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.
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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
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.
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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.
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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?
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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?
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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
Thursday, March 30, 2017
Legal Geek No. 98: What's That Smell? Will Play-Doh Reinvigorate the field of Scent Trademarks?
Welcome back to Legal Geek. This week, we review an interesting field of trademark coverage, that being coverage of scents and smells, based on a recent application filed by game and toy giant Hasbro.
https://archive.org/details/LegalGeekEp98
Trademarks are granted federal registrations based on distinctiveness and whether the mark properly serves as a source identifier for goods and services, in the mind of an average consumer. Word marks like company or product names, and the designed logos used by companies and products, are typically where the vast majority of registrations and coverage appears in this legal field.
However, there are some potential frontiers for expansion to other types of source identifiers, and scent is one of those that could be poised for a boom.
Hasbro filed an application to register the smell of Play-Doh this month, arguing that the scent of the child toy has acquired distinctiveness over the last 60 years sufficient to make that smell identify the product and the source, AKA Hasbro. The application describes this scent as "a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough." That paints a mental picture fairly well for the scent Hasbro intends to cover, at least in the field of toy modeling compounds.
Since the first smell-based registration was issued in 1990 for a flower scent on yarns, only about 10 more scent registrations have successfully followed in the last 3 decades. Most of these have been deemed to not be distinctive enough for the Principal Register where most trademarks go, leaving only some secondary rights for such scent marks.
Thus, Hasbro faces some significant hurdles in obtaining an allowance on this trademark registration. First, proving that consumers actually associate that scent with the Play-Doh product can be difficult because of a high burden of proof required. Second, many scent mark applications have been rejected based on being functional, or an inherent aspect of some or all of the ingredients used, as such functional parts are only covered in the U.S. by patents, not copyrights and trademarks. A scent chosen to make a product more desirable to consumers may be deemed functional rather than source-identifying, for example.
Some experts who have opined on Hasbro's recent application indicate that while these hurdles are tough to overcome, the Play-Doh scent has a better chance than most products of succeeding at the Trademark Office. After all, the scent is recognizable and pretty distinctive, and there's no functional reason to make modeling clay smell that particular way with cherry and vanilla overtones. If it does register, there are some interesting hurdles in how Hasbro would actually provide a specimen to the USPTO that could be stored for future reference, and how would this be enforced by a court or evaluated objectively against the scents of competing products. Nose experts would be needed.
The Bottom Line is, Hasbro has a good chance here to obtain a rare registration of a scent of a product, and if that happens, enough other big companies will likely take note and will try to cover their own scents. It could lead to an interesting arms race trend in geek culture and beyond, as we expand the frontiers of possible coverage in intellectual property.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp98
Trademarks are granted federal registrations based on distinctiveness and whether the mark properly serves as a source identifier for goods and services, in the mind of an average consumer. Word marks like company or product names, and the designed logos used by companies and products, are typically where the vast majority of registrations and coverage appears in this legal field.
However, there are some potential frontiers for expansion to other types of source identifiers, and scent is one of those that could be poised for a boom.
Hasbro filed an application to register the smell of Play-Doh this month, arguing that the scent of the child toy has acquired distinctiveness over the last 60 years sufficient to make that smell identify the product and the source, AKA Hasbro. The application describes this scent as "a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough." That paints a mental picture fairly well for the scent Hasbro intends to cover, at least in the field of toy modeling compounds.
Since the first smell-based registration was issued in 1990 for a flower scent on yarns, only about 10 more scent registrations have successfully followed in the last 3 decades. Most of these have been deemed to not be distinctive enough for the Principal Register where most trademarks go, leaving only some secondary rights for such scent marks.
Thus, Hasbro faces some significant hurdles in obtaining an allowance on this trademark registration. First, proving that consumers actually associate that scent with the Play-Doh product can be difficult because of a high burden of proof required. Second, many scent mark applications have been rejected based on being functional, or an inherent aspect of some or all of the ingredients used, as such functional parts are only covered in the U.S. by patents, not copyrights and trademarks. A scent chosen to make a product more desirable to consumers may be deemed functional rather than source-identifying, for example.
Some experts who have opined on Hasbro's recent application indicate that while these hurdles are tough to overcome, the Play-Doh scent has a better chance than most products of succeeding at the Trademark Office. After all, the scent is recognizable and pretty distinctive, and there's no functional reason to make modeling clay smell that particular way with cherry and vanilla overtones. If it does register, there are some interesting hurdles in how Hasbro would actually provide a specimen to the USPTO that could be stored for future reference, and how would this be enforced by a court or evaluated objectively against the scents of competing products. Nose experts would be needed.
The Bottom Line is, Hasbro has a good chance here to obtain a rare registration of a scent of a product, and if that happens, enough other big companies will likely take note and will try to cover their own scents. It could lead to an interesting arms race trend in geek culture and beyond, as we expand the frontiers of possible coverage in intellectual property.
