Stephen King Copyright Victory and Patent Death Squad

In seventeen, King was sued by the copyright holder of a nineteen seventies comic book, The Rook, for ripping off elements of its hero to create his famous Gun Slinger. Four years later, the Eleventh Circuit Court of Appeals has affirmed the lower court ruling, tossing out the lawsuit. Join me as intellectual property litigator Terence ross A partnered caton Uten Rosenman. Tell us about the issue here, Terry June.

The issue revolves around two different literary works built Dubai in the late seventies and eighties wrote a comic book series called The Rook with a character as the hero of those comics by the name of Reston Dane, who traveled through time and fought various villain Stephen King published a series of novels starting around going into two thousand and ten called The Dark Power Series, which featured a anti hero by the name of Roland Duchaine, and he

also time traveled, but as part of a quest to find this dark power that is in the title of the work and based upon certain broad similarities between the two characters. The nephew of the now deceased Bill Dubai, author of The Rook, brought a copyright infringement lawsuit again Stephen King, his publisher, and various media companies based on alleged infringement of this rest and Dame character in The Rook by Stephen King and his character Roland to shame.

Seems like it took a while to bring this lawsuit thirty five years exact, and I, certainly, as a long time observer of copyright litigation, always wonder when I see that sort of lengthy delay in bringing an infringement lawsuit.

Certainly you would have fought. Given the prominent uh Stephen King's works in general and the Dark Power series of novels, in particular that Bill Deby, the actual creator of the Rook comic book series, would during his lifetime have noticed that there were the similarities, and it's only after his death when, in effect, his inheritors sort of come up with this alleged similarity. The Copyright Act provides, believe it's

not tony, a three year statute of limitation. Unfortunately, a Supreme Court in the Raging Bull case the movie a couple of years ago sort of viscerated that three year statute of limitations by saying, well, it depends upon when the actual discovery the infringement occurs. In various other things that sort of thrown the statute of limitations for copyright infringement into disarray. So, according to the plaintiffs here, there

are a lot of similarities between the main characters. They're Nightly heritage, traveling back in time to save a boy who becomes a gun slinger, birds as companions, interaction with towers, western attire, fictionalized Alamo history, and knife wielding. So that sounds like a lot when you sort of added up. Yeah,

sure does on its face. The important thing to remember about this case is that the only infringement allegations are related to taking the character of Rest and Dane from the Rook and essentially creating a substantially similar character called Roland of Shame in the Dark Power series novels. So it's limited to the issue what we call literary character copyright.

And in order to obtain a copyright in a literary character, you have to go beyond sort of broad images that would be typically associated with for example, any World War two American hero fighting in Europe, he would be fighting Germans, he would be fighting Nazise, you would see swast because, etcetera. It's got to be something far more specifics that earn you a copyright and the character. And the other part

of it is that the courts always say this. In this court, the Eleventh Circuits set it here is you've got to ignore sort of random similarity. The fact that they both carry at night is truly irrelevant. And indeed the court's cautions you can't just look at a series of individual, perhaps coincidental similarity. You've got to look at

the overall totality of the elements. See what the overall impression or image that's conveyed by each compute character and here it seems as if the image and the impression conveyed are totally different. To Shane is really a very dark character. The Eleventh Circuit went so far as to characterize him as an anti hero, which I believe is accurate from read many of these works myself. He is

somebody who's not particularly moral. He is perfectly content sacrificing his ally in pursuit of his goals, and he's a very introspective character. He worries about how much evil he has done. He suffers quite a bit through the series of these novels, and the quest to find the Dark Power, which is somehow related to the time space continuum, is also played out in an interior quest to sort of

beam himself and become a better person. Now, you contrast that with the character in The rook rest In Dame, who is almost in parton the pont A comic book caricature of a typical hero. He's handsome, he's courageous, he always does the right thing. He fights them villains just sort of randomly, and yes he does time travel to fight them, but it's just sort of a good versus evil. It's a very different image the traditional American view of a literary hero versus the more modern anti hero image

