Blurred lines: copyright AFC tests

Blurred lines

The “Blurred lines” music copyright case went wrong because courts are not using modern abstraction-filtration-comparison (AFC) infringement tests.

Copyright covers creative expression but not ideas or information.  Many copyrighted works, however, are a mixture of creative expression and ideas/information.  This mixture gives courts headaches, and as a result, copyright litigation can be unpredictable.

For software copyright infringement cases, courts tend to use an “abstraction-filtration-comparison” (AFC) test. The AFC test was first introduced in the 1992 “Computer Associates v. Altai” case.  For this test, the court (i.e. the judge with expert help) first “abstracts” (analyzes) the work and determines what parts are “expression” (copyright protected) and what parts are ideas (copyright ineligible).  Then the court removes (filters out) the ineligible idea portions. If there are questions about what remains, the court can give the remaining “expression” portions to a jury to decide.

This test puts a lot of responsibility on the court to get things right and is hard to perform in practice, but at least it makes some sort of logical sense.  Throw out the ineligible stuff, and just look at the rest.

The AFC test was inspired by the earlier “Scènes à Faire” (Scenes a Faire) concept often used for literary and movie copyrights. As a quick example, if you want to write a Western novel or film, then horses, guns, salons, bandits and the like are considered essential ideas, and these would be tossed out in a copyright case involving a Western theme.

So what went wrong in the recent “Blurred Lines” music copyright infringement case? The song admittedly tried to capture the party atmosphere of Marvin Gaye’s earlier “Got to Give it Up” song, but the lyrics and music were quite different. Both had party noises and “cowbell”, but these were different party noises and different cowbell. In fact, Marvin Gaye’s copyright was for sheet music that didn’t cover party noises and cowbell at all.

The problem is that outside of software, older tests, such as “objective substantial similarity” and “total concept and feel” are still being used.  These older tests blur the distinction between creative expression and ideas and rely on an unskilled jury to magically sort things out.

To somewhat simplify the “Blurred Lines” case, the jury listened to music that contained a mixture of creative expression (different lyrics and music) and unprotected ideas (generic party noises and cowbell). To make matters worse, the jury instructions did not even tell the jury to try to distinguish between creative expression and copyright ineligible ideas.

So, not surprisingly, the jurors found infringement; most likely because both songs contained party noises and cowbell.  Never mind that these were not covered by copyright and that as far as the actual copyrightable lyrics and music went, the two songs were quite different.

This case is presently on appeal. Various copyright experts have suggested that the way out of this mess is to expand the use of the AFC test from computer software to other types of copyright cases as well. Unfortunately, the law works slowly. Until then, go easy on the cowbell at parties.

Utility patents

Caveman inventor
Wheel: both a machine and a method!

Utility patents are the best way to protect most inventions. But to get one, you have to convince a USPTO examiner that your application is worthy.

Utility patents are by far the most common type of patent.  In fact, the term “patent” almost always means “utility patent”.  Almost all of the famous patents in history – the telephone, light bulb, transistor, airplane, motion picture, are utility patents.

What is a utility patent?  Under US law, utility patents are the type of intellectual property (IP) that covers: “a new and useful process (e.g. a method of doing something), machine, manufacture, or composition of matter (e.g. a drug), or a new and useful improvement thereof.

Note the underlined new. To get a utility patent application allowed (granted), the applicant has to prove to skeptical USPTO examiners that the invention really is new, and not just a trivial (obvious) tweak to older prior art.

Here “useful” means that the invention must have some actual benefit (isn’t clearly impossible or too illegal) and does more than just being decorative.

Utility patents are often the hardest type of IP to get. USPTO examiners usually attempt to use prior art to reject new applications. They expect applicants to rebut their rejections, often several times, before allowing the application.  This process is called patent prosecution. If the applicant does not successfully rebut the various rejections, the application goes abandoned.

Legally, a US patent gives the owner the right to sue to collect royalties/damages and/or to attempt to block someone else from practicing the invention in the United States, but not internationally. The exact scope of legal protection is determined by the patent claims.

Patent valuation: Patent valuation is dictated in part by the desires of others to practice the invention, the effectiveness of the patent in thwarting these desires (what the claims cover), and the invention’s potential market size. If a particular patent covers an invention that no one else wants to practice, that patent isn’t going to be worth much!

