IP ODDITIES

January 17, 2008

Scrabble v. Scrabulous

Check out this statement from an article that I read today:   

Now, as if you needed more proof that we live in a time in which stuffy lawyers don't dig the digital age, take a look at this: It looks like toy-makers Hasbro and Mattel have sent their legal goons to Facebook and demanded that it remove the immensely popular 'Scrabulous' from its site.

Woah, woah, woah.  Come on, that wasn’t very nice.  Let me explain.  Hasbro and Mattel have probably asked their Intellectual Property attorneys to look into this matter.  Intellectual property attorneys dig the digital age.  In fact, we are advocates for the digital age.  That is why we have chosen to devote our working lives trying to protect the very technology and innovation that you create. 

If intellectual property attorneys did not step in and advocate for our clients intellectual rights, like the copyright and trademark rights of Scrabble®, everything would be free game and copying and stealing would suddenly become the norm.  In fact it’s legal goons like us that advocate and protect the copyright held in the very article written above.

Trust me, I may be a legal goon, but I dig the digital age. 

Posted by Emily Campbell at 02:01 PM.
Permalink: Scrabble v. Scrabulous
| Comments (1) | TrackBack (0)

IP ODDITIES

October 03, 2007

1st annual dcr patent poetry throwdown --2007

Mr. Michael Schade did an excellent job for the first round of poems.  Now, it is time for my creation. 

Everyone loves a good limerick….especially when it involves a little bit of “trolling”.

There once was a troll from the city,

who opened the trial with this ditty,

“Now the object of my patent

was to be non-combatant,

I simply just wanted your pity.”

 

To the rest of PHOSITA…..Bring it.

Posted by Laura C. Wood at 07:12 PM.
Permalink: 1st annual dcr patent poetry throwdown --2007
| Comments (1) | TrackBack (0)

IP ODDITIES

September 07, 2007

Fertility Monitoring Device on a Cell Phone? Really!!!?

Cell phones continue to offer more and more features. Not only can you check your email and surf the internet, but someday you may even be able to determine your significant others optimal baby making temperature! Check out this patent application filed by Samsung which states that:

“[t]he present invention relates to a portable device for measuring a user's basal body temperature (BBT) and a BBT measurement method utilizing the portable device. More particularly, the present invention relates to a portable BBT measurement device and method which can detect a location of a user's eardrum via a predetermined distance sensor, measure the user's eardrum temperature, convert the eardrum temperature into the user's BBT and record the converted BBT into a memory, to generate the user's menstruation information from the BBT recorded for a certain period, e.g. a month, and provide the user with the generated menstruation information.”

 

Maybe I’m a little old fashioned but a fertility monitoring device on a cell phone just sounds creepy.

Posted by Ward Hobson at 09:59 AM.
Permalink: Fertility Monitoring Device on a Cell Phone? Really!!!?
| Comments (0) | TrackBack (0)

IP ODDITIES

July 20, 2007

say it aint so - incompetence at the USPTO?

Morningstar reports that four individuals have sued Secretary of Commerce Carlos M. Gutierrez for appointing an allegedly unqualified Deputy Director of the USPTO, Margaret Peterlin.  But really, incompetence in government, where’s the beef?

Well, as amended in 1999, 35 U.S.C. § 3(b)(1) requires that the Deputy Director be a citizen of the U.S. “who has a professional background and experience in patent or trademark law.”

According to her executive biography, Ms. Peterlin was Counsel for Legal Policy and National Security Advisor for the Speaker of the House, J. Dennis Hastert, . . . where she advised the Speaker, House and Senate leadership, and senior staff on legislative policy and strategy, including judiciary issues such as IP protection . . . .”  Prior to that,  Ms. Peterlin was General Counsel to Richard Armey, Majority Leader of the House; clerked on the Fifth Circuit Court of Appeals; and served as a Naval Officer in the communications field.  Ms. Peterlin also earned her legal degree sum laude from the University of Chicago.

No doubt an impressive resume, but is it really “a professional background and experience” in patent or trademark law?  Many patent and trademark practitioners would probably be insulted by the suggestion.  In fact, the complaint filed Monday alleges that Ms. Peterlin is not, and could not become, registered to practice before the USPTO; has never drafted or prosecuted a patent or trademark application; and, overall, has never had direct exposure to patent or trademark practice.  And so, these four plaintiffs have asked the D.C. District Court to declare Peterlin’s appointment illegal and order appointment of a qualified alternative.

Morningstar quoted the USPTO as responding, in an emailed statement, “Margaret Peterlin is well qualified for her job as Deputy Under Secretary and Deputy Director, having had direct involvement in oversight of the USPTO and every piece of patent, trademark, and copyright-related legislation considered on the House floor over the past five years . . . .”  Well there you have it, the USPTO, of which Peterlin is second in command, says Peterlin is qualified.

On a side note, the suit alleges Peterlin’s appointment “perpetuates USPTO management’s inability to handle egregious delays” in processing applications.  Suing the Secretary of Commerce does seem like an innovative way of attempting to fast-track their applications.  No word yet on whether the plaintiffs plan to file a patent application for a business method of expediting patent prosecution by suing USPTO personnel.

Posted by Eagle H. Robinson at 10:44 AM.
Permalink: say it aint so - incompetence at the USPTO?
| Comments (0) | TrackBack (0)

IP ODDITIES

May 30, 2007

An Adventurous Trademark Weekend: Mystery Science Theater 3000 v. Mr. Sinus Theater and Katie Holmes v. Katee Holmes

Over the Memorial Day weekend my husband and I went to Austin, Texas to visit his family and low and behold while we were there visions of intellectual property danced in my head. 

Other than being the home of the University of Texas Longhorns (a huge rival of my alma matter, the University of Oklahoma), Austin is a great town rich with arts and entertainment and outdoor recreation.  While in town we wanted to try and get tickets to see Mr. Sinus Theater.  Mr. Sinus Theater was a live comedic spin off of Mystery Science Theater 3000 mocking films such as Top Gun, The Terminator, and yes, even Britney Spear’s breakthrough film, Crossroads.  As you might have guessed, a quick search on the internet to find tickets revealed that Mr. Sinus Theater was sued in 2004 by the creators of Mystery Science Theater 3000 over trademark issues.  Apparently earlier in 2003, Mr. Sinus Theater contacted Best Brains Inc., owners and producers of Mystery Science Theater 3000, to license the mark but to no avail.  After deciding that Mr. Sinus’ adult-type humor went against the spirit of Mystery Science Theater 3000, Best Brains Inc. filed suit.

But don’t worry this was not the end of Mr. Sinus Theater.  Mr. Sinus Theater later changed its name to The Sinus Show.  Although the comedy group decided later to part ways, in January 2007 one of the original members formed Master Pancake Theater under the same movie-mockery premise.  You can see Master Pancake Theater at the Alamo Drafthouse in Austin, TX.  Currently they are showing The Breakfast Club, for show times click here. 

Also during my weekend, I woke up after a nap to a television blasting in the background, “Katie Holmes Threatening Legal Action Against Porn Star”.  What?!  Sure enough, a fashion student who is hoping to launch a career as a porn star recently changed her name to Katee Holmes.  Apparently, "Katee is using the name as a tribute to Katie, who has always portrayed in innocence in everything she's done, beginning with 'Dawson's Creek.' ". 

This could get interesting.

