Archive for the ‘Intellectual Property’ Category

The Supreme Court Weighs In…

Friday, February 28th, 2014

Supreme Court SealWhen the Supreme Court decides a case, the result is binding on all of us.  The Court will be busy with patent, copyright and trademark cases over the next few months.  The following are a few highlights:

1.  Are computer-implemented inventions patentable?  Particularly, is a general purpose computer programmed to perform a specific function patentable?  Alice Corp. v CLS Bank International, No. 13-298 will revisit this question.  This case has great importance to software inventors and persons accused of infringing software patents.

2. Is re-broadcast of a TV program in the form of on-line streaming to paying subscribers a copyright violation?  On the one hand, the broadcaster released the program to the world when it sent the program out over the air.  On the other hand, the broadcaster still owns the copyright.  American Broadcasting Companies v Aereo, No. 13-461 is the pending Supreme Court case on the subject.  See our previous article.

3. Is a person liable for patent infringement where that person induces two or more people acting in concert to perform all of the steps of a method patent when no one person infringes the patent?  This issue is crucial for, say, Internet-enabled inventions where different steps in the invention can be performed by different parties and even on different continents.  Limelight Networks v Akamai Technologies, No. 12-786, will answer this question.

4. Can a person be sued by a private party under  trademark law for false advertising for a product that is pervasively regulated under the Food, Drug and Cosmetic Act?  This case will resolve a tension between two different laws.  The case is POM Wonderful v The Coca-Cola Company, 12-761.

Stay tuned.

– Robert Yarbrough, Esq.

But I Already Paid for That!

Thursday, January 31st, 2013

We are anonymousThe United States Federal Government does a lot with tax dollars. One of those things is that it funds research in many areas that lead to published papers in basic science, medicine, engineering, and many more fields. Another is that it runs the Federal Court system, which publishes orders, rules, opinions, and the like. What do all of these publications have in common?  It’s that even though your tax dollars paid to create them in the first place, you will almost certainly have to pay again if you want to read them. You may pay a journal publisher thousands of dollars per year for a subscription, or pay $20-$45 for a copy of a single article.  You may pay 10¢ per page to PACER, the online court system operated by the government, but you’ll pay.

Some argue that if tax dollars are used to create a document, then taxpayers should not have to pay to read it.  Certainly, this was the argument of young Aaron Swartz, when he downloaded a significant slice of the PACER database and put it online for free. He also argued that the JSTOR database of articles was largely the result of publicly funded work, and should be freely available. JSTOR, a nonprofit organization, is a database of scholarly publications, including thousands journals that cost thousands of dollars each per year in subscription fees – and that publish taxpayer-funded research.

According to the famous “hacker ethic”, information wants to be free.  This ideal, often in conflict with the proprietary rights regimes of patent and copyright, sets in motion a conflict that, in the case of Mr. Swartz, led to his prosecution and the threat of crushing legal fees, heavy fines, and a potential prison sentence far longer than if he had killed someone while driving under the influence of alcohol. In the face of these penalties, Mr. Swartz, age 26, took his own life.

The hacktivist group “Anonymous” has expressed its collective disgust with this situation using its recognizable Guy Fawkes masked persona, by inserting a message onto the website of the Federal Sentencing Commission. Their message, hacked into the website stated, in part,

There must be reform of outdated and poorly-envisioned legislation, written to be so broadly applied as to make a felony crime out of violation of terms of service, creating in effect vast swathes of crimes, and allowing for selective punishment. There must be reform of mandatory minimum sentencing. There must be a return to proportionality of punishment with respect to actual harm caused, and consideration of motive and mens rea. The inalienable right to a presumption of innocence and the recourse to trial and possibility of exoneration must be returned to its sacred status, and not gambled away by pre-trial bargaining in the face of overwhelming sentences, unaffordable justice and disfavorable odds. Laws must be upheld unselectively, and not used as a weapon of government to make examples of those it deems threatening to its power.

