Infringing Actions

Selling a Jayne Cobb hat? Keep selling!

noreply@blogger.com (Kelly Talcott) — Wed, 10 Apr 2013 03:16:00 +0000

The short-lived Fox series "Firefly" has developed a cult following that has given life to any number of t-shirts, character statues, and other fan tributes. Among them are a certain silly knit cap worn by the character Jayne Cobb (supposedly knit for him by his mother). Fans have been able to buy "Jayne Cobb" hats from Etsy sellers and others for years.

(This is an official "Jayne Cobb" hat, available via ThinkGeek. Attractive, no?)

Until now. Apparently, Fox has been threatening these independent producers of lookalike hats with all manner of perdition. But here's the problem - unless the sellers are calling them "Jayne Cobb" or "Firefly" or "Serenity" (the name of the ship and a follow-on feature film) hats, Fox really has little legal basis to stop third parties from making and selling these hats.

That's because hats are "useful articles" under US Copyright Law - and so can't be protected by copyright. This peculiarity of copyright law has bedeviled fashion designers for years, and while there has been some chipping away of the concept (costumes, for example, can be protected), in general an article of clothing can't be.

So if you've received a cease-and-desist letter because you are selling "Jayne Cobb" hats, give me a call. I'm a big "Firefly" fan and will be happy to review your situation and give you some idea of where you stand. Browncoats do need to stick together, after all. Especially when the Alliance comes a calling.

(Update: The folks at ThinkGeek have decided to donate profits from the sales of officially-licensed Jayne Cobb hats to the Firefly-inspired "Can't Stop the Serenity" charity. Well-played, Geeks, well-played!)

Bittorrent Subpoena Notice? Check the Case Status!

noreply@blogger.com (Kelly Talcott) — Tue, 09 Apr 2013 00:41:00 +0000

These pesky bittorrent lawsuits continue to propagate themselves throughout the court system. Content owners -- which frankly may have a legitimate beef with having their films distributed for free -- persist in using them as tools to issue subpoenas seeking the identity of alleged file sharers. If you receive a notice from your ISP that it has received a subpoena and that your personal information will be disclosed to the plaintiff unless you take steps to stop that from happening, don't despair.

One of the first things you should do is check the status of the lawsuit. Many of these cases are getting dismissed by judges who are increasingly skeptical of both the methods used by the plaintiffs, and the quality of the rights they claim to hold. If your case has recently been dismissed, then you may have a great argument that the subpoena is no longer valid. Even the most compliant of ISPs will be nervous about disclosing customer information in response to a subpoena that has no legal force.

Those of us who handle these cases can quickly let you know what the status of the underlying lawsuit is. Make sure you double check that before deciding how to respond to the ISP notice.

NBC, Get with the Program

noreply@blogger.com (Kelly Talcott) — Sun, 07 Oct 2012 02:49:00 +0000

NBC has recently asked the Obama campaign to stop using footage of one of its talking heads reporting on what a think tank thinks of Romney's tax plan. And yes, perhaps NBC has something of a copyright claim, and yes, perhaps NBC wants to avoid the impression that it is taking sides in the election.

But if you are a broadcast network built on the backs of licenses granted by the Federal Government allowing exclusive use of defined portions of the broadcast frequency spectrum in return for providing a minuscule bit of public service programming, then you need to expect that a political campaign for president is going to use footage of one of your reporters reporting on an issue of interest. And then just shut up about it.

Are You Being Watched?

noreply@blogger.com (Kelly Talcott) — Fri, 28 Sep 2012 02:22:00 +0000

This Wired post reveals the extent to which warrantless spying by the Justice Department has exploded over the past decade. I'm not sure it matters who you're voting for this election; but it's clear things have accelerated in the past four years.

With the explosion of surveillance comes an explosion of banal jobs consisting of sifting through the vast amounts of nonsense that most of us generate in the course of our everyday Internet lives. I pity the poor fool who is charged with reviewing my latest Facebook bon mot, and only hope that I'm able to entertain him or her in the way I hope to entertain both of my Facebook 'friends.'

This is Why I do What I do

noreply@blogger.com (Kelly Talcott) — Mon, 17 Sep 2012 03:00:00 +0000

When a major NYC law firm manages to run up $3.1 million in fees while "helping" a client recover a $4.68 million down payment on a condo, whilst billing more than 5500 billable hours - well, you know that the system is broken. Read it and weep here.

Here's a clue: lawyers should be in business to help their clients achieve sensible results to their real-world problems. When clients are spending stupid amounts of money to achieve these results, we have an obligation to let them know they may be wasting their funds.

This looks like one of those cases where the lawyers may have told the client "Don't worry; our fees are recoverable." As the court found in its opinion:

"[I]t appears that Sponsor has not actually paid any legal fees to [the firm] on this matter. Astonishingly, [the firm's] attorneys, paralegals, and staff amassed 5536.4 billable hours on this matter, employing four partners, three special counsel, ten associates, eight paralegals, and a summer associate. (See Declaration of [nameless lawyer], dated Aug. 23, 2012 . . . . . Partners billed their time at rates ranging from $6801hour to $1025Ihour; associates at rates ranging from $440/hour to $745/hour; paralegals at rates ranging from $250/hour to $295/hour; and, last but not least, a summer associate at $335/hour. [The firm's] total bill for legal fees is a breathtaking $3,164,828.00."

As Judge Pauley put it, "This Court doubts that Sponsor - or any other client-would pay over $3.3 million in fees and expenses for the mere possibility of securing a $4.68 million down payment."

Don't get me wrong - the firm involved here is a well-known, high-quality, top-tier firm that is capable of providing great legal work for its clients. But at some point the Rule of Reason needs to intervene. And what this means from a practical perspective is that the Big Name Law Firm is not always your best choice for a good result at a good price.

Remembering

noreply@blogger.com (Kelly Talcott) — Tue, 11 Sep 2012 12:59:00 +0000

What has 9/11 wrought? Did it bring us closer together as a nation? Briefly. Then it became an excuse - for warrantless searches and surveillance; for intrusive, meaningless security theater in our transportation systems; for questionable military actions that have killed many times more than perished on that terrible day; for the outsourcing of torture under the guise of 'rendition,' and for our own acts of torture and indefinite detention.

Of course we should never forget those who perished and those who risked and lost their lives to save them. But we should also question the country we have become in the years after.

Dr. Seuss in Advertising

noreply@blogger.com (Kelly Talcott) — Mon, 10 Sep 2012 01:16:00 +0000

In the early days, pre-Cat, pre-Sneetches
Dr. Seuss was not living life on the beaches,
A mad-man was he, pitching that, pitching this,
To generate cash, and familial bliss.

(Click each logo you see on the website below
and to the Dr. Seuss ads for that company you'll go!)

Official Web site of the University of California, San Diego
A UCSD Libraries Website
Part of the Dr. Seuss Collection
Presented by the Mandeville Special Collections Library

Auto(complete)?

noreply@blogger.com (Kelly Talcott) — Sat, 08 Sep 2012 02:35:00 +0000

I supp(orthose) I can't really argue with former German first lady Bettina W(oof, woof woooooof, awooooooo)ulff's lawsuit against Google for the manner in which its autocomplete feature managed to tack on words such as "escort" and "prostitute" to her name in search results. I mean, I'm sure if when someone started Googling "Kelly" the phrase "green dildo" or "loves small animals" immediately popped up, I'd be irritated too. Especially if I had absolutely nothing whatsoever to do with green dildos, or small animals. Which I don't. I swear. No, really.

Now go away. Don't you have a college football score to check or something?

Chris Kluwe Rocks

noreply@blogger.com (Kelly Talcott) — Sat, 08 Sep 2012 01:39:00 +0000

Yes it's foul. Yes it's irreverent. Yes it's foul. (That's how foul it is.) But NFL punter Chris Kluwe's rant against a homophobic Maryland state delegate deserves to be read. Enjoy. NSFW if you are still sounding out your words.

Keeping it Classy

noreply@blogger.com (Kelly Talcott) — Fri, 07 Sep 2012 00:29:00 +0000

After such a long hiatus, I want to come out of the box with something that will set the standard for future posts; something that I can look back on and say to myself "Self, THAT'S what legal blogging is all about;" something I can be proud to show the kids and their grandparents.

