Dennis Crouch's Patently-O: 1 new topics, including “Willfulness Interplays Between Patent and Copyright”

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Willfulness Interplays Between Patent and Copyright Posted: 14 Jan 2015 10:18 AM PST by Dennis Crouch As with patent law, willful copyright infringement also leads to enhanced damages. In Seagate (Fed. Cir. 2007), the en banc Federal Circuit drew an analogy to copyright doctrine in determining that willfulness in the patent context should also include reckless indifference.  Truthfully though, copyright law was not as uniform in its approach as suggested by the panel decision. In Olem Shoe Corp. v. Washington Shoe Corp. (11th Cir. 2015), the Eleventh Circuit goes the other way and relies on the Federal Circuit doctrine on willfulness to help it further refine the test for copyright.  In a issue of first impression for the Atlanta-based Court of Appeals, affirmed that willfulness in copyright law also requires proof that the infringer acted “despite an objective high likelihood that the actions taken” constituted infringement and that the risk of infringement was known or should have been known by the infringer. The district court had found infringement but no willfulness. (See comparisons above). On appeal, the panel affirmed — finding that the copyright holder presented no evidence “with regard to actual knowledge that Olem’s boots infringed Washington Shoe’s copyrights. That is, there is no evidence that Olem knew of Washington Shoe’s copyrights and chose to violate them.”  The panel also found insufficient evidence to raise a genuine issue of material fact of reckless disregard. In particular, Washington Shoe argued that its cease-and-desist letters should have created sufficient notice.  However, that suggestion was rejected because the letters “did not include reference to copyright registration numbers or deposit copies. . . [and thus] provided nothing from which Olem could have determined that the claim was legitimate.”  Washington Shoe also noted the similarity of the boots  – including evidence that the boots are identical – as a clear signpost of infringement.   However, the appellate panel also found that similarity to provide no basis for a willfulness finding.  Finally, for willfulness, the panel refused to place any burden on the infringer to prove that it had an alternative design source. * * * * * A few interesting aspects of the case: First, I should note that, although expounding upon new law, the panel determined that the decision was non-precedential.  This is likely because two of the three panel members were sitting by designation (one from a district court and the other from the USCIT). As part of its deliberative process, the district court requested insight from the register of copyrights regarding whether certain alleged inaccurate information regarding the copyright registration would have caused the register to deny registration. Such a request is permitted under 17 U.S.C. 411(b).  This approach is wildly different from the patent law approach where there is essentially no communication between the patent office and the court of enforcement. The copyright statute only particularly provides for enhanced willfulness damages if the copyright holder first chooses statutory damages (rather than proving actual damages).

Upcoming Conferences and Workshops Posted: 14 Jan 2015 07:54 AM PST By Jason Rantanen Three upcoming conferences that may be of interest to readers: This Friday and Saturday, January 16 and 17, the University of San Diego School of Law’s Center for Intellectual Property Law & Markets is holding its 5th Annual Patent Law Conference.  This year’s topic is “Patent Invalidity after the America Invents Act.”  Speakers include Judges Bencivengo, Bartick & Chen.  I attended last year as part of PatCon and thought it was a great event.  More details here: http://www.sandiego.edu/law/centers/ciplm/detail.php?_focus=49377#overview Hal Wegner’s 3rd Annual Naples Patent Law Experts Conference will be held February 9 and 10.   This beachfront Conference in Naples, Florida, will involve  an interactive discussion by more than thirty faculty members.  Topics to be covered include recent and pending Supreme Court patent law decisions, potential legislative activity, issues of international law, and more. Further information from the sponsoring organization, the University of Akron, is available here: http://www.uakron.edu/law/ip/naples-midwinter.dot On March 5-6, Don Chisum and Janice Mueller will conduct a two-day patent roundtable seminar.  The program is limited to a total of ten participants to maximize opportunities for interactive discussion and debate.  All sessions are led by treatise authors and educators Don Chisum and Janice Mueller. Coverage focuses on recent significant patent decisions of the Federal Circuit and U.S. Supreme Court. Topics currently planned for discussion include: The Supreme Court’s Alice Corp. decision on patent-eligible subject matter and subsequent Federal Circuit decisions applying Alice;  The Supreme Court’s grant of certiorari in Commil USA concerning the intent requirement for inducing infringement; The Supreme Court’s grant of certiorari in Kimble v. Marvel concerning the propriety of post-patent expiration royalties; The Supreme Court’s pending decision in Teva v. Sandoz on review of patent claim construction; The Federal Circuit’s grant of en banc review in SCA Hygiene to determine whether the Supreme Court’s Petrella decision changed the law of laches as a defense to patent infringement; Patent Practice Gone Wrong: Lessons from Patent Malpractice, Exceptional Case and Rule 11 Sanctions, and Inequitable Conduct Cases; Patent Claim Construction and Definiteness in the Wake of Nautilus (and Anticipating Teva); and Inter Partes Review: Two-Year Snapshot and Lessons from Case Studies. No advance preparation is expected or required. The Supreme Court of Ohio Commission on Continuing Legal Education has approved the seminar for 12.0 hours of CLE instruction. For additional details on the venue, topics, and registration form, see http://chisum-patent-academy.com/upcoming-patent-law-seminars/advanced-patent-law-seminars-cincinnati-oh/ or e-mail info@chisum.com.

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