My life has gotten busy. I'm working on several patents, trademarks and copyrights in various stages of prosecution; I'm still getting a few bankruptcy clients, and (here's the exciting news) I'm buying a bulding into which will go tenants. It's a 4-unit building in Troy, NY, and it's in really quite good shape (needs a little masonry work done, so if anyone knows a good mason in/near Troy, NY...). I didn't broker the deal myself, but I will next time (just paid the dues for a real estate broker's license).
In the IP world, the Federal Circuit Court of Appeals handed down McKesson Information Solutions, Inc. v. Bridge Medical (Docket No. 2006-1517) in May. In this precedential opinion the Court stated "The issues of materiality and intent are fact-driven. With regard to the issue of intent, the law recognizes that deceptive intent is virtually never shown or disproved by direct evidence. Instead, the ultimate fact finding on the issue depends on assessment of all the inferences, favorable and unfavorable, that can be drawn from pertinent evidence. To prevail on appeal, McKesson must demonstrate that the district court's findings of fact are clearly erroneous." This is a clear statement of the standard against which inequitable conduct in patent prosecution is measured, and is much appreciated by this patent attorney.
The Second Circuit Court of Appeals was active in the copyright arena in April, handing down a decision that construes the statute governing copyright in restored works, 17 USC 104A.
In Troll Co. v. Uneeda Doll Co. (Docket No. 05-6487-cv), the Court construes for the first time the revised statute governing copyright in restored works, 17 USC 104A. In the decision, the Court construes the following statute:
(A) [any person who,] with respect to a particular work,
engages in acts, before the source country of that work
becomes an eligible country, which would have violated
section 106 if the restored work had been subject to
copyright protection, and who, after the source country
becomes an eligible country, continues to engage in such
acts;
(B) [any person who,] before the source country of a
particular work becomes an eligible country, makes or
acquires 1 or more copies . . . of that work; or
(C) [any person who,] as the result of the sale or other
disposition of . . . significant assets of a person
described in subparagraph (A) or (B), is a successor,
assignee, or licensee of that person.
17 U.S.C. § 104A(h)(4).
It determines that subsections (A) and (B) make the status of a "reliance party" turn on whether a person took certain actions with respect to a work prior to the date that the source country of that work became an eligible country. And, for purposes of subsections (A) and (B), a source country that was a member of the Berne Convention when the URAA was enacted became an eligible country on the date of the URAA’s enactment, December 8, 1994, NOT on the date of copyright restoration. An owner of a restored copyright may not enforce its copyright against a reliance party without first giving notice, either constructive or actual, of its intent to enforce the copyright.
Until January 1, 1998, an owner of a restored copyright could file a notice of intent to enforce its copyright with the Copyright Office, thereby putting all reliance parties on constructive notice of its intent. Alternatively, at any time, a copyright owner may serve a notice of intent directly on a reliance party. Troll Co. served a notice of intent on Uneeda on October 18, 2005. After receiving actual or constructive notice of intent to enforce, a reliance party must cease making copies of the protected work. However, the reliance party is entitled to a twelve-month grace period in which to sell off its already existing copies.
Because subsection 104A(h)(4)(A) confers reliance party status on a person who “continues” to engage in infringing acts after December 8, 1994, Uneeda’s subsection (A) contention requires us to construe the term “continues,” which is, as far as we are aware, a task courts have not previously undertaken.11 Troll Co. argues that the provision contains a “continuing acts requirement” and that resuming sales after nine or ten years, as Uneeda did, does not satisfy this requirement. Uneeda responds that the language of subsection (A) does not require the infringing activity to be uninterrupted and that the periodic renewal of cyclical exploitation “continues” such exploitation.
Since the language of the statute can support either position, the Court looks to the legislative history of the statute. The Chairman of the House Subcommittee on Intellectual Property and Judicial Administration stated:
"A key to the reliance party status under this provision is
the requirement that the person have continued to engage in
the described conduct. This requirement incorporates the
continuing infringement doctrine and is also relevant to
section 104A(4) concerning statutory damages and attorney’s
fees.[12] Under this doctrine and section 104A, the
defendant must have engaged in an ongoing series of acts.
Cessation of that activity for an appreciable period of time
will deprive one of reliance party status."
140 Cong. Rec. E2263, E2264 (Oct. 8, 1994) (statement of Rep. Hughes).
The Chairman’s reference to statutory damages and attorney’s fees indicates that he understood the “continuing infringement doctrine” as the principle that “infringement ‘commences’ for the purposes of [determining whether infringement commences before a copyright’s registration] when the first act in a series of acts constituting continuing infringement occurs.” Johnson v. Jones, 149 F.3d 494, 506 (6th Cir. 1998).
Courts have held under the remedies for copyright statutes (specifically, 17 USC 412) that a plaintiff cannot recover damages or attorney’s fees for any infringement “commenced” before the effective date of a copyright’s registration. The courts have held, based on the provision’s text, legislative history, and purpose, that a plaintiff may not recover statutory damages and attorney’s fees for infringement occurring after registration if that infringement is part of an ongoing series of infringing acts and the first act occurred before registration. However, the legislative history of section 104A suggests that Congress
understood section 412 to mean that a post-registration act of infringement will not be deemed to have commenced before registration if the infringing activity ceased for an appreciable period of time.
Here, the infringing activity had ceased for approximately 10 years; this, the Court decides, falls squarely into the definition of "an appreciable period of time." Therefore, the claim by Uneeda to be a "reliance party" fails.
Nancy