Assuming maintenance fees are paid at 3-4, 7-8, and 11-12 years after issue, US utility patents typically last for 20 years from initial filing, sometimes more if the USPTO has taken too long to review the application. After that, they expire and become public domain.

Intellectual property for cheerleaders

Cheerleader
Is the uniform decoration “functional”?

In Star Athletica v Varsity Brands, the Supreme Court ruled that copyrights can cover the industrial designs of clothing, 3D objects, and other useful (functional) things.

The boundaries between different areas of intellectual property, such as copyrights and patents, can be fuzzy.  Copyrights, among other things, cover artistic images and 3D sculptures on various media or “articles”, but the artistic feature must be able to exist separately from any functional (useful) part of the underlying media.

Copyrights v design patents: Copyrights require only minimal originality, are cheap, and last for generations. But, if you want to claim an ornamental design for a functional (useful) item, this falls into design patent territory. Design patents have a higher threshold for originality, are more expensive, and only last for 15 years.

Some things, such as clothing, and other 3D designs that combine artistic/ornamental and useful/functional aspects, fall into multiple areas, but not always as one might predict. Clothing “knock-offs” exist because the overall pattern or cut of clothing is conclusively (legally) presumed to be functional, hence copyright exempt. So this goes into the design patent bin. However artistic fabric patterns can be copyrighted.

Which brings us to the cheerleaders, and the Supreme Court’s (SCOTUS) recently decided Star Athletica v. Varsity Brands case.  This teaches lessons that apply to other mixed artistic/functional things as well, such as 3D objects. So you folks with 3D printers, listen up!

Cheerleader uniforms have certain characteristic lines and colors, and Star Athletica copyrighted a number of these designs. Varsity Brands, possibly believing that fashion knockoffs are no big deal, copied them, got sued, and the case eventually made its way to SCOTUS.

Varsity had some interesting legal arguments – namely that the lines and colors were functional (no copyright) because they distinguished the uniform as a cheerleader uniform. However, SCOTUS didn’t buy it. They cited Mazer v Stein, an earlier 1954 SCOTUS case, where an artistic statute was ruled to have retained copyright protection even when used as a lamp base (made functional). Like this earlier case, SCOTUS ruled that if an otherwise copyrightable feature can be perceived as art separate from the useful article, then the feature can get copyright protection.

Unintended consequences?  So we can have an ornamental design for a functional item (design patent).  We can also have a useful item with an artistic feature (copyright); at least when the artistic feature can exist independently of the useful item. Confusing, and there may be some unforeseen economic issues. Although SCOTUS relied on the previous 1954 Mazar case, copyright laws have changed since 1954.  Copyright now automatically attaches to nearly everything and lasts nearly forever.

In any event, if you are planning on doing fashion knockoffs, be careful.  In fact, if you are any manufacturer planning on incorporating “an old art design” into a functional object, be careful.

35 USC 287: Marking inventions

Remember to mark your products!

To avoid damaging your patent rights, mark your products with patent numbers. The law covers devices but not methods, so marking software is a bit tricky.

You probably have noticed that some products are marked with the word “patent” and a list of patent numbers. These are usually written in small type somewhere on the product or on its packaging. If you (as a patent holder) are planning to start producing your own patented products, what happens if you don’t include this marking?

Because it is hard to tell what is and isn’t patented, Congress passed the 35 USC 287 statute (Federal law) to protect the public from accidental patent infringement. The law holds that absent such marking, your ability to recover past damages from an infringer can be very limited.  For example, past damages may only extend back to the time that you first sent a notice letter to the infringer. This law also covers your patent licensees (who often forget such markings) as well, so remember this for license negotiations.  Otherwise, your licensee could end up damaging your rights.

Although traditionally actual patent numbers had to be marked on the product, a few years ago it became OK to just use “virtual marking”. Here, just marking “patent or pat”, followed by a publically accessible web page address, is enough.  Virtual marking has advantages, but make sure the web page is actually “up”.

To prevent inadvertent loss of rights, it may seem safer to always err on the side of marking, but don’t overdo it.  There is a different law, 35 USC 292, designed to protect the public against false patent marking. So the general rule of thumb is to try to provide adequate patent notice, but avoid being deceptive.

35 USC 287 has some “bugs” and “features”

Bugs: Untended consequence — the law somewhat favors patent trolls. A patent holder who doesn’t produce anything (and hence has nothing to mark) can still recover past damages from up to six years earlier.

Features: Because it is hard to affix a mark to a method, 35 USC 287 generally doesn’t apply to methods patents.

