Mike Oliver and Kim Grimsley Recognized Again in the 28th Edition of the Best Lawyers®️ in America

Best Lawyers, an international lawyer ranking and referring source that is currently celebrating its 40th anniversary, has announced its 28th Edition of The Best Lawyers in America® for 2022, which will include Mike Oliver and Kim Grimsley.  In order to be featured, lawyers are nominated, critiqued by currently recognized lawyers on the caliber of their work, and analyzed accordingly.

Mike Oliver has been recognized in this publication for the past 16 years since being recognized initially in 2006.  He is also recognized as “Lawyer of the Year” for his work in Trademark Law in Baltimore – which will also be his 8th “Lawyer of the Year” award, having previously been named for his work in various fields, including copyright, intellectual property, and information technology law. This is granted to only one lawyer per specialty and location a year, given to lawyers with the highest overall peer-feedback in such area and region.

Mike has been practicing intellectual property law for over 30 years.  In addition, his knowledge as a computer programmer has been a valuable asset for those clients in the software and technology industry.

Kim Grimsley has been recognized again in this publication for her professional excellence by her peers – she is being recognized in the fields of Copyright Law and Trademark Law.  This will be Kim’s second year being featured.

Kim has been practicing intellectual property law for 20 years, and she has enjoyed working with clients – from start-up businesses to publicly traded companies in all industries – in building and protecting their intellectual property in the United States and worldwide.

Everyone at Oliver & Grimsley would like to congratulate Kim and Mike on their continued hard work and excellence. 

University of Alabama seeing Crimson over recent ruling?

In University of Alabama v New Life Art, the 11th Circuit Court of Appeals resolved a portion of a long standing dispute over the protection afforded authentic reproductions of college uniforms.  A painter made paintings (and calendars) accurately depicting University of Alabama games.  For many years this practice was unlicensed, but done with the knowledge of the UofA.  Later, the painter began using the paintings he created on mugs, towels, t shirts and so on.   Eventually the University of Alabama required use of accurate depictions of the uniforms to be licensed, and the artist refused.   Therein ensued litigation, now in its 7th year.

The 11th Circuit held that “An artistically expressive use of a trademark will not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.”

Thus the paintings were held to be protected under the implied fair use rights under the 1st Amendment, even though they depicted the uniform colors. The other issues were remanded as the record had not been developed on them (somewhat surprising after 7 years of litigation!)

It should be noted that the University had licensing agreements with the artist in some respects (they gave him press credentials to access games and allowed him to create a painting live on air at one point – without however licensing his subsequent sales of reproductions of those paintings).  The terms in the license agreement were very broad, but not broad enough to cover the colors on the uniforms when shown on a uniform.

This case demonstrates that the cost of fair use determinations is substantial, and the findings can be somewhat limiting – indeed, it is not clear the artist will prevail on the other claims – he apparently did not raise fair use on appeal as to them, and there is an argument that the licensing agreements he had signed did cover those items.

Use of an aggressive trademark holders marks, even trade dress, without a license, and even with a fair body of case law finding fair use, can be very risky.

For more information, contact Mike Oliver or Kimberly Grimsley.

Recent court decision in Oracle v Google raises serious copyright questions in certain types of software

In a decision in the Oracle v Google case, the court held that APIs – application program interfaces – small amounts of human readable source code, are not sufficiently original to qualify as copyrights.  This decision can impact API licenses, which most likely are based on copyrights.

What Google did.  Google decided that to construct a mobile platform operating system (ultimately, the Android operating system) it wanted to be able to “interoperate” with java programs – in this way, developers could rapidly publish their programs written in Java, to the mobile platform.  In order to do this, however, Google either needed a license to the Java virtual machine to allow it to “port” it to the mobile hardware, or it needed to emulate that environment.  Google approached Sun (later bought by Oracle) for this license, but the parties never agreed.  Google eventually copied the names of the base classes and methods, and wrote its own original code to implement the particular functions.  So as an example, a Java program would call a function, using the precise identical name of the function, class or method, but the “behind the scenes” black box code in Android that returned a result, was written by Google and not copied from Java.  Google did a few other things (for example, they decompiled some executable code in Java, and used the source code derived from that to test their own software compatibility, and they included verbatim 9 lines of code in a range check function, which the court utterly dismissed as De-minimis copying)

What Oracle claimed.  Faced with having examined 15 million lines of code and discovering that only the structure, sequence and function was copied, Oracle took the position that it had a copyright in that structure, function and sequence.

