Copyright infringement& substantial similarity

Substantial similarity is one of the standard tests used to determine whether infringement of copyright has taken place or not. Since a copyright protects expression and not the idea, substantial similarity is one of the important ways to assess infringement of copyright.

Since it is Christmas time of the year, I take this opportunity to explain the concept of copyright infringement with respect to substantial similarity with the help of a case-law that relates to Christmas story, Ray K. Harter et al. vs. Disney Enterprises,Inc. et al.[Case No. 4:11CV2207 CDP, United States District Court Eastern District Of Missouri Eastern Division].

Facts of the case

•  Ray Harter, Richard Kearney and Ed Corno (hereinafter Ray K. Harter et al) authored a Christmas story called Santa Paws: The Story of Santa’s Dog in 1991.
• It was an illustrated children story for which copyright was registered by them in 1992 and 1993. 
• To market the story, the authors availed services of an external agency called William Morris Endeavor Entertainment, LLC (WME).
• Story was shown to many companies by WME including Disney Enterprises, Inc.
• However, in the year 2009, Disney released a movie called Santa Buddies: The legends of Santa Paws   and in the year 2012, it released another movie called The search for Santa Paws.
•   Upon knowing this, Ray K. Harter et al. filed a suit for copyright infringement against Disney, WME and its  agents.
• However, Disney argued that their videos are not substantially similar to any protected expression of Ray K. Harter et al. story.

Key issues and arguments

The most critical issue in this case is that copyright law does not give protection to idea but it only protects the expression of the idea and taking this into consideration it is adjudicated whether  infringement of copyright has taken place or not. In order to prove copyright infringement, it was required to establish that:

1. Story of Ray K. Harter et al. had valid copyright,
2.  Disney had copied it directly because independent creating of the work is legitimate in copyright law. This could be proved by providing direct evidence of copying or by proving that Disney had access to Ray K. Harter et al.’s story and the work created by Disney had substantial similarity with Ray K. Harter et al.’s work, and also
3. There was substantial similarity between original and copied work.

In this case since story was presented to Disney by WME, Disney had access to the story and hence the only issue left was substantial similarity. It is interesting to know that Eighth Circuit developed a two-step test for analyzing the similarity between two works:

There must be substantial similarity not only of the general ideas but of the expressions of those ideas as well. First, similarity of ideas is analyzed extrinsically, focusing on objective similarities in the details of the works. Second, if there is substantial similarity in ideas, similarity of expression is evaluated using an intrinsic test depending on the response of the ordinary, reasonable person to the forms of expression.

It was found that there exists some similarity of ideas between the Ray K. Harter et al.’s short story and videos of Disney. Apart from overall plans of the story and each of Disney movies involve some threat to the Christmas holiday or spirit, which is then saved by a talking Christmas dog. In the video, dog was named as “Paws,” “Santa Paws,” or “Puppy Paws”, which was found to be very similar to the story. Apart from the general similarities, the short story includes a magical icicle, which is used by the story’s antagonist to transform herself into a snowflake and freeze Santa and his reindeer, and ultimately used by the main character to unfreeze Santa and save Christmas. In Disney’s movies, there is also a magical ice crystal that measures Christmas spirit in the world, and the main characters wear crystals around their neck that have magical powers, including the power to awaken Santa after he goes into a coma in The Legend of Santa Paws.

In the short story, the Christmas tree is one of the talking characters, and his lights turn off when Christmas spirit is low. In the Santa Buddies movie, there is a Christmas tree that has broken lights, but they turn on when the main character walks by wearing his magical ice crystal, not as a result of an increase in Christmas spirit.

The Legend of Santa Paws and Ray K. Harter et al.’s story uses dialogue about Paws being a “gift” for Santa, and both mention Christmas spirit being “down” or “out of whack.” When Santa receives the dog as a gift in the story, he states, “I’m going to call you . . . PAWS.” In The Legend of Santa Paws, he states “I think I’m going to name him Paws.” At the end of both stories, Santa changes Paws’ name to Santa Paws. In the story, he states: “From now on your name will be Santa Paws . . . my one and only dog.”

