MVS Filewrapper® Blog: Copyright 3-year Statute of Limitations Trumps Laches Defense

PETRELLA v. METRO-GOLDWYN-MAYER, INC.

 

Frank Petrella wrote two screenplays and one book based on the life of boxing champion Jake LaMotta.  One of the screenplays, registered in 1963, identifies Patrella as the sole author, written in collaboration with LaMotta.  LaMotta and Patrella assigned their rights in the screenplay, including renewal rights, to Chartoff-Winkler Productions, Inc. in 1976, who in turn sold the motion picture rights to Metro-Goldwyn-Mayer, Inc. (MGM).  MGM released the motion picture portrayal of Jake LaMotta in 1980:  Raging Bull, staring Robert DeNiro and directed by Martin Scorcese. 

 

Patrella died in 1981, during the original term of the copyright in the screenplay.  Under the Supreme Court's decisions in Stewart v. Abend and Miller Music Corp. v. Charles N. Daniels, Inc., the right to renewal of the copyright reverted to Patrella's heirs, unencumbered by any of the assignments previously made by Patrella.  Patrella's daughter filed a renewal of the copyright in the screenplay in 1991.  In 1998, Patrella's daughter notified MGM that she owned the copyright in the screenplay, and any further exploitation of any derivative work, including Raging Bull, infringed that copyright.  A copyright infringement suit was not filed, however, until 2009.

 

Section 507(b) of the Copyright Act establishes a three-year limitation on claims seeking relieve for copyright infringement.  The 2009 complaint sought monetary and injunctive relief for violation of the copyright in the 1963 screenplay by using, producing, and distributing Raging Bull.  However, the complaint only sought such relief for acts occurring on or after January 6, 2006—three years prior to filing the suit.  MGM moved for summary judgment based on the doctrine of laches, asserting that even though the three-year limitations period set out in the statute had not run out, the claim was still barred under the equitable principle of laches— the 18 year delay between obtaining the copyright and filing suit was unreasonable and prejudicial.  The district court granted the motion, which was affirmed by the Ninth Circuit Court of Appeals.     

 

On ultimate appeal, the Supreme Court held that a copyright infringement suit seeking relief solely for conduct occurring within the limitations period cannot be precluded by a claim of laches, so long as the claim for damages is brought within the three-year window.  The Court highlighted that laches is an equitable defense, applicable to claims for which the legislature has not provided a limitation period.  Although laches may not preclude an infringement claim made within the limitations period, the Court made clear that other doctrines such as estoppel may limit the relief awarded.   

 

The full opinion is available here. 

MVS Filewrapper® Blog: New and Useful - August 26, 2013

·         In University of Utah v. Max-Planck-Gesellschaft, the Federal Circuit held that a patent lawsuit between a state university and the officers of another state university is not a controversy between two states.  The case began when the University of Utah (“UUtah”) sued the Max Planck Institute and the University of Massachusetts (“UMass”) to correct inventorship of two patents—U.S. Patent Nos. 7,056,704 and 7,078,196.  The basis of UUtah’s claim was that the named inventor of the patents—Dr. Thomas Tuschl, a UMass Professor—incorporated the ideas of a UUtah Professor—Dr. Brenda Bass—and did not name her as an inventor.  UMass argued that the dispute was between two states as both UUtah and UMass are state institutions.  This presents constitutional law questions.  In particular, two provisions of the Constitution are at issue, Article 3, §2, cl.2 and the 11th Amendment.  The 11th Amendment provides sovereign immunity to state governments from any cause of action brought by citizens of another state in Federal Court.  However, Article III of the Constitution provides for state-versus-state lawsuits, for which the United States Supreme Court has original jurisdiction.  Thus, under UMass’s argument, only the United States Supreme Court should have jurisdiction to hear the matter.  In response to UMass’s argument, UUtah amended its complaint and substituted UMass with four UMass officials as defendants.  The district court held that the action was no longer a state-versus-state action and could proceed.  Immediate appeal was heard by the Federal Circuit, which affirmed the district court in a 2-1 decision.  Judge Moore provided a notable dissent arguing that UMass is an indispensable party and should be a named defendant and the case is in fact a controversy between two states.

