in state or federal law. Also, a different system could be made where cars pay taxes into a government fund that helps cover damages when accidents occur...it would dovetail with a government-assisted health care system, for example. The short answer is, if the current laws don't work right, that's what legislators are elected for, to change them! Thanks for your question.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Friday, August 4, 2017
Legal Geek No. 110: Pokemon Go hits Anniversary and Legal Battles
Welcome back to Legal Geek. This week, we update you on a couple interesting legal battles for the software app Pokémon Go, which just celebrated it's one year anniversary.
https://archive.org/details/LegalGeekEp110
https://archive.org/details/LegalGeekEp110
As Pokémon Go reaches one year old, there is still a strong player base enjoying the augmented reality hunt, as evidenced by the popularity of the new raid system and recently-released legendaries. While this may be good for Niantic and The Pokémon Company's profits, it also means the legal battles will continue.
We covered the novel virtual trespassing claims brought against Pokémon Go a couple months back, but there are another two lawsuits having recent progress. First, the actual one-year anniversary of the app was celebrated with a Pokémon Go Fest celebration in Chicago. Needless to say, it did not go well as the lines to enter stretched for hours, and the game's servers and local cell networks failed to meet the demand at this event, which was all about playing the game. It went so poorly that Niantic gave all attendees their registration fee back as well as $100 in game currency.
Predictably, that was not enough to avoid a class action lawsuit that was filed this week on behalf of those who spent much more money traveling from far away places to attend the event in Chicago. The theory is simple: Niantic advertised an event where playing the game was the main attraction, and then did not deliver, causing many to spend significant money and time they would not have spent if they knew the problems that were to occur.
Class action lawsuits are a messy tangle of procedure, so we will save those details for another segment. However, this mechanism allows small parties to group together to take on a big company like Niantic when an grievance like this occurs to many people. Given that Niantic tried to quell their consumers with in game currency and refunds, I would strongly suspect this one never goes to a full trial, but instead will be settled so that the plaintiffs all get a small sum of money, and Niantic can move on. It likely won't cover their actual expenses, or anything close to it, but it will likely change Niantic's work in the future to make sure event faux pas like this do not happen again.
In addition to that lawsuit regarding the Chicago Go Fest, another legal conflict ongoing in Wisconsin had a major development this week. As you'll recall, Milwaukee County enacted a regulation in February requiring augmented reality game developers to go through a rigorous approval process with several very expensive requirement to operate in Milwaukee's parks. Although this targeted Niantic and Pokémon Go, another game developer Candy Labs challenged this in court and won an injunction this week from the court against enforcement of the regulation until a full trial, scheduled in early 2018. For now, Niantic and others can operate for players in this area again.
The legal challenge to the regulation based on First Amendment free speech protections is a close call in my initial view. But it's a good sign that the judge entered an injunction, as that typically means there's a good chance to prevail at trial also.
The Bottom Line is, many people may have moved on from Pokémon Go, but the app is still popular enough to have legal conflicts come up, especially in view of the money Niantic is making on the app. These lawsuits have some significant cutting edge issues for VR and augmented reality that will set the table for those types of technology moving forward, so the court battles of Snorlax and Dragonite cannot be ignored!
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp110
https://archive.org/details/LegalGeekEp110
As Pokémon Go reaches one year old, there is still a strong player base enjoying the augmented reality hunt, as evidenced by the popularity of the new raid system and recently-released legendaries. While this may be good for Niantic and The Pokémon Company's profits, it also means the legal battles will continue.
We covered the novel virtual trespassing claims brought against Pokémon Go a couple months back, but there are another two lawsuits having recent progress. First, the actual one-year anniversary of the app was celebrated with a Pokémon Go Fest celebration in Chicago. Needless to say, it did not go well as the lines to enter stretched for hours, and the game's servers and local cell networks failed to meet the demand at this event, which was all about playing the game. It went so poorly that Niantic gave all attendees their registration fee back as well as $100 in game currency.
Predictably, that was not enough to avoid a class action lawsuit that was filed this week on behalf of those who spent much more money traveling from far away places to attend the event in Chicago. The theory is simple: Niantic advertised an event where playing the game was the main attraction, and then did not deliver, causing many to spend significant money and time they would not have spent if they knew the problems that were to occur.
Class action lawsuits are a messy tangle of procedure, so we will save those details for another segment. However, this mechanism allows small parties to group together to take on a big company like Niantic when an grievance like this occurs to many people. Given that Niantic tried to quell their consumers with in game currency and refunds, I would strongly suspect this one never goes to a full trial, but instead will be settled so that the plaintiffs all get a small sum of money, and Niantic can move on. It likely won't cover their actual expenses, or anything close to it, but it will likely change Niantic's work in the future to make sure event faux pas like this do not happen again.
In addition to that lawsuit regarding the Chicago Go Fest, another legal conflict ongoing in Wisconsin had a major development this week. As you'll recall, Milwaukee County enacted a regulation in February requiring augmented reality game developers to go through a rigorous approval process with several very expensive requirement to operate in Milwaukee's parks. Although this targeted Niantic and Pokémon Go, another game developer Candy Labs challenged this in court and won an injunction this week from the court against enforcement of the regulation until a full trial, scheduled in early 2018. For now, Niantic and others can operate for players in this area again.
The legal challenge to the regulation based on First Amendment free speech protections is a close call in my initial view. But it's a good sign that the judge entered an injunction, as that typically means there's a good chance to prevail at trial also.
The Bottom Line is, many people may have moved on from Pokémon Go, but the app is still popular enough to have legal conflicts come up, especially in view of the money Niantic is making on the app. These lawsuits have some significant cutting edge issues for VR and augmented reality that will set the table for those types of technology moving forward, so the court battles of Snorlax and Dragonite cannot be ignored!
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Wednesday, July 26, 2017
Legal Geek for July 27 Pokemon Go Podcast
In addition to that interesting virtual trespassing lawsuit, another legal conflict ongoing in Wisconsin had a major development this week. As you'll recall, Milwaukee County enacted a regulation in February requiring augmented reality game developers to go through a rigorous approval process with several very expensive requirement to operate in Milwaukee's parks. Although this targeted Niantic and Pokémon Go, another game developer Candy Labs challenged this in court and won an injunction this week from the court against enforcement of the regulation until a full trial, scheduled in early 2018. For now, Niantic and others can operate for players in this area again.
I will analyze this in detail on Current Geek as the trial occurs, but the legal challenge to the regulation based on First Amendment free speech protections is a close call in my initial view. But it's a good sign that the judge entered an injunction, as that typically means there's a good chance to prevail at trial also. So Niantic didn't just win with the anniversary event and legendary raids this week!
As always, check out my segment on Current Geek, and send feedback at BuckeyeFitzy on discord or Twitter.
I will analyze this in detail on Current Geek as the trial occurs, but the legal challenge to the regulation based on First Amendment free speech protections is a close call in my initial view. But it's a good sign that the judge entered an injunction, as that typically means there's a good chance to prevail at trial also. So Niantic didn't just win with the anniversary event and legendary raids this week!
As always, check out my segment on Current Geek, and send feedback at BuckeyeFitzy on discord or Twitter.
Thursday, July 13, 2017
Legal Geek No. 109: Interesting Canadian Cases show significant differences "Up North"
Welcome back to Legal Geek. This week, we update you on a couple interesting legal battles ongoing in Canada, which show significant differences from similar conflicts and issues faced down here in the U.S.
https://archive.org/details/LegalGeekEp109
https://archive.org/details/LegalGeekEp109
Last week this segment covered in detail how free speech protection cut down the U.S. trademark law prohibiting registration of so-called offensive or disparaging trademarks. Free speech in the context of offensive words and government programs appear to have different standards in Canada, as evidenced again this week in a conflict involving license plate registrations.
A Star Trek fan had the license plate ASIMIL8, in other words, assimilate, but this registration was revoked by the local authorities in Manitoba because two indigenous people had lodged complaints that the plate was offensive to them. Of course, the counterargument is that the license plate refers to the much different context of Star Trek and the Borg, made more obvious by a license plate holder that says "We are the Borg...Resistance is futile." However, with no appeals process available at the registration board, the Star Trek fan will have to go to court to try and have this issue overturned.
It's another intersection between potentially offensive speech and government registration programs, just like the U.S. case last week. But this time, Canada appears to lean more in favor of speech restrictions to avoid offense to others, at least more so than the U.S. standards.
