The United States Patent and Trademark Office (“USPTO”) posted an update on its official website yesterday with information about its activities during the shutdown. Up until this point, the USPTO has been operating through the use of prior-year fee collections. The USPTO now expects that patent operations will continue to function normally until “at least the second week in February”, while trademark operations will continue normally until “at least mid-April 2019”. Applicants and registrants should plan to comply with all outstanding deadlines in pending matters – even if the USPTO is forced to limit activities as a result of the shutdown. While the expectation is that the USPTO website and electronic filing system will continue to function normally and will accept submissions after this timeframe, applicants and registrants should be prepared to make other filing arrangements if necessary.
The issue of intellectual property used within video games is in the news again. If you haven’t already heard, wildly popular video game Fortnite features a dance called “Swipe It” that is the center of a pending lawsuit. Brooklyn-based rapper 2 Milly is claiming he created the dance in 2015 and the game’s creators swiped it from him. 2 Milly, whose real name is Terrence Ferguson, filed the lawsuit in federal court in Los Angeles against Epic Games, the maker of Fortnite, alleging copyright infringement, right of publicity, and unfair competition claims. Additionally, the lawsuit accuses Epic Games of appropriating several dances in Fortnite (“emotes”) without permission, including Alfonso Ribeiro’s “Carlton Dance” from “The Fresh Prince of Bel-Air” (renamed Fresh), Snoop Dogg’s 2004 dance from “Drop It Like It’s Hot” (retitled “Tidy”), and Donald Faison’s dance from the TV show “Scrubs,” (renamed “Dance Moves”).
2 Milly’s dance, dubbed the “Milly Rock,” consists of a left arm swing, a right arm swing, a circular motion of both arms, and simultaneous alternative hip swings – repeated over and over again. But is it copyrightable? To successfully state a copyright infringement claim and collect damages, 2 Milly will generally have to show that he owns a valid copyright to the dance and that Epic Games copied constituent elements of the dance that are original. There is also the question of whether Fortnite’s Swipe It dance infringes on 2 Milly’s brand as an artist. After all, 2 Milly became known and recognized for his Milly Rock dance and gained fame and popularity for it on a viral level. While the Fortnite avatars participating in the dances do not use 2 Milly’s name and do not appear to look like 2 Milly, there could be an argument that the use of Swipe It infringes on the rapper’s likeness and persona as an artist, who is particularly known for a particular dance. On top of all of this, Epic Games gains a commercial advantage by its use of Swipe It since gamers are prompted to pay approximately $9.50 to “unlock” the Swipe It emote on Fortnite.
While a dispute over the ownership of a dance move portrayed in a video game may seem novel, it is part of a long trend of similar past – and most likely future – disputes. Indeed, the 2 Milly lawsuit was followed shortly thereafter by a lawsuit from Alfonso Ribeiro. Copyright infringement lawsuits have been filed and some are currently pending from tattoo artists against video game studios over the reproduction of players’ tattoos in games. College athletes have battled over the unpaid use of their likenesses in college sports video games. Even Lindsay Lohan tried to sue Rockstar Games over the use of a character she says was based on her likeness.
As video games become more realistic and more intertwined with popular culture (and social media), the issues of intellectual property being used within other intellectual property will show their face again and again. This is especially true as game studios push virtual reality and as consumers expect to see their real worlds reproduced faithfully in video game format. Intellectual property licensing has been a part of the video game world for a long time. But as the content being incorporated into those games transitions from traditional properties like music and brands to more nebulous properties like dance moves and personal likenesses, creators on both sides of the divide need to be aware of their rights and need to be aware of where their properties are being used. In many circumstances, the law is unsettled or there are issues of first impression. Creators who sleep on their rights may miss out on potential revenue streams or may risk the loss of their rights to the public domain. Creators who utilize third-party works may face disruptions or event litigation as works they thought were in the public domain are claimed by their creators. Intellectual property licensing is here to stay in the video game world, and those who are aware of this fact and use it to their advantage are more likely to find themselves in the winner’s circle.
Lost in the shuffle of the holidays was the U.S. Copyright Office’s adoption of a Final Rule clarifying the eligibility requirements for the Single Application, a simplified online registration option available to applicants who are both the sole author and owner of all rights in a single work that is not a work-for-hire. Although the Single Application has been around since 2013, on December 16, 2017, the Copyright Office released a new version of the Single Application that included certain enhanced features designed to improve the user experience, increase the efficiency of the examination, and reduce the correspondence rate for these types of copyright claims. In tandem with the introduction of the revised Single Application, the Copyright Office announced that it would be amending the applicable regulations to, among other things, clarify the eligibility requirements for the Single Application.