Which means, of course, we're going to talk about porn.

Not just any porn, mind you. Ice cream porn.

I don't know about you, but regular porn bores me. I mean, I no matter how much of the stuff I watch, it all seems the same to me. I've tried, and tried, and tried but just don't get it; Part A plugs in to Part B and/or Part C, except for the occasional brush with Parts D, E, or F . . . blah, blah, blah. To quote Lilly von Schtupp: "I'm had my fill of love . . . from below and above."

The folks at Rodax Distributors and Caballero Videos apparently were aware of this growing sense of ennui among the porn cognoscenti. I can see the think tank in action now: "Okay folks, our sales are down. Pizza delivery guys showing up with extra pepperoni just aren't cutting it anymore. We need a gimmick; something to draw attention to . . . Spencer, what are you eating? Ice cream? Wait a minute . . . I've GOT IT!"

And thus, perhaps, was born the "Ben & Cherry's" line of porn films, complete with packaging uncomfortably reminiscent of "Ben & Jerry's" ice cream containers, and featuring cleverly titillating titles such as "Boston Cream Thigh," "Hairy Garcia," and "Peanut Butter D-Cup."

(Here is the point at which I step aside for a brief moment and allow the masters at the New York Post to tell you the rest of the juicy background stuff. I'll wait.)

Having read about the case, I naturally went looking for a copy of the complaint to share with you, my dear reader. This was completely in the interest of scholarly research, and had nothing to do with hoping that the complaint would include salacious images that could liven up my otherwise dull and dreary blog.

This is where things got a bit strange. I had the case number (thanks to Bloomberg, which left out all the interesting bits covered by the Post, but did list the case number). I went to the Southern District of New York Pacer site, but at least as of this morning the case number didn't yield any results at all. It was like the case didn't exist; and I presume the folks at Bloomberg don't just make up SDNY case numbers.

Things changed a bit later - the case appeared on the website, but even then, the complaint wasn't available. Later this afternoon, an order appeared on the site - Unilever, which owns Ben & Jerry's (allowing the company founders, of course, to count their money and watch porn at their leisure), had secured a temporary restraining order against the defendants.

So that's good for the plaintiff, but where was the complaint?

Then, an order issued. I can only imagine how the complaint must have circulated around the clerk's office -- it's now probably all dog-eared, with pages stuck together -- before somebody thought to call the judge and bring the thing to his attention. At any rate, the judge, possibly in the interest of protecting the SDNY servers from crashing, has ordered as follows:

"1. Pending further order of the Court:

"a. The Clerk is directed to redact all images (including without limitation Exhibit 6 to the declaration of David Stever, Exhibits 6, 7 and 8 to the complaint, and the image contained in paragraph 54 ofthe complaint) from the electronic versions of documents filed or offered for filing in this case, but shall preserve and file in hard copy, under seal (available to counsel for all parties), all redacted material.

"b. The attorneys shall redact all images from electronic versions of documents filed on the CMlECF system, Such images shall be filed only in hard copy and under seal as above."

(Heheh . . . the order said "hard copy.")

Fortunately, the judge gives us legal voyeurs some cause for hope:

"3. The Court is mindful of the qualified right of public access to court documents and is prepared to reconsider this temporary measure upon application."

Did you know you had a 'qualified right' to look at dirty pictures filed with the court? Now you do. So call me if you want to make an application to look at the now-forbidden images . . . I will work for ice cream.

A Renaissance?

noreply@blogger.com (Kelly Talcott) — Wed, 05 Sep 2012 22:08:00 +0000

It's obvious that I haven't posted for awhile, but I am hereby making a public commitment to significantly increasing the frequency of my posts, if only, to borrow from the inestimable Rumpole, to placate She Who Must Be Obeyed. I would like to say that it's been all of those Supreme Court arguments and high-stakes preliminary injunction hearings that have been keeping me away from the keyboard, but that would not be truthful and as a lawyer, of course, I'm nothing if not truthful. So I'll just come right out and admit to sloth and lack of dedication to my reader - you know who you are - and leave it at that.

I'm also going to be playing around a bit with the focus of this blog, so please bear with me. It doesn't take a genius to figure out that there are hundreds of blogs out there whose quick-typing, hyper-intelligent authors will bring you a keen analysis of tomorrow's legal news today. Being neither quick-typing nor hyper-intelligent, I'm probably going to start working another angle going forward.

So stay tuned to this channel, and feel free to unleash your worst by way of comment. I'm not saying I'll publish all of them, but even if I don't publish yours, you can take comfort in knowing that my ever-tenuous sense of self-worth will be bolstered just by seeing the email notice that your comment awaits my review.

Patent Basics IV - The Parts of a Patent, and a Baby's Butt

noreply@blogger.com (Kelly Talcott) — Fri, 16 Apr 2010 00:37:00 +0000

Patent Basics IV

(This is the fourth post in my series on Patent Basics; the first three posts can be found here, here, and here. My previous series on Trademark Basics has been consolidated on my website at www.kdtalcott.com. Future "basics" series will cover copyrights and trade secrets.)

The Parts of a Patent

If you've done your prior art search and are still feel your idea is worth protecting, it's worth knowing a bit about the geography of the patent application. A patent has a number of sections, each of which has a specific purpose. While there's no need to memorize each and every one of these, it will be helpful to have some understanding of what the main sections are and why they're there. This will allow you to communicate more effectively with your patent counsel (or the Patent Office, if you're taking the task on yourself).

There are four main parts to every patent application. They end up appearing in the issued patent; take a look at one example here. (This patent is one of my favorite examples of a patent. It happens to be for a method and kit for painting using the posterior of an infant. That's correct: someone patented the idea of painting using a baby's butt. Depending on your situation (budding inventor or patent professional), that should either be cause for hope or despair. At any rate, given that we're focusing on structure there's no reason not to have a bit of fun along the way.)

The Cover Page

The first page of the patent is a busy place, with a number of categories of information that many people ignore, but which are in fact very useful for those who are searching for prior art, looking for particular types of patents, or wanting a quick synopsis of what the patent is supposed to cover.

The cover page information includes (in order) the name of the patent and its inventors; filing date information (so we can figure out when the term expires); any official adjustments that have been made to that term; information about any related patent applications; various categories of classification information that the Patent Office uses to help organize the millions of patents in its records (very helpful for searching for prior art); a list of other patents and prior art that the examiner considered during the examination of the application; the abstract (a one-paragraph summary of what the patent covers); and a representative drawing from the patent.

The Drawings

Most every patent includes one or more drawings. In the case of our baby butt patent, the first drawing (Fig. 1) provides us with an example of the fine art that one can create using a baby's rear end in place of a brush. The numbers you see on the drawing tie in to the written description of the invention in the Specification, and allow the reader to follow along while the Specification describes the drawing.

The second page of drawings (Figs.2 and 3) are flowcharts. (Note the three-step method for painting using a baby's rear: (1) prepare background media; (2) dip; and (3) stamp. Good thing we have that flowchart.) A flowchart is a very common way of visually displaying the method described in the Specification. Again, numbers on the flowchart will tie in to the description in the Specification.

Figures 4, 5, and 6 are more conventional drawings, these of the baby butt paint kit. (And you do need a kit to guide you through the intricate baby butt painting method.) Again, numbers tie the drawing to the description in the Specification.

The Specification

The Specification immediately follows the Drawings. Patent lawyers being the uber-hipsters that we are, we typically refer to this as “the Spec.” (While I will let you in on these trade secrets from time to time, I'll never reveal the secret handshake.)

The Specification is perhaps the most accessible part of the patent. It is written in narrative form, and should teach the invention to a person “of ordinary skill in the art.” When the art is microbiology, there are relatively few people who are “of ordinary skill in the art.” When the art is painting using parts of the human body, as in our example, all of us probably are of ordinary skill in the art.

The subsections of the Specification of the baby butt painting patent are typical, and help satisfy the legal requirements for a patent. The Field of the Invention describes the technical field covered by the invention. The Background of the Invention is meant to do just what it says: explain what the background is of the invention, and will explain the problem that the invention was designed to overcome. In our example, the problem was the fact that “there is no known kit available, or method associated therewith, to assist in creating a remembrance that results in a fine art end product which is not easily recognized as merely a remembrance.”

