All I Really Want is Fair Use

Goldieblox is a toy company aimed at getting young girls interested in engineering.  To that end, they sell kits for Rube Goldberg-esque contraptions specifically marketed at young girls (containing lots of pink and pastel colors).  As part of their advertising campaign for these toys, Goldieblox released an ad set to the melody of the famous Beastie Boys song “Girls” with different lyrics in line with the company’s educational aims.  In response, the remaining Beastie Boys sued for copyright infringement.  Goldieblox responded with a motion for declaratory relief on the basis that their use of the melody of “Girls” is fair use.  

This blog has addressed fair use many times, listing the four factors each time.  Still, in the interest of clarity, the four factors are: 1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; 2. the nature of the copyrighted work; 3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4. the effect of the use upon the potential market for or value of the copyrighted work (17 U.S.C. 107).  None of these factors allow a judge to find for or against fair use.  A lot of the analysis hangs on the specific facts of the case.

As in many fair use cases involving commercial parodies, a finding of fair use leans heavily on analysis of the first factor.  Analysis here requires the court to look at how transformative the use is, in addition to looking at the commercial nature of the alleged infringing work.  As stated in my Google Books post last week, a use is transformative if it adds a new and different element to the original work and does not supplant the original work.  The more commercial the work, the more transformative its use of the original must be.  Whether a judge would deem the work transformative depends heavily on how they view the change in lyrics.  The new lyrics clearly change the message of the song.  The original lyrics at the same part of the melody are: Girls — to do the dishes/ Girls — to clean up my room/ Girls — to do the laundry/ Girls — and in the bathroom/ Girls, that’s all I really want is girls.”  Goldieblox replaces those lyrics with: “Girls — to build the spaceship/ Girls — to code the new app/ Girls — to grow up knowing/ That they can engineer that/ Girls. That’s all we really need is girls.”  The change in lyrics is rather substantial and conveys a completely different message.  However, this use of the Beastie Boys song is still in a commercial attempting to sell a product.  That gives the use a highly commercial nature.  Such a use does not automatically result in finding against fair use, but it does work against Goldieblox.

Since the second and fourth factors will not figure substantially into any analysis in this case (both are fairly straightforward, since “Girls” is a creative work and the Goldeblox commercial is a parody of that work), let’s look at the third factor.  The third factor requires that the work claiming fair use not take more of the original than is needed.  Goldieblox probably does fair well with this factor, since parodies require a fairly substantial amount of the original in order to be recognizable.  Since their commercial requires the viewer to recognize the original Beastie Boys song, they can probably use the original melody as long as they change the lyrics.  Goldieblox did precisely that, so the court should find that the third factor favors fair use.

A court’s final judgment in this case depends on how they weight the commercial nature of Goldieblox’s parody.  Courts often allow commercial parodies to have fair use protection.  Goldieblox’s case is different that, say, Weird Al Yankovic’s.  Weird Al writes his own artistic parodies of other people’s music (he also asks for permission beforehand, but that’s another matter).  Goldieblox wrote a parody in order to sell more of their products.  A judge may view that as an inherently more commercial activity than a simple parody song, and find that that precludes fair use.  A judge may also decide that the Beastie Boys’ strong opposition to the use of their music in any commercial requires the judge to weight his analysis more in favor of the Beastie Boys.  As an illustration of this opposition, Adam Yauch (known in the group as Mike D., who passed away last year) actually included a statement in his will that he did not want his music used in advertising.  That opposition may alter a judge’s analysis, and also explain why Goldieblox did not simply ask for permission beforehand (or were unable to acquire such permission).  As with most fair use cases, a lot of the final judgment depends on the facts.

As a final aside, I just want to add that I got an opportunity to try out an Oculus Rift headset yesterday.  I figured that I’d give my preliminary review.  The device is amazing.  You really feel like you’re in the environment projected on the screen in the headset.  I spent about 30 minutes doing two activities: riding a roller-coaster and wandering around in Minecraft.  The Rift made it feel like I was actually in both worlds.  The device tracks your head movements and replicates them on the screen, which allows for the immersion.  On the roller-coaster, I even felt the sensation of speed as I was going up and down.  I can’t wait to get one of my own.

