WIPO Launches Visual Search of Key Database

| May 20, 2014

In what may well be the first action of its kind, the World Intellectual Property Organization (WIPO) unveiled earlier this month a visual search interface for its Global Brand Database. The new interface is designed to make it possible for users to look for trademarks by their visual appearance.

The new UI can be approached in two ways: by providing an example or by selecting visual criteria.

If a search reveals a trademark or brand that has some visual characteristics in common with one for which a user is searching, the user can tell the database to use that visual as an example for searching the entire database. Similarly, the user may simply upload a graphic image — perhaps a draft design of its own logo or brand identifier — and ask the database to look for those with similarities.

Alternatively, the user can choose to provide a profile of the characteristics — shape(s), color, typography — and ask the database to produce a list of all trademarked and branded images that meet those criteria.

In its announcement of the new search technique, WIPO said, “The new, easy-to-use image-search technology supplements the database’s other querying criteria, including Vienna Classification codes, brand-holder names, country of origin and others.”

This new interface should open this important database of nearly 13 million records, including 4 million containing visual entries, to a much broader audience of users. This in turn has the potential to save money and time when a company is searching for a new brand identity that it can use internationally without fear of trademark violation.

 

Federal Circuit Rules, Erroneously, That Programming APIs are Copyright, Compares Them to Dickens

| May 15, 2014

The Federal Circuit Court once again revealed its lack of understanding about the intersection of copyright and tech by overturning a lower court verdict and declaring that programming language application program interfaces (APIs) are subject to copyright. These APIs are intentionally short pieces of text such as “java.lang.ref” and “js.object.name” whose only purpose is to make it possible for users of a particular language or software library to use the technology.

The ruling came on appeal of a case brought by Oracle Corp. against Google Inc. for infringement of Oracle’s claimed copyright on all of the APIs in the Java programming language. That language was developed by Sun Microsystems more than 20 years ago and was purchased by Oracle in 2009.

The world of technology was aghast at the unexpected and highly unusual ruling. The sole purpose of an API is to allow computer programs to interact with one another, i.e. functional  —  they are considered to be a basic building tool and should be well outside the scope of copyright.

In a particularly dazzling bit of legerdemain, Judge Kathleen O’Malley compared the snippets of code to the opening lines of Charles Dickens’ A Tale of Two Cities, saying, “no one could contend that this portion of Dickens’ work is unworthy of copyright protection because it can be broken into those shorter constituent components.” She apparently failed to recognize that Oracle was arguing for the copyright to apply only to the shorter constituent components.

To compare and API to Dicken’s authorship is nonsense, in my opinion.  It is fundamental that copyright does NOT protect:  “any idea, procedure, process, system, method of operation… regardless of the form in which it is described, explained, illustrated, or embodied in such a work.”  U.S. Copyright Act, 17 U.S.C. Section 102 (b).  This perfectly describes an API.  This does not in any way describe a literary masterpiece as is the Tale of Two Cities.

If allowed to stand, this ruling could completely turn the software development world on its ear. Hopefully, the full panel of the court will show a bit more understanding not only of the issues but of what’s at stake.

Make Sure All Parties With Interest Are Engaged in Patent Infringement Suit

| May 15, 2014

In an appeal from a bankruptcy ruling (Taylor v. Taylor Made Plastics Inc., 2014-1212, U.S. Court of Appeals for the Federal Circuit, Washington), the appellate court ruled that the omission of an ex-wife who had a 60% interest in the patent in question voided the attempt by the original patent owner to sue for infringement.

Mary Louise Taylor’s ex-husband had been issued a patent. They divorced in 2011 and she was awarded a 60% stake in that patent. He filed an infringement suit in April 2012 but failed to get his ex-wife’s participation or approval. The bankruptcy court threw out the infringement suit on that basis.

The appellate court agreed that patent-holder James Taylor failed to establish either that his ex-wife had waived participation through an agreement with him or that she agreed to join the suit

This should serve as a warning to anyone who holds an interest in any intellectual property. It is clearly important to get the participation of everyone with any interest in the property before proceeding with a lawsuit on the matter.

Filing of Patent Can Act as Constructive Notice of Possible Trade Secret Breach

| May 9, 2014

If someone in possession of another’s trade secrets files a patent application including those secrets, the application may be considered a sufficient notice of possible breach for the purpose of statutes of limitations. That appears to be the result of a recent ruling by the U.S. District Court in the Northern District of California in the case of Wang v. Palo Alto Networks, Inc. (Case No. 12-05579).

In this case, Plaintiff sued Palo Alto Networks for patent infringement and for misappropriation of trade secrets. The court found that the fact that Defendants had filed a patent application more than four years before Plaintiff filed his action prevented him from pursuing on the trade secret portion of the case.

California has a three-year statute of limitations on the filing of a trade secrets violation case. The statute is tolled by the offended party’s actual discovery of the misappropriation or the occurrence of an event which should have resulted in Plaintiff’s discovery of the breach.

Focusing on the issue of whether the filing of a patent application constituted such an event, the court ruled that it did.

In granting summary judgment, the court held that “an inventor actively practicing in the field and prosecuting his own patent application must be deemed to be on constructive notice of published patent applications in the same field.”  Because the Plaintiff was prosecuting his own patent, the court concluded that he either knew, or should have known, of the existence of defendants’ patent in the same field.

“Copyright Troll” Business Model Case Heard Before DC Appellate Court

| May 8, 2014

In a rare event, The DC Circuit Court of Appeals heard arguments in the middle of April in AF Holdings v. Does 1-1058, a case centered on what has become known as the “copyright troll business model.”

These are cases brought by copyright holders which attempt to join together in a single action hundreds or thousands of potential infringers who are known only by their IP addresses. The copyright owner requests that the court order the Internet Service Providers (ISPs) to reveal the names of the owners of those IP addresses it has sued as Does.

In this case, the lower court sidestepped the question of whether all of the alleged infringers could be gathered together in one lawsuit because it said until one of the Does came into court to complain of the burden placed on him or her, it had nothing on which to rule.

Several friend-of-the-court briefs were filed in the case, including notably one by the Electronic Freedom Foundation (EFF). These briefs claim that the business model in question essentially results in substantial numbers of the Does paying nuisance settlements due only to the burden of having to travel to a court outside their residence area to defend the charges.

An EFF report of the hearing said, “we are encouraged that the judges asked the important and thoughtful questions, and clearly understood both the context and implications of their decision.”

A ruling is expected this summer.