University of Chicago Faculty Blog

Here are some IP stories with a broad focused from Chicago-based institutions:
The latest edition of the John Marshall Review of Intellectual Property Law is available here. The issue is focused on International Trade Commission (“ITC”) litigation. ITC is a powerful tool, because of the speed of the proceedings and because personal jurisdiction is not required, only that the product or service is brought into the United States. One of the most interesting articles is an overview of the Administrative Law Judge’s (“ALJ”) role in Section 337 ITC proceedings by ALJ Carl Charneski — click here to read the article.
The University of Chicago Faculty Blog is wrapping up an intriguing blog conversation amongst intellectual heavyweights regarding the underpinnings of IP theory and whether the standard economic theories (incentivizing innovation) supporting IP should be broadened to included social and cultural theories (incentivizing broader participation) — click here to read the last post and here to read the first. I cannot do it justice in a paragraph or two, but as we look at various IP reforms in Congress this year, in particular the 2009 version of the Patent Reform Act, it is a good time to consider the underlying reasons and purposes of the IP laws.

Continue Reading Chicago IP News: ITC & U of Chicago IP Conversation

In re Bilski, __ F.3d __ (Fed. Cir. 2008) (en banc).*
Chief Judge Michel, writing for a nine judge majority, affirmed the Board of Patent Appeals and Interferences’ finding that Bilski’s invention — a commodities trading method for hedging risks — did not meet the 35 U.S.C. § 101 patentable subject matter requirement. The Federal Circuit overturned State Street’s “useful, concrete, and tangible result” test as insufficient to determine patentability. The Federal Circuit held that the Supreme Court’s “machine-or-transformation” test was the only test for determining patentability:
A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.
I found Judge Dyk’s concurrence tracing the history of the “machine-or-transformation” test back to the Patent Act of 1793 especially interesting:
In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793).
As with any major appellate decision, we will need eighteen to twenty four months of district court and Federal Circuit decisions to flesh out and fully understand Bilski’s implications. While we argue those cases and await the decisions, there will be plenty of law review and blog analysis. Here are some of the first (I will update with additional posts as they come):**
* 271 Patent Blog (glad to see Peter Zura back in the blogosphere);
* IP ADR Blog;
* Likelihood of Confusion;
* Patent Baristas;
* Patently-O (with Crouch’s usual, in-depth analysis);
* The University of Chicago Law Faculty Blog (Randy Picker has an exceptionally detailed take on the opinion); and
* WSJ Law Blog (saying experts are torn as to whether Bilski will make it to the Supreme Court).
* Click here for the opinion.
** I have updated the list of Bilski blog posts with some new ones.

Continue Reading Bilski: Some Business Method & Software Patents Survive

The Chicago Tribune’s Jessica Guynn reported last week (click here to read the article) that a Southern District of New York judge ordered Google to produce information about YouTube user’s viewing habits. Viacom sued YouTube and its parent Google, alleging copyright infringement based upon the alleged infringing posting of Viacom’s copyrighted content on YouTube. Guynn reports that privacy advocates are concerned about the ruling. But Guynn also quotes Viacom’s General Counsel Michael Fricklas saying that “unequivocally that this information will not be used” outside of the lawsuit.
The WSJ Law Blog also has a great post about the order — click here for the post — explaining the type of information that Google was ordered to disclose:
Viacom wants records from a YouTube database that records each time a video is watched and pairs that with two kinds of information about people who viewed it: log-in names (for YouTube users that have accounts), and IP addresses (for YouTube users without accounts).
For those concerned about the production, there is nothing to be worried about. Virtually every federal case involving sensitive information is governed by a protective order preventing use or disclosure of the information outside of the litigation. And in virtually all of those cases the parties honor the protective order and the information is not disclosed or used besides in the litigation.
[UPDATE:] Randy Picker at the University of Chicago Faculty Law Blog has an interesting post questioning how the information could be kept or produced by Google differently to avoid disclosing identities along with the viewing information, and whether the information is covered by the Video Privacy Protection Act of 1988 (enacted after Judge Bork’s video rental records were obtained during Senate confirmation hearings):
So Viacom has a legitimate interest in seeing YouTube’s viewing records. But of course viewers have a privacy interest in those records as well. Exactly how many views have I contributed to The Evolution of Dance, the, I gather, most-viewed video on YouTube (currently at 91,619,702 views)? (I have watched only because I teach copyright, not because it is quite funny.)
This isn’t abstract or speculative. Indeed, after the release of some information regarding then-Judge Bork’s viewing habits came out in his Supreme Court confirmation hearings, Congress passed the Video Privacy Protection Act of 1988, codified at 18 USC 2710. (See the background page on this provided by the Electronic Privacy Information Center.)
I am unaware of any decisions assessing whether an online video provider like YouTube is covered by the VPPA, but it is written in sufficiently media-neutral terms that it appears that YouTube would be covered. If so, that triggers a number of obligations. The VPPA requires the destruction of records containing personally identifiable information “as soon as practicable, but no later than one year from the date the information is no longer necessary for the purpose for which it was collected.” Personally identifiable information is, unsurprisingly, a defined term and “includes information which identifies a person is having requested or obtain specific video materials or services from a videotape service provider.”

Continue Reading Google Ordered to Produce YouTube Information

A handful of unrelated IP stories from Chicago, where most have been focused on snow & the primaries this week:
The Chicago Tribune reported — click here for the story — that a yearly $5,000 scholarship has been established in the name of Allen J. Hoover, a patent attorney at the law firm of Wood Phillips, who was killed in Wood Phillips’s offices in December 2006. The scholarship will be given to a third-year DePaul University law student focusing on intellectual property law. Hoover was a DePaul alum. At least some good can come from such senseless violence.
The University of Chicago Faculty Blog discussed patent exhaustion and the recent LG v. Quanta Supreme Court oral argument in this post, as part of an ongoing discussion about “New Servitudes” — licenses that attempt to control a purchaser’s rights in software, digital music, etc. (click here to read Professor Van Houweling’s initial post and click here to get the current version of her New Servitudes article at SSRN). Van Houweling’s analysis of the oral argument may not be as deep (note sarcasm) as my analysis of Justice Breyer’s cycling analogy, but it is quite interesting and she edges closer than most to predicting an outcome:

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Sotelo v. Suburban 171, Inc., No. 07 C 2447, 2007 WL 2570355 (N.D. Ill. Aug. 29, 2007) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan denied defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ Lanham Act unfair competition claim. Plaintiffs operated a salon called “Studio 171.” Defendants took over the location of plaintiffs’ salon and operated their own salon using all of the Studio 171 signage and marks. Defendants argued that plaintiffs’ unfair competition claim should be dismissed because the Studio 171 mark was either descriptive or generic and plaintiff did not plead secondary meaning. But the Court held that the argument was premature. A plaintiff need not plead secondary meaning.* And furthermore, plaintiffs did plead secondary meaning, stating that the Studio 171 mark had developed “considerable value” and become “uniquely associated” with plaintiffs’ business. The Court did, however, dismiss plaintiffs’ RICO claim for failing to plead their fraud allegations with particularity pursuant to Fed. R. Civ. P. 9(b).
* The Court did not cite the Supreme Court’s recent decision in Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955 (2007) (read more about the decision at the University of Chicago Faculty Blog). But based on other recent opinions citing Twombly for heightened pleading requirements, I wonder if plaintiffs at least should plead secondary meaning now.

Continue Reading Plaintiff Not Required to Plead Trademark’s Secondary Meaning