In the meantime, happy Thanksgiving (and Hanukkah, if you celebrate it)!

           

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Google Books Settlement

Last week, the long running Google Books case finally concluded.  This case started in 2005 when the US Authors Guild opted to sue Google over their decision to scan an enormous number of books for their digital library (where Google shows searchers snippets of various documents in the search results).  While Google and the Guild reached a settlement in 2008, a court rejected the settlement in 2011 on the grounds that such a settlement would grant a monopoly on digital libraries.  As a result, the Second Circuit decided to decide whether Google infringed on these authors’ copyrights.

Google made a fairly obvious, if difficult, argument against infringement: fair use.  As stated in earlier blog posts, it is always difficult to predict the outcome of a fair use case.  The four factors in determining fair use from 17 U.S.C 107 (the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work) are relatively vague and require a great deal of factual analysis.  This means that results can vary greatly from case to case, which makes the determination of the judge difficult to predict beforehand.  

One of the major considerations in this case was whether Google Books qualified as transformative.  Transformative works, as the judge points out on page 18 of the opinion, have to add something new and not supplant the previous copyrighted work.  Judge Chin holds Google Books to be highly transformative because the service facilitates book searches for researchers.  The judge also adds that Google Books adds an important service when compared with regular books: the ability to data and text mine.  Paper books cannot provide such services, which tends to find for a transformative purpose and character.  Judge Chin even compares this service to Google’s use of thumbnail images when conducting a web search (which was at issue in Perfect 10 v. Amazon).  In the Perfect 10 case, the court held that thumbnail images were transformative because they provided snippets of copyrighted works that aided in finding the websites for which the user searched.  The judge’s takeaway, that aiding in digital searches represents a transformative use, forms the major logical basis of this ruling.  

The opinion deals with the other three factors less extensively.  The nature of the copyrighted work is addressed briefly, since there is no doubt that books receive copyright protection.  Google Books does take the entire work for its scans, but that does not necessarily weigh against a finding of fair use.  In fact, it supports fair use in circumstances where using the entire work is necessary to engage in the fair use activity (see Bill Graham Archives v. Kindersley).  The Use prong presents Judge Chin’s most nuanced argument.  The Author’s Guild argues that Google Books acts as a book replacement service that would effectively displace the commercial demand for books.  The judge states that this argument does not hold up since 1. Google does not sell its scans and 2. only partner libraries (who already own copies of these books) can download a scan.  In addition, the fact that Google cuts up the book scans into snippets makes it difficult to reassemble the whole book into a usable copy for the casual reader.  As a result, the judge does not think that Google Books will displace the commercial market for books.

All of this taken together leads to a very significant conclusion: that fair use protection exists for a book scan database, in light of its research purposes.  This ruling provides a great deal of protection for Google Books, and allows the service to continue without needing to pay royalties or ask for authors’ permission to display the snippets in a search.  As with internet searching, this fair use protection eliminates a significant potential cost and makes Google Books significantly more useful.  That, in turn, helps researchers and should aid the public good as a result.  Promoting the public good is the goal of copyright (by encouraging art), and why fair use exists as an exception in the first place.  Getting a ruling on the merits also allows for other entities without Google’s resources and legal team to engage in their own book scanning projects, with a clear court case protecting their right to do so.  This case is still likely not over.  The Author’s Guild is already threatening to appeal.  How the Second Circuit Court of Appeals in New York rules should be very interesting.

Due to the fact that I wrote a special post about the Trans-Pacific Partnership on Monday, I will not post an entry on Friday.  On that note, have a great weekend.

 

Trans-Pacific Partnership Breakdown, Part 2

Part two of my breakdown of the Trans-Pacific Partnership (TPP) will look at the copyright and enforcement mechanism sections of the leaked agreement.  Let’s examine these sections in detail.

