Out Damn Spot
Merely changing your name is not the answer. Sure, it might hide your past from the casual observer, but to someone actually doing some digging, a name change is not much of a hurdle. As more and more people change their names, the hurdle becomes even lower. At some point, there will be an online database directly matching old names with new names. The only real solution is to avoid having your untoward information posted to the internet in the first place. Once you post it, there is no guarantee you will ever be able to remove it or even distance yourself from it. If someone has already downloaded your comments or pictures, they can always repost the information faster than you can ever pull it down. If the information is particularly salacious or incriminating, it may spread quickly, becoming a viral scarlet letter on your otherwise impeccable background.

Reputation Management Starts With Friends
The key is to avoid posting, or posing for, anything you might later regret. While avoiding embarrassing antics altogether would be ideal, if you cannot quite manage that feat, consider discussing the situation with the amateur journalists and photojournalists in your entourage, namely your friends. While an embarrassing photo posted to Facebook might provide a few hours of entertainment, the fact that it may cost you even one employment opportunity makes the cost of internet publication too high. Simply discussing with your friends and family the ramifications of posting embarrassing information online, is often all it takes to avoid a reputation meltdown. And if you have children, it is never to early (or late) to warn them about the dangers of sharing TMI (too much information) online.

Brett Trout

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APIs and mashups provide content providers a vast playground within which to create new tools using existing content. While these tools provide value, not all are legal. Patent, copyright and trademark laws all contain restrictions on what you can and cannot do with third party content. Even creative commons licenses can place restrictions on how content may be used in the context of APIs and mashups. In addition to the legal restrictions, there are also ethical, etiquette and practical considerations, any one of which could bring your underlying business to a grinding halt. This presentation walks you through the principles underlying patents, copyrights and trademarks. Moving from the present state of online intellectual property protection through the changes intellectual property law will undergo over the coming years, the talk provides insight as to how best position your company to capitalize on the new opportunities these changes offer. The talk uses recent cases, including Bilski (business method patents), Viacom (The Youtube copyright suit), and Shepard Fairey (fair use in derivative works) to explain how ethics, etiquette and practical ramifications of intellectual property issues interrelate, and sometimes even outweigh the legal implications. The talk also includes anecdotes and examples of practical solutions to illustrate how companies can use APIs and mashups without ending up on the wrong side of the law.

Here are links to other Iowans with SXSW proposals:
BitMethod – Real-Time Streams Need Real-Time Feedback
Bitmethod – Rich Browser-Based Templating Through Open Source Collaboration
make\break – How Can Artists Turn Web Hits Into Dollars?
On Pitch – Landing A Music Career In Flyover Country
Lava Row – Social marketing lessons learned on the farm

See you at SXSW!

Brett Trout

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David vs. Goliath
The Komen Foundation has also pursued dozens of other charities it feels are encroaching on the Komen Foundation’s intellectual property rights, even going so far as to assert a proprietary right in the phrase “for the cure” and the color pink. As you might imagine, smaller charities have very little leverage when it comes to a trademark battle. Even if a smaller charity is convinced it is not infringing on the trademarks of a larger charity, few charities have the $50,000 or more in disposable income required to vindicate that position in court. Large charites, knowing this, may seek to stretch otherwise rather narrow trademark protection to a much broader scope. A simple cease and desist letter from a megalaw firm is often all it takes to force a small charity to change its name.

The Rich Get Richer
While many donors would probably prefer their donations go directly to the cause at issue, with charities like the Komen Foundation raising nearly a third of a billion dollars a year, and paying officers up to $459,406/yr, You can bet the enforcement of trademark rights by big charities against smaller charities is going to increase, rather than decrease in the days to come. Unless, of course, they find a cure for breast cancer, in which case the Komen Foundation may be in the market for a new name itself.

Brett Trout

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The Devil In The Details
While this may not seem like a big deal to the average restaurant patron, providing an incorrect date of first use may subject the registrant to cancellation of its federal trademark registration. While the tweet giving the date of first use as 1982 may be incorrect, it would certainly prompt a defendant, or even a potential defendant, to investigate the validity of Taco Johns claimed date of first use. While I am certainly not privy to any documents supporting the actual date of first use, it does seem odd that the 1979 date is so coincidentally close to the date of first use claimed by a former federal trademark registration owner for the same “Taco Tuesday” trademark. It appears that the unusual proximity of the claimed dates of first use led to the two parties dividing up the rights to “Taco Tuesday,” so that the other registrant obtained the trademark rights in New Jersey and Taco Johns obtained rights everywhere else. While there is no evidence Taco Johns’ trademark registration is defective, unintentional defects like an incorrect date of first use may go unnoticed for years.

