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BREAKING: Supreme Court of the United States agrees to take up precedent setting case on copyrightability of software.
I don’t expect a ground breaking change in what the courts consider copyrightable, but this case does raise interesting legal issues.
The issues arise out of a brouhaha between Oracle and Google over Google’s rewrite of a JAVA-like operating system for Android devices that adopted the same API structure and calls as used in the JAVA programming language.
The Court of Appeals for the Federal Circuit, the “IP appeals court”, overturned lower court decisions that would have dismissed the case for no copyright infringement or found “fair use” by Google of the API structure and names.
It is black letter law that short names cannot be copyrighted.
Its also black letter law that facts cannot be copyrighted.
In fact, except for software, copyright only protects “original creative expression” and the content is not protected.
How a person expresses an idea is protected by copyright not the idea, itself. But how a person expresses themselves in source code is not really the issue, unless lines of code are actually copied.
17 U.S. Code § 102 (b) of the Copyright Act states: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” Software is just another type of “original work of authorship”. So, copyright doesn’t extend to the process or method.
For the most part, Google rewrote the source code for its operating system, expressing it in a different way. So, there doesn’t seem to be any significant actual copying by Google of any “original work of authorship.” Google chose to keep the functional API structure and call names substantially the same as Oracle’s JAVA API, but these calls to the code are a structurally functional process used to access Google’s operating system. It did this to make it easier for JAVA programmers to program for its Android operating system.
This is where it gets interesting.
Copyright’s protection of creative authorship is not an ideal protection for software, which gains its value from the functional procedures, processes, systems, methods of operation, and concepts — not from the expression of these. The real creativity in software is not how the source code is expressed but how it functions, the logic.
There’s nothing inherently creative about the expression of an API, which is utilitarian in nature. Nobody reads an API for enjoyment or to learn something, other than how to program a device to do something with the library of calls provided by the operating system.
Now, here’s the rub. It’s patent law that is intended to provide protection for a new, nonobvious and useful “…procedure, process, system, method of operation…” — not copyright. But the courts have been invalidating software patents for all types of “abstract ideas” and “algorithmic methods”. So, large swaths of software applications are no longer considered patentable subject matter.
If the functionality and utilitarian aspects of software are held to be unprotected by both copyright and patent law, this leaves trade secret law as the last vestige of protection for software. However, trade secrets only protect against misappropriation, not reverse engineering or independent redevelopment.
Many programmers embrace open source and might consider it to be just fine that companies can’t protect software using intellectual property rights. They see the benefits of reusing code and technological efficiency as a benefit to society and don’t see any significant benefit to keeping programs proprietary.
In fact, the Electronic Frontier Foundation (EFF), which declares itself the “leading nonprofit organization defending civil liberties in the digital world”, is celebrating the decision by the supreme court to reconsider the decision made by the Court of Appeals for the Federal Circuit.” The Supreme Court now has an opportunity to reverse the damage done by the Federal Circuit,” declare authors Michael Barclay and Katharine Trendacosta in an article posted to the EFF website.
They point out that the U.S. Solicitor General in the Obama administration opposed review by the supreme court and disparage the reasoning used in its briefs opposing review.
However, relying solely on trade secret law to keep software proprietary, ironically, could make it much harder to disseminate technology benefits. Programmers could be subject to egregiously restrictive covenants in employment and consulting agreements.
Let’s wait and see how the supremes deal with the issue. Proprietary software serves a purpose, allowing companies to invest and recoup some of their investment in large software development projects.
The term of 95 years under the Copyright Act is not at all reasonable for software. Even the 20 years from filing provided for patents seems long. Maybe it’s time to develop a new type of IP, with a shorter term, which provides protection for programmers without unduly burdensome repercussion on innovation in the technological arts.
A recent Florida case is a good example for teaching what copyright protects and doesn’t ptotect. Netflix was sued by the author of a memoire in Vallejo v. Narcos Productions LLC.
The court dismissed the case, because Netflix did not infringe Vallejo’s copyrighted work. While there was copying of some facts from the work, these facts do not belong to Vallejo.
