LICENSING

March 17, 2008

In defense of offense...

A couple of months ago I came across Mike Dillon’s blog – The Legal Thing – covering all things legal from the perspective of General Counsel at Sun. 

As GC for Sun, Mike’s daily routine must entail a significant amount of attention to intellectual property issues and his blog plows a lot of ground concerning this topic.  The posts are informative – albeit they have a “big corporate shine” to them, much to the dismay of a lot of “anonymous commenters”.   If you read many patent blogs, you can probably guess the identities of many of these “anonymous commenters” – but they do make for an interesting peek at the more reactionary component of our niche of the legal world. 

That is a lot of setup for a recent post of Mike’s dealing with how Sun defends against patent “troll” lawsuits – namely, a good offense.

 

I recently shared dinner with a few other GCs of local technology companies. It was a nice evening in which we were able to relax and share insights (and commiserate) about topics of common interest. During the course of our meal while we were discussing rising legal costs, one of my table mates made a statement that I found somewhat bothersome. He said that when faced with patent "troll" litigation, he knows he is going to pay something to get rid of the lawsuit and so he economizes on the use of defense counsel. After all, the thinking goes, if your intent is to settle a case, why spend money on a strong defense?

His view is completely contrary to how we think about this problem at Sun. It's also symptomatic of the way many companies view this issue as a quarterly "cost of doing business" without considering the long term consequences of settlement both for individual companies and our industry.

Before going further, let me state that we respect the intellectual rights of third parties. When a third party claim has been clear and the terms reasonable, we have entered into licenses. However, those situations are easily distinguished from the cases that make up almost all of our present docket of patent litigation. These lawsuits have usually been filed with no advance notice, by plaintiffs that don't commercialize their patents (i.e. create and sell products) and in venues considered favorable to them. It's also almost always the case that these plaintiffs have done little or no investigation to ascertain whether our products infringe prior to filing their lawsuit.

 

I think the approach that Mike outlines is a good example of how to frame decisions when confronted with a freedom to operate issue – whether the FTO issue is brought to your attention through an offer to license, or a cease and desist, or a patent search, or even when you have been served with a complaint — i.e., “How do we play offense in this particular case or instance?”

As Mike mentions, oftentimes it makes sense strategically and economically to simply license the patent – especially if the license allows you to preclude other competitors in the marketplace. 

On the other hand, a careful analysis may lead to a determination that a license is unworkable – e.g., that the patent is invalid or because the license fee does not make economic sense.  In such a circumstance, a zealous defense against an accusation of infringement may be in order – including the invalidation of the asserted claims.

In either case – taking a license or defending zealously – the accused infringer is approaching the case in an active/offensive manner and judging each case on its relative merits.  Defaulting into paying to settle every case is no better than defaulting into aggresively defending every case. 

The best defense to a patent infringement lawsuit?

Early analysis of the case and its relative merits (including the type of entity bringing the lawsuit).  As each case and situation is unique, arbitrary “blanket rules” – while being easy to implement – don’t necessarily increase value to the corporation.  Licensing everything or defending against everything is not a strategy – it is simply an invitation for disaster.

In any event, go on over and read Mike’s blog – I can guarantee that you will learn something.

The best offense...is a good defense.: the legal thing... by Mike Dillon.

Posted by Douglas Sorocco at 09:33 PM.
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LICENSING

September 26, 2007

New Blog to Check Out: Financial Aspects of Intellectual Property

One of my new favorite blogs is the Financial Aspects of Intellectual Property blog by the folks at the Innovation Asset Group.

According to their “about” page:

Innovation Asset is a leading provider of software for intellectual property (IP) and contracts management. Founded in 2002, we set out to design fresh solutions to the challenges today’s companies face in managing their intangible assets. We’ve quickly gained a national reputation for our flagship product, Decipher™.

So far, their blog has really been a fun and informative read – dealing with meta trends in intellectual property acquisition and valuation.  As a sample to whet your appetite:

We are seeing an evolution – perhaps revolution. Not just in terms of the recognition of IP as the fundamentally core asset for businesses today; but also in terms of the way in which that IP is managed (I think “where” remains the same).

Initially, IP is managed out of the legal department. In a non-strategic mindset, IP management equates to docketing in some of these companies.

As companies embrace the strategic importance of IP and understand the need to move beyond simply docketing, there is an evolution of the role of the legal department. Much the way IT departments in corporate America evolved from a cost center and service provider to a strategic enabler of the business in the past couple of decades, legal departments are making a similar evolution today.

If you picture a pyramid similar to Maslow’s hierarchy of needs, and similar to the one described in “Edison in the Boardroom,” the bottom of the pyramid represents the least sophisticated IP companies, and the top of the pyramid the most sophisticated.

Well worth a read for anyone interested in intellectual property and what I would consider a “must read” for those within corporate intellectual property departments who must identify, protect and communicate the importance of intellectual property assets.

Sorry for the disruption in the middle of all the “Rules Mess” – we now return you to your regularly scheduled programming.

Posted by Douglas Sorocco at 07:41 PM.
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LICENSING

July 30, 2007

Legal Imperatives on Intellectual Property Management

Market Research Reports has released a new title on intellectual property asset management and protection entitled “Legal Imperatives on Intellectual Property Management”. 

It appears to be an interesting read, although not inexpensive (550 Euros).  If any PHOSITA readers have a copy, let me know your thoughts/reactions so other readers can make an informed decision on purchasing.

From the Market Research Website:

Only in recent decades have issues related to the protection of intellectual property rights come to be seen as significant sources of legal and business uncertainty. In part, this uncertainty derives from the fact that intellectual property is importantly different from physical property. Intellectual property can be stolen by an act as simple as broadcasting an idea without the permission of the originator. -- Former Federal Reserve Chairman Allan Greenspan in his remarks at a 2004 conference on Economic Policy Research, at Stanford University

The business landscape is littered with intellectual property landmines. Microsoft, Apple Computer, Sun Microsystems, Medtronic, Research in Motion and Nintendo are just a few of the companies that have settled patent infringement disputes for hundreds of millions of dollars. Toshiba paid a $425 million judgment to Lexar for violating trade secrets. Pfizers patents for Viagra were ruled invalid in China and Microsoft faces similar concerns over its Office product in South Korea. In the battle of protecting intellectual property, the IP lawyer is on the front lines. It is the IP lawyer who:

-Drafts the patent applications, knowing that the defensibility of the firms intellectual capital hangs on each word that the IP lawyer crafts.