The Summary of the Invention provides a short description of what is included in the product or method described in the Specification. And the Brief Description of the Drawings will list each drawing and provide a short summary of what is shown in each.

The meat of the Specification is the Detailed Description of the Preferred Embodiment of the Invention. This is an extended narrative that should explain how the invention works, and should use and reference each of the drawings at one or more points. The “preferred embodiment” is typically the one that best reflects the new and hopefully patentable properties of the invention. In our example, the patent splits its description between about a paragraph and a half that describes the preferred embodiment of painting with a baby's hiney, and roughly three full columns describing the preferred embodiment of the kit for doing so. That is probably because there are only so many ways that one can paint using an infant's posterior in place of a brush, but many ways that one could configure a painting kit.

Often the Specification will also describe other embodiments of the invention. These may be ones that were invented during the development process, but were considered to be less favorable than the preferred embodiment. It is sometimes helpful to describe these so that they can be protected by the patent as well. This can broaden the coverage of the patent, making it harder for competitors to copy the idea by making slight variations on the method.

The Claims

The claims are the most difficult part of the patent for the non-lawyer to understand. They're also the most important part of the patent, because the claims are what define the invention. Everything up to the claims has been explanation and elaboration – but in the end, it is the claim set that courts look at when they make infringement determinations.

The two types of claims are independent claims – which stand on their own – and dependent claims, which feed off of and relate to independent claims. In our example, claim 1 is an independent claim:

1.A method of painting using the posterior of an infant, said method comprising the acts of:

providing a background media;

providing a paint supply;

dipping the posterior of the infant in said paint supply;

stamping the posterior on said background media to create stamping prints.

More about this in a bit. Claim 2 is a dependent claim:

2.A method as defined in claim 1, wherein:

said dipping and said stamping steps are repeated in sequence.

Claim 2 builds on claim 1, and everything that is in claim 1 is considered to be part of claim 2.

You may hear the word “limitations” used in connection with claims. Limitations are important part of a claim; consider them like ingredients in a recipe – if you leave one out, then arguably you're not making the same dish. In our claim 1, the limitations follow the words “comprising the acts of.” So if we dip another part of our baby in the paint (say the top of the head, being careful of the soft spot) and stamp that part on the background media, then we arguably are not practicing the patented invention. (Please note that this is greatly simplifying the process of reading claims and applying them to our potentially infringing method of painting with a baby.)

Knowing what goes into your patent application will help you communicate with your attorney about it, and will give you a better understanding of what is going on throughout the prosecution process. The next post in this series will outline the patent application process.

Patent Basics III - Prior Art

noreply@blogger.com (Kelly Talcott) — Sun, 28 Mar 2010 13:27:00 +0000

(This is the third post in my series on Patent Basics; the first two posts can be found here and here. My previous series on Trademark Basics has been consolidated on my website at www.kdtalcott.com. Future "basics" series will cover copyrights and trade secrets.)

What is “Prior Art,” and Why Should I Look for It?

Patents are only awarded for inventions that are “novel” -- in other words, new. You won't be able to get a patent for the light bulb unless your version of the light bulb is an improvement over all of the other light bulbs that have ever been invented and disclosed in some way to the public. Those earlier versions of the light bulb are part of the “prior art.”

Inventors have an obligation to tell the Patent Office about any prior art that they're aware of that may relate to their inventions. But that of course is not the main reason for conducting a search to find possible prior art before you file your patent application. There are a number of more practical reasons for doing so.

Prior Art Search Benefits

A prior art search will help you figure out whether your invention is truly 'novel.' Why spend thousands of dollars on a patent application for an invention that someone else has already thought of?
A prior art search may help you refine and improve your invention. “Stand on the shoulders of giants,” so to speak, and see what others have done. Their work may inspire you to improve on your original idea.
A prior art search will show you what you may need to 'design around.' Since you can't patent what's already been invented, you may have to develop a different way of doing what your invention does in order to avoid infringing an existing patent. A workable design-around can be valuable if the owner of the prior art patent refuses to license their invention on reasonable terms. A design-around can then become a cost-effective way to compete with a product or process that is protected by such a prior art patent.
A prior art search will help you understand whether your invention is a significant improvement over existing inventions, or an incremental advance. In either case, that information will help you decide whether it is worth investing in the patent application for your idea. An incremental advance that overcomes a significant marketing or operational problem that exists with the prior art, for example, may be very valuable. On the other hand, if your idea does not add much value to the existing invention, you may decide to invest your money elsewhere.

How to Conduct the Prior Art Search

There are services that will conduct a prior art search for you, of course for a fee. The quality of these searches can vary widely, and often depend on how much you spend. One thing that I explain to every client is that nobody will conduct as thorough a prior art search as someone who is accused of patent infringement. In other words, a prior art search that is paid for by an inventor, and may cost hundreds of dollars, will not be as thorough as one conducted by an accused infringer that stands to lose millions of dollars in a patent infringement suit.

That's a fact that patent owners simply need to accept. A reasonably-priced, reasonably-thorough prior art search is likely to provide a good indication of existing, similar inventions that are out there. But it cannot be considered to be definitive.

The patent search services tend to be very adept at searching U.S. Patent Office records, which in many cases are an excellent source of prior art. Existing patents and published patent applications are likely to form the bulk of the results of most prior art searches from such a firm. If your invention is one that is in a 'traditional' line of inventions – in other words, not a business method – then a Patent Office-focused search may be sufficient.

If, however, the invention is in a new field of science or technology, or is a business method invention, you should make sure that the prior art search goes beyond the Patent Office, and includes areas where publicly-available information about the particular field of endeavor is likely to be found. This includes the Internet, but can also include key university libraries as well as foreign-based information sources.

In some cases – mainly in areas where the inventor is at the cutting edge of the technology – the inventor may be an excellent source of prior art. In any case, it's always a good idea to check with the inventor to find out what information he or she has about the existing state of the technology and other inventions that may be out there.

Where to Search

If you want to do some or all of your prior art searching yourself, here are some good places to start. Of course Google or some other comprehensive search engine is first, provided you are adept at crafting searches that will yield enough relevant 'hits.' Google also has its own patent search engine, available at http://www.google.com/patents, that is a great help insofar as it goes. Clicking on the “Advanced Search” option opens up a detailed search menu that you can use to help narrow down your search results. I have found, however, that Google Patents is not kept up to date, and many recently-issued patents and recently-published applications are not included in the scope of its search, making this otherwise excellent search tool something that is ultimately unreliable for prior art searching.

There is, of course, the United States Patent Office website at www.uspto.gov. The main page will give you a link to the Search section, where you will quickly learn that the PTO is not exactly on the forefront of intelligent search technology. Still the information is there, and if you know something about a particular inventor or company whose work may be part of the prior art, a PTO search may be an efficient way to see what they've patented. If you really want to dive in to the nitty-gritty of how to search using the PTO's patent classification system and other similar tools, you can look at what the PTO tells its examiners about searching prior art here: http://www.uspto.gov/web/offices/pac/mpep/documents/0900_904_02.htm .

Finally, don't forget that a foreign patent or invention disclosure can also be prior art. There are a number of databases where you can conduct a search of foreign patents. The World Intellectual Property Organization provides a short guide to some of them here: http://www.wipo.int/sme/en/documents/prior_art.html#P72_8069 .

Some sort of a prior art search is an important part of the application process for any patent application. Whether your resources permit you to hire a search firm, or you conduct the search yourself, if you move forward with a patent application a prior art search will be a good investment.

The next post in this series will cover the difference between provisional and non-provisional applications, and the basic structure of the patent application.

Design Patent Infringement Analysis and the Fubar

noreply@blogger.com (Kelly Talcott) — Tue, 09 Mar 2010 18:29:00 +0000

Design patents are an often-overlooked corner of intellectual property law. While they pretty much do exactly what they say – protect designs – it can be hard sometimes to separate the protected design from the underlying patent.

