Updates to First Edition of Treatise

Updates, as of September 12, 2014:

(The Second Edition is now available from Bloomberg BNA.)

Chapter 1 --

Page 35, first paragraph: On January 15, 2003, the Supreme Court upheld the Copyright Term Extension Act. See Eldred v. Ashcroft.

Page 44-45. In addition to contributory infringement and vicarious infringement, there is another form of indirect infringement: inducement of infringement. This was more commonly seen in patent law, because it is specifically indicated in the patent statutes (17 U.S.C. 271(b)), but as I noted in my paper "Sony Revisited: A new look at contributory copyright infringement," is also applicable to copyright. This was confirmed in the Supreme Court’s unanimous opinion in MGM v. Grokster, which stated:

For the same reasons that Sony took the staple-article doctrine of patent law as a model for its copyright safe-harbor rule, the inducement rule, too, is a sensible one for copyright. We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.

While cases in patent law provide some guidance regarding what might be inducement of infringement, the metes-and-bounds of copyright inducement won’t be known until a few cases are litigated.
Page 51, add the following:

    In 2005, Congress added another form of criminal copyright infringement to Section 506, as part of criminalizing the videotaping of a motion picture playing in a theater and then distributing it on the Internet, which had become a significant problem. {FN88: “Artists' Rights and Theft Prevention Act of 2005, or the “ART Act,” part of “Family Entertainment and Copyright Act of 2005,” Pub. L. 109-9, 119 Stat. 220}

Any person who willfully infringes a copyright shall be punished as provided under section 2319 of title 18, if the infringement was committed-- . . . (C) by the distribution of a work being prepared for commercial distribution, by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial distribution. {FN89: 17 U.S.C. 506(a)(1)}
    There is a problem with this provision. As I discuss in Chapter 3, Section I.B.1.a, the public distribution right covers only the distribution of material objects. And making something “available on a computer network accessible to members of the public,” without more, most certainly doesn’t distribute a material copy anywhere.

    It is interesting that this approach was suggested by some of us in 1997 as an alternative to the “No Electronic Theft” Act {FN90: Pub. L. No. 105-147, 111 Stat. 2678, among other things adding subsection (a)(2) to 17 U.S.C. 506} in response to the LaMacchia decision. {FN91: United States v. LaMacchia, 871 F.Supp. 535, 33 USPQ2d 1978 (D. Mass. 1994)} The concern was that it would be difficult to show when the required dollar amount of copies had been made before charging the crime, and it made little sense to wait until enough copies had gone out to stop the infringement. But we also wanted to amend the distribution right to include making the work available to the public, as discussed in Chapter 3, Section I.B.1.f.]

Chapter 2 --

Chapter 3 --

Page 217, replace the two paragraphs starting with "During the first review ..." with:

In July 2010, the fourth cycle completed with the following exemptions:

(1) Motion pictures on DVDs that are lawfully made and acquired and that are protected by the Content Scrambling System when circumvention is accomplished solely in order to accomplish the incorporation of short portions of motion pictures into new works for the purpose of criticism or comment, and where the person engaging in circumvention believes and has reasonable grounds for believing that circumvention is necessary to fulfill the purpose of the use in the following instances:
(i) Educational uses by college and university professors and by college and university film and media studies students;
(ii) Documentary filmmaking;
(iii) Noncommercial videos.

(2) Computer programs that enable wireless telephone handsets to execute software applications, where circumvention is accomplished for the sole purpose of enabling interoperability of such applications, when they have been lawfully obtained, with computer programs on the telephone handset.

(3) Computer programs, in the form of firmware or software, that enable used wireless telephone handsets to connect to a wireless telecommunications network, when circumvention is initiated by the owner of the copy of the computer program solely in order to connect to a wireless telecommunications network and access to the network is authorized by the operator of the network.

(4) Video games accessible on personal computers and protected by technological protection measures that control access to lawfully obtained works, when circumvention is accomplished solely for the purpose of good faith testing for, investigating, or correcting security flaws or vulnerabilities, if:
(i) The information derived from the security testing is used primarily to promote the security of the owner or operator of a computer, computer system, or computer network; and
(ii) The information derived from the security testing is used or maintained in a manner that does not facilitate copyright infringement or a violation of applicable law.

(5) Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete. A dongle shall be considered obsolete if it is no longer manufactured or if a replacement or repair is no longer reasonably available in the commercial marketplace; and

(6) Literary works distributed in ebook format when all existing ebook editions of the work (including digital text editions made available by authorized entities) contain access controls that prevent the enabling either of the book’s read-aloud function or of screen readers that render the text into a specialized format.

It must be remembered that the exemptions are only for the circumvention of an access control mechanism covered by section 1201(a)(1). It does not provide an exemption for the provision of a tool used for such circumvention, which could be a violation of section 1201(a)(2), nor for circumvention that results in infringement, which would be a violation of section 1201(b).

For more information about these exemptions, and the proceedings leading up to them, see:

http://www.copyright.gov/1201/

The online version contains this change.

The treatise does not discuss the special subpoena provisions of the DMCA that a content owner can used to obtain the name and address of a user from an Internet Service Provider. In particular, 17 U.S.C. 512(h) provides that a subpoena could be requested from the clerk of any United States District Court, without the requirement of filing a copyright infringement suit:

(1) Request. — A copyright owner or a person authorized to act on the owner's behalf may request the clerk of any United States district court to issue a subpoena to a service provider for identification of an alleged infringer in accordance with this subsection.
(2) Contents of request — The request may be made by filing with the clerk—
    (A) a copy of a notification described in subsection (c)(3)(A);
    (B) a proposed subpoena; and
    (C) a sworn declaration to the effect that the purpose for which the subpoena is sought is to obtain the identity of an alleged infringer and that such information will only be used for the purpose of protecting rights under this title.

