Page 44 - IP Record
P. 44
42 The IP Record - 2014
IPO’s 4-Star Federal Circuit Summaries™ 2013 - 2014*
IPO publishes one-paragraph summaries of every precedential patent and trademark opinion issued by the U.S. Court of
Appeals for the Federal Circuit. The summaries are distributed via the IPO Daily News™ and archived on the IPO web-
site. Each opinion is ranked on impact of opinion on patent and trademark law with 4 stars being the highest ranking.
Click the title of any case to link to the full opinion.
Petrella v. Metro-Goldwyn-Mayer, Inc. 12-1315
U.S. SUPREME COURT HOLDS LACHES The Supreme Court held laches could not bar a
DOES NOT BAR COPYRIGHT INFRINGE- copyright infringement suit for damages brought
MENT SUITS FOR DAMAGES — May 19, within the statute of limitations. “Inviting indi-
2014 — In an opinion by Justice GINSBURG, vidual judges to set a time limit other than the
the U.S. Supreme Court overruled a decision one Congress prescribed . . . would tug against
of the Ninth Circuit Court of Appeals that Pe- the uniformity Congress sought to achieve when
trella’s copyright infringement suit was barred it enacted §507(b).” In extraordinary circum-
by the defense of prejudicial and unreasonable stances, however, laches could curtail certain eq-
delay (“laches”). In 1991 Petrella renewed the uitable relief. Justice BREYER, joined by Chief
copyright to the screenplay for the flm “Raging Justice ROBERTS and Justice KENNEDY, fled
Bull.” She began corresponding intermittently a dissenting opinion.
with MGM to contest its continued exploitation
of the flm, but did not fle her copyright infringe-
ment suit until 2009. Both the district court and
the Ninth Circuit found that laches completely
barred any recovery, though the three-year statute
of limitations under Copyright Act section 507(b)
barred recovery only for acts prior to 2006.
Oracle America, Inc v. Google Inc. 13-1021
ORACLE’S JAVA-BASED SOFTWARE AP- The Federal Circuit held the structure, sequence,
PLICATION PROGRAMMING INTER- and organization of the APIs were entitled to
FACES ENTITLED TO COPYRIGHT PRO- copyright protection. Section 102(b) did not auto-
TECTION — May 12, 2014 — In an opinion matically prohibit copyright protection for func-
by Judge O’MALLEY, the Federal Circuit over- tional elements of a computer program. Rather
ruled a district court decision that Oracle’s soft- this section was intended to codify the “idea/
ware was not eligible for copyright protection. expression dichotomy” and to clarify that copy-
The subject matter at issue involved packages of right protected a programmer’s particular expres-
computer source code known as application pro- sion. “The [district] court also erred by import-
gramming interfaces (APIs) written in the JAVA ing fair use principles, including interoperability
programming language. Oracle sued Google for concerns, into its copyrightability analysis.” The
patent and copyright infringement of 37 of these case was remanded for further consideration of
APIs. Only the copyright claims were on appeal. Google’s fair use arguments.
The district court decided that although the over-
all structure was creative and original, Copyright
Act section 102(b) prohibited protection for the
APIs as functional methods of operation.
* From 06/13-05/14
Intellectual Property Owners Association
IPO’s 4-Star Federal Circuit Summaries™ 2013 - 2014*
IPO publishes one-paragraph summaries of every precedential patent and trademark opinion issued by the U.S. Court of
Appeals for the Federal Circuit. The summaries are distributed via the IPO Daily News™ and archived on the IPO web-
site. Each opinion is ranked on impact of opinion on patent and trademark law with 4 stars being the highest ranking.
Click the title of any case to link to the full opinion.
Petrella v. Metro-Goldwyn-Mayer, Inc. 12-1315
U.S. SUPREME COURT HOLDS LACHES The Supreme Court held laches could not bar a
DOES NOT BAR COPYRIGHT INFRINGE- copyright infringement suit for damages brought
MENT SUITS FOR DAMAGES — May 19, within the statute of limitations. “Inviting indi-
2014 — In an opinion by Justice GINSBURG, vidual judges to set a time limit other than the
the U.S. Supreme Court overruled a decision one Congress prescribed . . . would tug against
of the Ninth Circuit Court of Appeals that Pe- the uniformity Congress sought to achieve when
trella’s copyright infringement suit was barred it enacted §507(b).” In extraordinary circum-
by the defense of prejudicial and unreasonable stances, however, laches could curtail certain eq-
delay (“laches”). In 1991 Petrella renewed the uitable relief. Justice BREYER, joined by Chief
copyright to the screenplay for the flm “Raging Justice ROBERTS and Justice KENNEDY, fled
Bull.” She began corresponding intermittently a dissenting opinion.
with MGM to contest its continued exploitation
of the flm, but did not fle her copyright infringe-
ment suit until 2009. Both the district court and
the Ninth Circuit found that laches completely
barred any recovery, though the three-year statute
of limitations under Copyright Act section 507(b)
barred recovery only for acts prior to 2006.
Oracle America, Inc v. Google Inc. 13-1021
ORACLE’S JAVA-BASED SOFTWARE AP- The Federal Circuit held the structure, sequence,
PLICATION PROGRAMMING INTER- and organization of the APIs were entitled to
FACES ENTITLED TO COPYRIGHT PRO- copyright protection. Section 102(b) did not auto-
TECTION — May 12, 2014 — In an opinion matically prohibit copyright protection for func-
by Judge O’MALLEY, the Federal Circuit over- tional elements of a computer program. Rather
ruled a district court decision that Oracle’s soft- this section was intended to codify the “idea/
ware was not eligible for copyright protection. expression dichotomy” and to clarify that copy-
The subject matter at issue involved packages of right protected a programmer’s particular expres-
computer source code known as application pro- sion. “The [district] court also erred by import-
gramming interfaces (APIs) written in the JAVA ing fair use principles, including interoperability
programming language. Oracle sued Google for concerns, into its copyrightability analysis.” The
patent and copyright infringement of 37 of these case was remanded for further consideration of
APIs. Only the copyright claims were on appeal. Google’s fair use arguments.
The district court decided that although the over-
all structure was creative and original, Copyright
Act section 102(b) prohibited protection for the
APIs as functional methods of operation.
* From 06/13-05/14
Intellectual Property Owners Association
