The Supreme Court today released its decision in the Association for Molecular Pathology, et al. v. Myriad Genetics, Inc. patent case.   The court unanimously held that"a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.  Accordingly, the Federal Circuit'sMyriad holding was affirmed-in-part and reversed-in-part. According to the Court, finding the location of the BRCA1 and BRCA2 genes did not render the genes patent eligible “new . . . composition[s] of matter,” under §101.  cDNA, on the other hand, was found to be patent eligible because it is an exons-only molecule, which according to the Court is not naturally occurring. Stay tuned for an in-depth analysis of the Myriad holding here at the Higher Education IP Law Report.

The Supreme Court today released a unanimous decision in the Association for Molecular Pathology, et al. v. Myriad Genetics, Inc. patent case regarding the human BRCA1 and BRCA2 genes associated with breast cancer, holding that while a naturally occurring DNA segment is a product of nature and therefore not patent eligible, synthetic molecules called “cDNA” are patent eligible because they are not naturally occurring. Background A group of physicians, patients and researchers challenged the Myriad patents in the Southern District of New York, seeking a declaration that certain claims of the patents are invalid under 35 U. S. C. §101.  The Court granted summary judg­ment to the petitioners on the claims at issue, holding that the claims were directed to products of nature and where therefore invalid. In 2012, the Federal Circuit – on remand from the Supreme Court in light of in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc. – reversed the district court and held that both isolated DNA and cDNA are indeed patent eligible under §101.  The Supreme Court granted certiorari and oral argument was held on April 15, 2013. Isolated DNA Sequences Are Not Patent-Eligible Subject Matter In holding that the mere isolation of naturally occurring DNA sequences does not result in patent eligible subject matter under §101, the Court noted that “Myriad did not create or alter any of the genetic information encoded in the BRCA1 and BRCA2 genes,” and that “[t]he location and order of the nucleotides existed in nature before Myriad found them.”  Although Myriad’s discoveries may have been “[g]roundbreaking, innovative, or even brilliant,” this was not sufficient to satisfy the §101 inquiry.  According to the Court, merely identifying the BRCA1 and BRCA2 genes and isolating them from the “surrounding genetic material” was not an act of invention. Indeed, the issue of whether isolating DNA from a chromosome renders the isolated sequence patent eligible was largely dismissed despite comprising a substantial portion of the Federal Circuit’s decision.  These claims are not expressed in terms of chemical composition, the Court reasoned, and do not rely on any chemi­cal changes that may result from the isolation of a particular section of DNA.  Instead, the claims focus on the genetic information encoded in the DNA. Synthetic cDNA Sequences Are Patent-Eligible In contrast to isolated DNA sequences, the Court held that cDNA sequences are patent eligible because the “creation of a cDNA sequence from mRNA results in an exons-only molecule that is not natu­rally occurring.”  Although the petitioners argued that the sequence of cDNA is dictated by nature rather than by a scientist, the Court rejected that argument and reasoned that “the lab technician unquestionably creates something new when cDNA is made.” The Court did highlight at least one situation where cDNA may in fact be naturally occurring and therefore not patent eligible: when a very short DNA sequence may have no intervening introns to remove when creating cDNA, in which case “a short strand of cDNA may be indistinguishable from natural DNA.” Myriad Does Not Implicate Method or Application Claims, or Modified DNA Sequences The Court carefully noted that this decision does not implicate method claims, although the Court did echo its recent decision in Mayo.  While Myriad might have sought a method patent directed to some “innovative method of manipulating genes” if it had created such a method, the Court noted that the processes used by Myriad to isolate the BRCA1 and BRCA2 genes were “well understood, widely used, and fairly uniform” and were not at issue in this case. Similarly, the decision does not implicate claims directed to applications of knowledge about the BRCA1 and BRCA2 genes.  Indeed, many of the unchallenged claims in the Myriad patents are directed to such applications. Further, the decision does not consider the patentability of modified DNA sequences, since “[s]cientific alteration of the genetic code presents a different inquiry.” Conclusions Although the Court’s decision may seem far-reaching, the ultimate impact may be limited. Indeed, one recent study found that there are relatively few patents directed to naturally occurring human gene sequences.  As a result, it may only be Myriad and a limited number of similar patentees that feel the impact of the Court’s holding. In light of Myriad, patent portfolio strategies should focus on applications of knowledge about identified DNA sequences rather than on the DNA sequences themselves.  This strategy will steer clear of Myriad while providing valuable patent protection for uses of the discovery.

