Google Street View Revisited…

April 30th, 2014

Last month, we reported that Google lost patent infringement litigation relating to the Google Street View technology and that Street View was off the air.  While Google did lose the infringement litigation, if Street View was ever down it was back on line by the time our newsletter published.

– Robert Yarbrough, Esq.

Ask Dr. Copyright …

March 30th, 2014

copyright question Dear Doc:

A magazine editor has told me that if a magazine releases an issue before its copyright date, the magazine will lose its rights. I can’t believe that this is the law. Please tell me who’s right.

Signed,

Confused Author

Dear Confused:

You’re less confused than your editor! Under international copyright law, known as the Berne Convention (no, it’s not a meeting of arsonists) a “work” is protected by copyright automatically from the moment it is created. There are no complicated rules. Most countries, including the United States, are a part of this treaty, so copyright protection extends to most of the world in this way.

Each country is still allowed to create its own rules in addition to those of the treaty, so, for example, in the United States, even though you have an automatic copyright, you must register your work in the Copyright Office of the Library of Congress in order to enforce your rights in court, and there are other benefits of early registration as well. Registration is a simple process, and the fee is quite low. You may not, however, just send yourself a registered letter! (That is as legally effective as shaking a rattle to cure the flu.)

Under U.S. law, you may put a copyright notice on your work to show the world that you have rights. The law says that this notice is ¬©, the year of creation or publication, and some identifier of the copyright owner. You may also use the word “Copyright” or the abbreviation “Copr.” You may NOT use a ( C ) – that’s not part of the law. Under the laws of some countries, it also helps to use the phrase, “All Rights Reserved.”

Copyright extends to more than just written works, as well. You can protect music, video, computer code, works of visual art, and even performances. Each type of work has its own rules and registration forms, so be sure to check www.copyright.gov and with your IP counsel for the right information. Registering copyrights should be an automatic part of the business process for just about every business.

When it comes to simple and effective protection of intellectual property, you just can’t beat copyright. By now, the Doc knows that you have lots more questions. Just call one of the attorneys at LW&H. They do copyright, trademark, patent, trade secrets, and lots of other stuff to protect rights of creative endeavors.

The Doc

–Lawrence A. Husick, Esq.

New gTLD’s … New Burdens

March 30th, 2014

domains You may recall that we reported about “one of the biggest changes in the Domain Name System” was about to be implemented by ICANN, which was introducing hundreds of new top level domains that could “end with almost any word in any language.”¬† So, instead of such dependable and familiar domains like “nike.com” and “nikon.com”, you could have “nike.shoes” or “nikon.camera.”¬† Pretty cool, right?¬† Well, maybe not so much for trademark owners.

The roll out of the new domains has been slow-paced, however, as registrars come on line with the new domains (after paying hefty application and registration fees) some trademark experts worry that the explosion of top level domains places too much burden on brand owners to police their marks and purchase unwanted domains for the sole purpose of keeping them out of the hands of would-be cyber squatters and infringers.¬† Francis Gurry, the head of the World Intellectual Property Organization (WIPO), is on record of stating that the impact upon trademark protection is “likely to be significant and disruptive.”¬†¬† SecurityWeek.com quoted Gurry:

‘The opportunity for misuse of trademarks expands exponentially,’ said Gurry, noting that registering a domain name is a cheap, automatic procedure that takes a matter of seconds and does not have a filter to examine whether there is a trademark conflict.

According to the same SecurityWeek.com article, in 2013, 2,585 cases involving 6,191 domains were were filed with WIPO, which is one of the arbiters in charge of domain disputes.¬† It is currently hearing its first case concerning a new gTLD in which a German company, Canyon Bicycles GmbH, is objecting to a Dutch registrant of canyon.bike.¬† The German company is a worldwide distributor of bicycle products and is involved in numerous international cycling events.¬† The registrant of the domain is an individual based in the Netherlands who states that he is a cyclist and web designer in the cycling industry. The disputed domain name points to a website parking page provided by the Registrar which, according to the screenshot provided by the Center, features sponsored listings including one entitled “Mountainbikes”.¬† To learn more about the case visit WIPO’s website.

This case may foreshadow many more similar disputes.¬† We’ll keep you posted.