What the court held.  The parties had agreed that the issue of copyright was for the court to decide, with the jury being the arbiter of any infringement or damages.  The court did a very good job of reviewing the history of protection of computer software – which really started in about 1980, with amendments to the Copyright Act that recognized computer software as a literary work.  (this case is very well written and researched, so I can commend it to anyone who wants a crash course in software law)

The trouble with the copyright protection, however, is that copyrights cannot protect ideas – that is the exclusive domain of patent law.  So, whenever a copyright expresses an idea, we often say that the idea is free but the expression of it may not be.  However, where there is only a limited way of expressing the idea – courts hold that the idea then “merges” into the expression, becoming inseparable, and renders that particular expression free from copyright protection.   That is what the court held here – essentially, the court said that if you want to protect the sequence, function and structure of how a software program works, you must use patent, and not copyright, law.  This ended the case for Oracle, as Oracle had lost on patent infringement.

The court summarized the best argument as follows: “Oracle’s best argument, therefore, is that while no single name is copyrightable, Java’s overall system of organized names — covering 37 packages, with over six hundred classes, with over six thousand methods — is a “taxonomy” and, therefore, copyrightable under American Dental Association v. Delta Dental Plans Association, 126 F.3d 977 (7th Cir. 1997).” (emphasis added)

What impact does this case have?   In the abstract, this case follows a fairly well defined line of cases that have denied copyright protection to such things as menu structures and programmatic access to underlying operating systems.   In this regard, the case does not change the law.  However, in a bigger picture view, and with particular reference to the amount of copying here – all of the main class and method calls in Java were replicated verbatim . . . it could be seen as a step toward requiring either very good contracting practice, or patenting, to protect access to a software language system.   The only other way to protect access is under the Digital Millennium Copyright Act – installing and using a sufficient technological measure that must be decrypted in order to access content.

If a software developer desires to restrict access to base operating code, the Oracle v Google case poses a significant barrier to reliance on copyright alone.  As stated above, the developer should consider proper contract language, patenting the system, and use of encryption technology to unlock such access.

For more information contact Mike Oliver.

Idea theft case narrowly escapes near certain death in 2nd Circuit

The Second Circuit (an important circuit) recently decided FOREST PARK PICTURES v. UNIVERSAL TELEVISION NETWORK, INC. (June 26, 2012), allowing a “pitch man” to overcome a dismissal of his law suit that claimed Universal took his idea for a television show without paying for it.

Raw ideas that cannot be patented (such as ideas for themes or methods of performance of a TV show) can only be protected by a contract, in most cases.  Contrast this with, for example, a script, character development, book, adaptation, or short film – all of which can be protected by copyright.  So, people who have a raw idea but no real copyrightable work behind it (and in some cases, even when then they do have copyrightable content, see Fischer v. Viacom International, 115 F. Supp 2d 535 (D. Md. 2000)) must resort to a delicate balance of asking the person they disclose the idea to, to pay them if they use the idea (or not use the idea without an agreement on compensation).  Many content owners will not make such an agreement.

In this case, the plaintiff alleged that it had “created a written series treatment for the idea, including character biographies, themes, and storylines” and mailed that to an executive at USA Network, and then later had a meeting with that executive to “pitch” the show; the plaintiff alleged “that it was standard in the entertainment industry for ideas to be pitched with the expectation of compensation in the event of use.”  USA Network later came out with the show Royal Pains, a show “in which a doctor, after being expelled from the medical community for treating patients who could not pay, became a concierge doctor to the rich and famous in the Hamptons” – the precise thematic treatment alleged by plaintiff that it had disclosed 4 years earlier.

The problem these cases have is that if the claim essentially sounds in copyright, it must only be brought in Federal Court (and the copyright must be registered to do so) – and worse, copyrights do not protect ideas, only the expression of them.  So, to avoid this preemption effect of copyright law, the plaintiff must plead an “extra element” – and in all of these cases, that extra element is contract (a contract requires proof of an offer, acceptance, consideration, and legality – none of those elements are required to establish copyright infringement).   This court held that “As long as the elements of a contract are properly pleaded, there is no difference for preemption purposes between an express contract and an implied-in-fact contract.”  Hence, the claim survived another day.

We advise our clients to be as express as possible when making pitches, even if in the applicable industry, it is “standard practice” to respect the notion of payment if the idea is used.

For more information contact Mike Oliver.