Greetings and welcome to Skilled in the Art. I’m Law.com IP reporter Scott Graham, and I am ready for the Supreme Court to get Oil States over with. In light of the Tinder-Bumble IP brouhaha, I’m also wondering how different “swiping left” to ignore a match card is from swiping right to ignore a telephone call. Thoughts?As always, email me tips on anything IP and find me on Twitter @scottkgraham.
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Blurred Reactions to Music Copyright Ruling
I woke up Wednesday anticipating the possibility of an Oil States ruling on the constitutionality of IPRs from the Supreme Court. Once again I—and I’m sure many of you—were disappointed. The high court has now decided 10 of the 16 cases it heard prior to the Nov. 27 Oil States arguments, and six more argued since.
I’ve examined these numbers, run a few simulations and reached this determination: Oil States could come any time between now and the end of the Supreme Court’s term in June.
But there was an IP consolation prize on Wednesday: The Ninth Circuit issued Williams v. Gaye, upholding the $5 million judgment in the copyright dispute over the smash 2013 single Blurred Lines.
My initial take: Kind of a letdown. Judge Milan Smith‘s majority opinion was doubly deferential, one, because it was from a jury verdict and, two, because the lawyers for Pharrell Williams and Robin Thicke didn’t make a Rule 50(a) JMOL motion during the trial. So while upholding the verdict that Williams and Thicke infringed Marvin Gaye’s 1977 hit Got to Give It Up, the ruling didn’t seem to set a lot of precedent.
Then the emailed commentary began pouring in. “The Ninth Circuit majority decision was quite explicit in opining that musical works receive broad protection,” Dorsey & Whitney partner J. Michael Keyes said. Smith’s opinion “leaves quite a bit of play in the joints for future litigants to cobble together a music infringement claim.”
Loeb & Loeb partner Tal Dickstein went further. “The Ninth Circuit’s majority opinion contains a constellation of substantive and procedural rulings—including re-affirming that subconscious copying can constitute infringement, refusing to scrutinize the opinions of expert musicologists, and giving great deference to juries in music copyright cases,” he said. All of this “will, unfortunately, encourage dubious infringement claims.”
Stroock & Stroock & Lavan partner James Sammataro saw it completely differently. “The decision is a surprise,” he said. “And, disappointing—in that it did not address any of the issues that matter.”
So what the heck is going on here? I decided to speak on the phone with two more experts. Orrick partner Paul Fakler said that on one hand, the Ninth Circuit was loath to overturn a jury verdict, even in a case that he believes “went off the rails.” But having declared deference, the majority then lined its opinion with “little things, throw-away language” that has the potential for “causing grief in later cases.”
It may now be difficult to get any verdict overturned so long as a plaintiff expert testifies that two songs are substantially similar—”no matter how untethered” the expert’s opinion is from music theory or the sheet music deposited with the Copyright Office, Fakler said. “It’s just very troubling.”
And Smith’s holding that musical compositions are entitled to broad, rather than thin copyright protection, is “a non sequitur,” Fakler said. Broad versus thin protection comes from a different genre of copyright cases. “It has no application to music,” he said.
Haynes and Boone associate Wesley Lewis has been teaching Williams v. Gayeas part of Harvard Law School‘s CopyrightX online course. He said he agreed with a lot of the theory and policy criticisms raised by dissenting Judge Jacqueline Nguyen. “It would be trouble to allow people to copyright a musical style or groove” as seems to have happened in Williams. But he also said Nguyen hadn’t made a persuasive case for why those criticisms should trump the jury verdict given the procedural posture of the case.
“I’ll be curious to see if this ruling exerts a chilling effect on the industry,” he said. Artists might become reluctant to publicly discuss their influences, since a magazine interview in which Thicke praised “Got to Give It Up” was used against him in the litigation.
Fakler and Lewis both said the Ninth Circuit avoided one of the big-ticket issues in the case: Whether juries should be allowed to hear recordings of allegedly infringed music as performed by the author, rather than stripped down versions of the sheet music, in cases governed by the Copyright Act of 1909. Fakler thinks the answer should be no. Lewis says yes. The Ninth Circuit left that issue for the next case.
New PTO Director Andrei Iancu delivered his first public remarks to a bar association Thursday at the PTAB Bar Association‘s annual conference in Washington. Immediate takeaway: Iancu has a wicked dry sense of humor.
PTAB Bar president Bob Steinberg of Latham & Watkins kicked off the Q&A by asking Iancu what it meant to be managing partner of Irell & Manella. “I ran the firm,” Iancu said, adding, “Those of you who are managing partners of law firms know that you don’t actually run things.”
Iancu went from managing a 120-lawyer firm to the 13,000-employee, $3.5 billion USPTO. “So it’s not all that different,” he deadpanned. He said he told his former law partner, Morgan Chu, “one of the biggest changes is that now I found a couple of people who actually listen to what I say.”
