Our weekly SoCal IP Institute meeting on Monday, April 21, 2014 will be a discussion of two cases. The first relates to a copyright dispute involving a collection of photographs registered by a stock photo company and the second involves an appeal of an adverse ex parte reexamination decision by the patent owner. Brief synopses of the cases appear below.
Alaska Stock v. Houghton Mifflin, Docket No. 10-36010 (9th Cir. March 18, 2014) (available here). Reversing the district court’s dismissal of a copyright infringement action, the panel held that copyright registration of a collective work registers the component works within it. The panel held that the Register of Copyrights had authority to prescribe a form and grant certificates extending registration to individual stock photographs within a collection where the names of each of the photographers, and titles for each of the photographs, were not provided on the registration applications.
Agreeing with other Circuits, and deferring to the Copyright Office’s interpretation of the Copyright Act, the 9th Circuit panel held that where the photographers had assigned their ownership of their copyrights in their images to the stock agency, and the stock agency had registered the collection, both the collection as a whole and the individual images were registered.
In re Teles AG Informationstechnologien et al., Docket No. 2012-1297 (Fed. Cir. April 4, 2014) (available here). Teles AG Informationstechnologien and Sigram Schindler Beteiligungsgesellschaft MBH own all substantial rights in U.S. Patent No. 6,954,453 on a method and apparatus for transmitting data in a telecommunications network. The Patent and Trademark Office conducted an ex parte reexamination of the ’453 patent and rejected claims 34–36 and 38 as obvious under 35 U.S.C. § 103. The Board of Patent Appeals and Interferences affirmed.
Teles brought suit in the United States District Court for the District of Columbia, challenging the Board’s decision pursuant to 35 U.S.C. § 145 (2006). The Federal Circuit agreed with the district court that it lacked subject matter jurisdiction, and hold that the version of § 145 in effect at the time did not authorize a patent owner in an ex parte reexamination to bring suit in district court challenging the Board’s action. But The Federal Circuit held that the district court erred in dismissing the case and instead should have transferred the case as it attempted to do after the dismissal. The Federal Circuit treated the case as having been transferred to the Federal Circuit and considered it as an appeal from the Board’s decision. The Federal Circuit affirmed the Board’s rejection of claim 35 as obvious under § 103.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 21, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.