Copyright

The copyright section of the TPP looks familiar to US copyright attorneys: it greatly resembles the Digital Millennium Copyright Act (DMCA).  The draft still proposes some relatively significant tweaks to international copyright law.  First and foremost, the TPP contains two proposals for copyright terms.  The draft proposes that a copyright should last for the life of the author plus either 70 or 100 years.  The life of the author plus 70 years is the current term for a copyright under US law.  Life of the author plus 100 years would obviously represent a significant extension of these terms.  There appears to be more debate over works not tied to a single author (such as corporate works).  The proposals here include 95 years (the US proposal), 70 years (proposed by four different countries), and 75 years (proposed by Mexico), starting from the year of the first authorized publication.  If there is no authorized publication within a certain time period (25 years or 50 years, depending on the proposal), then the copyright term lasts for either 120 years (US) or 70 years.  The US proposals mirror US law (95 years from publication or 120 years from creation, whichever is shorter), while other proposals last for a shorter period of time.

The TPP also contains a section discussing circumvention of technological protection measures (TPMs).  TPMs are specialized programs or other technological tools to prevent illegal copying of a work.  Some examples of this include measures such as persistent online authentication (requiring the user to remain online to use a program, in order to verify authenticity) or activation codes.  The TPP would, like the DMCA, criminalize trying to get around TPMs (referred to as circumvention).  Like the DMCA, circumvention of a TPM represents a separate charge from the actual infringement.  The significance of this section is less its effect on the US (where the TPM section is currently the law) than on the other countries participating in the TPP.  For more detailed analysis, here’s a thorough breakdown of the TPM section by the Electronic Frontier Foundation.

Enforcement Mechanisms

The enforcement mechanisms section contains one of the most significant changes of US law in the TPP.  The DMCA provides for “safe harbor” provisions protecting certain entities.  Internet Service Providers (ISPs) and Internet Content Providers (ICPs) receive immunity from copyright infringement as long as they maintain a system for addressing copyright infringement.  In practice, this system is the notice and takedown system mentioned in previous posts.  The TPP has a few different proposals on the continued existence of safe harbors.  This section currently contains multiple proposals from different blocks of countries so that, while the main text of the draft still includes language that would maintain limited liability for ISPs in infringement cases, there’s a possibility of increasing or eliminating ISP safe harbors in the TPP.  Two of the proposals float the idea of providing incentives to ISPs for cooperating with content owners to punish infringers.   The TPP also requires signatories to implement a notice and takedown system resembling that of the DMCA’s.  The major difference is that this proposal requires ISPs to maintain such a system and send the necessary takedown notices.  The flaws of this system mirror those of the notice and takedown system used by ICPs, like Youtube.  The major one visible in the draft is the lack of an effective counter-measure for when a party sends an invalid (or even abusive) notice.  The TPP draft lays out a process for how a party could potentially send a counter-notice if the original notice was invalid or in error.  There is no method for restoring the content or addressing the potential harm done through abuse of the notice and takedown system though.  The DMCA contained a provision allowing for some recourse on the part of the alleged infringer.  There does not appear to be a similar provision in the TPP.

Conclusion

What I find most interesting (and potentially troubling) when reading the TPP draft is its resemblance to existing law or proposed laws.  For example, the enforcement mechanisms language (particularly the US proposals) strongly resemble similar provisions in the Stop Online Piracy Act (SOPA) and Protect IP Act (PIPA- the Senate equivalent to SOPA) dealing with increased ISP liability and enforcement responsibilities.  Similarly, a great deal of the copyright sections mirror the DMCA (with a few relatively significant tweaks).  Both point to the primary issue with conducting these kinds of agreements in secret: some of this provisions were rejected by the voting populace when proposed in earlier legislation, which makes the secrecy surrounding the negotiations inherently suspect.  Whether limiting ISP safe harbors, raising copyright terms, or adding new patent categories makes for good policy is a debate best suited for a public forum.  This seems especially true given the general public’s rejection of both agreements negotiated in this fashion (such as the reaction to ACTA in Europe) and rejection of numerous proposals in the draft (as demonstrated by the fate of SOPA).  An agreement like the TPP will potentially limit the US’s ability to alter its IP laws, and such agreements must have the full faith and trust of the public before becoming law.