Posted by Emily Campbell at 04:07 PM.
Permalink: An Adventurous Trademark Weekend: Mystery Science Theater 3000 v. Mr. Sinus Theater and Katie Holmes v. Katee Holmes
| Comments (0) | TrackBack (0)

IP ODDITIES

March 20, 2007

Celebrity Inventors

Along with Laura’s article about the next season of American Inventor (posted on March 16, 2007), read the following article, I Coulda Been an Inventor by Mindy Laster. Who knew that Marlon Brando, Eddie Van Halen, Jamie Lee Curtis, and Michael Jackson were all patent-toting inventors?

Here’s some food for thought. What if the producers of American Inventor and the producers of Dancing with the Stars combined their creative juices to create a show called Inventing with the Stars? Imagine the possibilities.  We may be on to something here.

Posted by Emily E. Campbell at 02:33 PM.
Permalink: Celebrity Inventors
| TrackBack (0)

IP ODDITIES

March 09, 2007

Them's fightin' words

Check out this week’s WAR OF THE WORDS:

Businessweek reports that in Beijing, China, a pharmaceutical company was refused permission to use the name of a disgraced official as a trademark to sell rat poison.

Forbes reports that Jimi Hendrix’s sister, Janie Hendrix, is suing a Seattle company, which is backed by other relatives, for using the legendary guitarist’s image to sell vodka under the name Electric Hendrix.

The Hill reports that two well-known business trade associations, namely the U.S. Hispanic Chamber of Commerce and the U.S. Chamber of Commerce, are embroiled in a legal battle as to the right to use the words "United States" and "chamber of commerce."

JSOnline reports a “food fight” between Palermo's Pizza and Trader Joe's. The complaint claims that Trader Joe's Pizza Palermo frozen pizzas are trading unfairly on the Palermo's Pizza frozen pizza brand. The fun twist to this story is that Palermo is not only the last name of the family that owns the company that makes Palermo's Pizza, Palermo is also a city in Sicily, Italy, having a style of pepperoni pizza distinctive to the region.

Posted by Emily E. Campbell at 03:30 PM.
Permalink: Them's fightin' words
| TrackBack (0)

IP ODDITIES

November 02, 2006

Magic and Intellectual Property Law: A Mysterious Combination

Last weekend my husband and I went to see The Prestige with Hugh Jackman and Christian Bale – great movie, I would definitely recommend it.  The movie is about two rival magicians who are constantly trying to steal one another’s ideas and illusions.  During the movie I knew that I had officially become an IP nerd when I thought to myself, “I wonder if these illusions could be protected by trade secret law?”  Well, after a quick search on the internet I found a fun article on Wikipedia applying the various aspects of intellectual property law to magic.  Enjoy!

Posted by Emily E. Campbell at 04:14 PM.
Permalink: Magic and Intellectual Property Law: A Mysterious Combination
| Comments (0) | TrackBack (0)

IP ODDITIES

November 01, 2006

A Patent Application or a Soapbox?

Wow... wow.... all I can say is ... wow.

U.S. Patent Application No. 2004/0161257 has this little nugget in it as claim number 9.

I applaud whoever drafted the application for their sense of spunk, but you really have to wonder.... what were they thinking?

Personally, if there was an oath/declaration signed by the inventor (also -- PDF version) and filed in the application stating that the inventor had read and understood the application to accurately reflect their invention - I would be worried that claim 9 could cause some problems down the line.

Once again... wow... all I can say is ... wow.

Posted by Douglas Sorocco at 02:11 PM.
Permalink: A Patent Application or a Soapbox?
| Comments (2) | TrackBack (0)

IP ODDITIES

October 26, 2006

Boy Scouts team up with the motion picture association of america to fight piracy!

According to a recent report by the Institute for Policy Innovation (IPI), movie pirating contributed to a lack of jobs for more than 140,000 Americans.  But have no fear, the Boy Scouts are here!  On October 20, the Motion Picture Association of America announced that it has joined forces with the Los Angeles Area Boy Scouts of America to help raise awareness about the value of copyrights.

Now troops can choose from a number of activities that qualify them to earn a “Respect Copyrights” patch.  A couple examples of the activities include creating a public service announcement demonstrating the importance of copyright protection or visiting a movie studio to learn about the people, time, and costs associated with making a movie.

So it appears that the Boy Scout Oath should now be amended to say something like …

On my honor I will do my best to not become a thief of intellectual property

and to obey the Digital Millennium Copyright Act and Scout Law;

To help other people at all times except by way of illegal file sharing;

To keep myself physically strong so that I can fight the war against piracy,

mentally awake, and morally straight.

Posted by Emily E. Campbell at 04:47 PM.
Permalink: Boy Scouts team up with the motion picture association of america to fight piracy!
| Comments (0) | TrackBack (0)

IP ODDITIES

October 17, 2006

The Top Ten Milestones of a Young Patent Attorney

 

Yesterday evening, a couple of associates and I sat around the office laughing and joking about the experiences we’ve had in this crazy field since graduation  (note that this happened after all of the partners had left and we had finished all important projects of course).  Although some experiences are universal to “first job” experiences, a young patent associate must also go through several unique “rites of passage” while walking up that hill to competency. 

 

As such, the combined experiences have made it onto today’s post for everyone who can relate because they have been through them, will relate because you one day will go through them, or just crazy enough to want to know a patent attorney’s life journey. 

 

Eat your heart out David Letterman because here are:

 

 

The Top Ten Milestones of a Young Patent Attorney

 

10.  Spending almost a year trying to convince anyone to give you your first patent job and even threatening to move all the way to D.C. just to get the experience that everyone is asking you to have….and then two months after you start your first patent job, getting recruiter calls from all over the country.  Where were the recruiters two months ago?

 

9.  Studying for the patent bar and emphasizing to anyone that will listen that the patent bar only has a 45% pass rate and that is why you are a genius.

 

8.  Taking more than 20 hours to draft your first claim set of three independent claims.  At this point, patent drafting seems like a cake walk…..too bad the partner only keeps the preamble, “An apparatus comprising…..”

 

7.  Realizing the entire past lunch hour was spent discussing the correct pronunciation of ascorbic acid, and that doesn’t seem weird to you at all.

 

6.   Getting your first allowance.  Sure you didn’t really participate in any of the “actual” patent drafting, but you did spend hours and hours analyzing that office action.  

 

5.  Seeing the first press release on a patent you worked on.  Shameless self-promotion: Swept volume 3D display system.  Related shameless firm promotion:  DCR, while setting up OU’s patenting program more than 25 years ago, has also donated more than 1.5 million in legal services and costs. 

 

4.  Answering your first cold call and walking down the hall to the nearest partner so excited that you’ve just landed the Nutty Professor as a client. 

 

3.  Hearing your client blunder through the whole, “You can’t be older than my grandchild and you charge how much per hour?  I didn’t realize that I’d be working with Doogie Howser.  Can I see some I.D.?”

 

2.  Thinking that you are cool being your own lexicographer.

 

1.  Coming to terms with the fact that you really are a geek, no matter how hard you try to conceal it.

 

Posted by Laura Wood at 02:57 PM.
Permalink: The Top Ten Milestones of a Young Patent Attorney
| Comments (1) | TrackBack (0)

IP ODDITIES

October 08, 2006

the definition of 'pro se' is fairly broad

In a recent case before the Federal Circuit – In re Martin G. Reiffin – the Federal Circuit went to great lengths to excuse the form and substance of the appeal due to the fact that the appellant was “pro se”.

For those who don’t know, ‘pro se’ means “a person who does not hire a lawyer and appears for himself/herself in court”.

So, you would assume that there was no lawyer involved in the appeal – well, you would assume wrong.