But what about software and software implemented inventions? Software patents often contain a mixture of methods claims and device claims. However, software typically runs on (or is stored in) some sort of physical object. So is software covered by 35 USC 287 or not?  If so, what to mark, and how to mark it? What about websites and apps?

The courts have not been consistent here, and the law is still evolving. However, a fair number of court cases have required marking. It is safest to assume that patent marking is likely required, and then examine legal aspects as they apply to the specifics of your situation.

Thales patent eligibility ruling

HMD display
Not the Thales Head Mounted Display!

A recent Federal Circuit case, Thales Visionix Inc. v United States, continues the process of restoring sanity to the ongoing “Alice” patent eligibility mess.

As previously discussed, since the Supreme Court’s 2014 “Alice” decision, patent law has been burdened with an unworkable “is it abstract?” test for patent eligibility. This test is similar to a medieval test to determine witches:  Step 1:determine if the test subject is a witch abstract”;  Step 2:if so, does the witch float? is there something more?”

The Federal Circuit, charged with cleaning up patent law, has been slowly chipping away at this nonsense. In two earlier cases (Enfish and Rapid Litigation), the Federal Circuit established at least a few reasonable step 1 rules (such as read the entire claim), and now we have another.

Thales Visionix had a patent on a motion-tracking Head Mounted Display (HMD).  This patent claimed a HMD arrangement of inertial sensors and signal processing elements, used in the F-35 fighter jet. Any enemy pilot blown up by this HMD system might not consider this to be “abstract”, but a lower US court was not so easily impressed. They used their own “Alice: it’s abstract” weapon to shot down the HMD patent.

In the absence of rules (the Supreme Court thoughtfully declined to provide any), lower courts have often used a type of “guilt by association” logic, where if a given patent claim has some elements in common with another claim previously ruled to be abstract, then that claim is also abstract. The lower court argued that the Thales patent claims were abstract because the claims allegedly “used mathematical equations (previously determined to be abstract) for determining the relative position of a moving object to a moving reference frame”.

However the Federal Circuit disagreed.  They determined that just because a claim contains a patent ineligible (abstract) concept (e.g. mathematical equations) does not mean that the entire claim is (step 1) “abstract.” Rather, the question is if the patent ineligible concept (math, natural law) is being used to improve some other technique. If so, then the claim as a whole is not abstract. This is similar to their earlier, more biotech-focused, ruling in the Rapid Litigation case.

So as a medieval logic analogy, just because a woman has a cat does not automatically mean that the woman is a witch, if the cat is unusually good at catching mice. If improved mouse catching can be shown, the step 1 conclusion is that the woman is not a witch. There is no need to go on and subject the poor woman to a step 2 “witch float” test.  This is good, because there is a high casualty rate at step 2.

Patent claim charts

Patent claim chart, with one row not matching
Patent claim chart, with one row not matching

Think that someone is infringing on your patent?  Worried you are infringing, or want to show a patent reads on prior art?  Analyze with patent claim charts.

The basic idea behind a patent claim chart is to first break a given patent claim down into a series of smaller sections, and then to determine if each smaller section matches a corresponding aspect of a target of interest. This target may be a potentially infringing product or service, another patent, or even a public domain product or service (to try to show that a patent may be invalid).

Patent claim charts usually follow a row and column table format.  One column contains various sections from a claim of interest, spread out over a number of rows.  Another column contains various aspects of a target of interest, also spread out over a number of rows.  Rows containing sections from the claim column are compared with rows containing aspects from the target column.

If can be shown that every row from the claim column exactly matches up to one or more rows from the target column, then this suggests that claim does describe the target. Note, however, that although every claim row must match with a target row, there is usually no reverse requirement that every target row match-up with a claim row.

Sounds simple, but the devil is in the details.  Since patent claim charts are often part of an adversarial process, each side may feel under pressure to “slant” their claim charts in a way that favors their particular position.

Claim charts can be slanted in many ways.  One of the most common ways is to write the chart in a way that skips over important details, often by not breaking the claim down into small enough sections.

Some of the comparisons may not be accurate.  Also, remember that individual claim terms can sometimes be misleading because they may have been defined in the text of the patent application (or during prosecution), in a somewhat unexpected way.

So read and write claim charts with caution and skepticism.  Don’t use sloppy claim charts to initiate any legal action.  Of course, don’t blindly accept claim charts from others without doing your own independent analysis.