 

Trans-Pacific Partnership Breakdown, Part 1

Earlier this week, the intellectual property section of the Trans-Pacific Partnership (TPP) leaked to the public (via Wikileaks).  The TPP has been shrouded in mystery since its inception.  The participating governments have conducted the negotiations in a highly secretive manner, preventing potential stakeholders (even Congressmen and their staffers) from seeing the draft text before the document gets finalized.  These transparency issues strongly resemble criticisms of the process for the Anti-Counterfeiting Trade Agreement (ACTA).  The draft text also skews heavily towards proposals in previously rejected legislation (such as SOPA).  While the document resembles current US law on certain matters (particularly copyright), the TPP includes some notable (and objectionable) additions.  This post will primarily cover the sections with the most significant changes: patent law, copyright law, and the enforcement mechanisms.  Because of the complexity of the TPP and its accompanying issues, I will discuss the copyright and enforcement mechanisms sections in their own blog post on Monday.

Trademarks

The trademark section does not contain many significant additions, beyond geographic indicators.  Geographic indicators are when certain items must come from certain regions of the world.  For example, champagne must be from the Champagne region of France (otherwise it is sparkling white wine).  At the moment, geographic indicators are not part of US intellectual property law (which renders certain indicators on items like champagne and pizza unenforceable in the US).  The inclusion of geographic indicators is relatively minor (as it was with ACTA), but it is notable.  Enforcement of geographic indicators would represent a change of US law, after all.

Patents

The patent section includes some radical proposals for changes in the patent law of the countries involved in the TPP.  While the patent law section primarily focuses on pharmaceutical patents (which I have less experience and knowledge of, so this post will not discuss them in any depth), the section proposes allowing for patents on the following: genetics, “plants and animals,  biological processes for plants and animals, and the diagrams, plans, rules and methods for carrying out mental processes, playing games or doing business, and mathematical methods as such; software as such; methods to present information as such; and aesthetic creations and artistic or literary works.” (TPP Draft Article QQ.E.1, subsection 3).

The last section, from “diagrams” onward represents the largest break with US patent law.  It is not entirely clear what this section really patents, particularly in regard to “mental processes.”  This section does appear to allow for patenting game designs, including the mathematical methods, software, and presentation of games.  Such laws would greatly disrupt the gaming industry, by potentially limiting the tools available for smaller developers.  Larger companies, such as Electronic Arts and Activision, have greater access to legal representation and can compile a large patent portfolio quicker than smaller developers.  If existing software patents are any indication, such patent portfolios provide a potential barrier to entry for new competition (since it is expensive to conduct patent lawsuits, due to their technical nature and prolonged periods of discovery).  Finally, the Mexican proposal includes artistic and literary works.  These potentially fall within the jurisdiction of copyright law.   Copyright law normally allows for certain strong exceptions (such as fair use), which ensure that certain parties can continue using the copyrighted content when public policy deems such use wise (such as education).  This overlap potentially renders these exceptions moot.  While this section appears to be proposed by Mexico only, the draft does not note any objection by the other countries.  Other parts of the draft note when certain countries propose or oppose certain sections (both in terms of content and wording).  Such a statement does not appear around this section.

The patent section also contains some interesting language that potentially elongates protection for certain items.  The two major proposals here involve allowing for “inventive step” patents and allows for the term to account for any “unreasonable delays.”  Article QQ.E.1 allows for patenting already known technologies as long as these applications involve an inventive step.  This includes new uses of preexisting technologies.  One potential consequence for such patents is the indefinite extension of patent terms.  Normally, terms last 20 years.  However, if applicants merely have to find new uses for their previous technologies in order to seek a new patent, an entity can potentially seek a new patent every time they find a new use.  Article QQ.E.XX requires parties to adjust patent terms to account for any unreasonable delays in the granting of the initial patent.  If there is a four year gap between when the patent holder filed for examination and when they receive the official grant, then the period must be adjusted to account for that gap.

Check back Monday for Part 2: copyright and enforcement mechanisms.  In the meantime, I suggest reading the Electronic Frontier Foundation’s excellent summary of the TPP at https://www.eff.org/issues/tpp.