Congress included this provision so that it would not be necessary for a copyright owner to file a "John Doe" lawsuit to obtain the name of a user, which might then have to be dismissed and refiled in the proper venue after the location of the user was determined, thereby lowering litigation costs that might eventually have to be paid by the user. Critics have said that it would allow stalkers to pretend to be a copyright owner in order to get the name and address of a user, because there is no effective review of the subpoena request by the court clerk.

On December 19, 2003, the Court of Appeals for the DC Circuit, in RIAA v. Verizon, held that the subpoena provisions were not applicable to service providers acting as "mere conduits," since the notice provision makes no sense in that context. It is likely that the RIAA will seek remedial legislation by Congress, which will be discussed here when it is introduced.

Chapter 4 --

Section 4.V. (pages 266-276) discusses "Novelty" and what constitutes "prior art." The Leahy-Smith America Invents Act (AIA, Public Law No: 112-29) substantially that, effective March 16, 2013, although the past definitions remain in effect for patents whose applications were filed before then. The new definitions for prior art are discussed in "Prior art under the new patent reform act."
Page 289, replace the paragraph starting "The patent statute ..." and the paragraph that follows it on page 290 with:

            The patent statute was changed in 1999 to permit the reexamination requestor to participate in the reexamination by providing written commentary on the actions of the examiner and the responses of the patent owner. Further changes were made in 2002 to give the requestor the same appeals rights as the patent owner. Previously, while either party could appeal the examiner’s decision to the Board of Patent Appeals and Interferences, only patent owner could further appeal the decision of the Board to the Court of Appeals for the Federal Circuit.

            Another change in 2002 allowed the reexamination to be based on prior art already considered by the examiner, as long as a “substantial new question of patentability” is shown. But Congress made it clear that this is not a way to second-guess the examiner.

    However, this bill is not a license to abuse patentees and waste the life of a patent. The point must be stressed that the past requirement of ‘a substantial new question of patentability’ has not been diminished. The issue raised must be more that just questioning the judgment of the examiner. There should be substantial evidence that the examiner did not properly understand the reference, or did not consider a portion of the reference in making his decision. That substantial new question must be put forward clearly in the request for reexamination. The bill preserves the necessary safeguard in the Patent Act against harassment of patentees with the safety-valve of a ‘substantial new question of patentability’ standard, not merely ‘any sort of question.’ The agency has discretion in this determination to permit reexamination, but it is not absolute. While the bill clarifies the basis for a reexamination determination and removes the overly-strict bar established by the court, which renders the available process useless in many obvious instances such as with previously considered prior art, the courts should judiciously interpret the ‘substantial new question’ standard to prevent cases of abusive tactics and harassment of patentees through reexamination.

            The reexamination provision prevents you from using anything that you could have brought up at the time of the reexamination in later litigation. Because of uncertainty about the scope of this bar, reexamination may be undesirable unless you have prior art that you are sure will invalidate the patent, or at least cause new claims that will not concern you.

            Though each revision to reexamination makes an important improvement, there are still problems that keep people from taking advantage of reexamination as an alternative to litigation. Perhaps Congress will see this as reason to institute a simplified early reexamination, such as an opposition period for a short time after the issuance of a patent to weed out patents where the best prior art was unavailable to the examiner.

The online version contains this change.

Chapter 5 --

Page 292, replace the last sentence of the first paragraph with:

The recent Bilski and Alice decisions by the Supreme Court has reopened the question of when a software-based invention is patentable, with uncertainly that may last for a decade or more.

The online version contains this change.

Page 321, after the top paragraph, add:

On June 28, 2010, the Supreme Court issued its long-awaited Bilski decision, holding that a claim to a commodities hedging strategy was unpatentable because it was “abstract.” But while four justices would find business methods unpatentable, the Court did not go that far, saying that “Section 101 similarly precludes the broad contention that the term ‘process’ categorically excludes business methods.” It also rejected the “particular machine or transformation” test that the Federal Circuit had stated in the case as not the exclusive test, although it is a good clue to patentability.

And on June 19, 2014, the Supreme Court added to the confusion in its Alice opinion, finding another business method to be an unpatentable “abstract idea,” even when it was claimed as a tangible machine. It appears that for business methods, the Court is has returned to the past where, as Justice Jackson noted, “the only patent that is valid is one which this Court has not been able to get its hands on.”

The online version contains this change.

Page 323, after the block quote, add:

On June 19, 2014, the Supreme Court added to the confusion in its Alice opinion, finding another business method to be an unpatentable “abstract idea,” even when it was claimed as a tangible machine. It could be a decade or more before it is clear when claiming a software-based invention as a machine results in a patentable invention.

The online version contains this change.

Page 335, replace "If so, how far have we stretched the patentability boundary and what will be the consequences?" with "In early 2008, the Federal Circuit answered this question, holding that a claim to a signal did not fall into any of the four statutory categories: process, machine, composition of matter, or manufacture. The majority felt that an article of manufacture had to be something tangible. See In re Nuijten."
The online version contains this change.

Page 338, replace all the material starting with "The first, and broadest, claim" to the end of the treatise with:

While treatise originally proposed using a method claim for computer software, followed by simple dependent claims to a computer system and an article of manufacture, with the Supreme Court’s recent opinions in Bilski and Alice, there may be a problem if such a method claim is considered “abstract.” Until the the courts or Congress clarify what the patentability line is, it is unclear when a software-implemented technique is patentable and when it isn't.

The online version contains this change.