• Chelsea Clinton sued for copyright infringement

    The Daily Mail reported that Christopher Kimberley has filed a federal copyright infringement lawsuit in New York claiming Chelsea Clinton and Penguin Random House derived the idea for “She Persisted” from a previous submission by Kimberley.

    Although there may be a reasonable transformative use defense, some of the allegations, if proven, may cast some troubling ethical lapses into the public.

    link: http://www.dailymail.co.uk/news/article-4685800/Writer-sues-Chelsea-Clinton-stealing-book-idea.html#ixzz4mrRnC2rd



    The case is in SD NY, docket 17-CV-5107, filed 6 July 2017. The complaint mentions another name for Kimberley, “Christopher Janes.”

    A copy of the (pro se) complaint is at

    Paragraph 13 within “general averments” states plaintiff submitted Volume 3 directly to Jen Loja [President of Penguin Young Readers].
    Paragraph 14 asserts Loja did, in fact, read all or part of Volume 3.

    Fair use is mentioned at page 4 (of 15) of the copy of the complaint.

    One notes:

    “Fair use” in the current US copyright law (17 USC 107) includes consideration of

    (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
    (2) the nature of the copyrighted work;
    (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
    (4) the effect of the use upon the potential market for or value of the copyrighted work.

    **Separately, a 2016 law review ( 69 Rutgers L. Rev. 195 ) notes:

    Since 1957, there have been over one hundred stamps depicting historical women and people of color

    with footnote:
    E.g., H. E. Harris & Co., 2016 US/BNA Postage Stamp Catalog 41-178 (2016) (depicting Lucy Stone, W.C. Handy, Emily Dickinson, Willa Cather, Paul Laurence Dunbar, Susan B. Anthony, Martin Luther King, Jr., Benjamin Banneker, Francis Perkins, Dolly Madison, Emily Bissell, Hellen Keller, Edith Wharton, Dorothea Dix, Pearl Buck, Crazy Horse, Rachel Carson, Sequoyah, Lillian M. Gilbreth, Whitney Moore Young, Edna St. Vincent Millay, Jackie Robinson, Dr. Mary Walker, Scott Joplin, Carter G. Woodson, Mary McLeod Bethune, Abigail Adams, Margaret Mitchell, Julia Ward Howe, Virginia Apgar, Mary Cassatt, Sitting Bull, Mary Lyon, Sojourner Truth, Jean Baptiste Pointe du Sable, James Weldon Johnson, A. Philip Randolph, Ida B. Wells, Marianne Moore, Jan E. Matzeliger, Fanny Brice, W.E.B. Du Bois, Dorothy Parker, Clyde McPhatter, Otis Redding, Dinah Washington, Percy Lavon Julian, Grace Kelly, Patsy Cline, Joe Louis, Clara Bow, Theda Bara, Dr. Allison Davis, Ethel Waters, Nat “King’ Cole, Ethel Merman, Bessie Smith, Muddy Waters, Billie Holiday, Robert Johnson, “Ma’ Rainey, Ruth Benedict, Dr. Alice Hamilton, Bessie Coleman, Marilyn Monroe, Alice Paul, John Coltrane, Thelonious Monk, Louis Armstrong, Ernest E. Just, Jacqueline Cochran, Dorothy Fields, Count Basie, Benjamin O. Davis, Madam C.J. Walker, Mahalia Jackson, Josh White, Malcolm X, Ayn Rand, Patricia Roberts Harris, Margaret Chase Smith, Edna Ferber, Wilma Rudolph, Harriet Beecher Stowe, Roy Wilkins, Lucille Ball, Langston Hughes, Nellie Bly, Ethel L. Payne, Ida M. Tarbell, Marguerite Higgins, Thurgood Marshall, Zora Neal Hurston, Audrey Hepburn, Cesar E. Chavez, Paul Robeson, Martha Graham, Agnes de Mille, Alvin Ailey, Barbara McClintock, Arthur Ashe, Greta Garbo, Sugar Ray Robinson, Katherine Anne Porter, Judy Garland, Ella Fitzgerald, Gerty Cori, Martha Gellhorn, Bette Davis, Richard Wright, Anna Julia Cooper, Doris Miller, Kate Smith, Oscar Micheaux, Rube Foster, Katherine Hepburn, Helen Hayes, Maria Goeppert Mayer, Barbara Jordan, Romare Bearden, John J. Johnson, Sylvia Plath, Elizabeth Bishop, Gwendolyn Brooks, Miles Davis, Lady Bird Johnson, Rosa Parks, Lydia Mendoza, Ray Charles, Shirley Chisolm, Jimi Hendrix, C. Alfred “Chief’ Anderson, Edna Lewis, Julia Child, Joyce Chen, Janis Joplin, Robert Robinson Taylor, Wilt Chamberlain, Maya Angelou, Harriet Tubman, Eleanor Roosevelt, and Marian Anderson on stamps).


