Business Method Patents In Australia

After a long delay, the Australian Federal Court (Appeals Division) has finally decided the case of Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177.  This is an appeal from an appeal from a decision by the Commissioner of Patents not to grant a patent to a method and system for computerised collection of information relevant to assessment of a person’s competency for a recognised qualification standard.

The case considered whether this invention was patentable subject matter in Australia.

The Court decided that this invention was not patentable subject matter in Australian.

"A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well- known and understood functions.

Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?

... it is apparent that, other than the integers providing that the computer processes the criteria to generate corresponding questions and presents those questions to the user, the method does not include any steps that are outside the normal use of a computer. It is not suggested that the creation of the plurality of assessable criteria themselves form the basis of the claimed invention. They are present on the NTIS website from which they are retrieved. It is not suggested that the presentation of the questions or the processing of the user’s responses involve ingenuity themselves or that this constitutes the requisite manner of manufacture. 

We conclude that the claimed invention is to a scheme or a business method that is not properly the subject of letters patent."

See also IP Whiteboard

Personal Information

The Australian Administrative Appeals Tribunal has decided that companies who collect operational data about services they provide to individual end users, is not personal information about customers.

See Telstra Corporation Limited and Privacy Commissioner [2015] AATA 99 (18 December 2015)

The Advocate Defames The Bank on Social Media

CBA defamation victory shows social media ”pervasiveness”

Michael Fraser, who goes under the name of The Advocate, operates a number of complaints-based websites, such as http://openadvicereview.com.au.  He had a big loss in court, in a defamation case brought by Commonwealth Bank.  See AFR story.

United States Federal Circuit Judges Express Concerns for Current State of Patent Eligibility Law

There will be no en banc review of a Federal Circuit panel decision that an important medical diagnostic method is ineligible for patent protection under 35 U.S.C. 101. However, in opinions accompanying the order denying review, several Federal Circuit judges expressed concerns for medical diagnostics under the current state of patent eligibility law. Ariosa Diagnostics, Inc. v. Sequenom, Inc., Fed. Cir., No. 14-1139, 2 December 2015.

The patent at issue is directed at a process for detecting paternally-inherited fetal DNA in maternal blood samples and for performing a prenatal diagnosis based on that DNA. This method permits the diagnosis of possible birth defects without using highly intrusive measures.

The Federal Circuit panel decision acknowledged that the invention in this case revolutionized prenatal care. However, it ruled that the claimed method is patent-ineligible under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), because it acts on natural phenomenon with well-understood, routine, and conventional steps. In a concurring opinion, Judge Linn reluctantly agreed but only because of the Supreme Court’s sweeping and unnecessary statements about patent eligibility.

The Federal Circuit on December 2, 2015, denied the petition for en banc review.

To read the opinions accompanying the en banc order in this case, click here; to read the panel decision in this case, click here.

History of Software Patents in the United States

A good article from the National Law Reviewing regarding the history of software patents in the U.S.

See History

Dot Horse

An interesting blog post concerning the new Dot Horse gTLD:

http://everythingtrademarks.com/2015/09/13/dot-horsing-around/

"Despite its stated purpose, it has – inexplicably – brought together a community of equine parodists. "

Ninth Circuit Rules That Copyright Holders Must Consider Fair Use Before Issuing DMCA Takedown Notice

Media companies and other copyright holders may need to change the way they deal with infringing content on the Internet.  In a closely watched copyright case, Lenz v. Universal Music Corp. (also known as the "Dancing Baby" case), the United States Court of Appeals for the Ninth Circuit ruled yesterday that copyright holders must consider fair use before issuing takedown notices to remove allegedly infringing content from websites such as YouTube and Facebook. This decision has significant implications for owners of copyright-protected content, especially studios, record labels, publishers and other entities with large content catalogs, as well as individuals and businesses that rely on fair use to exploit copyrighted material owned by others. 

Redlands Council Threatens Lawsuit against Facebook Posters

See Brisbane Times

"Redland City Council has sought to shut down online criticism by sending threatening legal letters to residents over comments made on social media.

Five residents have received the legal threats in the past week over Facebook posts that suggested, among other things, that political donations from developers had swayed council decisions."

Australian Government releases survey into online copyright infringement

The research is said to show that Australia has high levels of online copyright infringement.

See Government Website with full survey results.

Patentable Subject Matter Guidelines for the United States

The newly released update to the section 101 Eligibility Guidelines is on the USPTO website at the link below:

http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0

Please note that there are three Appendices.

Copyright and eBooks

From Australian Copyright Agency:

The UK Publisher’s Association has successfully gained an order to have that country’s five main internet service providers block consumer access to websites promoting the online theft of ebooks.

Investigations found at least 80 per cent of the reportedly 10 million ebook titles on seven offshore websites were infringing copyright and almost a million takedown notices had been issued to the sites. The sites make substantial sums of money from referral fees and advertising, with none of that income returning to publishers or authors.