-Must have the prescience to secure valuable IP rights throughout the world in anticipation of his company later doing business in remote markets.

-Must defend his company against attacks by patent trolls.

-Must have the business savvy to transform fierce litigation into mutually beneficial licensing agreements.

-Must retain patent, trademark, and copyright exclusivity while avoiding anti-trust challenges.

This report includes interviews with many of the nations foremost authorities on the intellectual property law. Intellectual Property Litigation is extremely expensive and becoming increasingly common. From 1984 to 1999, the mean loss absorbed by companies faced with IP litigation was $28.7 million in total losses. Microsoft, Apple Computer, Sun Microsystems, Medtronic, Research in Motion and Nintendo are just a few of the companies that have settled patent infringement disputes for hundreds of millions of dollars. Cisco Systems reports that it is named as a defendant in at least one IP lawsuit each week.

Posted by Douglas Sorocco at 02:13 PM.
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May 14, 2006

universities as patent trolls - part 2

Well, when you are wrong – the best thing to do is to acknowledge the error and applaud the person who pointed it out to you.

Well, kudos to Lawrence Ebert at the IPBiz blog who spent some time talking about patent trolls in a recent blog post.  With respect to my error, Lawrence kindly pointed to previous comments in print that suggested that Universities should/could be considered patent trolls.

The PHOSITA blog suggested that this might be the first time universities were suggested, in print, as possible trolls: Ahh… someone finally put into print what a lot of us patent practitioners have wondered for awhile – when would someone claim that universities are patent trolls?

Not even close...

CIO in an article entitled Has the Enemy of Patent Trolls Become One? published December 5, 2005 talks to Peter Detkin:

[CIO] Some people consider a "patent troll" to be any person or business that doesn't produce a product or service, but instead makes money from licensing and patent assertion primarily. Has the definition of the term you coined, "patent troll," changed since you coined it?

[Detkin] At best, I would say it's become a little bit more refined. My concern is that the term has now been used so broadly as to mean any plaintiff you don't like. Look at the definition you just used. Under that definition the University of California is a troll, Intel's a troll—and since I was at Intel at the time, Lord knows I wasn't trying to call myself a troll. But Intel routinely asserts patents—that it bought, that it's not practicing—against others, looking for money. IBM would be a troll. Thomas Edison would be a troll.

NAPP wrote in May 2005:

To the extent that the term [troll] is used to derogate inventors who do not develop corporate structures or manufacture products, NAPP believes that inventors who merely invent but do not manufacture products – which, after all, includes most university and government researchers – do not deserve epithets or less patent protection.

Martin Lueck wrote in September 2005:

For example, Eolas and the University of California have been berated as patent trolls since their $521 million victory against Microsoft. Lueck also stated: "I don't hear anyone saying IBM is a troll — even though they have a bunch of patents and license them. To suggest that the University of California is a patent troll is absurd — they make contributions just like corporate America, and they want to protect their intellectual property."

Separately, Michael Kanellos wrote:

Moreover, Stanford University made itself into a global powerhouse in part through licensing patents to professors and students who had start-ups. Without an exclusive license of Stanford's PageRank patents, Google wouldn't be the behemoth it is today. Though the PageRank technology was invented by Google founders Sergey Brin and Larry Page, they were Stanford students at the time, and the university owns the patents.

Posted by Douglas Sorocco at 10:01 AM.
Permalink: universities as patent trolls - part 2
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LICENSING

May 11, 2006

Abe Lincoln was a Patent Troll?

I guess he could be – he didn’t commercially exploit his patented technology, afterall.

That “patent troll” definitional thing is a bit tricky when you actually think about it.

But who is and who isn't exploiting the system is a grey area. Abe Lincoln obtained a patent, noted Brian Halla, CEO of National Semiconductor. He got it for inventing an inflatable pontoon that helped boats get past sandbars and other obstacles on canals. It's patent number 6469--see reference here.

via Abe Lincoln: patent troll? | News.blog | CNET News.com.

Posted by Douglas Sorocco at 09:11 PM.
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LICENSING

May 07, 2006

universities as patent trolls?

Ahh… someone finally put into print what a lot of us patent practitioners have wondered for awhile – when would someone claim that universities are patent trolls?

The managing director of the Wisconsin Alumni Research Foundation – i.e., WARF – does a nice job battling the inference, but still – it does seem to be a narrow line one must walk to avoid the obvious connection.

Carl Gulbrandsen, managing director of WARF, takes it a step further. Patent trolls "don't exist. Trolls are imaginary creatures," Gulbrandsen said. "I think the whole issue is overblown."

WARF, a middleman organization that owns patents on discoveries made at the UW and licenses them, could be considered a patent troll under some definitions, he said.

"Patents are a piece of property. To say that it's wrong that a company acquires property and then expects to be paid for use of that property, I think, is a pretty simplistic approach," Gulbrandsen said.

Once again, those who seek to define the phrase “patent troll” better use carefully crafted language – the company/institution/individual/innovator you love today, just might be the patent troll of tomorrow.

Posted by Douglas Sorocco at 05:00 PM.
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April 18, 2006

Trying to Burst the bubble - Just another troll?

So last week we asked ya'll to give us your best shot at a litmus-test definition for the term "patent troll."  It's an understatement to say that the response was somewhat underwhelming.  We received a grand total of......zero definitions.

We've decided to take that as an indication of the difficulty associated with defining the term and not a statement about the readership of the blog (which, for the record, is reaching all time highs right now).

We do believe that the issue is important enough for a follow-up, though.  How about a real life example?

Check this out - Burst.com recently filed a patent infringement suit against Apple Computer.  The patents at issue relate to technology that speed the delivery of data, including audio and video files, over a network.

We've got a question for you.  A simple one.  Is Burst.com a patent troll?