The Federal Circuit recently decided a design patent infringement case – Richardson v. Stanley Works – that provides a useful tutorial into how courts should perform a design patent infringement analysis. It also highlights how far from intuitive such an analysis is, which can make it difficult for those who are not intellectual property law specialists to understand.

The product at issue: the Fubar. A multi-tool device sold by defendant Stanley, the Fubar is an angry-looking hunk of metal that combines a hammer, pry bar, and open-jaw grabbing thingy into a single product:

(Yes, I know what “fubar” means. I presume the folks at Stanley do as well, and named it hoping that it would appeal to the type of consumer who knows what “fubar” means. At any rate, the product has achieved some success, having been included by Popular Science in its “Best of What's New” listing back in 2006.)

The Fubar was protected by a design patent owned by Stanley. The plaintiff Richardson had secured his own earlier design patent for a similar-looking device that he called the Stepclaw. (As far as I know, "stepclaw" has no other meaning.) It too included a hammer, a pry bar, and an open-jaw grabbing thingy in a single product:

Richardson sued for infringement, and the district court decided after a bench trial that Stanley did not infringe. In so doing, the district court distinguished “the ornamental aspects from the functional aspects of Richardson’s design and then determined that an ordinary observer, after discounting the functional elements of Richardson’s design, would not be deceived into thinking that any of the Fubar tools were the same as Richardson’s Stepclaw.” It concluded that “the overall visual effect of the Fubar was not substantially similar to that of the Stepclaw,” so that the Stanley product did not infringe.

The Federal Circuit affirmed. It noted that it was proper for the district court to factor out the functional elements of Richardson's design; in this case, tool handle, the hammer head, the pry bar, and the open jaw. The shape and location of these features, the court held, were dictated by the functional requirements of the tool. Factoring out those functional features presumably left only the ornamental elements of Richardson's design.

As you can see, once you remove the tool handle, the hammer head, the pry bar, and the open jaw from these products, there is not a lot that is left. The Federal Circuit so noted as it analyzed the Fubar's ornamental features, applying the “ordinary observer” test set forth in its Egyptian Goddess decision:

"Each of the Fubar tools has a streamlined visual theme that runs throughout the design including elements such as a tapered hammer-head, a streamlined crow-bar, a triangular neck with rounded surfaces, and a smoothly contoured handled. In a side-by-side comparison with the ’167 patent design, the overall effect of this streamlined theme makes the Fubar tools significantly different from Richardson’s design. Overall, the accused products clearly have a more rounded appearance and fewer blunt edges than the patented design."

The ironic thing about the “ordinary observer” test is that it can be difficult for the “ordinary observer” to apply. Most ordinary people do not distill out functional elements from design elements when looking at products. The decision in this case merely underscores how difficult it can be to evaluate design patent infringement claims.

Patent Basics II - Do I Have to Keep My Invention Confidential?

noreply@blogger.com (Kelly Talcott) — Mon, 08 Mar 2010 17:00:00 +0000

(This is the second post in my series on Patent Basics; the first post can be found here. My previous series on Trademark Basics has been consolidated on my website at www.kdtalcott.com. Future "basics" series will cover copyrights and trade secrets.)

Do I Have to Keep my Invention Confidential?

Paying attention to some basic points can help you make sure that you don't lose your patent rights even before you file your application. This post will cover the importance of knowing when to disclose your invention, and appreciating what consequences follow from doing so.

Disclosing Your Idea

In the United States you have one year from the date you first disclose or sell your invention to the public before you have to file your patent application. If you fail to file within this time period, the parts of your idea that were disclosed to the public become part of the “public domain” and can be used by anybody for free. This applies to sales as well, presuming that the sale of the product puts the workings of the invention in the hands of the purchaser.

Our world is increasingly interconnected, however. If you anticipate that you will want to apply for patent protection outside of the U.S., then the public disclosure or sale of your invention takes on much greater significance. That's because in order to secure a patent in most other countries, you need to have your patent application on file before you disclose your idea to the public.

What “Public Disclosure” Means

What constitutes a “public” disclosure of an invention is not always clear. There are some general guidelines that will help you figure out when you might be getting close to doing so.

Disclosure generally involves revealing enough of the workings of the invention so that people who work in the technical field of the invention can figure out how it works. Enclosing a mechanical invention in a proverbial “black box” to hide its inner workings is thus one way to reveal what an invention does without revealing how it does it (though if there is enough in the way of description of how the invention works to teach someone what's going on inside the box, then the black box will do little good). A sale of a product that includes the invention will also be considered a disclosure, since the purchaser can take the product apart and “reverse engineer” it.

Any recorded description of the invention that can be accessed by the relevant members of the public risks being considered a public disclosure. This includes white papers, advertisements, video and audio recordings, thesis papers, abstracts, trade show exhibits, and the like. Oral disclosure only is more of a gray area, though it's generally a good idea to avoid gray areas wherever possible.

Who is “The Public”?

The relevant members of the public can be a smaller group than the public at large. For example, if you work in a particular industry and your invention relates specifically to that industry, and you disclose your invention at an industry group meeting, that may very well be considered a public disclosure even though the general public did not attend that meeting.

But My Investors Want to Know What's Going On

One way to disclose your invention without risking patentability is to disclose it only to people who have agreed to keep it confidential. That is often necessary when dealing with investors and customers, who want to know what you're working on even while you're still developing it. The courts have generally agreed that if you require people to sign a meaningful confidentiality agreement before you disclose your invention to them, it will help protect you from tripping up on the public disclosure issue. You have to make sure, of course, that you otherwise treat the invention as confidential, at least until your first patent application has been filed.

Procedures Can Help

Your employees should be aware of the importance of the disclosure issue. It is a good idea to have in place some written procedures for dealing with the invention process. Many companies have invention disclosure forms that are completed by employees who believe they have invented something. These forms are forwarded to an individual or a committee responsible for making decisions about which inventions the company should seek to protect by way of a patent. These procedures and forms can all reiterate how important it is to treat each invention as company confidential information unless advised otherwise.

Employee Assignments

The mention of employees brings to mind the concept of the invention assignment. Patents in the U.S. are filed in the names of the individual inventors, not their employer. Most companies have invention assignment requirements in place, preferably in the form of a written agreement that each employee (or each technical employee) signs when joining the company. These agreements typically assign the entire invention to the employer, and allow the employer to advise the Patent Office of the assignment so that the patent application moves forward in the name of the company. Both the application and the patent then belong to the company.

These assignment agreements can also impose a confidentiality requirement on the employee. Even if the employee ignores the obligation and discloses the invention to the public, a court may take note of the confidentiality agreement and any company confidentiality policy and rule that the unauthorized disclosure was not a “public disclosure” that would hurt the invention's ability to be patented.

Your patent counsel can help you put together a set of policies and agreements that, if followed, will help you make sure you don't lose the opportunity to patent an invention because of a public disclosure problem.

The next Patent Basics post will discuss the importance of the “prior art search,” and will explain why even a comprehensive prior art search is rarely a sure thing.

Patent Basics I

noreply@blogger.com (Kelly Talcott) — Sat, 06 Mar 2010 16:46:00 +0000

(This is the first in a series of posts that are going to focus on the basics of Patent law. I recently completed a similar series on Trademark law, and will cover Copyright and Trade Secret law in the future. These are directed at non-lawyers as well as lawyers who don't practice intellectual property law, and will be consolidated on my website at www.kdtalcott.com.)

“You ought to patent that idea!”

We've all heard that dozens of times before, but perhaps never thought about what it really meant. Today's post will cover the basics about patents; what they are and what they do. Future posts will cover the patent application process, and what you can do with your patent once you have it.

The Patent Grant

A patent is a license granted by the government. In the case of the United States, the Constitution gives the government the power to grant patents; specifically, “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries.” So a patent gives the patent owner the exclusive right to practice the patented invention for a limited period of time.

Part and parcel of that “exclusive Right,” of course, is the right to exclude others from practicing the patented invention for the duration of the patent. Similarly, the patent owner has the right to permit others to use the invention – that's typically known as a patent license.

What Can be Patented?

There are two main categories of patents: Utility and Design. This post will focus on Utility Patents, and a later post will cover Design Patents.

