Ghost Rider Copyright Case Lives On

Last week, in Gary Friedrich Enters., LLC v. Marvel Enters., Inc., the Second Circuit reversed the lower court’s dismissal of a lawsuit brought by Gary Friedrich, who created the comic book super hero “Ghost Rider,” ruling that Friedrich could maintain his lawsuit against Marvel Enterprises Inc. regarding his ownership rights in the character.

As we previously reported, SDNY’s summary judgment dismissal of the case hinged on its determination that Friedrich had definitively conveyed by contract to Marvel “all rights . . . including any renewal rights” to Ghost Rider. This turned on two dispositive findings by the Court: 1) at the time of Friedrich’s payment for the initial creation of the character in 1971 and 1972, and his endorsement on the back of his pay check that he was assigning all rights to Marvel; and 2) in a separate contract signed by the parties in 1978, when Friedrich was a freelancer for Marvel and relinquished all rights to the character in exchange for future freelance work.

On appeal, Friedrich argued that Marvel’s copyright in Ghost Rider lapsed in 2001 and reverted to him, the author of the work, under the renewal term of the Copyright Act, 17 U.S.C. § 304(a)(1)(A). Renewal term rights, which last for 67 years, are more than an extension of the original 28-year copyright term, but rather, are a “new estate” that is clear of all rights, interests or licenses that were granted under the original copyright. These renewal rights are intended to give artists a second chance to exploit their works. Importantly, the Second Circuit explained that an author may assign renewal rights during the copyright’s initial term, but noted the “strong presumption against the conveyance of renewal rights.”

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The End of an Era for Gene Patents? Supreme Court Rules that Isolated DNA is Unpatentable

Over thirty years ago, the USPTO awarded the first gene patent (US 4,447,538) and the Supreme Court held that biological inventions were subject to patent protection. Since then, tens of thousands of U.S. “gene” or DNA related patents have issued. However, there has been much uncertainty over the patentability of such inventions as of late.

We have previously reported on the circuitous voyage of Association for Molecular Pathology v. Myriad Genetics, et al. (“Myriad”) through the court system. On June 13, Myriad ran aground, with a unanimous Supreme Court ruling that human genes cannot be patented under §101 of the Patent Act, which sets forth the general provisions on patentability.

Justice Thomas, writing for the Court, rejected Myriad’s arguments that isolated genes should be found patentable, stating that Myriad “found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention.” Therefore, patent claims involving isolated DNA fail inquiry under §101.

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Don't Go Over 1%, or the Seed Giant May Come After You!

Last month, we reported on seed giant, Monsanto’s Supreme Court victory involving the question of patent exhaustion with regard to its sale of seed incorporating its patented seed technologies. On Monday, June 10, Monsanto appeared to emerge victorious from another litigation related to its seed technology and business when the Federal Circuit affirmed a lower court ruling that a coalition of organic farmers and seed sellers had no standing to seek declaratory judgments of non-infringement and invalidity with respect to Monsanto’s patented seed technologies.

In March 2011, the Organic Seed Growers and Trade Association (“OSGATA”) and other organic farmers and seed sellers decided to take preemptive action against Monsanto, filing suit in district court, challenging Monsanto’s seed patents because they were concerned that Monsanto would be accusing them of patent infringement. OSGATA decided to file the declaratory judgment action because it was concerned that the seeds they used would be “contaminated” with Monsanto trait even though they had no desire or intention to use or sell seeds incorporating Monsanto’s patented seed technologies (“transgenic seeds”), nor did they approve of the use of glyphosate herbicide on their crops. In other words, even if their seeds were inadvertently contaminated with trace amounts of Monsanto’s transgenic seeds, these farmers and seed sellers would not be exploiting the “advantageous” traits of the seeds.

These plaintiffs requested a covenant not to sue from Monsanto, but Monsanto refused. Instead, Monsanto referred to the statement on its website, “[i]t has never been, nor will it be, Monsanto policy to exercise its patent rights where trace amounts of our patented traits are present in farmers’ fields as a result of inadvertent means.” Monsanto also offered assurances that it had no intention of asserting patent-infringement claims against OSGATA, and that fears of any such suit, or decisions not to grow certain crops (out of such fear) was unjustified.

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Counterfeit Drugs - The Challenges of a Deadly Global Epidemic

For years, the average person who heard the phrase “knock offs” would immediately think of counterfeit versions of brand name luxury goods. While counterfeiters continue to target those types of goods, they are by no means the most nefarious or sophisticated category of counterfeiters. Counterfeiters have effectively targeted almost every type of consumer product imaginable, including the drugs and medical diagnostic devices that consumers rely on for their health and safety.

Consumers and pharmaceutical companies are not the only ones facing this growing concern. Pharmacies, hospitals, doctors, insurance companies, and others who are involved in marketing, distributing, or purchasing pharmaceutical and medical device products are at risk.

On June 18, 2013, the Gibbons Institute of Law, Science & Technology at Seton Hall Law School will present a CLE program featuring industry leaders who will provide an overview of the counterfeit drug problem and discuss strategies to combat counterfeiters in the United States and worldwide.

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Obama Administration's Latest Crackdown on Patent Trolls

We have recently posted on various developments relating to the surge of litigations involving non-practicing entities, or patent assertion entities, also called “patent trolls.” Last week, the Obama administration launched its latest attack on these litigious parties. 

Last Tuesday, the President issued seven legislative recommendations and five executive orders aimed to reduce the number of patent troll cases being filed in federal court. Those recommendations and orders can be found at the White House’s website.

