Amster Rothstein & Ebenstein, LLP - Intellectual Property Law http://www.arelaw.com/ Amster, Rothstein & Ebenstein is a well-established mid-sized legal firm engaged exclusively in the practice of intellectual property law, including patents, trademarks, copyrights, unfair competition and related matters. Since our inception in 1953, we have earned an impressive record of successes for our clients, from individuals to multinational corporations, both domestic and worldwide. These successes are borne of the vigorous application of legal expertise, innovation and objective analysis. en Wed, 14 Apr 2021 14:51:50 +0000 Floodlight Design CMS Event Spotlight: Charley Macedo to Speak at the 2021 World IP Forum on Best Practices for Protecting and Licensing Training Set Data and Software for Machine Learning and AI http://www.arelaw.com/publications/view/charley-macedo-to-speak-at-the-2021-world-ip-forum-on-best-pract/ Partner Charley Macedo will be a featured speaker at the <a href="https://www.worldipforum.com/wipf-speakers.php?country=&amp;category=&amp;search=macedo&amp;button=Search">2021 World IP Forum </a>where he will speak about &ldquo;Best Practices for Protecting and Licensing Training Set Data and Software for Machine Learning and Other Forms of Artificial Intelligence in the U.S.&rdquo;<div>&nbsp;</div><div>Charley&rsquo;s panel will discuss best practices to protect and monetize such data and software, and explore:</div><ul><li>How data and software is used in machine learning and other forms of artificial intelligence</li><li>Best practices used in the U.S. to protect data and software</li><li>Best practices used in the U.S. to license data and software</li></ul><a href="https://www.worldipforum.com/wipf-speakers.php?country=&amp;category=&amp;search=macedo&amp;button=Search">Learn more and register</a>.&nbsp;<br type="_moz" /><br type="_moz" /> Mon, 26 Apr 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-to-speak-at-the-2021-world-ip-forum-on-best-pract/ ARE Copyright Alert: Supreme Court Holds Google’s Use of Oracle’s Java API Packages Constitutes Fair Use Under 17 U.S.C. § 107 http://www.arelaw.com/publications/view/are-copyright-alert-supreme-court-holds-googles-use-of-oracles-j/ On April 5, 2021, the U.S. Supreme Court finally addressed the longstanding dispute between Google and Oracle over Google&rsquo;s alleged copyright infringement of JAVA&rsquo;s declaring code, which is a type of software code.<br /><br />In a 6-2 split decision in which Justice Barrett did not participate, the Court (per Justice Breyer) found that Google&rsquo;s literal copying of 11,500 lines of Oracle&rsquo;s code was fair use. The Court declined to address the question as to whether declaring code is capable of copyright protection, although there were numerous statements in the majority opinion to suggest that it does not fit neatly under traditional copyright protection.<br /><strong><br />Majority Opinion</strong><br /><br />The majority applied the traditional four factors in its fair use analysis, including &ldquo;(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.&rdquo; 17 U.S.C. &sect; 107. However, it considered the factors in non-numerical order.<br /><br />Starting with the second factor, the nature of the copyrighted work, the Court drew a distinction between the &ldquo;declaring code&rdquo; at issue here, which essentially is a set of programming shortcuts, and other more familiar types of code, such as &ldquo;implementing code&rdquo; not at issue here. The Court opined that &ldquo;declaring code is, if copyrightable at all, further than are most computer pro&shy;grams (such as the implementing code) from the core of cop&shy;yright.&rdquo; Google LLC v. Oracle America, Inc., No. 18-956, slip op. at 24 (U.S. Apr. 5, 2021). That said, the majority declined to analyze whether the declaring code was copyrightable, but just &ldquo;assumed&rdquo; that it was.<br /><br />With this in mind, the Court turned to the first factor and found that Google&rsquo;s use of Oracle&rsquo;s declaring code was transformative, even though it was commercial, since its use of the code created a &ldquo;different task-related system for a different computing environment (smartphones).&rdquo; Id. at 29. In short, &ldquo;the &lsquo;purpose and character&rsquo; of Google&rsquo;s copying was transformative&mdash;to the point where this factor too weighs in favor of fair use.&rdquo; Id. at 27.<br /><br />The third factor also favored Google, the Court thought, because even though 11,500 lines of code is substantial, &ldquo;if one considers the entire set of software material in the [] Java API [&mdash;i.e., 2.86 million lines], the quantitative amount copied was small.&rdquo; Id. at 28.<br /><br />The fourth and final factor of the fair use analysis examines the effect on the potential market. Under this factor, the Court pointed to evidence of record showing that &ldquo;Android [is] not a market substitute for Java&rsquo;s software&rdquo; and that Oracle would &ldquo;benefit from the broader use of the Java programming language in a new platform like Android, as it would further expand the network of Java-trained programmers.&rdquo; Id. at 32.<br /><br />Given that all four fair use factors favored Google, the Court found that Google&rsquo;s use of Oracle&rsquo;s JAVA declaring code was excused from infringement.<br /><strong><br />Dissent</strong><br /><br />A sharp dissent by Justice Thomas, joined by Justice Alito, argued that Oracle&rsquo;s software code was indeed copyrightable and that there was in fact no fair use. In particular, Justice Thomas argued that &ldquo;[t]he Court wrongly sidesteps the principal question that we were asked to answer: Is declaring code protected by copyright? I would hold that it is.&rdquo; Id., dissenting slip op. at 4.<br /><br />Because he would find declaring code to be copyrightable, he thought that the second factor should favor Oracle.<br /><br />Turning to the fourth factor, Justice Thomas argued that Google&rsquo;s use was economically devastating to Oracle, since Google&rsquo;s inclusion of Oracle&rsquo;s code in its Android operating system, which was provided for free to device manufacturers, directly undercut Oracle&rsquo;s efforts to license Java to those same device manufacturers.<br /><br />The third factor also favored Oracle, he argued, since although it is true that Google only copied a small portion of the Java API considered as a whole, it copied substantially all of the declaring code, which is what attracted programmers to Java in the first place, and &ldquo;made Android a &lsquo;market substitute&rsquo; for &lsquo;potentially licensed derivatives&rsquo; of Oracle&rsquo;s Java platform.&rdquo; Id. at 18.