Wait...don't answer.  Consider a few facts first:

The company has two (count 'em, 2) employees and a portfolio of ten (count 'em, 10) U.S. patents.  It routinely asks companies to license its patents, and sues them if they don't.  It focuses on software and high-technology companies for some reason (must have something to do with the fact that the technology relates to that area).  Just last year, it successfully settled a dispute with Microsoft for a reported $60 million.

Hmmm...smacks of a patent troll by most definitions, right?

Consider this description from the company's web site:

The company focuses exclusively on licensing activities and strategic relationships.

(emphasis is ours)

Are you serious?  An exclusive focus on licensing and strategic relationships?  Does that mean they don't actually produce anything?  (based on the web site, it's hard to tell if any "products" are available from the company at this time)

Surely there must be a bridge running over the Burst.com headquarters in Santa Rosa.

But, don't answer the question yet...Here's a few more facts:

According to a recent article in BusinessWeek, the Microsoft settlement reportedly earned the lawyers a fee of about $20 million.  That lawsuit was apparently financed by "an investor."  Oh, and the company openly states that its goal in the Apple lawsuit is to seek a chunk of the growing revenues for online music distribution. 

A troll for sure, right?  These guys are Pure Evil.  Damn trolls.

Humor me, though.  Don't answer yet.  As Lee Corso would say, "not so fast, my friend."

Here are a few more facts that you should consider:

The founder of Bust.com is recognized by many as a true visionary in computer network technology.  He's an inventor.  His technology apparently wowed the crowd at the Consumer Electronics Show in 1991.  He had invented improved methods for transmitting data over computer networks long before large video and audio files were of concern to the masses.  The company was once viewed as a real tech startup success story, and had even grown to include 110 employees in the late 1990's.

But when Microsoft upgraded its Media Player software, Burst's product, Burstware, stopped working.  Strange.  Payroll shrank immediately from 110 to 4.

Ok...now give us your answer (or keep it to yourself, we don't care...just try to answer the question).  Is Burst.com a patent troll?

Or is it just an angry innovator seeking to protect its property?

Do you see the challenge?

 

 

Posted by J. Matthew Buchanan at 10:40 AM.
Permalink: Trying to Burst the bubble - Just another troll?
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LICENSING

April 14, 2006

What the heck is a patent troll?

What is a patent troll?

Everyone in the patent community has a general idea of what makes a patent owner a troll, but I can't find a litmus test definition anywhere.  If you've got one, please put it in the comments.  I'm looking for a definition that allows me to decide if a particular patent owner is, or is not, a troll. 

Based on several popular media accounts of NTP (of BlackBerry fame) and other famous trolls, I have the following questions relating to the term:

Must a patent owner eschew commercialization of the claimed invention to qualify as a troll?

Are you a troll before you sue someone who has commercialized the claimed invention?  Or are you magically deemed a troll once you seek to enforce your patent?  Are preliminary licensing negotiations enough to earn the moniker, or must you actually file suit?

Can you be a troll on the day a patent issues only later to earn the right to shed the term, perhaps when you start commercializing the invention?

Can an inventor be a troll?  Or is there some sort of requirement that the patent owner acquired the patent from the inventor or some other previous owner?

Is it enough if that acquisition was part of an ordinary business transaction, or must it have been through some sort of "fire sale" or bankruptcy proceeding, as some have suggested?

There seems to be consensus on a threshold requirement that, to qualify as a troll, the patent owner must not have made use of the invention.  But, even that is vague.  In my mind at least, it raises more questions than answers.  What the heck does "make use of the invention" mean?  Must the invention have been commercialized?  To what extent?  Do initial commercialization activities qualify as 'commercialization', such as market testing, prototyping, and the like, or is actual shipment of product and/or provision of service required?  Could a real troll duck the term if legally advantageous by doing some quick and dirty rapid prototyping?  Market surveys?

Maybe the Supreme Court will fill the gap with its forthcoming decision in eBay v. MercExchange.  A little dicta could go a long way on this issue.  Let's just hope we don't see an "obscenity style" definition.

 

Posted by J. Matthew Buchanan at 01:07 PM.
Permalink: What the heck is a patent troll?
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December 11, 2005

IP and Music - A Documentary

Steve Cummings at Hodges Partnership was kind enough to send me a link to an interesting documentary (documentary is enttiled “What Do you Think?”) he directed for the IP Institute at the University of Richmond School of Law.

It is a great tutorial and raises some interesting questions relating to intellectual property, file sharing, copyright and the role of each in today’s society.  While geared toward undergrad students, I think it would be a useful tool for any class or academic situation exploring these issues.

Thanks for the link Steve!

Posted by Douglas Sorocco at 12:34 PM.
Permalink: IP and Music - A Documentary

LICENSING

October 31, 2005

Spooky-O-Rama

Posted by Douglas Sorocco at 10:02 AM.
Permalink: Spooky-O-Rama

LICENSING

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
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August 10, 2005

How to do almost anything

While looking for information about invention marketing, I came upon a website telling How to Market Your Patent. I found it informative, so I tried some related links: How to Enforce a Patent and How to Conduct a Patent Search. While I found that the prices and the law were a little dated, my overall impression was that these are useful resources for the average inventor.

The utility of the website eHOW is not limited to patents. In fact, the subheading on the site accurately claims "Clear Instructions on How To Do (just about) Everything. You can pick a category that interests you, then determine if there is anything that you need to know. Have you been wondering how to deliver puppies (pets-dogs), how to brush your toddler's teeth (family/relationships-parenting), or even how to remember names (careers/education-job survival). Then check it out.

Posted by Melody Wirz at 02:03 PM.
Permalink: How to do almost anything

LICENSING

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.
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July 26, 2005

ATTENTION OKLAHOMA INVENTORS!

For Immediate Release

OKLAHOMA CITY July 25, 2005

The annual meeting of the Oklahoma Inventors Congress, OIC will be held Saturday, August 13, 2005 on the Campus of Oklahoma State University in Stillwater in the Advanced Technology Research Center (ATRC) beginning with registration at 8:15 a.m.

The theme for the program presentation, “Focusing on Marketing” will be highlighted by a formal program to be presented by Boshears & Boshears.