It turns out that the appellant himself – i.e., Martin G. Reiffin – is an attorney at law (New York Bar admission is marked as delinquent), a registered patent attorney and previously worked for IBM as a patent attorney. In fact, Mr. Reiffin was quoted in a Wired magazine article in 1998 about his lawsuit he was bringing against Microsoft for patent infringement.  When asked why he was suing Microsoft, he responded:

Virtually all commercial software on the market uses multithreading - which allows two or more sets of operations to be executed simultaneously in a single program - but Reiffin says he's suing Microsoft "because they have 90 percent of the market."

"They asked Willie Sutton: 'Why do you rob a bank?' And he answered, 'Because that's where the money is,'" said Reiffin, a former IBM patent attorney who says he retired after his hobby of tinkering with hi-fi amplifiers turned him into a multimillionaire.

Did the Federal Circuit erroneously go easy on Mr. Reiffin?  Some might say yes… but considering that the Federal Circuit invalidated all of the claims in Mr. Reiffin’s patent on computer hyperthreading (U.S. Patent No. 5,694,603) – it doesn’t look like Mr. Reiffin got off all that easy.

Posted by Douglas Sorocco at 06:31 AM.
Permalink: the definition of 'pro se' is fairly broad
| Comments (0) | TrackBack (0)

IP ODDITIES

August 17, 2006

Idaho - there's more than potatoes

In choosing a vacation spot for the summer there were many options:  Las Vegas, Mexico, Hawaii, Caribbean.  So it is somewhat surprising to the rest of the office that I decided on Idaho.  I spent the past week in Island Park cooling off from the heat and fly-fishing.  Unexpectedly, I return to find out that Idaho is not only a great summer vacation destination, it is also the No. 1 state in the country in patents per capita thanks to the Micron Technology and Hewlett-Packard invasion.  Together, the companies account for over three-fourths of Idaho’s total patent filings.   Idaho now has a lot more to offer than just potatoes, especially for a patent attorney.

Posted by Laura Wood at 03:09 PM.
Permalink: Idaho - there's more than potatoes

IP ODDITIES

May 08, 2006

Play-Doh Turns 50 years old

With our first child recently arrived, I am finding myself turning to the “toys” of my youth for inspiration.  While the little dude is probably too young yet for Erector sets or Junior Chemistry sets, I am thinking about sneaking some gooey colored goodness into the pile of toys that are currently “mom-approved.” 

My first choice – Play-Doh, of course, and in a striking coincidence, Play-Doh turned fifty years old last week. 

The following story ran at failedsuccess.com (a curiously snarky technology website):

In 1956 a new type of “modeling clay” for children was invented and began popping up in schools and stores everywhere. In 1965, U.S. Patent No. 3,167,440 was granted to Noah McVicker and Joseph McVicker for a “plastic modeling composition”, (which was originally intended to be a wallpaper cleaner) now called Play-Doh. Little did they know that they had created the substance of childhood memories as well as many a childhood meal, unfortunately.

Play-Doh persists as one of the most well known and popular childrens “toys” with over 2 billion cans sold since its invention in 1956. As you attempt to clean your children’s Play-Doh out of the carpet, the car, and the bathtub; take a look back with us at how it all got started.

Originally, Play-Doh came in only one color; off-white and came in a 1.5.lb cardboard can. Joe McVicker of Kutol Chemicals had learned from a teacher that modeling clay used by children in the classrooms was often too difficult for many of the smaller children to manipulate. He remembered that his non-toxic composition he had created as a wallpaper cleaner was easy to manipulate and could possibly work as a substitute for the typical modeling clay the schools were using.

Hasbro has quite a history on the mysterious and ubiquitous substance up at the Play-Doh website.

Heck, if it is good enough for Socrates – it has got to be for my kid.

via Tech Blog At PA Pundits » Blog Archive » Play-Doh Turns 50.

Posted by Douglas Sorocco at 08:31 AM.
Permalink: Play-Doh Turns 50 years old

IP ODDITIES

May 06, 2006

Microsoft files for patent on curse words.

Well, not really.  But I figured that headline might get all the anti-patent folks riled up.  Turns out the Microsoft filed a patent application (Pub. App. 20060095262) in 2004 on a method of automatically sensing and removing curse words. 

Arstechnica is on the case “unearthing” this patent application … um, a note to the writers over there – there really isn’t much to “unearth” – the vast majority of patent applications are published 18 months after they are filed.  The use of the term “unearthing” makes it sound like y’all were doing some sort of Indiana Jones or Dora the Explorer expedition or something. 

Anyway, back to the subject at hand:

A recently unearthed patent application originally filed in October 2004 by Microsoft could make television and radio broadcasters very happy. In it, Microsoft describes the use of an "automatic censoring filter" that can censor undesirable speech in real-time (or batch mode, for Chris Rock). Here's how it works [according to the abstract]:

 

The automatic censoring filter employs a lattice comprising either phonemes and/or words derived from phonemes for comparison against corresponding phonemes or words included in undesired speech data. If the probability that a phoneme or word in the input audio data stream matches a corresponding phoneme or word in the undesired speech data is greater than a probability threshold, the input audio data stream is altered so that the undesired word or a phrase comprising a plurality of such words is unintelligible or inaudible.

A quick check of the status of the application shows that Microsoft hasn’t yet filed an information disclosure statement listing all known prior art – I wonder if it will include a statement that it is “well known in the art that mothers have washed their kids mouths out with soap” for engaging in such “undesired speech”?

Posted by Douglas Sorocco at 10:00 AM.
Permalink: Microsoft files for patent on curse words.

IP ODDITIES

April 28, 2006

The Marshall Metropolis

I am very happy that Doug and Matt have forced me into a blogging career (this is even despite the giant picture of me posted below). In fact, for the past few years it seems I have been a traitor to my generation by failing to start my own blog or even open a MySpace account. Because you only have your first blog once, there was enormous pressure on what subject to cover. All in all, it became clear that my first subject had to be the one subject near and dear to my heart....Texas.

It is amazing what an infestation of patent litigators can do to a sleepy east Texas town. Attorneys from all over the world are crawling into the Marshall federal courthouse to try their luck in big time, high dollar patent cases and big media (i.e. the Austin American Statesman) is starting to take notice.

U.S. District Judge T. John Ward is the head honcho spurring the cattle drive of cases through the system. The hype of the Eastern District of Texas is growing so big you can now check out a blog strictly devoted to its issues with an almost daily update providing a who’s who (or at least who’s right now) of patent litigation. Is Marshall being booked faster than Vegas because of accommodating juries siding with the little guy?  Or is this gold rush all for its rocket docket?

Regardless, I am on a mission to help my fellow attorney who is right now shacking up at the local Motel 6 in Marshall. This past week I contacted several Texans I know and asked them to provide personal knowledge of things to see and do that could not be found on the Internet or in guidebooks. Two of the most frequent responses were "are you proposing that there are actually guidebooks for Marshall?" and "does this mean you are moving back to TX?" Answer for both, no. What I have done is scrape together a fun filled Marshall itinerary for Mr. or Ms. P. Litigator to use when it is not possible to drive across the border into Louisiana and catch a flight out.

In order to start your day off right, head over to Southern Maid Donuts off of Highway 80. Although not part of the national chain, this place is known for their kolaches and it is a must for any visitor. Once you are full, move on to Marshall Pottery, known as the number one producer of red clay pots in America. Don’t go diggin’ into your 401(k) there, because it’s time to take a mini gambling road trip to Shreveport (less than an hour away...and that’s dangerous). Before leaving Marshall though, fill up on lunch with the HUGE burgers served up at Jucy’s on Highway 80 just east of Highway 59.

