Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. The first paragraph of Judge William Smith's opinion in Markham Concepts v. Hasbro notes that for “people of a certain age,” the Game of Life could be found in seemingly every American household “alongside Twister, Clue and Monopoly.” I am exactly of that age, so I was hooked. Below are details of the copyright battle over the game, including how Judge Smith went the extra mile (literally) to accommodate three nonagenarian witnesses who were part of the game's creation in 1959. Also, Berkeley Law's Peter Menell and the Federal Judicial Center are doing for patent mediators what they've done for the judiciary—with help from some heavy-hitting IP litigators and judges. And is Google going to have to bring in yet another relief pitcher for the World Series of IP? As always you can email me your thoughts and follow me on Twitter.

Photo: Morgan via Flickr

 

Game of Life Ends in Copyright 'Day of Reckoning'

It's only January but I think we already have the best IP opinion of 2019. U.S. District Judge William Smith of Rhode Island has produced a tour-de-force in a copyright dispute over Hasbro's popular Game of Life board game.

Smith's 25-page opinion issued Friday settles a long-running beef. On one side were toy developer Reuben Klamer, TV celebrity Art Linkletter and Hasbro. On the other was Klamer's former business partner Bill Markham. Markham's heirs were trying to acquire the copyright that Klamer licensed to the Milton Bradley company, now owned by Hasbro, in 1959. Over the course of the bench trial Smith flew to Los Angeles to take live testimony from Klamer, now 96, and two former employees of Markham who created the game prototype and its initial rules and box cover.

“Like the Game of Life itself, this fifty-nine-year tug-of-war for renown and royalties has followed a long, circuitous path,” Smith wrote. His conclusion is styled in Game of Life parlance as the parties' “Day of Reckoning.” The result: Markham's heirs cannot ascend to “millionaire acres.”

Markham Concepts v. Hasbro is a win for Lathrop & Gage partner Erica Van Loon, who represented Klamer along with Patricia Glaser of Glaser Weil Fink Howard Avchen & Shapiro.

Van Loon said Smith was eager to hear directly from Klamer and Markham's two employees, Grace Chambers and Leonard Israel, who are also in their 90s and live in Southern California. So he scheduled their testimony while on a visit to Pasadena to sit by designation at the Ninth Circuit. “He said 'I'm coming to Los Angeles and I really want to hear live testimony from these witnesses,'” Van Loon said. The judge and his clerk arranged to borrow a courtroom in the Central District of California's First Street courthouse.

“Just being able to hear them live and not by video, I think made a tremendous difference in the case,” Van Loon said.

Smith wrote that he found Chambers and Israel, who had no financial interest in the outcome, especially credible, and that Klamer corroborated their testimony.

Smith describes how Klamer, Markham and Linkletter pitched Milton Bradley executives on the game at Chasen's restaurant in West Hollywood in 1959. By that fall, a company owned by Klamer and Linkletter had licensed the game to Milton Bradley for a 6 percent royalty, while Markham in turn accepted a 30 percent share of those payments.

“The Game, an instant classic, sold like crazy, and is still a source of revenue for Milton Bradley's successor-in-interest Hasbro,” Smith writes. “The ensuing 'Pay Day!'has sometimes been the cause of consternation, however.”

Within a few years, Markham was complaining to Klamer that his share was “ridiculously low” and that Linkletter hadn't fulfilled his obligations to promote the game. Klamer replied that the deal “was and is a fair one,” but agreed to pay Markham 50 percent of the royalties on overseas sales. The two ended up litigating the issue of foreign sales in the 1980s.

Markham died in 1993. His heirs sued in 2015, invoking a provision of the Copyright Act of 1976 that allows authors to terminate licenses after 56 years in certain circumstances.

But that provision excludes works for hire, and Smith concluded that the Game of Life is a work for hire commissioned by Klamer and produced by Markham's company. “The weight of the evidence in this case is that the success that met the Game of Life was, in fact, nothing if not the result of collective effort,” Smith concluded. “And although the credit, in the colloquial sense, can be split pro rata, the law dictates that the copyrights cannot be.”

Holland & Knight represented Hasbro while Thompson & Coburn and Hinckley, Allen & Snyder represented Linkletter's heirs and successors-in-interest.

Van Loon said her client is pleased that the decades-long dispute can now be put to rest. “I think Reuben has some peace now,” she said.

Everything You Wanted to Know About Patent Mediation

Quick, which type of patent cases are the hardest to settle? Is it a good idea to bring an inventor into settlement discussions? And do all judicial districts consider mediation proceedings privileged?

I sure as heck don't know, but a leading scholar of patent litigation has drawn on the wisdom of some of the country's most prestigious IP mediators and practitioners to provide guidance on these and numerous other issues.

Berkeley Law's Peter Menell and the Federal Judicial Center are presenting a comprehensive Patent Mediation Guide in collaboration with Kathi Vidal of Winston & Strawn; Leeron Kalay of Fish & Richardson; Matt Powers of Tensegrity Law Group and veteran in-house attorney Sarita Venkat. They in turn are drawing on insights from current and former judicial officers Jeremy Fogel, David Folsom, Rodney Gilstrap, Paul Grewal, Faith Hochberg, Ed Infante, Elizabeth Laporte, Paul Michel and James Ware, plus many other mediators and practitioners.

The Patent Mediation Guide complements the Patent Case Managent Judicial Guide, which for almost 10 years has provided step-by-step advice to federal judges as they navigate patent litigation. The mediation guide's stated goal is promoting “cost-effective, time-effective, and constructive dispute resolution.”

As for the questions: According to the guide, cases between rival pharmaceutical companies are “difficult and often impossible to settle” due to industry economics, high damage awards and the involvement of more business people than usual. Inventors are “often counterproductive to the mediation process,” though their participation can sometimes contribute to outside-the-box settlements. And the Northern District of Texas and the District of Minnesota do not recognize a mediation privilege.

So Who's Going to Handle the Oracle v. Google Appeal Now?

No doubt you caught the news this weekend. Williams & Connolly's star Supreme Court advocate Kannon Shanmugam has lateraled to Paul Weiss Rifkind Wharton & Garrison, while Lisa Blatt has returned from Arnold & Porter to head up W&C's Supreme Court and appellate practice.

My first question: Does this mean yet another change in appellate counsel for Googlein its copyright battle with Oracle over Java application program interfaces? You know, the one Google calls the “copyright lawsuit of the decade”?

Quick recap: When the case first went up to the Federal Circuit, Keker, Van Nest & Peters partner Bob Van Nest, who's led Google to success in both jury trials, argued the appeal. Google got shredded. The company turned to King & Spalding partner Daryl Joseffer for its first cert petition and second appeal to the Federal Circuit. Neither was successful.

Then this fall, just as Joseffer was accepting a new role with the U.S. Chamber of Commerce Litigation Center, Williams & Connolly appeared for Google at the Supreme Court. Shanmugam is counsel of record on the company's Jan. 24 cert petition.

Now Google will either have to bring in Paul Weiss, turn to another lawyer at Williams & Connolly (which handles a lot of Google's work at the Patent Trial and Appeal Board), or maybe hand off to Goldstein & Russell's Tom Goldstein, who also appears on the cert petition. Or maybe it will turn to Door No. 5.

Google and Shanmugam declined to comment. I guess we'll find out when Google files its reply.

That's all from Skilled in the Art for today. I'll see you all again on Friday.