Pennock v. Dialogue

In the
Pennock v. Dialogue case from 1829, Pennock (the plaintiff) was seeking a
patent for improvements for making hoses he created but which were already
being used by the public. The court ruled in favor of the defendant on the
issue of patenting items already in the public’s possession. The case was heard
in the Circuit Court for the Eastern District of Pennsylvania.

Case Description

Pennock and Sellers created a new method for producing
hoses to transport air, water and other fluids. They did not patent their new
method when it was created in 1811. The public soon got hold of the new method
for the improved art of making hoses and 13,000 feet of hose had been
constructed in houses in Philadelphia. Samuel Jenkins claimed to have an
agreement with the plaintiffs to sell and supply hoses to hose companies in
Philadelphia.

Once the
hose companies began producing hoses using the plaintiff’s method the invention
was in the possession of the public and were subject to public use. The
plaintiff made no claim that from 1811 to the time they were ready to apply for
an invention patent that they were improving their hose-making method. The
plaintiffs did not claim to try and hide the new method of making hoses from
the public.

Ruling

The jury in this case ruled once an inventor
willfully gives up their exclusive rights after an invention is created and a
patent is not obtained, they cannot regain any rights once the public is in
possession of those rights. An invention that is in the public domain cannot be
taken out of that domain. Once an invention is legally open for public use it
cannot be taken away because that would disrupt any growth or room for
improvement within that invention.

If the plaintiffs had successfully obtained
an invention patent for their improvement to hose production they would have
had a valid claim against those profiting off of their improved hose production
method.

This case showed the importance of obtaining a patent.
Inventing something and being recognized as the creator does not offer enough
protection and rights to assure that the inventor will be the main person
profiting off of their invention. If the public gets hold of the knowledge or a
method for improvement before a patent is acquired, a patent request will be
denied because the invention is a part of public domain.

Viacom vs. Youtube, Google Inc

Viacom, one
of the largest media conglomerates in the world, filed a lawsuit against
YouTube and its parent company, Google, on March 13, 2007. The basis of the
lawsuit was copyright infringement in which Viacom was seeking
over $1 billion in damages.

YouTube, one
of the largest video websites on the internet, was threatened with several
major lawsuits in the past before Viacom followed through with a complaint at
the U.S. District Court for the Southern District of New York. YouTube
established itself as a major internet website by allowing users to upload any
videos they wished for the viewing pleasure of millions of other internet
users. Eventually, millions of copyrighted material entered YouTube’s servers
and Viacom, along with other major copyright holders, began to remove their
copyrighted content.

According to Viacom, YouTube created a
massive intentional copyright infringement” when over 160,000
copyrighted video clips owned by Viacom were uploaded to YouTube, totaling
approximately 1.5 billion views. When YouTube did not respond to video
copyright infringement by limiting uploads sent by its users and incorporating
video copyright detection, Viacom chose to take legal action. In a statement
issued by Viacom, they claimed that YouTube continued to take advantage of the
fruits of their efforts, while destroying the value of the work as well.

Google’s lawyers relied heavily on the terms found in the 1998
Digital Millennium Copyright Act to protect them from all allegations aimed at them by
Viacom. On March 11, 2008, Google won a victory in court when a judge ruled
that YouTube was not responsible for any punitive damages to Viacom. In
addition, Viacom demanded requests for YouTube’s search code, though these
requests were denied. Viacom, however, was granted access to YouTube user
histories. This decision has led to many concerns about privacy rights of
internet users. Personal data of YouTube users were made confidential following
an agreement between both companies.

Statutory damages against YouTube are still
pending as of April 29, 2010. Viacom’s lawsuit against YouTube is alongside
several other class action lawsuits by the Premier League and major record
publishers. These cases have yet to go to trial.

Quick Guide to Famous Patent Cases

Patent cases from the past have implications on future patent infringement cases. The arguments presented in past cases allow for statutes to be created or examples of how statutes are followed help plaintiffs and defendants determine if they have a shot at winning a civil suit over patent infringement. While some cases may be simple resulting in summary judgment to one side, other cases have to closely examine details of the case as well as past cases to apply precedents to help form a decision.

