Cyberspace Law: Technology Licensing

Constitution

  • Article 1, Section 8 Congress shall have the power to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries(Annotations to this clause).
  • Article 1, Section 8

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Cases

  • A&M Records, Inc. v Napster, Inc. 239 F.3d 1004 (9th Cir. 2001) Plaintiffs are likely to prevail on their claims of copyright infringement.
  • A&M Records, Inc. v. Napster, Inc. Nos. 00-16401, 00-16403 (February 12, 2001) While plaintiffs have shown that the digital file sharing service is likely to contribute to infringement of their copyrights, and defendant has shown no valid defense for its service, the district court's preliminary injunction was impermissibly overbroad in requiring defendant alone to police its service, as plaintiffs have some responsibility for protecting their own intellectual property.
  • ALS Scan, Inc. v. Remarq Communities, Inc. 239 F.3d 619 (2001) When a letter provides notice equivalent to a list of representative works that can be easily identified by the Internet service provider, the notice substantially complies with the notification requirements of 17 USC 512(c) 3) A), and the ISP must remove infringing works or lose its safe harbor under the Digital Millenium Copyright Act.
  • Am. Online, Inc. v. At&T Corp. No. 99-2138 (4th Cir. February 28, 2001) While registration of the mark "Buddy List" provides prima facie evidence that cannot be defeated on summary judgment, the mark "You Have Mail" is generic and unenforceable and plaintiff's failure to show priority in the mark "IM" renders it unenforceable as well.
  • Amazon, Inc. v. Barnesandnoble.Com, LLC. 239 F. 3d 1343 (Fed. Cir. 2001) , No. 00-1109 (February 14, 2001) Plaintiff is not entitled to a preliminary injunction on a likelihood of prevailing on a patent infringement claim, where the validity of the patent is seriously in question. Defendant has shown that prior art exists which a jury could find reasonably anticipated the "One-Click" method of purchasing items over the World Wide Web.
  • Apple Computer, Inc. v. Articulate Sys., Inc. No. 99-1165 (Fed. Cir. December 7, 2000) Language in a claim preamble acts as a claim limitation only when such language serves to "give meaning to a claim and properly define the invention," not when the preamble merely states a purpose or intended use of the invention.
  • Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc. No 00-1475 (Fed Cir. August 17, 2001) Where a claim specifies a changing rate of data transfer, no combination of static rate data transfer devices can be infringing under the doctrine of equivalents, even if both devices work in the same fashion and perform the same function.
  • Costar Group Inc. v. Loopnet, Inc. No. DKC 99-2983 (D. Md. September 28, 2001) The safe harbor defense under the Digital Millennium Copyright Act, 17 USC 512(c) 1), protects online service providers even if they have a human review process for determining whether material is infringing, as long as there was no actual knowledge of copyright infringement.
  • Diamond v. Diehr 450 U.S. 175 (1981)
  • Eli Lilly & Co. v. Natural Answers, Inc. No. 00-1375 (7th Cir. November 21, 2000) Defendant's use of Plaintiff's mark in the meta tags within the source code of its web site is probative of its wrongful intent and justifies weighing that factor heavily in the likelihood of confusion analysis.
  • Express One Int'l, Inc. v. Steinbeck No. 05-00-00617-CV (Tex. Ct. App. August 22, 2001) Using a trademark as a screen name on the Internet does not convert an intangible property right into a tangible one subject to liability for conversion.
  • Globetrotter Software, Inc. v. Elan Computer Group, Inc. No. 00-1110 (Fed. Cir. January 18, 2001) Where a unique identifier is assigned to each license file regardless of whether that license file contains any licenses, the identifier is a defining characteristic of the file as well as being file content, so it was not necessary for the district court to identify a structure before limiting the means-plus-function claim.
  • Greenber v. Nat'l Geographic Society __ F.3d __ (11th Cir. 2001) holding that under 17 USC 201(c) of the Copyright Act, a CD-ROM of past magazine issues is neither a "revision of collective work" of the copyrighted photographs in each issue, nor subject to a fair use defense, and the magazine must compensate photographers for subsequent use of their photographs.
  • Hilgraeve Corp. v. Symantec Corp. Nos. 00-1373; 00-1374 (Fed. Cir. September 17, 2001) Where the claim construction distinguishes prior art as unable to prevent an operating system from accessing a computer virus, defendant's expert cannot prove non-infringement by showing abnormal operating conditions or special configurations that avoid infringement.
  • Interactive Gift Express, Inc. v. Compuserve Inc. 231 F.3d 859 (4th Cir. November 3, 2000) Where neither the patent claim language nor the specification preclude it, defining "a point of sale location" as a location where a consumer goes to purchase material objects embodying predetermined or preselected information permits a consumer's home to be a point of sale location.
  • Interactive Gift Express, Inc. v. Compuserve Inc. No. 99-1324 (Fed. Cir. July 13, 2001) A patent specification may allow a residence to be a point of sale location where the consumer uses a computer or other interactive electronic device to make a purchase.
  • Intergraph Corp. v. Intel Corp. No 00-1048 (Fed Cir. March 01, 2001) Where a corporation sells a division, along with rights relating to patents developed by that division, a pre-existing third party license does not encumber patents resulting from applications pending at the time of transfer.
