April 2018

“We Must Determine Whether a Monkey May Sue Humans”
Takeaway: “Unless the statute expressly gives animals the right to sue, they do not have the right to sue.”

Yes, this really is a quote from the Ninth Circuit Court of Appeals. The answer to whether a monkey may sue humans is yes . . . and no. On the one hand, the court found that the monkey had standing under Article III of the United States Constitution, but, on the other hand, the monkey lacked statutory standing under 17 U.S.C. § 101.

This question came about when David Slater, a photographer, left his camera unattended in a wildlife reserve. Naruto, a monkey living in the wildlife reserve, picked up the camera and began taking pictures of himself. Later, Slater published a book containing the pictures that Naruto took of himself. Slater additionally claimed copyright of the photos that Naruto took. When PETA and Dr. Antje Engelhardt found out about this publication, they filed a complaint against Slater.

The issue that arises out of this case is whether Naruto, a monkey, actually had standing to sue Slater. Surprisingly, this case is very similar to a prior case brought on behalf of the world’s whales, dolphins, and porpoises (“Cetaceans”) in Cetacean Community v. Bush. There, the Ninth Circuit ruled that the Cetaceans, represented by a self-appointed lawyer, did present a case or controversy against the military because they were being injured by sonar technology. Even though the Cetaceans presented a proper case or controversy satisfying Article III, the court determined that if Congress really wanted animals to have the right to sue, the statutes or “provisions involved therefore should state such rights expressly.” In other words, the Ninth Circuit believes that Congress should expressly state that animals have rights to sue under the specific statute.

In Cetaceans, the court found that even though the Cetaceans satisfied the case and controversy requirement under Article III, there was no express permission for animals to sue under the environmental statutes, and therefore, they lacked statutory standing. Here, just as in Cetaceans, the Copyright statute does not expressly state that animals may sue, and therefore, cannot sue under the copyright statute.

Recent Patent Decisions Attorneys Should Read

U.S. Supreme Court Rules AIA Reviews Are Constitutional
Takeaway: Inter partes reviews at the Patent Office are here to stay as the Supreme Court has held these challenges to be constitutionally valid.

In the case of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., the United States Supreme Court held that inter partes reviews at the United States Patent and Trademark Office (“USPTO”) are constitutional.

This action arose based around Oil States’ patent. Oil States originally sued Greene’s Energy for patent infringement in the District Court and Greene’s Energy counter-claimed with assertions of invalidity. Greene’s Energy additionally challenged the patent’s validity at the Patent Trial and Appeal Board (“PTAB”). The District Court provided a favorable ruling to Oil States, but at the same time, the PTAB ruled that the patent was invalid, which is what spurred this appeal.

The Supreme Court reasoned that patents are “public rights” and therefore, Congress has significant latitude to assign adjudication of those rights to entities other than Article III courts. They determined that because the grant of a patent involves a matter arising between the government and others (i.e. inventors or patent assignees) patent rights fell squarely within the “public rights” doctrine.

Additionally, the Supreme Court determined that inter partes review involves the same principle as obtaining patent protection through prosecution of the patent application. They reasoned that patent rights involve the same interests as the original grant, and therefore, just because an inter partes review occurs after the patent has issued does not make it any different than prosecution.

With this decision in the books it sounds like inter partes review is here to stay. With that said, there may be changes in the future as to what the process becomes as you will find out in the next article about the SAS decision.

U.S. Supreme Court Requires PTAB to Institute EVERY Challenged Claim
Takeaway: When challenging a patent at the PTAB, a petitioner will likely need to consider the claims they are challenging more carefully as the Director may now be more selective in the process.

When a petitioner challenges a patent at the Patent Trial and Appeal Board (“PTAB”), the current practice of the PTAB is to institute only the claims where there is a reasonable likelihood that the petitioner will prevail. This practice often leads to the PTAB only instituting a portion of the challenged claims.

In SAS Institute Inc. v. Iancu, Director, United States Patent and Trademark Office, et al., the United States Supreme Court decided to change this practice. In a 5-4 decision written by recently appointed Justice Gorsuch, the Supreme Court ruled that the Director of the United States Patent and Trademark Office (“USPTO”) must either institute all claims or no claims in challenges at the PTAB.

The majority found that Congress’ intent was that “the petitioner, not the Director, defined the proceeding’s contours.” The majority also found that the inter partes review statute indicated that the USPTO Director’s decisions as to whether to institute an appeal should be a “yes-or-no question” as opposed to a selective claim by claim process.

This decision will most likely change the way the Director decides to institute petitions as well as how petitioners will structure their challenges. This may lead to the Director instituting fewer challenges because this new process will increase the case load for the PTAB. When challenging a patent at the PTAB, a petitioner will likely need to consider the claims they are challenging more carefully as the Director may now be more selective in the process.

Harley-Davidson wins 19.2 Million in Statutory Damages
Takeaway: Even if you do not upload the infringing content on your website, you may still be liable if you are profiting from such content. Be sure to have an anti-infringement plan in place before your company grows too quickly.