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, March 23, 2017
Legal Geek No. 97: Give Me a (C)! Supreme Court decides Cheerleader Uniforms are Copyright Protectable
Welcome back to Legal Geek. This week, we cover one of the biggest IP cases of this Supreme Court term, which was decided this week, Star Athletica v. Varsity Brands. The subject matter: whether cheerleader uniform design elements are copyright protectable, which is fitting given the March Madness sports season we are in right now.
https://archive.org/details/LegalGeekEp97
Varsity Brands is the largest supplier of cheerleader uniforms in the U.S., and it registered copyrights in many designs they sell on cheerleader uniforms. These registrations purport to cover specific stripes and chevron designs on uniforms, which are fairly well-known design elements of such uniforms.
An up-and-coming competitor named Star Athletica was sued in 2010 for copyright infringement by Varsity Brands. Star Athletica argued in court that cheerleader uniforms were useful goods, which are disqualified from copyright protection because useful goods are typically covered in the patent realm. The counterargument was based on an argument that the expressive design elements intertwined with a useful apparel item were "conceptually separable" enough to be eligible for separate protection under copyright.
This issue of what is conceptually separable from a useful item has confounded lower courts, with the regional Courts of Appeal having about 9 different tests with varying factors for determining when designs on a useful item can be copyrighted. The reason this determination is so important is that design patent protection lasts for only 15 years, while copyright protections often exceed 100 years. For a company like Varsity Brands, copyright protection offers a decades long monopoly against competition.
The Supreme Court ruled 6-2 that the tests for conceptual separability needed to be harmonized into one test, that being whether a feature can be perceived as a 2D or 3D work of art separate from the useful article. The feature must still qualify as a protectable expression when imagined separately from the useful article into which it is incorporated.
As great as that test sounds for adding consistency across the country, the actual application of the test could still prove contentious in fields like apparel. Indeed, the dissent applied the same test as the majority and came to the opposite conclusion, that the chevrons and stripes were not conceptually separable as protectable expressions apart from the uniforms. The majority's decision was not a major landmark in either direction, as courts will still need to wrestle with the facts in fields such as apparel, which do not fit neatly into any branch of IP protection under U.S. law.
So Varsity Brands wins this battle, as the Supreme Court says their registered designs are separable enough to be eligible for copyright. But before Varsity Brands can successfully argue "Give me a (C)" and block the competition, another hurdle must be overcome in ongoing litigation. The Supreme Court was not presented and did not decide whether the chevrons and stripes are original enough to merit copyright, which is another requirement above and beyond being conceptually seperable from the useful apparel item. Legal experts still think this will be a tough battle for Varsity Brands to win, regardless of the win this week on separability.
The Bottom Line is, the Supreme Court often steps in when regional courts cannot agree on how to resolve a legal issue, as was the case in this copyright rule. However, they typically do not go beyond the specific issues presented, and as discussed here, that means the legal competition continues in the courts for fields like cheerleader uniforms. Maybe the legal teams can bring their own spirit squads to help cheer them on to victory.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp97
Varsity Brands is the largest supplier of cheerleader uniforms in the U.S., and it registered copyrights in many designs they sell on cheerleader uniforms. These registrations purport to cover specific stripes and chevron designs on uniforms, which are fairly well-known design elements of such uniforms.
An up-and-coming competitor named Star Athletica was sued in 2010 for copyright infringement by Varsity Brands. Star Athletica argued in court that cheerleader uniforms were useful goods, which are disqualified from copyright protection because useful goods are typically covered in the patent realm. The counterargument was based on an argument that the expressive design elements intertwined with a useful apparel item were "conceptually separable" enough to be eligible for separate protection under copyright.
This issue of what is conceptually separable from a useful item has confounded lower courts, with the regional Courts of Appeal having about 9 different tests with varying factors for determining when designs on a useful item can be copyrighted. The reason this determination is so important is that design patent protection lasts for only 15 years, while copyright protections often exceed 100 years. For a company like Varsity Brands, copyright protection offers a decades long monopoly against competition.
The Supreme Court ruled 6-2 that the tests for conceptual separability needed to be harmonized into one test, that being whether a feature can be perceived as a 2D or 3D work of art separate from the useful article. The feature must still qualify as a protectable expression when imagined separately from the useful article into which it is incorporated.
As great as that test sounds for adding consistency across the country, the actual application of the test could still prove contentious in fields like apparel. Indeed, the dissent applied the same test as the majority and came to the opposite conclusion, that the chevrons and stripes were not conceptually separable as protectable expressions apart from the uniforms. The majority's decision was not a major landmark in either direction, as courts will still need to wrestle with the facts in fields such as apparel, which do not fit neatly into any branch of IP protection under U.S. law.
So Varsity Brands wins this battle, as the Supreme Court says their registered designs are separable enough to be eligible for copyright. But before Varsity Brands can successfully argue "Give me a (C)" and block the competition, another hurdle must be overcome in ongoing litigation. The Supreme Court was not presented and did not decide whether the chevrons and stripes are original enough to merit copyright, which is another requirement above and beyond being conceptually seperable from the useful apparel item. Legal experts still think this will be a tough battle for Varsity Brands to win, regardless of the win this week on separability.