According to the decision, in one alleged instance of copying “…the only similarities between these two scenes are the blindfold, caressing with a gun, and Plaintiff/Velez is aroused.”
How these facts are portrayed in the fictionalized version presented in the Narcos series is substantially different than the description in the memoir.
“These facts are not protectable. The idea of a sex scene involving a gun is not protectable…. There is no dialogue that has been copied, the settings are different, the feel of the scenes are different, and how the scenes play out are different.”
Copyright cannot be used to prevent others from disclosing facts, even if the only place that those facts are found is in one copyrighted work. Once the facts are known, anyone may retell the facts, so long as the reteller does so in their own way and own words, without copying the way that the original author expressed those facts in the original work.
The fictionalized retelling of a story that uses a few original facts from a copyrighted work but tells a different story in a different way is not copyright infringement.
Trademarks & Trade Secrets are great ways to build value in the food & beverage industry. Why?
Any company that sells (ultimately) to consumers needs a brand, because a good brand builds loyalty. Brand loyalty means that your customers will pay more for your branded product than for a generic.
But what about trade secrets? Most food and beverage companies won’t file patents, even if the product is technically patentable. As it turns out, the subjective nature of taste and mouth feel for food and beverage products depends not only on ingredients but also on the preparation, i.e. processing steps. Scale up can be a trick, also. This lends itself to trade secrets.
Coca-cola’s formula for its cola beverage is a well known trade secret. The formula was first reduced to writing in 1919 and is locked behind a reinforced steel door in a vault with palm scanner and numeric code access required. The company takes measures to prevent most employees from learning the entire formula by departmentalizing and managing vendors that under obligation of confidentiality. Only two executives know the entire formula, which includes the specifications for the water used in the process. (Different water sources taste different.) In order to successfully litigate a trade secret infringement case, a company must show that it has taken reasonable measures to protect the trade secret from public disclosure. Coca-cola has managed to keep its secrets for a century.
Kentucky Fried Chicken has a secret recipe for its fried chicken. Aunt Claudia wrote down a recipe for fried chicken that was discovered by Joe Ledington, a descendant of Colonel Sanders, in a scrap book. It is only trade secret infringement if the trade secret is “misappropriated” by someone. In this case, Joe wasn’t under any obligation to keep the family recipe secret. However, commercial recipes are seldom the same as a family recipe. Scaling up a recipe to a commercial process usually requires changes to a family recipe. It’s not as simple as simply making a bigger batch. At least two different suppliers make portions of the recipe, which prevent suppliers from knowing the entire recipe. These suppliers are sworn to secrecy in nondisclosure agreements. So, the “secret recipe” is still secret and is locked up in at least two safe deposit boxes to keep it both safe and secure.
McDonald’s has a “special sauce” that is prepared only for its Big Mac. Unfortunately, it was once reported that McDonald’s lost the recipe for its secret sauce, and for a few years its recipe changed, until the recipe was recovered from a vendor that had a copy of the original recipe. Then, McDonald’s made a video public that showed how to make its special sauce. A secret loses the ability to be protected if the secret is disclosed publicly. Therefore, the “special sauce” is no longer a secret sauce, because McDonald’s did not take reasonable measures to protect the secret from public disclosure. Once secrecy is lost, a trade secret is lost forever. On the other hand, so long as the secrecy is protected, trade secret rights never expire. McDonald’s loss of its trade secret is probably not significant, because the value of its “special sauce” has been transferred to its brand.
If you have information that derives economic value from being kept secret and make reasonable efforts to maintains its secrecy, then you have a trade secret. Trade secrets can give you a competitive edge. If use the value of your trade secret to build value in your brand, then even if your trade secret is discovered, later, by reverse engineering or dumb luck, it won’t matter. The value of your company will be greater than it otherwise would have been. For that reason, trade secrets are valuable intellectual property. Don’t ignore them.