Trademark Registration Is Far From Child’s Play
While it seems unlikely that the Iguana Mexican Grill will go to the mat with Taco Johns over the right to use Taco Tuesday, little things like an incorrect date of first use on a federal trademark registration can mean a litigation swing of several hundred thousand dollars. One problem with filing trademark registrations is that the USPTO does not independently investigate the date you claim as a first use. The USPTO assumes the huge penalty associated with claiming the wrong date, cancellation, is a sufficient deterrent. Whereas the USPTO takes your word on your date of first use, trademark defendants do not. It is often not until you need the trademark registration the most, after you file a lawsuit, that you find out your oversight has made your registration worthless. Even if you are meticulous in your trademark filing, it is still a good idea to advise your marketing division not to broadcast things like a date of first use without first running it by legal.

HT: Stephanie Webb
Brett Trout

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The New Category
According to the Wall Street Journal, on April 1, 2010 the USPTO created a new trademark category for “Processed plant matter for medicinal purposes, namely medical marijuana.” Although medical marijuana is legal in 14 states, federal law still classifies it as a Schedule I drug (the same classification as heroin), under the Controlled Substances Act.

Admission of Guilt
Under 15 U.S.C. § 1051, an application for trademark registration requires the applicant to list the date he or she first started using the trademark in commerce in association with the goods or services. Were it so inclined, the federal government could use a medical marijuana trademark application to criminally convict the applicant under the Controlled Substances Act. Although it would seem like the federal government would have more important ways of spending its time, there is nothing preventing such prosecutions. If your lawyer is suggesting you file a paper with the federal government, admitting you are breaking the Controlled Substances Act, you may want to consider wether such a lawyer has your best interests at heart.

Protection Without Punishment
Criminal penalties notwithstanding, the USPTO received 57 trademark applications under the new medical marijuana category. Before granting any of the applications, the USPTO withdrew the new category. Although USPTO spokesman admitted “it was a mistake,” marijuana retailers continue to file pot-related registrations for goods other than marijuana itself. This may well serve to stake out the intellectual property landscape in the event marijuana becomes legal. With the administration’s weakening stance on marijuana enforcement, taking such preemptive steps to secure one’s intellectual property in this soon to be burgeoning market may be time and money well spent.

HT: Dan McCracken
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The Service Provider Lawsuit
NPT previously sued wireless service providers AT&T, T-Mobile, Sprint Nextel and Verizon. The court put the wireless service provider litigation on hold, pending accelerated reexamination of NPT’s patents by the United States Patent and Trademark Office (USPTO).

Licensing
According to an article in the Wall Street Journal, a lawyer for NTP has stated “NTP is always open to talks to reasonable licensing terms.” Given NPT’s track record and nearly bottomless war chest, a “reasonable” figure for settling this most recent case could be north of ten figures. This is certainly one to watch.

HT Christine Branstad

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The Trip to Telmessus
In 1997, Bernard Bilski filed various patent claims on a method for hedging commodities. Claim 1 of the Bilski patent application read as follows:

1. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

The following year, the Court of Appeals for the Federal Circuit, issued its seminal ruling in State Street, holding that methods of doing business were patentable subject matter.

In 2008, the Court of Appeals for the Federal Circuit held that a business method had to meet the Machine or Transformation (MoT) test to be patentable. Notwithstanding, Bilski’s patent examiner held that while methods of doing business were patentable, Bilski’s particular claimed invention did not constitute patentable subject matter under 35 U.S.C. § 101, as it was merely an abstract idea, not implemented on any specific apparatus, such as a computer processor. Bilski appealed the decision to the Board of Patent Appeals and Interferences, which sided with the Examiner. Bilski appealed to the Court of Appeals for the Federal Circuit (CAFC) which heard the case en banc. What the CAFC gave in State Street, it appeared to take back in Bilski, holding that to be eligible for patent protection, an invention must fall into one of two categories: (1) it must be tied to a particular machine or apparatus, or (2) it must transform a particular article into a different state or thing.

The Bold Stroke
Bilski appealed from the CAFC decision and the Supreme Court granted certiorari. The question on everyone’s mind was whether the Supreme Court would prohibit business method patents, invalidating billions of dollars worth of existing patents or allow any business method to be patented, opening the floodgates to people seeking to monopolize everything under the sun. The Supreme Court, in its infinite wisdom, and to the chagrin of the CAFC, did neither.

In reviewing its past rulings, the Supreme Court noted that in choosing expansive language for 35 U.S.C. §101, Congress contemplated giving patent laws a wide scope of construction. The Supreme Court noted precedent provided only three specific exceptions to 35 U.S.C. §101’s broad scope: “laws of nature, physical phenomena, and abstract ideas.” Not so subtly pointing a finger in the direction of the CAFC, the Supreme Court cautioned courts “not read into the patent laws limitations and conditions which the legislature has not expressed.” Justice Kennedy, writing for the majority, and citing Diamond v. Chakrabarty, 447 U. S. 303 (1980), wrote that a categorical rule denying patent protection for specific types of inventions not specifically contemplated by Congress would “frustrate the purposes of the patent law.” Addressing the CAFC’s machine-or-transformation test specifically, Justice Kennedy noted that such a test would create uncertainty as to the patentability of software.

