When can you sue for copyright infringement?

By Matthew J. Booth

Yet again, we have the dreaded, “it depends,” answer.  In this case, it depends on where you can bring the lawsuit because there have been different decisions in various Federal Circuit Courts of Appeal about the proper timing of filing a copyright infringement lawsuit.

Let’s go back to the beginning of this process.  When someone comes to me and asks me to sue another party for infringement of a copyright, my first question is, “Do you have a copyright registration?” Why? Because the Copyright Act seems to require you to have a registration to file the lawsuit. The relevant statute provides, “… no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights…” See 17 USC 411(a).

So, we know that we have to file an application for a copyright registration. After the application is filed, we go back to the original question, “When can we file that lawsuit for copyright infringement?” Sadly, the answer is still, “it depends.” At this point the language is slightly confusing about the mechanics and the timing of filing which has lead to the differing court decisions I mentioned earlier. So, unfortunately, the answer to this question depends on what court is going to hear the case. There have been different decisions in the various Federal Circuit Courts of Appeal on whether a plaintiff must have received a copyright registration before filing the lawsuit (the “registration approach”) or rather must only have filed a copyright application (the “application approach”) with the Copyright Office before filing the lawsuit.

The “registration approach” seems to follow a plain language reading of the first part of section 411(a) (“…no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title”). I think the second part of this section muddies that take (“In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights…”).

The “application approach,” on the other hand, views the actual copyright registration as a formality since an application with the Copyright Office results in a registration or a rejection of the application. Either of these decisions allows an applicant to proceed with filing a lawsuit. I personally think a couple of other factors weigh in on the application approach. First, an application for a copyright registration takes months before it’s issued or rejected (with the current time frame running about 6 to 9 months). Second, when a registration issues, the date of registration is the date that the application was filed. And finally (and unlike TV where things are fast and drama filled), a lawsuit for copyright infringement goes to trial at least 1 or 2 years after the lawsuit is filed, which is plenty of time for the Copyright Office to issue the registration or rejection.

The Copyright Office favors the registration approach though I think that has more to do with economics because they offer an expedited registration process for a higher fee ($800 per work versus $55 per work for normal processing).

The good news amidst all this confusion is that the US Supreme Court will finally get to weigh in and, hopefully, resolve this issue in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571. Link. The oral arguments were on 01/08/2019 (yes, Elvis Presley’s birthday!) so the decision should come soon.

If you have hung with me through this entire article, kudos to you for hanging in there through a complicated albeit important issue. Clarification of the timing on these filings will help everyone have a clear checklist for preparing to file copyright infringement lawsuits. As for me, I typically represent the copyright owners in these instances, so I hope the Supreme Court goes with the application approach. This approach will allow the copyright owners to start enforcing their Intellectual Property rights sooner and much closer to when the infringement actually occurred.

Drumroll…..the Supreme Court said an emphatic No! The American Invents Act (AIA) did not change the Patent On-Sale Bar

By Matthew J. Booth

A couple of weeks ago I wrote about whether the America Invents Act (AIA) changed the Patent On-Sale bar. The US Supreme Court answered this question in a short, unanimous opinion by Justice Thomas, with the answer being, no, the AIA did not change the Patent On-Sale bar.

In its review of the case, the Court said that since the term “on sale” was both in the earlier version of the statute and the current version of the statute, Congress intended for the term to have the same construction used by the Supreme Court. The Court further found that the addition of the term “or otherwise available to the public” was not enough of a change to the meaning of “on sale” for the Court to conclude that Congress wanted to alter its meaning.

Seeing such a strong judicial takedown by the Supreme Court on anything is always a bit of a jaw dropper. Clearly, the Court was not impressed with the appeal.

I think an interesting tidbit in this opinion is that the Court looked favorably on the Federal Court’s (the lower court for patent appeals) case law on “secret sales” invalidating patents. While not an express holding, this language seems to indicate that all “secret sales” occurring more than one year prior to the date of the application will invalidate a patent.

The practical tip coming from this case is to always file patent applications before selling or licensing technology.