– Adam G. Garson, Esq.

What Happened to Google Street View?

March 30th, 2014

Street View Google Street View is the popular feature of Google Maps that allows you to see panoramic photographs of, well, pretty much anywhere with different orientations and magnifications.  The photographs are stitched together in software to allow the viewer to navigate through a virtual representation of the real world.  You may have seen the Google photography cars driving around with an array of cameras, taking pictures of your neighborhood.

If you look for Google Street View today, you will not find it.¬† Why?¬† We can’t say for sure, but it may have something to do with a decision by the Federal Circuit Court of Appeals in the case of Vederi v Google.

But we’re getting ahead of ourselves.¬† Back in the year 2000, Enrico Bernado and Luis Goncalves were Ph.D candidates at CalTech.¬† They attached cameras and a GPS device to Mr. Bernado’s car and drove around Pasadena taking photographs.They also developed software to stitch the photographs together, creating panoramic views and allowing a person to navigate through a virtual representation of the real landscape.¬† The results were available through the City of Pasadena’s website.

Drs. Bernado and Goncalves founded Vederi, LLC and were awarded four patents for their work.  Vederi sued Google for patent infringement for its Street View product.  The trial court found no infringement based its interpretation of the claims of the patents, but the Federal Circuit Court reversed and sent the case back to the trial court.  We suspect that Google believes that Street View infringes the patent claims as interpreted by the Federal Circuit and as a result took Street View off line.

Will we see Google Street View again?  Because a patent infringement lawsuit is a license negotiation by another name, we suspect so.

–Robert Yarbrough, Esq.

Ask Dr. Copyright …

February 28th, 2014

copyright question Dear Doc:

Last month, you promised that you’d continue your explanation of patents and copyrights with a rant about patents and trolls. So…? What, exactly, do you have against trolls, other than the fact that they live under bridges and threaten goats?

Signed,

Been Waiting a Month

Dear BWaM:

OK. So as not to disappoint, here goes!

The press has been overflowing for the past few years with breathless articles about evil “patent trolls”.¬† You see, back in the late 1990s semiconductor giant Intel was being sued for patent infringement by many patent owners. The company’s lawyer, Peter Detkin, called one of the lawyers representing the patent owners a “patent extortionist” in an article about the company, but others at Intel did not like that term. There was a contest, and Detkin, Anne Gundelfinger and Mark Davis somehow came up with “patent troll” as an alternative.

Remember the story of how the trolls hid under a bridge that they had not built, but demanded a toll from everyone who crossed?¬† Me neither. The original Norwegian folk tale is completely silent on who built the bridge, but it’s pretty clear that the goats had not done so, right? Goats lack opposable thumbs.¬† And as there is no other character in the story…but I digress. The troll term struck a chord, and came to mean a company that asserted patents on technology that they had not invented, seeking royalties. Such companies are clearly evil villains, because they don’t invent anything, and they sue other people using patents that they buy from inventors. Boo! Hiss! The media climbed on board, and there have been thousands of publications decrying the “rent seeking behavior” of the trolls. For a very entertaining overview, click here.

Fast forward to 2014, and you have bills in Congress and the President of these United States promising to do something to stop the trolls because they hurt innovation! But…do they really? Let’s think about this.

Suppose you passed a law that says that anyone who owns a piece of ground¬† and who built a building there could do only one of two things: occupy it himself, or occupy part of it, and rent the other part out. He can sell the building, but only to someone who will only occupy it – and never rent it out, because otherwise, the new owner would not be the one who built the building – he would only be seeking to collect rent.¬† He can’t move out and rent the entire building because then he would not be using what he had built, only seeking to collect rent. Oh, and the original owner would not be allowed to hire a manager by promising to pay a portion of the rent collected, and he can’t buy the building next door, since he didn’t build it. Forget real estate investment trusts that buy properties to build a portfolio – they don’t build things…they must be evil too.

So under this new law, what is a property worth? What incentive does the land-owner have to build his building if he has to live in it until he can sell it to someone who can only live in it? Easy – you’ve just reduced the value of almost every property in America by a huge amount. No one can be a real estate investor in the resale market. Period. So why would our country want to do the same thing to inventors, by limiting their ability to sell their patents? Because big companies that infringe patents are sick and tired of getting caught with their hands in the cookie jar, and can afford to create a fable and lots of press to convince us that their problem is actually our problem. Congress has taken their money that comes wrapped in that same fable, and the President knows a good story when he hears it.

