Justia U.S. D.C. Circuit Court of Appeals Opinion Summaries
Articles Posted in Intellectual Property
Matthew Green v. DOJ
A computer science professor and a tech inventor challenged the Digital Millennium Copyright Act (DMCA), arguing that its provisions against circumventing technological protections on copyrighted works and distributing circumvention tools violate the First Amendment. They claimed these provisions unduly stifle fair use of copyrighted works, which they argued is protected speech. The plaintiffs sought to invalidate these provisions as facially overbroad and a prior restraint on speech.The United States District Court for the District of Columbia dismissed the plaintiffs' facial First Amendment challenges and their Administrative Procedure Act claims but allowed their as-applied First Amendment claims to proceed. The court found that the plaintiffs failed to show that the DMCA's impact on third-party free speech interests was different from its impact on their own. The court also held that the triennial rulemaking process for exemptions did not constitute content-based censorship. The plaintiffs' as-applied claims were later dismissed after the Librarian of Congress granted an exemption for the professor's security research, and the court found that the tech inventor's proposed device would likely lead to widespread piracy.The United States Court of Appeals for the District of Columbia Circuit affirmed the district court's dismissal of the facial challenges. The court held that the DMCA's anticircumvention and antitrafficking provisions are not facially overbroad because they regulate conduct, not speech, and their legitimate applications, such as preventing digital piracy, far outweigh any potential unconstitutional applications. The court also rejected the argument that the triennial rulemaking process constitutes a prior restraint on speech, noting that the DMCA does not target expression and that alternative avenues for lawful access to copyrighted works remain available. View "Matthew Green v. DOJ" on Justia Law
Apprio, Inc. v. Zaccari
The case revolves around a dispute between Apprio, Inc., a government contractor, and its former employee, Neil Zaccari. Zaccari, a Senior Technical Manager at Apprio, had developed a regulatory compliance software prior to his employment. During his tenure, he updated the software, demonstrated it at work, and handed it over to Apprio upon request. Apprio then sent Zaccari a document titled “Proprietary Information and Assignment of Inventions Agreement,” which Zaccari acknowledged through Apprio’s human resources portal. After his termination, Zaccari copyrighted the updated software and sued Apprio for breaching the agreement when it allegedly forced him to turn over a copy of the software to an Apprio client. In response, Apprio countersued Zaccari for breaching the agreement when he refused to assign his rights in the updated software to Apprio.The District Court combined the cases, dismissed Zaccari’s case for failure to state a claim, and granted partial and full summary judgment for Apprio with respect to contractual assignment of rights in the updated software and its breach of contract claim. Zaccari appealed, arguing that the agreement is not an enforceable contract and, alternatively, that the agreement neither supports the assignment of his rights in the updated software to Apprio nor a finding that he breached the agreement.The United States Court of Appeals for the District of Columbia Circuit disagreed with Zaccari's arguments. The court held that Zaccari’s “acknowledgment” of the agreement created an enforceable contract that requires Zaccari to assign his rights in the updated software to Apprio. Accordingly, Zaccari breached the binding agreement by failing to assign those rights to Apprio and disclosing the updated software’s underlying code to the U.S. Copyright Office in order to obtain the copyright. The court affirmed the District Court's decision. View "Apprio, Inc. v. Zaccari" on Justia Law
Medical Imaging & Technology Alliance v. Library of Congress
The case involves the Medical Imaging & Technology Alliance and the Advanced Medical Technology Association, two trade associations representing medical device manufacturers, who sued the Library of Congress and the Librarian of Congress. The dispute arose from an exemption to the Digital Millennium Copyright Act (DMCA) that allowed some access to the software of advanced medical devices. The trade associations claimed that the exemption violated the Administrative Procedure Act (APA). The district court dismissed the case, ruling that the APA claims were barred by sovereign immunity because the Library of Congress is part of “the Congress” and therefore not an “agency” within the meaning of the APA’s judicial review provision.The United States Court of Appeals for the District of Columbia Circuit reversed the district court's decision. The court held that irrespective of whether the Library is an “agency,” Congress has specified that copyright regulations under Title 17 of the U.S. Code are subject to the APA. The court concluded that DMCA rules are subject to the APA just like other copyright rules, and therefore, the APA provides the necessary waiver of sovereign immunity for this suit. The court remanded the case back to the district court to assess the APA claims. View "Medical Imaging & Technology Alliance v. Library of Congress" on Justia Law
American Society for Testing and Materials v. Public.Resource.Org, Inc.