<br /><br />The only factor that might favor Google, in Justice Thomas&rsquo; view, was the first, since commercial uses sometimes are transformative. That said, he argued that &ldquo;Google&rsquo;s repurposing of Java code from larger computers to smaller computers&rdquo; should not be considered transformative. Id. at 16. This alters &ldquo;the definition of &lsquo;transformative&rdquo; and &ldquo;eviscerates copyright&rdquo; in the context of declaring code. Id. at 16-17.<br /><br /><strong>Conclusion<br /></strong><br />Although the long-running dispute between Google and Oracle may soon be ending, its impact on copyright law is likely to be long lasting. In this decision, which purports not to determine the copyrightability of declaring code, the Court set forth an analysis that will feed legal debate and likely be the subject of extensive legal briefing in the years to come. For now, what is crystal clear is that Google has successfully taken Oracle&rsquo;s code under a theory of fair use.<br /><br /> <br /><br />Charles R. Macedo is a partner, and David P. Goldberg and Olivia Harris are associates, at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in intellectual property issues, including litigating copyright, trademark, patent and other intellectual property disputes. Charley was counsel for the New York Intellectual Property Law Association in its amicus brief in Support of Neither Party, filed in the U.S. Court of Appeals for the Federal Circuit.<br /><br /> Tue, 13 Apr 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/are-copyright-alert-supreme-court-holds-googles-use-of-oracles-j/ Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Appellee in Ericsson Inc. v. Samsung Electronics Co., Ltd. http://www.arelaw.com/publications/view/brief-for-amicus-curiae-nyipla-20210409/ Click to downloa<img src="https://www.arelaw.com/admin/js/fckeditor/editor/images/spacer.gif" class="TB_Button_Image" style="background-position: 0px -528px; background-image: url(" https:="" www.arelaw.com="" admin="" js="" fckeditor="" editor="" skins="" default="" alt="" />d PDF:&nbsp;<a href="/images/file/2021-04-09%20(ECF%20No_32)%20Brief%20for%20Amicus%20Curiae%20NYIPLA.pdf" target="_blank">Brief of New York Intellectual Property Law Association as <em>Amicus Curiae</em> in Support of Appellee in <em>Ericsson Inc. v. Samsung Electronics Co., Ltd.</em></a> Fri, 09 Apr 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/brief-for-amicus-curiae-nyipla-20210409/ USPTO to Speak at the NYIPLA PTAB Committee Meeting on April 6 to Share Insights on Ex Parte Appeal Process http://www.arelaw.com/publications/view/-uspto-to-speak-at-the-nyipla-ptab-committee-meeting-on-april-6-/ <p class="MsoNormal" style="margin: 0in; color: rgb(34, 34, 34); line-height: normal; font-size: 11pt; font-family: Calibri, sans-serif;">At the April 6 meeting of the PTAB Committee of the NYIPLA, a distinguished group of USPTO officials, including a PTAB Administrative Patent Judge and a TC Director, will return to share insights on ex parte appeal practice. Topics will include:</p><p class="MsoNormal" style="margin: 0in; color: rgb(34, 34, 34); line-height: normal; font-size: 11pt; font-family: Calibri, sans-serif;">&nbsp;</p><ul><li>Pre-Appeal Conferences &ndash; led by TC Director Joe Thomas and a Supervisory Patent Examiner Brian Sircus</li><li>Appeal Timelines &ndash; led by Judge Michael Cygan</li><li>Post-Appeal Actions By Applicant &ndash; led by PTAB Patent Attorney Tom Volper</li></ul><p class="MsoNormal" style="margin: 0in; color: rgb(34, 34, 34); line-height: normal; font-size: 11pt; font-family: Calibri, sans-serif;">&nbsp;</p><p class="MsoNormal" style="margin: 0in; color: rgb(34, 34, 34); line-height: normal; font-size: 11pt; font-family: Calibri, sans-serif;">There will be a Q&amp;A session afterward. This event is free to all NYIPLA members and PTAB Committee members. 1 CLE credit will be available. To register, please contact&nbsp;<a href="mailto:admin@nyipla.org" target="_blank" style="color: rgb(5, 99, 193);">admin@nyipla.org</a>.<br /><br />Partner Charley Macedo is co-chair of the PTAB Committee.&nbsp;</p> Tue, 06 Apr 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/-uspto-to-speak-at-the-nyipla-ptab-committee-meeting-on-april-6-/ Amster Rothstein & Ebenstein Announces 2021 Lawyer Promotions http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-announces-2021-lawyer-promotions/ &nbsp;Amster Rothstein &amp; Ebenstein, a full-service intellectual property law firm, is pleased to announce the promotion of&nbsp;<a href="https://www.arelaw.com/professional/bamos/" target="_blank">Brian Amos, Ph.D.</a>&nbsp;to partner and <a href="https://www.arelaw.com/professional/kbarkaus/">Keith Barkaus</a> to senior counsel effective on April 1, 2021.<div style="margin-bottom:0in;margin-bottom:.0001pt;line-height:&#10;normal">&nbsp;</div> <ul><li>Brian Amos is a former research neuroscientist who represents universities, research institutions and corporations in the preparation and prosecution of patent applications worldwide, predominantly in the fields of biotechnology, medical therapeutics and pharmaceuticals. He works closely with scientists, in-house counsel and Technology Transfer Offices to identify and inventory new patentable technologies; protect discoveries through patents; and commercialize intellectual property through licensing and development arrangements with other business entities. <a href="https://www.arelaw.com/professional/bamos/">Learn more about Brian&rsquo;s practice</a>.</li></ul><ul><li>Keith focuses his practice on client counseling and the preparation and prosecution of U.S. and foreign patent applications in technology innovations, including electrical devices, mechanical devices, computer hardware and computer software. Keith has prepared patentability, validity, right to use and infringement opinions and also conducted due diligence investigations. In addition, Keith also has significant litigation experience and Keith has worked on more than a dozen Inter Partes Review proceedings before the Patent Trial and Appeal Board in which he has represented both patent owners and requesters. <a href="https://www.arelaw.com/professional/kbarkaus/">Learn more about Keith&rsquo;s practice</a>.</li></ul> <div style="margin-bottom:0in;margin-bottom:.0001pt;line-height:&#10;normal">&nbsp;</div> <div style="margin-bottom:0in;margin-bottom:.0001pt;line-height:&#10;normal">&ldquo;During their time at the firm, Brian and Keith have each made valuable contributions to our clients, their colleagues and the firm, and we look forward to their continued success,&rdquo; said Managing Partner&nbsp;<a href="https://www.arelaw.com/professional/alocicero/" target="_blank">Anthony Lo Cicero</a>.