    As to compilations of quotations:

    **from Rand McNally, 591 F. Supp. 726; 1983 U.S. Dist. LEXIS 10279

    Quinto v. Legal Times of Washington, Inc., 506 F. Supp. 554, 559 (D.D.C. 1981) (compilation of quotations protected by copyright as “industrious collection”)


    **from Harney, 704 F.3d 173; 2013 U.S. App. LEXIS 427:

    Because facts are discovered, rather than created, they are “part of the public domain available to every person.” Id. at 347-48 (internal quotation mark omitted). Compilations of facts, however, ordinarily are entitled to copyright protection, id. at 344, “‘limited to those aspects of the work — termed “expression” — that display the stamp of the author’s originality.'” Id. at 350 (quoting Harper & Row, Publishers, 471 U.S. at 547-48). A photograph that consists of public-domain subject matter may thus be protected from copying because it involves creative expression, but with the protection limited to the work’s original elements.


    **from Eagle Services, 532 F.3d 620; 2008 U.S. App. LEXIS 14526

    Eagle has a copyrighted safety manual. The copyright is a compilation copyright, 17 U.S.C. §§ 101 (“compilation”), 103(b), as the manual consists mostly of quotations from OSHA regulations; the provenance of the remaining text of the manual is unclear. Suspecting that the individual defendants had taken the manual with them when they left to form their own company and had made copies of it, Eagle sent two people to H2O in the guise of prospective customers to request H2O’s safety manual, and, sure enough, they were shown copies of Eagle’s manual. H2O later prepared its own manual, and other than the two Eagle spies no prospective customer of H2O was ever shown the Eagle manual. Thus the defendants derived no profits from the alleged copyright infringement–or so one would think; but Eagle argued that without a manual, H2O could not provide any services without violating OSHA regulations, and therefore that Eagle should be entitled to recover, on a theory of restitution, all the profits that H2O made in its business before it created its own manual. Eagle acknowledged that it could not prove actual damages and that it was not entitled to statutory damages.
    There has been no determination of whether Eagle’s copyright is valid. The defendants argue that it is not because little of the material in the manual is original. But while for the most part the manual does just reproduce OSHA regulations, the manual’s sequencing of them is original– [*623] there is not just a single sequence that every OSHA safety manual would have to follow–and there is other text in the manual as well, though it may have been copied from works in the public domain. We shall assume that Eagle’s compilation copyright is valid. Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 348-50, 357-59, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991); Assessment Technologies of WI, LLC v. WIREData, Inc., 350 F.3d 640, 643 (7th Cir. 2003). The assumption does not affect our decision.


    **from Emanation v. Zomba, 2 Fed. Appx. 187; 2003 U.S. App. LEXIS 17146; Copy. L. Rep. (CCH) P28,673; 68 U.S.P.Q.2D (BNA) 1212:

    It is a generally accepted truth in copyright law that “facts and discoveries, of course, [p 1215] are not themselves subject to copyright protection,” Feist, 499 U.S. at 345 (internal quotation omitted), but that “compilations of facts are within the subject matter of copyright,” and were indeed expressly mentioned in the Copyright Act of 1909, and again in the Copyright Act of 1976. Id. In Feist, the Supreme Court [p 190] cited the statutory and constitutional requirement of “originality” to explain the “doctrinal tension” between these two rules – that facts, on the one hand, do not receive copyright protection, but factual compilations, on the other hand, generally do. 6 Id.; see art. I, § 8, cl. 8; 17 U.S.C. § 102(a) (extending protection to “original works of authorship fixed in any tangible medium of expression”).

    - – – – – – – – – – – – – – Footnote – – – – – – – – – – – – – – -
    The definition of “compilation” is found in § 101 of the 1976 Act, which defines a “compilation” in the copyright sense as “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”

    - – – – – – – – – – – – End Footnote- – – – – – – – – – – – – -

    The “original” element “does not require novelty, ingenuity, or aesthetic merit.” Mason v. Montgomery Data, Inc., 967 F.2d 135, 141 (5th Cir. 1992). However, the simple recording or reporting of facts is insufficient to satisfy the “originality” requirement because “the first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence.” Feist, 499 U.S. at 347. To qualify a work as an “original” work “choices as to selection and arrangement” of facts into factual compilations must be made such that the independent creation of the compilation involves “at least some minimal degree of creativity.” Id. at 345 (quoting 1 M. NIMMER & D. NIMMER, COPYRIGHT § 2.01[A], [B] (1990) (hereinafter NIMMER)). For example, in Harper & Row Publishers, Inc., the Supreme Court explained that President Ford could not prevent others from copying bare historical facts from his autobiography but that he could prevent others from copying “subjective descriptions and portraits of public figures.” 471 U.S. at 556-57, 563.