A similar case is pending on a license plate GRABHER, which was deemed offensive to women but was registered by someone having that last name. It will be interesting to see how far free speech protection goes in Canada when taken to the courts in this context, even though the preliminary results don't look favorable.
Another interesting legal decision occurred in Canada regarding trademarks and trade dress a couple weeks ago, when the makers of Captain Morgan rum shut down competitor Admiral Nelson from selling that competing rum using the trademarks and packaging similar to Captain Morgan's registered and common law marks. The makers of Captain Morgan supplied enough evidence of potential consumer confusion to sustain the trademark infringement and false passing off claims.
So therefore, Admiral Nelson will walk the plank for now as a rebrand for this rum product will be required in Canada. Hearthstone fans might say Captain Morgan is now in charrrge of the nautical themed rum market up north. Regardless, I'm sure you can find plenty of good rums to fill your tropical drinks during this mid summertime heat.
The Bottom Line is, laws and constitutional protections vary from country to country, sometimes wildly. Although the Legal Geek is no expert on Canadian law, it is fascinating to see the different lines drawn in the sand on legal topics that are much the same in conflicts we cover regularly in the U.S.
The main show hosts are set to be on vacation the next couple weeks, so please enjoy the summer break and send in topics to refill the Legal Geek hopper heading into August. See you then!
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp109
https://archive.org/details/LegalGeekEp109
Last week this segment covered in detail how free speech protection cut down the U.S. trademark law prohibiting registration of so-called offensive or disparaging trademarks. Free speech in the context of offensive words and government programs appear to have different standards in Canada, as evidenced again this week in a conflict involving license plate registrations.
A Star Trek fan had the license plate ASIMIL8, in other words, assimilate, but this registration was revoked by the local authorities in Manitoba because two indigenous people had lodged complaints that the plate was offensive to them. Of course, the counterargument is that the license plate refers to the much different context of Star Trek and the Borg, made more obvious by a license plate holder that says "We are the Borg...Resistance is futile." However, with no appeals process available at the registration board, the Star Trek fan will have to go to court to try and have this issue overturned.
It's another intersection between potentially offensive speech and government registration programs, just like the U.S. case last week. But this time, Canada appears to lean more in favor of speech restrictions to avoid offense to others, at least more so than the U.S. standards.
A similar case is pending on a license plate GRABHER, which was deemed offensive to women but was registered by someone having that last name. It will be interesting to see how far free speech protection goes in Canada when taken to the courts in this context, even though the preliminary results don't look favorable.
Another interesting legal decision occurred in Canada regarding trademarks and trade dress a couple weeks ago, when the makers of Captain Morgan rum shut down competitor Admiral Nelson from selling that competing rum using the trademarks and packaging similar to Captain Morgan's registered and common law marks. The makers of Captain Morgan supplied enough evidence of potential consumer confusion to sustain the trademark infringement and false passing off claims.
So therefore, Admiral Nelson will walk the plank for now as a rebrand for this rum product will be required in Canada. Hearthstone fans might say Captain Morgan is now in charrrge of the nautical themed rum market up north. Regardless, I'm sure you can find plenty of good rums to fill your tropical drinks during this mid summertime heat.
The Bottom Line is, laws and constitutional protections vary from country to country, sometimes wildly. Although the Legal Geek is no expert on Canadian law, it is fascinating to see the different lines drawn in the sand on legal topics that are much the same in conflicts we cover regularly in the U.S.
The main show hosts are set to be on vacation the next couple weeks, so please enjoy the summer break and send in topics to refill the Legal Geek hopper heading into August. See you then!
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, June 22, 2017
Legal Geek No. 108: Ban on Disparaging Trademarks slants to Unconstitutional
Welcome back to Legal Geek. This week, we review the biggest Supreme Court trademark decision of the term, which dropped this week in Matal v. Tam.
https://archive.org/details/LegalGeekEp108
In the Lanham Act that defines federal trademark rights in the U.S., Section 2 defines a series of grounds upon which a trademark application can be refused registration. One of these grounds is if the trademark consists of "matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute". In other words, offensive and disparaging trademarks can be denied registration under this so-called disparagement clause. This clause has been in effect for over 70 years, as it was in the original 1946 Lanham Act.
As you'll recall, both the Washington Redskins football franchise and the Asian rock band The Slants were fighting separate high-profile court battles to contest the constitutionality of this disparagement clause. We most recently discussed this 18 months ago when The Slants won at the intermediate federal court, but this case was taken up by the Supreme Court to settle it for all such disputes. And this week, The Slants won again.
The Slants are comprised of Asian-Americans, and while their band name is a derogatory term towards their race, they chose the band name to reclaim the term and drain any denigrating force it had over people of their race. Simon Tam, a singer in the band and lead plaintiff in this case, was denied federal trademark registration based on the disparagement clause of the Lanham Act. Despite presenting boatloads of survey evidence and arguments to convince the Examining Attorney at the US Trademark Office that there was no disparaging effect, but quite the opposite, the trademark was always denied.
By the time this case reached the higher courts, the key issue became whether the ban on disparaging trademarks is constitutional, or a violation of First Amendment free speech rights. Although the final opinion is complicated with many concurring opinions, the primary part of the Supreme Court decision was a unanimous 8-0 in favor of striking this disparagement clause as an unconstitutional violation of First Amendment rights.
The government tried to argue that trademarks are government speech, which is not subjected to First Amendment scrutiny. The Court disagreed, determining that trademarks are definitely private speech because if the whole register of trademarks were considered government speech, the government would be babbling "prodigiously and incoherently" according to Justice Alito's opinion. In short, if a limited government approval process were enough to convert private speech to government speech, this would be a dramatic expansion of items not covered by Free Speech protections, including potentially all copyright registrations. That's not a step the Supreme Court was comfortable with, for obvious reasons.
Unlike the rest of the trademark refusal grounds in Section 2 of the Lanham Act, which are viewpoint neutral and are based on things relating to consumer confusion as to the source of goods and services, AKA the entire point of trademark law, the disparagement clause discriminates based on particular viewpoints. It does not fit with the rest of trademark law, and it violates the First Amendment in the Court's judgement, so this part of the Lanham Act is now gone after 70 years. That victory for free speech may result in some nasty word and phrase trademarks in the future, but it's a win for the Redskins and The Slants all the same.
The same section of the Lanham Act also bans immoral and scandalous marks from registration, but this also seems to be inconsistent with the rest of trademark law and will likely go down as unconstitutional in parallel cases ongoing now.
The Bottom Line is, the disparagement clause and other offensive mark refusals were always tough for Trademark Office Examining Attorneys to judge, and this ruling should bring clarity as Examiners focus more on consumer confusion and the core tenets of trademark law rather than whether something may be offensive. Even if free speech protections allow a few "bad apple" disparaging marks to be registered in the future, consumers can always vote with their wallets to effectively reject the use of such trademarks in commerce.
----------------------------------
Temporary Outro - If you will be at Nerdtacular in June, please come by and say hello. My firm is proud to be a sponsor of Nerdtacular 2017.
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp108
In the Lanham Act that defines federal trademark rights in the U.S., Section 2 defines a series of grounds upon which a trademark application can be refused registration. One of these grounds is if the trademark consists of "matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute". In other words, offensive and disparaging trademarks can be denied registration under this so-called disparagement clause. This clause has been in effect for over 70 years, as it was in the original 1946 Lanham Act.
As you'll recall, both the Washington Redskins football franchise and the Asian rock band The Slants were fighting separate high-profile court battles to contest the constitutionality of this disparagement clause. We most recently discussed this 18 months ago when The Slants won at the intermediate federal court, but this case was taken up by the Supreme Court to settle it for all such disputes. And this week, The Slants won again.
The Slants are comprised of Asian-Americans, and while their band name is a derogatory term towards their race, they chose the band name to reclaim the term and drain any denigrating force it had over people of their race. Simon Tam, a singer in the band and lead plaintiff in this case, was denied federal trademark registration based on the disparagement clause of the Lanham Act. Despite presenting boatloads of survey evidence and arguments to convince the Examining Attorney at the US Trademark Office that there was no disparaging effect, but quite the opposite, the trademark was always denied.
By the time this case reached the higher courts, the key issue became whether the ban on disparaging trademarks is constitutional, or a violation of First Amendment free speech rights. Although the final opinion is complicated with many concurring opinions, the primary part of the Supreme Court decision was a unanimous 8-0 in favor of striking this disparagement clause as an unconstitutional violation of First Amendment rights.
