Our weekly SoCal IP Institute meeting on Monday, October 19, 2015 will be a discussion of the following recent cases:

The Author’s Guild v. Google, Inc., (2d Cir. Oct. 16, 2015) (available here). Plaintiff-appellants are authors of published books under copyright on appeal from the  judgment of the United States District Court for the Southern District of New York in favor of Defendant Google, Inc. Plaintiffs sued Google, alleging that its Library Project and Google Books project infringe Plaintiffs’ copyrights. Through these projects, Google makes and retains digital copies of books submitted to it by major libraries, allows the libraries that submitted a book to download and retain a digital copy, and allows the public to search the texts of the digitally copied books and see displays of snippets of text.

The district court granted summary judgment based on its conclusion that Google’s copying is fair use under 17 U.S.C. § 107 and is therefore not infringing. The Court of Appeals concluded that the defendant’s copying is transformative within the meaning of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-585 (1994), does not offer the public a meaningful substitute for matter protected by the plaintiffs’ copyrights, and satisfies § 107’s test for fair use. The district court was affirmed.

Shukh v. Seagate et al. (Fed Cir. Oct. 2, 2015) (available here). Dr. Shukh was employed by Seagate from 1997 to 2009. Dr. Shukh’s tenure at Seagate was apparently quite tumultuous.  After his termination, Dr. Shukh claimed that he was wrongfully omitted as inventor on six U.S. patents.  Dr. Shukh sued, seeking correction of inventorship.  Seagate moved to dismiss for lack of standing.  After two years of litigation, the district court granted summary judgement on the same claimed lack of standing because there was a lack of reputational harm to Dr. Shukh.

The Federal Circuit vacated finding that there were triable issues of fact related to Dr. Shukh’s claimed reputational harm. In so doing, the Federal Circuit indicated that prior president related to “agreements to assign” versus “hereby assigns” language in employee agreements could not be overruled without taking this case en banc.