Technology Law and Electronic Media Update

September 25, 2015

September 2015. Copyright Law. There is a new impediment for copyright owners trying to police the unauthorized use of copyrighted works in user-generated online content, especially videos. The Federal appeals court Ninth Circuit ruled in Lenz v. Universal Music that a copyright owner has to consider whether “fair use” authorizes the use of their copyrighted works posted on-line before submitting a DMCA notice-and-takedown to the website hosting the offending content. Turning traditional copyright doctrine on its head, the court found that “fair use” is not so much a defense to copyright infringement (an affirmative defense that the defendant has the burden to prove) but a “right” in and of itself that a plaintiff would have to prove doesn’t apply. This is a landmark because it gives rise to the notion that the public has a right to use of other people’s copyrighted works without their permission in the notoriously nebulous category of “fair use”, and shift the burden of proving otherwise on the copyright owner. It may mean that a properly pleaded copyright infringement complaint must assert that fair use does not apply, and the copyright owner has to prove that there is no factual basis for fair use—a highly fact-specific area of copyright law. This may severely curtail the ability to resolve copyright infringement at the summary judgment phase—further raising costs on copyright owners seeking to enforce their exclusive rights.

After the Lenz case, each detected unauthorized use has to be reviewed for a “fair use” determination before any DMCA notice-and-takedown is issued, in order that the copyright owner avoid liability.

August 2015. Patent Law. The judiciary has breathed life back into innumerable computer-related patent claims that were considered moribund. The U.S. Court of Appeals, Federal Circuit reversed its precedent regarding whether a computer method claim, where some steps are performed by one party and the rest by another, may nonetheless be deemed directly infringed by one of the parties. The typical case is whether the patent claim recites steps performed both on a website and on a user’s computer. Traditionally, if no single party performs all the steps, then there was no direct infringement unless specific acts of control of one party by the other can be proven (so-called “divided infringement”). In this latest chapter of the Akamai v. Limelight saga, the Federal Circuit decided that there is direct infringement if “all method steps can be attributed to a single entity.” In this case, because proper tagging and serving of content by Limelight’s customers was required so that they could utilize the Limelight content delivery network, the Federal Circuit concluded that all of the steps could be “attributed” to Limelight. As a result, the court reversed and found Limelight a direct infringer of Akamai’s patent.

Over the past decade, many computer-method patent claims were disposed of on summary judgment due to divided infringement. Now, one can expect that a slew of new patent cases will be filed for these old patents and further litigation will ensue over the notion of the act of one party being “attributed” to the other.