Boshears & Boshears is a Tulsa, Oklahoma based firm with satellite offices in Foligno, Italy and provides cutting edge consulting services in the areas of Product, Business, Marketing, Sales and Management Development.

Members of the OIC will have a "juried" product exhibition starting at the 12:00 noon luncheon break. New products developed and Patented by OIC members will be included in the exhibition and will range from medical applications and transportation equipment, to consumer products including safety products for use in law enforcement. The short official annual meeting is scheduled to end by 2:00 p.m.

The OIC is a non-profit membership educational association dedicated to the development and profitable marketing of Intellectual Property for its members. OIC works in conjunction with Inventors Assistance Service (IAS) which is funded by the Legislature thru OCAST.

For more information regarding the Oklahoma Inventors Congress annual meeting or the monthly Oklahoma City OIC Chapter meetings: contact Bill Baker 405-947-6950

For information regarding the monthly Tulsa OIC Chapter meetings contact Jim Quintus 918-274-1037

To RSVP by August 10 for your complimentary OIC Annual Meeting luncheon ticket call: Jill Nuckolls, IAS at: 1-877-577-7632 or 405-744-8727.

Posted by Melody Wirz at 09:29 AM.
Permalink: ATTENTION OKLAHOMA INVENTORS!

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July 07, 2005

Mark Cuban on the DMCA

This post by Mark Cuban talks about the Macrovision suit against Sima and Interburn.

He states:

According to MacroVision CEO Bill Krepick, “Sima and Interburn infringe Macrovision’s intellectual property by offering products that enable users to make unauthorized copies of copyrighted content by illegally removing our copy protection system.”

Now maybe I’m reading this wrong, but the way I understand it, the CEO of MacroVision, a company that sells copy protection software to DVD publishers, is sending out a press release saying…

”Our software doesn’t work. It sucks. We can’t stop a bunch of little companies from writing software that completely busts our copy protection that we are selling for millions of dollars to publishers.”

An interesting take on the protection provided in the DMCA.

Posted by Melody Wirz at 05:20 PM.
Permalink: Mark Cuban on the DMCA

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June 22, 2005

Copyright notice taken too far?

From Legal Lessons Learned:

So I'm reading a National Geographic booklet aimed at elementary school students . . I see a picture of a paramecium, labeled 'Paramecium x110." Next to it there's the following chunk of text:

'Check it Out

Suppose you have permission to photocopy the picture of Paramecium, and you enlarge it to twice its size. Would the magnification of x110 still be correct? Explain.'

The author of the post points out that the phrase "suppose you have permission to photocopy the picture" is a little over the top for a theoretical experiment aimed at elementary students, stating:

I imagine the writer put it more simply before a lawyer or editor touched it up. Because we wouldn't want 4th graders running around with enlarged b&w photocopies of a paramecium taken from Visuals Unlimited. Knowing kids, they might digitize the photocopies and post them on the internet[], or store them on their iPods. How would VU make money THEN?

I also imagine copyright-conscious kiddies, attentive to the wording's specific subtext, enchanted by the possibilities of a Creative Commons future. "Suppose you have permission..." Wow! Suppose I have permission! It's telling me to imagine a wondrous world where I'm legally allowed to photocopy this image I hold in my hands! What a spectacular sight that would be! Then I could perform ALL KINDS of measurements on it! But, aw shucks, for now I'm just stuck with my dreams.

The author of this post fails to mention something that struck me as particularly interesting. 17 USC § 107 deals with the "fair use" exception to copyright protection. Specifically, it addresses copies made for teaching. While the four factors listed must be considered, I'm convinced that a student making a copy to measure magnification would fall squarely within fair use.

Posted by Melody Wirz at 01:18 PM.
Permalink: Copyright notice taken too far?

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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

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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

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April 15, 2005

Post Grant Review For Trolling?

To answer the question of whether trolling is good or bad, David G. Barker has published TROLL OR NO TROLL? POLICING PATENT USAGE WITH AN OPEN POST-GRANT REVIEW. In this Duke Law & Technology Review article, he proposes any transfer of patent ownership be subject to government intervention. While I disagree with his position, I think the article is thoughtful and worth reading.

In December 2004, a mystery business, JGR Acquisitions Inc., purchased the patent portfolio of bankrupt Commerce One at auction. Commerce One had not previously enforced the acquired patents and many companies were using the patented technologies at the time of the auction. Patent watchdog groups argued that JGR--a potential patent troll formed solely to purchase Commerce One’s patents--should not be able to use the patents as a vehicle to extract licensing fees and that the patents should lapse into the public domain. Under current law, however, there is no provision for patents to be invalidated merely because they are used in a manner that discourages innovation. This iBrief argues that in order to keep patent trolls from stifling innovation and to protect legitimate patent holders, the Patent and Trademark Office should require an open post-grant review whenever patents are renewed or sold.

Posted by Melody Wirz at 01:23 PM.
Permalink: Post Grant Review For Trolling?
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April 11, 2005

I.B.M. is giving away its patents for free

Interesting article in Monday’s New York Times Technology Section entitled I.B.M. Hopes to Profit by Making Patents Available Free.  Apparently, IBM has found a way to make money giving away its intellectual property.

Diverging from conventional wisdom, the company has calculated that sharing technology can sometimes be more profitable than jealously guarding its property rights on patents, copyrights and trade secrets. The moves by I.B.M., the world's largest supplier of information technology services and computers, are being closely watched throughout the business world.

Earlier this year, I.B.M. made a broad gesture toward what it called a new era in how it controls intellectual property. It announced in January that it would make 500 patents - mainly for software code that manages electronic commerce, storage, image processing, data handling and Internet communications - freely available to others.

And it pledged that more such moves would follow.

This month, the company said that all of its future patent contributions to the largest standards group for electronic commerce on the Web, the Organization for the Advancement of Structured Information Standards, would be free.

While they are giving it away for free – maybe they will make it up in volume.

Posted by Douglas Sorocco at 01:24 AM.
Permalink: I.B.M. is giving away its patents for free

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April 01, 2005

Patent Trolling - Good or Bad?

"Patent trolling" involves finding and procuring patents, then suing infringers of those patents.