It has been pointed out that it costs millions of dollars to defend against a patent infringement law suit, and that these suits take years to work their way through the courts. True. But the same is true of other high-stakes business litigation in many fields. It’s not only the “trolls” who suffer from our less than efficient court system: Apple and Samsung have been battling for many years, and there is no end in sight. Few call either of these companies patent trolls (some surely do), but that doesn’t stop anyone from complaining that these suits are harmful. It’s just strange that these same complainers seem to be perfectly happy to have and use the innovations that are supposed to be protected by patents, while never bothering to ask what the world would look like if nobody could raise capital by having effective patents in the first place. (For a great explanation, read William Rosen’s The Most Powerful Idea in the World)

As a registered patent attorney who has represented all kinds of inventors for more than thirty years (from garage inventors to the largest multinational corporations) and has been involved in patent licensing and sale for all of that time, the Doc can simply say that there is another, more honest definition of “patent troll” — one given by Professor R. Polk Wagner of the University of Pennsylvania School of Law, who said that a patent troll is simply anyone who would dare to sue ME for patent infringement.

So there you have it. The same old story: don’t believe everything you read on the Internet…World War I started that way.

To get the straight story on intellectual property issues, be sure to ask the attorneys at LW&H. For reasons that nobody can explain, they actually enjoy thinking about this stuff.

Until next month,

The Doc.

– Lawrence Husick, Esq.

How Sweet it is…The Candy Crush Saga

February 28th, 2014

Have you ever played the mobile app game, “Candy Crush Saga” by King.com, Ltd. (“King”)?¬† Are you addicted to it?¬† Not me, you say.¬† More power to you because by some reports King earns a million dollars a day from users who actually pay for the chance to continue using this “free” game.¬† The way it works is that after so many moves or lives, the player has to wait a period of time before he or she can play again.¬† Some people — more than a million per day — can’t wait and opt to spend .99 to avoid the delayed gratification.¬† A brilliant business model!

In its quest to rule the mobile device game world, King filed a trademark application for the term CANDY, identifying software related products, clothing (say spin-offs), and educational services (say what?).¬† You might ask how in the world a software gaming company can claim rights to the term “candy”.¬† What about Hasbro’s Candy Land and the myriad other candy themed games?¬†¬† Apparently, the U.S. Patent and Trademark Office (“PTO”) did not see it that way.¬† No one else had applied for CANDY in the same or related product space and it was King’s to take. And so the PTO noticed the trademark for publication (the penultimate step in the registration process).¬† Apple, Inc. soon began enforcing King’s trademark rights in its App Store, demanding that developers remove copycat apps as well any game apps using the term “candy”.¬† King also embarked on a campaign to enforce its trademark rights in CANDY and the term SAGA.

Then the hue and cry!¬† Across the blogosphere, software developers called foul by the PTO for approving King’s registration of CANDY and criticized the filings as “overreaching” and “predatory.”¬† Independent game developers were so incensed that they created an online event dubbed “Candy Jam“, inviting developers to create games that use the word “candy.”¬† Participants created more than 450 games!¬† Then, two events occurred.¬† King announced that it was going public with a $500 million dollar initial public offering and, lo and behold, it voluntarily abandoned its trademark registration application for CANDY.¬† King CEO Riccardo Zacconi repented, saying that his company was “not trying to control the world’s use of the word ‘Candy’…only trying to prevent other from creating games that unfairly capitalize on our success.”¬† In another statement, King noted that its action did not affect its European registration for CANDY and that it would continue to protect its trademark rights.

So why would King abandon its U.S. trademark application?¬† A little controversy over a trademark should not deter enforcement of intellectual property rights. True, but the stakes here are enormous.¬† Apparently, game developers stirred the pot enough to cause King to worry about¬† the negative consequences of the trademark filing and enforcement furor to its $500 million dollar IPO.¬† To calm the storm of public opinion, it abandoned its trademark claim to CANDY.¬† The “saga” demonstrates the power of public opinion when trademark owners are perceived to overreach, particularly when large amounts of cash are at stake.¬† Sweet!