The government tried to argue that trademarks are government speech, which is not subjected to First Amendment scrutiny. The Court disagreed, determining that trademarks are definitely private speech because if the whole register of trademarks were considered government speech, the government would be babbling "prodigiously and incoherently" according to Justice Alito's opinion. In short, if a limited government approval process were enough to convert private speech to government speech, this would be a dramatic expansion of items not covered by Free Speech protections, including potentially all copyright registrations. That's not a step the Supreme Court was comfortable with, for obvious reasons.
Unlike the rest of the trademark refusal grounds in Section 2 of the Lanham Act, which are viewpoint neutral and are based on things relating to consumer confusion as to the source of goods and services, AKA the entire point of trademark law, the disparagement clause discriminates based on particular viewpoints. It does not fit with the rest of trademark law, and it violates the First Amendment in the Court's judgement, so this part of the Lanham Act is now gone after 70 years. That victory for free speech may result in some nasty word and phrase trademarks in the future, but it's a win for the Redskins and The Slants all the same.
The same section of the Lanham Act also bans immoral and scandalous marks from registration, but this also seems to be inconsistent with the rest of trademark law and will likely go down as unconstitutional in parallel cases ongoing now.
The Bottom Line is, the disparagement clause and other offensive mark refusals were always tough for Trademark Office Examining Attorneys to judge, and this ruling should bring clarity as Examiners focus more on consumer confusion and the core tenets of trademark law rather than whether something may be offensive. Even if free speech protections allow a few "bad apple" disparaging marks to be registered in the future, consumers can always vote with their wallets to effectively reject the use of such trademarks in commerce.
----------------------------------
Temporary Outro - If you will be at Nerdtacular in June, please come by and say hello. My firm is proud to be a sponsor of Nerdtacular 2017.
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, June 15, 2017
Legal Geek No. 107: Supreme Court Grants Cert to Evaluate Constitutionality of AIA
Welcome back to Legal Geek. This week, we continue our run through patent
law at the Supreme Court with a look at the certiorari grant that could bring
down the biggest part of the patent reforms enacted in 2012 and 2013 by
Congress.
https://archive.org/details/LegalGeekEp107
While our past two segments have focused on significant patent law decisions of the Supreme Court in the 2016 term, we're always looking ahead at Legal Geek to the next huge case. The Supreme Court did not disappoint in this regard, as it decided to grant cert for the 2017 term to a huge case called Oil States Energy Services v. Greene's Energy Group.
The issue presented in Oil States is this: whether it is constitutional for executive branch tribunals such as the Patent Office's Patent Trial and Appeal Board to invalidate patents in review proceedings, or is that invalidation process only allowable by federal courts? Let's explain first why that is such a significant question.
When enforcing a patent, one defense that can be raised is that no infringement of the claims is present, while another defense is that the patent is invalid and should never have been granted by the Patent Office. Currently, defendants can pursue invalidity claims in federal court lawsuits, but also in several review proceedings available at the Patent Office.
One type of post grant review is a reexamination by examiners, which has been around since 1980, and another type called Inter Parties Review or IPR was created by the America Invents Act in 2012. IPR is kind of a mini litigation of the validity of a patent, but done in front of the Patent Trial and Appeal Board, which hypothetically should have more patent and tech savvy judges than your average federal district court.
IPR's have been wildly popular since their creation, thanks to lower costs compared to fighting over validity in federal courts. Over 7000 IPR petitions have been filed, of which 1500 have come to final decision and 1300 of those have invalidated some or all of the patent claims reviewed. Obviously a high success rate for defendants or patent challengers.
So this question is important because it could undo 5 years of strong invalidity or opposition procedures as well as impact the reexamination process that has been in force since 1980. Countless so-called "bad patents" could come back into play if the work of the Patent Trial and Appeal Board is deemed unconstitutional. Plus, challenging patents would immediately become much more expensive and difficult.
So what will this decision turn on? In all likelihood, the argument will be won based on whether a granted patent is considered a private property right, which typically can only be revoked by courts, or a public right created by government regulation that could be revoked by governmental agencies. There are relatively compelling arguments for both positions, but the lower court at the Federal Circuit deemed patents as public rights. If the Supreme Court reverses the Federal Circuit, as they often do, this will mark a massive change in patent enforcement in the U.S. But such a decision would also be favorable to patent owners, which is typically not how the Supreme Court has come out in recent years' decisions.
The Bottom Line is, whenever a massive change in procedures and rules comes around in law, like what happened in patent law with the AIA, it's only a matter of time before these large constitutionality challenges threaten the new regime. It will be fascinating to see if the post grant review procedures from Congress survive like Obamacare did when facing similar challenges at the Supreme Court, and this shapes up to be the story of the year for next term in IP law.
----------------------------------
Temporary Outro - If you will be at Nerdtacular in June, please come by and say hello. My firm is proud to be a sponsor of Nerdtacular 2017.
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp107
While our past two segments have focused on significant patent law decisions of the Supreme Court in the 2016 term, we're always looking ahead at Legal Geek to the next huge case. The Supreme Court did not disappoint in this regard, as it decided to grant cert for the 2017 term to a huge case called Oil States Energy Services v. Greene's Energy Group.
The issue presented in Oil States is this: whether it is constitutional for executive branch tribunals such as the Patent Office's Patent Trial and Appeal Board to invalidate patents in review proceedings, or is that invalidation process only allowable by federal courts? Let's explain first why that is such a significant question.
When enforcing a patent, one defense that can be raised is that no infringement of the claims is present, while another defense is that the patent is invalid and should never have been granted by the Patent Office. Currently, defendants can pursue invalidity claims in federal court lawsuits, but also in several review proceedings available at the Patent Office.
One type of post grant review is a reexamination by examiners, which has been around since 1980, and another type called Inter Parties Review or IPR was created by the America Invents Act in 2012. IPR is kind of a mini litigation of the validity of a patent, but done in front of the Patent Trial and Appeal Board, which hypothetically should have more patent and tech savvy judges than your average federal district court.
IPR's have been wildly popular since their creation, thanks to lower costs compared to fighting over validity in federal courts. Over 7000 IPR petitions have been filed, of which 1500 have come to final decision and 1300 of those have invalidated some or all of the patent claims reviewed. Obviously a high success rate for defendants or patent challengers.
So this question is important because it could undo 5 years of strong invalidity or opposition procedures as well as impact the reexamination process that has been in force since 1980. Countless so-called "bad patents" could come back into play if the work of the Patent Trial and Appeal Board is deemed unconstitutional. Plus, challenging patents would immediately become much more expensive and difficult.
So what will this decision turn on? In all likelihood, the argument will be won based on whether a granted patent is considered a private property right, which typically can only be revoked by courts, or a public right created by government regulation that could be revoked by governmental agencies. There are relatively compelling arguments for both positions, but the lower court at the Federal Circuit deemed patents as public rights. If the Supreme Court reverses the Federal Circuit, as they often do, this will mark a massive change in patent enforcement in the U.S. But such a decision would also be favorable to patent owners, which is typically not how the Supreme Court has come out in recent years' decisions.
The Bottom Line is, whenever a massive change in procedures and rules comes around in law, like what happened in patent law with the AIA, it's only a matter of time before these large constitutionality challenges threaten the new regime. It will be fascinating to see if the post grant review procedures from Congress survive like Obamacare did when facing similar challenges at the Supreme Court, and this shapes up to be the story of the year for next term in IP law.
----------------------------------
Temporary Outro - If you will be at Nerdtacular in June, please come by and say hello. My firm is proud to be a sponsor of Nerdtacular 2017.
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Friday, June 9, 2017
Legal Geek No. 106: Patent Exhaustion Doctrine Strengthened at Supreme Court
Welcome back to Legal Geek. This week, we review another recent Supreme Court decision that clarified the rules of patent exhaustion, Impression Products v. Lexmark. We also discuss some comments from the main show last week on how this case could apply to other contexts like the John Deere copyright case.
https://archive.org/details/LegalGeekEp106
The doctrine of patent exhaustion is a limit on a patent owner's rights. Although a patent owner has the right to economically capitalize on a patented product, that right is exhausted after the product is sold. In other words, bona fide purchasers of patented products can use and sell their product as they wish, without risk of a patent infringement claim from the patent owner.
A few months ago, we previewed this case by explaining Lexmark's legal theories and the economic reasons why it would fight for broad patent enforcement rights. Lexmark and other printer companies had made primary revenue sources from the replaceable print cartridges rather than printers themselves, so this was further efforts to protect their primary source of revenue.
There were two questions about patent exhaustion brought to the Supreme Court by how Lexmark does business.