Some claim that this is an unfair, extortion-like practice, often exercised by those who are not even producing the "patented" invention. This position is somewhat intuitive. It doesn't seem fair that someone who isn't even making a product can prevent someone else from making that product. This is particularly compelling when the product would truly benefit society. For instance, a miracle drug or a safety device.

Even So, when I first learned of this business strategy, I thought nothing of it. In my mind, people and companies should always do a "background check" before starting production. If a patent reads on their potential business, they should go through the proper channels to license, or buy the patent rights. Then, lawsuits wouldn't be a problem.

However, this checking is probably uncommon, particularly among small businesses. An argument can be made that companies don't always have the resources to perform a "prior art" search before starting production. However, I don't believe that the lack of funds, and the resulting lack of knowledge, should matter when infringement is involved. After all, the inventor has taken the necessary, and often expensive, steps to protect the invention. It seems contrary to the whole idea of IP to let a business off the hook because they didn't know about the invention.

In my opinion, patent trolling puts the patent in the hands of someone willing and able to enforce the rights associated with patent ownership. This allows the true value of the patent to be exploited. By allowing patents to be more highly valued, I believe we enhance the whole system.

For more commentary on patent trolling:

• The Word Spy - phrase origin and citations
• Illegitimate assertions? - article defining the line between good trolling and bad trolling
• IP Trolls: Dangerous or Simply Misunderstood? - blog article that got me interested in the concept
• Patent trolling merits debated - article reporting on a recent conference on the issue of patent trolling

Update 4/4/05: Here are two more links with insightful discussion on patent trolls:

• Who are the patent trolls? posted on The Patent Prospector weeks before my post
• D.C. Patent Troll Hoedown, also posted on the same blog long before my post

Posted by Melody Wirz at 09:33 AM.
Permalink: Patent Trolling - Good or Bad?
| Comments (5)

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January 16, 2005

Japanese patent attorneys to acquire more power

The Japanese Patent Office has decided to revise the Patent Attorneys Law to allow patent attorneys to represent clients in out-of-court disputes over copyrights for music, movies and other works.   Such out-of-court dispute resolution would be in the format of arbitration and mediation proceedings.  The move by the JPO comes as the number of copyright disputes is sky-rocketing in Japan.

“Intellectual property cases are expected to increase because of the diffusion of music and game software in addition to publications, which already have a large number of cases. The office intends to solve these cases smoothly and increase convenience for individuals and companies by opening up activities to patent attorneys.”

It will be interesting to see if the final regulations include mandatory arbitration and mediation training, without which, it is hard to imagine the new regulations will have much of an impact.

Posted by Douglas Sorocco at 01:17 PM.
Permalink: Japanese patent attorneys to acquire more power

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January 10, 2005

Attention Oklahoma Inventors

I found a great resource for individual inventors in Oklahoma. The Oklahoma Inventor's Assistance Service is "a non-profit, state-funded, service that helps inventors navigate the invention process from idea to the marketplace through education, information, and referrals." There is quite a bit of information in the links found on the website. One link was surprisingly great. Under "Inventor Resources" in the left frame is a link called "Registration Form." To link directly to the form, click here.

I thought the form collected information for the purpose of statistics or something like that. Imagine my surprise when I got a package in the mail containing about 1/2" of material, including the following:

• Selected Inventions - The SI Program (details on a program that helps with drawings, prototypes, patenting, and manufacturing)
• Information from the Stillwater Patent and Trademark Library
• Inventor's Checklist
• How to Protect Yourself Against Inventor Fraud
• 16 Suggestions for Keeping a Proper Logbook
• Conducting a Patent Search at a Patent and Trademark Depository Library
• Exploring Market Research, Parts A and B
• Disclosure Document Program
• The Oklahoma Inventor Newsletter
• FAQs on Prototyping
• The Legal Side of Inventing
• Let's Get Down to Business
• An Article from Inventors' Digest Online: For Beginning Inventors

Every Oklahoma inventor should take advantage of this valuable service, which is provided at no cost to the inventor.

Posted by at 09:14 AM.
Permalink: Attention Oklahoma Inventors

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December 28, 2004

Don't Say "Monster"

Do you associate the word monster with any particular company? According to one company, you should. This company has opposed over 100 trademark applications that use the word "monster." These oppositions include Snow Monsters, Monster Slots, Monster Garage, Monster.com, and Fenway Park's Green Monster.

This company filed its first federal trademark registration in 1978 when only 50 companies had filed federal trademark registration including the word monster. Currently, the USPTO lists 1647 trademark filings including the word monster. Company officials believe that they are responsible for making monster synonymous with success.

The company has trademarks in 51 different classes, and has more than 750 employees. The company produces several products, including speaker wire, clothing, furniture, and music.

When you go to the website, you will notice that the title of the page is simply "Monster" and the Heading at the top of the browser says "Welcome to Monster."

Still not sure what company claims monster, here's the answer.

While it may be surprising that the company would try to claim a mere part of their trademark, it isn't new. McDonald's has done a good job of claiming "Mc" and Toys "R" Us claims "R Us."

For more information on the opposition to the registration of "Snow Monsters," go to the Durango Herald article, Durangoan sues to keep Monster away.

Posted by at 09:40 AM.
Permalink: Don't Say "Monster"

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December 09, 2004

All Business Have Intellectual Property

Oklahoma Inventors Congress has a link to an article discussing the various aspects of intellectual property associated with ordinary businesses.

The article is on mondaq.com (free registration required). It is directed to U.K. readers, so don't take every detail as absolute truth. It is certainly wise to consult a professional who deals with that area of law before making any crucial decisions.

Part 1 answers the following questions:

• What is Copyright?
• Who owns Copyright?
• Who owns the Copyright in websites?
• How do you protect Copyright?
• What are designs?
• Who owns a design?
• How do you protect designs?

Part 2 answers the following questions:

• What is a Trade Mark?
• Who owns a Trade Mark?
• How can you protect a Trade Mark?
• What is a Domain Name?
• Who owns a Domain Name?
• How can you protect a Domain Name?

Part 3 answers the following questions:

• What is a Patent?
• Who owns a Patent?How do you protect an Invention?
• What is Know-how?
• Who owns Know-how?
• How do you protect Know-how?