Plaintiffs in this case are three standard-developing organizations: the American Society for Testing and Materials (ASTM), the American Society of Heating, Refrigerating, and Air-Conditioning Engineers (ASHRAE), and the NFPA. Defendant, Public.Resource.Org, is a non-profit group that disseminates legal and other materials. It has posted on its website copies of hundreds of incorporated standards. Plaintiffs sued Public Resource for copyright infringement. Plaintiffs moved for summary judgment on their claims as to nine of the disputed standards. The district court granted the motion and enjoined Public Resource from posting these standards. The DC Circuit reversed and remanded for further factual development. On remand, the district court held that the non-commercial posting of standards incorporated by reference into law is fair use.
The DC Circuit affirmed the district court’s reasonable exercise of discretion in declining to award injunctive relief. The court explained that the first three factors under section 107 strongly favor fair use, and the fourth is equivocal. The court concluded that Public Resource’s non-commercial posting of incorporated standards is fair use. Further, the court found that the district court reasonably declined to enter an injunction. Public Resource promptly removed from its website the 32 standards found not to have been incorporated into law. The court explained that Plaintiffs give the court no reason to think that Public Resource will post unincorporated standards again absent an injunction View "American Society for Testing and Materials v. Public.Resource.Org, Inc." on Justia Law
Posted in:
Copyright, Intellectual Property
Valancourt Books, LLC v. Merrick Garland
The Copyright Office sent a letter to Valancourt Books, LLC, an independent press based in Richmond, Virginia, demanding physical copies of Valancourt’s published books on the pain of fines. Valancourt protested that it could not afford to deposit physical copies and that much of what it published was in the public domain. In response, the Office narrowed the list of demanded works but continued to demand that Valancourt deposit copies of its books with the Library of Congress or otherwise face a fine. Valancourt then brought this action against the Register of Copyrights and the Attorney General. Valancourt challenged the application of Section 407’s deposit requirement against it as an unconstitutional taking of its property in violation of the Fifth Amendment and an invalid burden on its speech in violation of the First Amendment. The district court granted summary judgment to the government on both claims.
The DC Circuit reversed the district court’s grant of summary judgment in the government’s favor and remanded for the entry of judgment to Valancourt and the award of relief. The court concluded that Section 407, as applied by the Copyright Office in this case, worked an unconstitutional taking of Valancourt’s property. The court explained that the Office demanded that Valancourt relinquish property (physical copies of copyrighted books) on the pain of fines. And because the requirement to turn over copies of the works is not a condition of attaining (or retaining) copyright protection in them, the demand to forfeit property cannot be justified as the conferral of a benefit in exchange for property. View "Valancourt Books, LLC v. Merrick Garland" on Justia Law
National Religious Broadcasters Noncommercial Music License Committee v. CRB
Every five years, the Copyright Royalty Board (the “Board”) issues a statutory license that establishes the terms and rates under which certain entities that stream copyrighted songs over the internet make royalty payments to the songs’ copyright owners. The “webcasters” that are subject to the license are “noninteractive” — i.e., they stream music without letting their listeners choose songs on demand. This appeal challenges on various grounds the Board’s most recent noninteractive webcaster license Final Determination, covering calendar years 2021 through 2025.
The DC Circuit sustained Board’s Final Determination in all respects. The court held that the Board’s decision to set a royalty rate that was slightly below the Willig model’s flawed opportunity-cost measure is neither here nor there. And thus, the court explained, it has no occasion to decide, as SoundExchange urges, whether it would, as a matter of law, violate the willing buyer/willing seller standard for the Board to set a royalty rate below some definitive measure of opportunity cost. View "National Religious Broadcasters Noncommercial Music License Committee v. CRB" on Justia Law
Fraunhofer-Gesellschaft Zur Forderung Der Angewand v. Sirius XM Radio Inc.
Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung E.V. (“Fraunhofer”) initiated a patent infringements lawsuit against Sirius XM Radio Inc. (“Sirius XM”) in district court. After filing suit, Fraunhofer subpoenaed Sirius XM’s former Chief Marketing Officer, Appellant, for a deposition. When Appellant failed to appear for her deposition, the parties filed motions to address the situation. The district court denied Appellant’s motion to quash the subpoena, ordered her to sit for her deposition, found her in contempt for defying the subpoena, and expressed an intent to award sanctions. Appellant sat for her deposition, and then, before any judgment had been issued on sanctions, she appealed the orders against her. Before the DC Circuit, Appellant argued that the district court abused its discretion in compelling her deposition, finding her in contempt, and expressing an intent to award sanctions.