Common law trademarks

Common law trademarks can shield against Federal trademarks
Common law trademarks can sometimes shield against Federal trademarks

Think that a Federal US trademark applies throughout the US? Not always. Welcome to the murky world of common law trademarks.

Under trademark law, certain types of legal rights, often called “common law trademark rights”, automatically (without any registration) go into effect as soon as someone starts using some sort of distinctive mark (word, logo) to identify a product or service that they are selling in commerce.

Common law trademarks are murky because it is often hard to determine who first used a particular mark to sell a particular product or service at a particular geographical location.

Sounds strange?  To better understand common law trademarks, think back to an earlier era when long distance communication was poor and most commerce was local. In earlier eras, Federal and state-level trademark registration systems were either non-existent or impractically hard to use.

Occasionally different merchants, located in geographically different areas and unaware of each other, would innocently start using confusingly similar marks for their local products and services. The problem might go undetected for years until one merchant eventually expanded into another’s geographic area. Customers would then get confused, and the merchants would file lawsuits.

It wasn’t fair to strip an innocent merchant of all rights to their mark.  As a compromise, at least for merchants who had been clearly acting in good faith, the courts would often award each merchant exclusive local trademark rights to their respective marks.  As a result, under common law, different merchants, operating in geographically different areas, could even legally use the same trademark.

Communications and transportation improved, and the need for a Federal level trademark system became apparent.  However Congress faced some problems: 1) due to Constitutional limitations, they believed that they lacked authority to phase out the older, state-level, common law system; 2) it wasn’t even a good idea to phase-out the older system because it was still very important to commerce. Congress’s solution was to acknowledge that the older system would continue to operate and to make the newer Federal trademark system “backward compatible” with the older common law trademark system.

The net effect is that although a Federal trademark normally gives exclusive rights throughout the US, there are some limited common law trademark exemptions or defenses, such as 15 U.S. Code § 1115 (b)(5) and (6).

Consider a merchant (company) who didn’t register a Federal trademark, but who was otherwise innocently using their mark in geographic region “A”.  Assume that this use was prior to the Federal trademark filing of a confusingly similar mark by another merchant, previously only selling in geographic region “B”.  Under 15 U.S. Code § 1115 (b)(5) and (6), the merchant in region “A” can argue “common law rights”, and with adequate proof keep using this mark in region “A”. The Federal trademark holder (the other merchant) will otherwise have full US rights outside of region “A”.

Copyrights and creativity

macaca_photograph300
Macaca self-photograph. No human creativity, so no copyright?

Copyright protection requires that a work have at least a minimum amount of human creativity, but the laws are vague as to what this minimum is.

Legally, US copyright protection is provided for information (typically preserved in a non-transitory medium) that has at least a small element of a human author’s own creativity. Courts have held that mere facts and ideas alone can’t be copyrighted. The amount of creativity can be very small, but it isn’t zero.  For example, using human judgment to select and compile facts according to personal criteria often qualifies, and an author’s annotations of facts may also qualify, but routine alphabetical sorting is not enough (Feist Publications v. Rural Telephone, 499 US 340, 1991) .

From an engineering or mathematical perspective, these rules may look vague. This is in part because copyright concepts date back hundreds of years, back to the early days of printing presses, and have evolved slowly over time through various laws and court decisions. However copyrights are big business, and copyright law enforcement tends to be efficient and harsh. So like them or not, the rules are important.

One area where the rules are fuzzy is short works, such as short sections of text or individual photographic images. What is the minimum work (creative information) that might get copyright protection?  The rules are not uniform throughout the world, and here we are discussing US laws.

Short text:  Very short text fragments are often considered too trivial (de minimis) for copyright protection, but the court will consider originality here, and more originality gets better protection. Although there is no minimum word-count cut off, text fragments of 11 words or less at the “news article” level of originality are often considered non-infringing.

Individual photographs:  Again the law requires a small amount of human creativity for copyright protection.  The US copyright office will not register works produced by non-humans, and lower court cases are consistent with this decision.  Additionally, exact copies of public domain work (Bridgeman Art Library v. Corel Corp.) are also exempt from copyright. Otherwise, the courts often ignore the creativity requirement.  This raises some interesting questions for future cases. However, unless the law changes, assume that copyright applies to nearly all human-produced photographs, no matter how repetitious, trivial or otherwise non-creative.

