Movie DVD producers go to great lengths to prevent DVD movie piracy.  To protect their revenues they use technology as a preventative measure and their copyrights as an enforcement tool.  However, there is a new threat on the horizon for the movie DVD producers. 

Last week major movie DVD producers including Paramount Pictures^®, Sony Pictures and Walt Disney Studios brought suit against RealNetworks^® Inc. to prevent RealNetworks^® from selling RealDVD^®, its new DVD copying software.  The software allows customers to make copies of movie DVDs regardless of the encryption or security software protecting the movies on the movie DVDs.  The DVD producers fear that RealNetworks’^® copying software will ruin DVD movie sales.  The DVD movie producers claim the software would allow individuals to rent movie DVDs, copy them and then take the movie back, thus, bypassing any purchase of the movie DVDs.

Currently, distribution of movies on DVD is a $15 billion a year industry.  But imagine how much these revenues would be affected if a potential customer, instead of paying $18 dollars for a movie DVD, could pay $3.75 to rent a movie and copy it at home.  It is easy to see how RealNetworks’^® software could affect the movie DVD business.

A federal district court in San Francisco has barred RealNetworks^® from distributing RealDVD^® software temporarily.  RealNetworks^® asserts use of its software to make such copies constitutes a “fair use”.  The fair use doctrine allows limited use of copyrighted material without requiring permission from the copyright owner.  Typical uses which fall under the fair use doctrine are copies for the purpose of criticism, comment, news reporting, teaching, scholarship or research. 

Copyright law and advanced technology have been at odds for quite some time.  As technology advances we discover new, faster and simpler ways to pass information and sometimes this information is copyrighted.  One only needs to recall the litigation surrounding Napster^®.  It appears this battle between copyright law and technology will be going on for some time to come.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

On October 8, 2008, United Kingdom’s Court of Appeals for the first time held patent protection should be available for computer program implemented inventions making a technical contribution to the art including inventions where the technical contribution solves a technical problem lying within a general purpose computer itself.  The court’s decision went on to outline when such patent protection will be available.

The following is a synopsis:

- Software will not be patentable in the UK merely by virtue of being used with a general-purpose computer, but a technical contribution indicates that a software implemented invention should be patentable.

- Improving the speed and reliability of the functioning of the computer is a technical contribution; in particular a program that makes a computer operate on other programs faster than prior art operating programs is patentable.

- Correct application of UK law should result in software inventions that provide a technical contribution, even one solely within the computer, being patentable.

- The heart of the question of patentability is whether the contribution of the invention is technical.  The real issue to be decided is whether the invention provides a technical contribution to the art.

We here at Nikolai & Mersereau routinely assist clients with securing patents in the UK and other European countries.  We have developed a network of associates across Europe we work with to ensure our clients receive expert advice on European IP protection.  We would like to thank our friends at Reddie & Gross in the UK for providing us with a detailed report concerning recent change in UK law which we have summarized above. 

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

Recently Google^® announced its 10 to the 100^th Power Project calling for “ideas to change the world”.  Google^® will be committing $10 million dollars to implement projects it selects.  The topics for idea suggestions are interesting and include age old questions such as:  how can we help connect people, build communities and protect unique cultures?  How can we help people provide for themselves and their families?  How can we help more people get better access to education?  How can we move the world toward a safe, clean and inexpensive energy?  How can we promote a cleaner environment?  How can we help individuals lead longer, healthier lives? Or, how can we help ensure that everyone has a safe place to stay?  These questions all lend themselves to potentially patentable inventions. 

The website related to the Google’s^® Project 10¹⁰⁰ website makes no reference to patent rights concerning any idea submission, who would own any patentable inventions or if patent protection would be sought either in the United States or abroad.  Further, the website does not advise those invited to submit ideas that the very submission of their ideas and inventions to Google^® could adversely impact available patent rights. 

