Today the U.S. Copyright Office will officially begin accepting registrations for some works online.  The works that may be registered online are "basic claims" for literary, visual arts, and performing arts works (including motion pictures, sound recordings and single serials).  A "basic claim," which is eligible for online registration must be one of:

1. a single work;
2. multiple unpublished works by the same author(s) and owned by the same claimant; or
   
3. multiple published works all first published together in the same publication on the same date and owned by the same claimant.

The benefits of filing online are:

• reduced filing fee of $35 (compared to $45 for a basic claim);
• faster processing time;
• earlier effective date of registration (the effective date is the date the complete application is received by the Copyright Office, so online filing eliminates the delay of mailing);
• online status tracking;
• secure payment by credit or debit card, electronic check or Copyright Office deposit account; and
  
• the ability to upload certain categories of deposits directly into eCO as electronic files.

The system has been in beta testing the last several months.  Read the press release regarding the launch here.

Update (4:45):  The system is now available at this link.

In a decision last week, the Federal Circuit affirmed a district court's finding of no infringement and invalidity for obviousness, and reversed the district court's finding of unenforceability due to inequitable conduct.

The Federal Circuit, citing KSR, noted that an obviousness analysis can take account the inferences and creative steps that a person of ordinary skill in the art would employ, and held that there was a only small logical gap between the prior art and the claim at issue that could be closed by a person of ordinary skill in the art pursuing known options within his or her technical grasp and therefore the claim was obvious.  

Regarding inequitable conduct, the court reaffirmed that intentionally misleading or false statements made in a petition to make special can lead to a finding of unenforceability, even if the statements do not relate to the patentability of the invention, as long as the false statement succeeds in obtaining expedited review of the application.  Here, however, the evidence was just as susceptible to the inference that intentional misrepresentations occurred as to the inference that the statements were either innocent, not misleading, or both.  As stated by the court: 

Whenever evidence proffered to show either materiality or intent is susceptible of multiple reasonable inferences, a district court clearly errs in overlooking one inference in favor of another equally reasonable inference.  All reasonable inferences must be drawn from the evidence, and a judgment then rendered on the evidence as informed by the range of reasonable inferences.

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In a decision last week, the Ninth Circuit affirmed the district court's grant of summary judgment in a copyright case, holding that a coauthor of a story treatment is not necessarily a coauthor of a motion picture produced based on that treatment, and the factors applied to determine coauthorship led to the conclusion that the coauthor of the treatment was not a coauthor of the motion picture. 

In this case, that meant the heirs of one coauthor of the treatment that formed the basis for the film "The Pink Panther" could not assert an interest in the copyright in the motion picture.  Likewise, renewal of the copyright in the motion picture had no effect on the copyright of the treatment, as its copyright is separate and distinct under the law.  Accordingly, the court affirmed the district court's grant of summary judgment.

More on Richlin v. Metro-Goldwyn-Mayer Pictures, Inc. after the jump.

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In a lengthy decision last week, the First Circuit held a district court erred in finding the term "duck tour" nongeneric in the context of sightseeing tours on amphibious vehicles.  The district court, based largely on the nongenericness of this aspect of the parties' marks, found the plaintiff was likely to succeed in its infringement claims, and entered a preliminary injunction.  The defendant appealed.

The First Circuit vacated the injunction.  The district court's erroneous holding regarding the generic nature of "duck tour" caused the district court to give too much weight to those terms in the composite marks in its likelihood of confusion analysis.  As a result, the district court also erred in finding both a likelihood of confusion and a likelihood of success on the merits for both the word marks and design marks at issue.  Therefore, the court vacated the district court's preliminary injunction.

More concerning Boston Duck Tours, LP v. Super Duck Tours, LLC after the jump.

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In a decision Wednesday, the Federal Circuit affirmed a district court's claim construction and grant of summary judgment of non-infringement.  The patent holder's proposed claim interpretation relied heavily on means-plus-function language and an embodiment in the specification not covered by the claim construction.

The Federal Circuit found that the failure to use clear "means-plus-function language" created a rebuttable presumption that the language recited structural limitations. The court was not troubled by the excluded embodiment and held that the district court's interpretation was well-supported by the specification.