This crie de coeur goes beyond making information free, and the delivery method, hacking a website, is, itself, criminal, but the message rings true to those who remember the social activism of the 1960s and who lived through the Pentagon Papers, Watergate and Iran Contra. Even some intellectual property attorneys (but not many) have come to recognize that our present laws punish what used to be considered artistic creativity, and thus impoverish our culture and our civil discourse.

Perhaps the young Congressional staffer who suggested that we rebalance the interests of publishers and the public they used to serve was on the right track after all – just before he was fired for suggesting that copyrights ought to be a bit shorter than a century!

Lawrence A. Husick Esq.

Ask Dr. Copyright (Summer Reading Edition)

Tuesday, July 31st, 2012

copyright questionDear Doc:

I’m going to the beach and I am tired of re-reading old spy novels.  Know any exciting books about intellectual property law?

Signed,

Eccentric Beachbum

Dear EB:

Absolutely! The “Doc” just loves a good suspenseful mystery, and in the Doc’s opinion, there is none better than William Rosen’s The Most Powerful Idea in the World: A Story of Steam, Industry, and Invention.  Who doesn’t love steam engines? This book seems, at first, to be a rather dry history of the beginnings of the industrial revolution in England.  Give it a chance, though, because it quickly becomes a rather dry history of the beginnings of the industrial revolution in France, England and a few other places.  By about page 40 though, it’s a real page-turner.  I won’t spoil it for you, but here’s the clue: the most powerful idea in the world is NOT the steam engine!

Rosen is an engaging historian, and his depiction of the epic battles and monumental forces that reshaped our world in the early 19th Century echo in today’s world of globalization and disruptive shift. If, as they say, history does not repeat itself, but certainly rhymes, then Rosen’s book should be required reading. If you, like the Doc, are fascinated by technology and business, as well as strong characters who shape the societies in which they live, you’ll enjoy it.  Trust the Doc.

– Lawrence A. Husick, Esq.

A Book By Any Other Title May not be Registrable…

Tuesday, July 31st, 2012

book From time to time, we receive inquiries from authors about registering book titles as trademarks.  Sounds like a good idea but can it be done?  The short answer is “no,” trademark law does not permit registration of a work’s title.  But, as with many legal rules, there are exceptions.

The complete title of a work may be registered as a trademark if the work’s title is used on at least two different creative works thereby establishing the title as a trademark for a series of works.  Children’s book titles are commonly registered as a series of works.  For example, Two Cool Doods, The Little Green School, Monster Catchers, and many others.  The trademark applicant must exercise care in providing evidence of a series.  If only the format of the work has changed, such as publishing a written and audio version of the work, the applicant will not persuade the trademark examiner that the work is a series. Similarly, the title of an abridged or unabridged version of the work does not establish a series; nor does use of the title on posters, mugs, bags or t-shirts.

An author may also register a portion of a book title as a trademark if he or she can establish that:

  • the portion of the title to be registered must create a separate commercial impression apart from the complete title;
  • the title is used on a series of works; and
  • the title is promoted or recognized as a mark for the series.

The Trademark Office states that the applicant has a heavy burden in establishing that the title is used in a series.  The mere use of the same words in more than one book title is insufficient proof.  Instead, the applicant must establish that the public perceives the title to be a mark for a series.

So, you can see that there are strategies for registering a book title as a trademark but the process is tricky.  If you’ve been thinking about registering a book title, we can help determine the appropriate application strategy.

– Adam G. Garson, Esq.

2012 Special 301 Report Outlines Intellectual Property Rights — Gains and Losses

Friday, June 29th, 2012

Special 301 ReportIn April 2012, the The Office of the United States Trade Representative (USTR) issued its “2012 Special 301 Report” (Report) in which it reviews the state of intellectual property rights protection and enforcement in trading partners around the world.  It’s an interesting document, which underscores the importance of intellectual property rights (IPR) to world economy, the need to protect those rights, and the need for IPR holders to be constantly vigilant.  Here are some highlights.