The UK Publishers Association Chief Executive, Richard Mollet, said: “A third of publisher revenues now come from digital sales but unfortunately this rise in the digital market has brought with it a growth in online infringement. Our members need to be able to protect their authors’ works from such illegal activity; writers need to be paid and publishers need to be able to continue to innovate and invest in new talent and material.” Read the media release here.

The UK decision reflects our own situation in Australia where a two-pronged approach aims to curb online piracy.

Firstly, the creative and telecommunications sectors have jointly established a new code to combat internet piracy. It involves an escalating series of infringement notices being issued to repeat infringers and has been submitted for registration to the Australian Communications and Media Authority.

At the same time, the Federal Government has legislation before the Senate to allow rights holders to apply to a court for an order requiring ISPs to block offshore websites promoting online theft.

The Copyright Agency supports these moves and will continue to campaign for copyright and stand up for creators’ rights.

Murray St Leger,

Chief Executive

Should you go to law school in Australia?

You may have seen reference to the New South Wales Law Society report on the “Future Prospects of Law Graduates” in last Friday’s Australian. If you have not seen the full report here is the link to it. http://www.lawsociety.com.au/cs/groups/public/documents/internetcontent/980877.pdf

Dallas Buyers Club decision - who won?

The Australian Federal Court decided today that ISP iiNet was required to identify some of its customers who have downloaded the movie "Dallas Buyers Club".  The court imposed restrictions and costs on the copyright holder.  No email addresses were ordered to be disclosed.  Dallas Buyers Club LLC v iiNet Limited [2015] FCA 317.

See Court Decision and SMH Article.

Alibaba

The big picture regarding Alibaba.  See NewYorker.

Music Copyright

"On Tuesday, a federal jury in Los Angeles concluded that Robin Thicke and Pharrell Williams, the performer and primary songwriter-producer of the 2013 pop hit “Blurred Lines,” committed copyright infringement by using elements of the 1977 Marvin Gaye song “Got to Give It Up” in their composition without proper credit. The jury awarded Mr. Gaye’s family approximately $7.3 million, a combination of profits from the song and damages. That’s an attention-getting amount of money, but the verdict itself is far more damning."

See NYT article

Left Shark Copyright

An interesting story about copyright in a costume for dancing shark.  Read the lawyer's response at the end of the story.

Copyright Infringement Detection Service

An interesting service from South Australia, called www.plfer.com.  It is a copyright infringement detection service.  Created by the founder of Davnet.  See story here.

Looking to hire a technology lawyer in Brisbane

See job post here.

Recommended Reading

I recommend these recent books, which relate to law and technology.  Kindle editions are available.

User Generated Content

An interesting story from England.  A hotel fined a guest for a bad review on TripAdvisor.

See Couple Fined by Hotel for Bad Review

See also this article, that mentions some lawsuits regarding user generated content

Computer Implemented Method Not Patentable Subject Matter in Australia

A unanimous Full Federal Court in Australia today decided that a computer implemented method of creating an investment index is not patentable, on the basis that the substance of the claimed invention – an abstract idea or scheme – was itself not patentable subject matter, and simply implementing that invention via a computer would not render it patentable.

See Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150

See also this case note.

Many internet related inventions may not be patentable subject matter in Australia as a result of this decision.

Hate Speech on Facebook

If someone posts something hateful, and possibly illegal, on your Facebook page, what should you do?

See Smart Company article about Anzac biscuits.

Paying for Popularity

An article on paying to get higher search engine rankings.

Negligence and pure economic loss

Australian High Court decision on concurrent liability in contract and negligence for pure economic loss.

Brookfield Multiplex Ltd v Owners Corporation Strata Plan 61288 [2014] HCA 36 (8 October 2014): http://www.austlii.edu.au/au/cases/cth/HCA/2014/36.html


A unanimous decision against finding concurrent liability in negligence to a contractual counterparty who had the opportunity to negotiate non-price terms with a builder.  Would a software or IT enterprise customer be in any different position when dealing with a technology or telco provider?

Reloadable Cards

There appears to be a market for reloadable payment cards.  Part of the growth in this market is driven by online sales of goods and services.  See article on eMerchants.

New Zealand AdWords Case

Trade mark infringement found when competitor purchased Google AdWords that were trademarks of the other.

InterCity Group (NZ) Ltd v Nakedbus NZ Ltd [2013] NZHC 379 

See also comment.

Use of a competitor's mark in advertising could amount to an infringement of their trade mark unless it is clearly for descriptive or comparative purposes only e.g. if the advertisement includes sufficient text to differentiate the product or service that of the competitor. 

Legal Lessons from the Ice Bucket Challenge

See this article:  Legal Lessons from the Ice Bucket Challenge.

"Viral cause marketing is an enticing way to build attention for a brand. Before you embark on a strategy that seeks to copy the summer phenomenon of the ALS Ice Bucket Challenge, consider the legal ramifications."

