Justia U.S. Federal Circuit Court of Appeals Opinion SummariesArticles Posted in Copyright
SAS Institute, Inc. v. World Programming Ltd.
SAS creates and sells software used for data access, management, analysis, and presentation. The SAS System allows users to input user-written programs into its graphical user interface to complete analytics tasks. Users write commands in SAS’s programming language. An earlier version of the SAS System is in the public domain. SAS has copyright registrations that cover various aspects of the SAS System. WPL created a competitor, the WPS System, which uses the SAS Language to allow users to run user-written programs to complete analytics tasks such as data access, management, analysis, and presentation. SAS sued WPL, alleging copyright infringement of the SAS System and SAS user manuals.The district court first concluded that SAS possessed valid copyright registrations covering SAS’s asserted software, then determined that WPL provided evidence that showed the software program elements were not within the scope of protection under copyright law. Applying the abstraction-filtration-comparison test, the district court determined that SAS failed to establish copyrightability.The Federal Circuit affirmed the dismissal of the suit. The court interpreted “copyrightability” as meaning whether the specific elements of a copyrighted work that are asserted in a copyright infringement action fall within the scope of protection extended to that particular work under copyright law. The district court acted properly in conducting a pretrial “Copyrightability Hearing.” View "SAS Institute, Inc. v. World Programming Ltd." on Justia Law
Bitmanagement Software GMBH v. United States
In 2013, the Naval Facilities Engineering Command installed copyrighted graphics-rendering software created by German company Bitmanagement onto all computers in the Navy-Marine Corps Intranet. No express contract or license agreement authorized the Navy’s actions. In 2016, Bitmanagement filed suit, alleging copyright infringement, 28 U.S.C. 1498(b). The Claims Court found that, while Bitmanagement had established a prima facie case of copyright infringement, the Navy was not liable because it was authorized to make copies by an implied license, arising from the Navy’s purchase of individual licenses to test the software and various agreements between the Navy and the vendor.The Federal Circuit vacated and remanded for the calculation of damages. The Claims Court ended its analysis prematurely by failing to consider whether the Navy complied with the terms of the implied license, which can readily be understood from the parties’ entire course of dealings. The implied license was conditioned on the Navy using a license-tracking software, Flexera, to “FlexWrap” the program and monitor the number of simultaneous users. The Navy failed to effectively FlexWrap the copies it made; Flexera tracking did not occur as contemplated by the implied license. That failure to comply creates liability for infringement. View "Bitmanagement Software GMBH v. United States" on Justia Law
Lanard Toys Ltd. v. Dolgencorp LLC
Lanard owns Design Patent D167 and the 458 copyright for a work entitled “Pencil/Chalk Holder,” relating to a toy chalk holder designed to look like a pencil. Lanard sold the Chalk Pencil, marked to indicate Lanard’s copyright and patent protections, to national retailers. Ja-Ru designed a toy chalk holder, using the Chalk Pencil as a reference sample. Lanard’s retailers stopped ordering the Chalk Pencil and began ordering Ja-Ru’s product. Lanard sued, asserting copyright infringement, design patent infringement, trade dress infringement, and statutory and common law unfair competition.The Federal Circuit affirmed summary judgment that Ja-Ru’s product does not infringe the patent, that the copyright is invalid and alternatively not infringed, and that Ja-Ru’s product does not infringe Lanard’s trade dress. Lanard’s unfair competition claims failed because its other claims failed. The district court properly construed the claims commensurate with the statutory protection for an ornamental design. Lanard impermissibly seeks to exclude any chalk holder in the shape of a pencil and extend the scope of the patent beyond the “new, original and ornamental design,” 35 U.S.C. 171. Lanard’s copyright is for the chalk holder itself; Lanard’s arguments seek protection for the dimensions and shape of the useful article itself. Because the chalk holder itself is not copyright protectable, Lanard cannot demonstrate that it holds a valid copyright. Lanard cannot establish that the Chalk Pencil has acquired secondary meaning. View "Lanard Toys Ltd. v. Dolgencorp LLC" on Justia Law
Syngenta Crop Protection, LLC v. Willowood, LLC