Dissecting 35 U.S.C. §101, the Supreme Court held that “new technologies may call for new inquiries,” and that it is not the purpose of the Court to freeze process patents to “old technologies, leaving no room for the revelations of the new, onrushing technology.” citing Gottschalk v. Benson, 409 U. S. 63, 71 (1972). The Court noted that business methods cannot be categorically eliminated from the scope of patentable subject matter, as 35 U. S. C. §273(b)(1) specifically contemplates their existence.

Taking the other side of the issue, the Supreme Court noted that failure to set a high enough threshold for the patentability of business methods would create a flood of patent claims on the United States Patent and Trademark Office, “that would put a chill on creative endeavor and dynamic change.” Just because a particular business method constitutes a “process” under 35 U. S. C. §101, does not mean that a patent claim on the method should be granted. The business method must still meet the requirements of 35 U. S. C. §102 (novelty), 35 U. S. C. §103 (nonobviousness) and 35 U. S. C. §112 (full and particular description).

Eschewing the machine or transformation test, the Supreme Court noted that such categorical rules risk wide-ranging and unforeseen impacts. The Supreme Court resolved Bilski much more narrowly, relying on the prior decisions in Benson, Flook, and Diehr. These rulings, collectively, demonstrated that Bilski’s method claims were not patentable processes because they were merely attempts to patent abstract ideas. In this aspect of the ruling, all members of the Court were in agreement.

Benson explicitly declines to adopt the machine or transformation test as a sine qua non test for business method patentability. Flook holds that unpatentable abstract ideas do not become patentable merely by limiting the “abstract idea to one field of use or adding token postsolution components.” The Federal Circuit also violated two principles of statutory interpretation outlined in Diamond v. Diehr, 450 U. S. 175, 182: 1) Courts should not read into the patent laws limitations and conditions which the legislature has not expressed; and 2) Unless otherwise defined, words will be interpreted as taking their ordinary, contemporary, common meaning. The Supreme Court noted that it was “unaware of any ordinary, contemporary, common meaning of ‘process’ that would require it to be tied to a machine or the transformation of an article.”

Is the Knot Still Tied?
While the Federal Circuit, and the rest of the world, were looking for a new test for the patentability of business method claims, the Supreme Court stopped short of offering any new rule or guidance. Noting that because Bilski’s claim was unpatentable under prior rulings as an abstract idea, there was no reason for the Supreme Court to further define what may or may not constitute patentable business methods. Justice Kennedy noted that Benson, Flook, and Diehr provided the necessary “guideposts” as to what constitutes a patentable process under 35 U.S.C. §101. The majority went on to note that nothing in the Bilski opinion should be read as endorsing State Street or any of the Federal Circuit’s past interpretations of §101. Basically, business as usual.

Inviting Sharper Blades
In knocking out the CAFC’s exclusive machine or transformation test, the Supreme Court stated it was not the intention of the Court to preclude the CAFC from developing future patentability tests or criteria “that further the Patent Act’s purposes and are not inconsistent with its text.” The ruling in Bilski did not upset the apple cart one way or the other. The ruling will invalidate very few, if any, existing patents. It will also not invite a deluge of patent applications on abstract ideas.

It remains unclear however, whether the existing rules of Benson, Flook, and Diehr will be sufficient to allow the United States Patent and Trademark examiners to readily determine what is and what is not patentable when it comes to business method claims. Given that the United States Patent and Trademark now has over a decade of experience with these types of patents under its belt, it is much better positioned to tackle these issues than it was when the Bilski patent application was originally filed. If new cases, new technology or new internal rules make the Bilski analysis unworkable, let’s hope it does not take another decade to work out the bugs.

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Finally.
The Supreme Court today issued the most eagerly anticipated patent ruling in over a decade. Bilski v. Kappos tackles the issue of exactly what type of “software” is patentable. More specifically, whether to be eligible for patent protection under 35 U.S.C. § 101, a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing.

Background
The ruling in Bilski is a rather complex analysis of some rather subtle aspects of patent law and prior case law. If you are not familiar with patent law, I suggest you read the Patent FAQ. If you are not familiar with the arguments in Bilski, I suggest you read this analysis of the written and oral argument. For everything else Bilski related, check out the SCOTUS wiki.

The Opinion
Affirming the Federal Circuit decision in Bilski, the Supreme Court held that while the machine or transformation (MoT) test is a useful and important investigative tool, it is not the sole determination of patentability. The Court held that while the Bilski process is not categorically excluded from patentability, the particular process of Bilski is not patentable.

Result
I am currently digesting the remainder of the 71 page ruling, and will follow up this post with a more comprehensive analysis of what the ruling in Bilski v. Kappos means not only for existing business method patents, but for the future of business method patentability. You can read the entire Bilski opinion at the Supreme Court website.

Brett Trout

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