IP Law Bulletin

In view of the U.S. Supreme Court’s decisions in Alice, Myriad, and Mayo, the United States Patent and Trademark Office (USPTO) has issued a series of guidance documents on patent subject matter eligibility under 35 U.S.C. § 101. These documents are collected on the Subject Matter Eligibility page of the USPTO website. The USPTO’s “May 2016 Subject Matter Eligibility Update” (88 Fed. Reg. 27381), announced the newest in this series of guidance, including new life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections, an index of eligibility examples, and an appendix of subject matter eligibility court decisions.

Over the summer we analyzed a decision by the Court of Appeals for the Ninth Circuit that denied Amazon.com, Inc.’s (Amazon) motion for summary judgment as to watchmaker Multi Time Machine, Inc.’s (MTM) claims that Amazon’s use of MTM’s trademarks as keywords at amazon.com was infringing. The Ninth Circuit has now taken the unusual step of revisiting and vacating its July decision, upholding the federal district court’s grant of summary judgment in favor of Amazon. 

The Second Circuit Court of Appeals recently ruled that Google’s scanning of printed books and subsequent use of the resulting digital copies is fair use under the Copyright Act (17 U.S.C. § 107). Google was first sued by the Authors Guild a decade ago over its Library Project and Books Project, which involve scanning published works to create digital copies, making the text searchable, and displaying at least snippets of the work in connection with search results. The decision affirmed the lower court’s grant of summary judgment and focused on the transformative nature of Google’s use. The Second Circuit noted that Google’s use provides information about a book without being a substitute for the book itself. The decision may not be the final word in this case—the Authors Guild states on their website that they intend to appeal the ruling to the Supreme Court.

Pat Concannon discusses the recent decision by the U.S. Court of Appeals for the Ninth Circuit in Lenz v. Universal Music Corp. and the implications for owners of music and audiovisual works.

The U.S. Court of Appeals for the Ninth Circuit this week issued a decision with implications for owners of music and audiovisual works. The court ruled that copyright owners first must assess whether a use of their content is in fact lawful “fair use” before sending a takedown notification under the Digital Millennium Copyright Act (DMCA). Considering fair use involves a balancing of subjective factors, this newly-clarified requirement may make it logistically more difficult and time consuming for content owners to evaluate whether a use of their content discovered online qualify for takedown notices.