‘A Brink of Invention’ Claim

Claims based on alleged breaches of invention assignment agreements rest fundamentally on state laws and, significantly, on state trial courts’ determinations of fact.

In Ikaria, Inc. v. Frederick J. Montgomery, No. 2015AP568, plaintiff-appellant Ikaria advances a ‘brink of invention’ theory that employees left Ikaria immediately before they were about to come upon an invention under the scope of Ikaria’s invention assignment clause with them. (Had they stayed, and completed their invention while under Ikaria’s employ, the rights to their invention would have resided with their employer.)

Brink of invention claims, naturally, rest on how much an employee had achieved prior to his or her departure. They’re fact-intensive. The argument as a claim makes sense, I think, because others may naturally wonder: why did employees leave when they did?

Here’s the employer’s claim, from the appellate opinion, paragraph 26:

What this leaves we will call Ikaria’s “brink-of-invention” argument. Ikaria argues that the defendants breached the implied duty of good faith by allegedly intentionally timing their resignations to occur when the defendants, as Ikaria puts it, were on “the brink of completing their inventions, so that they could evade a narrow reading of the Invention Assignment Clause.”

To advance successfully a claim like this, Ikaria would need two things under Wisconsin Law:

(1) to show that “the defendants not only conceived of all four inventions after the employee-defendants had resigned, but that these conceptions-of-invention were based on “substantial work” that the defendants “performed post-Ikaria”


(2) for the appellate court to disregard that “Ikaria effectively asks us to reweigh witness credibility and the evidence generally and override factual inferences drawn by the circuit court. However, as stated above, we are obligated to view the evidence in the light most favorable to the circuit court’s fact finding, including its credibility determinations, and there was a factual basis for the circuit court to reject the brink-of-invention notion.”

(Paragraphs 28, 29.)

In Ikaria, one sees that an appellate court may decline consideration of a factual determination about a ‘brink-of-invention’ departure by relying on a trial court’s prior factual assessment.

Appellate slip opinion, below:

Download (PDF, 381KB)

Apple (and Friends) Consider 5th Amendment Defense in Encryption Case

Over at Ars Technica, David Kravets writes that in addition to a First Amendment defense against the federal government’s efforts to gain access to the data on an encrypted iPhone, the tech company will use a Fifth Amendment defense.  See,  Forget the 1st Amendment, Apple to plead the 5th in iPhone crypto flap.

The First Amendment defense is straightforward:

Apple will also argue in its legal papers to be filed by Friday that computer code and its cryptographic autograph are protected speech under the First Amendment and that the government cannot compel speech by Apple. Bloomberg reported:

Apple is expected to argue in federal court that code should be protected as speech. The company is fighting a government order requiring it to write software to help the Federal Bureau of Investigation unlock an iPhone used by one of the San Bernardino shooters. Apple views that as a violation of its philosophy. Just as the government can’t make a journalist write a story on its behalf, according to this view, it can’t force Apple to write an operating system with weaker security.

Here’s a sketch of the Fifth Amendment claim:

….the Fifth Amendment goes beyond the well-known right against compelled self-incrimination. The relevant part for the Apple analysis is: “nor be deprived of life, liberty, or property, without due process of law; nor shall private property be taken for public use, without just compensation.”

The idea here is that the government is conscripting Apple to build something that it doesn’t want to do. That allegedly is a breach of its “substantive due process.” The government is “conscripting a company’s employees to become agents for the government,” as one source familiar with Apple’s legal strategy told Ars. The doctrine of substantive due process, according to Cornell University School of Law, holds “that the 5th and 14th Amendments require all governmental intrusions into fundamental rights and liberties be fair and reasonable and in furtherance of a legitimate governmental interest.”

(One small nitpick, about my alma mater’s name: it’s the Cornell Law School (no one calls it anything else).

Kravets writes that the ACLU “is to file a friend-of-the-court brief in the dispute that cites the Fifth Amendment in Apple’s defense. “If this legal argument sounds novel, it’s because the government’s claim is unprecedented,” [ACLU staff attorney Alex] Abdo said in a telephone interview.”

The next court hearing is 3.22.16.


Monkey Copyright Case Is About More Than A Monkey‘s Copyright

Still in the public domain.