Positive developments in IP are reported for Malaysia, Spain, Israel, Russia, and, yes, China.  Malaysia passed copyright amendments that prevent the circumvention of technological protection measures; establish a mechanism for cooperation by Internet service providers against piracy over the Internet; and prohibit the unauthorized camcording of motion pictures in theaters. Having enacted new laws against Internet copyright piracy, the United States has removed Spain from its IP Watch List.  The Report also notes that Israel has enacted a new law protecting against unfair commercial use and that  Russia has passed a law that establishes a specialized IPR court and amended its Criminal Code to revise criminal thresholds for copyright piracy.

China has recently established a State Council-level leadership structure, headed by Vice Premier Wang Qishan, to lead and coordinate IPR enforcement across China. This leadership structure is meant to enhance China’s ability to address IPR infringement.  Interestingly, the performance of provincial level officials will be measured based on enforcement of IPR in their regions.

USTR also describes various international initiatives to strengthen IPR protection and enforcement.  These include a Trans-Pacific Partnership with Australia, Brunei Darussalam, Chile, Malaysia, New Zealand, Peru, Singapore, and Vietnam with the goal of creating a platform for integration across the region that will include strong standards for the protection and enforcement of IPR.

Australia, Canada, the European Union, Japan, Korea, Morocco, New Zealand, and Singapore, along with the United States, signed Anti-Counterfeiting Trade Agreement (ACTA) for fighting trademark counterfeiting and copyright piracy.

The United States is also working with trading partners to strengthen IPR protection and enforcement through bilateral and regional agreements, including free trade agreements. In addition, Trade and Investment Framework Agreements between the United States and various trading partners have facilitated discussions on enhancing IPR protection and enforcement.  The Report goes on to describe other international initiatives. In one instance it states:

As an example of an outcome of such engagement, in November 2011, APEC Ministers endorsed the APEC Effective Practices for Addressing Unauthorized Camcording, which will assist APEC economies to implement public awareness efforts, engage in cooperation with the private sector on capacity building, and adopt effective legal frameworks to address the challenges of unauthorized camcording in cinemas.

The majority of the USTR report explains developments and changes in the so-called “Priority Watch” and “Watch” lists.  USTR created the Watch List to name countries where particular problems exist with respect to IPR protection, enforcement, or market access for persons relying on IPR. Countries placed on the Priority Watch List are the focus of increased bilateral attention concerning the problem areas.

Countries named on the Watch List include Belarus, Bolivia, Brazil, Brunei Darussalam, Colombia, Costa Rica, Dominican Republic, Ecuador, Egypt, Finland, Greece, Guatemala, Italy, Jamaica, Kuwait, Lebanon, Mexico, Norway, Peru, Philippines, Romania, Tajikistan, Turkey, Turkmenistan, Uzbekistan, and Vietnam.

Those name to the Priority Watch List are Algeria, Argentina, Canada, Chile, China, India, Indonesia, Israel, Pakistan, Russia, Thailand, Ukraine, Venezuela.  You might be surprised by the appearance of Canada, which appears primarily because of the country’s failure to enact comprehensive copyright legislation and strengthen its boarder enforcement efforts.

To learn more about the IPR issues relevant to each of these countries, see the report, which can be downloaded here.

–Adam G. Garson, Esq.

Ask Dr. Copyright

Thursday, May 31st, 2012

copyright question Dear Doc:

I have heard several of my friends say that university copyright policies are complicated and are a “bear” to deal with.  What, exactly, does that mean?

Your friend,

Yogi

Dear Yogi:

Many colleges and universities have so-called “intellectual property policies” that they say apply to student-created work. Many of these policies say that what students create is actually owned by the school, despite the fact that students pay to attend, and are in no way employees of their schools. Some more enlightened schools just say that they have a right to use the student’s work without paying for it, but that the student owns the copyright. This is an area of great controversy.