Reviewing these, it appears that the President’s actions will have nominal impact on the patent troll epidemic, but certain of his legislative recommendations -- which many practitioners have been advocating for years -- may help buck the trend. Though well-intentioned, the Executive Orders announced last week, including Patent Office training, education and outreach, will do little to address the economic incentives fundamental to the non-practicing entity model. But, legislative proposals aimed to strengthen § 285 of the Patent Act (regarding the award of attorney fees), if enacted, might make trolls think twice before filing lawsuits.

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IPXI Launches Its First Unit License Right Contract Offering

We have been reporting news and developments regarding the Intellectual Property Exchange International, Inc. (IPXI).

Yesterday, the IPXI released details of its first Unit License Right (ULR) contract offering, involving among other assets, a portfolio of Philips organic light-emitting diode (OLED) technology patents. Purchasers of each ULR will be granted “the right to manufacture, use, sell, offer to sell or import five square meters of an OLED display for application in any display screen device.” So after many fits and starts, the IPXI, touted as “the world's first financial exchange for licensing and trading intellectual property (IP) rights,” appears underway.

How this new financial exchange will affect traditional IP licensing and valuation, IP litigation, and the activity of non-practicing entities will be of continued interest.


James J. Kang is an Apprentice in the Gibbons Intellectual Property Department. John J. Cahill, an Associate in the Gibbons Intellectual Property Department, co-authored this post.

Gibbons Directors Listed as 2013 New Jersey Super Lawyers

Two attorneys in the Gibbons Intellectual Property Department , David E. De Lorenzi, Department Chair, and Vincent E. McGeary, a Director in the Department, were listed as leaders in their fields by New Jersey Super Lawyers for 2013. Overall, 80 lawyers in the firm were featured in New Jersey Super Lawyers and New Jersey Super Lawyers Rising Stars.

“I’m proud that our representation keeps increasing in the most well known and highly regarded peer-review and client interview - based publications covering the legal industry,” says Patrick C. Dunican Jr., Chairman and Managing Director of Gibbons P.C. “It is a testament to our attorneys’ unique talents, insight, and client service.”

The Super Lawyers selection process comprises hundreds of thousands of statewide or regional surveys supplemented by a comprehensive examination of each nominee’s background and experience, focusing on such criteria as verdicts and settlements; transactions; representative clients; honors and awards; educational background; and any other outstanding achievements. Only 5 percent of the total lawyers in the state are selected for inclusion in Super Lawyers.

Managing Counterfeiting Issues in the Pharmaceutical Industry

Pharmaceutical counterfeiting poses a threat to consumers and harms both the reputation and financial condition of pharmaceutical companies. On Tuesday, June 18, the Gibbons Institute of Law, Science & Technology will be hosting "Managing Counterfeiting Issues in the Pharmaceutical Industry," from 5:00 - 7:00 pm at Seton Hall Law School in Newark, NJ.

This program will identify practical, anti-counterfeiting strategies and discuss how drug companies can develop and implement tailored "best practices" to deter and combat counterfeiters.

Panelists for this program include:

  • Catherine A. Begley, Regional Security Director for the North America Region, Merck
  • Kathleen H. Dooley, Partner, McGuireWoods LLP
  • Owen J. McKeon, Director, Intellectual Property Department, Gibbons P.C.
  • David W. Opderbeck, Professor of Law and Director, Gibbons Institute of Law, Science & Technology
  • Estelle J. Tsevdos, Ph.D., Director, Intellectual Property Department, Gibbons P.C.  

The panelists will discuss the use of technology in inventory tracking and product authentication, various employee training programs that can help companies avoid counterfeiting and how to develop comprehensive investigative and enforcement strategies.

Registration for the program starts at 4:30 pm, with the panel discussion at 5:00 pm and a networking reception following the program at 7:00 pm. The $30 program fee includes food, beverages, parking and 2.0 NY & NJ CLE Credits.

For additional information or to register, please click here.

Twitter's Innovative Patent Agreement ("IPA") is in Play . . . .

Last spring, we reported Twitter’s introduction of a novel employee patent assignment plan called the “Innovator’s Patent Agreement” (“IPA”). In short, the IPA is a patent assignment agreement, or transfer of patent ownership from an inventor/employee to a company, where the inventor retains control over how the patent is used.

Twitter’s IPA now is in play.

Last week, U.S. Patent No. 8,448,084 (“the ‘084 patent”) issued to inventor Loren Brichter (“Brichter”) and is assigned to Twitter. Twitter then announced it would apply the IPA for the first time. This means that Twitter will not assert the ‘084 patent against others unless acting defensively, or if Brichter gives the company permission to use the ‘084 patent offensively.

Time will tell if the IPA, which apparently has been adopted by a number of other technology companies, will have any impact on patent infringement litigation.


Jillian A. Centanni is an Associate in the Gibbons Intellectual Property Department. Ralph A. Dengler, a Director in the Gibbons Intellectual Property Department, co-authored this post.

The Patent Troll Assaults Continue ... But To What End?

Somewhere, someone must have taken the famous cartoon of Elmer Fudd, in full hunting regalia, and changed the caption to read, “Shhhhhhhhhhh, I’m hunting Twolls.” (After securing the appropriate IP permissions, of course.)

This past fall, we posed the hypothetical question of whether it was open season for patent trolls, euphemistically referred to as non-practicing entities (“NPEs”) or patent assertion entities (“PAEs”), in the wake of the new 35 U.S.C. § 299.

Previously, we had reported that the “Saving High-Tech Innovators From Egregious Legal Disputes Act of 2012,” (or “Shield Act”) was introduced in the House of Representatives, to permit fee-shifting in patent litigations involving computer hardware and software. That legislation was reintroduced and is pending in committee. Other anti-troll legislation is pending as well.

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