First, Lexmark had a discount program called the Return Program where cartridges were sold at a lower price subject to contractual agreement that the buyer would return the cartridge when empty, and not transfer the cartridge to anyone other than Lexmark. Lexmark argued that these contractual restrictions allowed it to sue third party resellers like Impression who bought these Return Program cartridges and then refilled and re-sold them.
The Court disagreed with Lexmark on this point in an 8-0 decision. In short, the Court ruled that a patent owner's decision to sell a product exhausts all patent rights in that item, regardless of any restrictions placed in contracts associated with the sale. While Lexmark may be able to pursue breach of contract claims, there is no patent infringement claim in this circumstance thanks to patent exhaustion. These types of post sale restrictions in sale contracts and licenses have become common in the last 20 years, so there will be a lot of adjustments made in these commercial licenses and sale agreements to account for this clarification of the rules.
Second, Lexmark would sell their cartridges in other countries at different, often lower rates, and Impression would buy those cartridges and import them to the U.S. to sell them at higher prices, while undercutting Lexmark's prices here. Lexmark argued that this importation and sale could be stopped as patent infringement.
The Court also disagreed with Lexmark here, in a 7-1 decision. The majority drew parallels to the Kirtsaeng copyright decision from 2013 on the first sale doctrine as it applied to foreign sales of textbooks. The Court found no reason to treat first sales in patent and copyright differently, so patent exhaustion again applies to exhaust all rights of a patent owner after a sale, regardless of whether that sale is in the U.S. or not. Considering that many industries beyond printer companies sell products at differing rates based on the economies of the countries they sell in, this may cause a significant shift in how patent owners price their products worldwide.
The Bottom Line is, both of these parts of the decision make it clear that patent owners get one bite at the profit apple, so we should expect significant adjustments in how markets like the print cartridge business works moving forward. Thanks to this decision, patent exhaustion applies clearly across the board, leaving companies to rely on other non-patent causes of action like contracts to control their marketplaces.
Finally, in response to the main show's discussion about extending this decision to copyright contexts like John Deere's claims to control tractor software in their sold products, it's not that far of a stretch to imagine thanks to the foreign sales part of the decision being largely based on a prior copyright decision on the same issue. However, copyright provides a significantly different set of rights than patent, so while there are some parallel rules like first sale doctrines applied in both, there's no guarantee that courts will treat these different rights in exactly the same way. In short, the legal arguments will continue on the different copyright issues, but I would expect all IP owners to adjust their business contracts and licenses to account for whatever limits may be applied to patent and copyright rights, to cover themselves via contract law, if nothing else.
----------------------------------
Temporary Outro - If you will be at Nerdtacular in June, please come by and say hello. My firm is proud to be a sponsor of Nerdtacular 2017.
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp106
The doctrine of patent exhaustion is a limit on a patent owner's rights. Although a patent owner has the right to economically capitalize on a patented product, that right is exhausted after the product is sold. In other words, bona fide purchasers of patented products can use and sell their product as they wish, without risk of a patent infringement claim from the patent owner.
A few months ago, we previewed this case by explaining Lexmark's legal theories and the economic reasons why it would fight for broad patent enforcement rights. Lexmark and other printer companies had made primary revenue sources from the replaceable print cartridges rather than printers themselves, so this was further efforts to protect their primary source of revenue.
There were two questions about patent exhaustion brought to the Supreme Court by how Lexmark does business.
First, Lexmark had a discount program called the Return Program where cartridges were sold at a lower price subject to contractual agreement that the buyer would return the cartridge when empty, and not transfer the cartridge to anyone other than Lexmark. Lexmark argued that these contractual restrictions allowed it to sue third party resellers like Impression who bought these Return Program cartridges and then refilled and re-sold them.
The Court disagreed with Lexmark on this point in an 8-0 decision. In short, the Court ruled that a patent owner's decision to sell a product exhausts all patent rights in that item, regardless of any restrictions placed in contracts associated with the sale. While Lexmark may be able to pursue breach of contract claims, there is no patent infringement claim in this circumstance thanks to patent exhaustion. These types of post sale restrictions in sale contracts and licenses have become common in the last 20 years, so there will be a lot of adjustments made in these commercial licenses and sale agreements to account for this clarification of the rules.
Second, Lexmark would sell their cartridges in other countries at different, often lower rates, and Impression would buy those cartridges and import them to the U.S. to sell them at higher prices, while undercutting Lexmark's prices here. Lexmark argued that this importation and sale could be stopped as patent infringement.
The Court also disagreed with Lexmark here, in a 7-1 decision. The majority drew parallels to the Kirtsaeng copyright decision from 2013 on the first sale doctrine as it applied to foreign sales of textbooks. The Court found no reason to treat first sales in patent and copyright differently, so patent exhaustion again applies to exhaust all rights of a patent owner after a sale, regardless of whether that sale is in the U.S. or not. Considering that many industries beyond printer companies sell products at differing rates based on the economies of the countries they sell in, this may cause a significant shift in how patent owners price their products worldwide.
The Bottom Line is, both of these parts of the decision make it clear that patent owners get one bite at the profit apple, so we should expect significant adjustments in how markets like the print cartridge business works moving forward. Thanks to this decision, patent exhaustion applies clearly across the board, leaving companies to rely on other non-patent causes of action like contracts to control their marketplaces.
Finally, in response to the main show's discussion about extending this decision to copyright contexts like John Deere's claims to control tractor software in their sold products, it's not that far of a stretch to imagine thanks to the foreign sales part of the decision being largely based on a prior copyright decision on the same issue. However, copyright provides a significantly different set of rights than patent, so while there are some parallel rules like first sale doctrines applied in both, there's no guarantee that courts will treat these different rights in exactly the same way. In short, the legal arguments will continue on the different copyright issues, but I would expect all IP owners to adjust their business contracts and licenses to account for whatever limits may be applied to patent and copyright rights, to cover themselves via contract law, if nothing else.
----------------------------------
Temporary Outro - If you will be at Nerdtacular in June, please come by and say hello. My firm is proud to be a sponsor of Nerdtacular 2017.
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, May 25, 2017
Legal Geek No. 105: The Patent "Rocket Docket" is Grounded
Welcome back to Legal Geek. This week, we review one of the first big Supreme Court decisions coming in the last few weeks of the 2017 term, the patent law venue dispute decided this week in TC Heartland vs. Kraft Foods.
https://archive.org/details/LegalGeekEp105
The law governing where patent lawsuits can be filed geographically has been a hot subject of debate as the patent troll problem intensified in the last two decades. The patent law states that a lawsuit can be filed where a defendant resides, or has a regular and established place of business. The definition of resides has been open to some differing interpretations.
Back in 1957, the Supreme Court ruled as to all venue statutes, patent and otherwise, that a company "resides" in the place it is incorporated. For many companies, that it Delaware. In 1990, the Federal Circuit Court of Appeals decided in a patent case that a recent amendment to the general venue rules would be applied to patent cases such that in effect, any court in a state where a defendant company did business would be where a company "resides," and therefore could be a proper venue for a patent infringement lawsuit. In other words, patent plaintiffs could forum shop and place lawsuits wherever they wanted in the U.S.
That decision of the Federal Circuit led to some patent-owner favoring districts like the rural Eastern District of Texas to receive a higher share of the patent lawsuits filed in America. Indeed, that Eastern District of Texas was so popular that it became known as the Rocket Docket, referring both to speed and the local NASA presence. In the last 3 years alone, more than 40% of all U.S. patent infringement suits were filed in this one remote federal district court.
This particular case was between two sellers of drink mix products. Heartland is headquartered and incorporated in its home state of Indiana, and while it ships product to consumers in Delaware, it has no business offices or significant presence there. Kraft is headquartered in Delaware, like many big companies, and it sued Heartland in Delaware for patent infringement. Heartland tried to get the lower courts to move the case to their home district of Indiana, but this was unsuccessful. The open forum rules that the Federal Circuit applied in 1990 were applied once again, and Heartland was deemed to reside in Delaware thanks to having consumers there.
The Supreme Court reversed in a unanimous decision. The Court determined that the 1990 decision by the Federal Circuit that greatly expanded the definition of where a corporation resides was inconsistent with the statute and Congressional intent, and therefore, the old 1957 precedent applies that residence means only the place of incorporation. Thus, this case is remanded to the lower courts where it will likely now be moved to Indiana.