There are other copyright exceptions.  Federal Government work is often not copyrightable.  Further, under “fair use”, there can be additional exceptions where it is OK to reproduce another’s copyrighted work.  Fair use rules are complex and will be the topic of another discussion.

Halo and reckless infringement

The Halo decision
The Halo decision

The Halo decision; and how to avoid court-ordered punitive damages for culpable patent infringement (recklessly infringing known patents)

One problem that both startups and established corporations face is what to do in situations where their product might infringe on someone else’s patent.  If the corporation ends up in court, and a judge determines that the infringement was somehow unusually extreme (e.g. egregious), then the judge may punish the offender by awarding up to three times actual damages (punitive damages). This can severely damage or destroy the infringer.

But what is “unusually extreme”?  Is it when an engineer is worried about a particular patent, or a competitor sends a warning letter, but the company proceeds anyway?  How close does the product have to match the patent?

The law has been going back and forth on this.  Earlier the rules were strict. Then the rules became so lax that punitive damages were hardly ever awarded. Now, in the June 2016 case of Halo Electronics v. Pulse Electronics, SCOTUS (Supreme Court of the United States) has clarified that the rules are somewhat in-between these two extremes.

In the Halo decision, SCOTUS clarified that what is relevant is “culpability”, which in essence is the state of mind of the person (actor) at the time of the conduct.  In a corporate setting, this is likely the state of mind of the decision makers at the time they either decided to launch the product, or decided to keep selling in the face of some knowledge of infringement.

In particular, the issue is one of acting recklessly (not like a normal person) and/or with willful misconduct while knowing that there was a patent infringement issue.  The court can determine this if the majority of the evidence supports this conclusion (i.e. preponderance of the evidence standard).

Getting advice of legal counsel:

Earlier, when the rules were strict, the courts, in essence, created a duty to get the advice of legal counsel before acting. However later, when the rules were lax, there was not much of a need for this.  Courts in this era set the threshold for punitive damages so high that such damages were almost never awarded.

Now, with the present rules, the situation is in-between.  Failure to get the advice of legal counsel does not automatically prove that a company acted recklessly. However getting advice before acting (e.g. launching a product) can help prove lack of recklessness. Timely advice can help establish that the company acted with normal caution, thus hopefully avoiding punitive damages.  But note that there is a timing issue:  the legal standard is the state of the mind at the time of the (infringing) conduct. SCOTUS is not impressed by legal arguments concocted afterwards.

Design patent infringement

Three-way visual comparison test
Three-way visual comparison test

Design patent infringement isn’t based on exact copying. Rather the test is if an “ordinary observer” will see “substantial similarity”. 

Determining if a particular design of interest does, or does not, infringe upon another design patent is an interesting gray area of intellectual property law.

According to the 2008 Federal Circuit ruling in Egyptian Goddess, Inc. v. Swisa, Inc.” 543 F.3d 665: to infringe, a given design does not have to be an exact copy of another design patent.  Rather, the question is one of “substantial similarity” under the “ordinary observer” test.

Great — what the heck is this, and how does this test determine design patent infringement?

The underlying idea is that customers looking to purchase a design patented product “Y” should not be deceived by similar looking product “X”.

So as a practical matter, you should run this test using ordinary observers. Realize that if you personally are involved, it may be difficult for you to be fully objective.  In this case, you are probably not a suitable “ordinary observer”.  Instead, determine if disinterested outsiders see “substantial similarity“.

Although sometimes the differences between a given design and a particular design patent may be so great that no further comparisons are necessary, sometimes the designs are close. Here a “three-way visual comparison test” can be useful. This test can be done by making a composite illustration showing the patented design on one side, the “accused design” (i.e. the design being investigated) in the middle, and other designs representing the closest prior art on the other side.

Essentially it is a pattern recognition problem.  The idea is to use the prior art examples to instruct the ordinary observers as to how much variation is typical in this field.  Then the ordinary observer can determine if the design of interest is overly close to the design patent of interest, or not.

This sort of approach was used to compare handheld blender designs in Braun Inc. V Dynamics Corp. 975 F.2d 815, in 1992.  As you can see in the above image, the “accused design” was visually much closer to the patented design than it was to the closest prior art. The court determined that the “accused design” was in fact infringing.

The best times to consider these issues are before you start producing and selling a new design. So if you have a new design that you are worried about, get the opinion of some neutral outsiders ASAP.  Indeed, consider running some focus groups as appropriate. If things look too close, consider making some further design changes, and trying again.