Premier League Calls it Quits Against YouTube

While Viacom’s lawsuit against YouTube gets significantly more press, there was another lawsuit against YouTube that also possessed major implications for the online streaming service: the English Premier League’s.  The Premier League (one of the major world soccer leagues for those who don’t follow soccer) attempted to bring a large number of potential plaintiffs (including other sports leagues and various music publishers) into a class action against YouTube.  This class got rejected back in May, with the judge referring to the class as a “Frankenstein class.”  The Premier League recently dropped their suit, and will focus their legal efforts on live streaming websites (like Justin.tv) instead.

This case actually had some unexpected consequences.  The one that fans will enjoy the most is the ability of teams to host their own highlights on YouTube.  The Premier League prohibited their members from using YouTube while the lawsuit was ongoing.  The judge’s restatement of the basic rule of the Digital Millennium Copyright Act (DMCA), that YouTube can only infringe when they have knowledge of infringement on their site because all content is uploaded by users, is also important.  That statement (as paraphrased here) builds on the results of the Viacom case, and reminds copyright holders that they must have some evidence that the site they’re suing knows about the infringement (due to the DMCA’s knowledge requirement).  If Viacom or the Premier League can’t satisfy that knowledge requirement, then they can’t succeed when suing a content site like YouTube (assuming a sufficient notice-and-takedown program).  Finally, the judge’s logic in rejecting the initial proposed class is very sound.  The judge felt that the class was far too broad, and possessed no limiting factor on who could obtain membership beyond the existence of infringement on YouTube.  The judge also states that copyright claims tend to make for poor class actions, because of the factual nature of copyright infringement analysis (title, assignment, usability, and fair use get specific mentions in the opinion).  Since proving fair use by itself requires very particularized analysis of the facts surrounding particular material, it makes sense that classes would (broadly) not work as well as in other lawsuits.

Not having the class left the Premier League with a much weaker case, since Google (YouTube’s owner) could deal with each of the infringement claims in separate, smaller cases.  Now all YouTube has to worry about is Viacom’s appeal.

Ubuntu Trademark Dispute

Copyright and trademark laws do not grant the owners unlimited rights over their work.  These laws primarily prevent content owners from letting competitors use content to their commercial advantage.  For trademark law in particular, trademark protection prevents a company from allowing another company from piggybacking on the owner’s mark.  What trademark law does not permit is stifling criticism.

Canonical, the company that owns Linux distribution Ubuntu, received criticism over a decision to allow internet results when searching on the desktop.  Specifically, some of the results would link to Amazon as a method of raising money for Canonical.  Canonical sent a takedown notice to the site Fix Ubuntu (a site critical of this practice that contained advice on how to remove the Amazon search results), claiming trademark infringement.  Fix Ubuntu, which is run by the Electronic Frontier Foundation’s Micah Lee, refused to follow the takedown order and denied its legal basis.  His experience is also illustrative of why certain exceptions exist in trademark law.

As detailed on Wednesday, trademark fair use (while vague) allows for two major exceptions in trademark protection: nominative use and free speech.  Nominative use mostly deals with incidental mentions for purposes of identification, and doesn’t require permission from the trademark owner.  Lee argued he used the terms Ubuntu and Canonical in order to identify the target of his criticism.  This is partially why nominative use exists as a fair use exception; Lee could not criticize Canonical’s practice of adding Amazon search links without identifying the appropriate trademarks.  To illustrate this point further, think of how difficult that previous sentence would be to write if the author had to ask all of the identified parties for permission to use their trademarks.  Without such permission, that sentence would be either confusingly vague or entirely useless.  Needing such permission would make criticism of any entity employing a registered trademark cumbersome, impossible, or both.

