Audio Technology from a Legal Perspective “Running Afoul of Patent and Copyright Laws” Kevin D. Jablonski Toussaint L. Myricks All slides Copyright © 2007 by Kevin D. Jablonski and Toussaint L. Myricks. All rights reserved.

Overview of Subjects for Discussion Overview of Intellectual Property in General Deeper Look Into Patent Law Deeper Look Into Copyright Law The Progeny of Napster/Grokster Strengths and Criticisms of the DMCA Fascinating Q&A

Overview of Intellectual Property Patent Copyright Trademark Trade Secret Publicity

Deeper Look Into Patent Law Any New, Useful, and Non-Obvious Invention Design vs. Utility (and Plant)  red-headed step child US applications vs. PCT applications Provisional vs. Non-Provisional Length of Rights of Patent Ownership

The Patent Process Priority and Effective Date of Invention Reduction to Practice and Filing Patent Search and Office Actions Allowance and Patent Issue Foreign and Other Patent Progeny Maintenance Fees and Expiration

Caveats of Patents Only grants right to prevent others from acting on the claimed language Thus – not an proactive right to actually practice what is claimed Typically and expensive and time-consuming endeavor Intellectual Property is the lifeblood of the new American economy

Overview of Copyright Law What is a Copyright Rights Conveyed by Copyright Infringement of Copyright Remedies for Copyright Infringement Fair Use Exceptions

Deeper Look into Copyright Law A copyrightable work must be an original work, set in a tangible, or fixed form Lasts for life of author plus 70 years, or If corporate, 95 years from publication, or 120 years from date of creation No longer requires “renewal”

Rights conferred by Copyright – a.k.a. 17 USC §106 (1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission

Infringement of Copyright and Remedies for Infringement (1) the copyright owner’s actual damages and any additional profits of the infringer, as provided by subsection (b) – (b) The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work. (2) statutory damages, as provided by subsection (c) – (c) see next slide

Remedies for Infringement (cont.) (1) Except as provided by clause (2) of this subsection, the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work. (2) In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000. In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200. The court shall remit statutory damages in any case where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under section 107, if the infringer was: (i) an employee or agent of a nonprofit educational institution, library, or archives acting within the scope of his or her employment who, or such institution, library, or archives itself, which infringed by reproducing the work in copies or phonorecords; or107 (ii) a public broadcasting entity which or a person who, as a regular part of the nonprofit activities of a public broadcasting entity (as defined in subsection (g) of section 118) [1] infringed by performing a published nondramatic literary work or by reproducing a transmission program embodying a performance of such a work.118 [1] (3) (A) In a case of infringement, it shall be a rebuttable presumption that the infringement was committed willfully for purposes of determining relief if the violator, or a person acting in concert with the violator, knowingly provided or knowingly caused to be provided materially false contact information to a domain name registrar, domain name registry, or other domain name registration authority in registering, maintaining, or renewing a domain name used in connection with the infringement. (B) Nothing in this paragraph limits what may be considered willful infringement under this subsection. (C) For purposes of this paragraph, the term “domain name” has the meaning given that term in section 45 of the Act entitled “An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes” approved July 5, 1946 (commonly referred to as the “Trademark Act of 1946”; 15 U.S.C. 1127)

Fair Use and Other Exceptions Fair Use for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright (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.

The Origins of the Progeny of Napster and Grokster Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984)464 U.S – Allowed for users of VCRs to record television shows to watch at a later time – i.e., “time- shifting” Supreme Court Ruling: – This is a fair use exception – Manufacturers of technology and devices cannot be held liable for contributory infringement

Along came Shawn Fanning and Napster Napster provided a “peer-to-peer” file sharing service for users to share “files” Most Napster users illegally shared copyrighted music files – probably because Napster advertised that “You can share copyrighted music files here at Napster!” Supreme Court ruling: – Sharply distinguished the Sony case, in that Napster maintained a great deal of control over how users participated in the system – Napster Found liable for contributory infringement as the actual shared files were stored on Napster servers

Grokster: Napster Take 2 Grokster provided a “peer-to-peer” file sharing service for users to share “files” – however, the files being shared were stored on individuals’ computers and not at any Grokster server Most Grokster users illegally shared copyrighted music files – probably because Grokster advertised that “You can share copyrighted music files here at Grokster!” Court Ruling – – Avoided the question of whether direct knowledge of infringing use was necessary and its relation to contributory infringement – Held that Grokster was inducing copyright infringement (a concept borrowed from patent law)

Where are we today? Competing theories and tests – Sony Doctrine – knowledge requirement for contributory infringement – Napster Doctrine – knowledge requirement for contributory infringement AND no action to prevent or curtail such infringing uses – Grokster Doctrine – clear expression or other affirmative steps taken to foster infringement imparts liability for inducement of infringement

Origins of the DMCA Signed into law in 1998 (unanimous Senate vote – Wow!) Implemented as federal law adopting two WIPO treaties that the US had signed Primary goals: – Criminalize circumvention of DRM and technology – Heighted penalties for infringement of copyright over the Internet – Provide indemnification to ISPs – Expand scope of digital audio transmission rights (streaming)

Strengths of the DMCA Internet Service Providers protected from criminal and infringing activity as they are mere conduits Copyright holders’ rights enhanced in the Internet age through grant of right to digitally disseminate copyrighted works Certain technology companies gained power to protect their technology

Criticisms of the DMCA Chilling effect on the advance of technology and competition Too easy to force webs sites to remove potentially infringing material through “Take-down notice” procedure – another chilling effect Provides a legal means to create closed platforms and technology that effectively excludes other competitors from interoperating and competing

Fascinating Q&A session The Best Questions typically start with “So,I have this friend who….”