Most patent infringement cases are based on statutes or phrases, such as sovereign immunity, public use, flash of genius and obviousness, among others. When the law is not clear and two sides both believe the other is in the wrong, past cases will give each side a good idea as to how the court will rule an infringement case.

Some famous patent cases include:

Pennock v. Dialogue

Grant v. Raymond

Electric Storage Battery v. Shimadzu

Cuno Engineering v. Automatic Devices Corp

Hotchkiss v. Greenwood

Blonder-Tongue v. University of Illinois

State Street Bank v. Signature Financial

Florida Prepaid Post-Secondary Education Expense Board v. College Savings Bank

KSR v. Teleflex.

Florida Prepaid Post Secondary Education Expense Board v. College Savings Bank

The issue of
sovereign immunity was raised in the Florida Prepaid Post-Secondary Education
Expense Board v. College Savings Bank case from 1999. The plaintiff, College
Savings Banks, filed a patent infringement suit against the defendant, Florida
Prepaid. The defendant was a State entity. The Court ruled in a 5-4 vote that State
sovereignty could not be taken away even though the Patent and Plant Variety
Protection Remedy Clarification Act says differently.

Case Description

The plaintiff filed a suit against the defendant
which happened to be a State entity. The plaintiff claimed the Patent and Plant
Variety Protection Remedy Clarification Act takes away sovereign immunity — or
immunity from liability — from states. The defendant claimed the Seminole
Tribe v. Florida outcome declared sovereign immunity could not be taken from
the State.

The
plaintiff relied on the 14th Amendment which gave the State no power to take
away property without due process, which included patent properties. The defense
claimed no law passed by Congress shall be able to curtail the protection held
by the states from patent infringement suits.

Ruling

In a 5-4 vote, the Supreme Court ruled the Patent
and Plant Variety Protection Remedy Clarification Act could not take away
sovereign immunity from the State of Florida. The Court said only a consistent
disregard for the property rights and patent rights of citizens could permit Congress
to take away sovereign immunity from a State. Since the plaintiff could not
prove the defendant demonstrated consistent patent violations, the State’s
protection in the form of sovereign immunity would remain.

Grant v. Raymond

Grant v. Raymond from 1832, heard by the Southern District Court of New York, involved an issue of renewing a patent that had not yet expired. The court originally ruled in favor of the defendants, but it was then ruled that a new jury needed to be selected once the decision was reversed. This showed that an error in patent description could be grounds for a patent infringement defense.

Case Description

The plaintiffs had been issued a patent for their invention. Before their patent had expired, they realized there was an error within their patent and they sent in corrections. Since corrections were made, they requested and were granted an additional 14 years onto their exclusive patent rights. The defendants did not believe the Secretary of State had the power to extend a patent that had not yet expired an additional 14 years.

Essentially what had happened was the Secretary of State granted the same patent to the same inventors twice. The plaintiff and Secretary of State believed a second patent was valid because the description and design of the original patent was changed and it included new patent information. The defense believed they had waited the appropriate amount of time to produce their product so that they would not be committing patent infringement. They claimed new patent information was not a valid reason for a new patent and that was the reason for a patent infringement action being claimed against them.

Ruling

The court originally ruled in favor of the plaintiff, stating that the patent renewal was valid and the defense had indeed committed patent infringement. The court ruled that the plaintiffs were in no way trying to deceive the public into the way their original patented invention functioned. The court would then overrule the decision and demand a new jury.

This was due to the fact that the original invention which would later be altered was already on sale and a part of the public domain. Once an item is a part of the public domain, additional changes can be made but the duration of its patent cannot be extended.

The issue of extending patents for items already used by the public was decided in this case. The same item cannot be patented twice because of an error committed by the inventors. While the plaintiffs argued that if the mistake was made by the Patent Office the patent renewal would be valid, the same was not true for mistakes made by the inventors.

