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Jessica Chesher

Managing Editor

Innovation eReview
Tech Law Digest
by Eugene R. Quinn, Jr., Associate Director, NYS Science & Technology Law Center

Right of Publicity Not Preempted By Copyright Law 

June Toney’s photograph was used to advertise a hair product marketed by Johnson Products Company. Toney consented to the use of her photograph for a limited time, but when a successor company later used the photograph without her permission, Toney filed suit alleging that her right of publicity (a state law right) had been violated. The district court dismissed her claim after finding that it was preempted by federal copyright law, which means that the district court believed the state law claim of a violation of the right of publicity was the same as and, therefore, prohibited by, the Copyright Act, which prevents states from protecting copyrights. The United States Court of Appeals for the Seventh Circuit disagreed, finding that the copyright laws do not reach identity claims such as Toney’s. In determining that federal law did not preempt the state claim, the Seventh Circuit found that Toney’s identity is not fixed in a tangible medium of expression, which is a fundamental requirement for the existence of a copyright. This being the case, there was no “work of authorship” at issue in Toney’s right of publicity claim. A person’s likeness--her persona--is not authored and it is not fixed. The fact that an image of the person might be fixed in a copyrightable photograph does not change the analysis. As a result, the Seventh Circuit concluded that the rights protected by the Illinois state statute were not “equivalent” to any of the exclusive rights within the general scope of copyright rights set forth in at 17 U.S.C. 106. The Seventh Circuit went on to explain that identity is an amorphous concept that is not protected by copyright law; thus, the state law protecting it is not preempted. For more information see Toney v. L’Oreal USA, Inc. (7th Cir. May 6, 2005)

Razor Patent Litigation

The Gillette Company (Gillette) owns U.S. Patent No. 6,212, 777 (issued April 10, 2001) for wet-shave safety razors with multiple blades. Gillette sued Energizer Holdings, Inc. (Energizer) in the United States District Court for the District of Massachusetts alleging Energizer’s QUATTRO(®), a four-bladed wet-shave safety razor, infringes certain claims of the ’777 patent. The district court denied Gillette’s motion for a preliminary injunction because it found that the claims of the ’777 patent covered only a three-bladed razor, and, consequently, Gillette did not show a reasonable likelihood of success on its claim of literal infringement by Energizer’s four-bladed razor. The United States Court of Appeals for the Federal Circuit determined on appeal that the district court erred in construing the claims of the ’777 patent to cover only three-bladed safety razors and, therefore, reversed the district court ruling and remanded for further proceedings. Specifically, claim 1, in relevant part, read: “A safety razor blade unit comprising a guard, a cap, and a group of first, second, and third blades. . .” Because the term “comprising” was used in the preamble of the claim, under well established and long settled law, this means that additional elements can be added. The term “comprising” is used to cover what is described and anything else that is added. Therefore, the addition of a fourth blade would indeed infringe. This construction was bolstered by the fact that the specification clearly indicated that more than three blades could be employed. For more information see Gillette Co. v. Energizer Holdings, Inc. (Fed. Cir. April 29, 2005).

Administrative Patent Mistake

Steven M. Hoffer, acting as his own attorney, appealed the summary judgment of the United States District Court for the Northern District of California, which held that defendants Microsoft Corporation, International Business Machines Corporation, and Ariba Incorporated do not infringe claim 21 of United States Patent No. 5,799,151 and that claim 22 of the same patent was invalid for indefiniteness. On April 22, 2005, the United States Court of Appeals for the Federal Circuit ruled in favor of the defendants on infringement, but also ruled that claim 22 was valid, albeit not infringed. What is interesting about this case is the fact that claim 22 contained an obvious administrative error. The claim preamble read: “A method in accordance with claim 38, wherein. . .” It is axiomatic that a dependent claim must depend from a claim that precedes said dependent claim. The district court found the meaning confusing and indefinite; after all, how could claim 22 depend from claim 38? The problem was created by the Patent Office. Both originally filed claims 38 and 39 were allowed during prosecution. After prosecution, as is almost always necessary, the claims were renumbered to eliminate cancelled claims and to ensure that the issued patent starts with claim 1 and proceeds in numerical order. The Patent Office properly renumbered the claims, but claim 22, which was originally filed claim 39, continued to refer to claim 38, which had been renumbered to claim 21. Therefore, claim 22 should have read “A method in accordance with claim 21, wherein. . .” The Federal Circuit ruled that absent evidence of culpability or intent to deceive by delaying formal correction, a patent should not be invalidated based on an obvious administrative error. For more information see Hoffer v. Microsoft Corporation (Fed. Cir. April 22, 2005).

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