As I wrote on recently, video sharing app Vine—owned by Twitter—was issued a DMCA takedown notice by representatives of recording artist Prince. I had the opportunity to speak with Colin O'Keefe of LXBN regarding the story. In the interview, I explain what happened and offer thoughts on why we must balance copyright holders’ rights with incentivizing creativity. http://youtu.be/tF87HSf0NAM

Late last month, Twitter received a DMCA takedown demand from NPG Records, Inc., Prince’s record label, to remove a six-second video hosted on Twitter’s popular new Vine application. Vine is a mobile application (currently available only on iOS systems) that allows users to create and share videos that are a maximum of six seconds long.  The relatively new social media start-up, which officially launched in early 2013 after being purchased by Twitter, also lets users comment on videos and follow other users.  Despite the six-second limit – or perhaps because of it – Vine users are creating and sharing astonishingly imaginative and innovative content via the platform (be sure to view the Editor’s Pick section). As with any content-sharing platform, however, there is the possibility of intellectual property abuse, including both trademark and copyright abuse. The Digital Millennium Copyright Act To combat online copyright infringement, the Digital Millennium Copyright Act, or DMCA, protects content providers such as Vine from liability for alleged copyright infringement (a “safe harbor”) in exchange for the provider’s strict adherence to a process for removing alleged infringing material when they receive notification of an infringement claim from a copyright holder. In March, NPG Records sent a DMCA request to Twitter demanding that eight Vines be removed.  Twitter publicly publishes every DMCA request it receives at Chilling Effects, and the NPG Records request is available here. Copyright Infringement or Fair Use? According to a tweet from the content’s creator, @ZackTeibloom, the eight Vines reportedly contained “Two Purple Rain videos, Prince talking, Prince gyrating against a chair, Snoop from “The Wire” dancing, typical Prince show.” It’s not clear whether Teibloom’s content was actually infringing, or whether a de minimis or fair use defense might apply.  For example, if an average song is 3 minutes (180 seconds) long, then a full six-second clip appearing in a Vine video would be roughly 3.3% of the entirety.  But the analysis could be further complicated by other issues, including whether the Vine includes just the music (playing in the background, for example), or also includes a performance or other visual element, as at least one of Teibloom’s Vines did.  Mike Masnick at Techdirt, who has posted a YouTube video of one of the Vines, resolutely concludes that, at a minimum, the fair use defense applies. It’s unclear whether Teibloom plans to dispute NPG Records’ takedown notice, but a recent tweet suggests that in view of other concerns, including the 'no camera' policy in the building where he took the video of Prince, he will keep the content offline. Lenz v. Universal - a YouTube Takedown Notice NPG Record’s DMCA demand strikes a familiar chord.  In February 2007, Universal Music sent a takedown notice to a YouTube user who posted a twenty-nine second clip of her children dancing to Prince's “Let’s Go Crazy,” which was playing in the background.  The user argued that it was fair use and sued Universal with pro bono assistance from the Electronic Frontier Foundation.  That case may soon head to trial in the Northern District of California. The Take Home The DMCA notice from NPG Records emphasizes the challenging and ever-evolving intersection of social media and copyright.  With every new method of creating and sharing content comes not only the potential for copyright infringement, but also the potential for copyright owners to stifle the type of intellectual creativity that copyright laws are designed to protect.  Content creators, including Vine users, should aim for the proper balance of creativity and respect for copyright protection.