Your other options for the afternoon are cruising the local mall, (noted by one response as "dead, but still a mall"), or checking out the local Supercenter to answer the question of whether all Walmart’s look alike on the inside. Also, the movie theater boasts very cheap tickets which may surprise some big city attorneys.

Follow up your afternoon with dinner at Lupe’s Mexican Restaurant on Highway 59 between Highway 80 and the mall. Be sure to ask for Shirley and tell her hello from Roni and me.

If Marshall continues to be this hotbed of patent activity, you may see my face around the courthouse. If so, let’s meet for a beer, and I will fill you in on the many other places to see and be seen. Until then, you are on your own.

Posted by Laura Wood at 12:30 PM.
Permalink: The Marshall Metropolis
| Comments (2)

IP ODDITIES

October 03, 2005

apples and monkeys - PHOSITA in September, 2005

1. Microsoft Patents Apple - Don't Believe the Hype
   
2. Do You Need a Trunk Monkey?
   
3. and you thought you were having a bad day?
   
4. US Patent Office Scammers
   
5. LEGO My LEGOS - The Significance of "S"
   
6. Cold Cereal Battle Heats Up
   
7. Made in the USA" to Air Tonight
   
8. "Cheap" Logo Design Can Be Costly
   
9. Patent Drafting Tips
   
10. U.S. Patent Office Discloses Confidential Data
    

Posted by Douglas Sorocco at 09:04 PM.
Permalink: apples and monkeys - PHOSITA in September, 2005

IP ODDITIES

September 22, 2005

and you thought you were having a bad day?

When New England inventor Philip French had his epiphany 15 years ago, he didn't dream it would lead to an invention that would be pressed into service in a top-secret government project, or spawn an epic court battle over the limits of executive power. He was just admiring a tennis ball.

The ball's seam, with its two symmetrical halves embracing each other in a graceful curve, intrigued him. "I thought, my god, I bet you can do something with that kind of shape," he recalls. He was right. French and two colleagues went on to design and patent a device now called the Crater Coupler, a simple, foolproof connector for linking one pipe or cable to another without nut threads or bolted flanges.

The story is worth a read and is an especially pointed, albeit esoteric, lesson for inventors who are contemplating approaching a company or others regarding licensing their technology. 

Patently-O also does its standard bang-up job of reporting the Fed. Cir. opinion as well.

Posted by Douglas Sorocco at 09:51 PM.
Permalink: and you thought you were having a bad day?

IP ODDITIES

September 21, 2005

"Katrina" Trademarks

New York Daily News reports Bad taste! Katrina booze logo sought. Apparently a few guys from Louisiana have decided to capitalize on the disaster by filing a registration on "KATRINA" for alcoholic beverages. I guess the drink is probably more potent than the average New Orleans Hurricane.

However, other "Katrina" applications have been filed since the storm. For example, "KATRINA BLOWS BUSH SUCKS" for bumper stickers and "KOKUA FOR KATRINA" for musical entertainment. However, the most startling mark was registered in 1986: "KATRINA AND THE WAVES" for musical entertainment services. You probably don't remember the band, but I would be willing to bet anyone over the age 25 remembers the hit, "Walking on Sunshine." How's that for serendipity?

 

 

 

Posted by Melody Wirz at 10:06 AM.
Permalink: "Katrina" Trademarks

IP ODDITIES

September 15, 2005

Cold Cereal Battle Heats Up

Cereal bars may be the next great thing to happen to fast food. But, should the first person to capitalize upon the idea get the exclusive rights to the concept? Maybe. According to this, The owners of Cereality are very serious about cereal. They have sent informative letters to competitors "Bowls - A Cereal Joint" and The Cereal Bowl. According to the article, the letters threaten "serious legal consequences" for infringement of Cereality's trademarks - I found 5 registered and 2 currently pending in the USPTO.

While I don't see much similarity in the trademarks, Cereality also has a patent pending for "Methods and Systems for Providing Food, Beverages, and Associated Goods and Services in a Retail Environment." However, a pending patent doesn't mean much until the patent issues, and a non-final rejection was mailed last month. So, the question remains whether the patent will issue, and if so, whether the patent will stand up to the test of litigation.

However this dispute turns out, I'm looking forward to visiting a cereal bar soon.

Posted by Melody Wirz at 10:36 AM.
Permalink: Cold Cereal Battle Heats Up
| Comments (1)

IP ODDITIES

September 14, 2005

"Made in the USA" to Air Tonight

Thanks to this post, I remembered that Made in the USA will air for the first time tonight at 10/9C. As you may recall, we mentioned the show in an earlier PHOSITA post. Be sure to watch, or to set your TiVo.

But, if you set your TiVo, be careful. Apparently TiVo won't save certain shows or allow moving them. It looks like your right to time-shift under the Betamax case is being limited by the networks and TiVo. It was a mistake this time, but TiVo has tipped its hand about some technological capabilities. I'm reminded of a great book, 1984.

Posted by Melody Wirz at 09:47 AM.
Permalink: "Made in the USA" to Air Tonight
| Comments (2)

IP ODDITIES

September 07, 2005

ip memes' newest members

IP Memes will include a couple of new contributors in the next issue due out on September 26 - namely, Matt Buchanan of the Promote the Progress blog and myself.

If you're not familiar with The TechnoLawyer Community...you should be. TechnoLawyer provides a number of great newsletters (including IP Memes), and a forum where "technolawyers" can ask one another questions about technology (i.e., "has anyone every used _______ and what did you think about it?"). It is an excellent resource for all tech attorneys, and has an archive which I have searched from time to time with questions (what scanner to purchase, whether I should upgrade to the latest version of __________, etc.). The best part? It is free. Try it, if you don't agree you can easily unsubscribe.

Over the past year Steve Nipper of The Invent Blog has been writing the IP Memes newsletter. IP Memes is described as “a weekly newsletter that explores emerging technology-related intellectual property issues — or “memes” as we call them. Think of it as your coal-mine canary for intellectual property issues.”

Steve has been doing a solid job this past year - Matt and I are both thrilled to be asked to join him to continue IP Memes' tradition of excellence and join some of the IP community's finest commentators and thinkers - including Dennis Kennedy, Denise Howell, Gail Standish, Kevin Grierson and Kurt Calia - all of whom, are IP Memes alumni.

Click the image above to be taken to the signup form for IP Memes and yes, it is just another example of the collaboration taking place over at Rethink(IP). You never know where we might "pop up" next.

Posted by Douglas Sorocco at 08:06 PM.
Permalink: ip memes' newest members

IP ODDITIES

September 05, 2005

Bin Laden's image terrorizes abc

Rare photographs of Osama Bin Laden, including exclusive shots of the Al-Qaida leader on a battlefield, were broadcast by the ABC television network without the Egyptian photographers' permission, according to a lawsuit filed in U.S. District Court.

Essam Mohamed Aly Deraz is seeking $10 million in damages in the lawsuit filed Thursday. He is claiming copyright infringement and is asking a judge to prohibit the network or any of its affiliates from using the photographs.

In 1998, Deraz twice agreed to allow the network to use his photographs on a one-time only basis for which he was paid $7,000 and $8,000 respectively, the lawsuit states. But the network continued to use the photographs without Deraz's authorization.

Apparently the images show Bin Laden fighting with the Mujahideen during the 1980s  According to the complaint filed in Denver (PDF), "(Deraz) was the only cameraman with Osama bin Laden in the late 1980s, and his film and photographs were the only ones ever taken then that show Osama bin Laden in the battlefield."

A sampling of the images filed in the action are here: one, two, three and four. All images are scanned PDFs.