Serious Invasions of Privacy in the Digital Era

ALRC report on serious invasions of privacy in the digital era.

See this note.

Defamation and the liability of search engine providers

The following Supreme Court of NSW decision was delivered last week by McCallum J: Bleyer v Google Inc [2014] NSWSC 897 http://www.caselaw.nsw.gov.au/action/PJUDG?jgmtid=172529.

Her Honour expressly declined to follow Beach J in Trkulja v Google, and preferred the English line of cases. This was not a final decision on the merits (consideration was in the context of a permanent stay application, given low prospects of success), however the reasoning in this case is likely to be given significant weight in any future consideration of these issues. Her Honour does leave open the question, however, of whether liability may arise once notification of a complaint is received by the search engine provider.

An extract:

[83]  The evidence before me establishes that there is no human input in the application of the Google search engine apart from the creation of the algorithm. I would respectfully disagree with the conclusion reached by Beach J in Trkulja that the performance of the function of the algorithm in that circumstance is capable of establishing liability as a publisher at common law. I would adopt the English line of authority to the effect that, at least prior to notification of a complaint (and on the strength of the evidence before me), Google Inc cannot be liable as a publisher of the results produced by its search engine.

The Master Switch

I have just finished reading an excellent book, called "The Master Switch" by Tim Wu.  It is not a legal book, but more of an economic history.  It has a number of references to patent law.  Well worth reading.

Privacy

The Australian Privacy Commissioner has released a revised guide to "reasonable steps" to protect personal information.

Comments due 27 August.

"Effective ICT security requires protecting both computer hardware (the physical devices that make up a computer system) as well as the data (including personal information) that the computer hardware holds from misuse, interference, loss, unauthorised access, modification and disclosure. However, ICT security measures should also ensure that the hardware and the information stored on it remain accessible and useful to legitimate users."

http://www.oaic.gov.au/privacy/privacy-engaging-with-you/current-privacy-consultations/revised-guide-to-information-security-reasonable-steps-to-protect-personal-information/

However, absolute security is not only impossible but undesirable.  See for example, here and here

Letter from Amazon

Amazon wrote a detailed letter to authors, regarding e-book pricing.  See full text of letter here.

The letter asks authors to email Hachette's CEO directly.

WSJ article about the letter.

Online Copyright Infringement

The Australian Government has today released the Online Copyright Infringement Discussion Paper and is seeking public submissions on the draft proposals designed to address online piracy.

Australia has one of the highest rates of online copyright piracy in the world. This has a significant impact on Australia’s creative industries, including music, television, cinema, software, broadcast and publishing industries, which employ more than 900,000 people and generates more than $90 billion in economic value each year.

The ease with which copyrighted content can be digitised and distributed online means there is no easy solution to preventing online copyright infringement.  International experience has shown that a range of measures are necessary to reduce piracy and ensure that we can continue to take full advantage of the legitimate opportunities to create, provide and enjoy content in a digital environment. 

Everyone has a role to play in reducing online copyright infringement. Rights holders need to ensure that content can be accessed easily and at a reasonable price. Internet service providers (ISPs) can take reasonable steps to ensure their systems are not used to infringe copyright. Consumers can do the right thing and access content lawfully.

The Government’s preference is to create a legal framework that will facilitate industry cooperation to develop flexible and effective measures to combat online piracy. This Discussion Paper seeks the views of the public and stakeholders on proposals to establish such a legal framework.

Importantly, the Government expects that consumer interests will be taken into account in the development of any industry scheme or commercial arrangements.

The Discussion Paper is available on the Online copyright infringement—public consultation page of the Attorney-General’s Department website. Submissions are sought by end of 1 September 2014 and can be emailed to copyrightconsultation@ag.gov.au.

From King & Wood Mallesons:

The proposals are of most interest to copyright owners, to ISPs and to online intermediaries, although the proposed authorisation amendment to the Copyright Act 1968 (Cth) may have a broader application.

In this alert we look at the three proposals outlined in the Discussion Paper, and further questions raised within it.

Read more

Trademarks and website headings

In a decision by the Full Court of the Federal Court of Australia, it was decided that use of the generic term "Lift Shop" in the title of a webpage was not trademark infringement.

See:  Lift Shop v. Easy Living Home Elevators [2014] FCAFC 75

See also comment.

A Town Like Alice

The U.S. Supreme Court decided the Alice Corp v. CLS Bank patent case today.

In a unanimous decision authored by Justice Thomas, the Supreme Court today affirmed the Federal Circuit’s en banc decision invalidating the patents asserted by Alice Corporation against CLS Bank International as ineligible for patent protection under 35 U.S.C. §101 because they are directed to an abstract idea. See Alice Corporation Pty. Ltd. v. CLS Bank International et al. (U.S. June 19, 2014). 

In an opinion by Justice Thomas, today’s Supreme Court opinion held that:

[T]he claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.