"Happy Birthday to You" is one of the most widely recognized songs in the world.  Did you also know that the song brings in about $2 million per year to the copyright holders?  Ever wondered why they sing something other than "Happy Birthday to You" at your favorite restaurant? All your questions about this ubiquitous song are answered below (including questions you didn't know you had!).  Here's your "5 Question Guide" to "Happy Birthday to You":   1. You mean "Happy Birthday to You" isn't in the public domain? No, the song is still under copyright protection in at least the United States and Europe, and continues to bring in substantial licensing fees every year.   2. So what does that mean? Do I owe someone money for singing on Grandma’s birthday? Probably not.  The U.S. Copyright Act grants certain rights to copyright holders, one of which is the right to control when the work is performed “publicly.” A performance is considered “public” when the work is performed in a “place open to the public or at a place where a substantial number of persons outside of a normal circle of a family and its social acquaintances are gathered.” A performance is also considered to be public if it is transmitted to multiple locations, such as through television and radio. So, unless you sang Happy Birthday in a public place for others to hear, or broadcast it to the public, you don’t need to write a check.  Singing Happy Birthday with friends and family in your home is just fine. Notably, this is the reason that most restaurants have their own lyrics and music to perform for a customer’s birthday; singing Happy Birthday to You would constitute a public performance.   3. Who wrote "Happy Birthday to You"? Most agree that the song is a variation of “Good Morning to All,” a children’s song written and composed in 1893 by sisters Patty and Mildred J. Hill of Louisville, Kentucky.  Exactly who modified the original song is unclear.   4. Who owns the rights to "Happy Birthday to You"? The rights are currently owned by Warner/Chappell Music, Inc.  According to some reports, the company brings in as much as $2 million a year from licensing the song for public performances in movies, television, radio, as well as live performances.   5.  So when can I sing “Happy Birthday” in public? The song will not officially enter the public domain in the United States until 2030, or 95 years after publication (a term that has been extended several times by the Copyright Act of 1976 and the Copyright Term Extension Act of 1998).  The song will enter the public domain in Europe in 2016, or 70 years after the death of Patty Hill (who died May 25, 1946). However, some believe that Happy Birthday may already be well within the public domain in the U.S.  For an extensive and thorough analysis of the history and copyright status of “Happy Birthday,” see the research paper by Robert Brauneis at SSRN (“Copyright and the World's Most Popular Song”).  

The Trademark Clearinghouse ("TMCH") officially launches today, March 26th.  The TMCH was created to help trademark holders prevent trademark infringement or misuse in the face of new top-level domains (TLDs) that are expected to launch over the next few years.  There are nearly 2,000 applications for these new TLDs, and include domains such as ".inc" .home" and ".kitchen" among many others.  There is valid concern among trademark owners that registration of domains like the following will confuse consumers about the source of the domain and its content: It would be prohibitively expensive, however, for a trademark owner to have to register their marks in every one of those 2,000 domains in order to block squatters or prevent trademark infringement. Thus, the TMCH was created to protect trademarks in two ways:

1. Sunrise Service - at least 30 days before a domain name is offered to the general public, trademark holders who have registered with the TMCH will be able to register their domain name in the TLD.  In other words, TMCH registrants will be able to purchase before the general public can; and
2. Claims Services - when a potential domain name registrant attempts to register a domain name that matches a trademark term in the TMCH, he or she will receive  a warning notice.  If the domain name is ultimately registered, the trademark holder with the corresponding mark will receive notification of the domain name registration, allowing them to take appropriate action.

Registration costs are $150 per mark per year, with minor discounts available for 3 or 5 year registrations. Eligible marks include:

• Nationally or regionally registered word marks from all jurisdictions;
• Word marks that have been validated through a court of law or other judicial proceeding;
• Word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; and
• Other marks that constitute intellectual property may be recorded in the Clearinghouse by arrangement with a registry.