Posted by Douglas Sorocco at 10:41 PM.
Permalink: Bin Laden's image terrorizes abc

IP ODDITIES

September 02, 2005

Diddy's Newest Ditty

Model Tyson Beckford has sued Diddy for breach of contract and use of his trademarked image. The suit was filed in the Southern District of New York on August 12. For the story, click here. For the complaint, click here. Apparently, Mr. Beckford has only been paid about half of the contract price for modeling Sean John clothing.

In other Diddy trademark news, rapper 50 Cent claims Diddy has changed from his previous name "P. Diddy" in order to more closely resemble 50's nickname "Fiddy" (an alternate pronunciation of "fifty"). According to this post, Fiddy has been quoted as saying "I'm Fiddy and now Puffy wants to be Diddy, trying to move his name closer to me, you know what I'm saying?"

Posted by Melody Wirz at 01:50 PM.
Permalink: Diddy's Newest Ditty
| Comments (1)

IP ODDITIES

August 31, 2005

Blog Comments May Cause Problems For Bloggers

Blog comments are part of the beauty of blogs. They allow different points of view to be shared, providing full analysis of various issues. However, comments can be out of line, obscene, or even worse: they can be spam!

To combat the undesirable comments, many blog owners have adopted some sort of filter in their blog comments. But, this may not be enough. The Wall Street Journal explores the issue today in Blogger Faces Lawsuit Over Comments Posted by Readers.

More than one blogger has been sued. Not for the blog post, but for the resulting comments by readers of the blog. While operators of computer message boards and mailing lists are not responsible for the content of statements posted by others, the "law of the blog" may be different. When allegedly defamatory statements are posted by others, blogs may fall within the purview of Section 230 of the Communications Decency Act of 1996. While this looks promising for the bloggers, there is a real possibility that they will get caught by the intellectual property aspect of the comments.

In at least one lawsuit (in Nevada), the plaintiff has claimed that the comments contained proprietary trade secrets. In this case, the Communications Decency Act is of little utility. The act has "no effect on intellectual property law," so the publication of trade secrets provided by other people may be problematic. Since the law of trade secrets varies from state to state, I can't really comment on the lawsuit in Nevada without further research. But, it seems from the complaint in the lawsuit posted on the blog that "misappropriation of trade secrets" in Nevada requires "theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, and/or espionage." From the little I can surmise from the blog, I don't see any overt act. Of course, I have only spent about five minutes researching the issue.

Whatever the facts are, the outcome will certainly be interesting. And, even though trade secret law is different in Nevada and Oklahoma, the precedential value will likely spill into Oklahoma. Until then, I will be watching for the arguments and the outcome of this suit.

Update 8/31/05: Stephen Nipper of the Invent Blog let us know about this link to the EFF doc on 230.

Posted by Melody Wirz at 10:20 AM.
Permalink: Blog Comments May Cause Problems For Bloggers
| Comments (1)

IP ODDITIES

August 18, 2005

The Artist Formerly Known As P. Diddy

Word on the street is that fans should now refer to Sean Combs as "Diddy." Actually, I didn't hear this on the street, but rather on television, and again in the article Diddy is more personal. So, Sean Combs, previously known as "Puffy," "Puff Daddy," and "P. Diddy," now wants to be known simply by "Diddy." The most recent name change was to relieve the formality of the "P." Apparently, Mr. Combs feels that his alter-ego should be known only by last name, claiming "Diddy is more personal."

So, I got to thinking. Has "Diddy" registered all of these trademarks with the USPTO. I was surprised to find that he has applied for at least 27 different registrations, with 7 actually being registered. The first registered mark is "Daddy's House," first used in 1994 for charitable fund raising services and other charitable services for children. Maybe "J. Lo" was able to see this softer side of "Diddy."

Other registered marks include "Puff Daddy," "Puffy," and "Sean John." But my favorite is the dead application requesting registration of "Farnsworth Bently." The USPTO rejected the mark because it is almost identical to the alter-ego of "Diddy's" former assistant, Derek Watkins, a/k/a "Farnsworth Bentley." In the application, "Diddy" claims that he created the character, and controlled Mr. Watkins when he appeared as the character. However, the application was ultimately abandoned, along with the very similar "Fonzworth Bently."

Since all the cool kids seem to have an alter-ego, I think I will also have to give some serious thought to what my fans should call me.

Posted by Melody Wirz at 10:37 AM.
Permalink: The Artist Formerly Known As P. Diddy
| Comments (4)

IP ODDITIES

August 16, 2005

Inventors Join Reality TV

A new reality series premieres in about a month on USA. Made in the USA claims to be "television's newest and most ingenious reality program where America's unknown inventors and entrepreneurs get their shot at fame and fortune... and a chance to win a lucrative one-year contract with the TV Shopping network HSN." To me, it looks like American Idol for inventors. From the clip on the website, I can't wait to see the first episode on September 14.

Interestingly, ABC has also anounced a similar reality program, "The Million Dollar Idea." The ABC program was  conceived by Simon Cowell (of American Idol), along with an entrepreneur named Peter Jones. However, there is a dispute surrounding the show.

Both programs seemed similar to a program I remember learning about some time ago. Unfortunately, the program was not available in Oklahoma City at the time. However, I learned today that the program is now nation-wide. The name? "Million Dollar Idea."

Apparently, the folks at the original Million Dollar Idea program are displeased by the Simon Cowell version. For more on this, check out this website, which is sponsored by the original program. For more about the dispute, see Martin Schwimmer's Million Dollar Idea Submission - Gold Mine For Ironists.

Of course, none of these ideas should be confused with Oprah's Next Potential Millionaire Idea, which I discussed in my post Do You Have a Million Dollar Idea?

Anyway, for some reality TV about inventing, set your TiVo to record "Made in the USA," and "Million Idea." Two searches will return four programs that will certainly entertain you.

Posted by Melody Wirz at 12:21 PM.
Permalink: Inventors Join Reality TV

IP ODDITIES

August 12, 2005

NCAA Mascot Controversy

As you may know, the NCAA has banned certain Native American nicknames in postseason play. The banned names are those that the NCAA deems "hostile or offensive." Unfortunately, the determination of which schools will be affected is subjective. This has created quite a bit of press. However, I haven't seen anything discussing the trademark aspect of the names.

The most prominent protester of the NCAA ban is Florida State, with the nickname of "the Seminoles." The University first obtained registration of the mark "SEMINOLE" in 1984, and has been using it since 1947, according to records in the USPTO. Under 15 U.S.C. § 1052, the USPTO will not register a mark that "[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." However, many of these "hostile or offensive" nicknames are registered marks.

This leads to the question whether the registered marks should also be cancelled. This has been addressed with regard to the "Washington Redskins." However, the resolution of the matter was based on procedural and evidentiary determinations. In fact, in Pro-Football, Inc. v. Harjo, the D.C. District Court states

Ultimately, the evidence in the case does not answer the legal question of whether the trademarks, in the context of their use during the relevant time frames, may have disparaged Native Americans. The evidence chips away at the sides of this legal question but never helps answer it directly.

The promise by Florida State to fight will obvioulsy challenge the NCAA ruling. However, it doesn't seem likely that any party will try for cancellation of the registered marks in the near future. But, the challenge is waiting, and the outcome will certainly be interesting.