Syngenta sued Willowood, a Hong Kong company that sells fungicide to its Oregon-based affiliate, for infringement of patents directed to a fungicide compound and its manufacturing processes and infringement of copyrights for detailed product labels that provide directions for use, storage, and disposal, plus first-aid instructions and environmental, physical, and chemical hazard warnings. The district court dismissed the copyright claims as precluded by the Federal Insecticide Fungicide and Rodenticide Act (FIFRA), 7 U.S.C. 135 and granted-in-part Syngenta’s summary judgment motion with respect to patent infringement. After a jury trial, the court entered a defense judgment on the patent claims. The Federal Circuit affirmed-in-part, reversed-in-part, and vacated in part. The district court did not provide an adequate analysis of the potential conflict between FIFRA and the Copyright Act. Because FIFRA does not, on its face, require a “me-too” registrant to copy the label of a registered product, FIFRA only conflicts with the Copyright Act to the extent that some particular element of Syngenta’s label is both protected under copyright doctrines and necessary for the expedited approval of Willowood’s generic pesticide. The court erred by imposing a single-entity requirement on the performance of a patented process under 35 U.S.C. 271(g); practicing a patented process abroad does not trigger liability under section 271(g) in the same manner that practicing a patented process domestically does under section 271(a). View "Syngenta Crop Protection, LLC v. Willowood, LLC" on Justia Law
Oracle America, Inc. v. Google, Inc.
Oracle’s Java platform for computer programming allows programmers to write programs that “run on different types of computer hardware without having to rewrite them for each different type.” Java Application Programming Interface (API) is a collection of “pre-written Java source code programs for common and more advanced computer functions.” To include a particular function in a program, the programmer invokes the Java “declaring code,” and “implementing code,” which takes the input(s) and gives the computer step-by-step instructions to carry out the declared function. Oracle sued, alleging that Google’s unauthorized use of Oracle Java API packages in its Android operating system infringed Oracle’s copyrights, 17 U.S.C. 107(1). The Federal Circuit held that declaring code and the API packages' structure, sequence, and organization are entitled to copyright protection. The Supreme Court denied certiorari. At the second trial, Google prevailed on its fair use defense. The Federal Circuit reversed, concluding that Google’s use of the Java API packages was not fair as a matter of law, and remanded for a trial on damages. Google’s commercial use of the API packages weighs against a finding of fair use. Google merely copied the material and moved it from one platform to another without alteration, not a transformative use. Given the evidence of actual and potential harm, “unrestricted and widespread conduct of the sort engaged in by” Google would result in “a substantially adverse impact on the potential market for the original” and its derivatives. View "Oracle America, Inc. v. Google, Inc." on Justia Law
Halo Creative & Design, Ltd. v. Comptoir des Indes Inc.
Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law
Gaylord v. United States
Gaylord, a renowned sculptor, created The Column, consisting of stainless steel statues depicting soldiers on patrol, as the center of the Korean War Veterans Memorial on the National Mall in Washington, D.C. Gaylord was paid $775,000. In 1996, an amateur photographer, Alli , visited the Memorial during a heavy snowstorm and photographed The Column. The U.S. Postal Service issued a stamp to commemorate the fiftieth anniversary of the Korean War armistice, selected Alli’s photograph of The Column for the stamp face, and paid Alli a one-time fee of $1,500. The Postal Service did not seek Gaylord’s consent, reasoning that the photograph was a “derivative work,” 17 U.S.C. 106(2). Gaylord sued for copyright infringement. The Federal Circuit held that the government was liable for infringement; that The Column was not a “joint work” (whose joint authors individually might grant permission); and that its use was not protected as fair use. On remand, the Claims Court considered: stamps used to send mail; commercial merchandise featuring an image of the stamp; and unused stamps purchased by collectors, for which the court assigned a 10% per-unit royalty, resulting in an award of $540,000 for the unused stamps, plus prejudgment interest. The Federal Circuit affirmed. View "Gaylord v. United States" on Justia Law
Oracle Am., Inc. v. Google Inc.