</div> Wed, 24 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-announces-2021-lawyer-promotions/ Charley Macedo to Introduce 2021 AUTM Annual Meeting Keynote Speaker http://www.arelaw.com/publications/view/charley-macedo-to-introduce-2021-autm-annual-meeting-keynote-spe/ <div>On March 15, partner Charley Macedo will introduce the 2021 AUTM Annual Meeting opening plenary session and keynote speaker, astronaut Ellen Ochoa.</div><div>&nbsp;</div><div>Ellen Ochoa is the first Hispanic woman to go in space. She&rsquo;s also an inventor and only the second female director of NASA&rsquo;s Johnson Space Center. Ochoa will discuss the resonant issues that have defined her historic career, what we can learn about change, innovation and the culture of teams from her time at the upper reaches of NASA&rsquo;s leadership, and what we can do to ensure that more women and minorities find a place within STEM fields.</div><div>&nbsp;</div><div>ARE Law has been a longtime supporter of AUTM.&nbsp;</div><div>&nbsp;</div><div>Learn more about ARE lawyers <a href="https://www.arelaw.com/professional/cmacedo/">Charles Macedo</a> and <a href="https://www.arelaw.com/professional/bamos/">Brian Amos</a>&nbsp;who will be attending the AUTM Annual Meeting.</div><div style="margin: 0px; padding: 0px; border: 0px; font-variant-numeric: inherit; font-variant-east-asian: inherit; font-stretch: inherit; line-height: inherit; vertical-align: baseline;"><div style="margin: 0px; padding: 0px; border: 0px; font-variant-numeric: inherit; font-variant-east-asian: inherit; font-stretch: inherit; line-height: inherit; vertical-align: baseline;">&nbsp;</div></div> Mon, 15 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-to-introduce-2021-autm-annual-meeting-keynote-spe/ Charley Macedo, David Goldberg and Chandler Sturm Co-Author Article for Oxford University Press’s Journal of Intellectual Property Law & Practice on Appellate Decision Finding That Administrative Patent Judges Were Unconstitutionally Appointed http://www.arelaw.com/publications/view/macedo-goldberg-sturm-co-author-article/ Charley Macedo, David Goldberg and Chandler Sturm <a href="https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpaa197/6166299?guestAccessKey=ecbe2a73-db3b-4479-90a4-c2a0e1b41c28">co-authored an article</a> for Oxford University Press&rsquo;s Journal of Intellectual Property Law &amp; Practice on an appellate decision that found that administrative patent judges were unconstitutionally appointed. This case was the subject of multiple appeals to the U.S. Supreme Court<br /> <br />On October 31, 2020, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit issued a decision in Arthrex, Inc v Smith &amp; Nephew, Inc finding that administrative patent judges of the Patent Trial and Appeal Board were appointed in violation of the Appointments Clause of the US Constitution and instituting measures to remedy the situation. <br /> <br />On March 23, 2020, the Federal Circuit refused to the rehear the case sitting en banc. Since then, the panel decision has become the subject of multiple appeals to the US Supreme Court. We expect to learn in early autumn whether the U. S. Supreme Court decides to grant certiorari with respect to any of the appeals and review this important decision.<br /> <br /><a href="https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpaa197/6166299?guestAccessKey=ecbe2a73-db3b-4479-90a4-c2a0e1b41c28">Read the full article. </a> Fri, 12 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/macedo-goldberg-sturm-co-author-article/ Brief for Amicus Curiae in Minerva Surgical Inc. v. Hologic, Inc., CYTYC Surgical Products, LLC http://www.arelaw.com/publications/view/brief-for-amicus-curiae-in-minerva-surgical-inc-v-hologic-inc-cy/ Click to download the PDF: Brief in&nbsp;<a href="https://www.arelaw.com/images/article/link_pdf-1-1615340410-Minerva%20Amicus%20Brief.pdf">Minerva Surgical Inc. v. Hologic, Inc., CYTYC Surgical Products, LLC</a>&nbsp;<br /><br /><br /> Wed, 10 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/brief-for-amicus-curiae-in-minerva-surgical-inc-v-hologic-inc-cy/ Charley Macedo Provides Commentary to IPWatchdog on Potential Outcomes in Most Closely Watched Patent Case of the Term – Smith & Nephew v. Arthrex and What the Future Holds for APJs and the PTAB http://www.arelaw.com/publications/view/charley-macedo-provides-commentary-to-ipwatchdog-on-potential-ou/ Partner Charley Macedo <a href="http://bit.ly/3c1HeDo">provided commentary to IPWatchdog</a> on potential outcomes in the aftermath of the Supreme Court hearing oral arguments in the most closely watched patent case of the term, United States / Smith &amp; Nephew v. Arthrex on March 1.<br /><br /> IPWatchdog reached out to some of the amici in the case (such as Charley), as well as patent practitioners and other stakeholders, to get their take on how the hearing went and what the future holds for the Administrative Patent Judges (APJs) of the U.S. Patent and Trademark Office&rsquo;s Patent Trial and Appeal Board (PTAB).<br /><br /><a href="http://bit.ly/3c1HeDo">Read more</a>. Thu, 04 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-provides-commentary-to-ipwatchdog-on-potential-ou/ Charley Macedo, Christopher Lisiewski, Chandler Sturm Co-Author Oxford University Press Article on U.S. Supreme Court Precluding Judicial Review of Time-Bar Challenges of USPTO PTAB Institution Decisions http://www.arelaw.com/publications/view/charley-macedo-christopher-lisiewski-chandler-sturm-co-author-ox/ Charley Macedo, Christopher Lisiewski and Chandler Sturm published an Oxford University Press Journal of Intellectual Property Law &amp; Practice article on &ldquo;<a href="http://bit.ly/30aDbPR">U.S. Supreme Court Precludes Judicial Review of Time-Bar Challenges of USPTO PTAB Institution Decisions</a>.&rdquo;<br /><br /> In the article, the authors explore the implications of the Thryv, Inc v Click-to-Call Technologies, LP decision, in which the U.S. Supreme Court held that when the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office grants a petition for inter partes review and rejects a contention that the petition is time-barred under 35 USC section 315(b), that rejection is not reviewable on appeal.<br /><br /><a href="http://bit.ly/30aDbPR">Read the full article</a>. Thu, 04 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-christopher-lisiewski-chandler-sturm-co-author-ox/ ARE Copyright Alert: New York District Court Awards Seinfeld Fees Based on “Objectively Unreasonable” Copyright Claims Brought by Former Comedians in Cars Collaborator http://www.arelaw.com/publications/view/are-copyright-alert--new-york-district-court-awards-seinfeld-fee/ In a decision issued on February 26, 2021, a judge in the Southern District of New York held that Jerry Seinfeld is entitled to recover attorneys&rsquo; fees incurred defeating plaintiff&rsquo;s copyright claims barred by the Copyright Act&rsquo;s three-year statute of limitations, 17 U.S.C. &sect; 507(b). <em>Charles v. Seinfeld</em>, No. 18-cv-1196 (AJN), 2021 U.S. Dist. LEXIS 36461 (S.D.N.Y. Feb. 26, 2021).