Let’s start at the beginning.  Under U.S. Copyright Law, if you are an employee, your employer is actually the author of whatever you create on the job. If you’re not employed, then you must have a signed written agreement that gives rights to another party. No signed agreement – you own the copyright. Furthermore, that agreement must evidence “consideration” for the grant of rights, such as payment.

Universities have traditionally had “policies” about ownership of inventions and copyrighted works. They publish these, and sometimes they say that these policies are legally binding on not only the faculty, but also the graduate students and undergrads. Such was the case of Colorado University student Andy Duann, who snapped a wonderful photo of a bear falling out of a tree on campus on April 26, 2012.

bear

Because Andy was a reporter for the student newspaper, and the school makes all students who work on the newspaper sign away their rights (seemingly without any consideration) when Andy sold the photo to the Boulder Daily Camera, and the Associated Press, the University sent their lawyers after him.

All’s well that ends well, sort of. You see, Andy joined the newspaper in mid-semester, and they never got around to forcing him to sign their agreement. After a brief kerfuffle, the University admitted this and admitted that Andy owns the rights. Not so, for the bear. After he was tranq-darted out of that tree and safely hauled away and released unharmed off-campus, he was hit by a car on May 3 while crossing a road. So while Andy’s rights may have survived the ordeal, his ursine friend was not so lucky.

The attorneys at LW&H deal with these issues every day. If you or your student is presented with a policy or agreement that looks out of line, give them a call. After all, Andy made more than the bare minimum when he sold that photo.

The “Doc”

– Lawrence A. Husick, Esq.

APPLE v SAMSUNG – Design Patent Law Moves Closer to Trademark Law

Thursday, May 31st, 2012

Home Design Patent A ‘design patent’ is a monopoly granted by the government to make, use and sell a product having a particular appearance.  Design patents protect how a product looks, not what it does.  A person who copies a product protected by a patent, including a product protected by a design patent, will be ordered to stop infringing by a court only if the patent owner can demonstrate that the patent owner will suffer ‘irreparable harm’ due to the infringement that cannot be compensated by money damages.  Such a court ‘injunction’ against an infringer is difficult to obtain under this standard.

On the other hand, a ‘trademark’ indicates the source of a particular type of goods.  If a trademark becomes ‘famous’ (for example, Coca-Cola®) then a court will order a trademark infringer not to use the famous trademark for other types of goods if the use will ‘dilute’ the famous trademark; that is, if the use will reduce the stature of the famous trademark in the eyes of the public.  It is easier to obtain an injunction stopping infringement under the famous trademark standard than under the patent standard.

Apple and Samsung are in a worldwide battle over the alleged copying of Apple’s patented smartphone and tablet computer designs by Samsung.  In a case before the Federal Circuit Court of Appeals, Apple argued that Samsung should be enjoined from selling its Galaxy smartphones because Samsung’s copying of the patented Apple design amounts to ‘design dilution.’   The argument is that Apple is ‘irreparably harmed’ for purposes of a preliminary injunction because Samsung’s product will ‘dilute’ the Apple design in the eyes of the public.  This argument blends the trademark concept of dilution into patent law.  The trial court rejected the argument for lack of evidence.  The Federal Circuit affirmed the trial court’s conclusion that the argument was not supported by evidence, but concluded that it “would have been improper” to reject the argument outright.   The Federal Circuit Court’s decision leaves Apple free to renew the argument with more evidence when the case comes to trial.

The Apple v Samsung case blurs the distinction between trademark and design patent law and potentially will ease the burden of a design patent owner in stopping an infringer.

– Robert Yarbrough, Esq.

…But We’re Important!

Monday, April 30th, 2012

thumbnailThe Economics and Statistics Administration, an arm of the U.S. government, and the U.S. Patent and Trademark Office have issued a report on the importance of intellectual property (patents, trademarks and copyrights) to the U.S. economy.   According to the report, as of 2010 over 27 million people are employed directly in industries identified by the PTO as ‘IP-intensive,’ which accounts for almost 19% of all U.S. employment.  Supply chain employment to feed those IP-intensive industries amounts to another 12.9 million jobs, for a total of 40 million jobs, or 27.7 % of all U.S. employment either directly or indirectly reliant on IP-intensive industries.