– Adam G. Garson, Esq.

The Supreme Court Weighs In…

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.

Lamps, Belt Buckles, and Hookahs — the Limits of Copyright Protection

January 31st, 2014

Copyright Question

You may already know by reading this newsletter that utilitarian objects are typically not protected by copyright law.¬† Fashion designs are but one controversial example.¬† Here’s a little more history.¬† In the 1950′s, the Supreme Court of the United States in Mazer v. Stein, held that statuettes incorporated into lamps – unarguably utilitarian objects -¬† were the proper subject of copyright protection in so much as the artistic component (the statue) was separable from its utilitarian function (the lamp).

lamp statue

Of course, it’s not always easy to separate the artistic from the utilitarian components of an object.¬† The U.S. Court of Appeals wrestled with the problem in Kieselstein-Cord v. Accessories by Pearl, Inc., when it considered whether artistically embellished belt buckles were subject to copyright protection.¬† The court recognized that although belt buckles were “merely useful objects,” the decorative features characteristic of the buckles being litigated rendered them something more than just useful objects.¬† In fact, the court wrote that the original ornamentation of the buckles was conceptually separable from their useful qualities and, therefore, deserved copyright protection.

buckles

This conclusion does not apply to any belt buckle and probably not the one your wearing unless it meets the basic requirement of originality and creativity inherent in a work of art.

Fast forward a few decades and the question arises again but this time between makers of smoking paraphernalia (presumably tobacco but times are a changing). In this case –¬† Inhale, Inc. v. Starbuzz Tobacco — Inhale sued Starbuzz for infringing its copyright in the distinctive shape of its skull and cross-bones adorned hookah water container.

hookah

The question was whether Inhale owned a valid copyright.¬† The court, agreeing with the defendant, thought not.¬† The issue again was whether the artistic work was either physically or conceptually separable from the utilitarian nature of the piece.¬† Since both parties had to agree that a hookah bottle was a “useful article,” the court looked to whether there was “conceptual” separability.¬† The court relied in part on a previous decision that the shape of a vodka bottle was not separable from its utilitarian features (Ets-Hokins v. Skyy Spirits Inc.).¬† The judge wrote that even though the water bottle had a distinctive shape – much like a sculpture – its shape could not be independent of its utilitarian function “because the shape accomplishes the function” (i.e., holding water).¬† So, no copyright protection and, even worse, the court awarded the defendant over a $100,000 in attorneys fees for having to defend a frivolous lawsuit.¬† Put that in your pipe and smoke it…..

– Adam G. Garson, Esq.

Ask Dr. Copyright …

January 31st, 2014

copyright question Dear Doc:

It seems that over the years, patents and copyrights have been in some kind of “Freaky Friday” accident, and have switched bodies. It used to be that patent was the big dog in intellectual property, but now, even big companies like Apple that win patent law suits can’t get the courts to stop infringers and win damages that are so tiny that nobody really cares. Copyrights, on the other hand, used to be about as valuable as the paper they were written on, but now, huge verdicts that put whole companies out of business are the norm.¬† What gives???

Signed,

Patently Confused

Dear PC:

You’ve just given the Doc a 64 foot tall soapbox here. So much so that he will have to split the answer up into multiple columns. So here goes…

You see, copyright and patent are both in the US Constitution (Const. Art. I, Sec. 7, Cl. 7 for anyone who cares.) They are the only powers in the Constitution that have an actual reason listed in the document: to promote the progress of science and the useful arts. Back then, by the way, “science” just meant knowledge, while “useful arts” were what we would today call technology. So copyright (literally the right to copy) was a 14 year exclusive on making copies of your writings, and patents protected inventions. So far, so good. But then, Congress fell victim to what the military calls “mission creep.” They started to expand these rights, both in what they protected and for how long.

Over the years since about 1976, Congress has lengthened copyright time and again, so that instead of 14 years, it now lasts for the life of the author, plus 70 years, or for 95 years from publication or 120 years from creation whichever is shorter, if the work is not registered by the author under her own name (works for hire, anonymous or pseudonymous.) What’s more, in order to benefit from the copyright law, you used to have to put a notice on your work (¬© 2014 Dr. Copyright) and register it in the Library of Congress. Now, copyright is automatic for everything you write down (or type, or record…) so your shopping list, Instagram photo, Facebook post, or SnapChat are all automatically protected. This has created a minefield where just about anything you see is under copyright for as long as you’re likely to be alive.