that you see in The Dark Power. Now, how important was it that King's manuscript for The Dark Tower pre dated the Rooks publication and also he started working on

it apparently in yes, and this is important fact. The Rook comic book series I just said the character first appeared in a nineteen seventy of It or so, and then became a recurring comic book series in the late seventies and early eighties, Whereas there was substantial proof that Stephen King at least was journaling about his character ruling to Shane and what would become the Dark Power series of novels as early as nineteen seventies. The court was careful not to go off on that issue that was

not the strict basis of ruling. And there's a good reason for that, because that would be an entirely fact based determination, and facts have to be determined in better court by a jury. And here the district court decided the case on summary judgment before it got to a jury.

And it did that and said it was entitled to decide as on summary judgments and not in payama jury because as a matter of law, not fact, but as a matter of law, King and the other defendants were entitled to a judgment simply based on the lack of copyright ability of most of this, supposedly in stringing elements that were shared by the characters. The court consider some of the evidence that Stephen King put in, then I

think he had some notes from an assistant. So evening, the defendants put in a phenomenal amount of evidence in support of its summer judgment motion. I think I saw at one point with forty four thousand pages. Now, this included each of the novels, obviously, and even contents right long novels, but it also included a summary of all those pages that was prepared by one of his assistants, so that the court wouldn't have to read off fourth

thousand pages. The appellate court said that that was permissible under federal rules. Summaries of evidence of complicated evidence, of byments evidence are always allowed in federal courts. It's simply a way of helping a fact finder or the court

get way through every thing given their busy docutans. More importantly, in what I found very interesting is that King and the defendants submitted an expert report by the author of the Act the Future Movies, who read all the work and you know, as an author himself time traveling characters, gave his opinion that the characters weren't similar. I found that sort of an interesting approach that is permitted in copyright cases. At the summer judgment stage, Terry, what was

the rationale of the Eleventh Circuit's decision? So, due to the principal rationale for the Eleventh Circuits, affirmation of District Court was based on a finding that these several similar elements between the characters constituted nothing more than scenes off fair. Scenes are fair are not allowed to be copyrighted under our Copyright Act. They are essentially the sorts of common themes or characters or settings that are just indispensable to

any treatment of a certain time period or type of event. So, if you're doing a book about the um the West and how the West was run, one, you're going to have gunfighters, You're going to have everybody walking around with a Colt forty five on their hips, you have people

wearing cowboy hats. You're gonna have dance all girls. You're gonna have saloon and and the fact that it works has any of those elements in it, UM does not allow for those works to be copyrighted, m for those elements to be copyrighted in the work, and and and those elements are free to be used by by any creator who is doing a piece on the Western frontier day and and and the court here do you want a circuitstan You know, you look at a lot of

these purportedly similar elements, and they're just common to what you The use of knives, well, lots of people use knives. You don't get a monopoly on a character using knives. They they they time travel. There are lots of characters you time travel. You don't get a man comply through copyright law on on time travel. Um. They wear western garbsny appropriate that the type of tramp time traveling you're doing, you don't get a monopoly on on wearing western garb.

And so each of the individual elements, and you mentioned this, there seemed to be a lot of them, but when you actually take them apart, but they are nothing more than sort of the common incidents of the scene that you would expect to see for these types of work. I don't know how many times Stephen King has been sued for copyright infringement. I mean, he's the best selling author.

And after the lower court ruling here, he asked for one point seven million dollars for fending off the litigation, saying copyright litigation isn't a lottery and he shouldn't be treated as a punching bag selling author. And after the initial the lower court ruling here, he asked for one point seven million dollars for sending off the litigation, saying copyright litigation isn't a lottery and he shouldn't be treated

as a punching bag. It's true, and I have seen in other cases not involving Stephen King, attempts to use the fact that you've you've been sued for copyright infringement in the past, has some sort of evidence that you did it in the present UM that ed Shearing case. We're seeing that happen UM now in New York courts. I think it should be entirely disregarded by course UM. The fact that someone has been sued in the past

and found not libel for infringement should be irrelevant. UM. I attribute this in general to the overligigious nature h copyright these days, and more specifically to the great success than notoriety that Stephen King has up paid UM. You know, Jesse James used to say, we rocked banks because that's

where the money is now. UM. Copyright plainists tend to chase after UM authors and songwriters and other creators who have been successful UH and who have managed through their hard work, innovation and creativity to obtain great amounts of money. It makes no sense to go after UH sported and pringer who has been unsuccessful and has no money to pay a judgment? Right? Do you know what happened to that?