The broader implications of this decision are huge for U.S. patents. The Eastern District of Texas is not a residence for most companies, and so the Rocket Docket will immediately lose most of its caseload in all likelihood. Districts like Delaware, where many companies incorporate for favorable tax treatment, and North California, home to a high number of tech companies, will likely be inundated with many more patent cases. Furthermore, the threat of being dragged by a patent troll into any jurisdiction they want that may be favorable to patent owners is immediately kaput.
Some interesting questions remain like how is this rule applied to foreign defendants, and what happens to the likely 50%or more of pending cases ongoing in improper districts at this point? This decision only dealt with the "resides" definition and therefore gives no clarity as to what constitutes the other way venue is proper in patent cases, which is a regular and established place of business.
Regardless, the Bottom Line is, forum shopping is likely dead in patent litigation now, and that should even things out across the courts of this country in a more balanced and equitable manner. This is a net positive for patent law, and it likely lessens the need for immediate Congressional action to reform the venue part of patent law.
----------------------------------
Temporary Outro - If you will be at Nerdtacular in June, please come by and say hello. My firm is proud to be a sponsor of Nerdtacular 2017.
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp105
The law governing where patent lawsuits can be filed geographically has been a hot subject of debate as the patent troll problem intensified in the last two decades. The patent law states that a lawsuit can be filed where a defendant resides, or has a regular and established place of business. The definition of resides has been open to some differing interpretations.
Back in 1957, the Supreme Court ruled as to all venue statutes, patent and otherwise, that a company "resides" in the place it is incorporated. For many companies, that it Delaware. In 1990, the Federal Circuit Court of Appeals decided in a patent case that a recent amendment to the general venue rules would be applied to patent cases such that in effect, any court in a state where a defendant company did business would be where a company "resides," and therefore could be a proper venue for a patent infringement lawsuit. In other words, patent plaintiffs could forum shop and place lawsuits wherever they wanted in the U.S.
That decision of the Federal Circuit led to some patent-owner favoring districts like the rural Eastern District of Texas to receive a higher share of the patent lawsuits filed in America. Indeed, that Eastern District of Texas was so popular that it became known as the Rocket Docket, referring both to speed and the local NASA presence. In the last 3 years alone, more than 40% of all U.S. patent infringement suits were filed in this one remote federal district court.
This particular case was between two sellers of drink mix products. Heartland is headquartered and incorporated in its home state of Indiana, and while it ships product to consumers in Delaware, it has no business offices or significant presence there. Kraft is headquartered in Delaware, like many big companies, and it sued Heartland in Delaware for patent infringement. Heartland tried to get the lower courts to move the case to their home district of Indiana, but this was unsuccessful. The open forum rules that the Federal Circuit applied in 1990 were applied once again, and Heartland was deemed to reside in Delaware thanks to having consumers there.
The Supreme Court reversed in a unanimous decision. The Court determined that the 1990 decision by the Federal Circuit that greatly expanded the definition of where a corporation resides was inconsistent with the statute and Congressional intent, and therefore, the old 1957 precedent applies that residence means only the place of incorporation. Thus, this case is remanded to the lower courts where it will likely now be moved to Indiana.
The broader implications of this decision are huge for U.S. patents. The Eastern District of Texas is not a residence for most companies, and so the Rocket Docket will immediately lose most of its caseload in all likelihood. Districts like Delaware, where many companies incorporate for favorable tax treatment, and North California, home to a high number of tech companies, will likely be inundated with many more patent cases. Furthermore, the threat of being dragged by a patent troll into any jurisdiction they want that may be favorable to patent owners is immediately kaput.
Some interesting questions remain like how is this rule applied to foreign defendants, and what happens to the likely 50%or more of pending cases ongoing in improper districts at this point? This decision only dealt with the "resides" definition and therefore gives no clarity as to what constitutes the other way venue is proper in patent cases, which is a regular and established place of business.
Regardless, the Bottom Line is, forum shopping is likely dead in patent litigation now, and that should even things out across the courts of this country in a more balanced and equitable manner. This is a net positive for patent law, and it likely lessens the need for immediate Congressional action to reform the venue part of patent law.
----------------------------------
Temporary Outro - If you will be at Nerdtacular in June, please come by and say hello. My firm is proud to be a sponsor of Nerdtacular 2017.
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Tuesday, May 16, 2017
Legal Geek No. 104: Stupid Patent Award creates International Free Speech Clash
Welcome back to Legal Geek. This week, we review an international free speech squabble that has arisen between the Electronic Frontier Foundation in the U.S., and a patent owner named GEMSA in Australia.
https://archive.org/details/LegalGeekEp104
The EFF is a powerful non-profit organization that has defended the rights of privacy and free expression online for nearly three decades. In many top copyright law disputes, especially those involving definitions of the scope of fair use, the EFF is often involved and usually on the side of expanding fair use, or curtailing copyright protections. The EFF is also critical of patents, especially so-called patent trolls who enforce overly broad patents against big money defendants.
In 2014 the EFF began awarding a Stupid Patent of the Month award, for just these types of patents. In June of last year, the award winner was Australian company GEMSA, who was trying to enforce against many parties a U.S. patent claiming exclusive rights for the online use of a virtual cabinet to illustrate data storage. In short, GEMSA was invading America like other Australians of the past...(land down under)
The EFF claimed that GEMSA basically argued it had the right to sue anybody who runs a website, and that such a result was unconscionable. GEMSA didn't take kindly to that, and they filed suit in Australia and obtained a court order from the Supreme Court of South Australia by alleging that the EFF article was filled with misleading and deceptive statements. If this sounds like a libel suit in the U.S., you've got the right idea.
However, Australia is one of many countries that has a low bar for proving defamation type claims and therefore is more restrictive of free speech than the U.S. Thus, the court ordered the EFF to take down the article and refrain from commenting any more on GEMSA under threat of imprisonment in Australia.
Of course, the EFF sits in the U.S., land of the free speech and home of the brave litigants. So the EFF filed suit last month in U.S. Federal Court, seeking a protective order against the Australian court's decree, calling such repugnant to the U.S. constitution and the rights of free speech. Under U.S. law, critical speech like the Stupid Patent award is typically protected expression, unless it crosses the narrow lines defining libel. Without truly false statements, the EFF almost certainly wins under the U.S. standard. That will make any judgment against the EFF unenforceable in America, even if it would be enforceable in Australia.
The Bottom Line is, this squabble over bad patents and free speech reveals the very distinctive laws and standards applied when doing business worldwide in many countries. Even though the result is likely two home-cooked court orders favoring the local business or organization over the foreign entity, the fact that we have this conflict at all reveals the unique constitutional protections we enjoy in America, a core tenant of why the EFF exists in the first place. Likewise, it also shows how tough the Patent Office's job is, as it tries to reach fair conclusions of what should be granted a patent monopoly while Applicants rightfully seek the broadest protection they can get.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp104
The EFF is a powerful non-profit organization that has defended the rights of privacy and free expression online for nearly three decades. In many top copyright law disputes, especially those involving definitions of the scope of fair use, the EFF is often involved and usually on the side of expanding fair use, or curtailing copyright protections. The EFF is also critical of patents, especially so-called patent trolls who enforce overly broad patents against big money defendants.
In 2014 the EFF began awarding a Stupid Patent of the Month award, for just these types of patents. In June of last year, the award winner was Australian company GEMSA, who was trying to enforce against many parties a U.S. patent claiming exclusive rights for the online use of a virtual cabinet to illustrate data storage. In short, GEMSA was invading America like other Australians of the past...(land down under)
The EFF claimed that GEMSA basically argued it had the right to sue anybody who runs a website, and that such a result was unconscionable. GEMSA didn't take kindly to that, and they filed suit in Australia and obtained a court order from the Supreme Court of South Australia by alleging that the EFF article was filled with misleading and deceptive statements. If this sounds like a libel suit in the U.S., you've got the right idea.
However, Australia is one of many countries that has a low bar for proving defamation type claims and therefore is more restrictive of free speech than the U.S. Thus, the court ordered the EFF to take down the article and refrain from commenting any more on GEMSA under threat of imprisonment in Australia.
Of course, the EFF sits in the U.S., land of the free speech and home of the brave litigants. So the EFF filed suit last month in U.S. Federal Court, seeking a protective order against the Australian court's decree, calling such repugnant to the U.S. constitution and the rights of free speech. Under U.S. law, critical speech like the Stupid Patent award is typically protected expression, unless it crosses the narrow lines defining libel. Without truly false statements, the EFF almost certainly wins under the U.S. standard. That will make any judgment against the EFF unenforceable in America, even if it would be enforceable in Australia.