Now add in the terribly inefficient US legal system, where just setting foot in a court room costs tens of thousands of dollars, and you can see what has resulted. Finally, add in digital technology that makes it easy (and culturally acceptable) to copy just about anything with one click of a mouse, and you have a perfect storm of copyright.

Many commentators have suggested that because the Constitution says that you can’t promote the progress of knowledge after an author is dead (she’s not writing much, is she?) and because the Constitution specifically says that patents and copyrights are to be for “limited times” we should rethink this mess.¬† Yale Law Fellow Derek Khanna has made three suggestions: shorten copyright back to a reasonable length; get rid of “statutory damages” which allow a judge to award up to $150,000 for downloading just one song, video, or photo, and; recognize that copyright should not regulate technologies such as whether you are allowed to unlock your mobile telephone.

There are many other changes that the Doc would love to see.¬† Unfortunately, the law that stretched out copyrights to 95 years was called the “Mickey Mouse Copyright Term Extension Act” because Disney gave a lot of money to Representatives in Congress to keep Mickey under copyright just before his original one ran out. We are unlikely to see this Congress or any other go against the movie and music industry in our lifetimes, or for 70 years after we’re dead and gone.

Got another intellectual property law question that makes you hot under the collar? Ask the attorneys at LW&H. They’d love to discuss this stuff, especially at your next party or corporate management meeting, and even more so with an adult beverage in hand.

The “Doc”

“Next month…the Doc rants about patents and trolls…

– Lawrence A. Husick, Esq.

State of the Union

January 31st, 2014

In his state of the union speech, President Obama said:¬† “And let’s pass a patent reform bill that allows our businesses to stay focused on innovation, not costly, needless litigation.”

Both houses of Congress are well on the way to enacting new patent legislation, in part as a  reaction to the bullying of small businesses by MPHJ Technologies through demand letters alleging patent infringement.

H.R. 3309, entitled ‘Innovation Act,’ was introduced in the Republican-controlled House of Representatives on October 23, 2013 and passed the House on December 5, 2013 with a majority vote of both parties.¬†¬† H.R. 3309 has now been referred to the Senate Judiciary Committee.¬† The stated purpose of H.R. 3309 is to curb abusive patent infringement litigation, particularly by ‘patent asserting entities’ that own patents but do not produce products.¬† H.R. 3309 includes several changes, but the one that is most eye-popping¬† is that the plaintiff must pay the defendant’s expenses including attorney’s fees if the court determines that infringement claims are not reasonably justified or are made in bad faith.

The cost-shifting provisions of H.R. 3309 are radical.¬† In the U.S., each party to litigation generally bears its own costs.¬† H.R. 3309 would adopt the standards of the Equal Access to Justice Act, 28 U.S.C.√ā¬ß2412(d)(1)(A), and apply those standards to private patent litigants.¬† The Equal Access to Justice Act applies to payment of costs and attorneys fees by the Federal government.¬†¬† In a civil suit by or against small businesses or individuals of limited means, the Federal government is liable for cost and attorneys fees UNLESS the government demonstrates that its position in the litigation was ‘substantially justified.’

H.R. 3309 would certainly avoid the defendant’s costs of patent infringement litigation, but it would also severely limit the value of inventions and patents.¬†¬† If H.R. 3309 becomes law, only the very brave, the very foolish, or the very rich will initiate patent infringement litigation.

S. 1720 was introduced on November 18, 2013 by Democratic Sen. Patrick Leahey, Chairman of the Senate Judiciary Committee.¬† S. 1720 includes some of the procedural improvements of H.R. 3309, but excludes the cost-shifting provisions.¬†¬† S.1720 takes direct aim at the practices of MPHJ Technologies by adding that the Federal Trade Commission will police false or misleading demand letters.¬† We expect that Sen. Leahey’s version of the bill is the one that will advance from Sen. Leahey’s committee.

– Robert Yarbrough, Esq.