What the Patent Statute Allows

While there is a continuing debate about the outer limits of what can be patented, there are some basic guidelines that apply to the vast majority of the situations that most of us will encounter. The first issue is whether the invention falls within the categories of things that the law allows to be patented. These include a “process, machine, manufacture, or composition of matter.” A “process” is like a formula, or a set of instructions for making or doing something. It is the category is the one that is used to identify so-called “business method” patents, which is one type of idea that many people argue should not be patentable.

A “machine” is, well, a machine. A “manufacture” is something that is made, but it can cover a lot of other things as well. And a “composition of matter” can be a chemical, a biological invention, or a new material.

Something Useful

A patentable invention is one that is “useful.” It accomplishes some meaningful task or achieves a meaningful result. That may be plowing a field, pinning a broken bone together, changing the chemical makeup of a fluid, or making a decision about how best to invest a sum of money. This separates a patentable idea from a creative idea. Writings, works of art, musical compositions, and the like are typically not considered to be patentable, but can often be protected by copyright. (Copyright will be covered in future posts.)

Something Novel

A patentable invention is “novel,” or new. It is one that no one has invented before. In the United States, that means that the person who first conceives of the invention and “reduces it to practice” – makes it work – will be entitled to a patent for that invention. In other countries, the first person who files the application for the patent for an invention gets the patent. While the US may move to that system in the future, for now it remains a “first to invent” country rather than a “first to file” country.

Something Not Obvious

A patentable invention is not “obvious.” It is one that someone who is familiar with the subject matter wouldn't consider to be an obvious combination of existing inventions. (The actual standard is “one of ordinary skill in the art,” meaning that this hypothetical person has to have some skill in the particular technical field of the invention.) As you can imagine, this is one area where people often have differing views. One person may believe that adding an on/off switch to an extension cord is an idea that should be patentable, while another could consider that to be an obvious combination of two existing inventions: the extension cord and the on/off switch.

Next up . . .

In future posts, we'll dive more deeply into the patent process. The next post will discuss how not to lose your patent rights even before you acquire them.

Being Fair to Your Attorney -- and to Your Client

noreply@blogger.com (Kelly Talcott) — Wed, 03 Mar 2010 15:44:00 +0000

From the Federal Circuit today comes a decision affirming the dismissal of an attorney malpractice case from the Northern District of Ohio. Less important than the details are the lessons it teaches for both clients and attorneys.

Clients: if at all possible, please give your counsel adequate time to do the work you need to have done. Providing your attorney with 14 pages of single-spaced patent claims the day before he leaves for a planned weekend vacation, then following up with 275 pages of specification material while he's away for an application that needs to be filed the Monday he comes back is just asking for trouble.

Attorneys: Know when to say no to a client. Accepting 14 pages of single-spaced patent claims the day before you leave for a weekend vacation, then accepting 275 pages of specification material while you're away for an application that needs to be filed the Monday you come back is just asking for trouble.

The decision also provides some guidance on when patent prosecution malpractice claims can be removed from state to Federal court on the ground that the malpractice claims "raise[] a substantial question of federal patent law over which the district court ha[s] exclusive jurisdiction pursuant to 28 U.S.C. § 1338(a)."

The Federal Circuit determined that Ohio's "case-within-a-case doctrine" applied, which meant that the plaintiff needed to "prove, by a preponderance of the evidence, that she would have obtained patents on her inventions but for" the attorney's alleged negligence. Because the question of whether or not patents would have issued on the application was a question controlled by U.S. patent law, "patent law is a necessary element of one of the legal malpractice claims presented," and "the district court properly exercised jurisdiction pursuant to 28 U.S.C. § 1338(a)."

The other guidance that comes from the case is that, when attempting to establish that "but for" the attorney's negligence, a patent would have issued, it is important that the expert opining on behalf of the plaintiff provide an adequate foundation for the opinion; in particular, the court pointed out that the plaintiff's expert had not conducted a prior art search or a patentability analysis, nor had he identified particular claims that could be made for the plaintiff's inventions.

The Federal Circuit further pointed out that neither a patentability analysis nor claim identification were required at the summary judgment stage; it could have been enough, for example, had the expert analyzed the prior art cited by the PTO in an office action rejecting any of the patent claims and discussing their "effect on patentability."

While I am sure there is more to the story on both sides than what the Federal Circuit reported in its opinion, the larger point here is for both clients and attorneys to try to be reasonable wherever possible, recognizing of course that sometimes it's not possible. For the curious, copies of the underlying published patent applications can be found here, here, and here.

Federal Circuit Holds Sport Memorabilia Trading Card Patents Obvious

noreply@blogger.com (Kelly Talcott) — Mon, 01 Mar 2010 17:22:00 +0000

In a case that illustrates the malleable nature of the obviousness standard in patent law, the Federal Circuit recently held that a sports memorabilia trading card that embeds an authentic piece of memorabilia was an obvious extension of the prior art, and invalidated the underlying patents on those grounds.

These now-popular types of trading cards will embed an authentic piece of a player's jersey as part of the card, and typically sell for a premium price as a result.

The case, Media Technologies Licensing, LLC v. The Upper Deck Company, et al., was decided on March 1, 2010. Judges Mayer and Lourie were the majority, with Judge Mayer writing the opinion. Judge Rader dissented. The patents at issue were 5,803,501 and 6,142,532.

What prior art invalidated this invention? As Judge Rader pointed out in a well-reasoned dissent, none of the prior art references were "remotely related to the sport trading card industry," though a number of the patents' claims were. One piece of prior art was a diamond attached to a picture of Marilyn Monroe; the diamond, Judge Rader pointed out, had not been cut into "pieces" as taught by the patent. The second piece of prior art was a piece of a bedsheet attached to a piece of stationery that purported to authenticate it as having been slept on by a one of the Beatles (though Judge Rader noted that the defendants had admitted the item was a fake). The third was a holy card depicting a friar and attaching a piece of his cloak. The final item was a greeting card that attached a piece of blue jean fabric that referenced James Dean, though there was no dispute that the fabric had not been worn by the late Mr. Dean. No sports-related prior art was included.

The majority's opinion is a good example of result-based reasoning. It twists and turns through the various arguments posed by the plaintiff to reach what appears to be a foregone conclusion. It provides little in the way of guidance either to inventors or businesses looking for ways to avoid infringing existing patents.

Judge Rader appeared to recognize this in his dissent when he noted: "Relying on wholly irrelevant prior art and ignoring significant objective indicia of non-obviousness, this court substitutes its judgment on patentability for that of a jury. Lurking just beneath the surface of this court’s blindness to the underlying facts supporting non-obviousness is a bias against non-technical arts."

If you're going to read the short majority opinion, do take a few more minutes to read Judge Rader's dissent.

Downloadable "Trademark Basics" Brochure

noreply@blogger.com (Kelly Talcott) — Tue, 23 Feb 2010 21:17:00 +0000

My "Trademark Basics" series is now available as a single downloadable brochure on my website at http://www.kdtalcott.com/trademark-basics.html.

Trademark Basics -- Vol III

noreply@blogger.com (Kelly Talcott) — Tue, 23 Feb 2010 18:34:00 +0000

(This is the third and final post in my series on Trademark Basics. The first post can be found here, and the second can be found here. Future "basics" series will discuss patents, copyrights, and trade secrets.)

Let's assume you've decided to take the plunge and register your trademark. We'll also assume you've done your homework – selected a mark that at a minimum is not generic and so is capable of being registered; performed a reasonably comprehensive search to determine whether anyone else is using your mark for the same or similar goods or services (we'll focus on goods going forward, but understand that services are covered as well); defined the goods to which the mark will apply so that the mark can be assigned to one or more of the classes of goods used by the Trademark Office to organize marks.

Filing Your Application With the Trademark Office

With the proper level of preparation, the registration process itself becomes a somewhat straightforward exercise. The application form is actually an interactive set of forms that you or your attorney will complete on the Trademark Office website (http://www.uspto.gov/teas/e-TEAS/index.html). The so-called “TEAS” system will step you through the application process, and while it is far from foolproof, it will alert you to basic missteps such as required fields that are left blank or filled in improperly.