The Final Rule, published on December 27, 2018 and effective January 28, 2019, clarifies, among other things, a key exception to the Single Application rules, permitting the Single Application to be used to register a single sound recording and the underlying musical work, literary work, or dramatic work, notwithstanding the fact that a sound recording and the work embodied in that recording are technically separate works under the framework of the Copyright Act. To qualify under the exception, the applicant must: (i) be the sole author of both the sound recording and the work embodied in that recording; (ii) own the copyright in both works; and (iii) be the only performer featured on the recording. The Final Rule also includes guidance on the manner in which the Single Application is to be signed and submitted, and eliminated the “short form” version of the application.
Copyright owners who qualify for the Single Application should familiarize themselves with this recent guidance, lest they will unnecessarily complicate a procedure intended to streamline the registration process.
On October 23, 2018, the Patent Trial and Appeal Board (the “PTAB”) invalidated a design patent over the shape of an aircraft lavatory, because it had been on-sale prior to the filing date. U.S. Design Patent No. D764,031 S (“the ‘031 patent”) concerned the ornamental design of an aircraft lavatory where the walls were slightly recessed.
Whereas a utility patent covers the way an invention is used and how it works, a design patent solely protects the ornamental appearance of an invention.
The On-Sale Bar
Under 35 U.S.C.A. § 102(a)(1), an inventor is not entitled to a patent if the claimed invention was “described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” This is known as the “on-sale bar.” Here, the PTAB invalidated the ‘031 patent because the patent holder B/E Aerospace, Inc. (the “Patent Owner”) was selling the design prior to the filing date of the patent.
The patent challenger, C & D Zodiac, Inc., specifically pointed to a slide show presentation created by the Patent Owner, as evidence that the lavatory design was on sale and in public use prior to the date of filing. The Patent Owner’s presentation noted that it had received an $800 million contract to sell its lavatory design to Boeing. Photographic evidence showed the lavatory which was being sold to Boeing was virtually identical in design to the ‘031 patent.
Thus, the PTAB found, based on preponderance of the evidence, that the design claimed by the ‘031 patent was embodied by the product that the Patent Owner was already selling, prior to the filing date of the patent. Accordingly, the ‘031 patent was invalidated pursuant to the on-sale bar of 35 U.S.C.A. § 102(a)(1).
This article was originally published in the New York City Bar Association’s Aeronautics Committee Newsletter. The views expressed herein are those of the author and not necessarily of the City Bar.
The decision of the PTAB is available at: C&D Zodiac Inc. v. B/E Aerospace, Inc., No. PGR2017-00019, 2018 WL 5298631 (P.T.A.B. Oct. 23, 2018).
On October 11, 2018, President Trump signed into law the long-anticipated Music Modernization Act (“MMA”), legislation focused on shepherding the existing music licensing system into the digital age. Among the highlights, the MMA provides for blanket mechanical licensing and a licensing collective charged with managing mechanical license royalty payments to composers and publishers. The MMA is divided into three major titles, each focused on addressing certain perceived gaps in the existing structure. Some highlights are discussed below.
Title I of the MMA (Music Licensing Modernization) establishes a blanket, statutory mechanical license for digital music providers to be administered by a non-profit organization called the Mechanical Licensing Collective (the “MLC”). The MLC is charged with establishing a publicly accessible database of copyright ownership information for musical compositions. A digital music provider wishing to obtain a blanket mechanical license must file a notice of license with the MLC specifying, among other things, the covered activities. The MLC will have 30 calendar days to review that notice, and a provider whose application for a license is rejected will have an opportunity to cure or seek further review in federal district court
Title II of the MMA (Classics Protection and Access) extends federal copyright protection to pre-1972 sound recordings previously excluded from the copyright protection. The duration of protection for such works is set as follows:
- For recordings published before 1923, the term of protection ends on December 31, 2021;
- For recordings published between 1923 and 1946, the term of protection continues until December 31 of the year 100 years after publication;
- For recordings published between 1947 and 1956, the term of protection continues until December 31 of the year 110 years after publication; and
- For all other recordings (including unpublished recordings and ones published after 1956), the term of protection ends on February 15, 2067.
Title III of the MMA (Allocation for Music Producers) grants music producers a share of royalties collected when their sound recordings are played through online and satellite radio providers. Such producer payments are to be allocated from the share of streaming royalties allocated to recording artists under the current statutory scheme.