Public domain means an item can be rightfully used by the public and new inventions can be based on that item if the patent term is up. If the new patent was given to the plaintiff, more and more inventors would keep creating additions and improvements to their items to extend patents and hold onto their monopolies. There would also be of influx in patent infringement lawsuits if patents were continually being renewed just because new patent information was added to a patent description.

Hotchkiss v. Greenwood

Hotchkiss, along with other inventors, claimed to own a valid patent for an improvement to doors and doorknobs. The plaintiff claimed their clay and porcelain door knobs and the way they were installed improved doors and the idea was original and inventive. They were attempting to sue the defendant for using their patent without permission. The Supreme Court in 1850 ruled that replacing one material for another was not inventive or a new discovery and the patent application by the plaintiffs was invalid.

Case Description

The plaintiffs replaced metal and wood doorknobs with porcelain and clay knobs made from pottery. They used similar methods of installation of other knobs as described by their patent application. The Secretary of State originally granted the patenting of the new doorknobs. The defendants in the case showed examples of doorknobs made from pottery and the process by which they are installed took place many years before the plaintiffs filed their patent application. Many different cities in New York, New Jersey and Pennsylvania had practiced the method of applying clay knobs to doors. This showed the plaintiff’s patent was not original, inventive nor non-obvious.

Ruling

The Supreme Court ruled the patent application requested by the plaintiffs was not valid. The practice of using clay and porcelain for doorknobs had been practiced many years prior to the plaintiff’s discovery. This showed the plaintiffs had not discovered or invented anything new. Also, replacing one material with another is an obvious adjustment that can be made to an item. The Court ruled the defendant did not infringe on the plaintiff’s patent because they did not own a valid patent.

This Supreme Court ruling was the first case to apply the concept of non-obviousness to the patentability of something. This case established that if something was obvious and non-inventive there was no point in patenting it because it has probably already been invented and used by the public. Once the public has already been using something there is no point in patenting it and neither ownership nor exclusive rights will be granted to a hopeful patent applicant.

Importance of Knowing The Famous Cases of Copyright Law

Famous copyright lawsuits over the years have played a large part in how copyright law is shaped today in the United States. The decisions made in early court cases have helped to distinguish between copyrights and patents, pinpointing a clear definition for both aspects of United States Intellectual Property Law. In addition, with the emergence of digital technology came new amendments in copyright laws, including the Digital Millennium Copyright Act.

Important court decisions have helped to firmly establish the laws outlined in this Act, becoming a model for future court disputes. For example, one of the more famous copyright cases, Viacom vs. Youtube, Google Inc., showed how important it is for copyright laws to keep up with the fast paced world of technology, while firmly placing responsibility into the hands of companies who manage websites with user-controlled content. Baker v. Selden was an early case that helped mold copyright law by providing a clear difference between copyright material and patentable material.

The case between A&M Records (along with more than a dozen other record companies) vs. Napster was the first time file sharing was examined under U.S. copyright law. It asked the question: is a company responsible for the illegal actions of other people if their program gives users the tools to perform such illegal activities?

Napster was a program that allows users to share music files in the form of MP3s, a music format relatively new at the time, which compressed music into a small size without a substantial drop in audio quality. As MP3 awareness and popularity rose steadily, so did Napster, a tool that gave users the ability to perform illegal file swapping, but at the same time, could be used legally as well.

This was Napster’s main argument, believing that it is not responsible for how its program is used by its customers. This case was the beginning of a long copyright battle in the record industry, fronted by the Recording Industry Association of America, which is still going on today.

Rogers v. Koons: This case showed that in order for a parody to be legal, it must be a commentary on the original artwork itself and cannot be a reproduction with another message entirely.

One of the earliest and most famous copyright disputes occurred in the case of Baker v. Selden. This case helped to clearly outline what material is protected under copyright law. Although the work that Baker created was similar to Selden’s original work, it was decided that Baker had not violated copyright law.

This is because copyrights only protect expressions of ideas, while the ideas themselves are only protected when one obtains a patent. This distinction was incorporated into the U.S. Copyright Act, which was inspired by the Baker v. Selden case.