At first blush, a case in which People For the Ethical Treatment intervened on a monkey’s behalf to secure a copyright in a photograph that the money took (and receive monetary damages from its infringement)  is about the possibility of a monkey holding a copyright.  That’s not a particularly hard question, as the Copyright Act as now written cannot reasonably be understood to apply to animal photographers:

SAN FRANCISCO—A federal judge on Wednesday said that a monkey that swiped a British nature photographer’s camera during an Indonesian jungle shoot and snapped selfies cannot own the intellectual property rights to those handful of pictures.

US District Judge William Orrick was tasked with hearing a lawsuit brought by the People For The Ethical Treatment of Animals (PETA). The Animal rights group was trying to represent the 6-year-old monkey, Naruto, in a case brought against the human photographer, David Slater, and his self-publishing platform, Blurb of San Francisco….

The judge said during a brief hearing that he would dismiss the suit in an upcoming order, and at one point said PETA’s argument was a “stretch.”

“I’m not the person to weigh into this,” Orrick said from the bench in San Francisco federal court. “This is an issue for Congress and the president. If they think animals should have the right of copyright they’re free, I think, under the Constitution, to do that.”

SeeJudge says monkey cannot own copyright to famous selfies @ Ars Technica.  (At the bottom of this post, I have embedded Judge William Orrick’s order from 1.7.16.)

There’s more to this than a six-year-old primate, however: photographer David Slater, British photographer whose equipment Naruto used to snap a selfie, received a copyright in the photograph in Slater’s home country.

Although Slater’s copyright claim wasn’t at direct issue in this matter, it’s certainly another aspect of the episode.  Stater contends that it’s his copyright because of the work he did carrying his equipment, setting it up, etc.:

“The facts are that I was the intellect behind the photos, I set the whole thing up,” he said in an email. “A monkey only pressed a button of a camera set up on a tripod — a tripod I positioned and held throughout the shoot.”

That kind of copyright claim – one Slater contends is recognized in Britain – depends on both Slater’s human effort, and no subsequent legitimate effort that would supersede his own.

Over at Lexology, Nicholas O’Donnell observes that human effort (although not likely Slater’s efforts) might be enough to establish a copyright for a photographer.

So, for now, it’s no to the monkey, but maybe to the man.

Download (PDF, 109KB)

Venezuelan Gov’t Tries U.S. Court to Silence Currency-Info Website

If you thought that simply publishing online the exchange rate between the American dollar and Venezuelan bolivares was an innocuous act, then you’re not a member of the (fumbling, stumbling) Venezuelan government:

In its bizarre and bombastic civil complaint, the US-based lawyer for the CBV [Central Bank of Venezuela] argued that the three Venezuelan-American men who run the site [DolarToday] are engaged in “cyber-terrorism” designed to create “the false impression that the Central Bank and the Republic are incapable of managing Venezuela’s economy.”

The CBV formally accuses DolarToday of violating a major anti-racketeering and criminal conspiracy statute (RICO Act), false advertising, unjust enrichment, and strangely, breaching a Venezuelan civil statute that refers to “causing harm.” (Obviously, an American federal court is unlikely to adjudicate claims made under Venezuelan law.)

To put it mildly, the Venezuelan economy has been in something of a tailspin in recent years. Its authoritarian president, Nicolas Maduro, the successor of strongman Hugo Chavez, has been unable to rein in skyrocketing inflation (now near 100 percent) and a massively depressed economy. Recent press reports have detailed that many people are unable to buy basic goods like diapers and cooking oil. This week, the Financial Times described the country as being on the “edge of a political crisis.”

Via As Venezuelan economy collapses further, gov’t targets US-based currency news site @ Ars Technica.

See, also, Plaintiff’s Complaint and Defendants’ Motion to Dismiss with Prejudice.

Reading the complaint from of the Banco Central de Venezuela, a Venezuelan government organization, counts as three separate readings, at least: of a federal civil complaint, of science fiction, and of low comedy.

Still, it’s a cautionary tale, too: that even the oddest claims, from the most unexpected quarters, may lead one into litigation.

Perhaps the maxim should be something along the lines of ‘expect the unexpected.’