Image: By Rock1997 (Own work) [GFDL or CC-BY-SA-3.0-2.5-2.0-1.0], via Wikimedia Commons

The Obama administration has taken a step towards its goal of ensuring public access to federally funded research.  In a policy memorandum released on February 22, 2013 (see "Increasing Access to the Results of Federally Funded Scientific Research"), the Office of Science and Technology Policy  has directed Federal agencies with more than $100M in R&D expenditures to develop plans to make the published results of federally funded research freely available to the public within one year of publication and requiring researchers to better account for and manage the digital data resulting from federally funded scientific research.  The memorandum is in part a response to a We the People petition signed by over 65,000 people requesting better access to taxpayer-funded research. The policy memorandum states that digitally formatted scientific data resulting from unclassified research supported wholly or in part by Federal funding should be stored and publicly accessible to search, retrieve, and analyze. For purposes of the memorandum, data is defined, consistent with OMB circular A-110, as the digital recorded factual material commonly accepted in the scientific community as necessary to validate research findings including data sets used to support scholarly publications, but does not include laboratory notebooks, preliminary analyses, drafts of scientific papers, plans for future research, peer review reports, communications with colleagues, or physical objects, such as laboratory specimens. Six-month Deadline to Provide a Plan Within 6 months from the issuance of the policy, each affected federal agency must provide a plan that provides for the following:

• a strategy for leveraging existing archives, where appropriate, and fostering public/private partnerships with scientific journals relevant to the agency’s research;

• a strategy for improving the public’s ability to locate and access digital data resulting from federally funded scientific research;

• an approach for optimizing search, archival, and dissemination features that encourages innovation in accessibility and interoperability, while ensuring long-term stewardship of the results of federally funded research;

• a plan for notifying awardees and other federally funded scientific researchers of their obligations (e.g., through guidance, conditions of awards, and/or regulatory changes);

• an agency strategy for measuring and, as necessary, enforcing compliance with its plan;

• identification of resources within the existing agency budget to implement the plan;

• a timeline for implementation; and

• identification of any special circumstances that prevent the agency from meeting any of the objectives set out in this memorandum, in whole or in part.

Further, each agency’s public access plan must, among other things, also:

• ensure that extramural researchers receiving Federal grants and contracts for scientific research and intramural researchers develop data management plans, as appropriate, describing how they will provide for long-term preservation of, and access to, scientific data in digital formats resulting from federally funded research, or explaining why long-term preservation and access cannot be justified; and

• allow the inclusion of appropriate costs for data management and access in proposals for Federal funding for scientific research.

Stay Tuned As this public access policy will affect university researchers and contract administrators, becoming and maintaining familiarity with the policy is important.  We will post periodic updates as more information becomes available about the policy and the various agency plans released for implementation of the policy.

The Intellectual Property & Technology Group at Bond, Schoeneck & King, PLLC is pleased to announce the Winter 2013 IP & Technology Newsletter.  This edition of Bond’s quarterly newsletter includes the following articles:

• "Supreme Court Decisions Will Have Major IP Impact in 2013" (by Jeremy P. Oczek)

• "Protecting Trade Secrets and Other Confidential Business Information" (by Scott M. Philbin)

• "Color Prevails: Louboutin Retains 'Red Sole' Trademark" (by Philip I. Frankel)

• "Design Patents: Effective Tools in a Patent Portfolio" (by David L. Nocilly)

• News & Highlights

Like patent protection, copyright protection is limited in time.  For example, a work published in the United States is eligible for copyright protection for the life of the author plus 70 years.  Anonymous works, pseudonymous works, and works made for hire are eligible for a term of the shorter of 95 years from publication or 120 years from creation.  For more information about copyright term, see here. For example, a work authored by Author X in 1980, who died on May 4, 1994, would be eligible for copyright protection until May 4, 2064.  And due to 17 USC § 305, the term of copyright would extend throughout the remainder of 2064.  So, the work would enter the public domain on January 1, 2065. However, copyright term has not always been so long.  For example, a work published before the 1976 Copyright Act extended copyright term would have originally been eligible for 56 years of copyright protection (an initial 28-year term plus a 28-year renewal).  Under this pre-1976 regime, works published in 1956 would have entered the public domain on January 1, 2013.  Due to the 1976 Copyright Act these works will not enter the public domain until January 1, 2052 (95 years from publication, provided that certain formalities were met and the copyright was renewed after the initial 28 year term). Center for the Study of the Public Domain Every year, Duke University's Center for the Study of the Public Domain releases a list of famous works that would have entered the public domain on January 1^st under the pre-1976 Copyright Act regime. Works that would have entered the public domain on January 1^st, 2013 include famous books (e.g., Philip K. Dick’s “Minority Report”), famous periodicals (e.g., the first issue of MAD magazine), famous movies (e.g., The King and I starring Yul Brynner), and famous songs (e.g., In the Still of the Night performed by The Five Satins). For the full list see the Center’s post at “What Could Have Entered the Public Domain on January 1, 2013?”  Also, for more information about copyright and the public domain, see the “Public Domain Day Frequently Asked Questions.”

