IP Newsflash - June 2014 #3

by Akin Gump Strauss Hauer & Feld LLP


Federal Circuit Reinforces the Requirement to Disclose the Corresponding Algorithm for a Computer-Implemented Means-Plus-Function Term

On June 13, 2014, the Federal Circuit affirmed the Western District of Washington’s decision that the claims in U.S. Patent No. 5,181,181 were invalid for indefiniteness. The ’181 patent disclosed a method and apparatus for a user communicating with a computer by moving an input device in three-dimensional space. The claims included general means-plus-function terms, such as an “integrator means,” meant to be performed on a computer. Under Federal Circuit precedent, “if the function is performed by a general purpose computer or microprocessor, then the specification must also disclose the algorithm that the computer performs to accomplish that function.” The ’181 patent failed to disclose any specific algorithm or specialized computer that performed the integrating function for the “integrator means.” Appellant pointed to the disclosure of “numerical integration” in the patent’s specification as the sufficient disclosure of the algorithm. The Federal Circuit rejected this argument, finding that while “numerical integration” is technically a broad class of algorithms, the patent fails to disclose the specific algorithm—i.e., a “step-by-step procedure”—for the claimed “integrator means.” The Federal Circuit reinforced that the “failure to disclose the corresponding algorithm for a computer-implemented means-plus-function term renders the claim indefinite.” Because the Appellant failed to disclose an algorithm that performed the integrating function, the asserted claims were upheld as indefinite. 

Triton Tech of Texas, LLC, v. Nintendo of America, Inc., Case No. 2013-1476 (Fed. Cir. June 13, 2014) [Moore (opinion), Reyna, and Hughes]

- Author: James Duncan


Lady Gaga’s “Judas” No “Juda”

In 2011, Rebecca Francescatti (Francescatti) filed suit in the Northern District of Illinois, Eastern Division against five defendants, including Stephani Joanne Germanotta (Lady Gaga) for copyright infringement. According to Francescatti’s allegations, Lady Gaga’s song “Judas” infringed Francescatti’s copyrighted song “Juda.” Lady Gaga and the other defendants filed a joint motion for summary judgment seeking dismissal of Francescatti’s case for failing to establish that “(1) defendants had access to and actually copied the protectable expression embodied in Francescatti’s song, and (2) Gaga’s song sounds substantially similar to Francescatti’s.” The court found in favor of Francescatti on access but granted summary judgment for Lady Gaga on the basis that a reasonable juror could not find the two songs substantially similar.

Following 9th Circuit precedent, the court held that summary judgment, although not favored in determining the question of substantial similarity, “is appropriate where no reasonable trier of fact could find substantial similarity in the protected expression of the disputed works.” However, the court rejected Lady Gaga’s request that it apply the “inverse ration rule,” which requires a higher standard of proof on the issue of “substantial similarity” when the Plaintiff’s evidence of “access” is weak. Rather, the court favored an analysis that looks at “access” and “substantial similarity” independently of each other. The court noted that “substantial similarity” is “one of the most difficult questions in copyright law” because the party must demonstrate both copying and that the copying “extends to the [party’s] protectable expression.” Francescatti had to demonstrate that Lady Gaga copied the work and “that the two works shared enough unique features to give rise to a breach of duty [on the part of Lady Gaga] not to copy [Francescatti’s] work.” 

On the issue of substantial similarity, Lady Gaga argued that the court should rely on the “ordinary observer test,” i.e.; a side-by-side comparison of the two songs. Because of computer generated enhancing associated with the songs, Francescatti argued for application of the “extrinsic-intrinsic test,” which relies on expert testimony to identify the protectable elements that were copied. Given the complexity of the songs, the court allowed expert testimony, but it did not abandon the “ordinary observer test” in favor of the “more discerning observer test” (i.e.; the difference between a lay person and a choral director for example). Applying the extrinsic-intrinsic and ordinary observer tests, the court found three similarities between the two songs: 1) the titles; 2) the repetitive use of the titles in the songs; and 3) a similarity in the use of four 16th notes in the breakdown sections. However, this was not enough to find copyright infringement because Francescatti did not establish a similarity between the songs as a whole and because the three elements – title, repetition and breakdown sections – were not protectable individually or as a unique combination.

Francescatti v. Germanotta, No. 11-cv-5270 (N.D. Ill. June 17, 2014) [Aspen, M.]

 - Author. Melanie Goins Cowart


Redskins’ Trademarks are Cancelled

In a landmark decision by the Trademark Trial and Appeal Board, the panel cancelled six of the team’s trademarks ruling that the name is disparaging to Native Americans pursuant to Section 2(a), 15 U.S.C. § 1052(a) which prevents the registration of marks which “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The Board’s ruling addressed six uses of the name REDSKINS during the time period of 1967 to 1990. Although the decision only addresses the statutory right to register the trademarks rather than the actual use of the trademarks, it may create serious impediments to enforcing trademark protection in a commercial context. The owner of the trademarks, Pro-Football, Inc., attempted to argue laches and lack of substantial evidence of disparagement. The Board rebuffed Pro-Football’s laches defense based primarily upon public policy issues and determined that a finding of disparagement requires a two-step inquiry from the date of registration of the involved marks:

“a. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in the connection of goods and services?
 b. Is the meaning of the marks one that may disparage Native Americans?”

In establishing disparagement, the Board ruled the first prong of the test met as the term REDSKINS within the registered mark [at the time of registration] did refer to Native Americans. Second, the Board found the term REDSKINS to be disparaging during the relevant time period upon reviewing evidence presented by Petitioners, including linguistic analysis of the word and views of the referenced group. Therefore, a cancellation of the trademarks was appropriate.

Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian  Pappan and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185 (TTAB June 18, 2014) [Kuhlke (opinion), Cataldo and Bergsman]

- Author: Holly Dekan


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Akin Gump Strauss Hauer & Feld LLP | Attorney Advertising

Written by:

Akin Gump Strauss Hauer & Feld LLP

Akin Gump Strauss Hauer & Feld LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.