MGM Studios, Inc. v. Grokster, Ltd. was a copyright infringement case that held remarkable similarities to the famous Sony Corp. v. Universal City Studios case, which ruled that the makers of VCR technology cannot be held liable for any illegal copying done by its users. In the same sense, Grokster was argued to be held liable for file sharing technology which users can take advantage of to download copyrighted material such as music and movies.

Grokster had already won two prior victories in court, the latest in the United States District Court for the Central District of California in 2003, where the Sony v. Universal case was cited in the decision. Ultimately, the decision found that Grokster should be held liable for copyright infringement which takes place using the technology it has available on the Internet.

There was argument, however, about how similar this case was with the Sony v. Universal case. It was found that the case had no influence on the court’s final decision. This case led to other peer-to-peer file sharing networks to close down in fear of a lawsuit, while others took more substantial measures to ensure that its users do not use their program for copyright infringement.

IO Group v. Veoh Networks

IO Group, Inc. v. Veoh Networks, Inc. (586 F. Supp. 2d 1132) was a legal case that took place in the United States District Court for the Northern District of California involving Veoh, a company that offers its users internet television for free, and IO Group, producer of adult entertainment. The U.S. District Court ruled in favor of Veoh Networks because the company was protected under the guidelines of the Digital Millennium Copyright Act (DMCA) in 17 U.S.C. § 512. This copyright infringement case is similar to the famous Viacom vs. Youtube, Google Inc. case.

Like YouTube, Veoh offers a service allowing anyone of its users to upload videos to the website. Veoh understands that users may take advantage of the service to upload content that has been copyrighted, so they established a firm Terms of Use with the intent of protecting itself and its users from legal trouble.

The Terms of Use explained that users are responsible for the content in which they upload and Veoh does not permit copyright infringement of any kind.

They also stated that any account which uploads copyrighted material may be subject to termination through Veoh’s discretion. Veoh’s strict policies are enforced through a system of account termination when an infringing work is uploaded to their servers. If this happens, a user’s account is terminated and their e-mail address is blocked so a new Veoh account cannot be created by that user.

The copyright infringement case emerged in a lawsuit filed by IO Group on June 23, 2006, after it noticed that several of its copyrighted work was available on Veoh’s website. Instead of sending a cease and desist letter, IO Group filed the lawsuit as the first step. The lawsuit claimed Copyright Infringement, Contributory Copyright Infringement, and Vicarious Copyright Infringement. Following the legal action, Veoh had decided not to include adult content on its website.

Under the DMCA, to be within the legal “Safe Harbors” Veoh and other similar companies must meet the following guidelines:

*The company must offer a service provider.

*It must create and enforce a policy which terminates the accounts of repeated infringers and blocks them from future access.

*It must accommodate technical measures that copyright owners have set in place to protect their work.

IO Group did not argue in court that Veoh failed to comply with the above guidelines. Instead, IO chose to accuse Veoh of having an infringement policy which was effective in preventing copyrighted material from being made available online illegally. Veoh, however, was able to prove that they had an adequate system to notify users of infringement policies, as well as establishing a proper system of digital fingerprinting of files. They also responded to all copyright notices they received by taking down the violating videos immediately and the Court agreed that copyright infringement protocol was handled correctly.

IO Group was still not convinced and claimed that Veoh should be required to take further action against repeated infringers by not only blocking e-mail addresses, but names and IP addresses as well. This would prevent users from signing up with different e-mail accounts. The Court disagreed and noted that Veoh did procedures under the guidelines of the DMCA, which does not require a policy system to be perfect, but rather “reasonable”.

Veoh was also proven to pass the “Red Flag Test”, a test that states that if a company does not take action against infringement while having knowledge of it, they should have their “Safe Harbor” status repealed. In addition, many of the video clips claimed by IO Group did not have proper copyright notices on them. The copyright infringement case ended up with a grant of Veoh’s motion for a summary judgment and it was dismissed.

Irving Berlin v. E.C. Publications, Inc.