In applying Mayo step one, the Court determined that Alice’s claims were drawn to the abstract concept of intermediated settlement (i.e., the use of a third party to mitigate settlement risk). Rejecting Alice’s arguments that the abstract-ideas category is confined to preexisting fundamental truths that exist apart from any human action, the Court ruled that intermediated settlement has long been a fundamental practice in our system of commerce, and recognized that Alice’s claims to intermediated settlement were not meaningfully distinguishable from the risk hedging claims it previously held to be abstract in Bilski v. Kappos, 561 U.S. 593 (2010).

In a brief concurring opinion, Justice Sotomayor, joined by Justices Ginsburg and Breyer, opined that claims to business methods are ineligible per se for patent protection, because they do not qualify as a process under 35 U.S.C. §101.

See note from WilmerHale and prior blog posts below.

Machines v Lawyers

"Some observers, not implausibly, blame the recession for these developments. But the plight of legal education and of the attorney workplace is also a harbinger of a looming transformation in the legal profession. Law is, in effect, an information technology—a code that regulates social life. And as the machinery of information technology grows exponentially in power, the legal profession faces a great disruption not unlike that already experienced by journalism, which has seen employment drop by about a third and the market value of newspapers devastated. The effects on law will take longer to play themselves out, but they will likely be even greater because of the central role that lawyers play in public life."

See Full Article - Machines v. Lawyers

Privacy in the Digital Era

The Australian Government announces the release of the Discussion Paper for this Inquiry, Serious Invasions of Privacy in the Digital Era (DP 80).  

The Discussion Paper provides a detailed account of ALRC research so far, and includes 48 proposals and a number of questions for people to consider and provide feedback on. The ALRC is proposing a model for a new statutory cause of action for serious invasions of privacy to be included in a new Commonwealth Act, and also is putting forward other alternative proposals to strengthen privacy protection.

The Discussion Paper is available in HTML, PDF, and as an ebook.

·         See Media Release >>

·         See Discussion Paper >>

Software and Internet patents

On Monday, the United States Supreme Court is scheduled to hear arguments in what has been described as the most important intellectual property case in a decade: Alice v. CLS Bank.  One party in this case is an Australian company, that owns the patent in question.

Prior blog posts are here and here. 

A NYTimes opinion article is worth reading.

Cloud Speeds

An interesting non-legal article looking at the various Cloud services and comparing speeds:  ComputerWorld.

Who Owns the Internet?

Two Harvard Law School experts — Jonathan Zittrain '95, Professor of Law and Faculty Co-Director, Berkman Center for Internet and Society, and Susan Crawford, John A. Reilly Visiting Professor in Intellectual Property — weigh in on a lawsuit in federal court that may decide whether Web access remains open and neutral.  Read More.  

Unravel the law

A great new legal search tool from Stanford:  Ravel.

Privacy Guidelines in Australia

The Privacy Guidelines are no longer consultation drafts – the final version was released today (link below).

They have reversed their view on the application of the Privacy Act to foreign website operators.  So much so that the guidelines now conclude that “Where an entity merely has a website that can be accessed from Australia, this is generally not sufficient to establish that the website operator is ‘carrying on a business’ in Australia”

Privacy Guidelines

Signature in Email

An interesting recent Federal Circuit Court decision to the effect that a person’s name at the bottom of an email was a signature - 
Austral-Asia Freight Pty Ltd v Turner [2013] FCCA 298
http://www.austlii.edu.au/au/cases/cth/FCCA/2013/298.html

Lawsuit over bad Yelp review

See this story regarding a lawsuit by a builder against his customer who posted a bad review on Yelp.

The article includes the following:

For a while, online reviewers have been free to say whatever they like about businesses without much in the way of fact-checking by the review websites that host their comments.

And because review sites like TripAdvisor, Yelp and Angie’s List often refuse to remove negative reviews without a court injunction, many businesses resort to responding to reviewers personally through the sites.

But others, like Deitz, have decided to cut out the middle man and lawyer up — no doubt because sites like Yelp are exerting increasing influence over consumers' buying decisions, from which plumber to hire to fix a leaky toilet to which spa to patronise to get a massage.

Thanks to their efforts, anonymity as an online reviewer may be a thing of the past.

In a major win for business owners in the US, a Virginia appeals court ruled earlier this month that Yelp must reveal the identities of seven users who wrote negative reviews of a local carpet cleaning business.

In that case, the customers weren't actually patrons of the shop, business owner claimed, which made their reviews false statements rather than opinions protected by the First Amendment. Yelp wasn't happy about the ruling, but they forked over the names anyway.

Popularity of new gTLDs

This is an interesting set of infographics regarding the new gTLDs.

See www.webmechanix.com/how-to-react-to-new-generic-top-level-domains

COPYRIGHT POLICY, CREATIVITY, AND INNOVATION IN THE DIGITAL ECONOMY

On December 12, 2013, the U.S. Department of Commerce’s Internet Policy Task Force held a roundtable to discuss issues involving copyright and the internet raised in the recently released “Green Paper.”  A copy of the Green Paper can be found here or here.