Go Pokes and Boomer Sooner (er, should I say "Go friendly range-living, cattle-driving, land-loving sort of people" and "Good luck to those who wait for the boom of the gunshot before staking their claim to land, as well as those who couldn't quite wait for the official start")

Posted by Melody Wirz at 10:13 AM.
Permalink: NCAA Mascot Controversy
| Comments (6)

IP ODDITIES

August 08, 2005

IP Oversight Costs "Dukes of Hazzard" $17.5 Million

Acccording to MTV.com, "The Dukes of Hazzard" made more than $30.5 million last weekend, placing it in the number one spot. However, the intellectual property debacle behind the scenes has been less publicized by the studio.

As you probably know, the movie was based on a popular television show from the 1970s. What you may not know is that the television show was based on a little known 1974 movie, Moonrunners. Warner Brothers attained the rights to make the movie into a television series in 1978. According to a lawsuit earlier this year, the movie rights remained with the producer of the original movie. In fact, a preliminary injunction ordered Warner Brothers to cease marketing and postpone the release until the issue was resolved. Since Warner had already spent $53 million making the movie and had started the $30 million advertising push, settlement was definitely an option.

In the end, the copyright holder obtained $17.5 million for the rights to a movie that nobody has seen. Of course, if I come upon Moonrunners in the future, you can bet I'll watch now.

The moral of the story? Be sure you actually hold the intellectual property rights before you spend huge sums of money to produce anything, whether it be a movie, a production facility, or any other large scale project.

For more, see How a lingering legal issue threatened 'Dukes of Hazzard' or Dukes Pays $17 Million for Lawsuit.

Posted by Melody Wirz at 10:01 AM.
Permalink: IP Oversight Costs "Dukes of Hazzard" $17.5 Million
| Comments (1)

IP ODDITIES

July 27, 2005

Patent Drafting Tips

I recently got an e-mail from a friend including some patent drafting tips:

• "Don't forget God in your inventorship analysis - did He contribute materially to the subject matter of any one claim?" For example, look at column 1, lines 66-67 of this patent.
• "Think about using the written description for marketing purposes." See column 2, lines 44-49 of the patent.

A true example of thinking outside the box. It makes me wonder, what other useful information we could be including in patents.

Posted by Melody Wirz at 09:10 AM.
Permalink: Patent Drafting Tips
| Comments (1)

IP ODDITIES

July 22, 2005

Patent Agency Graduate Program Initiated

Now, people with technical and scientific backgrounds can take a 36 hour Patent Agency program and get a Masters degree. The program will prepare participants to pass the patent bar and give them an understanding of IP law, ethics, patent drafting, prosecution, and litigation.

The program is currently offered in St. Louis, but there are plans to offer the program in other locations as early as next year.

For more, see: Webster U. to offer patent agency graduate program, or Webster University Announces New M.A. in Patent Agency.

Posted by Melody Wirz at 10:00 AM.
Permalink: Patent Agency Graduate Program Initiated

IP ODDITIES

July 13, 2005

Aussie Meets Opposition in "McBrat" Trademark

An Australian lawyer by the name of Malcolm McBratney has been using his nickname, "McBrat," to sponsor a rugby team. However, when he attempted to register the mark, he was blocked by McDonald's Australia. McDonald's claims the mark is too similar to McKids.

McBrat (aka Mr. McBratney) disagrees, stating "[w]hat it boils down to is that McDonald's seems to be trying to own not only the McDonald name but everything beginning with Mc . . [t]here are a lot of people with Irish and Scottish heritage who'd dispute that."

The fun part about this dispute is that McBrat specializes in intellectual property law.

For more on the story, check out Australian lawyer vows to fight McDonald's in trademark row.

Posted by Melody Wirz at 09:16 AM.
Permalink: Aussie Meets Opposition in "McBrat" Trademark

IP ODDITIES

July 08, 2005

Class Action Websites: Privilege Without a Relationship?

The 9th Circuit Court of Appeals recently ruled that a law firm does not have to provide an adverse party with information obtained through a questionnaire on the law firm's website.

Even though the site stated that there was no attorney-client relationship created by the form, the information obtained was considered privileged under California law.

While this decision seems to fit within my understanding of confidential communications, it certainly highlights the problems present in class action websites. The article Class Action Web Sites Untested states that "class action Web sites developed by law firms continue to present complications related to jurisdiction, applicable laws, ethics rules and more, which courts have yet to address."

Posted by Melody Wirz at 03:26 PM.
Permalink: Class Action Websites: Privilege Without a Relationship?

IP ODDITIES

June 21, 2005

Busted! - Unlicensed Piñatas

According to an article in the LA Times, piñatas sporting the likeness of cartoon characters were the subject of an undercover sting by entertainment industry representatives.

"Disney declined to comment on the piñata lawsuits, filed in U.S. District Court in Los Angeles in February and April."

I did a little research and found a number of Disney characters in piñata form. For example, Ariel (aka the little mermaid). I don't know about you, but I'm not sure the piñata likeness does the cartoon image much justice.

Posted by Douglas Sorocco at 09:25 AM.
Permalink: Busted! - Unlicensed Piñatas

IP ODDITIES

June 15, 2005

Blogging Lawyers to Pay $50 Per Post?

According to Jim Calloway's post Kentucky Contemplates the Fate of Thier Lawyer Bloggers, "Kentucky Attorneys' Advertising Commission wants to classify [a lawyer's] blog as advertising, requiring him to do a filing and pay a $50 fee every time he does a post."

For commentary on this issue, go here. For the Business Week coverage, go here (scroll down for more comments).

Update: For a funny commentary on the situation, check out All Hands, Battlestations!, at Bulldog Legal Services E-Blog (thanks Britt!)

Posted by Melody Wirz at 09:07 AM.
Permalink: Blogging Lawyers to Pay $50 Per Post?
| Comments (2)

IP ODDITIES

June 09, 2005

Nigerian Scam Targets Inventors

I'm sure you've all received those e-mails that state that you've won the lottery (or you're the only heir to a jillion dollars), but you must contact the sender immediately to claim your loot. But what about the scam directed at inventors.

Apparently, the newest scam is pretty complex. The scammer claims to have a client interested in the invention, to the tune of millions of dollars. The inventor is only required to pay the transaction fees (between 16 and 38 thousand dollars). Then the inventor is to meet with a "diplomat" in Dublin for the exchange. After the inventor turns over the initial cash, unexpected problems arise, requiring additional funding by the inventor.

As you probably guessed, the inventor never sees the millions of dollars promised, but instead gets a "no-expenses" paid trip to Dublin for his thousands of dollars.

For more, check out New Nigerian Scam Targets Inventors.

Posted by Melody Wirz at 02:14 PM.
Permalink: Nigerian Scam Targets Inventors

IP ODDITIES

June 08, 2005

Gripe Site Meter

I've previously posted about the trademark implications of gripe sites. I recently came upon a website with a "meter" that shows which websites have "sucks" sites and which ones have "rules" sites. It even has a nifty bar chart.

Posted by Melody Wirz at 05:09 PM.
Permalink: Gripe Site Meter

IP ODDITIES

May 11, 2005

Oklahoma/Texas Intellectual Property CLE Weekend

The Intellectual Property Section of the Oklahoma Bar Association will be presenting it’s annual CLE program at the Tanglewood Resort on Lake Texoma (satellite map) the weekend of June 3–5, 2005.  The PDF brochure is available here.

Along with Pete Peterson’s patent law year-in-review (which is always the highlight of the weekend), featured topics will include a copyright law year in review, a planel discussion on the state of technology transfer in Oklahoma, trademark enforcement in cyberspace and the risks associated with open source software.

Registration is $345 for Oklahoma Bar members and $370 for nonmembers.  The weekend has been approved for 8 hours of Oklahoma CLE credit and Texas approval is pending.