The case is Helsinn Healthcare SA v. Teva Pharmaceuticals USA Inc., US, No. 17-1229 (01/22/2019).

Link to case.

USPTO issues new Examiner Guidance for Subject-Matter eligibility for software patents

By Matthew J. Booth

The US Patent & Trademark Office (USPTO) recently published an updated Examiner Guidance that applies to the examination of software patent applications (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50).  The hope is that these new Guidelines will speed up the application review process and provide more predictability for the patenting of existing and new software inventions.

First a little background, in 2014 the US Supreme Court decided the Alice case.  Alice redefined how software patents were analyzed by asking whether software patents were eligible for patent protection under 35 U.S.C 101. (See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The aftermath of Alice has been, in my opinion, chaos because courts invalidated scores of issued software patents.  Additionally, the USPTO started refusing to grant scores of patents on software related inventions. Since Congress never fixed “the Alice problem,” the courts began determining on a case-by-case basis (really a patent-by-patent basis) whether claims were eligible for patent protection. The USPTO tried to keep current with these cases by issuing guidance to the Examiners for how to examine software patent applications in light of the fallout from Alice but that offered little relief.  I have seen articles over the past couple of years showing the statistics for the rejection rate of software patent applications post-Alice to be over 90% in some USPTO examination groups. This type of technological shutdown in the USPTO was completely unprecedented.

As I have worked on patent applications over the years, the challenge is to write claims for a software invention that will be patentable and enforceable.  I have often relied on the technique of reviewing case law to look for cases with claims that met that criteria and then mimicking them in writing a new application. This was the first and foremost step in drafting the application and then the question of whether the invention was novel or nonobvious over prior patents actually came later.  This often felt like putting the cart before the horse but it is where we found ourselves in the aftermath of Alice.

This is one of the reasons that Patent Owners and Applicants have been calling on the USPTO to address these examination problems and to come up with a process that will get software patent applications granted while maintaining enforceability. The new Director of the USPTO recognized the problem and promised a fix. That fix has finally come to pass with the issuance of new examination Guidelines.

Breaking the new Guidelines down, they are like a check list for Examiners to go through as they are analyzing software claims. For example, if the claims are written in a certain fashion, then they are subject-matter eligible and the analysis proceeds on to whether the claims are novel and nonobvious. The Examiner continues down the checklist looking at the next set of requirements. If the Examiner reaches the conclusion that the claims are not patent eligible, then a second review and approval by the Director of that particular Technology Group is required prior to issuing a rejection.

I have high hopes that this is at last the light at the end  of the long dark post-Alice tunnel.

“And miles to go before I sleep, And miles to go before I sleep.”

By Matthew J. Booth

That’s a little bit what starting this adventure in blogging feels like. It is also the ending to Robert Frost’s poem “Stopping by Woods on a Snowy Evening.” On January 1, 2019, most copyrighted works published in 1923 went into the public domain. This includes several notable works including “Stopping by Woods on a Snowy Evening,” a dubstep version of “Yes, We Have No Bananas,” and Winston Churchill’s The World Crisis. The practical effect of this is that everyone can now republish worry free those works or adapt them for use in new works. A quick internet search will reveal most of the works that have now entered the public domain.

Why has it been a whopping 21 years since such a large number of works have entered into the public domain? In 1998, works published in 1922 or earlier were in the public domain. In that same year, Congress passed the Sonny Bono Copyright Term Extension Act that increased the duration of copyright protection for works published between 1923 and 1977 from 75 years to 95 years. The practical effect of the law was that the flow of works into the public domain completely stopped for a 21-year period.

How did the public domain get frozen in time for 21 years? One of the prime movers for the passage of the Act was Disney because the first appearance of Mickey Mouse, in the movie Steamboat Willie, occurred in 1928. Under the copyright laws in 1998, that version of Mickey Mouse would have entered into the public domain in 2004. After passage of the Act, this version of the Mouse is still protected until 2024.

A very nice source of information on copyright term and the Public Domain can be found here at Cornell University Library’s Copyright Information Center.