Lessig v. Liberation over takedown notice

Professor Lessig has sued Australian music label Liberation in the U.S. in relation to a computer generated take down notice sent to YouTube, to take down video of Lessig giving a seminar in Asia that included music licensed exclusively to Liberation in Australia.

If this case proceeds, there are interesting jurisdictional and fair use / fair dealing points that arise.  If the use of the music was fair use in the U.S., but not fair dealing in Australia, and the video is available in Australia, one would assume that there is copyright infringement in Australia.

Brisbane Times article
The video in question
EFF press release

Google and Defamation and Jursidiction

Google Australia has a defamation case against it tossed out, on the basis that it is Google Inc. that is operating the search engine and Blogger.

See SMH

Informational Privacy on the Web

A Data Broker Offers a Peek Behind the Curtain

The Acxiom Corporation is to open a Web site that will allow individual consumers to see some of the information that the company has collected about them.

http://nyti.ms/17slfwv

Computer Implemented Method Patentable in Australia

RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871

Broadly, the claimed invention related to the assessment of the competency or qualifications of individuals with respect to recognised standards. It was implemented using a computer.

Claim 1 included the following steps:

(a)    a computer retrieving via the internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;

(b)    the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;

(c)    an assessment server presenting the automatically-generated questions via the internet to a computer of an individual requiring assessment; and

(d)    receiving from the individual via their computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and experience in relation to each of the elements of competency and performance criteria, wherein at least one said response includes the individual specifying one or more files on their computer which are transferred to the assessment server.

The Federal Court of Australia today determined that this claim recited patentable subject matter.

Thredbo.com Decision

The Federal Court recently released its decision in the case brought by the owners of thredbo.com.au against thredbo.com.

The decision is: Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2013] FCA 563

realestate.com.au Federal Court decision

On Friday, the Federal Court of Australia handed down its decision in the realestate.com.au v. realestate1.com.au case.

The decision is [2013] FCA 539.

The case concerned a generic term, that was used as a domain name, but where significant advertising had built up recognition of the brand.  The Applicant lost on consumer protection grounds but was successful in relation to trade mark infringement.  The case shows the risks of using a dictionary term as a brand, and the importance of a trade mark registration.

"245    However that observation about the ordinary case does not really address (as neither Perram J nor Chesterman J were called upon to address) a situation where the highly descriptive nature of the second-level domain (“realestate”) makes a suffix such as “.com.au” essential to brand or name recognition. Consumers with some familiarity with realestate.com.au as a brand are likely to look beyond “realestate” and to the entire domain name in order to establish identity. A real danger of confusion again arises because in the scanning process which may occur on a search results page, some consumers will miss the indistinctive “1”. I have therefore concluded that the use of “realestate1.com.au” as part of an internet address on a search results page, constituted the use by Real Estate 1 of a mark that was deceptively similar to REA’s realestate.com.au trade marks."

Hotel Executive In Trouble over TripAdvisor reviews

A hotel PR person posted TripAdvisor reviews (mostly about restaurants) and got it serious trouble for it.  See stories here and here.

ASX rules on Social Media

The Australian Stock Exchange has continuous disclosure rules.  See Guidance Note 8, which has guidance about social media.  See also BRW article.

Not Cyberspace but Space

Copyright in Space:
How does it work?

Are Online Reviews Reliable?

A recent newspaper article discusses whether online review websites, such as TripAdvisor, are reliable.

See Bad Reputation.

U.S. Patent Decision - The Alice Case

CLS Services v. Alice Corporation was decided yesterday by the Court of Appeals for the Federal Circuit, en banc.  See Judgment.  Alice Corporation is an Australian company.  Its U.S. patent was held to be invalid as it did not claim patentable subject matter.

"Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101."

There were a number of judgments.  The footnote to one judgment states:

"No portion of any opinion issued today other than our Per Curiam Judgment garners a majority. The court is evenly split on the patent eligibility of the system claims. Although a majority of the judges on the court agree that the method claims do not recite patent eligible subject matter, no majority of those judges agrees as to the legal rationale for that conclusion. Accordingly, though much is published today discussing the proper approach to the patent eligibility inquiry, nothing said today beyond our judgment has the weight of precedent."

Copyright in the Digital Era

A recent note on copyright:

Seven Copyright Principles for the Digital Era 

By John Villasenor. Brookings Institution, February 5, 2013 

http://www.brookings.edu/blogs/up-front/posts/2013/02/05-copyright-principles-villasenor    

YouTube redesign

YouTube has had a revamped look for channels in limited beta testing since early February, but it's now ready to spread the new-layout love to interested folks. Dubbed "One Channel," the design refresh places an emphasis on making a user's page look slick across different screen sizes and devices, adapting its style for the occasion -- yes, even on TVs. Along with a look that provides more visual breathing room, a wide image called Channel Art adorns the top of a page, giving the whole affair a stronger Google+ vibe. Now, channel owners can even snag a visitor's attention with a trailer that'll greet them if they aren't a subscriber. The refresh also introduces the ability to organize video playlists with custom sections. Raring to take Mountain View up on the fresh looks? Jab the second source link to get started. If you change your mind after taking the plunge, however, Google's letting users switch back to the old format for a limited time.

