Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Here's what's cracking today:

• Amazon.com and Williams-Sonoma throw down over AI software and copyright liability.

• Morgan Lewis beefs up in London and TroyGould adds a veteran presence in L.A.

• Caveat emptor when relying on model jury instructions.

As always, you can email me your feedback and follow me on Twitter.

Left to right, Mark Lemley, Judge Alex Tse and Annette Hurst.

 

Orrick Warns Judge of Frankenstein's Software

We had the Rumble in the Copyright Jungle this morning in U.S. Magistrate Judge Alex Tse's Northern District Courtroom. Stanford law professor Mark Lemley and Orrick Herrington & Sutcliffe partner Annette Hurst debated whether Amazon.com's software algorithms are evolved to the point that they exercise the human-like volition necessary for copyright liability when they choose photographs to appear on product pages.

Hurst warned that a ruling for Amazon will put the law on a dystopian path where no one can be held responsible for killings by automated vehicles and AI-piloted drones. Lemley rejected the premise. "This is not a rogue AI case. We are not in that world," he said. "I can imagine we might end up in such a world at some point, but we are not there now."

Williams-Sonoma (WSI) sued Amazon 18 months ago, alleging the tech giant misleads consumers into believing that third-party resellers of WSI merchandise are authorized dealers. WSI also accused Amazon of infringing several design patents. WSI then added copyright claims this spring, alleging that Amazon is displaying copyrighted WSI photos uploaded by resellers to Amazon's product detail pages.

Normally, an internet service provider is shielded from liability by the Digital Millennium Copyright Act when it merely hosts a third-party's infringing content. WSI contends that Amazon has developed sophisticated AI-based software known among employees as "Frankenstein" that makes the selections. "The reason they call them Frankenstein, your honor, is because Amazon is Dr. Frankenstein creating these monsters," Hurst said. Frankenstein is "picking winners, and it's using others' copyrighted content to do so, and directly financially benefiting by taking a cut."

Amazon is asking Tse to dismiss the copyright claims. It says the company is doing nothing out of the ordinary and the DMCA safe harbor should apply. Websites like YouTube, Facebook and Instagram use software that processes, ranks and prioritizes the content that people post to it, said Lemley, who's also a partner at Durie Tangri. "Were Williams-Sonoma's proposal to make new law adopted, the internet as we know it would be impossible," he said, "because no one could host content posted by third parties without fear of crushing liability."

Tse said he's going to be guided by Justice Antonin Scalia's dissent in ABC v. Aereo, where he wrote that to be shielded from liability, where he wrote that a service provider who is "totally indifferent to the material" is shielded from liability.

I'll have more from Friday's hearing, including the back and forth over killer robots, later today in The Recorder.

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IP Lateral – Morgan Lewis

Morgan Lewis & Bockius is bolstering its European IP practice with the addition of trademark and design partner Nick Bolter to its London office, along with a team of four associates, a paralegal and three trademark professional staff. Bolter is UK- and EU-qualified. He joins the firm from Cooley.

"The arrival of Nick and his team will be an important part of the strategic growth of our global intellectual property capabilities in the United States, Russia, China, and Japan," firm chair Jami McKeon said in a written statement. "The exceptional caliber of these lawyers represents an exciting development for our firm and for our clients, particularly retail and luxury brands companies."

IP Lateral – TroyGould

Veteran copyright and trademark litigator John Ulin has joined Century City-based TroyGould from Arnold & Porter Kaye Scholer.

Ulin has litigated some 200 IP cases and is the incoming chair of the USC Gould Intellectual Property Institute. He also serves on the Board of the Los Angeles Copyright Society and the legal advisory board of the Copyright Alliance.

"John has an established track record of successful outcomes for high profile and complex lawsuits," TroyGould's managing partner, Istvan Benko, said in a written statement. "He will be a tremendous asset to our firm's strong litigation practice."

Quick Hits

➤ The Ninth Circuit has granted furniture designer Herman Miller Inc. a new trial over allegations that rival Office Star infringed the trademark on its iconic Aeron chair. The problem: U.S. District Judge John Kronstadt had instructed jurors that the chair's appearance could be considered functional—and therefore not protectable—if it is "part of the actual benefit that consumers wish to purchase when they buy the product." Although that language comes straight from a Ninth Circuit model jury instruction, the court has previously held that it "flies in the face of existing caselaw." The court also affirmed a $3.4 million award for Herman Miller over its Eames chair while reversing a $3 million award for trade dress dilution. Foley & Lardner partner Jonathan Moskin argued the appeal for Herman Miller. I have a more in The Recorder here.

➤ Also on the trade dress front, U.S. District Judge Mary Rowland has ordered Otter Products to define more clearly the trade dress that it believes Fellowes is diluting with its competing smartphone cases. Otter's complaint says that its LifeProof trade dress comprises "individually and in combination" side bumpers that frame certain buttons; the "color pop band" on the back of the case; a trapezoidal branding tag on the side; and piping adjacent to speaker apertures. Fellowes argues that's at least 15 potential combinations, even leaving aside color variations. "If one needs to plead 15 different trade dress options … it is incapable of distinctiveness and therefore incapable of protection," Fellowes' attorneys at Pillsbury Winthrop Shaw Pittman and Wood Phillips argued. Rowland on Thursday ordered Otter to amend its complaint. "Both Fellowes and this Court require more clarity," she wrote.

➤ Don't call it a disclaimer. But two "diametrically opposed positions about the meaning of the same phrase"—one taken at the European Patent Office, the other in a Delaware lawsuit—have led to an indefiniteness finding in a dispute over nutritional supplements. U.S. District Judge Mitchell Goldberg has affirmed U.S. Magistrate Judge's Richard Lloret's recommendation from last fall that a patented process for producing an amino acid be ruled indefinite. The reason is that the claim term "average particle size" could refer to either an arithmetic mean or a volume-weighted size. Patent owner Kyowa Hakka Bio's expert had urged the former but had used the latter when describing the same phrase in a related patent before the EPO. While that wasn't a disclaimer per se, it helped tilt the balance in Lloret's recommendation and now Goldberg's decision. Oblon, McClelland, Maier & Neustadt partners Tia Fenton, Eric Schweibenz and Stephen Baxter had the winning argument for accused infringer Ajinomoto Inc. along with local counsel from Barnes & Thornburg.

That's all from Skilled in the Art today. I'll see you next week on Thursday.