The Bottom Line is, this squabble over bad patents and free speech reveals the very distinctive laws and standards applied when doing business worldwide in many countries. Even though the result is likely two home-cooked court orders favoring the local business or organization over the foreign entity, the fact that we have this conflict at all reveals the unique constitutional protections we enjoy in America, a core tenant of why the EFF exists in the first place. Likewise, it also shows how tough the Patent Office's job is, as it tries to reach fair conclusions of what should be granted a patent monopoly while Applicants rightfully seek the broadest protection they can get.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Wednesday, May 10, 2017
Legal Geek No. 103: The IP Lawyer's Perspective on the Nerdy T-Shirt Market
Welcome back to Legal Geek. This week, based on a popular Ars Technica article in the subreddit from frequent contributor Sewell2, we cover this IP lawyer's perspective on why the nerdy T-shirt market thrives in an economy with tons of intellectual property.
https://archive.org/details/LegalGeekEp103
Just over two years ago on this segment, I discussed why small fan art and goods sellers at summer game and comic conventions often fall under the radar and avoid copyright and trademark infringement claims. As a refresher, the primary reason is that it is very expensive to pursue every small infringement of a popular IP, and if there's no significant money to be earned, it does not always make business sense to pursue such infringement claims. Another reason is that these fans typically enhance the market for the original owner's products, not the opposite.
The Ars Technica article is basically about the same subject, except that T-shirt sellers are more prominent overall and do what appears to be good business online and at booths in these conventions. Often, the shirts include well known characters, logos, or sayings, usually with some additional twist. So the question posed is a good one...how does this industry stay in business despite the constant threat of trademark or copyright infringement enforcement?
The first answer provided in the article is that many of these shirt sellers keep no significant inventory, only printing different designs from artist submissions every day or week, and only based on actual consumer demand. Although this is still technically IP infringement in some cases where fair use does not apply, the lack of a constant money stream from any one intellectual property makes it nearly worthless for an IP owner to try and stop the sales after the fact (or recover the profits from the small amount of sales made). The business model is tailored to keep moving the target, which is wise from an IP standpoint.
A second answer provided is that these websites comply with all DMCA takedown notices promptly, just like other user generated content sites like YouTube. With copyright infringement being the potential biggest threat thanks to the potential for large statutory damages instead of lost profits and the like, compliance with the DMCA seems to be a great idea in the current IP market. Of course, the DMCA covers the digital marketing and display of the shirt images, and the actual sales themselves or the artists making the work could still be pursued for infringement, so it's not really a perfect solution for protecting the T-shirt makers.
The third answer was provided in a similar manner as I did on this segment before, that the actual money involved is small enough to not be worth pursuing in many cases, especially considering the fan backlash that would happen against the original IP owner for enforcing their rights. It's just the economic reality of IP law and enforcement. It's also why these types of cases have been limited to contexts like the Star Trek Axanar case, where a lot of money came in suddenly via crowdfunding and competed directly with the products of the original IP owner.
The Bottom Line is, the Ars Technica article is correct in stating that it's a tangled web of business realities and legal defenses such as fair use that keep this T-shirt business afloat. Most IP owners and developers enforce their rights based on their own level of tolerance, and that seems to be a fair solution for this market. Regardless, most of these IP owners aren't heavy into the T-shirt or apparel business, so they may not feel the need to fight over this ground. But make no mistake, a lot of this is IP infringement and a business risk, even if the rights are not often enforced.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp103
Just over two years ago on this segment, I discussed why small fan art and goods sellers at summer game and comic conventions often fall under the radar and avoid copyright and trademark infringement claims. As a refresher, the primary reason is that it is very expensive to pursue every small infringement of a popular IP, and if there's no significant money to be earned, it does not always make business sense to pursue such infringement claims. Another reason is that these fans typically enhance the market for the original owner's products, not the opposite.
The Ars Technica article is basically about the same subject, except that T-shirt sellers are more prominent overall and do what appears to be good business online and at booths in these conventions. Often, the shirts include well known characters, logos, or sayings, usually with some additional twist. So the question posed is a good one...how does this industry stay in business despite the constant threat of trademark or copyright infringement enforcement?
The first answer provided in the article is that many of these shirt sellers keep no significant inventory, only printing different designs from artist submissions every day or week, and only based on actual consumer demand. Although this is still technically IP infringement in some cases where fair use does not apply, the lack of a constant money stream from any one intellectual property makes it nearly worthless for an IP owner to try and stop the sales after the fact (or recover the profits from the small amount of sales made). The business model is tailored to keep moving the target, which is wise from an IP standpoint.
A second answer provided is that these websites comply with all DMCA takedown notices promptly, just like other user generated content sites like YouTube. With copyright infringement being the potential biggest threat thanks to the potential for large statutory damages instead of lost profits and the like, compliance with the DMCA seems to be a great idea in the current IP market. Of course, the DMCA covers the digital marketing and display of the shirt images, and the actual sales themselves or the artists making the work could still be pursued for infringement, so it's not really a perfect solution for protecting the T-shirt makers.
The third answer was provided in a similar manner as I did on this segment before, that the actual money involved is small enough to not be worth pursuing in many cases, especially considering the fan backlash that would happen against the original IP owner for enforcing their rights. It's just the economic reality of IP law and enforcement. It's also why these types of cases have been limited to contexts like the Star Trek Axanar case, where a lot of money came in suddenly via crowdfunding and competed directly with the products of the original IP owner.
The Bottom Line is, the Ars Technica article is correct in stating that it's a tangled web of business realities and legal defenses such as fair use that keep this T-shirt business afloat. Most IP owners and developers enforce their rights based on their own level of tolerance, and that seems to be a fair solution for this market. Regardless, most of these IP owners aren't heavy into the T-shirt or apparel business, so they may not feel the need to fight over this ground. But make no mistake, a lot of this is IP infringement and a business risk, even if the rights are not often enforced.
----------------------------------
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, May 4, 2017
Legal Geek No. 102: The Patent "On-Sale Bar" Changes Clarified under AIA
Welcome back to Legal Geek! This week, we review a Court of Appeals decision this week that clarified whether changes have occurred to the on-sale bar in patents after the America Invents Act of 2011, also known as the AIA.
https://archive.org/details/LegalGeekEp102
The AIA was the most recent major reform by Congress to U.S. patent laws, and it included some significant changes such as giving patent priority rights to the first inventor to file an application, instead of the first person who invented a given invention. The wording of what serves as prior art to a patent application was also updated.
That latter item is what was in controversy in the case decided this week. Two pharmaceutical companies were doing battle over four patents related to the anti-nausea drug Aloxi, but there had been a purchase agreement made between the patent owner and another party (privately) in early 2001, more than a year before filing these patent applications in 2003. There is a one year grace period for sales before patent applications, but that did not apply here in view of these facts.
The recently amended on-sale bar of the patent law states that an applicant is entitled to a patent unless the invention was in public use, on sale or otherwise available to the public before a patent is filed. The key difference from the old statute was the addition of the "otherwise available to the public" language.
The argument boils down to whether the added words "or otherwise available to the public" just applies to the words "on sale" or is another separate type of disclosure that triggers a bar date. Before the AIA, there were decades of court precedents that deemed even private sales to still qualify as bar date triggers that could block patents. In other words, it did not matter before the AIA whether sales were public or not.
The alleged infringer was arguing that this status quo of precedent should not change under the new AIA language, while the patent owner argued that only public sales that publicly disclose the details of an invention triggered a bar to patentability. The Federal Circuit disagreed with the patent owner, effectively confirming that the on-sale bar remains much the same as it was before the AIA.
This is a big result because an opposite conclusion would potentially gut the effectiveness of an on-sale bar, by allowing private sales and commercialization efforts more than a year before being forced to file a patent application. Indeed, the Patent Office itself had sided with the patent owner on this issue and that turned out to be wrong! In this case, all the patents were therefore deemed invalid and the generic drug can hit the marketplace unscathed by patent infringement.
The Bottom Line is, when Congress changes laws in even minor ways, there are always viable arguments regarding how far the changes go. This case settles a question that had been openly debated about the on-sale bar for the last 5 years, and it maintains the long standing limits on how far the U.S. patent grace period can be stretched by potential patent applicants. Furthermore, we can always count on big pharmaceutical companies to test the limits of patent law and help us clarify our laws.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp102
The AIA was the most recent major reform by Congress to U.S. patent laws, and it included some significant changes such as giving patent priority rights to the first inventor to file an application, instead of the first person who invented a given invention. The wording of what serves as prior art to a patent application was also updated.