You will need to know who is going to own the mark – for most businesses, it will be the business entity in whose name the application is filed, and so will become the owner of the registered mark. The application then requests the usual sorts of contact information that you might expect it to, all of which becomes part of the public record.

You of course will need to identify the mark. The system allows you to submit the mark in either a word form or, for logos or stylized lettering, an image form (JPG format is the only one accepted). For images, you will also have to provide any word or letters included in the image. Using our “Acme” example, if we are registering a stylized “Acme” logo, we would identify it by the word “Acme.”

There are then a series of statements that the system invites you to make about the mark: whether any parts of the mark are being disclaimed (in our “Acme Hair Gel” example, you might disclaim the generic phrase “Hair Gel” even though you might use it as part of your mark). A “disclaimed” element is one for which you are not claiming to have exclusive rights. You also have the opportunity to claim that the mark has become “distinctive,” meaning that through long use or heavy media exposure, consumers have come to associate the mark with the source of the underlying goods. While the system provides you with some clues as to what will support a claim of distinctiveness, if you're not sure about whether your mark qualifies it might make sense to seek the advice of a trademark lawyer.

Goods and Services

Next you will be asked to identify the goods or services for which the mark is to be registered. The “TEAS Plus” version of the system contains a search tool that is meant to help you identify the appropriate International Class of goods or services to use in the application. The regular “TEAS” application allows you to select your International Class of goods as well as create your own description of what the covered goods or services are. A short description of the differences between the two system versions can be found on the Patent and Trademark Office website at http://www.uspto.gov/teas/teasplus.htm.

While it is important to make sure that your application covers all of the classes for which you might be using your mark, keep in mind that your application cost increases for each class of goods that you select. In addition, while creating your own description of those goods or services can be very effective, it can sometimes create problems with the application if it's not done properly. Here too it can often be helpful to secure the advice of an attorney before selecting your class or classes of goods or services, or your descriptions.

Existing Use or Intent-to-Use?

The next option is to choose whether your application is based on your existing use of the mark (“Section 1(a)”), or whether it is a so-called “intent to use” (“Section 1(b)”) application. You can also indicate whether the application is based on a foreign application or registration, but that is beyond the scope of this article.

You'll be asked for some correspondence information, which is where attorneys would provide their contact information, and then will be provided with the application cost and will sign the form electronically. You'll have the opportunity to review and save the completed form – it's very good practice to do so – and then you will be taken to a payment page where you can input credit card information and submit payment.

Done and Filed!

Once filed, your application is officially “pending.” That means nothing in terms of how you identify your mark to the world – until you have an issued registration, you must use the “TM” designation and not the “®” designation.

After a period of time, you will receive a response from an examiner at the Trademark Office. The response may grant your application, or it may reject it, or it may suggest or request some modification to the application. Whether or not you consult a trademark attorney will depend on the nature of the examiner's response.

Generally speaking, your chances of successfully registering your marks will increase if you take advantage of the services of a competent trademark attorney from the beginning. Many will file the initial application for a fixed fee over and above what the Trademark Office application fee is (currently $275 per class if you use the TEAS Plus system, and $325 per class if you use the TEAS system). There are other Trademark Office fees that may apply as well: if you file an intent-to-use application, for example, you will pay $100 to file your “Statement of Use.”

Once Approved . . . It's Not Over

Assuming your application is eventually approved by the Trademark Examiner, that is not the end of the road. It is then published in the Trademark Gazette, and third parties will have 30 days to file a notice of opposition to your mark (very often, in fact, they will request and receive an extension of this time period). If someone decides to oppose the registration of your mark, they will file an opposition proceeding, and the registration of your mark will be delayed until after that proceeding is resolved.

Finally, if you do secure a registration of your mark, keep in mind that the registration does not last forever. You will be required between the 5th and 6th anniversarys of your mark's registration to file a “Declaration of Use” (along with a fee, of course) that shows that you are still using the mark in commerce. While you can file the Declaration of Use up to six months later (for an additional fee, of course), if you don't file it you are likely to have your registration canceled.

Consider Using Counsel

This has been a summary of some of the main issues that trademark owners need to consider when deciding whether or not to register their trademarks. This field of law can become complicated, particularly in crowded and competitive markets. While many business owners enjoy the challenge of taking on these issues by themselves, it often helps to find qualified trademark counsel who can advise along the way. Don't let your budget stand in the way of asking for help – very often, with a little bit of work, you can find an attorney who is willing to work with you even if your budget is tight.

Trademark Basics – Volume II

noreply@blogger.com (Kelly Talcott) — Mon, 15 Feb 2010 19:47:00 +0000

(This is the second of a series of posts focusing on Trademark Law. The first can be found here. Future posts will discuss Patent, Copyright, and Trade Secret law.)

Selecting a Mark and Application Types

Let's assume you've decided that you want to register a trademark. It could be your business name, or perhaps the name of a product or a service that your business sells. What kinds of issues can you expect to deal with in the course of registering your mark?

Trademark Availability Search

It can be very difficult if not impossible to secure a trademark registration for a mark that someone else is already using for the same type of product (or service – but for brevity's sake I'll refer only to products going forward). Many applicants prefer to learn about existing marks before they pay to file their own applications. There are a couple of ways to search to see what marks are out there.

One of the quickest and simplest ways is to use a search engine such as Google; simply input the mark you'd like to register and maybe one or two words describing your product and see what comes up. You shouldn't stop there, of course: the Patent and Trademark Office maintains a database of all trademark applications and registrations that you can access at www.uspto.gov (look for the “Search Marks” link).

All of this searching can get complicated – states maintain trademark registration databases as well, and a good search will look for similar marks and not just identical ones. Of course there are services out there that will conduct such a search for you for a fee. Expect to pay from several hundred dollars on up depending on what kind of a search you ask for and who is doing it. Most trademark lawyers have contacts with one or more search providers, and can help produce better search results by providing the searcher with the right information about your mark and how it's going to be used.

A typical search is likely to yield a number of “hits” – instances where others are using the mark you want to register, or a similar mark, for similar products. That doesn't necessarily mean you won't be able to register your mark, but it might affect how you go about doing so. Of course, the search results might also send you back to the trademark drawing board. A lawyer who practices trademark law can review the search results and can help you decide what to do based on those results.

Types of Marks

It's useful to understand that some marks are considered by the Trademark Office to be “stronger” than others. A classification system has been developed over the years that put labels on marks – you might have heard about “descriptive” or “fanciful” marks, for example. The gist of the system is that the closer a mark comes to describing what the product is, the harder it's going to be to register that mark because doing so could prevent others from being able to describe their competing products.

So, for example, you are not going to be able to register the mark “water” for your spring water. That would prevent other spring water companies from using the word to describe their products. You might be able to register the mark “Acme Spring Water” for your spring water product, but the Trademark examiner may require you to “disclaim” the words “spring water,” meaning that others can use those words with their spring water products. The word “water” would be considered a generic mark when used in connection with water.

The word “Acme,” on the other hand, is at the opposite end of the trademark spectrum from “water.” It doesn't call to mind anything in particular, and could be used as a trademark for pretty much anything to the extent no one else was doing so. Xerox and Kodak are two examples of this kind of a so-called “fanciful” mark.

There are other types of marks that use common words, but in a way that does not relate to the definition of the word. Selecting “Water” as a trademark for computers is one example of this. If that sounds odd to you, consider the mark “Apple” for the same type of product. These are examples of “arbitrary” marks.

Sometimes a mark will indirectly relate to the underlying product. Selecting the mark “Flowing” for your spring water product might be an example of such a mark, since it calls to mind the way that water moves. Another example of this kind of a “suggestive” mark is “Microsoft,” which might make you think of software for what used to be known as microcomputers.

Some might argue that “Flowing” when used for water is actually “descriptive” and not “suggestive.” These are the kinds of arguments that Trademark lawyers have all of the time. That is because under US law there is a significant consequence if a mark is “descriptive” – namely, you will need to provide the Trademark Office with evidence that your “descriptive” mark has acquired something called “secondary meaning” before it will be granted a registration.

