By Stephen Hall
Once-in-a-generation patent reform was introduced in our country about five years ago. Similar to many major initiatives, it may have reaped a few unintended consequences as well. Andrei Iancu, current nominee for USPTO Director, has written about one of these consequences that affects certain procedures at the Patent Office. Among his many other writings, he also has written substantively concerning the patentability of software. This post examines Mr. Iancu’s writings on both topics, and offers some thoughts on how his thinking could affect future patent cases.
THE SUBSTANTIVE: WHEN SHOULD SOFTWARE BE PATENTABLE?
There is not and never has been a bright line rule on the patentability of software-based systems. Rather, patentability depends on the nature of the problem the system solves and the extent of the improvements over existing technology present in the solution.
Although most cases addressing the software issue begin by citing the 2014 Alice case by the Supreme Court, Mr. Iancu was Continue reading Will the New USPTO Director’s Practical Thinking Translate to a More Flexible Approach and Better Decisions?
Mark Vorder-Bruegge, Jr. has become a Fellow of the American College of Trial Lawyers, one of the premier legal associations in North America.
The induction ceremony at which Mr. Vorder-Bruegge became a Fellow took place recently before an audience of approximately 600 persons during the recent 2017 Spring Meeting of the College in Boca Raton, Florida.
Founded in 1950, the College is composed of the best of the trial bar from the United States and Canada. Fellowship in the College is extended by invitation only and only after careful investigation, to those experienced trial lawyers of diverse backgrounds, who have mastered the art of advocacy and whose professional careers have been marked by the highest standards of ethical conduct, professionalism, civility and collegiality. Lawyers must have a minimum of fifteen years trial experience before they can be considered for Fellowship.
Continue reading Mark Vorder-Bruegge Admitted to American College of Trial Lawyers
Matt Lubozynski, member of Wyatt’s Intellectual Property Protection & Litigation Service Team, wrote an article that was recently published in the Memphis Daily News. The article, “Patent-holders Feel More Secure Thanks to Patent-Infringement Lawsuit Ruling,” discusses how the Supreme Court’s decision in Halo Electronics, Inc. v. Pulse Electronics, Inc. has helped ease the rigid standards required to collect enhanced damages against a patent infringer.
Please click here to read the full article.
Written by Kate Van Namen, with contribution from Ryan Chambers
If a software company makes a free tool available online, can competing developers use it without the company’s permission? According to a California jury, the answer is yes, so long as the developers’ actions constitute fair use under The Copyright Act.
The Copyright Act, 17 U.S.C. §§ 101, et. seq. gives copyright holders exclusive rights to copyrighted material. However, fair use is a limitation on those rights and can provide a powerful defense to copyright infringement. Fair use is an exception to the rule that no one may use copyrighted material without permission from the owner, and allows copying for limited purposes such as criticism, comment, news reporting, teaching, scholarship, and research. If any given use qualifies as fair use, then no infringement has occurred. There are four factors which must be considered when evaluating whether the use of copyrighted material is fair: (1) the purpose of character of the use, including whether such use is Continue reading The Fair Use Doctrine’s Impact on the Future of Software Development
By Kacey L. Faughnan, Byron N. Brown, IV, and Sean G. Williamson
Businesses now have an additional weapon with which to protect their trade secrets. Effective May 11, 2016, the Defend Trade Secrets Act (“DTSA”) was signed into law. The DTSA provides a federal cause of action for the protection of trade secrets related to products or services used, or intended for use, in interstate or foreign commerce. Traditionally, trade secrets have not enjoyed the same protections under federal law as other forms of intellectual property, like patents, trademarks, and copyrights. Instead, owners of trade secrets had to rely upon a patchwork of state laws and various adoptions of the Uniform Trade Secrets Act to safeguard their innovations. The DTSA only broadens trade secret protection, leaving intact the parallel remedies available under state law. Yet, the implementation of the DTSA will help to alleviate the uncertainty and inconsistent results that previously occurred in some cases as a result of state-by-state variations in trade secret law.