&nbsp;<br /><br /><div>Applying the factors considered for the attorney fee shifting provision of the Act, 17 U.S.C. &sect; 505, the Court found that, by waiting six years to file suit, plaintiff&rsquo;s claims were &ldquo;objectively unreasonable&rdquo; and &ldquo;[seemingly] opportunistic,&rdquo; and concluded that &ldquo;an award of fees would promote the purposes of the Copyright Act by deterring plainly time-barred claims.&rdquo; Id. at *8, 12-13.<br />&nbsp;</div><div><strong>Background&nbsp;</strong><br />&nbsp;</div><div>The case centers on plaintiff Christian Charles&rsquo;s claimed ownership of copyrights in Seinfeld&rsquo;s acclaimed series Comedians in Cars Getting Coffee based on the work Charles and his production company purportedly provided in the development of the pilot episode in 2011.&nbsp;<br />&nbsp;</div><div>Charles first alleged ownership in the show in 2011, requesting backend compensation from Seinfeld. Seinfeld immediately and repeatedly refused Charles&rsquo;s requests, making clear that Seinfeld disputed Charles&rsquo;s claim of ownership. In 2018, at least six years after Charles received notice of the ownership dispute, Charles filed suit, alleging copyright infringement.&nbsp;<br />&nbsp;</div><div>Seinfeld moved to dismiss on the ground that Charles&rsquo;s claims were time-barred by the Copyright Act&rsquo;s three-year statute of limitations, 17 U.S.C. &sect; 507(b). The District Court granted Seinfeld&rsquo;s motion and the Second Circuit affirmed, finding that because ownership&mdash;not infringement&mdash;was the dispositive issue, Charles&rsquo;s infringement claim accrued no later than 2012, when he was on notice that his ownership claim was in dispute. See <em>Charles v. Seinfeld</em>, 410 F. Supp. 3d 656 (S.D.N.Y. 2019), aff&rsquo;d, 803 F. App&rsquo;x 550 (2d Cir. 2020).&nbsp;&nbsp;<br />&nbsp;</div><div><strong>&ldquo;This Was Not a Close Case&rdquo;</strong><br />&nbsp;</div><div>Section 505 of the Copyright Act authorizes a court in its discretion to award a prevailing party reasonable attorney&rsquo;s fees in a copyright action. 17 U.S.C. &sect; 505. Courts consider a number of factors in a &sect; 505 analysis, with substantial weight given to the &ldquo;objective reasonableness&rdquo; of a party&rsquo;s claims. See <em>Kirtsaeng v. John Wiley</em> &amp; Sons, Inc., 136 S. Ct. 1979, 1988 (2016). Other factors include the frivolousness of the claims and the party&rsquo;s motivation in bringing suit. Id. at 1985.&nbsp;<br />&nbsp;</div><div>Declining to adopt the Magistrate Judge Parker&rsquo;s recommendation, Judge Nathan granted Seinfeld&rsquo;s motion for fees, finding, inter alia, that &ldquo;[u]nder controlling Second Circuit precedent, [Charles&rsquo;s] claims were plainly untimely&rdquo; and thus not objectively reasonable. Charles v. Seinfeld, 2021 U.S. Dist. LEXIS 36461 at *7.</div><div>Judge Nathan rejected Charles&rsquo;s contention that the Sixth Circuit&rsquo;s decision in Everly v. Everly, 958 F.3d 442 (6th Cir. 2020)&mdash;decided after the Court&rsquo;s dismissal of Charles&rsquo;s claims&mdash;supports a finding that his claims were not, in fact, objectively unreasonable.&nbsp;<br />&nbsp;</div><div>In Everly, the &ldquo;Sixth Circuit held that a claim asserting an author&rsquo;s termination-of-transfers right [under Section 203 of the Copyright Act] does not accrue until another person repudiates the claimant&rsquo;s status as an author. In this context, another person&rsquo;s claim to own the copyright does not start the clock, because it does not necessarily give the author notice that their claim of authorship is disputed.&rdquo; <em>Charles v. Seinfeld</em>, 2021 U.S. Dist. LEXIS 36461 at *9-10 (citing Everly, 958 F.3d at 452-53).<br />&nbsp;</div><div>However, &ldquo;[c]ases involving the termination-of-transfers right, [Everly] explained, are different from &lsquo;ownership cases in which a defendant has raised a statute of limitations defense based on the defendant's repudiation of the plaintiff's authorship.&rdquo; Id. at 11 (quoting Everly, 958 F.3d at 453). Accordingly, Judge Nathan explained, &ldquo;[Charles&rsquo;s] claims would be as unreasonable after Everly as they were before that case was decided.&rdquo; Id.&nbsp;</div><div>&nbsp;</div><div>We will continue to monitor and report on developments in this area of copyright law. In the meantime, please feel free to contact us to learn more.</div><div><br /><br /><em>Douglas A. Miro is a partner, and Olivia Harris is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in intellectual property issues, including litigating copyright, trademark, patent, and other intellectual property disputes. The authors can be reached at </em><a href="mailto:dmiro@arelaw.com "><em>dmiro@arelaw.com</em></a><em> and</em><a href="mailto:oharris@arelaw.com"><em> oharris@arelaw.com</em></a><em>.&nbsp;</em></div><div>&nbsp;</div><div>&nbsp;</div> Thu, 04 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/are-copyright-alert--new-york-district-court-awards-seinfeld-fee/ Event Spotlight: NYIPLA PTAB Committee Tackles Arthrex Oral Argument at March 2 Meeting http://www.arelaw.com/publications/view/event-spotlight-nyipla-ptab-committee-tackles-arthrex-oral-argum/ The next monthly meeting of the NYIPLA PTAB Committee on March 2 at 4:00 p.m. ET, will discuss the oral argument from the day prior in Arthrex v. Smith &amp; Nephew. (CLE credit will be offered).<div>&nbsp;</div><div>Arthrex v. Smith &amp; Nephew: As advocated by amicus curiae Askeladden LLC (represented by co-chair Charley Macedo and Member Chandler Sturm from Amster, Rothstein &amp; Ebenstein LLP) and NYIPLA, the Supreme Court only accepted the threshold questions as to whether PTAB APJs were principal or inferior officers for purposes of the Appointment Clause of the U.S. Constitution, and if so, did the &ldquo;fix&rdquo; work.</div><div>&nbsp;</div><div>We will begin our session with a presentation including a brief refresher of the Arthrex case prior to oral arguments and discuss what the parties argued during the oral argument held on March 1, 2021.</div><div>&nbsp;</div><div>Member Chandler Sturm will be helping prepare this presentation.</div><div>&nbsp;</div><div>We will then open up the discussion to the committee to share their thoughts and opinions on these important issues.</div><div>&nbsp;</div><div>There is no charge to PTAB Committee members to attend, and CLE will be available.</div><div>&nbsp;</div><div>Every month, the NYIPLA PTAB Committee holds video conference calls to discuss the latest and greatest events involving the PTAB. All members of the NYIPLA are welcome to join the PTAB Committee at no extra cost and participate in these discussions and presentations.