For example, under Section 102(b) of the U.S. Patent Code, a person is barred from obtaining a patent if the invention was (i) patented or described in a printed publication in this or a foreign country, or (ii) in public use or on sale in this country, more than one year prior to the date the application for patent in the United States is filed.  The patent laws of many foreign countries do not afford this one year grace period.  For these and other reasons we typically advise clients to consult with us before making any public disclosure of an invention.  We can then properly advise the client, based on the nature of the invention and the countries where patent publication may be of interest, how to proceed under United States and foreign statutes and international treaties to preserve the write to patent and timely file the papers necessary to secure the patent.  Such consultation should occur before any submission to Google^® is made to ensure the submitter understands his rights and the impact the submission can have on these rights. 

Google’s^® offer may be enticing but, like a lottery, only a few of the people of the many likely to submit ideas will share in the money.  Anyone submitting an idea should evaluate whether their idea warrants protection and seek legal advice to ensure their right to protection is not lost.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

So you have a great idea, a revolutionary idea, an idea that could be worth a fortune.  What is the best way to protect the idea so that you can profit from it?

That depends.  U.S. law provides several forms of intellectual property protection.  The right form(s) of protection will depend on the nature of the information to be protected and how it will be used.

• Patent rights protect inventions for a limited period of time.
• Trade secret rights protect confidential information from unlawful disclosure for so long as the secret can be kept.
• Copyrights protect original works of authorship fixed in a tangible medium of expression.
• Trademark, service mark and trade name rights protect words, phrases, pictures, symbols, shapes or other means identifying the source of origin of goods or services.
• Semiconductor works protect mask works fixed in a semiconductor chip product. 

It is important to remember that the various forms of intellectual property protection are not mutually exclusive.

In fact, all may apply to a single product launch.  For at least a period of time, information related to the nature of the product, how it will be priced and how it will be sold must be kept secret.  Even after launch, business information surrounding the product and business plans related to the future are to be held in confidence.  Thus, securing and protecting trade secret rights is important.  The product may involve one or more inventions related to how it works and even how it looks.  Thus, utility and design patents may be available to keep others from using such inventions.  If the product includes semiconductor chips, mask work protection may be available.  Every product has a name and many can be readily identified by their ornamental features or the features employed in packaging.  Trademark and trade dress rights therefore come into play.  Various pieces of literature are typically associated with the product launch including advertising pieces, instruction manuals and software code, all of which give rise to copyright protection.

With each new product introduction, two basic questions need to be asked.  Will I be infringing any intellectual property rights of others? And how can I best protect the substantial investment I am making to bring the product to market?  The earlier these questions are asked, the better.  We, of course, would appreciate the opportunity to help you find the right answers.

At Nikolai & Mersereau we can help you sort out these issues and select the most appropriate types of protection for your ideas. 

Jim Nikolai       (612) 392-7302           Jim.Nikolai@nm-iplaw.com

In a decision handed down this week, the Court of Appeals for the Federal Circuit (CAFC) revised what is needed to establish infringement of a patent on an ornamental design.  In a case entitled Egyptian Goddess v. Swisa, Inc. (Fed. Cir. No. 2006-1562, 9/22/08), the court threw out the so-called “point of novelty” test and held that the only test that should be applied is that established by the U.S. Supreme Court over 135 years ago in Graham Co. v. White, 81 U.S. 511, 1871.

Under Graham, “If in the eye of an ordinary observer, given the attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”  This has been referred to as the “ordinary observer” test.

Beginning in 1984, the CAFC added a further requirement to a finding of infringement that required that the accused infringing design also embody the feature that comprised “the point of novelty” of the patented design, i.e., the aspect that distinguished the patented design from the prior art.

In the Egyptian Goddess case, the CAFC concluded that the “point of novelty” test should no longer by used in the analysis of a claim of design patent infringement and that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed.  The CAFC went on to say, however, that in applying the “ordinary observer” test, an examination of any novel feature of the patented design must also be considered, i.e., the prior art must be taken into account.

Even though the Egyptian Goddess case attempted to lay the “point of novelty” test to rest, the mummy still stalks the earth.

Laurie Young                (612) 392-7309           Laurie.Young@nm-iplaw.com