That latter item is what was in controversy in the case decided this week. Two pharmaceutical companies were doing battle over four patents related to the anti-nausea drug Aloxi, but there had been a purchase agreement made between the patent owner and another party (privately) in early 2001, more than a year before filing these patent applications in 2003. There is a one year grace period for sales before patent applications, but that did not apply here in view of these facts.
The recently amended on-sale bar of the patent law states that an applicant is entitled to a patent unless the invention was in public use, on sale or otherwise available to the public before a patent is filed. The key difference from the old statute was the addition of the "otherwise available to the public" language.
The argument boils down to whether the added words "or otherwise available to the public" just applies to the words "on sale" or is another separate type of disclosure that triggers a bar date. Before the AIA, there were decades of court precedents that deemed even private sales to still qualify as bar date triggers that could block patents. In other words, it did not matter before the AIA whether sales were public or not.
The alleged infringer was arguing that this status quo of precedent should not change under the new AIA language, while the patent owner argued that only public sales that publicly disclose the details of an invention triggered a bar to patentability. The Federal Circuit disagreed with the patent owner, effectively confirming that the on-sale bar remains much the same as it was before the AIA.
This is a big result because an opposite conclusion would potentially gut the effectiveness of an on-sale bar, by allowing private sales and commercialization efforts more than a year before being forced to file a patent application. Indeed, the Patent Office itself had sided with the patent owner on this issue and that turned out to be wrong! In this case, all the patents were therefore deemed invalid and the generic drug can hit the marketplace unscathed by patent infringement.
The Bottom Line is, when Congress changes laws in even minor ways, there are always viable arguments regarding how far the changes go. This case settles a question that had been openly debated about the on-sale bar for the last 5 years, and it maintains the long standing limits on how far the U.S. patent grace period can be stretched by potential patent applicants. Furthermore, we can always count on big pharmaceutical companies to test the limits of patent law and help us clarify our laws.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Friday, April 28, 2017
Legal Geek No. 101: "Down the Stretch They Come" in TM Infringement
Welcome back to Legal Geek! This week, we celebrate the upcoming horse racing season in my neck of the woods, with a look at an April Appeals Court decision that was a loss for Churchill Downs, the track where next week's Kentucky Derby is held.
https://archive.org/details/LegalGeekEp101
Several racing track owners including the Churchill Downs owner filed suit in late 2015 against another racing venue Kentucky Downs and video-based gambling system software developer Exacta Systems. The claim was for trademark infringement in the use of the trademarked names of these other tracks within the gambling system made by Exacta and used at Kentucky Downs to allow for betting on races taking place at other venues. So down the stretch they come to the courthouse!
According to the lower court and Appeals court decisions, the gambling system works by showing a computer-generated simulation of a horse race as it happens. On the screen is an identifier of the location of the race, AKA the name of the track in a field behind the word Location.
The track owners asserting infringement argued that this was unauthorized use of their trademarks because consumers of the gambling services would incorrectly assume that the venues themselves are the source of the computer-generated recreations of the horse races. In short, these other track owners wanted to cut off gambling profits happening at rival tracks based on their own races.
The Sixth Circuit Court of Appeals summarily disagreed with this argument. The Court noted that these computer generated recreations are sufficiently different from the product sold by the other track owners, which is live horse racing. It appears that if live video of actual footage from the other tracks were used, that would have been more problematic, but that was not the case here opined the Court. Essentially, the Appeals Court agreed that this use of the trademark names was a non-TM use more akin to a factual recounting of race results in a newspaper, which cannot be stopped by trademark owners.
The Court also noted that the consumer confusion argument was not persuasive because if the gambling system showed an inaccurate result, the person using it would likely take up complaints to Kentucky Downs and Exacta, where they are located rather than the other tracks. Without potential consumer confusion, trademark infringement cannot exist.
The Bottom Line is, although trademark rights are important for businesses to have, they do have some clear limits in scope. This lawsuit was exposed as something of a cash-grab between competing horse racing tracks because the trademark infringement claim was too expansive for the limits of trademarks. But as horse racing season rounds the bend and heads for home, I'm sure there will be plenty of profits to be made for all these gambling tracks and sites.
----------------------------------
https://archive.org/details/LegalGeekEp101
Several racing track owners including the Churchill Downs owner filed suit in late 2015 against another racing venue Kentucky Downs and video-based gambling system software developer Exacta Systems. The claim was for trademark infringement in the use of the trademarked names of these other tracks within the gambling system made by Exacta and used at Kentucky Downs to allow for betting on races taking place at other venues. So down the stretch they come to the courthouse!
According to the lower court and Appeals court decisions, the gambling system works by showing a computer-generated simulation of a horse race as it happens. On the screen is an identifier of the location of the race, AKA the name of the track in a field behind the word Location.
The track owners asserting infringement argued that this was unauthorized use of their trademarks because consumers of the gambling services would incorrectly assume that the venues themselves are the source of the computer-generated recreations of the horse races. In short, these other track owners wanted to cut off gambling profits happening at rival tracks based on their own races.
The Sixth Circuit Court of Appeals summarily disagreed with this argument. The Court noted that these computer generated recreations are sufficiently different from the product sold by the other track owners, which is live horse racing. It appears that if live video of actual footage from the other tracks were used, that would have been more problematic, but that was not the case here opined the Court. Essentially, the Appeals Court agreed that this use of the trademark names was a non-TM use more akin to a factual recounting of race results in a newspaper, which cannot be stopped by trademark owners.
The Court also noted that the consumer confusion argument was not persuasive because if the gambling system showed an inaccurate result, the person using it would likely take up complaints to Kentucky Downs and Exacta, where they are located rather than the other tracks. Without potential consumer confusion, trademark infringement cannot exist.
The Bottom Line is, although trademark rights are important for businesses to have, they do have some clear limits in scope. This lawsuit was exposed as something of a cash-grab between competing horse racing tracks because the trademark infringement claim was too expansive for the limits of trademarks. But as horse racing season rounds the bend and heads for home, I'm sure there will be plenty of profits to be made for all these gambling tracks and sites.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, April 20, 2017
Legal Geek No. 100: Pokemon Go = Virtual Trespassing?
Welcome back to Legal Geek, and we are happy to celebrate the 100th installment of this segment. Thank you to all listeners who send feedback or suggestions, and I look forward to seeing some of you at Nerdtacular. Now, on with the segment.
This week, we check in on an interesting lawsuit filed against Niantic, the makers of Pokémon Go, for virtual trespassing and other wrongs.
https://archive.org/details/LegalGeekEp100
Pokémon Go was the craze of summer 2016, and the software application has undergone some updates recently to keep it fresh. Niantic still brings in over $30 million dollars monthly with this app, so the game remains highly popular as the weather warms up and brings people back outside for 2017.
However, making big money and successful endeavors often brings threats in the form of legal action. This case is interesting because it looks legitimate, and the case may be on the cutting edge as virtual reality and enhanced reality games and devices go more mainstream.
Residents of several states have joined claims in California federal court to sue Niantic for placing virtual items in the form of Pokémon, Pokestops, or Gyms on their property, causing many people to trespass and damage those properties. The primary theory is that this placement of the virtual items is a type of new virtual trespass, but there's also an argument that the damage and intrusions are caused by negligence on the part of Niantic.
As to the virtual trespass claim, Niantic has a fairly strong response in that trespass laws, while varied from state to state, typically do not protect from intrusions of intangible items like noise, vibrations, dust, or chemical clouds. Trespass is a fairly specific type of tort, and creating a new version of that would have potentially large unintended consequences for other developers in the VR field and elsewhere. Thus, as interesting as the concept of virtual trespass may be, it is not established in law by the states or federal government, and it seems unlikely that the court will expand the law to cover the facts presented by the plantiffs of this case.
Turning to the negligence argument, that potentially has some legs. Even though Niantic warns players when they log in against going into unauthorized or dangerous areas, that would not necessarily protect them from liability if the overall development of the app was deemed careless or thoughtless in such a manner that encourages activities that lead to things like unwanted trespass and/or property damage. Indeed, this is likely the very reason Niantic prevents players from operating the app at speeds of over 15-20 miles per hour, so as to avoid carelessly encouraging players to play and drive distracted.