“Secondary meaning” means that in spite of the descriptiveness of the mark, consumers for your product have come to associate the descriptive mark with your product. There are several ways to establish secondary meaning – such as long-term use, or large amounts spent on publicity – but the details of doing so really go beyond the scope of this piece. What you might need to know is that surnames are usually treated as descriptive marks, and so you may need to establish secondary meaning before you can register yours as a trademark.

Types of Registrations

You don't have to be using a mark yet in order to register it. By filing an “intent-to-use” application, you can basically reserve a mark for future use even if you're not yet using it. You need to have a good faith intent to use that mark for the type of product in question, and you cannot keep an intent-to-use registration alive forever – you'll have 36 months from when the Trademark Office issues its Notice of Allowance to begin using your mark, though every six months during that period you will have to file a request with the Trademark Office to extend your time to file your Statement of Use, and of course will have to pay money for each extension.

If you are already using your mark, you can file a application for registration based on that use. As you might expect, “use” has a particular meaning to the Trademark Office. You need to be using the mark “in commerce,” which means in the ordinary course of trade and not simply on samples or promotional versions of the product. Furthermore, for products, the mark must be displayed on the goods, their container, or the display associated with the goods. For services, the mark must be displayed in the sale or advertising of the services.

The next installment of this series will go into more detail about the trademark application process.

Trademark Basics – Volume I

noreply@blogger.com (Kelly Talcott) — Fri, 12 Feb 2010 16:08:00 +0000

(This is the first in a series of posts that are going to focus on the basics of Trademark law. I'll have a similar series on Patent, Copyright, and Trade Secret law in the future. These are directed at non-lawyers as well as lawyers who don't practice intellectual property law, and will be consolidated on my website at www.kdtalcott.com.)

So your business is up and running – maybe for a couple of weeks, maybe for years – and one of your friends asks you “Did you trademark it?” Read this before you respond, because you might have 'trademarked it' without even knowing it. And even if you have, you might still want to register it.

What is a Trademark?

People confuse the three main types of intellectual property all the time. Patents, trademarks, and copyrights get conflated in the minds of people who have better things to do than to work in the intellectual property law field. So first, make sure you're clear about what a trademark is.

A trademark is usually a word or a logo that tells you something important about a product or service. (I'm generally going to refer to products from here on out, but understand that a trademark can relate to a service as well.) From a consumer's perspective, a trademark tells the buyer that a particular company is responsible for the product, and the product has certain qualities. Let's run through a a couple of examples.

My spouse will only purchase Tide laundry soap. Her mother always used Tide, she has always used Tide, and our family has always used Tide as a result. The trademark “Tide” on the box or bottle tells her that the laundry soap inside cleans clothes well and is of a type that no one in the family is allergic to. Her loyalty to the Tide brand extends across its product line, to both powder and liquid forms of the product, and to versions of both that add various extra ingredients such as bleach, fabric softener, or fragrance. In the words of trademark law practitioners, the mark “Tide” serves as a “source identifier” for her. To the people who make Tide, she is probably their dream consumer.

Let's talk about beer. In the trademark context, alas. Bass has been brewing beer since 1777. In 1875 its red triangle logo was registered as British trademark number 1. The red triangle is an example of a symbol that consumers, including yours truly, look for to tell them that the product inside came from the Bass brewery. As a result, they expect the beer to have certain characteristics – for the Pale Ale version, a balanced hop-malt taste, mild carbonation, caramel color, and a soft, cream-colored head (these are my tasting notes; yours may differ, but what's important is that it represents what this consumer has come to expect from a bottle of pale ale bearing the red triangle logo). The folks at Bass are very proud of that red triangle logo, and I'm sure work hard to make sure it consistently has the qualities that consumers have come to associate with the product.

That's not to say that every mark has to be unique. Depending on the mark, it's possible to have the same or very similar marks that can coexist because they cover different types of products or services. The mark “United,” for example, has been registered by different companies for shower enclosures, real estate franchise services, lighting ballasts, bicycle accessories, grocery stores, rolling mills, pool cue stick joints, fresh vegetables, transportation of goods by truck, transportation of persons, property, and mail by air, and dozens of other products and services. This is allowed because consumers are able to compartmentalize their perceptions about products and services. Most consumers who are looking for moving van services and see the name “United Van Lines” don't believe that “United Airlines” is provider of those services, and vice-versa. In legal terms, there is little “likelihood of confusion” between those similar “United” marks for those different types of services.

The Trademark Office requires a registrant to declare the types of goods or services that its mark is to cover when it decides whether to grant an application for a registration. We will talk about those “classes” of services and how different types of trademarks can get you broader or narrower protection a bit later. (“United,” you might guess, is on the narrower side of things.)

Other things besides words can serve as trademarks: the shape of a product or container (think the classic Coca-Cola bottle); the color of a product (think Owens-Corning's pink building insulation); even sounds (think the NBC television chimes). But ordinarily trademarks are either words (which can be in regular letter form or logo form) or symbols.

How do I get one?

There is a dirty little secret that many trademark lawyers won't tell prospective clients: if you've been using a word or logo in a trademark-y way, you may have already acquired some trademark rights. (And no, the phrase “trademark-y way” is not typical lawyer-speak.) That is because trademarks rights arise under common law, meaning they begin to build up as soon as you start using a mark “in commerce” -- basically, when you begin selling a product and using the mark to identify it.

You're not off the hook, however. There's a reason that so many companies go to the trouble to register their marks with the Trademark Office. The so-called “common law” trademarks only provide limited protection against infringement by others. In particular, the geographic scope of their protection is limited to the area in which the product has been sold. So if my “Acme” (to borrow Wile E. Coyote's favorite brand) hair gel is sold only in the New York metropolitan area, and I have not registered that mark for hair gel, I am protected under common law only in the New York metropolitan area. If I take my product to Los Angeles, and another Acme hair gel is already being sold in that area, the owner of that mark can prevent me from selling my hair gel under that name in that market. And if the Los Angeles Acme has registered its mark with the United States Patent and Trademark Office, and did so before I began selling my Acme hair gel, it might even be able to stop me from selling my product back in New York.

In many cases, however, keeping it local makes sense and the common law rights may be enough. If your market it fixed and you don't intend ever to expand your distribution or geographic scope, then you might be able to rely on your common law rights to protect you. This assumes you haven't picked a name that is already registered by someone else for a similar product (such as “David's Cookies” for your baked goods) or, for really famous products, almost anything (such as “Microsoft” for your line of tiny plush animals). We'll talk about selecting the right mark a bit later. If you think you want to stick with your common law rights, it might make sense for you to consult with an attorney who practices in this area about your particular situation.

So what do I get if I register my mark?

To increase the protection for your mark, you need to register it with the United States Patent and Trademark Office. The registration process is a fairly lengthy one, because each application is examined by the Trademark Office and compared against all of the marks that have already been registered, as well as against common law marks that the trademark examiner is able to find on her own (thank Google for vastly increasing the effectiveness of these common law searches). Registering a mark is not cheap, either. The total cost to register a mark – from application to registration – can easily exceed one or two thousand dollars, with Trademark Office fees accounting for about $500 of that and legal fees the rest.

So why go to the trouble? First, a registered mark can be protected throughout the United States, not just in the area in which it's been used. I once tried to secure a registration for a bakery in New York that was refused because a chain of three bakeries in the San Francisco bay area had registered the same mark for the same type of service. Other benefits of registration include:

the ability to sue in Federal Court (something you might not be able to do otherwise if your opponent is from the same state as you)
the ability to seek enhanced damages – up to three times your actual damages, where the infringement is deemed “willful” – plus attorneys' fees (this is rather rare, however)
the ability to have your mark declared “incontestable” after five years' use (making it harder to attack your mark in court)
the ability to use the ® symbol next to your mark – unregistered marks should only use the “TM” designation
the ability to register your mark with US Customs, which can help stop importation of counterfeits
providing ready notice to others of your mark – the Trademark Office's database is the first place people should look before adopting a mark
making it more difficult for a cybersquatter to register your mark as a domain name (trademark owners have some benefits when seeking to have the domain name turned over to them)
when you decide to go global, giving you the ability to use the registered US mark as a basis for securing foreign trademark registrations

So there are real benefits to registration. My next post will discuss the different types of registrations – for example, there is a way to “reserve” a trademark registration even before you begin to use the mark, by way of an “intent-to-use” application – and will go into some detail about how the registration process works.