In The Legend of Santa Paws, Santa says: “You’re no longer a pup. From now on your name will be Santa Paws.” As Ray K. Harter et al. point out, these lines are stated at similar points in the story. However, it is not an original idea to name Santa’s dog “Paws” or “Santa Paws,” as it rhymes with “Claus.” These short phrases are also fairly insubstantial when compared to the other dissimilarities in dialogue and plot between the stories.

Apart from these abstract similarities, the remaining elements of the short story and movies are substantially dissimilar. Copyright protection for an original work of authorship does not extend to any idea, and hence naming the dog “Santa Paws” in a Christmas movie is merely an idea. The remaining aspects of the plot surrounding the Christmas dog are entirely dissimilar.

Judgment

U.S. District Court Judge Catherine Perry granted summary judgment in favor of Disney, ruling that the short story Santa Paws is not substantially similar to Disney's Santa Paws. The court acknowledged that the short story and the Disney movies had some elements in common as they all feature a threat to Christmas and a talking dog, all feature a dog named Paws, Santa Paws or Puppy Paws, they all have magical icicles etc. There also is some similar dialogue. However, "apart from these abstract similarities, the remaining elements of the short story and movies are substantially dissimilar. Furthermore, most of the aforementioned similarities between short story and movie are not protected by copyright law.

The court also dismissed a civil conspiracy claim

Patent alerts: To stay ahead of the competition

As we know that innovation is the key to sustainable growth for any business today and patents

play a vital role by securing innovations and obtaining competitive edge in the market. Patent filing is increasing globally and according to World Intellectual Property Organisation (WIPO) report, International patent filings increased by 6.6 percent in 2012 from the previous year, with China, Japan and South Korea posting double-digit growth. “It shows the importance of building strong, intangible asset portfolios, even in times of crisis, because you need it for a recovery”, Francis Gurry, head of the UN agency said.

 Patents are excellent source of technical information, primarily for the reason that inventions are not only disclosed systematically in the patent specification but also the best mode is disclosed to meet statutory requirements in most of the jurisdiction. Therefore, the patent databases contain valuable information to detect technology evolution.

 

Staying ahead of your competitors in the world where innovation is happening in every area of technology is not easy. In order to improve quality of innovation, avoid duplication of work, filing quality patents and giving right direction to R&D, it is essential for the companies to be updated with latest inventions for which patent applications are being filed/published/granted/expired.

 

However, keeping track of the kind and number of patent applications published, granted, abandoned or expired is a big challenge today. On one hand, knowing latest happenings in the area of patents helps business in multiple ways, on the other hand, with growing data & increasing number of patent filing, extracting desirable information is extremely tough.

Generating periodic (weekly, monthly or half yearly) patent alerts is one of the most effective tools to track the latest happenings in the area of patents. Published/granted and even abandoned/expired patents can be monitored on regular basis in the technical area of interest to get valuable information on:

 

“Generating periodic (weekly, monthly or half yearly) patent alerts is one of the most effective tools to track the latest happenings in the area of patents.”

 

A.      New products/processes for which patent applications have been filed and build up own products to ensure that the same invention is not replicated and also to assess likelihood of patent infringement. In addition to this, since the patents technically disclose the invention, thorough review of the same might be extremely useful to assess chances of getting patent for your core technologies or new idea by knowing novelty, non-obviousness and industrial applicability of the invention.

 

B.      By knowing published applications, one might want to oppose the applications, which may not be subject matter of a patent or grant of which might affect the business adversely, though there are several other reasons to oppose a patent application or a grant patent.

 

C.      New markets or new technologies that your competitors are focusing at. This might give you overview of the kind of products they are planning to launch in given markets.

 

Patent watch can be done primarily in two ways:

Technical Patent Watch: Here you may list out core technology (ies) of interest and monitor newly published patent applications in a technical area of interest as soon as they are published. One may also monitor latest prosecution status of pending patent applications. This way it will be easier to keep in touch with latest happenings and one may also come across interesting patents that may be used and implemented to add value to existing products or technologies.