The way this typically works is that the district court UM will put off a decision on attorneys seed until the issue of liability is settled for once and for all. So, knowing that this was going up to the Eleventh Circuit, UM, I assume that the district courts that I'm not going to do any extra work on this. I'll wait to see UH the Eleventh Circuit firms UH, and then the

UH motion for attorney's fees UM will be considered. The Copyright Act does expressly allow for an award of attorney spees to a prevailing party UM to the extent that the claim of copyright infringement or the manner in which the claim was prosecuted litigated in court is somehow unreasonable, but it is in the discretion of the district court.

And my own experience litigating these cases of behalf of defendants across the country is that, for whatever reason, district court judges tend to be reluctant to award attorneys fees in copyright cases unless it is an absolute fraud upon the court that's being perpetrated. Now, another point is this is the Eleventh Circuit. When we've talked before about copyright cases, they're usually in the Second Circuit or the Ninth Circuit. How did the Eleventh Circuit get in this, And that's

a great question. Um. Apparently the nominal plaintiffs, the nephew of the author, the rook Eric Dubai, is a resident there. Um. Copyright lawsuit can generally be brought most district courts in the nation if the work is broadly distributed, and I'm sure Stephen King's Dark Power series and the graphic books that followed in the movie that followed, or um distributed in Florida, and so you get this unusual circumstance um.

As we've discussed in the past, the nature of the industry that the copyright arises out of typically drives the locusts bird lawsuit. So you see books and publishing industry heavily based in New York City. You see a lot of those cases there, country Western Um and motown and wrap you see often in the Sixth Circuit because both

Nashville and Detroit are in that sixth Circuit. And you say, see movies and other types of recordings often in southern California and the Ninth Circuit because that's where they're loka. So this is very unusual. But I will say this, the Lemon Circuit have history of copyright cases. It did not have to draw heavily upon the Second Circuit or Ninth Circuit law um to render this decision, which is interesting in and of itself. Thanks Terry. That's Terence Ross

of Captain Eugen Rosenman. It's been dubbed the patent death Squad because it's invalidated more than two thousand patents and in a constitutional clash being closely watched by the nation's tech companies. At least five of the courts conservative justices seemed to indicate they might curb the powers of the

patent Trial and Appeal Board. Here are justice is Brett Kavanaugh and Neil Gore such These are multimillions, sometimes billion dollar decisions being made, not by someone who's accountable in the usual way that the appointments clause demands. And my

question was focused on supervision. If the president disagrees with the decision, or one of his designees down the chain of dependence disagrees with the decision, there's no remedy that the president has correct joining me is Susan Decker, Bloomberg News patent reporter. Susan start by telling us about the patent death squad. So the patent death squad of folks who don't like it, call it um. There was a sweeping overhaul of patent law back in two thousand and

eleven that creates the specific adversarial procedure. So to say, for instance, you get sued and you think that a patent shouldn't have been issued in the first place. You can fight in court, but you can also go back to the patent office and say, hey, patent office, you got it wrong. And some type of procedure has been around for many decades, but this is a typically a trial. It was supposed to be an alternative to a trial, so it's much more formal. It's basically old re examination

as they called it on Steroid. There's an initial review saying yeah, we think we might have gotten something wrong. Then they have to do a trial and issue a decision within one year. So it's very very fast tracked procedure. And because it's kind of self selecting, they do have a very high what they referred to as a kill rate, meaning a patent are part of a patent is deemed invalid. Have this case involving the patent death Squad get to

the Supreme Court. So in this case, what happened was our Threax, which is a patent owner of a long standing battle with Smith and nephew over medical devices, had one of its patents invalidated at the PTAB that it's called patent trial on the field board. And they went to the Federal Circuit, the nation's top patent court, and they said, these people shouldn't have even been hearing these cases.

