On 26 July 2014, a three-dimensional representation of Homer Simpson participated in Twentieth Century Fox Corporation’s (“Fox”) panel discussion, interacted with the Simpsons’ creator, Mr. Matt Groening, at the comic convention held in San Diego (the “Simpson’s Performance”).
Hologram USA Inc. (“Hologram”) immediately sued Fox and Gracie Films, a film production company who co-produces the Simpson’s Performance, for patent infringement. Not only that, Hologram was so aggressive as to suing also those individuals and companies who supplied certain parts and equipment and technological know-how (“Suppliers”) for making the Simpson’s Performance, in the same lawsuit.
Why using seemingly a technique that has been used for a century would still attract patent infringement liability? This article explores the potential patent infringement in the creation of holographic-like performance on stage.
The alleged patent infringement
It was further alleged that the Suppliers had knowledge that Fox and Gracie Films did not have license to the Patented Technology, but contributory infringed the Patented Technology by having its direct and indirect customers to sell material or apparatus for use in practicing the patent (s. 271(c) of the Code).
Fox’s potential arguments
Earlier this year, Hologram and the Patent Holders sued Pulse Entertainment Inc. and others for the infringement of Patented Technology in relation to the projection of hologram of the late Michael Jackson at the Billboard Music Awards. The US District Judge decided that Hologram and the Patent Holders’ allegations were unsuccessful as they failed to provide the Court with sufficient information about the patent infringement. Specifically, they failed to provide the Court with sufficient information about the accused apparatus to enable the Court to compare any of the claims in the patents to the accused apparatus. If as asserted by Hologram that the Patented Technology is the only quality hologram technology available, the high quality of the Simpson’s Performance renders it suspicious of using apparatus which practice the Patented Technology. Yet Hologram may not succeed in its claim against Fox, if it still fails to provide the proof of infringement as it so failed to do in its previous infringement claim against Pulse Entertainment Inc.
Hong Kong producers should be wary
Hong Kong patents law prohibits both direct infringement and indirect infringement similar to the USA. For direct infringement, section 73 of Patents Ordinance (“PO”) provides that the proprietor of the patent has the rights to prevent third parties from doing a number of specified acts in Hong Kong without his/her consent, including: in relation to any product which is the subject matter of the patent – making, putting on the market, using or importing the product; and in relation to any process which is the subject-matter of the patent – using the process or offering the process for use in Hong Kong when the third party knows, or it is obvious to a reasonable person in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent.
For indirect infringement, section 74 of the PO provides that a person can be held liable for indirect or contributory infringement of a patent if that person supplies or offers to supply in Hong Kong another person with means to induce that other person to commit patent infringement.
Should you need any assistance in relation to patent infringement, please feel free to contact us for further information.
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
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Published by ONC Lawyers © 2014