This article is a very useful overview of intellectual property for small business owners. Just be sure to check with a professional before acting on the statements (for instance, Business Methods are patentable in the U.S.).

Posted by at 05:03 PM.
Permalink: All Business Have Intellectual Property

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December 08, 2004

How to Find a Qualified Person to Write Your Patent

I found an interesting post on ipnewsblog yesterday. It was about patent preparation services being auctioned on ebay. I followed the link and found an "invention agent" offering to prepare an entire patent application for a great price. Since my parents often told me that "you get what you pay for," I thought I should figure out what was really happening. I couldn't tell whether this was a patent agent or a patent attorney, so I tried looking on the USPTO roster. I discovered the person isn't even registered with the USPTO. I read the title "invention agent" too quickly and assumed it meant something. I was wrong. There is no such thing as an invention agent, but it sounds impressive. This person was able to trick a registered patent attorney. However, with the proper background check, inventors can know what they are getting.

It really is best to use a registered patent agent or attorney. The main difference between an attorney and an agent is that a patent attorney can represent you in court, if needed. Because patent attorneys can do more, they typically charge more. The decision on patent agent or patent attorney depends on the individual circumstances. However, one or the other is highly advisable for a number of reasons.

First, registered agents and attorneys can deal directly with the USPTO on your behalf. While this may sound like an unnecessary middle-man, it actually serves to benefit the inventor. Getting a patent is much like buying a car. Negotiation is crucial to the "deal," and knowledge of the process helps immensely. Those claiming to get you a patent for a bargain price often do get a patent, but the patent is worth little. What they often do is take your money and get very narrow claims in the patent (the equivalent of a used car that sometimes runs). If you are only interested in owning a patent, this is fine. However if you're interested in actual protection, you need broad claims (the equivalent of a new reliable car). To get these broad claims is where the negotiation comes into play. The USPTO routinely rejects claims (turns down your offer). While this seems to be a bad thing, it actually isn't. If you went to buy a car and the dealership accepted your first offer, you would probably be upset about leaving money on the table. The same goes for patent claims. The patent agent or attorney knows what to fight for and what to surrender at each point. This negotiation is time consuming and costly, but worth it. After all, would you rather have a used pinto for $2,000 or a new Cadillac for $10,000?

Second, registered agents and attorneys must abide by ethical standards required by the USPTO. If they do not, they lose their registration. Likewise, if you do have a problem with a registered agent or attorney, the USPTO will listen to your complaint. This isn't so with non-registered parties.

Third, registered agents and attorneys must demonstrate good moral character, have the proper scientific training, and pass a difficult test before being registered. With all this screening, you're much more likely to find a qualified person if you only look at registered agents and attorneys.

So, how do you determine who is worthy of working for you?

Check to see that the person you're considering is registered with the USPTO. The USPTO has a website that allows you to search by name, address, etc. Additionally, you can search by geographic region. Once you find potential registered attorneys or agents, you are ready to decide which one is best for you. The USPTO doesn't make recommendations. You can ask friends and family. If that isn't very helpful, there is one resource that actually rates lawyers. Martindale Hubble has a lawyer finder site is here, and ratings can be found here. "A," "B," or "C" represent grading of legal ability, much like school. A "V" after the grade indicates adherence to professional standards of conduct and ethics, reliability, and diligence. So "AV" is the best choice. However, not all lawyers have a rating. To get any rating usually takes years, and a top rating takes even longer. Since only about half of lawyers have a rating, this isn't absolutely conclusive, but it is useful.

And remember, with patent preparation, like anything else, "you get what you pay for."

Posted by at 10:12 AM.
Permalink: How to Find a Qualified Person to Write Your Patent
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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!

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December 05, 2004

culture of innovation

There was a nice overview article in the Minneapolis Star Tribune this weekend on the ever increasing practice of companies “finding” intellectual property assets.  Call it a “Rembrandts in the Attic” revelation but don’t dismiss it — you may very well have an asset that is being ignored or under-utilized.

According to the authors (the lead attorneys for Kodak in their recent 92 million dollar judgment suit against Sun), gold can be found in intellectual property assets.  What are their suggested solutions to creating an intellectual property revenue stream:

� Create a culture of innovation.

� Invest in research and development.

� Patent your inventions.

� Protect your assets.

� Seek licensing revenue & seek out new ways to maximize IP assets.

Posted by Douglas Sorocco at 07:56 PM.
Permalink: culture of innovation

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December 02, 2004

nit picky contract language

Another nit-picky themed post.

Don't you just hate nit-picky lawyering? Where the lawyer spends a considerable amount of time sweating the details and words and definitions of a contract or license agreement.

Well, you might want to reconsider your aversion or possibly see yourself hit with a 500 million damages award.  The Law Under the Microscope blog sums it up quite nicely:

….  parties run into problems when contracts are ambiguous and subject to different interpretations, each of which are reasonable.

Being picky isn’t always bad.

 

Posted by Douglas Sorocco at 07:06 PM.
Permalink: nit picky contract language

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not to be picky.... but,

Not to be picky or anything, but in response to Ars Technica:

• It was the Federal Circuit in 1998 (cert. denied by Supreme Court) that held in favor of the patenting of business methods.
• It was the Supreme Court in 1981 that ordered the PTO to allow software to be patented.
• It was not the US Patent Office’s unilateral decision to allow patenting of software.

Posted by Douglas Sorocco at 06:07 PM.
Permalink: not to be picky.... but,
| Comments (1)

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pto nanotechnology classification to improve nanotechnology patents

As PHOSITA previously reported, the USPTO has instituted a new classification for nanotechnology, Class 977–nanotechnology, to provides for disclosures:

• related to research and technology development at the atomic, molecular or macromolecular levels, in the length of scale of approximately 1-100 nanometer range in at least one dimension, and
• that provide a fundamental understanding of phenomena and materials at the nanoscale and to create and use structures, devices and systems that have novel properties and functions because of their small and/or intermediate size.

The Small Times has a quite detailed discussion of the new classification and its impact on nanotechnology patents. 

Experts say the action will lead to stronger, more defensible patents and encourage innovation by increasing confidence in the patent system. They added that the action was necessary because of the difficulty in classifying nanotechnology inventions.