The Bottom Line is, the Supreme Court often steps in when regional courts cannot agree on how to resolve a legal issue, as was the case in this copyright rule. However, they typically do not go beyond the specific issues presented, and as discussed here, that means the legal competition continues in the courts for fields like cheerleader uniforms. Maybe the legal teams can bring their own spirit squads to help cheer them on to victory.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, March 9, 2017
Legal Geek No. 96: Mario Kart and League of Legends hit the Legal Airwaves
Welcome back to Legal Geek. This week, we leave politics and go back to the field of gaming to do a news update on two interesting cases for top brands of this field.
https://archive.org/details/LegalGeekEp96
We begin with Nintendo, which has returned to form with Breath of the Wild and the Switch console receiving good reviews this week. But Nintendo has also returned to the courts, with a lawsuit against a company in Tokyo which offers real life Mario Kart rides. With Mario onesies, LED shoes, and mustaches.
Yes, you heard that right. Real life Mario Kart rides. Excuse me while I go purchase my tickets to Japan.
Returning to the law, MariCar is accused of using Nintendo's IP and characters without permission. The closeness of the name and the use of the characters could indeed raise some trademark or copyright issues. While MariCar says they had legal advice saying they were clear, it looks like a bit too much content copying without the small adjustments knockoffs usually make to be clear.
Plus, MariCar sounds like it has no interest in going to court with the game giant. That means this fun folly will either disappear, change, or acquire a license. I'd guess disappear. However, with Nintendo finally licensing some theme park areas in Osaka, Hollywood, and Orlando, perhaps you will still be able to live a Mario Kart fantasy without having to brave the streets of Tokyo.
The other game giant with news in court is Riot Games, makers of top MOBA League of Legends. A court ruling granted Riot with an injunction and $10 million in damages against the makers of a software product called LeagueSharp that was alleged to hack the League game.
LeagueSharp was alleged to violate the Digital Millennium Copyright Act because it circumvents the anti-cheating technology in the League of Legends game software. Even though League is free to play, LeagueSharp was a paid monthly service that allowed players to see hidden information and play automated bot versions of the game to build up swords and supplies to unlock game content faster than normal. That circumvention and botting harmed the game according to Riot Games, and LeagueSharp also hacked and released some confidential employee information from Riot.
This is precisely the type of company and bad actors that video game companies like Riot and Blizzard often try to stop. By obtaining a huge judgement and injunction only 7 months after this lawsuit was filed in August, Riot has quickly protected the League of Legends game and players, and the courts have sent a strong message to other companies that want to try and profit off of or attack other big game titles.
These parties reached a confidential settlement which will avoid the millions in damages, but the result was still exactly what Riot wants.
The Bottom Line is, profitable game giants will almost always act to protect their property and players, and it usually works. We'll see if Nintendo and Riot can continue their hot streak in the court of public opinion as the games continue to develop.
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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/LegalGeekEp96
We begin with Nintendo, which has returned to form with Breath of the Wild and the Switch console receiving good reviews this week. But Nintendo has also returned to the courts, with a lawsuit against a company in Tokyo which offers real life Mario Kart rides. With Mario onesies, LED shoes, and mustaches.
Yes, you heard that right. Real life Mario Kart rides. Excuse me while I go purchase my tickets to Japan.
Returning to the law, MariCar is accused of using Nintendo's IP and characters without permission. The closeness of the name and the use of the characters could indeed raise some trademark or copyright issues. While MariCar says they had legal advice saying they were clear, it looks like a bit too much content copying without the small adjustments knockoffs usually make to be clear.
Plus, MariCar sounds like it has no interest in going to court with the game giant. That means this fun folly will either disappear, change, or acquire a license. I'd guess disappear. However, with Nintendo finally licensing some theme park areas in Osaka, Hollywood, and Orlando, perhaps you will still be able to live a Mario Kart fantasy without having to brave the streets of Tokyo.
The other game giant with news in court is Riot Games, makers of top MOBA League of Legends. A court ruling granted Riot with an injunction and $10 million in damages against the makers of a software product called LeagueSharp that was alleged to hack the League game.
LeagueSharp was alleged to violate the Digital Millennium Copyright Act because it circumvents the anti-cheating technology in the League of Legends game software. Even though League is free to play, LeagueSharp was a paid monthly service that allowed players to see hidden information and play automated bot versions of the game to build up swords and supplies to unlock game content faster than normal. That circumvention and botting harmed the game according to Riot Games, and LeagueSharp also hacked and released some confidential employee information from Riot.
This is precisely the type of company and bad actors that video game companies like Riot and Blizzard often try to stop. By obtaining a huge judgement and injunction only 7 months after this lawsuit was filed in August, Riot has quickly protected the League of Legends game and players, and the courts have sent a strong message to other companies that want to try and profit off of or attack other big game titles.
These parties reached a confidential settlement which will avoid the millions in damages, but the result was still exactly what Riot wants.
The Bottom Line is, profitable game giants will almost always act to protect their property and players, and it usually works. We'll see if Nintendo and Riot can continue their hot streak in the court of public opinion as the games continue to develop.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
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