Furthermore, part of the free speech fair use logic is to preserve the right to criticism.  Trademark law exists to prevent consumer confusion.  Intellectual property policy does not favor allowing sodas calling themselves Coke in order to gain sales at the expense of Coca-Cola.  While there is a commercial dimension to Canonical wanting Fix Ubuntu to not using their trademarks (since the site teaches people how to remove a potentially unwanted feature that makes Canonical money), that right does not extend to stifling legitimate criticism (particularly on a non-commercial website).  To his credit, Mr. Lee did remove Ubuntu’s logo and added a disclaimer to the site specifying that he is not affiliated with or endorsed by Canonical in any way.

This analysis is very straightforward from a legal standpoint, but it does illustrate a very important point (also addressed on Wednesday): you can’t use a valid trademark to remove criticism.  It should be a simple lesson, and is hopefully one Canonical is mindful of moving forward.

 

 

Security Agency Trademarks and Fair Use

Can an individual expect fair use protection when using a government trademark?  That question lies at the heart of a dispute between a graphic artist named Dan McCall and the National Security Agency (NSA).  McCall made t-shirts with the NSA’s seal and text that said “The NSA: The Only Part of the Government that Actually Listens.”  The NSA then sent a cease and desist order, asking McCall to take his t-shirts off the market.  The NSA also sent a takedown order to Zazzle (the company making the t-shirts at the time) over the use of their trademark.

This provides an interesting contrast with other sections of intellectual property law.  The government can’t, for example, own copyrighted works (per section 105 of the Copyright Act), though it can receive them through assignment or bequest.  However, the NSA is specifically authorized by statute to protect its symbol and name (in a manner similar to trademark law).  Section 15 of the National Security Act (PL 86-36) allows the NSA to prevent people from “knowingly us[ing] the words ‘National Security Agency’, the initials ‘NSA’, the seal of the National Security Agency, or any colorable imitation of such words, initials, or seal in connection with any merchandise, impersonation, solicitation, or commercial activity in a manner reasonably calculated to convey the impression that such use is approved, endorsed, or authorized by the National Security Agency.”  Section 15 then permits the Attorney General to begin court proceedings to enjoin the offending party.  The major issue to point out is that the NSA’s seal is not protected by Lantham Act, like a normal trademark.  The law protecting the NSA’s trademark is also (not surprisingly) much narrower in scope.

The first thing to look at is whether McCall violated section 15 in the first place.  In order for a violation to exist, McCall’s shirt must be “reasonably calculated to convey the impression that such use is approved, endorsed, or authorized by the National Security Agency.”  As Public Knowledge points out, McCall could make a reasonable argument that his shirt does not convey the impression of receiving any kind of approval from the NSA.  In fact, it seems rather unbelievable that anyone would read a slogan like the one on the shirt (“The NSA: The Only Part of the Government that Actually Listens”) and think that the creator had the NSA’s approval or endorsement.  The shirt even changed the NSA’s slogan on their seal to “Peeping While You’re Sleeping.”  This defense even resembles the normal test for trademark infringement (likelihood of confusion) to a degree, which has factors that include: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant’s intent.  It seems unreasonable that an individual stumbling on the shirt on Cafepress (its current home) would confuse it for something the NSA put out officially.

If this line of argument failed, McCall could argue that his t-shirt is protected by fair use.  Now, it is not entirely clear that fair use would apply to the NSA in the way it applies to normal market actors.  The NSA get its intellectual property protection from its own statute and, as far as I could tell, there isn’t a case clarifying whether a defendant can claim fair use if the NSA asserts these rights.  In addition, there are differences between fair use in trademark law and fair use in copyright law (of which I won’t go into detail, since that is another post on its own).  In either case, fair use finds its philosophical underpinnings in the First Amendment’s right to free speech.  Preserving the right to criticize and parody is seen as a strong enough interest by the US legal system.  Trademark fair use follows this logic, permitting individuals to use trademarks when citing or referring to other products for identification purposes (called nominative use) or in order to parody.  In terms of parody, courts tend to favor protection for less commercial parodies of commercial marks but the limits of this defense are not entirely clear.