The DC Circuit dismissed the appeal for want of jurisdiction. The court reasoned that Appellant’s challenge to the district court’s order compelling her deposition is moot because her deposition testimony has been given. Appellant’s challenges to the district court’s contempt finding and intent to award sanctions raise matters relating to a discovery proceeding ancillary to a patent suit which are within the exclusive jurisdiction of the United States Court of Appeals for the Federal Circuit. View "Fraunhofer-Gesellschaft Zur Forderung Der Angewand v. Sirius XM Radio Inc." on Justia Law
Posted in:
Intellectual Property, Patents
Matthew Green v. DOJ
Claiming that the code they write qualifies as speech protected by the First Amendment, Appellants brought a pre-enforcement action challenging the DMCA on facial and as-applied First Amendment grounds. The government moved to dismiss all claims, and the district court partially granted the motion. The district court dismissed all, but the as-applied First Amendment claims. The district court summarily denied an injunction for the dismissed claims. Appellants appealed the district court’s dismissal of their facial challenge and denial of injunctive relief.
The DC Circuit affirmed the district court’s denial of Appellants’ motion for a preliminary injunction and remanded for further proceedings. The court first addressed jurisdiction and held that declaring the DMCA facially unconstitutional would resolve Appellants’ as-applied claims, but not so in reverse, ensuring that their as-applied claims remain anything but inextricably bound to their facial challenge. The court, therefore, held that it lacked jurisdiction over Appellants’ facial challenge.
In regards to the Appellant, that wants to publish an academic book “to instruct readers in the methods of security research,” which will include “examples of code capable of bypassing security measures, the court held that the government’s concession ends any “credible threat of prosecution” against Appellant, leaving him without standing to obtain a preliminary injunction. Moreover, the court held that the other Appellant’s arguments on the remaining preliminary injunction factors rest entirely on his flawed claim that continued enforcement of the DMCA imperils his First Amendment rights. View "Matthew Green v. DOJ" on Justia Law
Klayman v. Judicial Watch, Inc.
Klayman founded Judicial Watch in 1994 and served as its Chairman and General Counsel until 2003. Klayman claims he left voluntarily. Judicial Watch (JW) claims it forced Klayman to resign based on misconduct. During negotiations over Klayman’s departure, JW prepared its newsletter, which was mailed to donors with a letter signed by Klayman as “Chairman and General Counsel.” While the newsletter was at the printer, the parties executed a severance agreement. Klayman resigned; the parties were prohibited from disparaging each other. Klayman was prohibited from access to donor lists and agreed to pay outstanding personal expenses. JW paid Klayman $600,000.
Klayman ran to represent Florida in the U.S. Senate. His campaign used the vendor that JW used for its mailings and use the names of JW’s donors for campaign solicitations. Klayman lost the election, then launched “Saving Judicial Watch,” with a fundraising effort directed at JW donors using names obtained for his Senate run. In promotional materials, Klayman asserted that he resigned to run for Senate, that the JW leadership team had mismanaged and the organization, and that Klayman should be reinstated.Klayman filed a complaint against JW, asserting violations of the Lanham Act, 15 U.S.C. 1125(a)(1), by publishing a false endorsement when it sent the newsletter identifying him as “Chairman and General Counsel” after he had left JW. Klayman also alleged that JW breached the non-disparagement agreement by preventing him from making fair comments about JW and that JW defamed him. During the 15 years of ensuing litigation, Klayman lost several claims at summary judgment and lost the remaining claims at trial. The jury awarded JW $2.3 million. The D.C. Circuit rejected all of Klayman’s claims on appeal. View "Klayman v. Judicial Watch, Inc." on Justia Law
United States v. Shi
Drill riser buoyancy modules (DRBMs) are the high-tech equivalent of water wings for the miles of steel pipe that extend from drillships to the ocean floor and carry oil from natural deposits tens of thousands of feet below the surface. In 2012, only four major companies in the world produced DRBMs. CBMF was sponsored by China to develop DRBM technology. CBMF partnered with Shi, a Ph.D. with 25 years of experience in offshore structural design. Shi visited factories where DRBM was being produced; the manufacturers took precautions to protect their information. Shi hired former employees of those companies, making clear that they were to provide their former employers’ nonpublic information. CBMF was successful in duplicating the technology. At a pitch meeting by Shi to representatives of a company Shi believed to be Lockheed Martin, FBI agents arrested Shi.Three coconspirators pled guilty to conspiracy to commit theft of trade secrets, 18 U.S.C. 1832; one absconded, and a CBMF employee remained in China. CBMF never appeared, leaving Shi as the only defendant at trial. The D.C. Circuit affirmed Shi's conviction as supported by substantial evidence. The information at issue was not publicly available; it came from a competitor. Shi joined an agreement to acquire and use trade secret information and believed the documents he received contained trade secrets. View "United States v. Shi" on Justia Law