Archives for October 2017 | Intellectual property and business law blog

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Steve O'Donnell, Ph.D. Registered Patent Attorney

Ooo, ooo, ooo, scary stuff kids!

With apologies to Count Floyd, copyright law is usually scarier than Dr. Tongue’s Evil House of Stewardesses.

Gather ‘round kids, and shudder at the horror of Don Post Studios Inc. v. Cinema Secrets and read about the legal battle over Michael Myers’ spooky William Shatner mask.

I have a new use for an old device, can I patent it?

“Steve, I’ve discovered this floor cleaner is also a delicious dessert topping…”

If you discover a new use for an old device, it might be patentable. For example, if you discover that cheese curls can kill certain cancers you can probably patent that because “who would ever have thought of that?” Thing is, if you get a patent it’s only going to cover the new use, and not the underlying product. So even if we can get a claim to “a method of treating certain cancers by eating a bunch of Cheetos” you’re not going to be able to sue companies making cheese curls unless they start advertising the product’s use to cure cancer. That’s where the problem comes in, if you find a new use for my product, I’m going to sell a lot more of my product and as long as I don’t promote the new use, I won’t have to pay you.

What can be patented?

In the US, one can patent any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof…” Great, so what does that mean?

If we break it into chunks, it’s easier to understand.

A process, machine, manufacture, or composition of matter pretty much covers everything. Really, we’re pretty broad about what you can patent. There’s stuff you can’t patent of course, things like mathematical formulas, scientific laws, mental processes, abstract ideas are pretty obviously out. Methods of doing things and software might be patentable or not, depending on the case. Most of time we don’t have to spend too much time on whether an individual invention is the type of thing that can be patented.

Whether something is useful is also something we don’t usually have to think about. There are some really stupid inventions that have been patented--things you just can’t imagine anyone wanting. Or course, you can’t tell an inventor their idea is stupid because they’ll never believe you. Trust me, I’ve tried.

New...now that’s the thing we need to worry about. We should probably think about the requirement really being “new and nonobvious” since that’s what it really means.

New is well, new. Something no one has done before, or even thought of before. Something that creates its own market. Radio was new. TV was new. The internet was new. The electric toaster was new. Now, not everything new is going to change the world quite like the toaster did, but we can hope. The way I think of it is that if something is new, it has no direct competition. Radio and TV may compete with each other and with movies and stage performances and books for your attention, but it’s not like people spend too much time deciding whether to buy a radio or a tv because they’re very different things.

Non-obvious is trickier and trips up more inventors that anything. Something is obvious when “differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” The way I think of it that is if someone familiar with the field of the invention would have been able to think of the invention without being particularly clever, then it’s obvious. Or, if you to go up to someone and ask them how to solve the same problem your invention solves, and they come up with the same idea, then maybe it’s not much of an invention. It might still be clever, it might still sell, but it might not be patentable.

For example: automatic windshield wipers. Lets say you put a water sensor on a windshield and wire that it starts the wipers. Is that an invention? Well, if you go up to just about anyone and ask them how to have windshield wipers turn on automatically they’ll probably come up with the same idea. In that case, it’s probably not patentable. I’m not sure if it’s even an invention. Now, if you built your wiper-device and discovered that the wipers were turning on in humid weather, or that they were being triggered too early or late to be effective so you designed a system where there were four sensors on the outside of the car and three of them had to be triggered to start the wipers and the speed of the wipers corresponded to how often the sensors fired...that might not be obvious.

Another indication of obviousness is whether all the parts of the invention already exist and someone could just put the parts together to make the invention. Going back to my windshield wiper example, if there was an existing product that measured precipitation which detected when rain started and reported the rate of rainfall, and all you had to do was buy it and wire it to the wiper switch...then your invention is probably obvious. Even though no one ever thought to put those things together before, and even if you didn’t know about the precipitation measuring device and build yours from scratch.

There are arguments we can make if an application is rejected for being obvious, and sometimes they work. Sometimes they don’t.

You and your patent attorney can save a lot of money and hassle by estimating the risk of your application being shot down for obviousness early in the process. Then, you can decide whether the risk is acceptable, whether you can change the invention to make is less obvious, or whether it makes more sense to save the money that would have gone to a patent application and spend it on marketing instead.

Who's Holiday

Society is not good and sweet, but coarse, vulgar and disappointing.

I had a call from someone about a month ago who wanted to use some song lyrics in a short story making fun of Congress and wanted to know if that would be a problem. Like any good lawyer my answer was “it depends, you should come in for a paid consultation.” He didn’t.

So, here’s part of what I would have said: “if you twist the lyrics so that you’re making fun of the song itself, that’s probably a fair use parody; but if you use the lyrics to make fun of something else, that’s satire and that could be a problem. Actually, are you sure you need to use those lyrics? Can you say the same thing with maybe a line or two instead of the whole verse?”