The article goes on to cite several ways that it will help patentees and the patenting process by:

• Making it easier to search for prior art patents and patent applications.
• Making it easier to spot or identify interfering patent applications — i.e. applications claiming the same invention or substantially the same invention.
• Providing examiners a group mentality — a group having historical knowledge and depth of knowledge in the scientific area.

 

Posted by Douglas Sorocco at 05:34 PM.
Permalink: pto nanotechnology classification to improve nanotechnology patents

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November 30, 2004

patent keyword monitoring

…from the ResearchBuzz blog comes word that patent keyword monitoring is now being offered by Freshpatents.com via email as well as an RSS feed of published patent applications.  The monitoring service requires a rather innocuous free registration and the site appears to contain a significant amount of information on different classifications of patents and patent information broken out by registered agent, class etc.

 

Posted by Douglas Sorocco at 09:30 PM.
Permalink: patent keyword monitoring

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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

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Top Ten Things to Do About Competitors' IP

The law firm Goodwin Procter LLP recently published an article on how to gain a business advantage over your competition. Here's the top ten things to do about your competitors' intellectual property.

1. Monitor Your Competitors' Patent Applications Before They Issue
2. Monitor the Progress of Your Competitors' Patent Applications
3. Block Your Competitors' Patents
4. Challenge Your Competitors' Patents Before Your Competitor Can Take You to Court
5. Think About Approaching Your Competition
6. Monitor Your Competitors' Trademark Filings
7. Learn About Your Competitors' Global Marketing Strategy
8. Challenge Marks That Hit Too Close Before Your Competitors Gain the Advantage
9. Monitor Your Competitors' IP Licensing Activity
10. Know That Your Competition is Checking Up on You

Posted by at 02:45 PM.
Permalink: Top Ten Things to Do About Competitors' IP
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November 11, 2004

creative commons expands into science & patents

from c|net news.com:

Creative Commons, a nonprofit group that has proposed new ways to share creative works by use of a "some rights reserved" copyright system, is expanding from the realm of copyright into patents and scientific publishing by launching "Science Commons".  From their website and press release:

An intellectual-property system that allows sharing between scientists is particularly important, given research grants that often make results proprietary, as well as recent international changes in patent law that expand the scope of data protection, the group said. The "commons" approach could help introduce needed flexibility, it added.

"Right at the historical moment, when we have the technologies to permit worldwide availability and distributed processing of scientific data...we are busy locking up that data and slapping legal restrictions on transfer," the Creative Commons site says. "Judicious balance is needed. The tendency to claim that property rights are never the answer, or that openness always solves all problems, must be avoided."

My firm represents several university and academic institutions and we see the tension between the academic desire to freely share information versus the need and legal obligation of the university to properly protect and commercialize the developments made by the university's employees.  While the Creative Commons' approach is novel and worth discussing and exploring further, the universities' themselves will have to be the ones to "buy into" or adopt the approach - not individual academics or researchers.  The university is the "owner" of the discovery or invention (pursuant to the Bayh-Dole Act) and therefore is the only entity with the legal right to dispose of the discovery assets in an alternative manner.

It will be interesting to see how AUTM (Association of University Technology Managers) responds.

Posted by Douglas Sorocco at 10:44 AM.
Permalink: creative commons expands into science & patents

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November 09, 2004

Decline of Brands

Thanks to Michael over at IP News Blog for the posting about the Wired article entitled "The Decline of Brands"

This article points out that society is becoming less and less loyal to branding. "When brands first became important in the US a century ago, it was because particular products - Pillsbury flour or Morton salt - offered far more reliability and quality than no-name goods." The reason for this declining loyalty is informed consumers. The information age allows consumers to get reviews of new products within days, if not minutes, of release. We no longer need to rely on the name tag to know whether we are getting a quality product. We simply check the ratings for that exact product.

Some brands are still considered premium. For example, a recent survey found that 99.5% of people will pay more for a Sony.  However, the amount they will pay for the brand is declining. Five years ago Sony DVD players were 44% more than the average. Now, the figure is 16%.

The article claims that abuse of brand loyalty by companies causes inferior products, but that consumers can now determine quality without dependence on name. It closes by stating:

The aristocracy of brand is dead. Long live the meritocracy of product.

I may be the exception to the new trend in brand loyalty. I refuse to eat peas from a can unless they are Del Monte, and I only drink Minute Maid brand orange juice. My husband calls me an "orange juice snob," but I really think it tastes different. Then again, my cars have all been different makes.

Posted by at 01:21 PM.
Permalink: Decline of Brands
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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 integral part of the development process.

Martin Schwimmer: I also think that the development of the UDRP is an astounding success in that it represents a model of dispute resolution.  There are times that a trademark owner has to walk away from the misuse of a mark in a domain because litigation will cost $50,000, but a UDRP can cost under $3000. The UDRP is not a perfect solution, but it has absolutely achieved what it set out to do.  I still do a lot of them, probably one a week.  I think the UDRP may pave the way to other forms of alternate dispute resolution for IP problems.

Dennis Crouch: Law Firm Life: Billing Requirements:  Billing expectations at most large law firms are simply unreasonable.  They disrupt family life and tend to destroy any solid mentoring program.  Today, however, I�m upset with how the long hours spent billing really cramp the ability of associates to begin to build a practice of their own.  The hour requirements were raised after the salary bump several years ago.  Now, there are rumors that another salary jump is in store for BigLaw associates.  In my opinion, rather than increasing associate salaries, firms should compete based on hours.  

Mark Partridge: Eliminate rights in gross mentality:  My second change, admittedly related to the first, would be to eliminate the "rights in gross" mentality. By this, I mean the notion that a trademark creates an absolute and exclusive right. One sees this tendency on both sides of the rights issue. A trademark owner may have the view that no one else may use its mark for any purpose. The junior user may believe there is no infringement if the mark it adopts is not identical to another's trademark.  Both views are mistaken, of course. The rationale for protecting trademarks is preventing deception of the public, not to protect a right in gross. Again the effect of the marks in question on the public mind is critical. Some uses of another's mark are permitted because they do not deceive the public. The use of nonidentical marks on related goods may still be an infringement because they deceive the public.