However, the introduction of a government actor introduces a significant wrinkle in this analysis: the First Amendment almost certainly protects political speech against government incursion.  McCall could easily state that his purpose in making the t-shirt was to express his political beliefs regarding the NSA’s domestic information collection programs.  That potentially changes a judge’s analysis greatly, since McCall could argue that the First Amendment exists for precisely this purpose (preventing the government from restricting criticism of its activities).  While the government could cite the commercial nature of McCall’s shirts, McCall could argue that the commercial nature of his enterprise is minor compared to the harm inflicted by a government injunction limiting political speech.  Finally, the standard in such a situation is strict scrutiny.  Strict scrutiny requires that the government action be narrowly tailored to serve a compelling state interest.  The government can receive a lower level of scrutiny in some situations (such as content neutral restrictions on rallies) but the government is generally seen as having no sufficiently compelling interest in cases involving speech discussing social, political, or economic matters (Casey v. Brown, 447 U.S. 455 (1980).).  That First Amendment issue may give McCall a significantly more compelling case.

In some ways, this case provides an interesting nexus between intellectual property law and Constitutional analysis.  McCall has decided to try his chances in court.  It should be interesting to see what conclusions the judge will reach.

The Patent Wars Continue

The smartphone patent wars have been an interesting site for a young intellectual property attorney like myself.  The value of patents covering various smartphone technologies has made these cases multi-million (or even billion) dollar affairs with far ranging implications for consumers throughout the United States.  In addition, a case like Apple v. Samsung also provides a great deal of drama.  These cases also provide invaluable insight into some of the quirks of our current patent law regime.

Yesterday, the latest and largest salvo got fired.  A company called the Rockstar Consortium filed a massive patent lawsuit against Google.  Rockstar was created by Microsoft, Apple, RIM, Sony, and Erickson in order to pool their resources to bid on Nortel’s patents when Nortel went under.  The companies together managed to out-bid Google with a $4.5 billion dollar bid when the patent portfolio was put up for auction.  Now Rockstar is using those same patents (seven in particular) to sue Google (though they do not specify a damages amount in their prayer for relief).  

The patents, not surprisingly, are vague.  All of the patents cover different aspects of an “Associative Search Engine”.  These aspects include matching search terms to relevant advertising or providing a relevant ad utilizing user supplied search data with the search results.  The complaint doesn’t list any differentiating factors, such as technological means or algorithms for conducting these activities. That means that the patents include a broad range of activities, and Google potentially infringes unless they can convince the court in the Eastern District of Texas that the patents are invalid.  Rockstar’s CEO, John Veschi, even states explicitly that he thinks that “pretty much anybody out there is infringing, I would think. It would be hard for me to envision that there are high-tech companies out there that don’t use some of the patents in our portfolio.” 

Ars Technica points out a big reason why this is a disturbing development (unless you’re a high profile patent attorney): the utilization of a tech company-created patent troll.  Rockstar is not like Prenda or Lodsys, which were smaller companies that acquired patents then aggressively tried to sue larger companies in order to extract settlements.  Rockstar is funded by Microsoft and Apple, to the apparent purpose of crippling Google by striking at the heart of Google’s empire: their ad revenue from searches.  Rockstar doesn’t make anything, and thus can’t be counter-sued (though Google may opt to sue Rockstar’s backers directly in retaliation).  While companies have used these tactics before (there’s even a term for a non-practicing entity funded by larger tech companies: patent privateer), there hasn’t been a privateer with the kind of scale and scope of patent ownership that Rockstar possesses.  Since Rockstar is technically independent, pre-existing agreements between Google and their owners don’t necessarily apply (Veschi even says as much).

All of this highlights the legal absurdity of the situation.  There’s a good argument to be made that the USPTO should not approve patents that include entire technologies, such as LTE or search engine advertising, in the first place.  Some of the patent requirements, such as enablement and novelty, seem to require more specificity in how a particular claim is supposed to operate.  Theoretically, these requirements should provide limitations on the scope of the patent by limiting the patent to the specific process claimed (or by making previous developments in the same field off limits, in the case of novelty).  In practice, this rarely happens with software.  As the patents listed in the case indicate, a clever attorney can word a claim so that it includes the entire field when it comes to various kinds of software.  

I intend to follow this case quite intently.  It should be interesting to see Google’s response, and how this case develops in the future.