The enactment of the DTSA provides increased forum choices for businesses taking legal action to protect trade secrets. Prior to the DTSA, federal courts were only available as a forum in limited cases. The new law also increases the amount of Continue reading The Defend Trade Secrets Act: What Employers Need to Know
Bob Craddock and Graham Matherne, Partners in the Firm’s Litigation & Dispute Resolution Service Team, wrote an article that was recently published in the Memphis Daily News. The article, “Trade Secrets and the Inevitable Disclosure Doctrine,” explains the Tennessee Uniform Trade Secrets Act and how it can prevent a former employee from stealing a company’s trade secrets.
Please click here to read the full article.
Steve Hall, an experienced patent lawyer and litigator, and member of Wyatt’s Intellectual Property Protection & Litigation Service Team, was recently quoted in the February 2016 issue of The Lane Report. The article, “Many Options to Protect Intellectual Property,” draws upon the knowledge of local experts in the field and describes various ways to ensure a company’s intellectual property is protected.
Please click here to read the full article.
Steve Hall, member of Wyatt’s Intellectual Property Protection & Litigation Service Team, will be speaking at the Defense Research Institute‘s (DRI) Intellectual Property Seminar on the topic “Using the AIA’s First to File Rule and the Written Description Requirement to Invalidate Patents” on May 6, 2016 in Nashville. Mr. Hall’s presentation will teach attendees how to use the “written description” requirement, along with recent amendments to the Patent Act, to challenge a patent’s validity in a way that was not available to defendants before 2013, when the First-to-Invent features of the America Invents Act went into effect.
Event details to follow.
By J. Graham Matherne
Your company sponsors, at your offices, a charitable, newsworthy event. Local celebrities attend. Afterwards, you have numerous “selfies” of you and your employees with those celebrities. You want to place various “selfies” on your website but don’t want to go to the trouble of getting the celebrities’ permission first.
While it is always best practice to gain permission, if you don’t, will you violate Tennessee’s law prohibiting misuse of another’s name and likeness for commercial purposes?1 How’s this for a lawyer’s answer: “It depends.”
The Tennessee Personal Rights Protection Act (“TPRPA”) provides that “every individual has a property right in the use of that person’s name, photograph, or likeness in any medium in any manner.” T.C.A. § 47-25-1103. The TPRPA applies, however, only when the unauthorized use is in a commercial, advertising, sponsorship or endorsement context. T.C.A. § 47-25-1105(a).
It is permissible under the TPRPA for one to use another’s name or likeness if the use is in connection with a newsworthy, public affairs or sports-related event. T.C.A. § 47-25-1107(a). But Tennessee courts suggest that if Continue reading Posting of “Selfies” Taken with Celebrities at Company Functions – Possible Violation of Publicity Rights?
By Carl Eppler
Recently, the United States Court of Appeals for the Ninth Circuit issued an opinion that further defines the intersection of the “fair use” defense to copyright infringement and the Digital Millennium Copyright Act (15 U.S.C. § 512) (the “DMCA”). In Lenz v. Universal Music Corp., No. 13-16106, 13-16107 (9th Cir., Sept. 14, 2015), the Court stated that in order for a copyright holder to send a take-down notice under the DMCA to a host of online content and meet the DMCA’s requirement of a “good faith belief” that the material at issue is not authorized, it must have considered whether the material makes fair use of the copyright.
In brief, this case arose after plaintiff Stephanie Lenz posted a short video clip on YouTube. The 29-second clip showed Lenz’s child dancing to Prince’s hit song, “Let’s Go Crazy.” Universal Music sent a take-down notice to YouTube, alleging the use of the song in the video was unauthorized, and YouTube removed the video. Lenz then sent a counter-notice to YouTube to have the video restored, to which Universal Music protested. Lenz then Continue reading Controversy or Sign o’ the Times?: Fair Use, the DMCA, and Lenz