Irving
Berlin v. E.C. Publications, Inc. (329 F. 2d 541), which took place in 1964,
was one of the many copyright infringement cases which helped shaped
copyright law and parody copyright guidelines. The court case involved Irving
Berlin’s song entitled “A Pretty Girl is Like a Melody”, in which Mad
Magazine, a popular parody magazine, parodied the song and entitled it
“Louella Schwartz Describes Her Malady”. E.C. Publications, Inc., Mad
Magazine’s parent company, was named the defendant in the case.

Mad Magazine, known for its humorous depictions of
pop culture, published a volume called The Worst from Mad No. 4. In it, Mad Magazine had a
feature called “Sing Along with Mad” in which they parodied songs and
printed replacement lyrics to artists’ songs. During the trial, Judge Irving
Kaufman famously stated that, “We doubt that even so eminent a composer as
plaintiff Irving Berlin should be permitted to claim a property interest in
iambic pentameter.” The judge was referring to meters used to establish
the rhythm in which words are arranged on each line of poetry.

The court ruled that the parody song of Irving Berlin’s
work featured in Mad Magazine did not violate parody copyright laws. All other
songs except for two were ruled out at the conclusion of the case. It was found
that two of Mad Magazine’s parodies were too similar to the original songs,
which used the same verbal hooks as the original. Berlin and other music
publishers involved in the case appealed to the U.S. Court of Appeals, though
they refused to withdraw the victory Mad Magazine had in court.

Of all copyright infringement cases, this one is important to
parody copyright law because it paved the way for parodists to use similar
meter structure of popular songs, a right that is still stands today.

MGM Studios, Inc. v. Grokster, Ltd.

The
copyright infringement case of MGM Studios, Inc. v. Grokster, Ltd. was filed in
2003 by MGM, Metro-Goldwyn-Mayer, Inc., a total of 28 other entertainment
companies, against Grokster and Steamcast. Grokster and Steamcast were
Internet companies that offered peer-to-peer file sharing. Peer-to-peer
file sharing, otherwise known as P2P file sharing, is the act of sharing stored
digital information, such as movies, music, documents, and electronic
books. This particular movie copyright suit was filed due to the fact
that a large number of the files that were being shared on these websites were
copyrighted material, some of which belonged to MGM and the other listed
entertainment companies.

In response to the copyright infringement case,
Grokster argued that if the movie copyright suit were to be found in favor of
the plaintiff, this would create the potential grounds for movie copyright
organizations to seek damages in a number of previous acts believed to be
related to peer-to-peer file sharing and copyright infringement. With
this not being the first filed copyright infringement case that Grokster was
named in on behalf of MGM, there was a great deal at stake as to what the final
decision would forecast for future movie copyright regulations.

The
copyright infringement case was originally filed by MGM, along with the 28
entertainment companies, in the United States District Court for the Central
District of California. The copyright infringement case was dismissed in
2003, due to its parallels to the Sony Corp. v. Universal City Studios movie copyright
case, and its final verdict. In the Sony Corp v. Universal City Studios
copyright infringement case, the court had to reach a decision as to the
regulation of the VCR.

Movie
copyright lawmakers had to decide whether or not VCR manufacturers would be responsible
for the actions of consumers that used their product on the basis of potential
copyright infringement. In the copyright infringement case of Sony Corp.
v. Universal City Studios, the final verdict by the Supreme Court of the United
States concluded that the function of VCR recording for individual use executed
a person’s right to fair use.

The copyright infringement case of MGM Studios,
Inc. v. Grokster, Ltd., was then filed by MGM to the United States Court of
Appeals for the Ninth Circuit. This second installment of the movie
copyright case was dismissed on the basis of the notion that P2P file sharing
is a method that is lawfully binding. Nevertheless, it was in 2005 that
the United States Supreme Court made the final ruling on the copyright infringement
case, declaring that Grokster, Ltd. and Steamcast were liable for their
involvement in the P2P file sharing being conducted on their networking
sites.

The basis
for the final Supreme Court ruling in the MGM Studios, Inc. v. Grokster, Ltd.
copyright infringement case was that the court saw the defendants’ actions as a
copyright infringement by specifically promoting such practice and capability
to consumers.