</div><div>&nbsp;</div><div>If you are already registered as a member, you should have the Zoom log-in information. If you are not, or do not have log-in information, please contact Co-Chair, ARE Law partner Charley Macedo or committee coordinator ARE Law associate Chris Lisiewski.</div> Tue, 02 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/event-spotlight-nyipla-ptab-committee-tackles-arthrex-oral-argum/ Charley Macedo and David Goldberg to Present NYIPLA Webinar on Getting Ready for Arthrex Oral Arguments: Hear What Amicus Are Saying on Whether PTAB ABJs Were Properly Appointed http://www.arelaw.com/publications/view/charley-macedo-and-david-goldberg-to-present-nyipla-webinar-on-g/ <div>At the urging of the New York Intellectual Property Law Association (NYIPLA) -<a href="https://arelaw.com/images/file/Amicus%20Brief%20on%20Behalf%20Askeladden%20LLC%20in%20U_S_%20v_%20Arthrex.pdf"> see our brief here</a> - the U.S. Supreme Court has agreed to hear on March 1, 2021 whether PTAB APJs were &ldquo;inferior&rdquo; officers properly appointed under the Appointment&rsquo;s Clause of the U.S. Constitution, and if not, whether the &ldquo;fix&rdquo; by the Federal Circuit worked. <br /><br />NYIPLA is putting together a blue-ribbon panel of amicus curiae and thought leaders on this issue to present a summary of the arguments submitted in the briefing on February 25 at 4pm. This will be a great primer before the oral argument.</div><div>&nbsp;</div><div>Charley Macedo, co-chair of the PTAB Committee and David Goldberg, co-chair of the Amicus Briefs Committee, <a href="https://www.nyipla.org/assnfe/ev.asp?ID=1372">will be leading the discussion</a>, which will include video presentations by various stakeholders on their respective positions.<br /><br />Charley served as lead counsel to the NYIPLA on this matter.&nbsp;</div><div>&nbsp;</div><div><a href="https://www.nyipla.org/assnfe/ev.asp?ID=1372">Register here</a>.</div><div>&nbsp;</div> Thu, 25 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-and-david-goldberg-to-present-nyipla-webinar-on-g/ Charley Macedo, David Goldberg and Chandler Sturm Co-Author Article for IP Watchdog on Getting Ready for Arthrex: What the Amici Are Saying http://www.arelaw.com/publications/view/charley-macedo-david-goldberg-and-chandler-sturm-co-author-artic/ Charley Macedo, David Goldberg and Chandler Sturm co-authored an article for IPWatchdog titled, &ldquo;<a href="http://bit.ly/3dHDedV">Getting Ready for Arthrex: What the Amici Are Saying</a>.&rdquo; The U.S. Supreme Court has agreed to hear, on March 1, whether administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are &ldquo;inferior&rdquo; officers properly appointed under the Appointments Clause of the U.S. Constitution and, if not, whether the &ldquo;fix&rdquo; by the Federal Circuit in Arthrex v. Smith &amp; Nephew, 941 F.3d 1320 (Fed. Cir. 2019) worked.<div>&nbsp;</div><div>Thirty-one separate amicus briefs on the merits were submitted in this matter, and they present a wide variety of views on how the Supreme Court should handle the questions presented.</div><div>&nbsp;</div><div>On February 25, the New York Intellectual Property Law Association (NYIPLA), will be presenting a special webinar titled &ldquo;Getting Ready for Arthrex Oral Arguments,&rdquo; which will summarize the issues presented and include presentations by representative amici on their respective positions.</div><div>&nbsp;</div><div><a href="http://bit.ly/3dHDedV">This article delves into the questions the Supreme Court agreed to hear on the case</a>.</div><div>&nbsp;</div><div>&nbsp;</div> Wed, 24 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-david-goldberg-and-chandler-sturm-co-author-artic/ Amster Rothstein & Ebenstein Recognized as a Leading Law Firm by the 2021 WTR 1000 and Max Vern Recognized as Top Lawyer http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-recognized-as-a-leading-law-firm-by-/ Amster Rothstein &amp; Ebenstein was once again recognized as a leading firm by the 2021 World Trademark Review WTR 1000, the global leading resource for legal trademark expertise.&nbsp;<div>&nbsp;</div><div>The firm was described by the WTR as &quot;demonstrating great agility, commitment and rock-solid IP fundamentals&quot; and providing &quot;first-rate and contemporary brands service to US and global clients, which reward it with enduring loyalty.&quot;</div><div>&nbsp;</div><div>We are proud to announce that partner Max Vern has moved up to the Top &ldquo;Gold&quot; Tier in the Prosecution and Strategy category.<br /><br /> The WTR noted that Max, &quot;understands business and gives sensible advice in alignment with clients&rsquo; wider commercial objectives. He is brilliant at explaining complicated IP issues to non-lawyers and is incredibly responsive, communicative, proactive and creative. He is always cognizant about costs, too, and delivers his advice in the most efficient manner.&rdquo; He has created a strong narrative for the team during the review period by expanding trademark counselling and prosecution activities in fields such as cryptocurrency and pharmaceuticals, and by obtaining impressive court victories.&quot;<br /><br /><a href="https://www.worldtrademarkreview.com/search?search=vern&amp;sort=2&amp;tagIds=84720&amp;page=1">Learn more about Max</a>.</div><div>&nbsp;</div><div>This is a particularly valuable recognition of accomplishments for a year which has been a challenge to all of us.<br /><br />Read the firm's WTR narrative and <a href="https://www.worldtrademarkreview.com/directories/wtr1000/firms/amster-rothstein-ebenstein-llp">profile</a>.&nbsp;</div><div>&nbsp;</div> Tue, 16 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-recognized-as-a-leading-law-firm-by-/ Amster Rothstein & Ebenstein Named a 2020 PCT Network’s Top 100 Member Firm http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-named-a-2020-pct-networks-top-100-me/ Amster Rothstein &amp; Ebenstein has once again been named one of The PCT Network&rsquo;s Top 100 Member Firms of 2020. The firms that were nominated exemplify excellence in the five core values of The PCT Network: quality, integrity, transparency, professionalism and community.<div>&nbsp;</div><div>The PCT Network brings together more than 650 law firms in order to improve the way in which they handle foreign filings and improve the outcome for the clients they represent.</div><div>&nbsp;</div> Tue, 16 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-named-a-2020-pct-networks-top-100-me/ Video Highlights from NYIPLA PTAB Meeting on Fast Track Appeals Program http://www.arelaw.com/publications/view/video-highlights-from-nyipla-ptab-meeting-on-fast-track-appeals-/ The New York Intellectual Property Law Association (NYIPLA)'s PTAB Committee recently hosted a special presentation by Janet Gongola and APJ Dave McKone on Fast Track appeals to the PTAB at its February monthly meeting.