Such patents may be licensed or if they are not filed in the jurisdiction of interest or they don’t have a chance to be filed in the jurisdiction of interest, it may be used without any fear of infringement. However, it is highly recommended to take opinion of an expert on the legal status of such patent (s) before implementing it.

 

Competitor Patent Watch: Knowing patent portfolio and watching patent activity of the competitors may be of great business value. Competitor companies may be listed out and their newly published patent applications may be monitored on periodic basis. However, one may also monitor latest prosecution status of pending patent applications or latest legal status/continuation applications of granted patents of competitor companies.

This information may prove to be a game changing strategy for any company.

Staying ahead of your competitors is critical for sustainability today. With increasing focus on innovation, it becomes important to know about the recent trends in the area of patent filings. It is not only interesting to watch what your competitors are doing or the latest technologies for which patents are being filed in given jurisdiction, but also, it gives you platform which you can use to fine tune your existing products and assess chances of infringement.

　

Unity of Invention: Indian Patent law perspective


As per Indian Patent Law, one patent application shall  relate to a single invention. However, if more than one inventions are to be claimed in single application, it is necessary to establish that the inventions so claimed have unity and they form a single inventive concept. The golden rule is that the claim (s) of a complete specification shall relate to a single invention, i.e. the concept of unity of invention shall be there.

According to Section 10 of the Patents Act 1970, if claims refer to a group of inventions, such inventions shall form a single inventive concept. The claims shall be clear and succinct and shall be fairly based on the matter disclosed in the specification and moreover, a single inventive concept may be recognized between independent claims of different categories.

The invention comprising of a polymer, process to prepare polymer and commercial utility of polymer can be claimed in the single patent application because even though the invention has three main components, all of them relate to a single invention and have unity. On the other hand, the invention relating to two independent formulations used to treat cancer and HIV/AIDS shall not be claimed in a single patent application as both formulations are independent of each other and hence lack unity of invention.


The purpose of this requirement of unity of invention is administrative, as well as financial. That is, the requirement serves to prevent the option of filing one patent application for several inventions, while paying only one set of fees, such as, fee for filing application, examination, early publication or annual renewal etc. Moreover, the concept of unity of invention also makes the technical classification easier.

Under section 16 of the Indian Patents Act, 1970, if a single patent application has been filed with more than one invention and invention so claimed lacks unity, the applicant may divide main application into divisional application. However, the further application (divisional application) and the complete specification accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.

"According to Section 10 of the Patents Act 1970, if claims refer to a group of inventions, such inventions shall form a single inventive concept. The claims shall be clear and succinct and shall be fairly based on the matter disclosed in the specification and moreover, a single inventive concept may be recognized between independent claims of different categories."
However, during the process of examination of the patent application, the examiner may also ask the applicant to divide the application into two or more applications and file divisional application. It is interesting to note that both parent application and divisional application will have the same priority date though divisional application is often filed later than parent application. For example:

Date of filing provisional application and priority date: 15th November 2006

Date of filing complete specification: 13th November 2007

Publication and examination of the patent application takes place and the Controller raises the objection that the invention lacks unity of invention and hence the application shall be split into two applications i.e., main parent application and divisional application. Here, the date of filing divisional application will be 10th Jan 2009.

In such a case, both parent application and divisional application will have priority date of 15th November 2006 even though the divisional application was filed 10th Jan 2009, which also mean that both parent application and divisional application expire on the same date irrespective of the date of filing.
 
A specification in respect of a divisional application under section 16 shall contain specific reference to the number of the original application from which the divisional application is made. The request for examination in case of divisional application shall be filed within 48 months from the date of filing or priority of the parent application or within six months from the date of filing the divisional application, whichever expires later. Request for divisional application shall be filed only after filing request for the parent application to ensure the requirement of section 16(3).