    See 17 U.S.C. § 103(b) (“The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.”).
    Note Franklin, 2007 U.S. Dist. LEXIS 89666


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  • Hydrox and trademark

    The post The Sad History of Hydrox Cookies, Which Were Probably Doomed Because They Were Called Hydrox illustrates some interesting points about IP law.

    The history of Hyrox (compared to Oreo) shows that “first mover” advantage does not always prevail.

    As to trademarks related to “Hydrox”, note a 1913 case, 40 App. D.C. 284; 1913 U.S. App. LEXIS 2081

    January 7th, 1910, the Hydrox Chemical Company applied for the registration of “Hydrox” as a trademark for peroxide of hydrogen. The mark having been allowed for publication, the Consumers Company filed an opposition thereto.

    The opposition alleges that a predecessor under whom it derives title coined the fanciful word, “Hydrox,” January 1, 1892, as a trademark for distilled and carbonated waters, and applied the same to bottles, boxes, and other forms of containers for said waters. Said word was the only name or mark used to designate its said products, and large sums of money were expended in advertising and popularizing said mark as a symbol of purity for its said products. The mark is the distinguishing trademark for the products of opponent, and has [p. 286] been used as a trademark for distilled and carbonated waters and allied products from January 1, 1892, to present date.

    Distilled water being the basis of many other products, opponent added new products which would naturally come within the same class. Those named are “Hydrox” beverages, such as Birch Beer, Ginger Ale, Lemon Soda, Root Beer, and Sarsaparilla, in 1898; metal coolers for holding Hydrox water and artificial ice in 1906; “Hydrox” ice cream in 1910; peroxide of hydrogen in 1908, under the trademark, “Hydrox.” Peroxide of hydrogen would naturally come within the line of articles manufactured by opponent, as the basis of such product is substantially 96 per cent distilled water. The opposition was demurred to by the Hydrox Chemical Company, and this appeal is from a decision sustaining the same.

    It appears from the opposition that “hydrox” is a word coined by the opponent January 1, 1892, and was then adopted and used by it as a trademark for distilled and carbonated waters. This was extended to Birch Beer and other “soft drinks” in 1898. It was extended to nothing else prior to the use of the word as a trademark by the Hydrox Chemical Company, July 19, 1905, for peroxide of hydrogen.

    It is settled law in this court, that a trademark is not acquired by the invention or discovery of a word or symbol, or by advertisement. It only becomes a trademark by attaching or affixing it to certain articles of merchandise. Battle Creek Sanitarium Co. v. Fuller, 30 App. D.C. 411 at 411-416; Illinois Match Co. v. Broomall, 34 App. D.C. 427 at 427-429; Hump Hairpin Co. v. De Long Hook & Eye Co. 39 App. D.C. 484 at 484-489. The trademark so acquired does not apply to other articles not of the same descriptive properties. The question is whether peroxide of hydrogen is a product of the same descriptive properties as distilled and carbonated waters and the beverages before mentioned? Does it belong to the same class of goods?

    Peroxide of hydrogen is a pharmaceutical preparation; its use is as a disinfectant. The products of the opponent are for [**4] use as beverages. The fact that the peroxide may consist of 96 per cent distilled water does not bring it within the class [*287] of goods manufactured and sold by the opponent; nor is it a preparation that would reasonably come within the natural expansion of opponent’s business. Many other pharmaceutical preparations contain large percentages of distilled water.

    The opposition does not show that the opponent would sustain any legal damage by the registration of “Hydrox” as a trademark for peroxide of hydrogen; and the Commissioner was right in dismissing the opposition.

    Without discussing the question further, it is sufficient to refer to the following cases for the principle controlling this case: Muralo Co. v. National Lead Co. 36 App. D.C. 541 at 541-543; Johnson Educator Food Co. v. Smith, 37 App. D.C. 107; Hump Hairpin Co. v. De Long Hook & Eye Co. 39 App. D.C. 484-488.