• First-Inventor-to-File Final Rules (78 Fed. Reg. 11024, February 14, 2013) (available at http://federalregister.gov/a/2013-03453) (“Rules”)

• First-Inventor-to-File Final Guidance (78 Fed. Reg. 11059, February 14, 2013)  (available at http://federalregister.gov/a/2013-03450) (“Guidelines”)

“Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.”

“[T]here is no requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure (e.g., inventor discloses his invention at a trade show and the intervening disclosure is in a peer-reviewed journal). … [T]here is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply.”

Seventy years ago the Metro-Goldwyn-Mayer film The Wizard of Oz opened in movie theaters around the world. Although the initial 1939 release of the movie failed to earn much more than the costs of production, advertising, and distribution, it has since earned millions of dollars in revenue from licensing fees. As the world celebrates the 70th anniversary of The Wizard of Oz, we take a look at the current federal copyright protection for this beloved classic and determine when the movie will lose that protection and enter the public domain. Dorothy Gale began as a character in the children's novel The Wonderful Wizard of Oz, authored by Lyman Frank Baum and illustrated by William Wallace Denslow. Baum, more commonly known as L. Frank Baum, was born May 15, 1856 in Chittenango, New York. After several careers including store proprietor and newspaper editor, Baum partnered with Denslow in Chicago, Illinois in 1899 to publish the nonsensical poetry book Father Goose, His Book. Less than a year later the duo completed their second and most popular collaboration, The Wonderful Wizard of Oz. The Wonderful Wizard of Oz was first published by the George M. Hill Company on May 17, 1900 and according to some sources was officially registered with the United States Copyright Office on August 1st of that year. The book was instantly a best-seller, and in the 109 years since its first publication it has sold millions of copies in countries all over the world. Copyright and Baum's Book When the novel was published, the duration of copyright protection was still determined under the Copyright Act of 1831. Under this Act, a work was eligible for an initial 28-year term of protection beginning on the date of publication (which was double the 14 years granted by the original 1790 Copyright Act). At the end of the initial 28 years, the term could optionally be extended by the copyright holder for another 14 years, resulting in a total 42 years of copyright protection. As a result, The Wonderful Wizard of Oz was set to enter the public domain in 1942. However, just 9 years after the novel was published Congress passed the 1909 Copyright Act. This Act kept the initial copyright term of 28 years but extended the renewal term from 14 years to 28 years for a total 56 years of protection. Since the extension applied to works with existing copyright protection as well as future works, Baum and Denslow received a 14-year extension of their copyrights. Unfortunately, Baum and Denslow were not able to enjoy the success of their novel for very long; Denslow died at age 59 in 1915 and Baum died at age 62 in 1919. The Wonderful Wizard of Oz, however, continued to prosper. In 1928 the copyright registration was renewed for an additional 28 years, and just a few years later Samuel Goldwyn purchased the screen and book rights the novel for the sum of $40,000. In 1956, just fifty-six years after Baum wrote the novel, the second 28-year term ended and the novel entered the public domain. (a free digital copy of the original The Wonderful Wizard of Oz can be obtained from the Gutenberg Project). Although the children's novel The Wonderful Wizard of Oz lost copyright protection in 1956, only the original novel by Baum and illustrations by Denslow have entered the public domain. Any newly-created material such as illustrations created for a new publication of the novel, will still be eligible for copyright protection because they are new works. Similarly, any derivative works based on the novel will potentially be eligible for protection. Section 101 of the Copyright Act defines a "derivative work" as "[a] work based upon one or more preexisting works" or "[a] work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship." Accordingly, new material added to an annotated version of the novel created, for example, in anticipation of the up-coming 110th anniversary of the novel's publication would not be in the