On the 26th of October, users will no longer be permitted to electronically file marks without first registering for an account with the US Patent and Trademark Office (USPTO). Access to the Trademark Electronic Application System (TEAS) will only be available to users with a USPTO.gov account and two-step authentication. To find out more and sign up for an account go to www.uspto.gov/about-us/news-updates/teas-login-requirement.
|What happens when a trademark owner allows a registration for a mark to lapse? What if someone else wants to register the same mark? Is it abandoned? |
Armstrong filed an application for registration of the mark “Double Dare” for several classes of goods and services including:
IC 041. Entertainment, namely, a continuing children’s show, and segments thereof, broadcast over television, cable televiion (sic) and the internet
Viacom filed an opposition to Armstrong’s application after the application was published, and Viacom sued Armstrong for a declaratory judgment that Viacom still had “common law” rights in the “Double Dare” mark, even though it allowed the federal registration to lapse.
According to Viacom, it has continued to use the mark. Continuous use of a mark in commerce establishes a common law right in a mark, even without a registration.
But the district court in New York dismissed the declaratory judgment action as being too speculative, at least until Armstrong’s application registers. To add complexity, the opposition proceeding is suspended, preventinng the mark from being registered, until after a final resolution of the declaratory judgment lawsuit.
So, until Viacom either fails to appeal the decision of the district court or the appellate process is completed, Armstrong’s application will be suspended.
Armstrong’s intent-to-use application is part of a pattern of trademark squatting, according to Viacom’s declaratory judgment action. So, it will be interesting to see what happens in this case, assuming the matter is not settled by the parties first, as so often happens in situations similar to this.
The takeaway is to be very careful and circumspect when considering whether to file an application for a mark with a registration that has lapsed but remains well known. You’ll want to have evidence that the mark has been completely abandoned by the original owner.
You can’t copyright the name of your company.
You might be able to trademark the name or a portion of the name, if that makes sense.
So, what is the difference?
Copyright protects how you say something, and it isn’t available for names or short phrases.
Trademarks (and service marks) identify your company as the source of particular goods (or services).
You probably want to get some professional help if you are considering scaling up the value of your intellectual property (IP).
Yes, but be careful.
Having the right does not mean that you won’t be sued in America.
This particular right is described in the Lanham Act as a type of fair use.
The factors for “nominative” fair use are as follows.
In fact, it would be useful to provide a prominent disclaimer such as:
“All trademarks both marked and unmarked belong to their respective companies, and use of a trademark nominatively to refer to a particular product or service does not imply sponsorship or endorsement.”
Oracle was awarded $36 million in copyright-related damages, $29 million in attorney’s fees, and $3.4 million in taxable costs in a case heard by the Supreme Court of the United States.
Why was it awarded fees and costs?
Oracle prevailed in a copyright infringement lawsuit for its registered copyrights.
Under copyright law, a copyright owner of a registered copyright may recover fees and certain costs (taxable costs) associated with enforcing its copyright against an infringer, if the registration was filed properly, within the time allotted.
This is super important reason for registering your copyrights.
Consider the escalating costs of attorneys’ fees in IP litigation. It could cost you $200,000 in fees, easily, for even a simple copyright litigation.
You’ll want to make sure that your copyright in your “works of authorship” are properly registered within the time limits provided under the statute.
Your business name is the legal name of your business. This is not your brand.
While your brand might be the same or similar to your business name, it doesn’t have to be.
I’ve seen people trademark business names with the “inc.” and all, and this is just so wrong.
Your trademarks protect a brand that you attach to goods (or a service mark used in providing services), and the trademark identifies your business as the source of those goods.
A registered trademark protects your brand by preventing others from using confusingly similar trademarks.
I caution entrepreneurs to establish their company and to register it with their secretary of state before filing for a trademark registration.
Then, the company, a separate legal entity, can file for and own its trademark (not the individual entrepreneur).
If you have a bona fide intent to use a trademark or service mark, you may file an application to register the trademark or service mark after you have formed your company or corporation that will own the trademark or service mark.
Also, I caution entrepreneurs to conduct due diligence on their marks. Check to see what your competitors are doing. Make sure that your marks are distinctive (i.e. different than anybody else’s marks) before using or registering the marks.