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U.S. Intellectual Property and New Media Law Update FINE POINTS MADE IN FINE PRINT Adobe Systems Inc. v. Southern Software, Inc. et al. (N.D. Cal. -Decided- February 2, 1998) SECOND CIRCUIT REFUSES TO DECLARE ABOUT FUTURE RENEWAL RIGHTS P.C. Films Corp. v. MGM/UA Home Video, Inc., et al. (Second Cir. -Decided- February 23, 1998) MY-T-MOUSE VERSUS MIGHTY MOUSE Viacom International, Inc. v. Kermit Komm, et al. (TTAB -Decided- February 5, 1998) INTERNET RELATED BILL OF THE WEEK On-Line Copyright Infringement Liability Limitation Act, (Bill No. H.R. 3209 -Introduced-February 12, 1998) FINE POINTS MADE IN FINE PRINT Adobe Systems Inc. v. Southern Software, Inc. et al. (N.D. Cal. -Decided- February 2, 1998) Plaintiff, Adobe Systems, has brought an action for copyright and patent infringement arising from copying of its SOFTFONT software systems for font generation. Once a font is designed for Plaintiff, Adobe obtains a digital representation of the x and y coordinates for the glyphs which it then stores in its computer memory. These "raw" coordinates are then translated into Adobe's font coordinate system by internal Adobe software which provides the glyph coordinates and glyph instructions. An Adobe editor then displays and manipulates the on-curve, and off-curve reference points of each displayed glyph altering its outline. Once editing is completed, Plaintiff uses its own software to make the final assignment of coordinates, produce instructions and hints and perform any necessary kerning. The resulting font file determines the image that is displayed or printed. Defendant loaded the Adobe font software programs into Defendant's computer, then created a font software program by using FONTMONGER, a commercially available font generation program. FONTMONGER does not copy any of the Adobe glyph instructions, rather it generates its own glyph instructions. However, Adobe's glyph instructions are implicit in the sequence and nature of the glyph coordinates that it does use and, thus, the glyph instructions written by FONTMONGER will be functioning identically to those of the Adobe software program. Plaintiff moved and Defendant cross-moved on the copyright issues. The primary issue is whether the font generating program is a protectable expression under the Copyright Act. It is well established that type face designs per se are not copyrightable. The Court found that a computer program which produces unprotectable type faces does not make the computer program itself unprotectable. Defendants position was essentially that Defendant merely manipulated an unprotectable font image to create another slightly different, but still unprotectable, font image, i.e., that the points which were selected by the Adobe editors forming the process corresponded directly to and, hence, are determined by the unprotectable font shape. The Court found that the glyph coordinates are not prescribed entirely by the shape of the glyph, and thus, involve creativity and are protectable. The Court pointed to the fact that two independently working programmers using the same data and the same tools can produce an indistinguishable output but will have few points in common. The net affect is that while you do not infringe the copyright in duplicating the type font, you may do so by generating a program based on the fonts. The decision can be seen at: http://www.bna.com/e-law/cases/adobe.html SECOND CIRCUIT REFUSES TO DECLARE ABOUT FUTURE RENEWAL RIGHTS P.C. Films Corp. v. MGM/UA Home Video, Inc., et al. (Second Cir. -Decided- February 23, 1998) This is an interesting case with absolutely no resolution of the underlying problem. Plaintiff is the owner of a copyright in a film entitled "King of Kings." It granted to the Defendants a "perpetual and exclusive right to distribute" the film. It went to the District Court and asked for a declaration as to whether the expiration of the initial copyright term of the picture terminated this perpetual and exclusive right to distribute. The District Court determined, and the Second Circuit affirmed, that the suit was premature and, therefore, inappropriate at this time to decide whether the contract goes beyond the renewal period, and whether such a provision is contrary to federal copyright law and policy. While the Court made no decision on this issue, the Court did extensively discuss the issues which to a certain extent implied the likely decision at a later date when a decision on the merits would be more appropriate. The decision can be seen at: http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3/97-7399.opn.html MY-T-MOUSE VERSUS MIGHTY MOUSE Viacom International, Inc. v. Kermit Komm, et al. (TTAB -Decided- February 5, 1998) Opposer, Viacom International, is the owner of that mighty creature of the cartoon world, MIGHTY MOUSE. It owns trademark registrations for the mark MIGHTY MOUSE for a series of animated cartoons for motion pictures and television; comic magazines and coloring books; toy puzzles, watches, t-shirts, sweatshirts. It also owns a registration for a design mark of a picture of MIGHTY MOUSE for similar goods. This case gives us a thumbnail history of that littlest mighty creature, MIGHTY MOUSE. For those who wish to delve more intently into the history of MIGHTY MOUSE, a MIGHTY MOUSE home page can be viewed at: http://slis6000.slis.uwo.ca/~whamonic/mighty5.html Applicants applied to register the design mark MY-T-MOUSE SOFTWARE THAT MAKES YOUR MOUSE A MOUSE THAT TYPES for computer software which allows the user to type by making selections from an on-screen keyboard with a mouse. The design mark http://www.oblon.com/Uspto/Ttab/98994.html. The words "the software that makes your mouse a mouse that types" have been disclaimed. The "T" in the mark allegedly stands for typing. Since it was clear that Opposer had used the mark on a variety of goods in a period far prior to that of the applicant, the question became likelihood of confusion. The Board broadly applied the factors recited at In re E. I. du Pont de Nemours & Co. and found that the Opposer had not proved that confusion was likely to occur from Applicants' use of the mark for a utility program. The Board specifically noted that Applicants' computer software is far different from the goods listed in Opposer's registration or supported by Opposer's evidence. The Board also found that software was not within the natural scope of expansion to be used to oppose this mark. Opposer introduced some vague statements concerning speaking to several potential licensees for interactive products. The Board found that the mere fact that computer accessories and computer toys and games involve the use of computers and software, and that the Applicants' goods are also computer software, does not in an of itself demonstrate the computer software on which the Applicants use their mark is within the natural scope of expansion of the use of Opposer's mark. Essentially, the Board held that MIGHTY MOUSE as used as part of a game would not be confused with MY-T-MOUSE for specialized utility software. The Board also noted the difference in meaning and appearance between the two marks. In reaching its conclusion of non-obviousness, the Board discounted the fame of MIGHTY MOUSE since its fame is not as a mark but as a cartoon character of the 1940s, 50s and 60s. The decision can be seen at: http://www.oblon.com/Uspto/Ttab/98994.html INTERNET RELATED BILL OF THE WEEK On-Line Copyright Infringement Liability Limitation Act, (Bill No. H.R. 3209 -Introduced-February 12, 1998) In our on-going effort to keep you informed as to the various proposals affecting intellectual property and new media law which are continuously popping up in Congress, we now report on the "On-Line Copyright Infringement Liability Limitation Act" as introduced in the House. The proposed act will remove liability for direct infringement based solely on the intermediate storage and transmission of material over a provider's system or network, if the transmission was initiated by another person, whose storage and transmission is carried out through an automatic technology process without selection of that material by the provider and a copy made of the material is not retained longer than necessary for the purpose of carrying out the transmission. It also provides that the ISP or the like would not be liable for any claim based on its removing or disabling on-line access to material in response to knowledge or information indicating the material is infringing and whether or not the material is, in fact, infringing. The proposed legislation can be seen at: http://thomas.loc.gov/cgi-bin/query/z?c105:H.R.3209: |
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