Moreover, the complete Specification of a divisional application should not include any matter not in substance disclosed in the complete specification of the first application. The reference of parent application should be made in the body of the specification. A divisional application has to be filed before the grant for a parent application.

Though it sounds economical to club multiple inventions together and file for a single application, it is logical to follow the concept of unity of the invention and ensure that separate applications are filed for each invention.

 

Systematic documentation of invention

Got a new idea?

Planning for a patent?

What is the first step?

Once you made up your mind to file for a patent and the first meeting with attorney/agent is fixed, it is extremely important for you document the invention systematically. What all shall be documented and how much details are enough, has to be made clear before you proceed further with drafting specification.

Though one feels lazy writing the disclosure of the invention, honestly speaking, there is no substitute to documentation. Sooner or later, you have to document the invention sothat interaction with your agent is comfortable and you waste less time in clarification/redoing work. It is always advisable to execute Non-Disclosure Agreement with the attorney to whom you will be disclosing the invention.

 

What is to be claimed?

Patent is a techno-legal document and you get protection over the items you claim in the specification. Hence, identification of novel elements, which may relate to a product or process or utility, shall be done at first level itself. Once you are clear about what to claim, the detailed description of the invention in patent specification revolves around such novel elements and helps you to fine tune the invention as well as highlight novelty of the invention. The best way to separate out novelty of the invention is to perform a thorough global patent search and then remove the elements that are in public domain.

 

In the cases, where a patent application results from a research work, often inventor loves to include most of the experiments that are part of his/her research, which results in redundant and repeated data resulting in increased number of pages as well as extra fee. The data to be included in a patent application shall

a patent application shall only restrict to supporting novel elements of the invention and shall be explained to the level that a person skilled in the art understands it.

Existing technical problem

In order to be patentable, your invention shall have an inventive step. One of the ways to assess inventive step is identification of the technical problem and the solution you provide.

“Though one feels lazy writing the disclosure of the invention, honestly speaking, there is no substitute to documentation. Sooner or later, you have to document the invention.”

The Indian Patents (Amendment) Act 2005 in Section 2(1)(j) and 2(1)(ja) respectively states invention means a new product or process involving an inventive step and capable of industrial application and inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.

Hence, you shall always be clear about the prior art or existing knowledge or evolution of technology in order to know technical problem precisely and such technical problem shall be explained properly while documenting the invention. For easy reference, it is critical to document bibliographic details of the patent/non-patent documents known to you or even the work done by other inventors. Clear mention of existence of the technical problem makes it easy to establish the need to have a solution for the existing problem.

Best mode

As you know that best mode disclosure in the specification is an essential part of a patent application, specifically a complete application that starts with specification is an essential part of a patent application, specifically a complete application that starts with preamble, “The following specification particularly describes the invention and the manner in which it is to be performed”. This clearly indicates that disclosure has to state the best mode of working the invention and at the same time, the disclosure has to be complete, without any gaps in the process.

Section 10 (4) of Patents Act, 1970, clearly states that every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject- matter to which the invention relates to. Every complete specification shall fully and particularly describe the invention and its operation or use and the method by which it is to be performed; disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and end with a claim or claims defining the scope of the inventions for which protection is claimed.

The disclosure of the invention shall be sufficient enough that a person skilled in the art shall be able to achieve the results without further experimentation. Incomplete documentation of the invention by inventor resulting in incomplete disclosure of the same in patent specification may be one of the grounds for patent revocation or invalidation. Hence it is important to disclose complete process that is executable.

Specifications often consist of background, description, claims, abstracts and drawings etc. Step wise documentation of the invention assists your agent to draft specification in a better manner. You may always prepare flow charts or drawings for easy understanding even though the drawings submitted by you often would undergo complete re-doing of the work to match standards of the respective patent office.

 Conclusion

Documentation/Disclosure of the invention is integral part of the process of patenting. There is no substitute to it. The quality of the patent specification primarily depends upon the precise and clear information you provide to your patent agent. Even though it takes one or two days extra, it makes lots of sense to spend some time and write the invention description patiently.