Sirius, ukulele feud, YODA bill, Monster Energy, most-cited IP articles, Ecuador’s licences – the week in IP

September 25, 2014

The Turtles winning royalties in a case against Sirius, a trade mark dispute between two ukulele bands, the YODA bill’s introduction, Monster Energy being sued again for using Beastie Boys songs, a list of the most-cited IP articles, and Ecuador granting nine compulsory patent licences since 2009 were among the intellectual property stories hitting the headlines this week

sirius20logo.jpg Sirius consequences

A federal judge this week ruled that Sirius XM Radio must pay royalties to the founding members of 1960s pop group The Turtles – whose biggest hit was “Happy Together” – for playing their songs. The decision could have big ramifications for other groups that released music before 1973 and for other internet music-streaming companies such as Pandora.

Federal copyright law covers recordings made after 1972 but state law covers music made before then.

Flo & Eddie, a corporation controlled by Howard Kaylan and Mark Volman, two of the founding members of The Turtles, filed a lawsuit in Los Angeles’ Superior Court in August 2013 claiming royalties from the satellite broadcaster. They argued that sound recordings were not intended to be left unprotected when the state’s copyright law changed in 1982. The lawsuit sought $100 million in damages.

The Wall Street Journal’s Law Blog quoted LA attorney Harvey Geller of Gradstein & Marzano, who represented Volman and Kaylan, as saying: “It’s a tremendous ruling on behalf of the artists’ community and the older artists who rely on royalties to survive.”

Sirius had argued that ruling that state laws cover public performance “would radically overturn decades of settled practice”.

District Judge Philip Gutierrez explained in his order this week: “Flo & Eddie argues that Sirius XM is liable for two distinct unauthorised uses of its sound records: (1)publicly performing Flo & Eddie’s recordings by broadcasting and streaming the content to end consumers and to secondary delivery and broadcast partners, and (2) reproducing Flo & Eddie’s recordings in the process of operating its satellite and internet radio services.”

He concluded: “Flo & Eddie’s motion for summary judgement is GRANTED on all causes of action, but only so far as the claims are premised on Sirius XM’s public performance of Flo & Eddie’s recordings, not its alleged reproductions.”

The Turtles have lawsuits pending against Sirius in New York and Florida.

ukulele.jpg Duelling ukuleles

A trade mark dispute has broken out between two competing ukulele groups. The Ukulele Orchestra of Great Britain (UOGB) is unhappy that the UK High Court has ruled that the German-based United Kingdom Ukulele Orchestra (UKUO) is not in competition with it, according to the BBC.

Both groups perform contemporary pop songs on ukuleles. The UK-based group had wanted a temporary High Court injunction ahead of the Germany-based group embarking on a UK tour next month.

Judge Richard Hacon said that the UOGB should have acted sooner because the German-based band had been performing for some time. The trademark infringement claims could be fully argued at a trial later this year or early next year, according to the Guardian.

us20congress.jpg YODA’s “important first step”

A bill has been introduced in the US House of Representatives that would transfer ownership of a copy of a computer program along with the device. Representative Blake Farenthold’s You Own Devices Act (YODA) would add the following provision to Section 109 of the Copyright Act:

“(1) IN GENERAL.—Notwithstanding section 106 or section 117, if a computer program enables any part of a machine or other product to operate, the owner of the machine or other product is entitled to transfer an authorized copy of the computer program, or the right to obtain such copy, when the owner sells, leases, or otherwise transfers the machine or other product to another person. The right to transfer provided under this subsection may not be waived by any agreement.”

As noted by Dennis Crouch on the Patently-O blog, although people own their computers there are certain ways they can use their computers to infringe patents or copyrights held by others. In the computer-related fields required end-user-licence agreements have now become the industry standard for limiting ownership rights, in many cases providing only a limited and personal licence.

“The common law tradition is to strike-down substantial use restrictions as effectively being unreasonable restraints on the market” noted Crouch in a blog post. “However, it seems that the underlying IP rights have served as a basis for courts to favor ‘freedom of contract’ over the traditional unreasonable-restraint-of-trade doctrines.”

The YODA bill is a partial fix to that problem.

“It’s reassuring to see some pushback against abusive contract terms that consumers have no opportunity or leverage to negotiate,” commented the Electronic Frontier Foundation in a blog post. “YODA is an important first step towards addressing the problem with restrictive licenses on embedded software.”

The EFF said the right to access and modify software in your own devices is under siege, pointing to Section1201 of the Digital Millennium Copyright Act prohibiting breaking digital locks on copyrighted works even if you own the copy of that work and the device on which it rests.

beastie20boys.jpg So whatcha want? At least $1.2m...

Two Universal Music units this week sued Monster Beverage for infringing copyright in a promotional video that included Beastie Boys songs.

The lawsuit comes after the Beastie Boys were awarded a $1.7 million payout from Monster by a federal jury in Manhattan in June for the same video. Monster included parts of songs “Sabotage”, “So Whatcha Want”, “Make Some Noise” and “Looking Down the Barrel of a Gun” in a video promoting a snowboard competition sponsored by Monster. Monster is appealing the verdict.

The new lawsuit was filed in the same court by Capitol Records and Universal-Polygram International Publishing, and seeks at least $1.2 million, according to Reuters.

mark20lemley.jpg America’s most cited

The most cited IP law articles of the past 10 years were revealed this week by Ted Sichelman of the University of San Diego School of Law.

Sichelman broke the articles out into those published from 2004-2008 and those published from 2009-2014.

Mark Lemley (right) of Stanford Law School features most prominently in the list of articles from 2004-2008. His 2005 article “Property, Intellectual Property, and Free Riding” was the most cited in the period (345 times), and he wrote or co-wrote eight of the top 25 articles.

Pamela Samuelson of Berkeley Center for Law at the University of California wrote the most cited article of the 2009-2014 period. Her 2009 article “Unbundling Fair Uses” was cited 99 times.

Ecuador compulsory patent licences

Ecuador is now up to nine granted compulsory patent licences, according to the IP Tango blog.

The country’s law was amended in 2009 to make use of the TRIPS flexibilities in favour of developing countries. Since then the Ecuadorian Institute of Intellectual Property has received 32 applications fro compulsory licences.

“While some have been refused or abandoned, nine have resulted in the grant of licences for the production of drugs in widespread use (the first three being for Ritonavir, Lamivudine and Abacavir -- antiretroviral drugs that the Ministry of Public Health provides as free treatment to patients suffering from HIV/AIDS),” IP Tango explained.

Nine of the total applications have been made by public company Enfarma, which now holds licences to make Sunitinib and Certolizumab.

Also on the blog this week:

PTAB proceedings – the most stay-friendly district courts

MARQUES Conference Day 2 report

Five notes from MARQUES Day 1

Is Alibaba China’s biggest brand?

And in our news and analysis:

PTAB issues “surprising” joinder order

USPTO and KIPO expand cooperative patent classification system

The Unitary Patent is a “wonderful tool” - Jean-Jacques Canonici, P&G

Strategies for speedy ends to patent litigation

Interview: Colin Lamond, Nissan, on the costs of the Unitary Patent