·         In Skinmedica v. Histogen, the Federal Circuit affirmed summary judgment of non-infringement.  Skinmedica asserted infringement of two of its patents covering methods for producing dermatological products containing “novel cell culture medium compositions.”  The Federal Circuit noted that “[d]uring prosecution of the ’494 patent, the inventors limited their claimed inventions to pharmaceutical compositions comprising cell culture medium conditioned by animal cells only in three-dimensions” in order to overcome an anticipation rejection.  Histogen cultures cells beginning with “one- or two-dimensional growth” on beads that “evolves into a three-dimensional growth phase in which the cells crawl off the beads.”  On appeal Skinmedica argued “that the district court erroneously excluded beads from the definition of ‘culturing . . . cells in three-dimensions.’”  The Federal Circuit, however, found no basis to overturn the district court’s construction of the phrase “culturing . . . cells in three-dimensions.”  This was because the patents-in-suit define “three dimensional culturing” to exclude beads by “expressly confin[ing] culturing with beads to two-dimensional culturing.”  In light of this, the Federal Circuit affirmed the district court’s grant of summary judgment of non-infringement. 

·         In Ex parte Mewherter, the Patent Trial and Appeal Board held that a software composition cannot meet the requirements of patentable subject-matter under § 101 unless the invention excludes transitory media such as signals and carrier waves.  Independent claim 16 was rejected under § 101.  Claim 16 recited in pertinent part, “A machine readable storage medium having stored thereon a computer program for converting a slide show presentation for use within a non-presentation application.”  The Examiner rejected the claim arguing that the phrase “machine-readable storage medium” encompassed transitory media “such as signals, carrier waves, etc.”  The patent Applicant—IBM—countered that the term “storage” differentiates the claimed invention from the non-patentable subject matter “machine-readable medium” because it requires permanent storage.  The Board, however, affirmed the Examiner’s rejection noting that the specification failed to exclude transitory signals from its definition of “machine-readable storage medium.”  As a result, the Board held that one of skill in the art would construe the term to encompass transitory media and not be limited exclusively to permanent storage media.

United States did not waive immunity for copyright infringement claim brought by prisoner

In a recent decision, the Federal Circuit held the Court of Federal Claims correctly dismissed a copyright infringement suit against the United States for lack of subject matter jurisdiction.  The plaintiff is a federal prisoner who created various coyprightable works while in federal prison.  He brought suit alleging copyright infringement after his works were distributed by Federal Prison Industries.

The Court of Federal Claims dismissed the case for lack of subject matter jurisdiciton, holding the government had not waived its sovereign immunity from suit in this context.  The Federal Circuit affirmed, holding that because the calendars were created using government-furnished computers while the prisoner was in the "service" of the United States, sovereign immunity had not been waived under 28 U.S.C. § 1498(b).  As a result, the Court of Federal Claims correctly held it lacked jurisdiction to hear the case.

More detail of Walton v. United States after the jump.

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Federal Circuit addresses scope of immunity waiver for copyright and DMCA claims

In a decision Friday, the Federal Circuit affirmed a decision from the United States Court of Federal Claims dismissing a copyright holder's claims for lack of jurisdiction on the ground that the Government had not waived sovereign immunity.  The suit arose from alleged copyright infringement and an alleged violation of the Digital Millennium Copyright Act of 1998 (DMCA).

The Federal Circuit found that the CFC's decision did not contain any reversible legal error in determining that there was no waiver of sovereignty in either the copyright infringement claim or the claim of a violation of the DMCA.  Specifically, the court held that because the author of the copyrighted software was, by virtue of his employment in the Air Force's Manpower User Group, in a position to "order, influence, or induce use" of the software by the Government, thereby placing the suit outside the scope of waiver provided in 28 U.S.C. § 1498(b).  Further, the government has not waived immunity for DMCA claims.  As a result, the court affirmed the dismissal of the case.

More regarding Blueport Co. v. United States after the jump.

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Supreme Court asks for government's view on whether it should hear sovereign immunity waiver case

In an order yesterday, the Supreme Court asked the Solicitor General's office to file a brief providing the government's views on whether it should grant certiorari in Biomedical Patent Management Corp. v. California Department of Health Services (No. 07-956).  We previously blogged about the Federal Circuit's decision in this post.  The case deals with whether state agencies waive their Eleventh Amendment immunity from suit by actively enforcing their own patents.  Specifically, the questions presented in the petition are:

1. Whether a state's waiver of Eleventh Amendment immunity in one action extends to a subsequent action involving the same parties and the same underlying transaction or occurrence.
2. Whether a state waives its Eleventh Amendment immunity in patent actions by regularly and voluntarily invoking federal jurisdiction to enforce its own patent rights.