Do New White House Flickr Image Restrictions Contravene Copyright Law?

noreply@blogger.com (Kelly Talcott) — Mon, 08 Feb 2010 13:18:00 +0000

This Slashdot post highlights the incongruity between US government copyright policy and the White House's recent restrictions on the uses of images posted to its Flickr photostream.

Government policy states, in part, that "[a] work that is a United States Government work, prepared by an officer or employee of the United States Government as part of that person's official duties, is not subject to copyright in the United States and there are no U.S. copyright restrictions on reproduction, derivative works, distribution, performance, or display of the work." This is consistent with the Copyright Act as well. Images on the White House Flickr photostream, however, now contain this restrictive legend: "This official White House photograph is being made available only for publication by news organizations and/or for personal use printing by the subject(s) of the photograph." (Example here.) It then goes on to prohibit the commercial use of the image in any way that suggests the endorsement of the subject.

Oddly enough, the Flickr page also contains a link to the Government Policy that disclaims a copyright interest in images that are United States Government works -- as most of the White House photostream images are.

Even more oddly, the restrictive legend is not the same for all images. This image of the President meeting with former president George H.W. Bush removes the word "only" from the restrictive legend, which changes its meaning considerably, from a restrictive one to an explanatory one: "This official White House photograph is being made available for publication by news organizations and/or for personal use printing by the subject(s) of the photograph." The lack of an "only" there suggests that others can use the image as well. Perhaps it's a partisan thing.

There is of course a tension between the rights that the creator of an image has in that image (which are addressed by copyright law) and those that the subject of the image has in that same image (which are addressed by publicity laws in most states that give individuals some rights over how their images are used for advertising or other purposes). This was highlighted in a case brought two years ago by the family of a Texas teenager whose picture was taken by a photographer and posted on Flickr with a Creative Commons Attribution License. The family sued when Virgin Mobile used the image in ads for its mobile phone service in Australia. The issue there was really not one of copyright, but of publicity.

The President recently experienced the same sort of situation, when the Weatherproof clothing brand used an image of the President wearing a Weatherproof brand jacket on a billboard ad in Times Square.

Perhaps what the White House means to say is best expressed in the second half of the restrictive legend it now posts with its Flickr images, which states that the images "may not be used in commercial or political materials, advertisements, emails, products, promotions that in any way suggests approval or endorsement of the President, the First Family, or the White House." That legend is grounded in publicity law, not copyright, and is not inconsistent with the government disclaimer of copyright. It would perhaps be the better limitation for the White House to emphasize.

The Annual Super Bowl Copyright Post

noreply@blogger.com (Kelly Talcott) — Sat, 06 Feb 2010 02:33:00 +0000

Ars Technica had a nice post several days ago about copyright and The Super Bowl; this one focusing on the screen size limitation written into the Copyright Act. Two takeaways from the post, which is worth reading: first, it offers yet another example of how complex this area of the law is, and second, it reminds copyright owners to use common sense when making decisions about enforcement. Just because you can enforce a right doesn't always mean you should.

Federal Circuit Lowers the Bar for Declaratory Judgments

noreply@blogger.com (Kelly Talcott) — Tue, 02 Feb 2010 03:47:00 +0000

(A version of this article appeared in the December 15, 2009 edition of the New York Law Journal)

A recent decision from the Federal Circuit makes it even more difficult for patent holders seeking to open talks with a potential infringer to avoid becoming the target of a declaratory judgment action. Such is the takeaway from the December 4, 2009 decision of the Federal Circuit in Hewlett-Packard Company vs. Acceleron, LLC.

The background to the Acceleron case is a familiar one to patent litigators: Acceleron, a patent holding company, acquired a patent and several months later sent a letter to Hewlett-Packard about it, noting that the patent related to blade servers. As “demand” letters go, it was relatively mild, asking HP for “an opportunity to discuss this patent with you.” It also included a request: that HP agree that all of the information the parties were to exchange “will not be used for any litigation purposes whatsoever, including but not limited to any claim that Acceleron has assserted any rights against any of your ongoing or planned activities, or otherwise created any actual case or controversy regarding the enclosed patent.”

Acceleron asked HP to respond by two weeks from the date of the letter, stating that if HP had not done so by then, Acceleron would “assume you have no interest in discussing this patent.”

HP's response indicated its interest in learning more about the patent, and proposed that the parties agree to a 120-day “mutual standstill,” during which time neither company would sue the other. Acceleron demurred, contending that HP did not have “any basis for filing a declaratory judgment action,” and extending for another two weeks the time for HP to return a signed copy of the original Acceleron letter, agreeing to the discussion terms proposed therein.

Shortly thereafter, HP filed a declaratory judgment suit in Delaware, where Acceleron was incorporated, rather than in the Eastern District of Texas, where Acceleron maintained its principal place of business. Acceleron moved to dismiss for lack of subject matter jurisdiction, and the District Court granted the motion, reasoning that at the time HP filed the suit, litigation was “too speculative a prospect to support declaratory judgment jurisdiction.” HP appealed, and the Federal Circuit reversed.

The Federal Circuit reviewed the District Court's grant of Acceleron's motion to dismiss de novo, and its underlying findings of fact for clear error. It noted that while the Supreme Court's 2007 ruling in Medimmune may have "lowered the bar for determining declaratory judgment jurisdiction" in patent lawsuits, "a lowered bar does not mean no bar at all."

The court quoted Medimmune when it explained that a declaratory judgment plaintiff needs to show a "definite and concrete" dispute that touches the "legal relations of parties having adverse legal interests.' The court noted that the plaintiff also needs to show that the dispute is "real and substantial and admit of specific relief." In particular, "a communication from a patent owner to another party, merely identifying its patent and the other party's product line, without more, cannot establish adverse legal interests between the parties."

That last sentence would appear to offer the recipe for patent holders interested in communicating with potential infringers without attracting a declaratory judgment lawsuit: first, identify your patent; second, identify the other party's product line. While of course the conventions of social discourse will require that there be more to initial contact letters than just these two points, the Acceleron case shows that not too much more in the way of back-and-forth can generate a dispute that is "real and substantial" enough to survive a jurisdictional challenge.

While Acceleron argued that it had not threatened to sue HP in any of its correspondence, the Federal Circuit looked to how Acceleron's letters could be interpreted and disagreed, noting that "[t]he purpose of a declaratory judgment action cannot be defeated simply by the stratagem of a correspondence that avoids the magic words such as 'litigation' or 'infringement.'" In particular, the Federal Circuit pointed to Acceleron's assertion of its patent as "relevant" to HP's blade servers; its imposition of a short response deadline; its request that HP not use the information exchanged in any lawsuit; and its status as a non-competitor patent holding company, all as support for a finding of jurisdiction.

The court found further support in Acceleron's refusal of HP's request to enter into a mutual standstill, a refusal that derived added significance in the court's eyes from the fact that "Acceleron is solely a licensing entity, and without enforcement it derives no benefits from its patents."

It was thus the "totality of the circumstances" that the Federal Circuit said made it "not unreasonable for HP to interpret Acceleron's letters as implicitly asserting its rights" under the patent. In sum, "conduct that can be reasonably inferred as demonstrating intent to enforce a patent can create declaratory judgment jurisdiction."

If anything, this case -- which the Federal Circuit acknowledges "marks a shift from past declaratory judgment cases" -- highlights how little it takes before declaratory judgment jurisdiction can attach to discussions between a patent holder and a potential target defendant. While Acceleron appears to have taken some pains to avoid making things appear as though litigation were a possibility, the Federal Circuit seems to be telling courts to go beyond the surface and to look to "conduct that can be reasonably inferred" when evaluating whether an "intent to enforce a patent" exists.

Patent holders, then, must now look not only to what their words say when they bring their patents to the attention of possible infringers, but also to how those words may be interpreted by some unknown court. For licensing entitites in particular, it is likely that almost any discussion of litigation whatsoever risks providing the potential target with ammunition enough to support declaratory judgment jurisdiction. Companies on the receiving end of patent notice letters, of course, will now find it easier than ever to invoke declaratory judgment jurisdiction.