Tanglewood is a great venue for the weekend, the information looks to be extremely interesting and timely and the Board members of the Intellectual Property Section have numerous family and social activities planned – including a golf tournament Saturday afternoon.

 

Posted by Douglas Sorocco at 12:44 PM.
Permalink: Oklahoma/Texas Intellectual Property CLE Weekend

IP ODDITIES

May 06, 2005

Girl Scout Cookies Protected By Intellectual Property - Kinda

The term "Girl Scout Cookies" is a registered trademark (Reg. # 0964309) with a first use date in 1936. However, the most popular cookies sold by the Girl Scouts isn't a registered trademark. In fact, the Girl Scouts have never applied for the trademark on "Thin Mints."

I really can't figure out the reason behind the lack of any trademark for "Thin Mints." It's pretty likely that the term would be considered descriptive. After all, the cookie is a mint flavored cookie that's pretty thin. However, in trademark law, you can get a trademark on a descriptive term as long as it has secondary meaning. I tried a little experiment in the office to determine whether the requisite secondary meaning was present. Unfortunately, I got mixed results when I asked the question "What does the term 'thin mint' mean to you?" Some stated that it's a girl scout cookie. However, other responses included references to York Peppermint Patties, Andes® mints, and Baskin Robbins® Mint Chocolate Chip ice cream.

I still think that "Thin Mints" refer to Girl Scout cookies. The other responses I got referred to mints that were thin, but I suspect that the Girl Scouts have established a secondary meaning for the term "Thin Mints."

Interestingly, Thin Mints are the one cookie created by both bakeries licensed by the Girl Scouts to make cookies. The other cookies may look the same, but they have different names. It seems that ABC/Interbake Foods uses pretty descriptive terms for its cookies: Carmel Delites, Peanut Butter Patties, Classic Shortbread, Peanut Butter Sandwiches, Animal Treasures, and Thin Mints. Little Brownie Bakers, on the other hand, typically uses trademarks for its cookies: Samoas®, Tagalongs®, Trefoils, Do-Si-Dos®, All Abouts, Double Dutch®, Lemon Coolers®, and Thin Mints. Interestingly, the Kellog Corporation, which owns Little Brownie Bakers, owns the trademarks.

For more information on Girl Scout cookies, click here.

Posted by Melody Wirz at 03:26 PM.
Permalink: Girl Scout Cookies Protected By Intellectual Property - Kinda

IP ODDITIES

May 05, 2005

Scout Merit Badge for IP Respect

According to the press release issued by the MPA (the international version of the MPAA),

On April 30, the Motion Picture Association (MPA), Hong Kong Scout Association, Hong Kong Intellectual Property Department (IPD) and Hong Kong Customs & Excise Department launched the Intellectual Property Badge Award Program, the world’s first Scout merit badge program focused on respect for and protection of intellectual property.

I'm not quite sure whether this is a great move, or a questionable one. It's wonderful that Hong Kong officials have taken action to encourage the youth to respect intellectual property. However, I'm a little cynical about the involvement of the MPA to accomplish this. For more on the issue, see the comments to the article MPA Launches Scout Merit Badge Program for Intellectual Property Respect.

Additional links on this subject:

• Hollywood creates Boy Scout merit badge on copyright
• New Scout Badge on Copyright

Posted by Melody Wirz at 09:27 AM.
Permalink: Scout Merit Badge for IP Respect

IP ODDITIES

May 04, 2005

Washing Machine Promotes Equality

The story Washing machine fingers lazy male sounds like it could be dirty. However, it's actually about cleaning. A Spanish designer came up with a new washing machine called "Your Turn."

This new washing machine uses fingerprint recognition to prevent the same person from using the machine twice in a row. The inventor says "I thought it would be good to finish with macho man from the ice age who doesn't do anything around the house except drink beers."

The idea of taking turns could work for a number of household chores. I think we may soon see "Your Turn" for dishwashers, ranges, ovens, and even vacuum cleaners. With all the resulting equality in the house, the "Your Turn" line could include lawn equipment, too. However, I doubt men would ever be willing to take turns with the power tools.

If only we could somehow equip babies with this technology for those middle of the night feedings.

Update: Engadget reports a big drawback: "this seems like a completely clever idea until your significant other goes away for a few days and you’re stuck reprogramming your washing machine because you need to do a second load of whites that weekend"

 

Posted by Melody Wirz at 01:12 PM.
Permalink: Washing Machine Promotes Equality

IP ODDITIES

December 27, 2004

The Muckers Behind Edison

We all know about Santa. That jolly, fat fellow in the furry red suit that terrifies toddlers and delights bigger children. Most of us are also familiar with Santa's elves, the true workers behind all the wonderful toys kids got Saturday. Of course, we don't celebrate the elves who toil year round to create toys for good boys and girls. Instead, we give Santa all the credit.

Just as Santa has his elves, Thomas Edison had workers behind the scenes. These "muckers" were often inventors themselves, and worked long hours to support a cause greater than themselves.

For more information, see Thomas Edison's Muckers at about.com (a great resource with a ton of information about almost any subject). The article is on two webpages, so be sure to click on the second page to see all the mucker profiles.

Posted by at 10:25 AM.
Permalink: The Muckers Behind Edison

IP ODDITIES

December 13, 2004

Inventor Tax Update

As many of you already know, the fee increase for the USPTO is official. As of last Wednesday, fees have increased again. That's two fee increases in a little over 2 months. President Bush signed the Consolidated Appropriations Act for 2005 on December 8, 2004, effective immediately.

Unfortunately for inventors, these fees will continue to fund non USPTO programs.

In a current lawsuit, one inventor claims this is unconstitutional. The U.S. Constitution states "The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." This inventor reasons that fee diversion is actually a tax on inventors, which fails to promote progress. Since the fees paid by inventors currently provide funding the general welfare, this is an interesting position.

For more information on the lawsuit (which was filed in 2001), click here.

For prior PHOSITA postings on the legislation and related issues, click on the appropriate link below:

• Inventor's Tax - November 18, 2004
• Another USPTO Fee Increase? - November 11, 2004
• Tech Lobbyists Spending Millions - May 20, 2004
• Patent Office Revised Fee Chart - May 3, 2004
• Senate Judiciary Committee Passes PTO Anti-Fee Diversion Bill - April 29, 2004
• Patent Office User Fee Diversion - March 8, 2004
• Higher Patent Office Fees? Interesting - February 23, 2004
• President Bush's Budget Patent Friendly - February 3, 2004

Posted by at 09:48 AM.
Permalink: Inventor Tax Update

IP ODDITIES

December 06, 2004

going, going, gone!

from the AP:

Bankrupt Internet software maker Commerce One Inc. auctioned off dozens of prized online patents for $15.5 million in a sale that could provoke a legal scuffle over whether the new owner is entitled to collect royalties from a long list of technology heavyweights.

A secretive company called JGR Acquisition Inc. wrested the patents from two other bidders with ties to former Microsoft Corp. chief technology officer Nathan Mhyrvold, who is now running a startup that hopes to accumulate a treasure chest of valuable patents.

. . . .

The group, the Electronic Frontier Foundation, intends to contest any attempt to collect royalties from the Commerce One patents, arguing that the company previously promised not to seek payments for using the technology in question.

Posted by Douglas Sorocco at 09:24 PM.
Permalink: going, going, gone!

IP ODDITIES

November 22, 2004

Blogs, Copyright and Fair Use

I recently got an e-mail asking me about the copyright consequences of posting an original work on a blog. The answer initially seemed easy.

Copyright protection in the U.S. is automatic. Copying without permission is a violation of the law. Authors can publish without giving up any rights.