<div>&nbsp;</div><div><a href="https://bit.ly/2Ouenj8">This video</a> features highlights from this presentation, including questions and discussion by PTAB co-chairs Charley Macedo and Ken Adamo. <a href="mailto:admin@nyipla.org">Join NYIPLA</a> and the PTAB Committee to attend future presentations on PTAB topics.</div><div>&nbsp;</div><div><a href="https://bit.ly/2Ouenj8">Watch the full video</a>.</div> Fri, 12 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/video-highlights-from-nyipla-ptab-meeting-on-fast-track-appeals-/ ARE Law Helps Didomi Win Again on Appeal Achieving Dismissal of Nuisance Patent Infringement Suit By Veripath http://www.arelaw.com/publications/view/are-law-helps-didomi-win-again-on-appeal-achieving-dismissal-of-/ <div>Amster Rothstein &amp; Ebenstein LLP, a New York City intellectual property boutique law firm, advised Didomi, a Paris-based marketing technology company, on its successful appeal in a U.S. federal appeals court achieving the dismissal of a nuisance patent infringement lawsuit by Veripath, Inc.&nbsp;</div><div>&nbsp;</div><div>Veripath claimed that cookie consent notices on Didomi&rsquo;s website violated its patent called &ldquo;Methods and Systems for User Opt-In to Data Privacy Agreements&rdquo; (U.S. Patent No. 10,075,451), but a U.S. federal district court dismissed the lawsuit in March 2020 finding Veripath&rsquo;s patent was invalid as being directed merely to an abstract idea and lacked any &quot;inventive concept&quot;.&nbsp;</div><div>&nbsp;</div><div>This week, the Federal Circuit affirmed the District Court's decision, dismissing Veripath&rsquo;s claims as patent-ineligible pursuant to 35 U.S.C. &sect; 101.</div><div>&nbsp;</div><div>On Monday February 8, 2021, a three-judge panel of the U.S. Federal Circuit Appeals Court affirmed the District Court's 2020 decision, which dismissed Veripath&rsquo;s claims as patent-ineligible pursuant to 35 U.S.C. &sect; 101.</div><div>&nbsp;</div><div>The Federal Circuit agreed with Didomi&rsquo;s arguments and found unpersuasive the tenuous and unsupported arguments advanced by Veripath. The Federal Circuit's reasoning predominantly followed the arguments and logic set forth in the District Court's 2020 decision, which disagreed with Veripath's claim that its patent was patent-eligible.</div><div>&nbsp;</div><div>The Federal Circuit found that &quot;at its most basic level, [Veripath&rsquo;s patent] is anchored on the abstract idea of exchanging privacy for functionality&quot; and &quot;at most, [it] is directed to no more than an improvement to the abstract notion of exchanging privacy for functionality.&quot; The Court indicated that it was not enough to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.</div><div>&nbsp;</div><div>Furthermore, akin to what the District Court&rsquo;s 2020 decision already stated, the Federal Circuit was unconvinced by Veripath's arguments and found that the patent lacked any &quot;inventive concept.&quot; The Federal Circuit held that Veripath&rsquo;s claims were insufficient to transform the invention into patent-eligible subject matter and affirmed the District Court&rsquo;s 2020 decision.</div><div>&nbsp;</div><div>&ldquo;The district court&rsquo;s grant of Didomi&rsquo;s motion to dismiss Veripath&rsquo;s nuisance lawsuit in March 2020 set a very important precedent in our industry. We at Didomi are very happy that the appeals court agreed and found Veripath&rsquo;s &ldquo;new&rdquo; arguments unpersuasive and affirmed the initial judgment. We just cannot let people with vague ideas obtain patents and then file frivolous lawsuits against innovative companies because it would stifle innovation unlawfully. I am thankful that our counsel at Amster, Rothstein &amp; Ebenstein LLP helped us defend our case. All companies should be able to put consent at the heart of their digital operations,&rdquo; said Romain Gauthier, CEO of Didomi</div><div>&nbsp;</div><div>&ldquo;We are pleased to say that the Federal Circuit and District Court agreed with Didomi and concluded that the claims of Veripath&rsquo;s patent are clearly patent-ineligible pursuant to 35 U.S.C. &sect; 101. Such findings are necessary to ensure that only quality patents that adequately meet the statutory eligibility requirements are enforceable,&rdquo; said Charles R. Macedo, lead counsel on the case from Amster, Rothstein &amp; Ebenstein LLP</div><div>&nbsp;</div><div>ARE Law associate Christopher Lisiewski also worked on this matter.&nbsp;</div><div>&nbsp;</div><div><a href="https://didomi.pr.co/196433-didomi-wins-again-on-appeal-achieving-dismissal-of-nuisance-patent-infringement-suit-by-verip?reheat_cache=1">Read Didomi&rsquo;s press release on the victory</a>.</div><div>&nbsp;</div><div>The prior timeline of the case can be found here: Didomi Obtains Dismissal By US Court of Nuisance Patent Infringement Suit By Veripath Over &quot;User Opt-in and Data Privacy&quot; Patent (April 2020)</div><div>&nbsp;</div><div><strong>About Amster, Rothstein &amp; Ebenstein LLP&nbsp;</strong></div><div>&nbsp;</div><div>Since 1953, Amster, Rothstein &amp; Ebenstein LLP has focused exclusively on representing clients in all facets of intellectual property law both domestically and internationally. The firm partners with clients to protect and maximize their intellectual property in a broad spectrum of industries such as financial services, fashion and retail, life sciences, medical devices, toys, entertainment, housewares, consumer electronics as well as blockchain and artificial intelligence. Our lawyers handle all facets of intellectual property law including: patent, trademark, copyright and other related intellectual property law areas. Learn more about us at https://www.arelaw.com/.</div><div>&nbsp;</div><div><strong>About Didomi</strong></div><div>&nbsp;</div><div>Didomi builds technology that allows organizations to place customer consent at the core of their strategy. By making consent and preferences easily accessible, companies benefit from compliant customer data while seeing higher engagement and increased user trust. Consumers, on their side, are free to choose what data to share and how to stay connected to their favorite brands across touchpoints. Our products include a globally adopted Consent Management Platform (CMP), which collects billions of consents every month, a highly popular Preference Center (PC), and a powerful suite of bespoke solutions to build better consent and preference management. Find out more at www.didomi.io.