The Intellectual Property Law Section of the California State Bar recently published One LLP Partner William O’Brien’s “Copyright Commentary” column in the Spring 2016 edition of its magazine New Matter.  In a commentary entitled, “Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In?,” Bill points out the uncertainty that has been created by conflicting decisions in U.S. Courts of Appeals about when features of useful articles—ranging from clothing to cars—can be protected by copyrights rather than by other forms of intellectual property, like utility or design patents, that are more carefully tailored for that purpose.  Bill points out the important practical effects of applying copyrights to useful articles, such the much longer term of protection for copyrights and protection of features that would not meet patent-law requirements for novelty and non-obviousness.

To illustrate the present uncertainly in copyright law, Bill points out that ten different legal standards have been proposed for determining when “pictorial, graphic or sculptural” features of a useful object should be considered sufficiently separable from the object itself to qualify for copyright protection.  He says that, amidst this uncertainty, “some courts are now extending copyright protection to features whose separability from a useful article is questionable at best.”  For example, Bill cites decisions by the U.S. Court of Appeals for the Ninth Circuit saying that two cars—the Batmobile and the yellow Ford featured in the movie Gone in Sixty Seconds—could be given copyright protection as “characters.”  On that basis, the Circuit upheld a copyright infringement judgment against an auto replicator who had waited for the Batmobile’s design patents to expire before making a replica.  Bill also discusses a recent decision in which the Sixth Circuit held that the ornamental details of a cheerleading uniform were separate from the uniform’s “utilitarian function” of covering the body and could be protected by copyright.

Pointing up the lack of predictability in the present copyright law, Bill contrasts the recent Ninth Circuit decisions protecting cars as characters with a much earlier Ninth Circuit decision that denied copyright protection to the character Sam Spade from the book The Maltese Falcon.  He says, “It is hard to understand denying character status to Sam Spade—memorably played by Humphrey Bogart—but granting it to a souped-up yellow Ford.”

Bill predicts that the present uncertainty is likely to be accelerated by ongoing trends in media and technology, such as “convergence between physical products and works of authorship” and “improved interactivity and artificial intelligence,” which “will lead to even more opportunities to construe machines as ‘characters.’”  He asks, “Is Apple’s Siri personal assistant program a ‘character’—with her own voice, mannerisms, and even jokes, which make her far more human-like than the Batmobile?  If so, can Apple’s interactive technology—or even the iPhones that use it—be protected for 95 years under the Copyright Act?”  Bill concludes that, “Absent Supreme Court intervention, there is no clear limit to the expansion of copyright protection for product designs.”

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Partner John Lord presents at the “Legal Do’s and Don’ts” session of the Port of Los Angeles Advanced Trade Connect program on exporting. The program, held on May 19 at Phoenix University, is hosted by the Port of Los Angeles and the Los Angeles County Bar Association.

Trade Connect offers a series of workshops at a range of levels, from the basics involved in exporting to advanced workshops targeted at helping export companies effectively add or expand export activities. The program provides presentation by subject matter experts, information about sources for research, and references to a wide range of public and professional support resources.

Yesterday, a federal jury handed One LLP and its client Polara Engineering a complete victory in its long-running patent infringement lawsuit against Polara’s competitor Campbell Company. The patent at issue related to accessible pedestrian crosswalk systems, which are specially designed systems that provide multiple audible, visual, and vibro-tactile indications to allow pedestrians – including those having visual or hearing impairments – to safely navigate pedestrian crosswalks. The lawsuit had been pending for over three years prior to the 9-day jury trial in Orange County Federal District Court. After closing arguments, the jury spent less than a day deliberating before returning its verdict, rejecting each of Campbell’s invalidity challenges, which included anticipation, obviousness, and prior use defenses. The jury also rejected Campbell’s enforceability defense based on alleged inequitable conduct. For Polara, the jury agreed that Campbell’s infringement of the Polara patent was indeed willful and awarded Polara the full measure of its claimed reasonable royalty damages.

One LLP partners Nate Dilger and Chris Arledge were trial counsel for Polara. The case is captioned Polara Engineering, Inc. v. Campbell Company, Case No.: SACV 13-00007 DFM.

Licensing music is a prominent way that artist, songwriters, producers, record labels and music publishers generate revenue from the music they own. Copyright owners of the music must properly license the music for use in film, television, or any other commercial application.

In the Intellectual Property Magazine article “A Practical Guide to Music Licensing,” One LLP Attorney Burgundy Morgan provides detailed insights into the two distinct licenses copyright owners can grant giving the necessary rights for use of their work and the differences between the two licenses. “Copyrighted music can generate a significant income for rights owners, but they have to secure two different licenses first,” says Ms. Morgan.

Ms. Morgan also outlines licensing scenarios for recordings and musical compositions to better explain the differences in a master-use license and a synchronization license. Ms. Morgan proceeds to explain the importance of clearing a musical composition and sound recording “One should review public records to identify the proper rightsholders and conduct proper due diligence and change of title research,” says Ms. Morgan.

Download the article here.