The reports notes that persons employed in the IP-intensive industries are better educated and paid better than their non IP-intensive counterparts.  The IP-intensive industries are recovering from the recession faster than other industries and the IP-intensive industries account for over 60% of all U.S. exports of merchandise.

In short, intellectual property is important and companies in industrial sectors that utilize intellectual property are more prosperous than companies in industrial sectors that do not.  We should note that the PTO is not an entirely neutral observer here.  The more important the role of patent and trademarks to the U.S. economy, the more important the role of the PTO.

– Robert Yarbrough, Esq.

Healthcare Reform Affects Intellectual Property

Thursday, March 29th, 2012

Obama SignatureThis week the United States Supreme Court heard arguments over the constitutionality of the Patient Protection and Affordable Care Act (PPACA).  The ten titles of PPACA, along with amendments to the “Health Care and Education Reconciliation Act of 2010″ regulate multiple industries making up approximately one-sixth of the national economy, all of which affect science, technology, and innovation.  In 2010, David Applegate and Arthur Gollwitzer III published a short synopsis of how the PPACA affects the intellectual law community.  While it is probably not the last word on the subject, in view of the historic Supreme Court arguments of this week, its worth a quick review.

Several parts of the PPACA affect intellectual property issues, either directly or indirectly:  Titles II,III, VI, VII, and X.  The part of the Act, which directly affects intellectual property rights is Title VII, known as the “Biologics Price Competition and Innovation Act of 2009,” which provides an abbreviated approval process for biologic drugs.  Although according to Applegate and Gollwitzer, the new law provides an accelerated application process, the authors not that there are those critics that argue that it  creates “a regulatory scheme with artificial dates, undefined terms, and paperwork hurdles that will cause inefficiency and litigation, thus imposing additional costs upon, and therefore reducing the productive output of, the companies being regulated.”  Of course, if this is correct, the law will affect the rate of innovation in this area.

Title VII also expands the number of entities that may purchase drugs at a discount from a federal list (known as the “340B Program”), which will either expand the number of drugs available at discount or decrease the discount price for available drugs, thereby reducing payments to pharmaceutical companies.  Those who favor the bill cite to the economic benefits of expanded drug discounts as well as the support of the pharmaceutical industry; distractors argues that that the reduction of revenues will reduce research and development.  Yet, according to Applegate and Gollwitzer, “some analysts see the reform bill as a boon for the pharmaceutical industry, asserting that although costs per unit can be expected to go down, overall sales will rise considerably as government-funded programs that underwrite prescription drugs expand. Under this scenario, drug companies would be expected to have more funds available for research and development.”

In a similar vein, Title II of the PPACA expands Medicaid rebates for prescription drugs.  The arguments are similar, increased discounts mean decreased revenue, which means less research and innovation.  Others argue that the pharmaceutical industry has everything to gain from increased sales stimulated by the new law.

Title IX imposes taxes on certain pharmaceutical and medical device manufacturers and importers.  Critics contend that the Act will affect the overall profitability and incentives by diverting otherwise productive resources to the “tax avoidance industry”.

Title II of the Act establishes a national strategy to “improve the delivery of heath care services patient health care outcomes, and population health.”  To the extent that the government will become the single largest consumer of health care services, it will have a huge influence over the available supply of treatments and innovations, a power that the critics are suspicious of.  According to Applegate and Gollwitzer, “supporters, however, contend that the government-as-consumer scenario will permit economies of scale previously unknown in the industry” thereby driving research and innovation.

One thing is clear that given the clamor on both sides of the aisle on these and other issues, no one has a clear picture of what the affect of the PPACA will have either upon innovation and research or upon the larger economy.  The future of the law hangs in the balance and will be dependent upon the the decision of the Supreme Court.

– Adam G. Garson, Esq.