Iancu got serious, though, when Steinberg asked why he left a lucrative gig at Irell to tackle the PTO. “Everything I have, I owe a huge debt of gratitude to this country, coming in as an immigrant with literally nothing from a communist country as a political refugee,” he said. Iancu came to the U.S. from Romania with his family at age 12.
On policy, Steinberg pressed Iancu about two hot-button areas of PTO practice: Section 101 patent eligibility and “panel stacking”—the Patent Trial and Appeal Board’s occasional practice of adding administrative law judges to panels during IPR proceedings. Iancu didn’t shy away.
➤ ON SECTION 101: Iancu said that while Supreme Court and Federal Circuit decisions are binding on the PTO, there’s still some room for the PTO to provide examiners “forward-looking guidance, where we think the lines should be drawn from the PTO’s point of view. We’re looking at that question right now.”
He also voiced cautious support for legislative Section 101 reform, noting that “it hasn’t been touched since 1952, and even then it was barely touched.” He acknowledged that by doing so “you perhaps are opening up a can of worms,” but said other countries have successfully navigated it. “If we at least engage in the discussion, we have a chance to provide better clarity,” he said.
➤ ON PTAB PANEL STACKING: Iancu defended the PTAB, saying panel stacking is “a loaded phrase” that implies a result-driven procedure. He said panels are expanded instead to provide more consistency and predictability, but acknowledged that the PTAB needs to be more transparent with the procedure. “As one of our former partners at Irell would say, if you have a perception problem, you have a problem,” Iancu said.
Steinberg asked if the PTO was drawing up contingency plans for the Oil Statesdecision on IPR constitutionality. Iancu said it has, then turned the question around on Steinberg. “I want to know what the plan for the PTAB Bar Association is for next year if Oil States …”
“We have an insurance carrier outside, actually,” Steinberg joked.
Who Got the Work?
It’s already being called Waymo v. Uber for the mobile matchmaking industry. Tinder parent Match Group LLC sued Bumble Trading Inc. in the Western District of Texas on March 16, accusing the women-first Bumble app of misusing its IP to become a “Tinder clone.” Just to spice things up, there’s also a history of bad blood between company founders and a rumored $450 million buyout offer.
➤ The Dispute: Match accuses Bumble of copying Tinder’s “world-changing, card-swipe-based, mutual opt-in premise.” That is, a user swipes right on their mobile device if they’re interested in making a connection, swipes left if they’re not. The key distinguishing feature is that on Bumble, women interested in an opposite-sex relationship must make the first swipe. Bumble was co-founded by former Tinder marketing executive Whitney Wolfe-Herd along with two former Tinder designers and others. Match alleges that Bumble infringes its design and utility patents on the swiping technology; its trademark and trade dress, including its “It’s a Match!” screen; and that Bumble executives misappropriated trade secrets. Wolfe-Herd previously sued fellow Tinder co-founder Justin Mateen for sexual harassment, which Tinder quickly settled. “To be clear, this case is not about any Bumble personnel’s personal history with anyone previously at Tinder,” the complaint alleges.
➤ The attorneys: Partner Brad Caldwell and associates John Summers and Warren McCarty III of Dallas’ Caldwell, Cassady & Curry are on Match’s complaint along with partner John Palmer of Austin’s Naman, Howell, Smith & Lee. No appearance has been entered yet for Bumble. Neither it nor majority owner Badoo Trading have much of a track record in U.S. IP litigation, though Cooley once represented Badoo in a trademark case. So far, Bumble is doing most of its talking in the court of public opinion: The company took out ads in the New York Times and Dallas Morning News saying, “We swipe left on bullies.”
PTAB’s First Derivation Trial Coming
Raise your hand if you remembered that the America Invents Act established four new trial proceedings at the PTAB: IPRs, CBMs, PGRs and … derivation proceedings.
Derivation proceedings took the place of interferences and are meant to resolve disputes over who was first to claim an invention. Unlike IPRs and CBMs, the proceedings have not been popular. According to Robins Kaplan, it became the first firm this week to secure a decision to institute a derivation proceeding. Some 50 previous derivation petitions fell short of the mark, the firm says.
In Andersen v. GED Integrated Solutions, Andersen Corp. alleges that a former employee invented a spacer frame used in insulated glass windows during his employment with Anderson. GED then learned about the invention from the employee and filed a patent application.
The PTAB ruled that Andersen demonstrated substantial evidence that, if unrebutted, would support a determination of derivation. Cy Morton and Shui Li of Robins Kaplan represent Andersen Corp. GED is represented by Tarolli, Sundheim, Covell & Tummino and Baker Hostetler.
That’s all for this week. Maybe by this time next week we’ll have some big IPR news to talk about … or not.
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