David Hosp and Ed Weiss offer their perspectives on the Cablevision case
By Paul Cathcart – Edited by Ryan Ward

On Thursday, November 4th, JOLT and the Cyberlaw Clinic at the Berkman Center for Internet and Society hosted a talk by David Hosp and Ed Weiss, two attorneys who worked on opposite sides of the “Cablevision” case, Cartoon Network v. CSC Holdings, 536 F.3d 121 (2008). In that case, the Second Circuit held that Cablevision’s “Remote Storage” Digital Video Recorder (RS-DVR) system did not directly infringe the copyright interests of Cablevision’s content providers. JOLT Digest previously reported on the Second Circuit’s decision when it was released in August 2008.

The two speakers took turns discussing their experience on the case. (more…)

By Esther Kang

Google Settles Buzz Class Action Suit for $8.5 Million

The New York Times reports that Google has settled a class action suit over privacy violations related to its release of the Buzz application last February.  The settlement stipulates that Google will set up an $8.5 million fund for Internet privacy organizations and will educate users about Buzz’s privacy features.  Google chose not to compensate individual users because few class members suffered actual damages, and because pro rata distribution is unfeasible for such a large class.  On November 2, Google sent email notifications to all its users regarding the settlement and opportunities to opt out of or object to the settlement.  ABC News reports that the district court has preliminarily approved the settlement and will consider it for final approval on January 31, 2011.

Supreme Court Set to Hear Bayh-Dole Patent Case

Bloomberg reports that the Supreme Court granted certiorari in Stanford v. Roche to clarify the 1980 Bayh-Dole Act, which gives non-profit organizations and small businesses ownership of federally funded inventions.  Stanford University originally sued pharmaceutical company Roche for infringing its method for measuring HIV infection.  Stanford claimed ownership of the patent under the Bayh-Dole Act, but the Federal Circuit ruled that Roche co-owned the patent because one of the key inventors had assigned his rights to the company.  According to Corporate Counsel, the Obama administration and several major research universities supported the petition for certiorari.

Thomas-Rasset Receives $1.5 Million Verdict in Third Jury Trial

In her third trial since 2006, Jammie Thomas-Rasset was hit with a jury verdict of $1.5 million for sharing 24 songs, or $62,500 for each song.  In June 2009, a jury returned a verdict for $1.92 million, which Chief Judge Davis called “monstrous and shocking” before cutting it to $54,000 on remittitur.    CNET reports that the RIAA applauded the recent verdict, stating, “We are again thankful to the jury for its service in this matter and that they recognized the severity of the defendant’s misconduct.”  According to ABC News, Thomas-Rasset refuses to pay and plans to appeal the verdict on constitutional grounds.

TTAB Reverses Refusal to Register Walther PPK Product Configuration
By Charles Griffin – Edited by Avis Bohlen

In re Carl Walther GmbH, No. 77096523 (T.T.A.B. Oct. 26, 2010)
Opinion

The Trademark Trial and Appeal Board (the “Board”) reversed an examiner’s refusal to register the product configuration of the Walther PPK pistol as a mark under Section 2(f) of the Trademark Act.

The Board held, contrary to an examiner’s evaluation, that applicant Walther had established acquired distinctiveness for the configuration. Walther presented a variety of direct and circumstantial evidence, including a survey of gun enthusiasts, expert testimony, and Walther’s advertising efforts, as well as a 40-year history of unsolicited media exposure supplied by the PPK’s most notorious devotee, James Bond.

The TTABlog and Likelihood of Confusion comment on the Board’s decision, ascribing the result primarily to the instinctive persuasiveness of the Bond-related circumstantial evidence. (more…)

Fifth Circuit Reverses Summary Judgment for Plaintiffs’ Breach of Contract Claim
By Nathan Lovejoy – Edited by Avis Bohlen

The Compliance Source, Inc. v. GreenPoint Mortgage Funding, Inc., __ F.3d __, 2010 WL 4056112, No. 09-10726 (5th Cir. Oct. 18, 2010)
Slip Opinion

In Compliance Source, Inc. v. GreenPoint Mortgage Funding, Inc., the United States Circuit Court for the Fifth Circuit reversed and remanded the decision of the United States District Court for the Northern District of Texas, which had granted summary judgment in favor of the defendant, a software licensee, on the plaintiffs’ claim for breach of contract. The court also affirmed the district court’s grant of summary judgment to the plaintiffs on the defendant’s counterclaim for breach of their settlement agreement.

The Fifth Circuit held that the license agreement for licensor’s database technology did not permit the licensee to authorize third-party use, even if such use was on behalf or for the benefit of the licensee. In so holding, the court took a narrow approach to its interpretation of the agreement, distinguishing the license in GreenPoint from earlier cases in light of its clear withholding of rights not expressly given.

The Internet Cases blog provides a brief overview of the case. WTN News features an analysis that discusses how the decision might leave open the possibility that a breach claim could extend to situation where third parties merely access software or technology licensed under similar terms. (more…)

By Sonia McNeil

Myriad Genetics Appeals Ruling on Patentability of Isolated Genes

Myriad Genetics has appealed the Southern District of New York’s ruling in Association for Molecular Pathology v. USPTO. The district court invalidated seven Myriad Genetics patents relating to the human Breast Cancer Susceptibility Genes 1 and 2 (collectively, “BRCA1/2”), finding that the claimed isolated DNA is not markedly different from native DNA as it exists in nature and therefore constituted unpatentable subject matter under 35 U.S.C. § 101.  On appeal, Myriad Genetics argues (1) that the district court lacked declaratory judgment jurisdiction, and (2) that its composition and method claims cover patent-eligible subject matter.  PatentlyO predicts that the Court of Appeals for the Federal Circuit will reverse the lower court; other commentators expect appeal to the U.S. Supreme Court to follow.

Third Circuit to Consider Constitutionality of Routine DNA Collection from Arrestees

The Third Circuit has scheduled en banc reargument of the Justice Department’s appeal in United States v. Mitchell.  Mitchell considered the constitutionality of requiring a defendant to submit a DNA sample for analysis and inclusion in a law enforcement database.  Finding “no compelling reason to unduly burden a legitimate expectation of privacy and extend these warrantless, suspicionless searches to those members of society who have not been convicted, but have been arrested and are awaiting proper trial,” the district court held the regulation invalid under the Fourth Amendment. Describing the April oral argument of the appeal, Law.com notes that the Justice Department highlighted statutory safeguards preventing use of the DNA beyond identification, while Mitchell’s attorney argued that the law’s real goal is to expand the DNA database in order to investigate other crimes and to link suspects to evidence in unsolved cases.

Rotterdam Promotes DNA Mist as Aid to Crime Deterrence and Detection

The New York Times reports that the city of Rotterdam, the Netherlands, is promoting the use of a new DNA mist in an effort to deter robberies.  When triggered, the system alerts law enforcement and sprays a fine liquid mist of synthetic DNA carrying markers unique to the location and visible under ultraviolet light.  Although Rotterdam has not yet made an arrest based on DNA mist evidence, law enforcement and shop owners credit the presence of signs warning, “You Steal, You’re Marked” with anecdotally declining crime rates.