Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. A decision from the Eastern District of New York held that a sports news publisher’s embedding in a news article of a photograph of recently retired tennis star, Caroline Wozniacki, was a fair use and not copyright infringement. Wozniacki announced her retirement on her Instagram page and included the photograph in question. The news article was about the post and announcement in the post. Embedding is where the HTML code directs a web browser to retrieve, in this case, a photograph on another server, and then display the image on the web page. Here, the news publisher did not own or license the photograph, but successfully had the case dismissed based on fair use. One key finding supporting fair use was that the news article was about the Instagram post and was a transformative use, and not simply a situation where the photograph was being shown.

2. A recent opinion from the Federal Circuit Court of Appeals took a Delaware district judge to task for a Section 101/Alice decision that was “too cursory to allow for meaningful appellate review.” While the Court did not say that written orders were required, it did say that sufficient analysis of what is a complicated issue is required. This decision, coupled with what we recently said (Takeaway No. 1) about a decision by a different district judge in Delaware requiring patent challengers to be specific about what may be a representative claim in an Alice analysis. Frankly, it appears that district judge rebuked by the Federal Circuit was emphasizing efficiency at the expense of rigor and clarity. The takeaway is straightforward – present detailed and clear arguments to the Court and expect detailed and clear opinions from the Court.

3. In a recent opinion from the Northern District of Illinois, the Court denied a motion for reconsideration of a grant of summary judgment of patent invalidity based on collateral estoppel. The grant of summary judgment was based on the Patent Trial and Appeal Board (PTAB) finding that several related patents owned by the plaintiff were invalid for obviousness. While the Court went through the elements of collateral estoppel, there would seem to be some issues with the Court’s decision. First, the patents asserted in the case were different than the ones invalidated by the PTAB. Second, the burden of proving invalidity in the PTAB is lower than the burden of invalidating a patent in district court litigation. The Supreme Court in B&B Hardware held that decisions of the Trademark Trial and Appeal Board can have preclusive effect in district court litigation, but, unlike the PTAB relative to district court patent litigation, the burdens of proof are typically the same on such parallel issues in trademark cases. It would seem that this case is begging for an appeal.