    And from 2015, 2015 U.S. Dist. LEXIS 36276 :

    The Court must begin by confronting Plaintiff’s shifting theory of its case. Based on its Complaint, Plaintiff initially contemplated a typical theory of “forward confusion” trademark infringement wherein Defendant, as the junior user, sought to profit from the fame and reputation of Plaintiff’s well-established products by passing its goods off as those of Plaintiff. (Compl., Dkt. # 1 at ¶ 26) (accusing Defendant of attempting to “profit from the goodwill and consumer [*12] recognition associated with Plaintiff’s mark”); (id. at ¶ 29) (“Consumers are, therefore, likely to believe that Defendant’s products that bear the Hydrox Trademark…are associated with Plaintiff, when that is not the case.”) This is the traditional view of trademark infringement embodied in the Lanham Act. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992) (“Usually, the confusion alleged is ‘forward confusion’…In such a case, the junior user attempts to capitalize on the senior user’s good will and established reputation by suggesting that his product comes from the same source”).

    In the course of responding to Defendant’s motion for summary judgment, however, Plaintiff for the first time reframes its argument as sounding in “reverse confusion” (Pl.’s Mot. Summ. J., Dkt. # 68, at 9.) Reverse confusion occurs when “a large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user.” Sands, 978 F.2d at 957. The harm a plaintiff suffers in such a case is not the risk of his reputation being undermined by poor-quality knockoffs, but rather that consumers come to assume “that the senior user’s products are really the junior user’s or that the former has become somehow connected to the latter” such that the [*13] smaller senior user “loses the value of the trademark—its product identity, corporate identity, control over its goodwill and reputation, and ability to move into new markets.” Ameritech, Inc. v. American Inf. Technologies Corp., 811 F.2d 960, 964 (6th Cir. 1987). In this case, the specific reverse confusion Plaintiff now asserts is that consumers will believe Plaintiff supplies Defendant with the hydrogen peroxide contained in Hydrox GPC. (Pl.’s Reply, Dkt. # 100, at 8) (“Hydrox is complaining that Diversey’s use of the Hydrox mark…is likely to cause confusion as to whether Hydrox supplied the hydrogen peroxide for the product or was otherwise involved.”)

    This is more than simply a matter of labels; while the same seven likelihood of confusion factors are analyzed under both theories, several of them are applied differently in reverse confusion cases than in forward confusion ones. See Sands, 978 F.2d at 959 (“In a reverse confusion case, then, it may make more sense to consider the strength of the mark in terms of its association with the junior user’s goods” rather than the senior user’s goods); Christina P. Mott, Multifactors, Multiconfusion? Refining “Likelihood of Confusion” Factors for Reverse-Confusion Trademark Infringement Claims to Achieve More Consistent and Predictable Results [*14] , 47 Suffolk U. L. Rev. 421, 443 (2014) (noting that Seventh Circuit reverse confusion cases typically analyze “the commercial strength of the junior user’s mark, rather than the senior user’s” and turn the intent inquiry into “a bad-faith test to determine whether the junior user knew of the senior user’s similar mark but proceeded anyway”). Moreover, even if the seven factors were applied in the same way in a reverse confusion case, “which factors are most important may differ.” World Wide Sales, Inc. v. Church & Dwight Co., No. 08 C 1198, 2009 U.S. Dist. LEXIS 104741, 2009 WL 3765881, at *4 (N.D. Ill. Nov. 9, 2009).

    A plaintiff, however is required to plead only “claims, not facts or legal theories.” Vincent v. City Colls. of Chi., 485 F.3d 919, 923 (7th Cir. 2007). Plaintiff’s complaint adequately alleged consumer confusion; the precise nature of that confusion is not required, and may shift throughout the course of litigation. The few federal courts that have confronted the propriety of a shift from a forward to a reverse confusion theory have permitted plaintiffs to switch theories even after the close of discovery. See, e.g., Kinbook, LLC v. Microsoft Corp., 866 F. Supp. 2d 453, 462 (E.D. Pa. 2012), aff’d, 490 F. App’x 491 (3d Cir. 2013); Birmingham v. Mizuno USA, Inc., No. 09—566, 2011 U.S. Dist. LEXIS 34696, 2011 WL 1299356, at *17, n.20 (N.D.N.Y. Mar. 31, 2011); Trouble v. Wet Seal, Inc., 179 F. Supp. 2d 291, 296 (S.D.N.Y. 2001). The Court, therefore, applies the seven factors in light of Plaintiff’s new reverse confusion theory.

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  • Grady asks: Does the world need any public intellectuals who are lawyers?