The patent holder also argued that the district court erred by finding no infringement under the doctrine of equivalents. The Federal Circuit affirmed the district court, holding the patent holder's application of the doctrine of equivalents improper as it would have completely eliminated one or more limitations of the claims.

More concerning TIP Sys. v. Phillips & Brooks/Gladwin, Inc. after the jump.

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In a decision this week, the Tenth Circuit affirmed a district court's grant of summary judgment in favor of the defendants in a copyright case, finding a digital work lacking sufficient originality to warrant copyright protection.  The works at issue were three-dimensional computer models of cars for use in advertisements.

The court agreed that the plaintiff "made many judgments that required both skill and technical know-how.  Those judgments may have even involved 'creativity,' as that word is commonly used."  However, the end result was simply a copy of the car in a different medium.  In fact, the plaintiff's intent was to reproduce the underlying work with absolute fidelity.  Thus, the work lacked any original addition to the underlying work and was not eligible for copyright protection.

More on Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc. after the jump.

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In a recent decision, the Ninth Circuit held a district court's jury instructions regarding construction of the patent ownership provisions of an employment agreement erred in applying contract law rather than patent law.  

The court determined that jury instructions defining the terms "conceive," "reduce to practice," and "Work of Dr. Yu" (a possible coinventor) required application of patent law to determine whether co-inventorship existed for both conception and reduction to practice of an invention, and whether conception and/or reduction to practice took place while using the employer's facilities.  The Ninth Circuit held the district court erred in applying agency law to determine whether a second researcher's actions triggered the patent ownership provisions of the "employed" researcher.  The court remanded the case and ordered a new trial with proper jury instructions.

More detail of Los Angeles Biomedical Res. Inst. v. White after the jump.

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In a decision yesterday, the Federal Circuit affirmed an award of attorneys' fees for a prevailing defendant in an infringement case.  The district court held the case was exceptional under § 285 because the patent holder had engaged in inequitable conduct (a finding previously affirmed), asserted frivolous claims, and engaged in litigation misconduct.  The district court also held that it would be manifestly unjust to force the defendant to pay the plaintiff's expert witness fees under Rule 26(b)(4)(C)(i).

The Federal Circuit affirmed.  While the individual acts may not have been sufficient to find the case was exceptional, the ultimate conclusion was not clearly erroneous.  The Federal Circuit was very reticent to question the district court's finding of litigation misconduct, stating:  "it ill behooves an appellate court to overrule a trial judge concerning litigation misconduct when the litigation occurred in front of the trial judge, not the appellate court."

Judge Newman dissented.  In her opinion, the district court and panel majority applied too low a standard for a case to be considered "exceptional."  Citing the Federal Circuit's previous opinion affirming the finding of inequitable conduct, she noted the court stated the actions that led to the finding "may have been an oversight."  With this low level of "bad" conduct, Judge Newman would have reversed the award of attorney fees.

More concerning Nilssen v. Osram Sylvania, Inc. after the jump.  

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In a decision yesterday, the Federal Circuit vacated an award of attorney fees under § 285.  The district court only provided a three-sentence explanation as to why the case was exceptional.  The Federal Circuit found this insufficient, as there was no explanation of the facts underlying the findings made by the court.  As a result, the court vacated the award and remanded for more detailed findings.

More detail of Innovation Techs., Inc. v. Splash! Med. Devices, LLC after the jump.

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In a decision Friday, the Eleventh Circuit affirmed a district court's grant of summary judgment in favor of the defendant, finding the plaintiff had abandoned its trademarks.  Although the complaint consisted of both federal and state common law claims, the analysis ultimately came down to whether a valid Lanham Act claim existed, as the remaining claims were based on the alleged § 1125 claims.  

The Eleventh Circuit held the trademarks in question were abandoned due to nonuse, and that mere hope that the company could get funding from an unknown source was not enough to show intent to resume use in the future.  As a result, the district court's grant of summary judgment on the issue was proper.  The court also held the plaintiff did not have prudential standing to bring a false advertising claim, given the defendant did not sell the allegedly infringing products while the plaintiff was selling products bearing its marks.  Because the Lanham Act claims failed, the remaining claims likewise failed, and the district court's grant of summary judgment was affirmed.

More concerning Natural Answers, Inc. v. SmithKline Beecham Corp. after the jump.

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