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.

KSR v. Teleflex

Teleflex
acted as the plaintiff and KSR as the defendant in the 2007 case involving
patent infringement. Teleflex believed KSR’s use of a vehicle control pedal
connected to an electronic throttle control was an infringement on a patent
held by the plaintiff. The District Court ruled in favor of the defendant
claiming the use was obvious, but the Federal Court reversed the decision. The
case went to the Supreme Court, which in turn reversed the decision back to the
District Court’s decision and ruled in favor of the defendant.

Case Description

The defendant combined an adjustable control pedal
to an electronic throttle control in automobiles. The plaintiff claimed this
was infringing on a patent claim they owned. The defense’s argument was a
simple argument that is used in many patent infringement cases. They argued the
combining of the two elements in the case was an obvious adjustment made to the
existing patent. The obviousness of the combination would have been realized by
anyone familiar with the art. The plaintiff did not feel there was a level of
obviousness attached to the combination performed by the defendant.

Ruling

The Supreme Court was clear in its ruling that the
combining of the two elements in the automobile was obvious. The Supreme Court
noted that the Federal Court was incorrect in determining that combining the
two elements discussed in the case were not obvious and someone familiar and
skilled in the art would not naturally combine the pedal and the electronic
throttle. The Supreme Court went as far as to say the combination was common
sense. The KSR decision is now used in almost 60% of similar cases. Many feel
there are too many instances that are declared obvious but obviousness will
only apply to those who are familiar with the art discussed in each individual
case.

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.

Apple Computer, Inc. v. Franklin Computer Corp

In the Apple
Computer, Inc. v. Franklin Computer Corp. copyright infringement case, Apple
Computer, Inc., now Apple Inc., decided to name Franklin Computer Corporation in
a lawsuit in regards to the recent release of an operating system the company
had been distributing. Apple Computer, Inc. said that there was a direct
parallel to the operating system that the company itself had developed and
released and the new, Ace 100, by the Franklin Computer
Corporation.

Apple
Computer, Inc. filed the copyright infringement case at the United States
District Court for the Eastern District of Pennsylvania. The filing of
Apple Computer, Inc. on May 12, 1982, marked the date of the first copyright
infringement case to be litigated on a matter involving an operating system in
a high court.

Apple Computer, Inc. had released the operating
system, Apple II, in 1977 at the West Coast Computer
Faire. It was designed by engineer and co-founder of the company, Steve
Wozniak, along with other members of the team. Apple II proceeded Apple I, a personal
computer, which was the company’s first product release. The basis of the
copyright infringement case was the claim of Apple Computer, Inc., which stated
that Franklin Computer Corporation, a consumer electronics manufacturer, had
been distributing a replica of Apple II in their release of the Ace 100 in
1982.

One of the
largest arguments by Apple Computer, Inc. in the copyright infringement case
against Franklin Computer Corporation was that the operating system, Ace 100, had included some of the same mathematical logic and language
for the ROM as Apple II. Another major
citation on the basis of the copyright infringement case against Franklin
Computer Corporation was that Ace 100 featured a similar
motherboard scheme to that of Apple II.

The position of Franklin Computer Corporation in
the copyright infringement case was that, although the company had used many of
the concepts from Apple II in their creation of the Ace 100, it would
not have been quite as constructive or effective for the company to attempt at
creating a brand new operating system. The Franklin Computer Corporation
stated that the product would not have the capacity to achieve compatibility if
starting completely from scratch.

The company
went on to state that some components of the Apple II operating system were not copyrighted, so therefore they took on
the implication that they could be copied. The Franklin Computer
Corporation added to their defense in the copyright infringement case by
stating that they were in the midst of producing software that would be
completely independent.

The United States District Court for the Eastern
District of Pennsylvania declared the copyright infringement case of Apple
Computer, Inc. v. Franklin Computer Corp. in favor of Franklin Computer
Corporation. Dissatisfied with the verdict, Apple Computer, Inc. filed
for an appeal with the United States Court of Appeals for the Third
Circuit. By mid-1983, and just three business days after the District Court
had ruled in the favor of Franklin Computer Corp., the Federal court issued a
verdict in the copyright infringement case for Apple Computer, Inc.

The stated basis
for the ruling was that a program is protected under copyright law even if it
is written in a combination of print and object code. The ruling had important
implications for the enforcement of copyright on computer programs.

Baker v. Selden

Baker v. Selden (101 U.S. 99)
is one of the earliest and most important of all copyright infringement cases. It is heavily cited in
explaining the idea-expression divide, a concept that outlines the underlying
concepts of copyright laws. It explains that U.S. copyright laws are set into
place to protect the expression of an idea rather than the idea itself. The
case, which took place in 1879, concluded that the exclusive rights to what is
known as “useful art” which may be written in a book are only
protected under U.S. intellectual property law through a patent. The
description itself contained in the book would be protected under copyright.

Background

A man by the name of Charles Selden obtained a
copyright for a book he wrote which was intended to portray an improved system
of bookkeeping entitled Bookkeeping Simplified. The book, although containing
only 650 words, contained mostly bookkeeping forms. There were also several
examples outlined in addition to an introduction.

Selden
created several additional books, which were arguably just new revisions to the
same original book. Selden was unsuccessful in selling his books, even after
attempting to sell them to several counties, as well as the United States
Department of Treasury. Before Selden’s death, he assigned his interest, which
was returned to his wife.

W.C.M Baker produced a book in 1867 which
described a very similar system to Selden’s system of bookkeeping. Baker was
able to sell the book to 40 counties in under five years. It was not long
before Selden’s widow, Elizabeth, discovered Baker’s success with Selden’s
similar bookkeeping techniques. She hired an attorney and took legal action
against Baker in 1872 and sued him for copyright infringement.

The Trial and Appeal

The court decided that Baker’s books contained
information and material which was too similar not to be liable for copyright
infringement. As a result, the court ordered a permanent injunction which
prevented Baker from further publication or sale of his book. Baker and his
legal team immediately filed an appeal to the Supreme Court of the United
States, which claimed that Selden’s work is not valid copyright subject matter.

The appeal process closely
examined the difference between patent law and copyright law. It
was found by the Court that the idea contained within a book is not enforced
through copyright law, but rather through patent law. Only the description or
expression of an idea is protected by a copyright. Justice Joseph P. Bradley
wrote of the case, “The copyright of a book on bookkeeping cannot secure
the exclusive right to make, sell, and use account books prepared upon the plan
set forth in such a book.” Baker v. Selden has been written into the U.S.
Code §102(b) of the Copyright Act.

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.