If they're going to be judges that are tossing out already issued patents, then they should be presidentially appointed officers. They shouldn't be, you know, the Path and Office director of pointing over two hundred judges and them having the final say on these patents that we thought were already

good to go. So the question is are those judges constitutionally appointed, Are they in fact inferior officers, meaning that they work for the director and their subject to his rules, or are they so independent they have so much authority to invalidate patents that there are people that have to go through this Senate confirmation process, which of course is very lengthy, and there's over two hundreds so it would take a long time. So during the oral arguments, what

kind of concerns or questions did you hear from the justices. Well, one of the things that seemed that they were kind of angling towards yes, in fact, these are principal officers

that they should be presidentially appointed. But several of the justices that seem to be leaning towards saying that this is unconstitutional seem to also say, well, they don't set policy, and in fact, if you have their decisions reviewable by the Patent Office Director, then that would solve the problem that normally these judges would be considered inferior officers except for this one role that they have on invalidating patents.

And if you have the Patent Office director having the authority to overturn them, which he doesn't have right now, that that would solve the problem. So could they come up with a very narrow finding that would rule in fact that these judges were unconstitutional, but provide a remedy that doesn't cause disruption? So was there any Q and a any exchange between a justice and a lawyer that

struck you? Well, they did seem to be to spend a lot more time on an administrative law, and they seem to be kind of concerned about what are the implications for this, What would happen? Could they rule one way and just throw havoc all over the place, or could come up with a very narrow finding that would rule in fact that these judges were on constitutional, but

provide a remedy that doesn't cause disruption. And so there's a lot of discussion about what can we do, what can't we do differentiating the patent review judges from some roles and other agencies, and and concern about if they rule something very narrow for the patent Office would that kind of cause havoc with other agencies as well? There was a wide ranging hearing um. They were trying to give it kind of at a ten thousand foot view of what does it mean to be a principal officer

versus an interior officer? And then on a more narrow side, what doesn't mean about the Patent Office because they have some kind of unique rules and unique policies that have been around for even predating the creation of the Patent Trial on Appeal board. How did the Federal Circuit, which

handles rule on this. The Federal Circuit had ruled that they were unconstitutionally appointed, but said that the way of dealing with this issue is merely to take away some of the civil service rights of these judges to essentially make them out well employees that are more easily fired by the director instead of civil service rules. It didn't appear that the Supreme Court justices really were willing to

go along with it. And of course we know that the Supreme Court only takes Federal Circuit cases when they want to overturn the Federal Circuit. It's not like you have, you know, conflict between the circuits. It's just the Federal Circuit right, and they have a very bad record before the Supreme Court. They do they do, so we assume that they're going to somehow, let's say that the Federal

Circuit got it wrong. But are they going to say that the Federal Circuit got it wrong in determining that they were principal officers or are they going to say that the Federal Circuit got it wrong in terms of the remedy And it seemed like they were leaning towards the Federal Circuit got it wrong on the remedy and we have a different remedy that would solve the problem. Apple, Intel, Cisco, Microsoft, Oracle, Samsung,

who are they backing? All of the tech companies are saying that these are inferior officers as they say that these guys are totally on the up and up, that their rules are appropriate and do not disturb the p TAP because of the fact that they're within the Patent Office and they're saying, did we get it right or did we get it wrong? And that's the role that they have, and that there's nothing wrong with the Patent Office doing that. That the director sets the policy and

they're following the policy. But they are looking at what the agency does. They point out that in fact, there have been procedures to review issued patents that have been going on forever and nobody's ever complained until now, mainly because this is such a fast track proceedings that does have a relatively high rate of invalidation. Now, where does

the Biden administration stand. Well, the Lustener General has come down on the idea that they too are worried about disturbing this procedure and disturbing this board that has been around since two thousands twelve that was specifically set up because there were concerns that the Patent Office had been issuing too many bad patents, that they had been basically

too easy on some of these applications. So they are two are very concerned of what's going to happen if the if the Supreme Court says no, these are unconstitutionally appointed officers and they have to go through principle, who have to go through Senate confirmation, and it's gonna just disrupt the whole system. And they do not want that system disrupted if they just rule that, you know, these judges are principal officers. They need presidential appointment and Senate confirmation.