</div><div>&nbsp;</div><div>Contact:</div><div>Charles R. Macedo</div><div>Partner</div><div>Amster Rothstein &amp; Ebenstein LLP</div><div><a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a></div><div>212-336-8074</div> Tue, 09 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/are-law-helps-didomi-win-again-on-appeal-achieving-dismissal-of-/ Charley Macedo and David Goldberg Co-Author Oxford University Press Journal of Intellectual Property Law & Practice Article on U.S. Supreme Court Holds That U.S. State Codes and Annotations Thereto are not Eligible for Copyright Protection http://www.arelaw.com/publications/view/charley-macedo-and-david-goldberg-co-author-oxford-university-pr/ In <a href="https://academic.oup.com/jiplp/article/15/12/946/6017413?guestAccessKey=1d6c1f68-06ef-494a-ade0-16b018496a48">this&nbsp;Oxford University Press Journal of Intellectual Property Law &amp; Practice article</a> by Charley Macedo and David Goldberg, the authors discuss when the&nbsp;U.S. Supreme Court extended the government edicts doctrine, which holds that works authored by judges in the course of their official duties are in the public domain, to similar works created by the legislatures of U.S. states, territories and the District of Columbia. <br /><br />The decision clarifies that this doctrine applies even to annotated versions of legal codes, to prevent a situation where there is &lsquo;first class&rsquo; versus &lsquo;economy class&rsquo; access to the law. That said, this decision will not stop states and territories from charging for access to such materials. However, those states and territories will no longer be able to prevent third parties from providing free access to such materials by invoking copyright restrictions.<br /><br /><a href="https://academic.oup.com/jiplp/article/15/12/946/6017413?guestAccessKey=1d6c1f68-06ef-494a-ade0-16b018496a48">Read the full article</a>.&nbsp;<br /><br />Citation:&nbsp;Journal of Intellectual Property Law &amp; Practice, Volume 15, Issue 12, December 2020, Pages 946&ndash;948, <a href="https://doi.org/10.1093/jiplp/jpaa162">https://doi.org/10.1093/jiplp/jpaa162</a> (Oxford University Press) Thu, 04 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-and-david-goldberg-co-author-oxford-university-pr/ Copyright Law Alert: New York District Court Dismisses Claims Of Copyright Infringement Involving A Photograph That Depicts Graffiti And Also Finds Alleged Infringement De Minimis http://www.arelaw.com/publications/view/copyright-law-alert-new-york-district-court-dismisses-claims-of-/ <div>On January 13, 2021, the U.S. District Court for the Southern District of New York granted a motion to dismiss of trademark and copyright claims of a pro se plaintiff&rsquo;s amended complaint in its entirety in <em>Gayle v. Allee</em>, No. 18 Civ. 3774 (JPC), 2021 U.S. Dist. LEXIS 6756 (S.D.N.Y. Jan. 13, 2021).&nbsp;</div> <div>&nbsp;</div> <div>Specifically, the court dismissed the pro se plaintiff&rsquo;s claims of copyright infringement against a photographer and art gallery for exhibiting and offering for sale a photograph that depicted graffiti tagged with the words &ldquo;ART WE ALL ONE&rdquo; and for similarly titling that photograph &ldquo;Art We All One&rdquo;<br /> &nbsp;</div> <div>&nbsp;As a practical matter, this case emphasizes the importance of the need to properly plead a federal copyright infringement claim and that the mere use of a phrase from a copyrighted work is not enough to prove substantial similarity. It also provides a good example of what a court considers to be de minimis copyright infringement.</div> <div>&nbsp;</div> <div><strong>Background and Procedural History</strong></div> <div>&nbsp;</div> <div>Plaintiff Itoffee R. Gayle holds a copyright relating to the phrase &ldquo;ART WE ALL&rdquo; through Registration No. VA-2-006-958 entitled &ldquo;Art We All,&rdquo; containing eight photos and Registration No. VA 2-088-822, entitled &ldquo;Art We All Group Registration Photos,&rdquo; containing 13 photos.&nbsp;</div> <div>&nbsp;</div> <div>Gayle, proceeding pro se, filed suit alleging claims of, among others, copyright infringement against photographer David Allee and the Morgan Lehman Gallery (collectively, &ldquo;defendants&rdquo;) for exhibiting and offering for sale a photograph that depicted graffiti tagged with the words &ldquo;ART WE ALL ONE&rdquo; and for similarly titling that photograph &ldquo;Art We All One.&rdquo;&nbsp;</div> <div>&nbsp;</div> <div>Gayle&rsquo;s claims related to a photograph that Allee took of two buildings in New York City. Viewable in the bottom right corner of the photograph is a small construction barrier tagged with graffiti reading, &ldquo;ART WE ALL ONE.&rdquo; The photograph&mdash;which Allee titled &ldquo;Art We All One&rdquo;&mdash;was displayed for sale in the gallery in 2017 as part of one of Allee&rsquo;s solo exhibitions.&nbsp;</div> <div>&nbsp;</div> <div>&nbsp;But Gayle failed to allege which specific images were infringed, instead seemingly arguing that it is the text &ldquo;ART WE ALL&rdquo; and &ldquo;ARTWEALL&rdquo; that are copyrightable in and of themselves. The defendants moved to dismiss the initial complaint/first motion to dismiss. During a telephone conference, the court granted defendants&rsquo; first motion to dismiss. During that conference, the court concluded that Gayle had not adequately alleged a copyright claim because he failed to plead what images were covered by the copyright and how any infringement was more than &ldquo;de minimis.&rdquo; The court nonetheless gave Gayle leave to file an amended complaint.&nbsp;</div> <div>&nbsp;</div> <div>Gayle subsequently filed an amended complaint. The amended complaint (like the initial complaint) alleged claims of copyright infringement for exhibiting and offering for sale a photograph that depicted graffiti tagged with the words &ldquo;ART WE ALL ONE&rdquo; and for similarly titling that photograph &ldquo;Art We All One.&rdquo; Defendants moved to dismiss the amended complaint, contending that it had failed to cure the deficiencies identified by the court&rsquo;s initial ruling.&nbsp;</div> <div><strong><br /> </strong></div> <div><strong>Gayle Failed to Properly Plead a Federal Copyright Claim</strong></div> <div>&nbsp;</div> <div>With respect to the federal copyright claim, defendants contended that Gayle had not properly pleaded a federal copyright infringement claim. In order to prevail on a copyright infringement claim, a plaintiff must demonstrate: (1) ownership of a valid copyright; and (2) infringement of the copyright by the defendant. <em>Yurman Design, Inc. v. PAJ, Inc</em>., 262 F.3d 101, 108-09 (2d Cir. 2001). And, to establish copyright infringement, a plaintiff with a valid copyright must demonstrate: (1) the defendant actually copied the plaintiff&rsquo;s work; and (2) the copying is illegal because a substantial similarity exists between the defendant&rsquo;s work and the protectible elements of plaintiff&rsquo;s work. <em>Hamil Am. Inc. v. GFI</em>, 193 F.3d 92, 99 (2d Cir. 1999).