Thus, it will be interesting to see if this case proceeds beyond initial summary judgement stages, and if so, whether Niantic will be the first to define the limits of what developers can do with VR and augmented reality type experiences. It's possible that like some parks in places like Milwaukee, the plaintiffs (and any other aggrieved party) may be able to negotiate an agreement with Niantic to prevent the game assets from popping up at certain hours of day, or maybe completely. But it will be more interesting if there is not a settlement like that.
The Bottom Line is, even though Pokémon Go is a lot of fun for users, just ask my 8 year old and 6 year old, and even though many businesses love the extra foot traffic caused by getting people outside hunting Pokémon in their area, it's not a desire shared by everyone, especially private property owners. With VR and similar technology on the rise, law will need to adjust and adapt to fit the circumstances, in a similar way as trespass laws with respect to airspace and drone usage. Who knew Lapras, Charizard, and Dragonite would lead the charge to settling these issues in court?
----------------------------------
This week, we check in on an interesting lawsuit filed against Niantic, the makers of Pokémon Go, for virtual trespassing and other wrongs.
https://archive.org/details/LegalGeekEp100
Pokémon Go was the craze of summer 2016, and the software application has undergone some updates recently to keep it fresh. Niantic still brings in over $30 million dollars monthly with this app, so the game remains highly popular as the weather warms up and brings people back outside for 2017.
However, making big money and successful endeavors often brings threats in the form of legal action. This case is interesting because it looks legitimate, and the case may be on the cutting edge as virtual reality and enhanced reality games and devices go more mainstream.
Residents of several states have joined claims in California federal court to sue Niantic for placing virtual items in the form of Pokémon, Pokestops, or Gyms on their property, causing many people to trespass and damage those properties. The primary theory is that this placement of the virtual items is a type of new virtual trespass, but there's also an argument that the damage and intrusions are caused by negligence on the part of Niantic.
As to the virtual trespass claim, Niantic has a fairly strong response in that trespass laws, while varied from state to state, typically do not protect from intrusions of intangible items like noise, vibrations, dust, or chemical clouds. Trespass is a fairly specific type of tort, and creating a new version of that would have potentially large unintended consequences for other developers in the VR field and elsewhere. Thus, as interesting as the concept of virtual trespass may be, it is not established in law by the states or federal government, and it seems unlikely that the court will expand the law to cover the facts presented by the plantiffs of this case.
Turning to the negligence argument, that potentially has some legs. Even though Niantic warns players when they log in against going into unauthorized or dangerous areas, that would not necessarily protect them from liability if the overall development of the app was deemed careless or thoughtless in such a manner that encourages activities that lead to things like unwanted trespass and/or property damage. Indeed, this is likely the very reason Niantic prevents players from operating the app at speeds of over 15-20 miles per hour, so as to avoid carelessly encouraging players to play and drive distracted.
Thus, it will be interesting to see if this case proceeds beyond initial summary judgement stages, and if so, whether Niantic will be the first to define the limits of what developers can do with VR and augmented reality type experiences. It's possible that like some parks in places like Milwaukee, the plaintiffs (and any other aggrieved party) may be able to negotiate an agreement with Niantic to prevent the game assets from popping up at certain hours of day, or maybe completely. But it will be more interesting if there is not a settlement like that.
The Bottom Line is, even though Pokémon Go is a lot of fun for users, just ask my 8 year old and 6 year old, and even though many businesses love the extra foot traffic caused by getting people outside hunting Pokémon in their area, it's not a desire shared by everyone, especially private property owners. With VR and similar technology on the rise, law will need to adjust and adapt to fit the circumstances, in a similar way as trespass laws with respect to airspace and drone usage. Who knew Lapras, Charizard, and Dragonite would lead the charge to settling these issues in court?
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, April 6, 2017
Legal Geek No. 99: Blizzard Stops Cheating Software in a Big Week
Welcome back to Legal Geek. This week, we review another recent case of a favorite game developer taking on cheating and hacking services with great success, and this time it's Blizzard Entertainment.
https://archive.org/details/LegalGeekEp99
A few weeks back we looked at how Nintendo and Riot Games were protecting their gaming customers in court, and Blizzard is right there with these other game giants in this regard. This week was already big week for Blizzard, with BlizzCon tickets going on sale as well as a new Hearthstone expansion and year, and an announced drastic re-design to Heroes of the Storm. But the week also was successful in court for the company from Irvine.
Last year, Blizzard sued a German company called Bossland in California federal court as well as in German courts where that other company is located, alleging copyright infringement. Bossland is one of the leading developers of cheats and bots for use with several Blizzard games, including programs called Honorbuddy, Stormbuddy, and Hearthbuddy. Essentially, the argument for Blizzard is that Bossland's programs bypass Blizzard's cheat protection technology, which is a hacking action that allegedly violates the DMCA, while also allowing users to play modified versions of these games, AKA, unauthorized derivative works of the game titles that are copyright infringements.
The cheating and use of bots causes damage to Blizzard because it negatively affects their normal paying customers, and therefore potentially their reputation and market share. With these big companies putting lots of intellectual property and programming in place to protect their rights and their consumers, it is no surprise that Blizzard has multiple actionable claims against a company like Bossland. It's also no surprise these legal claims are fairly strong.
Bossland decided to not defend itself actively in the U.S. case, so a quick judgement was achieved this week in favor of Blizzard. Blizzard proved over 42,000 violations, which led to over 8.5 million dollars of statutory damages. An injunction against further sales or marketing of the cheat programs in the U.S. has also now been established. However, that ruling doesn't stop Bossland from operating in other countries, and the CEO of that company vows to keep fighting especially in their hometown German courts.
The Bottom Line is, Blizzard is just like other major gaming companies in protecting its customers and future revenue streams by fighting cheaters with bans and even legal actions like these. It's doubtful the hefty copyright damages award can be effectively collected in this case, but it's a positive development for fair players who want to keep enjoying all the big things Blizzard releases in this week and future weeks.
Finally, a few weeks ago we explained the confirmation process for Supreme Court nominees and the potential nuclear option of removing filibusters for such nominees. That has come to pass this week, as the Republican Senators could not obtain sufficient votes to overcome a filibuster, so we will see Gorsuch on the court...but it's unclear whether this nuclear option move will be a net loss long term as the filibuster because less and less pertinent for important issues. Stay tuned, everyone.
----------------------------------
https://archive.org/details/LegalGeekEp99
A few weeks back we looked at how Nintendo and Riot Games were protecting their gaming customers in court, and Blizzard is right there with these other game giants in this regard. This week was already big week for Blizzard, with BlizzCon tickets going on sale as well as a new Hearthstone expansion and year, and an announced drastic re-design to Heroes of the Storm. But the week also was successful in court for the company from Irvine.
Last year, Blizzard sued a German company called Bossland in California federal court as well as in German courts where that other company is located, alleging copyright infringement. Bossland is one of the leading developers of cheats and bots for use with several Blizzard games, including programs called Honorbuddy, Stormbuddy, and Hearthbuddy. Essentially, the argument for Blizzard is that Bossland's programs bypass Blizzard's cheat protection technology, which is a hacking action that allegedly violates the DMCA, while also allowing users to play modified versions of these games, AKA, unauthorized derivative works of the game titles that are copyright infringements.
The cheating and use of bots causes damage to Blizzard because it negatively affects their normal paying customers, and therefore potentially their reputation and market share. With these big companies putting lots of intellectual property and programming in place to protect their rights and their consumers, it is no surprise that Blizzard has multiple actionable claims against a company like Bossland. It's also no surprise these legal claims are fairly strong.
Bossland decided to not defend itself actively in the U.S. case, so a quick judgement was achieved this week in favor of Blizzard. Blizzard proved over 42,000 violations, which led to over 8.5 million dollars of statutory damages. An injunction against further sales or marketing of the cheat programs in the U.S. has also now been established. However, that ruling doesn't stop Bossland from operating in other countries, and the CEO of that company vows to keep fighting especially in their hometown German courts.
The Bottom Line is, Blizzard is just like other major gaming companies in protecting its customers and future revenue streams by fighting cheaters with bans and even legal actions like these. It's doubtful the hefty copyright damages award can be effectively collected in this case, but it's a positive development for fair players who want to keep enjoying all the big things Blizzard releases in this week and future weeks.
Finally, a few weeks ago we explained the confirmation process for Supreme Court nominees and the potential nuclear option of removing filibusters for such nominees. That has come to pass this week, as the Republican Senators could not obtain sufficient votes to overcome a filibuster, so we will see Gorsuch on the court...but it's unclear whether this nuclear option move will be a net loss long term as the filibuster because less and less pertinent for important issues. Stay tuned, everyone.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
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