  • Lotus Dev. Corp. v. Borland Int'l, Inc. 49 F. 3d 807 (1st Cir. 1995) Because we hold that the Lotus menu command hierarchy is uncopyrightable subject matter, we further hold that Borland did not infringe Lotus's copyright by copying it) The judgment of the United States Court of Appeals for the First Circuit was affirmed per curiam by an equally divided U.S. Supreme Court in Lotus Development Corp. v. Borland Intl., Inc., __U.S. __ (1996).
  • MAI Sys. Corp. v. Peak Computer, Inc. 991 F.2d 511 (9th Cir. 1993) Copying software to RAM violates license.
  • Matthew Bender & Co., Inc. v. West Publishing Co. Nos. 00-7029, 00-7070 (2d Cir. January 23, 2001) A court may not assess attorney's fees against a publisher for providing insufficient copyright notice on government works under Section 403 of the Copyright Act, 17 USC 403.
  • Microsystems Software, Inc. v. Scandinavia Online AB No. 00-1503, (1st Cir. September 27, 2000) Copiers of the code who chose not to become defendants tried to appeal the District Court injunction against publishers of a bypass code known as "cp4break.zip" or "cphack.exe" as well as "all persons in active concert or participation" with them. However, these putative defendants had no standing to appeal district court's injunction because they failed to intervene in the case below.
  • Microware Systems Corp. v. Apple Computer, Inc. No. 00-2006 (8th Cir. January 16, 2001) Apple's MAC OS 9 name does not violate Microware's trademark for its OS-9 operating systems, since the parties largely sold to entirely different markets, plaintiff did not claim any lost sales, and the description was customary in the industry.
  • Networld, LLC v. Centrall Corp. No. 99-1257 (Fed. Cir. March 14, 2001) Where an allegedly infringing computer system does not contain a local server counterpart of the limited database "caching" function of the patented local server, it does not perform all of the functions of the local server computer so there is no literal infringement nor infringement under the doctrine of equivalents.
  • New York Times Co., Inc. v. Tasini No. 00-201 (US June 25, 2001) Databases that reproduce and distribute articles standing alone and not in context, and not as part of that particular collective work to which the author contributed, are not revisions for purposes of the 17 USC 201(c) safe harbor from copyright infringement).
  • Panavision Int'l v. Toeppen (9th Cir. 1998) Interprets the Federal Trademark Dilution Act, 15 U.S.C. § 1125(c) as it applies to internet domain names. Panavision accused Dennis Toeppen of being a "cyber pirate" who steals valuable trademarks and establishes domain names on the Internet using these trademarks to sell the domain names back to the rightful trademark owners. The 9th Circuit concluded that Toeppen made commercial use of Panavision's trademarks and his conduct diluted those marks.
  • Planetary Motion, Inc. v. Techplosion, Inc. No 00-10872 (11th Cir. August 16, 2001) Free distribution of software over the Internet with no existing business, no intent to form a business, and no sale under a mark constitutes "transport in commerce" under the Lanham Act, 15 USC 1127, sufficient to establish trademark rights.
  • Qualitex Co. v. Jacobson Products Co., Inc. 115 S. Ct. 1300 (1995) Lanham Act permits the registration of a trademark that consists, purely and simply, of a color.
  • Random House, Inc. v. Rosetta Books LLC No. 01cv01728 (S.D.N.Y. July 11, 2001) The right to print, publish and sell a work in book form does not include digital rights unless specifically stated.
  • Specht v. Netscape Communications Corp. No. 00 Civ. 4871 (S.D.N.Y. July 3, 2001) The act of downloading software, without any corresponding action to indicate express assent and acceptance of a "click-wrap" contract, does not indicate a meeting of the minds, so provisions of the contract requiring arbitration of disputes are unenforceable.
  • State Street Bank & Trust Co. v. Signature Fin. Group, Inc. 149 F. 3d 1368 (Fed. Cir. 1998)
  • TCPIP Holding Co., Inc. v. Haar Communications, Inc. No. 99-7744 (2d Cir. February 28, 2001) Under the Federal Trademark Anti-Dilution Act, 15 USC 1125(c), weak, non-distinctive, descriptive marks do not qualify for the Act's protection, even if famous.
  • The Rodgers & Hammerstein Org. v. UMG Recordings, Inc. No. 00cv09322 (S.D.N.Y. September 25, 2001) Under 17 USC 115(a) 1), the compulsory license allowing distribution of copies of songs on phonorecords does not extend to streaming audio over the Internet.
  • Universal Studios v. Reimerdies 82 F. Supp. 2d 211 (S.D.N.Y. 2000) DeCSS case
  • Xerox Corp. v. 3Com Corp. No. 00-1464 (Fed. Cir. October 5, 2001) Where the patent for single stroke symbols (used for improved computer recognition of human handwriting) relies upon both geometric shape and the direction of the pen in creating the character, the court must look to both aspects in deciding the issue of infringement.

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Statutes

Cases

  • Hendrickson v. eBay, Inc. __ F. Supp. ___ (C.D.Cal. September 4, 2001). Internet auction service not liable in copyright for bootleg videotape.

Regulations

Statutes

Other Government Documents

  • Examination Guidelines for Computer-Related Inventions 61 FR 7478 (February 28, 1996). The Guidelines are based on the PTO's current understanding of the law and are believed to be fully consistent with binding precedent of the Supreme Court, the Federal Circuit and the Federal Circuit's predecessor courts.

Treaties

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