Would that shut down the whole thing? Well, it's certainly what a lot of patent owners would like, UM, and it does seem that they would. It would shut it down at least tempor early. There's there was one a note that there was like seven and fifty cases pending before the the board right now. Um. But it would

shut it down. But but many people point out that it would merely take one sentence from Congress to change it in light of you know, similar to what they did in December with the trademark law, and just merely saying that the director has the authority to reconsider, modify, or set aside these decisions. And and so if they were to do that, that that would solve the problem. Um, As one of the lawyers that I spoke to um about this case pointed out, So it's much easier to

change trademark law. Once you start, as you phrased it, tinkering under the hood of patent law, then people start coming out of the woodwork. So the question is whether the Supreme Court would say, well, we're going to kind of follow what the Congress did with the trademark law,

giving the director greater authority to review these decisions. Um, or are they going to say, Congress, you have to take that action which would cause more disruption, and just tell us what happened the last time there was a challenge at the Supreme Court. I'm sure other people keep track of these cases much better than I have. But there are just been constant, constant, constant chance challenges of the p TAB and how it rules and how it's

set up. So basically the Supreme Court has upheld the proceedings the ability for the Patent Office to review its own decisions. In other cases, UM, it has said it's kind of tinkered at the at the rules. For instance, there was one decision that said, oh, if a if a challenger petitions to challenge five claims of a patent, you don't have the authority to say we're only going to look at one of those claims. You have to look at all five of them. Um. They've had other

rules that say, well you know that you can't. Um. There's limitations on who can file appeals and who can petition to have these patents challenge. So they've tinkered at the edges a little bit. But bottom line is they have previously on the very high levels said that, yes, the Patent Office has the authority to review these issued patents. Give us a little bit of background on the board and how it came to be known as the patent

death squad. When the patent filing people were first started, they were kind of operating on the policy or under the assumption that Congress wanted them to invalidate more patents, that that was their role, and so there was a very very high rate some of times that they would invalidate the patent. Former Chief Judge of the Federal Circuit Randall later was the one who coined the term death squad because he said, you know, this is unfair to

patent owners. The Patent Office kind of took that to heart. The judges took that to heart. So the invalidation rate is much lower than it used to be, and it and it is kind of one of those you know, depending on how you cut the numbers, is what the what the numbers look like. But they have been they have established a number of rules that kind of give patent owners a little bit more of a fair shake.

But still the overall because the Patent Office is looking at basically grading its own work, and you know what it's like when you go back and you see what you did a year ago hindsight and say, oh, I missed this. I missed that. There is still a very high rate of invalidation. So patent owners really hate it. They're like, we got this issued patent, we know that the examiners have expertise. Patents are presumed to be valid when they go to court, and that right has been

taken away for us. And that's because there's no presumption of validity at the p TAB. The tech companies in particular really liked p TAB basically for the same reasons, but they are the ones that are more likely to be sued. And Apple has been more aggressive than any other. They said that they've invalidated um than two hundred patents, but they've also filed more than a thousand petitions. I mean,

they are the single most most user. Samsung, Google, into all of these companies very very aggressive in challenging these patents, and if if there's any way that they can reduce the litigation costs, they want to do it because they get sued an awful lot. So that's why they like the pizza. Thanks for being on the show, Sue. That's Susan Decker, Bloomberg News Patent reporter. And that's it for

this edition of The Bloomberg Law Show. Remember you can always at the latest legal news on our Bloomberg Law Podcast. You can find them on Apple Podcasts, Spotify, and at www dot Bloomberg dot com slash podcast slash Law. I'm Judan Grosso. Thanks so much for joining us, and please tune into The Bloomberg Law Show every week night at ten pm. Easter, try to hear your moo Brook Radio