The case that really cemented protection for parody is Campbell v. Acuff Rose Music, 510 US 569. It’s one of my favorite cases to read, partially because of the discussion of Fair Use (which is always fun) and partially because I can’t help but imagine stuffy Justices listening to 2 Live Crew when a curtain drops behind them and suddenly they’re in a club with 2 Live Crew performing the song and the clerks are all wearing clothes one might expect to see in an early 90s rap video and at the end J. Scalia rips open his robe to reveal an “As Nasty As They Wanna Be” t-shirt...but I digress.

The case we’re talking about today, Lombardo v. Dr. Seuss Enterprises, SDNY 16-9974, involves an “adult-themed” parody sequel to How the Grinch Stole Christmas. In the play “Who’s Holiday“ little Cindy-Lou Who is a 45 year old woman and she’s been though some stuff. Turns out she became friends with the Grinch when she was in school and he got her pregnant on her 18th birthday. I’m not sure how old the Grinch was. In the original story, she was maybe 3 or 4. I think for the Grinch to be as hateful and bitter as he was at the start of the story he must have been at least in his mid-30s. So even if it wasn’t statutory rape, it shattered the ”half your age plus 7” rule. You’ve heard of that right? According to the rule the youngest that someone can date is half their age plus 7 years. So, if the someone is 34, the youngest person they could date is 24 (half of 34, plus 7). If the Grinch was 34 when Cindy-Lou was 4, then he would be 48 when she was 18, which is going to get people talking…but again, I digress.

The Grinch and Cindy-Lou get married and have a daughter named Patti, and then things really go bad. Unemployed, hungry, and starving, Cindy-Lou cooks the dog. The Grinch flips out and there’s a struggle which ends when he falls to his death off a cliff. Cindy-Lou goes to jail, and Patti goes to foster care. The play takes place after her release as Cindy-Lou is waiting for guests who never arrive.

Judge Hellerstein addresses each of the four prongs of fair use and finds the play to be fair use of the underlying subject matter.

The first prong is the purpose and character of the use, which mainly asks whether the use is transformative. So, if you record The Grinch next time it airs in Christmas and sell it on ebay…well, you’re not transforming anything. Here, the judge found the the play took bits of the original and twisted them around to turn the “Seussian staples upside down and [make] their saccharin qualities objects of ridicule” since the play’s coarse vulgarity mocks the “ridiculousness of the utopian society depicted in the original work: society is not good and sweet, but coarse, vulgar and disappointing.” Man, sounds like someone needs a hug.

The second prong is the nature of the copyrighted work. No one pays much attention to this. It’s supposed to allow a judge to consider that purely creative works are more worthy of greater protection than factual works. Since parody cases are necessarily going to involve creative works there’s not much need to think about this.

The third prong is the amount and substantiality of the use. Generally, don’t take more than you need, whether it’s a creative work you need to use for your parody, or a pizza buffet. I’m not good with buffets. They cause a switch to flip in my head and I won’t stop until I’ve “won.” I can’t even hit a toppings bar without things getting out of hand. Anyway, the judge noted that although the play reiterated the basic Dr. Seuss story, it didn’t copy blocks of text, show the Grinch himself, and weren’t set in Whoville. The play did use the character of Cindy-Lou of course, but that would be necessary to tell a story about Cindy-Lou. The play is in the familiar Seussian rhyming cadence, but that itself isn’t copyrightable, and is directly parodied when Cindy-Lou’s cellmate confronts her about her annoying speech pattern.

The fourth and last prong is the effect on the market for the copyrighted work. So, if the parody erodes the market for the original it’s more of a problem for the play. But, it’s kinda silly to think that a bawdy, boozy, and blue version of The Grinch is going to be shown on tv instead of the original cartoon or that parents are going to buy book versions of the play or doll of a mid-40s Cindy-Lou puffing on Whohash for their kids instead of the official Dr. Seuss products.

Case dismissed. The Cat in the Hat shrugs and dejectedly leaves the courtroom...or does he?!

Ok, so now that you know how to keep yourself within the warm embrace of “Fair Use” you’re ready to unleash your weird “Antiques Roadshow” fanfic on the world and you’ll never have to worry about the PBS goons coming after you, right?

Not exactly, even if you think you’re in the clear, and even if your team of attorneys think you’re in the clear, that doesn’t mean that PBS isn’t going to be angry, and it doesn’t mean that their team of lawyers won’t think there’s a reasonable argument that you’re not protected by fair use. That’s all they need, some reasonable basis to argue that their case is different enough from other parody cases. If they have that, you might find yourself on the receiving end of a few threatening letters and maybe even an expensive lawsuit. Even if you win like “Who’s Holiday,” it might not be over. An appeal was filed shortly after the decision, so I might need to update this post later.

Does this mean you shouldn’t test the waters with your own work? No, it’s your right to create a parody work. However, you should sit down with an attorney who knows copyright so you can access your risk and discuss ways of lessening it.