public domain. The author of this new material would have a protectable interest in her work. Perhaps even more confusing, a new compilation of some of Baum's Oz-related stories might be eligible for copyright protection even if all those novels have been in the public domain for years. The creativity involved in selecting which public domain stories to include, and in what order to include them, would likely be eligible for copyright protection. Accordingly, although someone could copy all the individual stories within the Oz compilation (provided they did not have any new or otherwise protectable material), they could not copy all the works and then provide them in the same manner as the protected compilation. However, if someone selected all of Baum's works and presented them in chronological order in a compilation, there would likely not be enough creativity to establish copyright protection. When analyzing the copyright status of a work such as The Wonderful Wizard of Oz, it is important to note the contributor or creator of each part of the particular work in question. Copyright and the 1939 Film Unlike Baum's novel, the classic film The Wizard of Oz is still protected by copyright, but only as a result of several extensions granted by Congressional enactment. Under the 1909 Copyright Act, the 1939 film was eligible for a total 56 years of copyright protection (an initial 28-year term plus a 28-year renewal). As a result, someone living between 1939 and 1962 and planning to celebrate the day that Oz entered the public domain would have 1995 circled on their calendar (1939 + 28 years + 28 years). Indeed, if there had not been any additional reform of copyright duration, Judy Garland's famous portrayal of Dorothy Gale would have already been in the public domain for 14 years. Between 1962 and 1974, however, Congress passed several pieces of legislation that slowly increased the duration of copyright protection, each temporarily delaying the impending termination of copyrights in their second term. The 1974 extension, for example, delayed any terminations set to occur between 1962 and 1976 until December 31, 1976, effectively extending the length of the renewal term from 28 years to 42 years. By now the poor party-planning soul was completely unsure of the date that Oz would enter the public domain, but was tentatively making plans for 2009 (1939 + the 28 year initial term + a 42 year renewal). This year's 70th anniversary celebration of The Wizard of Oz might have also seen the movie enter the public domain. Once again, however, Congress stepped in to enact one of the biggest reforms of copyright law in history. Under the 1976 Copyright Act, the renewal term for works that had been created prior to January 1, 1978 were extended to a total of 47 years, thereby adding another 5 years onto the term of Oz's current copyright and delaying the date it entered the public domain from 2009 to 2014. The Act also set which day of the year a work would lose protection, providing that all terms of copyright would run through the end of the calendar year in which they would expire. As a result, Oz was set to enter the public domain at the stroke of midnight on December 31, 2014. Twenty-two later, however, Congress passed the Sonny Bono Copyright Term Extension Act and The Wizard of Oz received the longest term extension to date. For pre-1978 works that were still under copyright protection, the Act extended the renewal term from 47 years to 67 years, resulting in a total 95 years of protection from the date of publication. By now the party-planner was likely apoplectic but hopefully in good enough health to wait until 2034, the year that the movie is currently scheduled to enter the public domain:

1909 Copyright Act

28 years

The Wizard of Oz has been fortunate to enjoy the many term extensions granted by legislation during the past 50 years. Indeed, the duration of the movie's copyright protection has been extended by a total of 39 years from an original termination date of 1995 to the current date of midnight, December 31, 2034. The movie's 95 years of copyright protection will be a great deal more than the 56 years given to Baum's original novel. While it remains a possibility that Congress could once again prolong the duration of copyright protection for older works such as the 1939 film, the current terms of duration are relatively similar to terms around the world. It is very likely, therefore, that at midnight on December 31, 2034, The Wizard of Oz film will enter the public domain.