Why do you think that Google is doing this?

Australian Federal Court Limits Patentability

A recent Australian Federal Court decision limits the scope of patent protection for business methods implemented by computer.  The invention in question related to securities investing and, more specifically, to construction and use of passive portfolios and indexes.

The court denied patentability, stating:

"The implementation of the method of the claimed invention by means of a computer, at the level articulated in claim 1, is no more than the modern equivalent of writing down the index on pieces of paper. On the face of the Specification, there is no patentable invention in the fact that the claimed method is implemented by means of a computer. The Specification asserts a patentable invention, not in the use of the computer, but in the particular series of steps that give rise to the generation of the index. Those steps could readily have been carried out manually. The aspect of computer implementation is nothing more than the use of a computer for a purpose for which it is suitable. That does not confer patentability.

The enquiry into what constitutes a patentable invention is still evolving. It is not to be tied to particular notions of what was understood to be a manufacture at any particular point in time. However, while new developments in technology might be seen to widen the notion of what is patentable, the modern availability of computers as a standard means of implementing arithmetic or computational processes, which could have been implemented manually in the past, does not carry with it any broadening of the concept of a patentable invention."

See Research Affiliates LLC v Commissioner of Patents [2013] FCA 71

Google Australia does not control the Google search engine

Google Australia Pty Ltd does not like being sued in Australia.  In a recent Australian lawsuit, Google said:

• Google Australia is a wholly owned subsidiary of Google International LLC and Google Inc is the ultimate holding company 
• Google Australia is not authorised to, and has no ability to, control or direct the conduct of Google Inc and is not responsible for the day-to-day operations of Google Inc 
• Google Inc owns and operates the domains google.com.au and google.com. The search engines at the domains mentioned are exclusively provided by, operated by, and controlled by Google Inc 
• Google Australia does not have any ability to control or direct action in respect of blocking URLs from google.com.au

The Australian court found: "There is no reasonable prospect of Mr Rana proving that Google Australia owns the domains in question, or that it has the ability to control or direct the conduct of Google Inc."  Thus, the claims against Google Australia were dismissed.

The Court also stated:
"In short, whether or not a search engine could be considered a publisher of defamatory material is not settled in Australia, and accordingly, it would not be appropriate to refuse to give leave to serve the proceedings and on that basis effectively dismiss Mr Rana’s claim against Google Inc: A v Google New Zealand Ltd"

See Rana v Google Australia Pty Ltd [2013] FCA 60 

IP Theft

"Our message is quite clear: the protection of intellectual property and trade secrets is critical to all intellectual property rights holders, whether they be from the United States or whether they be from Chinese companies or other companies around the world,'' Robert Hormats, the under secretary of state for economic growth, energy and the environment, said.

Though China is regarded as the most aggressive actor, Mr Hormats said other countries are guilty as well. He cited Russia and India as two countries active in the theft of intellectual property.

See SMH

Social Networks and Right of Publicity

From a Kenyon & Kenyon newsletter looking at legal trends for 2013:

An important “Right of Publicity” issue for 2013 is the use by social networks of their members' names and/or likenesses in advertising. Many social networks have broad Terms of Service which purport to allow them to exploit any content that a member posts on the networks' websites. Social networks take the position that these service terms permit them to use aspects of their members’ identities in advertisements appearing within the social networks. As social networks grow and compete for advertiser dollars, they will naturally want to allow advertisers to create the most effective ads possible. Studies have shown the persuasive potential of an online connection's recommendations (due to the apparent lack of bias), and therefore many advertisers are likely to request advertising that uses the identities of a social network's users.

New Australian Patent Law Book

A new Kindle Book: Patent Law for Australian Inventors
Also available in Apple iBook store.

Internet Simulcasting Decision

The Australian Federal Court recently decided a lawsuit involving radio stations simulcasting their broadcasts via the Internet.

"A broadcasting service is the delivery, in a particular manner, of a radio program, consisting of matter intended to entertain, educate or inform. Thus the delivery of the radio program by transmission from a terrestrial transmitter is a different broadcasting service from the delivery of the same radio program using the internet."

