Supreme Court Lets Stand Ruling That Downloads Are Not Public Performances

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The U.S. Supreme Court opened its new term Oct. 3 by denying a petition for a writ of certiorari in American Society of Composers, Authors, and Publishers v. United States (U.S., No. 10-1337, review denied 10/3/11).

At issue was the Second Circuit's ruling that the downloading of a copy of a copyrighted musical work implicates the copyright holder's right of reproduction but does not implicate the copyright holder's public performance right under the Copyright Act, 17 U.S.C. §106. United States v. American Society of Composers, Authors, and Publishers, 627 F.3d 64, 96 USPQ2d 1360 (2d Cir. 2010) (187 PTD, 9/29/10). The petition was filed May 2.

The court also declined review in these intellectual property-related cases:

• Kelley v. Chicago Park District(U.S., No. 11-101, review denied 10/3/11), appealing the Seventh Circuit's ruling that a flower bed installation designed and maintained by famous landscape artist Chapman Kelley was not an original work of authorship fixed in a tangible medium of expression, and thus not subject to the protections of federal copyright law. Kelley v. Chicago Park District, 635 F.3d 290, 97 USPQ2d 1841 (7th Cir. 2011) (34 PTD, 2/18/11). The petition was filed July 28.

• Vernor v. Autodesk Inc. (U.S., No. 11-1421, review denied 10/3/11), appealing the Ninth Circuit's ruling that purchasers of Autocad software on compact discs were licensees rather than owners of the software, and that their resale of the used CD's on eBay was not governed by the Copyright Act's first sale doctrine. Vernor v. Autodesk Inc., 621 F.3d 1102, 96 USPQ2d 1201 (9th Cir. 2010) (175 PTD, 9/13/10). The petition was filed May 18.

• APP Pharmaceuticals LLC v. Navinta LLC(U.S., No. 10-1504, review denied 10/3/11), appealing the Federal Circuit's ruling regarding the standing of a party to bring a patent infringement claim when the title to the patents had not been acquired until after the claim was filed. Abraxis Bioscience Inc. v. NavintaLLC, 625 F.3d 1359, 96 USPQ2d 1977 (Fed. Cir. 2010) (51 PTD, 3/16/11). The petition was filed June 15.

• Shum v. Intel Corp. (U.S., No. 10-1444, review denied 10/3/11), appealing the Federal Circuit's ruling that despite a jury's decision granting patent co-inventorship to an ex-business partner, the partner was not entitled to any of the proceeds of a $409 million acquisition of the company owning the associated technology. Shum v. Intel Corp., 633 F.3d 1067, 97 USPQ2d 1513 (Fed. Cir. 2010) (248 PTD, 12/29/10). The petition was filed May 25.

• Real Estate Innovations Inc. v. Houston Association of Realtors Inc. (U.S., No. 11-78, review denied 10/3/11), appealing the Fifth Circuit's unpublished ruling affirming dismissal of a software marketing company's copyright infringement claim after finding that the software at issue was not the software identified in the relevant copyright registration and that evidence that the work at issue was derivative of the registered works was not presented to the court. Real Estate Innovations Inc. v. Houston Association of Realtors Inc., No. 09-20868 (5th Cir. April 15, 2011). The petition was filed July 14.

• Siler v. United States(U.S., No. 11-73, review denied10/3/11), appealing the Federal Circuit's unpublished ruling affirming dismissal of a copyright infringement action on the grounds that it was similar to numerous prior actions and in violation of a court order requiring the permission of the court in order file such actions. Siler v. United States, No. 2011-5017 (Fed. Cir. April 7, 2011). The petition was filed July 12.

• Lockwood v. Sheppard, Mullin, Richter & Hampton LLP(U.S., No. 10-1339, review denied 10/3/11), appealing the Federal Circuit's unpublished ruling affirming a district court's dismissal for preemption of a claim of malicious patent prosecution under state law based on the defendant's filing re-examination requests with the Patent and Trademark Office. Lockwood v. Sheppard, Mullin, Richter & Hampton LLP, 403 Fed. App'x 508 (Fed. Cir. Nov. 15, 2010). The petition was filed April 28.

• White v. Hitachi(U.S., No. 10-1504, review denied 10/3/11), appealing the Federal Circuit's unpublished ruling affirming that under the plain meaning of a patent license agreement, the licensee validly assigned the agreement to a subsidiary in which a controlling interest was subsequently acquired by another company. White v. Hitachi, 404 Fed. App'x 502 (Fed. Cir. 2010).

• Mini Melts Inc. v. Reckitt Benckiser Inc. (U.S., No. 11-47, review denied 10/3/11), appealing the Fifth Circuit's unpublished rejection of an argument that a trademark infringement case required the jury to be instructed on the potential public health dangers of product confusion. Mini Melts Inc. v. Reckitt Benckiser Inc., No. 10-40048 (5th Cir. March 11, 2011). The petition was filed July 8.