Sun developed the Java computer programming platform, released in 1996, to eliminate the need for different versions of computer programs for different operating systems or devices. With Java, a programmer could “write once, run anywhere.” The Java virtual machine (JVM) takes source code that has been converted to bytecode and converts it to binary machine code. Oracle wrote 37 packages of computer source code, “application programming interfaces” (API), in the Java language, and licenses them to others for writing “apps” for computers, tablets, smartphones, and other devices. Oracle alleged that Google’s Android mobile operating system infringed Oracle’s patents and copyrights. The jury found no patent infringement, but that Google infringed copyrights in the 37 Java packages and a specific routine, “rangeCheck.” It returned a noninfringement verdict as to eight decompiled security files. The jury deadlocked on Google’s fair use defense. The district court held that the replicated elements of the 37 API packages, including the declaring code and the structure, sequence, and organization, were not subject to copyright and entered final judgment in favor of Google on copyright infringement claims, except with respect to rangeCheck and the eight decompiled files. The Federal Circuit affirmed as to the eight decompiled files that Google copied into Android and rangeCheck. The court reversed in part, finding that the declaring code and the structure, sequence, and organization of the API packages are entitled to copyright protection, and remanded for consideration of fair use.View "Oracle Am., Inc. v. Google Inc." on Justia Law
Stephen Slesinger, Inc. v. Disney Enters., Inc.
In 1930, A.A. Milne transferred to Slesinger exclusive merchandising and other rights to Winnie-the-Pooh works in the U.S. and Canada. In 1961, Slesinger exclusively “assigned, granted, and set over to” Disney the rights in the 1930 agreement. A 1983 agreement sought to resolve the parties’ disputes, but Slesinger contends it retained rights in the works, while Disney maintains Slesinger assigned all rights. In 1991, before the present litigation, Slesinger sued in state court, alleging breach of the 1983 agreement. Slesinger acknowledged that the 1983 agreement “regranted, licensed and assigned all rights” to Disney. The action was ultimately dismissed. The dispute continued in federal court. The district court dismissed, noting that the parties’ actions indicated the rights were transferred to Disney in the 1983 agreement. Between 1983 and 2006, Disney registered at least 15 trademarks. In 2004, Disney registered copyrights in 45 works and renewed copyright registrations for another 14. Slesinger did not attempt to perfect or register trademarks or copyrights before asserting its federal claims and never objected to Disney’s registrations until 2006, when the state court dismissed its claims and Slesinger attempted to cancel Disney’s applications and marks. The Federal Circuit affirmed the Board’s dismissal, citing estoppel. View "Stephen Slesinger, Inc. v. Disney Enters., Inc." on Justia Law
Gaylord v. United States
Gaylord created “The Column,” sculptures representing soldiers that are the centerpiece of the Korean War Veterans' Memorial on the National Mall. The Postal Service issued a stamp commemorating the 50th anniversary of the armistice, with a photograph of The Column, licensed from a photographer. USPS issued roughly 86.8 million of the stamps, sold retail goods with the image, and licensed the image to retailers, without seeking Gaylord's permission. In 2006, Gaylord sued under 28 U.S.C. 1498(b) for copyright infringement. The Federal Circuit held that Gaylord owned the copyright and that USPS was liable for infringement, but remanded for determination of damages. The Court of Federal Claims rejected a claim for a 10 percent royalty on about $30.2 million in revenue allegedly generated by the infringing use, as well as a claim for prejudgment interest, finding that neither 28 U.S.C. 1498(b), which waives sovereign immunity for copyright infringement, nor the copyright infringement statute, 17 U.S.C. 504, authorizes a royalty-based award for copyright infringement and that the proper measure of damages was the reasonable value of a license, between $1,500 and $5,000. The Federal Circuit vacated and remanded for determination of market value of the infringing use and award of prejudgment interest. View "Gaylord v. United States" on Justia Law