Friday, 26 July 2013
So imbued is this Kat with the idea that "design around" is something to be encouraged that he never gave much thought to the possibility that there might be circumstances in which something akin to "design around" might be viewed in less positive IP terms. But this Kat's complacency was jarred earlier this week in connection with a talk that he gave about the U.S. case, WNET v Aereo. On 1 April 2013, the Second Circuit Court of Appeals affirmed a decision by the lower court to deny a request for a preliminary injunction against Aereo for the operation of its distinctive content retransmission system, here. Under this system, a farm of coin-sized antennae was set up in Brooklyn to enable Aereo to download broadcast content for retransmission, without permission of the content owner. For each user, there is a separate and distinct antenna that enables the user either to view content virtually simultaneously with transmission or to enable viewing at a later time.
The majority reasoned that a retransmission broadcast to individual users under such circumstances is not a public performance under the U.S. Copyright Act, as construed by the court in 2008 in the so-called Cablevision decision here. As such, it was not captured by the retransmission provisions of the Act. This result was vigorously objected to by the respected Judge Denny Chin. In his dissent, he called Aero’s “technology platform” a “sham,” describing it as a “Rube Goldberg-like contrivance, over-engineered in an attempt to avoid the reach of the Copyright Act and to take advantage of a perceived loophole in the law.” In short, as one of the members of the audience then noted, what Aereo had done was to “design around” the Copyright Act. “What an intriguing idea”, I thought to myself—“One can “design around” a law as well around a patent. Here, however, at least in the view of Judge Chinn, “designing around” the Copyright Act was an unashamedly undesirable activity.
What exactly accounts for this stark difference in approach? One might be tempted to say that “designing around” a patent is by its very nature a productive activity, while “designing around” a law is not. But that seems too facile. After all, not every successful effort to design around an existing patent yields an invention of any practical value (indeed, the same can be said of patents in general). At most, only a relative handful of issued patents are ultimately of any material significance. When one adds to that the uncertainty in the scope of claims and the relatively limited amount of time that an examiner can actually devote to any given patent application, one is tempted to argue that “designing around” has the potential to add to the already overabundance of problematic patents, depending upon the circumstances..
More on Rube Goldberg here.