Harley-Davidson is an extremely popular motorcycle brand and is distinctly known worldwide. This popularity and recognition is not necessarily from their motorcycle products alone, but also due to their intelligent branding methods and intellectual property portfolio.

Harley-Davidson recently won a lawsuit they brought against Sunfrog, a business that prints custom designs on t-shirts. The reason this case was so unique was because of the way Sunfrog’s business was structured. Sunfrog is a website that allows the community to upload their own custom designs for printing on products such as t-shirts and other apparel. Not only are the designs potentially used for products the designer wants to order but also may be uploaded for others to use. If a designer uploads a design and another user orders a product with that design, the designer would earn up to a 50% commission on the product sold. Sunfrog did not create any of the designs themselves, all of the designs were uploaded by the community of designers.

This case arose when designers uploaded designs that happened to be trademarked by Harley-Davidson. The sale of products such as t-shirts with a Harley-Davidson logo were determined by the court to likely confuse customers as to the source of the product, and therefore, Sunfrog was liable for infringement of the designs.

This is not a case of Sunfrog trying to rip Harley-Davidson off by purposefully creating infringing products, but rather, it is a case of such rapid growth that Sunfrog could not keep up. Their company ended up earning $1,000,000 in their first year of business and expanded to earning over $150,000,000 in the fiscal year of 2017. Without a plan to prevent these issues, Sunfrog simply did not know how to pull down all of the infringing content as it was being uploaded faster than they could determine a takedown strategy.

International Corporations are Using Smaller Law Firms Due to Better Client Services
Takeaway: Due to better client services and factors such as further expertise in the subject matter, international companies are beginning to move their business to smaller and more specialized boutique law firms.

According to a report by Globality, Inc. it appears that large companies are beginning to gravitate toward smaller law firms for specialized legal issues such as intellectual property needs. The report was produced by The Lawyer Research Service who collaborated with Globality to survey over 300 General Counsel and other in-house staff members.

There are a number of reasons these in-house teams are beginning to choose small to mid-sized firms for their work, such as being more innovative, quicker and easier to vet, and having better expertise in the subject matter. With that said, the biggest reason these in-house teams are choosing smaller firms is because they provide better client services.

The trend seems to be that larger companies believe they will receive better and more attentive service from smaller firms because they are competing for attention with similarly-sized companies at big firms. Several in-house counsel staff members have the impression that the smaller firms give them more attention because they feel like they are a more important client to the small firm than they are with one of the big-law organizations.

Data Privacy Protection and the Facebook Lawsuit in the Northern District
Takeaway: There are still a lot of questions to be answered about data privacy online. If you are an online service provider it is important to keep up to date with the current laws and cases that address storage of user data in every state you target users.

As you probably know, data privacy is becoming a major issue in today’s ever expanding technological environment. When you are on the internet it seems as if everything you do is tracked and saved to predict what you are going to do in the future. Because this tracking rightfully makes the public uncomfortable, states have begun to pass legislation that addresses the issue of data privacy and we are just beginning to see how these new rules will play out in our judicial process.

In 2008 Illinois passed the Illinois Biometric Information Privacy Act (“BIPA”). This act was created due to the ever increasing use of human characteristics such as facial recognition, fingerprint scanners, retina scanners, and various other physical characteristics that are being implemented into technology and converted into data.

Now, residents of Illinois have brought suit against Facebook alleging violations of their privacy rights under the Illinois statute. The issues of this case are complicated because just appearing in a photo on Facebook does not necessarily mean that your biometric data has been stored by the company. After all, Facebook’s own research and data indicates that their facial recognition program fails to actually identify an individual 24% of the time. This lack of consistency makes it difficult to determine exactly who is a part of the class action in the first place.

Facebook did manage to have the case transferred to the Northern District of California to fight the case in their home state, but has failed to have the case dismissed. Facebook’s arguments alleging that there have been no concrete injuries such as physical harm or financial loss was not convincing to Judge Donato of the Northern District of California. Judge Donato denied those arguments and has allowed the case to move forward.

It is hard to tell exactly where this case will go at this point in time, but what we can predict is that there will be a lot more tension in the legal system as to user privacy in the near future. If you are a company that operates online and stores user data, be sure to stay up to date with the latest laws and consult a legal professional to determine your best plan to prevent potential lawsuits.

Mexico Patent Office Publishes New Industrial Design Regulations
Takeaway: Industrial design regulations have been updated at the Mexico Patent Office. Make sure to petition to be considered under the new regulation before June 21, 2018 if you have a pending Industrial Design in Mexico.

The Mexico Patent Office has updated their Industrial Design Regulations as of April 27, 2018. The new initial term for a design will change to five years from the filing date of the application and will be renewable for four additional five-year periods. This new regulation will have a maximum twenty-five year term of protection.

Applications that were filed before April 27, 2018 may file a writ to adopt the new law on or before June 21, 2018. Applications that are granted on or before April 27, 2018, which are still active will be able to transition to the new law at the end of their current fifteen-year term. Applicants will have a six-month period from the expiration of their current term to apply for another five-year term.