    In a post titled How To Insult AI And Recognize Its Strength, All In One Breath , Ken Grady disparages the idea that legal academics are intellectuals:

    Many outside the legal profession believe that lawyers, particularly academics, still qualify as public intellectuals. They have not kept touch with the profession. In the past 50 years, give or take, specialization has overtaken the us.


    Law school specializes in what cognitive scientists call chunking. Law is broken into discrete packets. Each class covers its required packets and each law school delivers the same packets as other law schools (see Gillian Hadfield’s nice summary in Rules for a Flat World). The process builds technically proficient pre-specialists, not thinkers.

    One recent study showed that scores on the LSAT have plummeted. This immediately ties to the idea that law students are less qualified, and that law schools will produce poorer quality lawyers. Assume for the moment that LSAT scores predict lawyer quality (a link never shown), what does this suggest for law schools?

    An interjection about the LSAT. At UChicago Law, I talked with then Dean Badger about the LSAT. He noted it was supposed to predict first year law school performance. At the time, it did no such thing, at least at Chicago.
    Aside from that empirical fact, the distribution of LSAT scores of entering students was decidedly non-Gaussian, but there was enforced grade distribution of sorts. Identifying the very good students was a different task from the others, [I first heard of students being fungible at Chicago.]
    Also. Our class had a peculiar event associated with Law Review, involving a highly unlikely statistical event (only one woman on law review).

    Grady also wrote:

    Many law schools have responded by “teaching down.” They focus more on how to pass the bar exam and re-chunk the teaching of law into smaller and smaller bites. Law students are disappointed to learn law is far behind society, law school classes are uninteresting, and the connection between law school and life is tenuous. A self-reinforcing feedback loop forms pulling down undergraduate interest in the profession.

    My experience at Chicago was quite different. A few examples. Korematsu gave a great talk. Richard Lewontin talked on the then-evolving DNA profiling, of great interest to “life.” Then Judge Clarence Thomas appeared. Chicago related law to the outside world.

    Grady had the McLuhan quote: “When you give people too much information, they resort to pattern recognition to structure the experience.”

    Although this prefaced his law school discussion, one might apply it to magistrates and trial judges. Maybe the problem is after law school.

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    $$ The detecting means includes a detector within the chamber. / 前記検出手段は前記室内に1個の検出器を包含している。(USP…

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  • Countdown to Aqua Products

    The Federal Circuit’s en banc decision in In re Aqua Products should be out soon.  Aqua challenges the Patent Trial and Appeal Board’s amendment procedures, which require the patentee to demonstrate that amended claims would be patentable over art of record.
    You can listen to the en banc oral argument [here].
    You can review the vacated panel opinion […]

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  • Causal-nexus for a permanent injunction only requires ‘some connection’ to infringement

    The district court denied a request for a permanent injunction against Metaswitch after a jury found infringement because Genband failed to establish irreparable harm. More specifically, the court found that Genband failed to establish a causal-nexus between infringement and irreparable harm, i.e. that “the patent features drive demand for the product.” The Federal Circuit remanded because this causal-nexus requirement was too stringent. The Federal Circuit explained that the court could not…

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  • The CAFC does colons and semicolons in Securus

    From the decision:

    Securus contends that the Board erred in construing
    the access attempt limitation because (1) the limitation is
    followed by a colon and only the prompting step follows
    that colon, while the other steps are offset by semicolons,
    and (2) the Board improperly relied on the ipse dixit
    testimony of Dr. Forys that the access attempt limitation
    begins with the prompting step and ends with the granting
    step. See Appellant Br. at 32–34. We disagree.
    In an IPR, the Board affords claim terms their broadest
    reasonable interpretation consistent with the specification.
    Cuozzo Speed Techs., LLC v. Lee, __ U.S. __, 136
    S. Ct. 2131, 2142–46 (2016).

    Here, although the Board may have been quick to
    consult Dr. Forys’ testimony in construing the access
    attempt limitation, the Board still arrived at the proper
    interpretation in light of the intrinsic evidence. See
    Microsoft Corp., 789 F.3d at 1297 (“To the extent the
    Board considered extrinsic evidence when construing the
    claims, we need not consider the Board’s findings on that
    evidence because the intrinsic record is clear.” (citing
    Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir.
    2005) (en banc))). We generally agree with Securus that
    the colon following the access attempt limitation is indicative
    that a list of particulars is to follow. But the most
    natural reading of the limitation is one that incorporates
    all the steps from the beginning of the attempt to access
    the telephone network to the end of that attempt.

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