The Fair Use Doctrine’s Impact on the Future of Software Development

Written by Kate Van Namen, with contribution from Ryan Chambers

softwareIf 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

Venue Stays the Same in Patent Cases

By Matthew M. Lubozynski

iStock_000019576650LargeThe Federal Circuit recently made an important ruling concerning the proper venue for patent infringement suits.  The decision by the Federal Circuit did not change the current interpretation of the venue statutes and companies will continue to be brought into court in such locations as the Eastern District of Texas, despite having minimal contacts with such locations.

In re TC Heartland LLC, — F.3d —, 2016 WL 1709433 (Fed. Cir. Apr. 29, 2016), the Plaintiff, Kraft Foods Group Brands LLC, brought a patent infringement suit against Defendant, TC Heartland LLC (“Heartland”), in the United States District Court for the District of Delaware.  Heartland moved to dismiss the case or transfer venue to the Southern District of Indiana.

In support of its motion, Heartland argued that it is an Indiana limited liability company with its headquarters in Indiana.  Id. at *1.  Heartland further argued that it had a minimal presence in Delaware, including that it was not registered to do business in Delaware, and that only 2% of sales of the Continue reading Venue Stays the Same in Patent Cases

Steve Hall and Matt Williams quoted in Louisville Business First on the current state of Intellectual Property Law

Steve Hall and Matt Williams, members of Wyatt’s Intellectual Property Protection & Litigation Service Team, were quoted in Louisville Business First.  The article, “Intellectual Property Law Has a Real-World Impact on Businesses,” describes changes in Intellectual Property Law and their effect on companies and individuals alike.

Please click here to read the full article.

The Defend Trade Secrets Act: What Employers Need to Know

By Kacey L. Faughnan, Byron N. Brown, IV, and Sean G. Williamson

IP out the door 4930034SmallBusinesses 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

The University of Alabama Throws a Penalty Flag on the Use of Houndstooth Logo

By Will Gibbons

football picFew college football coaches can claim both a legendary record and a unique choice of headwear in the way the late University of Alabama football coach Paul “Bear” Bryant can. The question circulating the legal community of late, however, revolves around the extent to which the University can assert that uniqueness in the form of trademark protection for the houndstooth design emblazoned on Bryant’s signature fedora hat, as well as the right of an administrative court not to conform to the ruling of a District Court.

The case of the Board of Trustees of the University of Alabama and Paul W. Bryant, Jr. v. Houndstooth Mafia Enterprises, LLC, et al. is currently working its way through the federal courts. Before filing suit, the University and Bryant had opposed the Houndstooth Mafia’s trademark registration, which included a logo with a plentiful amount of houndstooth. The Trademark Trial and Appeal Board (“TTAB”), however, found that the Continue reading The University of Alabama Throws a Penalty Flag on the Use of Houndstooth Logo

Bob Craddock and Graham Matherne author “Trade Secrets and the Inevitable Disclosure Doctrine” for the Memphis Daily News

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 quoted in The Lane Report on Intellectual Property Protection

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.

Congress Fails to Enact New Patent Reform

By Matthew M. Lubozynski 

On December 18, Congress adjourned for the year without enacting any new patent legislation.  This is despite the fact that late in 2014, members of Congress stated that patent reform was a priority for the 114th Congress, and particularly for 2015.  Many commentators believed that significant patent reform was likely for 2015.  This appeared to be the case as, in 2014, new patent legislation had made it out of the House of Representatives but was ultimately killed in the Senate.  Then, at various times throughout 2015, at least 4 bills, (1) The Innovation Act (H.R. 9) (the one previously killed in the Senate in 2014); (2) The TROL Act (H.R. 2045); (3) the STRONG Patents Act (S. 632); and (4) the PATENT Act (S. 1137), were introduced in either the House or Senate dealing with some aspect of patent reform.  However, no law has gone into effect and it now appears that the momentum for patent reform that was prevalent early in 2015 has subsided and there are questions as to whether patent reform will even take place in 2016.

The last major patent reform happened in 2011 with the America Invents Act.  However, prior to that, there had been over 50 years since any substantive patent reform.  With the Supreme Court continuing to take more patent cases and the continued presence of non-practicing entities, a.k.a. “trolls,” it will be interesting to see whether patent reform will be at the top of Congress’ priorities in 2016, as it appeared to be at the beginning of 2015.

 

Glen Reid obtains victory for WCM Industries, Inc. in patent infringement case

Glen Reid, member of Wyatt’s Intellectual Property Protection & Litigation Service Team, served as co-counsel in WCM Industries, Inc.’s recent patent infringement case.  The company was victorious in a jury trial.  A story about the case, entitled “IP Trial an Unusual Victory: Fierce competitors go to trial over IP rights,” appeared in the November 16th issue of Law Week Colorado.

Divided Infringement Broadened

By Matthew M. Lubozynski

The Federal Circuit issued an important en banc ruling in August expanding what can constitute direct infringement of a method claim when one actor does not perform all of the elements of the claim at issue. See Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. Aug. 13, 2015) (“Akamai II”). This concept is referred to as “divided infringement” or “joint infringement.” Previously, if a single actor did not perform all of the steps of the claim, that actor could only be liable for direct infringement if the accused infringer was found to be the “mastermind,” exercising direction and control over the other entities such that the actions could be attributed to it. See Akamai Technologies, Inc. v. Limelight Networks, Inc., 786 F.3d 899, 904 (Fed. Cir. May 13, 2015) (“Akamai I”). “Direction or control” for such a finding was very narrow and the Federal Circuit had stated that this would be satisfied in instances where the “law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party . . . [and] may occur in a principal-agent relationship, a contractual relationship, or in circumstances in which parties work together in a joint enterprise functioning as a form of mutual agency.” Id. at 904-905. This previous standard essentially excluded from infringement any instance where a customer performed any of the steps of a claim in a method patent.

The Supreme Court recognized the narrow scope the Federal Circuit had circumscribed for direct infringement and invited the Federal Circuit to revisit this standard. See Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2120 (2014) (“Our decision on the § 271(b) question necessitates a remand to the Federal Circuit, and on remand, the Federal Circuit will have the opportunity to revisit the § 271(a) question if it so chooses.”). The Federal Circuit took the Continue reading Divided Infringement Broadened