See Decision Phonographic Performance Company of Australia Limited v Commercial Radio Australia Limited [2013] FCAFC 11
See also Australian Copyright Council alert

CLS Bank v Alice case to be heard en banc

From a Kenyon & Kenyon newsletter:

Patent-eligibility of inventions implemented by computers: CLS Bank v. Alice Corp
The district court had held that the invention, which related to methods and systems for exchanging financial obligations between parties, was an abstract idea—ineligible for patent protection under 35 U.S.C. § 101. A Federal Circuit panel disagreed, holding that the claimed invention complies with § 101 of the patent code. En banc, the Federal Circuit will address two issues:

I. What test should the court adopt to determine whether a computer implemented invention is a patent ineligible “abstract idea;” and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

II. In assessing patent eligibility under 35 U.S.C. § 101 of a computer implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

Given the large number of software patents that issue each year, this decision could significantly impact numerous litigations, licensing negotiations, and prosecution practices.

Google not responsible for contents of advertisements

The High Court of Australia decided today that Google is not responsible for the content of advertisements placed via its AdWords program.

A key reason was the following at [69]:

“That the display of sponsored links (together with organic search results) can be described as Google's response to a user's request for information does not render Google the maker, author, creator or originator of the information in a sponsored link. The technology which lies behind the display of a sponsored link merely assembles information provided by others for the purpose of displaying advertisements directed to users of the Google search engine in their capacity as consumers of products and services. In this sense, Google is not relevantly different from other intermediaries, such as newspaper publishers (whether in print or online) or broadcasters (whether radio, television or online), who publish, display or broadcast the advertisements of others.”

See:
Court Decision, Google Inc v Australian Competition and Consumer Commission [2013] HCA 1
SMH
Technology Spectator
KWM Bulletin

Privacy for Mobile Apps

From The New York Times:

F.T.C. Suggests Guidelines on Privacy for Mobile Apps

The Federal Trade Commission said the mobile industry should include a do-not-track feature in software and apps and take other steps to safeguard personal information.

http://nyti.ms/X0xWcG

Too Many Lawyers

Law Schools’ Applications Fall as Costs Rise and Jobs Are Cut

Applications are headed for a 30-year low, reflecting increased concern over soaring tuition, crushing student debt and diminishing prospects of lucrative employment upon graduation.

http://nyti.ms/14xHPnF

Lawsuit Against Google For AutoComplete

An Australian doctor is suing Google for regarding its auto-complete function, that suggests the word "bankrupt" when his name is entered in the search box.
See Full Story

Does Disneyworld have privacy and copyright rights?

Lawyers nightmare, in relation to film made at Disneyworld, Escape from Tomorrow.

See also clip and NYTimes.

Kim Dot Com launches Mega

See video

User Generated Content and Opinions

A good article about TripAdvisor and its review system.
Using TripAdvisor

Book Sale

Netflix Facebook Blunder?

Netflix Inc said on Thursday securities regulators warned they may bring civil action against the company and its chief executive for violating public disclosure rules with a Facebook post, in a case that raises questions about how public companies communicate on social media.

The high-profile Silicon Valley CEO, Reed Hastings, dismissed the contention and said he did not believe the Facebook post was "material" information.

 Chicago Tribune and Forbes

Fake Facebook Copyright Notice

See Pogues Blog and Facebook Statement.  Facebook has not changed its rules regarding copyright ownership.

Google Street View Privacy Lawsuit

A privacy claim was made against Google for its StreetView product.  A Google camera car drove on to private property to take the photos.

See Boring v. Google.  Original Decision; Third Circuit decision

Is Law School Worth The Money?

See NY Times Article

"The graying of baby-boom lawyers creates opportunities. As more senior lawyers retire, jobs will open, even in the unlikely case that the law business doesn’t expand with an improving economy. More opportunity will open to women and minorities, too. As with any industry in transition, changes in the delivery of legal services create opportunities as well as challenges. Creative, innovative and entrepreneurial lawyers will find ways to capitalize on this."

You Can't Say That on The Internet

A BASTION of openness and counterculture, Silicon Valley imagines itself as the un-Chick-fil-A. But its hyper-tolerant facade often masks deeply conservative, outdated norms that digital culture discreetly imposes on billions of technology users worldwide.

See NY Times

Movember Fund Raiser

Please help my Movember efforts:  click here.

http://mobro.co/johnswinson

Copyright First Sale Doctrine Reviewed by Supreme Court

Can United States copyright owners block importation of copies of their works sold or distributed outside of the United States?

Confronting this apparently straightforward question, the U.S. Supreme Court heard oral argument on 29 October 2012, that revealed complex interactions of the relevant statutes and the difficult consequences flowing from alternative interpretations of those statutes. Kirtsaeng v. John Wiley & Sons, U.S. No. 11-697.  See oral argument transcript.

The case involves Wiley text books printed and sold in Thailand, and Kirtsaeng’s unauthorized importation and resale of those text books in the United States. Wiley sued, claiming that the importation was an infringement under 17 U.S.C. 602(a), and Kirtsaeng defended that he had a right to resell the publications purchased in Thailand under the first sale doctrine codified at 17 U.S.C. 109(a).

On review is the Second Circuit’s decision for Wiley that the text books printed in Thailand could not satisfy the limitation in Section 109(a) that the first sale right applies only to copies “lawfully made under this title,” which the Court interpreted as copies physically made in this country.