</div> <div>&nbsp;</div> <div>During the court&rsquo;s telephone conference related to the first motion to dismiss, the court elaborated that Gayle failed to identify which original works were covered by his two copyright registrations&mdash;namely, which specific images attached to Gayle&rsquo;s opposition belong to which copyright registration.</div> <div>&nbsp;</div> <div>In the amended complaint, Gayle again alleged that he owned two valid copyrights and that those copyrights were registered in accordance with statute. He also alleged by what acts and in what manner that those copyrights were infringed, namely the creation and display of Allee's photograph.&nbsp;</div> <div>&nbsp;</div> <div>However, Gayle failed to allege which specific images of his two copyright registrations&mdash;which collectively contain 21 photos&mdash;had been infringed, instead seemingly arguing that it is the text &ldquo;ART WE ALL&rdquo; and &ldquo;ARTWEALL&rdquo; that are copyrightable in and of themselves. The court determined that those phrases, absent more, do not merit copyright protection. Therefore, the court held that Gayle failed to adequately plead a copyright claim.</div> <div>&nbsp;</div> <div><strong>The Photograph and Gayle&rsquo;s Copyrighted Work Are Not Substantially Similar</strong></div> <div>&nbsp;</div> <div>The court next found that Gayle&rsquo;s amended complaint failed for a more fundamental reason&mdash;the image of the graffiti in the photograph and Gayle&rsquo;s copyrighted work were not substantially similar as a matter of law, since the only common elements were non-copyrightable.</div> <div>&nbsp;</div> <div>The court first considered whether the phrase &ldquo;ART WE ALL&rdquo; is copyrightable, and concluded that it is not. &ldquo;The standard test for substantial similarity between two items is whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.&rdquo; Yurman Design, 262 F.3d at 111 (quotations omitted).&nbsp;</div> <div>&nbsp;</div> <div>However, if a work has both protectible and unprotectible elements, the court must undertake a more discerning analysis and attempt to extract the unprotectible elements from consideration and ask whether the protectible elements, standing alone, are substantially similar. See <em>Peter F. Gaito Architecture, LLC v. Simone Dev. Corp</em>., 602 F.3d 57, 66 (2d Cir. 2010). Further, &ldquo;it is axiomatic that words, short phrases, titles and slogans are not subject to copyright, even if they are trademarked.&rdquo; See, e.g.,<em> Moody v. Morris</em>, 608 F. Supp 2d 575, 579 (S.D.N.Y. 2009).</div> <div>&nbsp;</div> <div>The court considered Gayle&rsquo;s argument that &ldquo;[i]t is this artistic design that comprises the copyrighted material, not the words by themselves.&rdquo; The court recognized that even if the words are not subject to copyright protection, it should consider whether Gayle presented the words in an original manner that would be protectible.&nbsp;</div> <div>&nbsp;</div> <div>However, Gayle did not point to any component parts that would be protected. And, after reviewing the images attached to the amended complaint, the court was unable to identify any protected elements that had been infringed. Accordingly, looking at both the elements and the overall look of the copyrighted images and the graffiti, the court concluded that Gayle failed to state a claim for copyright infringement.</div> <div>&nbsp;</div> <div><strong>The Alleged Copyright Infringement Is De Minimis</strong></div> <div>&nbsp;</div> <div>Finally, the court concluded that Gayle&rsquo;s copyright claim failed for yet another reason&mdash;any alleged infringement is de minimis. Copying a piece of work is not a copyright violation if the copying is de minimis, meaning that it is so &ldquo;trivial . . . as to fall below the quantitative threshold of substantial similarity.&rdquo; <em>Ringgold v. Black Ent. Television Inc.,</em> 126 F.3d 70, 74 (2d Cir. 1997).&nbsp;</div> <div>&nbsp;</div> <div>Gayle argued that the similarity of the Mark, the closeness of the products and defendants&rsquo; motive and lack of good faith demonstrate that defendants&rsquo; use of the mark was not de minimis. However, the Second Circuit has explained that substantial similarity for the purposes of the de minimis inquiry is not entirely about whether something was copied. See <em>Ringgold</em>, 126 F.3d at 74-75.&nbsp;</div> <div>&nbsp;</div> <div>The court must look not to whether there was factual copying, but rather whether that copying rose above a de minimis level. Courts generally reject the claim that the use of a copyright in another image, without more, is anything more than de minimis.&nbsp;</div> <div>&nbsp;</div> <div>According to the amended complaint, the photograph was on display only at one exhibition at the gallery in 2017. Moreover, while the photograph is titled &ldquo;Art We All One,&rdquo; the actual graffiti appears in small print in the bottom corner of the photograph in a manner that is far less prominent than the apartment buildings that dominate the vast majority of the photograph, and even less prominent than other items in the photograph. Accordingly, the court determined that any alleged infringement concerning the use of the &ldquo;Art We All One&rdquo; phrase was both qualitatively and quantitatively de minimis such that it cannot support an infringement claim.</div> <div>&nbsp;</div> <div>The other practical significances of this case include that the court provided the pro se plaintiff with wide latitude and essentially granted the plaintiff a &ldquo;do over&rdquo; in the form of leave to file an amended complaint. The court offered the pro se plaintiff in the first motion to dismiss substantive feedback on how to cure any defects and the issues to address to overcome a subsequent motion to dismiss. In addition, this case provides a clear outline of how to properly plead federal trademark infringement and likelihood of confusion at the motion to dismiss stage.</div> <div>&nbsp;</div> <div>We will continue to monitor and report on developments in these areas of copyright law. In the meantime, please feel free to contact us to learn more.</div> <div>&nbsp;</div> <div><strong>About the Authors</strong></div> <div>&nbsp;</div> <div>Douglas A. Miro is a partner, and Christopher Lisiewski is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. The authors can be reached at <a href="mailto:dmiro@arelaw.com">dmiro@arelaw.com</a> and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.</div> <p><small><big>&nbsp;</big></small></p> Thu, 04 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/copyright-law-alert-new-york-district-court-dismisses-claims-of-/