Divided Infringement

On April 20, 2011, the U.S. Court of Appeals for the Federal Circuit granted a petition for rehearing en banc in Akamai Technologies., Inc. v. Limelight Networks, Inc., No. 2009-1372, -1380 , -1416, -1417, 2011 U.S. App. LEXIS 8167, at *2 (Fed. Cir. Apr. 20, 2011) to address the question:

If separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?

Akamai is one of several recent cases by the Federal Circuit requiring that all joint infringers be under the "direction or control" of a single entity in order to find direct infringement of a method claim.

Akamai is one of several recent cases by the Federal Circuit requiring that all joint infringers be under the "direction or control" of a single entity in order to find direct infringement of a method claim.

On May 26, 2011, the U.S. Court of Appeals for the Federal Circuit signalled its intention to reevaluate the state of the law regarding divided infringement when it agreed to hear McKesson Technologies Inc. v. Epic Systems Corp. en banc on an expedited schedule in view of the pending en banc review of Akamai Technologies., Inc. v. Limelight Networks, Inc., another divided infringement case. The Federal Circuit in McKesson will address the following questions:

1. If separate entities each perform separate steps of a method claim, under what circumstances, if any, would either entity or any third party be liable for inducing infringement or for contributory infringement? See Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983).

2. Does the nature of the relationship between the relevant actors—e.g., service provider/user; doctor/patient—affect the question of direct or indirect infringement liability?

See McKesson Technologies Inc. v. Epic Systems Corp., No. 2010-1291, Order (Fed. Cir. May 26, 2011).

Before agreeing to hear McKesson en banc, a divided panel of the Federal Circuit, in McKesson Technologies Inc. v. Epic Systems Corp., No. 2010-1291, 2011 U.S. App. LEXIS 7531, at *13-15 (Fed. Cir. Apr. 12, 2011), questioned the correctness of the "single infringer" rule and requirement of "direction or control" in joint infringement actions.

By taking multiple cases, the Federal Court is likely to be presented with multiplicity of perspectives on this emerging issue.

Whitmill v. Warner Bros.

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Warner Bros. is being sued by the author of Mike Tyson’s tattoo S. Victor Whitmill

– can an artistic work depicted on person’s face be copyrighted?

Mike Tyson’s fancy face-tattoo artist, S. Victor Whitmill, filed a copyright lawsuit against Warner Bros. for its use of his “art” on one of the lead characters in The Hangover II on the revered "STU" played by ED Helms. Whitmill doesn’t only want lots of dough from Warner Bros.; he also wants the court to grant an injunction, preventing the movie’s release to over 3600 theaters on 7000 screens over Memorial Day weekend.

Whitmill permanently affixed the “tribal tattoo” on a “3-D object” (aka the side of Tyson’s face) in 2003, but he didn’t file for copyright protection until April of 2011, just days before filing the federal lawsuit against WB. Obviously, the filing isn’t required immediately upon creation of the object; however, in order to make a legal claim of a copyright violation, a filing must accompany the lawsuit. The question here is whether the nature of the medium in which an artistic work is fixed is relevant for acquisition of copyrights in that work, the fixation of work being the upper left side of Mike Tyson’s face, being the tangible medium of expression.

Other important facts include -

1. Whitmill’s very-recent filing and other behavior is certainly evidence that he previously didn’t have a problem with the tattoo’s use by others. The Hangover was released in 2009 and Whitmill didn’t complain. He didn’t complain when Tyson applied for trademark protection of the tattoo in January of 2011. He didn’t complain after Tyson appeared in two other movies — Mike vs. Tyson: The Battle Rages On (2004), or Tyson(2009), a documentary about the boxer’s life. Both movies’ advertising material display Tyson’s tatted face.he advertising material is a picture of Tyson with the tat. Whitmill didn't complain when a Mike Tyson doll was created with the tattoo on its face. He didn't complain when a mobile "app" was released that includes Tyson's tattoo.

2. The unusual part against Whitmill is he didn’t complain when teen heartthrob Justin Bieber sported the artistic creation! Remember, there are two parts to this case: whether the judge prevents WB from releasing the movie, and then whether there was an underlying copyright violation.

There is absolutely no way the judge is going to stop Hangover II from its release. Not only does the judge surely want to see the sequel to one of the most hilariously inappropriate movies of all time, but Warner Bros will suffer irreparable harm if the movie isn’t released.

I most conceitedly look forward to the Hangover II ..!