Then, I thought a little about blogs. They often copy other blogs, without harsh consequences. Maybe this is because copying without permission is okay when it falls within the "fair use" arena. Permission isn't required for things like criticism, comment, teaching, scholarship, research, and news reporting. The determination of whether the use is fair hinges on a number of factors, including profit motive, whether education is the driving force, the amount of the work used, and the market effect.

The real difficulty in the question lies in the nature of the Internet, where most copying is done for some other use.  Blogs are a unique form of publishing. So, whether the bloggers fall within fair use really depends on how blogs are classified.  They often seem to have the purpose of comment, criticism, scholarship, research, and news reporting.  Most bloggers don't seek profit from the publication. Instead, they seek to inform the world of their opinions.  Sometimes they use only snippets of a work, but other times, substantial portions are copied.

Before everyone panics about bloggers being copyright violators, I offer a final thought. Bloggers blog because they want to share their opinion. It is common practice in the blog community for a blog entry to be about half copied material and half commentary. Maybe this common practice means that there is an implicit permission to copy works from other blogs.

I guess it wouldn't hurt to post original thoughts for a change.

Posted by at 06:15 PM.
Permalink: Blogs, Copyright and Fair Use

IP ODDITIES

November 20, 2004

outsourcing and trade secret issues

Outsourcing is a highly contentious and potentially cost-saving measure that is constantly in the news these days.  Sending work off-shore (or, more specifically, outside the U.S.) provides a company the benefits of oftentimes highly educated labor forces that can complete specific tasks at substantially reduced costs.

Outsourcing is rife with potential IP conflicts and pitfalls.  Computerworld has posted an in-depth look at one such pitfall: outsourcing and its effect on trade secrets.

Taking work offshore may cut costs, but it still comes with a not-so-hidden price. Asian countries, including the No. 1 outsourcing destination, India, have weak or untested intellectual property laws, inefficient courts, and financial and public records mechanisms that make it difficult to conduct employee background checks.

That doesn't mean that intellectual property sent to reputable offshore developers is more likely to be stolen and sold than it is here. Sophisticated U.S. and Canadian companies have lost valuable intellectual property in their home countries because of dishonest employees and hackers. Employees in India and elsewhere aren't any more dishonest than workers here. But because overseas court systems and laws aren't as strong as in those the U.S. and evaluating potential employees is more difficult overseas, the odds of intellectual property theft could be higher.

U.S. businesses are also sending valuable code to regions of the world with high piracy rates. In China, for instance, 92% of the software installed on computers is pirated, according to a recent study by IDC and the Business Software Alliance. In India, the piracy rate is 73%, and in the U.S., it's 22%, the lowest rate in the global study.

Those jumping on the outsourcing band wagon may want to consider some of the issues outlined in this article.  

 

Posted by Douglas Sorocco at 09:06 AM.
Permalink: outsourcing and trade secret issues

IP ODDITIES

November 19, 2004

best use of nanotechnology yet

Chalk this post up to late night Friday Fun, from c|net:

Buffalo, N.Y.-based NanoDynamics has come up with a golf ball that can correct its own flight path so it flies straighter than conventional balls. The ball won't shift 45 degrees in midair, but the design of the ball--and the materials it's made of--serve to better channel the energy received from the club head and thus correct a wobble or slight drift.

"It also behaves much more controllably on a putting surface, which is how we hope to get interest on the pro circuit," said Keith Blakely, CEO of NanoDynamics. "It has a reduced tendency to break. It doesn't pop or jump or roll."

Of course, this is a great technology to be tracked in the new USPTO nanotechnology classification.  Philadelphia Bizjournals has additional information and the discusses the importance of the new nanotechnology classification. 

No mulligans allowed!

Posted by Douglas Sorocco at 11:02 PM.
Permalink: best use of nanotechnology yet

IP ODDITIES

November 18, 2004

inventor's tax

The U.S. Patent and Trademark Office is a fully fee-funded organization - i.e. the functioning of the PTO is completely dependent upon these fees for its operation.  The PTO does not receive additional funds from the U.S. Treasury.

One would expect, therefore, that the fees collected by the PTO are used to increase the capacity, efficiency and operations of the PTO.  This is not the case, however, and significant PTO fee "surpluses" are raided by Congress for other projects (i.e. Congressional "pork" projects).  The "inventor's tax" is a term given to these "surplus" fees paid by inventors and companies for filing, prosecuting and maintaining patents and which is diverted to other projects.

Many organizations believe the fee-diversion practice is unfair and contrary to the goal of providing improved quality and efficiency at the PTO.  Diverting fees paid by users of the PTO to pay for road projects is thus an "inventors tax".

As Melody posted earlier, the PTO is proposing fee increases and new fees for searches and examination.  As part of their support for the fee increases, patent practitioner and corporate trade groups have demanded that the fee diversions quit. 

Sounds simple.

It's not.  In the world that is Washington politics, the Congressional committees that oversee PTO funding is not willing to relinquish their oversight of the PTO budget.  Promises made to these trade groups are being broken and they are mad:

The authors called the Senate language "unacceptable" and said it "totally ignores the premise that initially secured the user community's support of a fee increase -- ending the 12-year practice of fee diversion."

"We need to maintain our Patent and Trademark Office; it's the best Patent and Trademark Office in the world," IPO Executive Director Herbert Wamsley said.

Wamsley and IPO members recently visited China and met with its patent officials. He said the United States needs to make changes to stay competitive. China is facing similar problems in the lag between patent applications and approval, a figure known as pendency.

"The Chinese patent and trademark office is working to improve itself at a time when ours is going in the wrong direction for lack of funding," he said.

Posted by Douglas Sorocco at 05:02 PM.
Permalink: inventor's tax

IP ODDITIES

November 08, 2004

Silly Patents

A new website, patentlysilly.com showcases the silly side of patents.

Current patents listed include:

• Spinal Cord Removal Tool With Adjustable Blades - OUCH!!
• Scented Doll With The Appearance Of An Aged Person - EEEW!!
• Fractal Jean Manufacturing - HUH?
• Roller Tool For Applying Sunscreen Lotion To One's Own Back - HMMM

Check out the archives tab, too.  There are several fun patents, categorized for easy access.

Posted by at 04:13 PM.
Permalink: Silly Patents
| Comments (1)

IP ODDITIES

November 03, 2004

IP FIVE-BY-FIVE - THE GOOD, THE BAD, AND THE UGLY

Matt Homann over at the The [Non]Billable Hour blog, regularly hosts a question/answer series famously known as the  "Five-by-Five".  For each Five-by-Five, Matt solicits five experts in an area of the law to give five responses to a specific question about the law. 

The most recent episode is the IP Edition.  Matt asked five intellectual property law bloggers the question: What five things would you change about IP law and/or practice? 

Matt graciously asked me to participate and here are a couple of comments from each of the bloggers:

Stephen Nipper: You are your brother's keeper.  One of the things IP practitioners tend to do is ignore our responsibility to spend time educating non-IP attorneys as to the basics of IP law.  Lets face it, our colleagues (understandably) aren't typically very good at issue spotting when it comes to IP issues.  The result is countless pain and suffering (and much gnashing of teeth).  Solution?  Go teach a CLE to general practitioners, blog, write articles for your local bar journal, start writing a newsletter, etc.  You will be rewarded.

Douglas Sorocco: Everyone needs to take a deep breath regarding software patents.  The end of the world is not near, the seas are not going to be flooding our coastal cities and software  patents are not stifling development of new and useful tools and processes.  Software developers are simply going to have to become better business people and accept that nothing is free and patent clearance searches must be made an integr