Google Liable for Defamation Based on Search Results

In a jury trial in Melbourne, Google was found to have defamed a Melbourne man by placing his photo next to underworld figures.

See SMH and WebProNews and IBT

Australian Domain Name Resales

Top 10 public .com.au domain sales
Source: domainerincome.com

Hardware.com.au - $33,333
Electricity.com.au - $30,933
Currencyconverter.com.au - $27,500
Websitedesign.com.au - $22,000
1300numbers.com.au - $20,000
Vitamins.com.au - $20,000
Fridges.com.au - $20,000
Wines.com.au - $19,000
Carparts.com.au - $18,011
Freestuff.com.au - $18,000

See: SMH

Do Not Track

THE campaign to defang the “Do Not Track” movement began late last month.

See:  NYT

Why are Google Maps So Much Better

This is a good post that explains why Google Maps are so good.  And see also this Atlantic article.  Some people have said that maps are the future of Google.  Photos below of Google Street View Bike People and Hiker.

The next big thing?

Are 3D printers the next big thing?  See Forbes article.

Software and Internet Patents

The U.S. Federal Circuit on October 9, 2012 granted en banc review of a case in which a Federal Circuit panel held that a claim must not be deemed inadequate under 35 U.S.C. §101 if, after taking all of the claim recitations into consideration, it is not “manifestly evident” that a claim is directed to a patent ineligible abstract idea. CLS Bank International v. Alice Corp., Fed. Cir., No. 11-1301, 10/9/2012.  Alice Corp is an Australian company, suing for patent infringement in the United States.

The en banc court vacated the panel decision and requested briefing on the following questions:

1. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
2. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

The panel decision stressed that patent eligibility must be determined by what is evident from specific, concrete applications of the ideas behind an invention disclosed in the claims. The panel opinion, written by Judge Linn in the wake of the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,  132 S. Ct. 1289 (2012), included the following observation:

[N]othing in the Supreme Court’s precedent, nor in ours, allows a court to go hunting for abstractions by ignoring the concrete, palpable, tangible, and otherwise not abstract invention the patentee actually claims. It is fundamentally improper to paraphrase a claim in overly simplistic generalities in assessing whether the claim falls under the limited “abstract ideas” exception to patent eligibility under 35 USC §101. Patent eligibility must be evaluated based on what the claims recite, not merely on the ideas upon which they are premised.

The challenged patents in this case are directed to a computerised trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate “settlement risk.” The district court granted a summary judgment motion that the claims were not patent eligible because they are directed to an abstract idea. On appeal the Federal Circuit panel reversed, concluding that the system, method, and media claims are directed to practical applications of an invention falling within the categories of patent eligible subject matter defined by Section 101.
To read the Court’s order for en banc review, click here; to read a summary of the panel decision and obtain a copy of Judge Linn’s opinion, click here.

Trial By Social Media

See article in SMH and in B & T magazine.

Hobart.com Domain Name Sale

An Australian domain name company has sold Hobart.com.au for $65,000 to a website hosting business after purchasing the website for just $875 back in 2005, highlighting the potential riches in buying and selling geographic domains.
See Article

Google Sued in New Zealand, and wins

Google NZ was sued for defamation.  The lawsuit was dismissed on summary judgment, because it was decided that the Google NZ entity was not carrying on business in New Zealand and had no control over the search engine.  The court left open the question of whether Google is responsible for defamatory material that it produces from its search engine.
See NZ Court Decision (A v. Google New Zealand Ltd) and comment.

Facebook Photo Removed

A business was found to have breached advertising standards in relation to a photo on Facebook.  See Smart Company

Donuts Applies for Most gTLDs

The single most aggressive bidder for lucrative new web domains is a little-known investment group: Donuts Inc. Its $57 million play for 307 new domains - more than Google, Amazon and Allstate combined - has prompted alarm among industry groups and internet watchdogs.

See SMH

Internet Pollution

See

Power, Pollution and the Internet 

Employees Violating Computer Misuse Policy

In July, the Fourth Circuit weighed in on the scope of the Computer Fraud and Abuse Act (CFAA) in WEC Carolina Energy Solutions, LLC v. Miller and found that the CFAA is not broad enough to impose liability on an employee who has lawful access to his employer's electronic information but later misuses that information - such as by stealing the employer's electronic trade secrets. In taking this narrow approach to the CFAA and siding with the Second and Ninth Circuits, the Fourth Circuit has widened the circuit split over whether the CFAA applies to disloyal employees who violate the computer use policies of their employer. In this Legal Alert, Audra Dial and John Moye discuss the Fourth Circuit's recent ruling and its impact for employers drafting computer use policies as well as companies pursuing trade secret claims through the CFAA.

See kilpatrickstockton.com

United States of America v Dotcom

United States of America v Dotcom [2012] NZHC 2076 (16 August 2012) http://www.nzlii.org/nz/cases/NZHC/2012/2076.html