The last time the Court sought the Solicitor General's views on whether certiorari should be granted in patent case, the Solicitor General recommending granting certiorari.  That case was Quanta Computer Inc. v. LG Electronics, Inc., which was argued in January, with a decision still pending.  There is no specific timeframe for the Solicitor General's brief to be filed, but this case may be another to watch given the Court's recent interest in patent law.

Click below for links to the petition for certiorari and related filings.

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Waiver of immunity in earlier case does not operate as waiver in later case involving same patent

In a decision Tuesday, the Federal Circuit affirmed a district court's decision that a state had not waived its Eleventh Amendment sovereign immunity.  The state had intervened in an earlier, related action, but that action was subsequently dismissed for improper venue.  The court held that while the state waived its immunity in the first suit by intervening, the waiver did not apply to the subsequent lawsuit, even though it involved the same patent. 

This was because there was insufficient unfairness to the non-state party to warrant applying the waiver to the second suit, and, while the state's position was arguably contrary to its earlier position, an intervening change in the law (the Supreme Court's Florida Prepaid decision that held the Patent and Plant Variety Protection Remedy Clarification Act could not constitutionally abrogate states' immunity from patent infringement lawsuits) prevented it from being "clearly inconsistent," preventing application of judicial estoppel.

More detail of Biomedical Patent Mgmt. Corp, v. California Dep't of Health Servs. after the jump.

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Agreement to "submit to jurisdiction" is waiver of 11th Amendment immunity by state university

In a decision yesterday, the Federal Circuit held that a state university had waived its Eleventh Amendment immunity from suit.  The university entered into an agreement with a "governing law" provision that stated that "all parties agree to proper venue and hereby submit to jurisdiction in the appropriate State or Federal Courts of Record sitting in the State of Michigan."

The court held that this provision "unequivocally expressed" the university's intent to waive its immunity to suit, and held that the suit could proceed.

More detail of Baum Research & Dev. Co. v. Univ. of Mass. after the jump.

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Government contractor entitled to patent infringement immunity

The Federal Circuit ruled today that a contractor working for the government was entitled to immunity from a patent infringement suit under 28 U.S.C. § 1498(a). The contractor was hired to clean up various sites contaminated by hazardous waste, and the terms of the contract required the contractor to use a particular method to perform the cleanup. This method was patented, and the patent holder sued. The Federal Circuit affirmed the lower court's grant of summary judgment, finding that § 1498(a) immunity applied, and the patent holder's remedy was instead against the Government in the Court of Claims.

More details of the case after the jump.

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University Can't Have Its Cake and Eat It Too…Immunity Negated

The University of Missouri's waived its constitutional immunity under the Eleventh Amendment when it fully participated in an interference action against Vas-Cath, Inc.

A Vas-Cath patent had issued while the University's application, although filed before the Vas-Cath application, was still pending. The University invoked the procedures to institute an interference between the University's pending application and Vas-Cath's issued patent. The University amended its application by copying into its application all nineteen claims from the Vas-Cath patent, as practice permits. After a six-year interference proceeding, the PTO awarded priority to the University, granting the nineteen Vas-Cath claims to the University and holding that Vas-Cath was not entitled to the patent that it had been issued. Vas-Cath appealed. The University moved to transfer the case to the Western District of Missouri pursuant to 28 U.S.C. § 1406(a) and then asserted Eleventh Amendment immunity from suit in federal court. On this ground, the district courted granted the University's motion to dismiss. Vas-Cath appealed the dismissal.

The Federal Circuit reversed the dismissal and remanded to the district court for further proceedings. By participating in the PTO interference, the Federal Circuit concluded that because judicial review of PTO adjudication is established by statute, the interference proceeding is a multi-part action with appeal as of right. The Court further stated that the appeal is not a new claim, but an authorized phase of the interference proceeding that is conducted by the PTO and is subject to judicial review. Thus, the University waived any potential immunity as to the interference contest in the PTO.

To read the full decision in Vas-Cath, Inc. v. Curators of the Univ. of Mo., click here.

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