These are the comments I found most interesting, you should visit The [Non]Billable Hour blog for the full posts.  Each authors' blog can also be seen on the web: Nipper, Sorocco, Schwimmer, Partridge, Crouch, and Homann 

Posted by Douglas Sorocco at 04:41 PM.
Permalink: IP FIVE-BY-FIVE - THE GOOD, THE BAD, AND THE UGLY

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October 29, 2004

rubik's cube terrorism

Back in the 1980s - Rubik's Cube was my own form of mental terrorism.  I spent hours and days working on solving that infernal puzzle and all the follow-on Rubik's-like puzzles (the snake, the cone, the orb etc.) 

Flash forward to 2004, according to YahooNews, a small store owner in Oregon was forced to remove a competing product, the Magic Cube, from her store shelves by agents from the U.S. Department of Homeland Security.  According to the agents, the Magic Cube infringed upon the trademark rights of Seven Towns Limited, the exclusive licensee.

Hmmmm..... Department of Homeland Security is working for Rubik's Cube?

Virginia Kice, a spokeswoman for Immigration and Customs Enforcement, said agents went to Pufferbelly based on a trademark infringement complaint filed in the agency's intellectual property rights center in Washington, D.C.

"One of the things that our agency's responsible for doing is protecting the integrity of the economy and our nation's financial systems and obviously trademark infringement does have significant economic implications," she said.

Patent infringement outside Hungary isn't possible on the initial invention:

Rubik applied for his Hungarian patent in January 1975 and left his invention with a small toy making cooperative in Budapest. The patent approval finally came in early 1977 and the first Cubes appeared at the end of 1977. By this time, Rubik was married.

Rubik's Cube � was first called the Magic Cube (Buvuos Kocka) in Hungary. The puzzle had not been patented internationally within a year of the original patent. Patent law then prevented the possibility of an international patent. Ideal Toy wanted at least a recognizable name to copyright; of course, that arrangement put Rubik in the spotlight because the Magic Cube was renamed after its inventor.

So how about trademark infringement?  According to the USPTO website, Atico International USA owns trademark registration No. 2,671,747 for MAGIC CUBE when used on manipulative puzzles.  Logical Games (original worldwide distributor for the cube game) appears to have allowed their registered trademark for "THE MAGIC CUBE" to become expired as of Sept. 1990.

Finally, what about copyright infringement? According to the Copyright Office, Registration Number VA-237-786 exists for "Rubik's Magic graphic elements" and was registered as a copyright in Sept., 1986.  This might be the basis for the Dept. of Homeland Security's actions -- a copyright infringement action based upon the Magic Cube's copying of Rubik's Cube features and sculptural qualities.

For more information on Rubik's Cube - about.com has a whole section devoted to the maddening device.

UPDATE:  Legal Pings blog has some additional information on this story and argues that the trademark rights in and to Rubik's Cube are the basis for the enforcement action. The only U.S. trademark registration for "Rubik's Cube" is registration number 1,243,974 for the word mark "Rubik's Cube" (i.e. the words, not the design of the cube a la tradedress or product configuration).

From Seven Towns' website:

Rubik� and Rubik�s Cubes� are registered trademarks throughout the world of Seven Towns Limited. Seven Towns Limited is the exclusive worldwide licensee of copyright in the Rubik�s Cube puzzle and the registered proprietor of European Community Trade Mark registrations in the images of the Rubik's Cube puzzle and the puzzle itself.

UPDATE II: Dennis at Patently Obvious has an extended post on this issue as well and finds that Seven Towns does own a U.S. trademark Registration No. 2,285,794 which is a design mark with a description:

The mark consists of a black cube having nine color patches on each of its six faces with the color patches on each face being the same and consisting of the colors red, white, blue, green, yellow and orange. The drawing is lined for the colors red and green. The remaining colors -- white, blue, yellow, and orange -- do not appear in the drawing, but are claimed as a feature of the mark.

Dennis also has a nice overview of trade dress protection and its limits as applied to functional aspects that have been previously patented. 

Posted by Douglas Sorocco at 06:01 PM.
Permalink: rubik's cube terrorism

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October 28, 2004

patented wine in a can

Tip a Merlot for me?  Double fisting a Cabernet and a Zinfandel?  What is the world coming to -- wine in a can?

According to Packaging World Magazine, Barokes Wines, of Melbourne, Australia, has moved its marketing of its patented wine (Patent Cooperation Treaty "PCT" application here) in a can throughout Southeast Asia and is now looking to expand into the European and North American markets.

Barokes has developed Vinsafe, a patented process that includes the specifications for the premium wine, can lining and filling requirements. Since 1997, it has been packing a Cabernet-Shiraz and a Chardonnay in 250-mL aluminum cans that can produce a shelf life of up to five years. It also packs sparkling versions of those varietals.

Barokes is also getting into the trademark spirit, with such marks as: RTDW (ready to drink wine) and VINSAFE.

If you are interested in bringing this culinary delite to America go to their appropriately named website: www.wineinacan.com

 

Posted by Douglas Sorocco at 08:21 PM.
Permalink: patented wine in a can

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October 27, 2004

Grokster Officals Settle Separate Copyright Case

Reuters reports:

Officials with the Grokster file-trading network have agreed to pay $500,000 to settle charges they operated a separate music download service without permission, a recording-industry trade group said on Monday.

Puretunes.com allowed users to download unlimited songs for $24.99 a month.  The RIAA claims that the company never got permission from copyright holders.

In addition to the $500,000 by Grokster, the settlement orders Puretunes.com's parent company to pay $10 million.  However, Grokster President Wayne Rosso claims that the company no longer exists.

In other cases, courts have ruled that Grokster is not liable for copyright infringement because it lacks control over users.

When I went to puretunes.com (laced with pop-ups) today, I found a listing of music search results.  The third result claims "Unlimited Music Downloads - $0.99/Month."  If $24.99/month is too good to be true, I suspect that this sponsor is also selling some snake oil.

If you're interested in how the puretunes.com site looked prior to the lawsuit, you can look here.  I think the idea sounds like a good one.  $24.99/month to get the music without breaking the law may entice some music thieves to change their ways.  The real problem with music swapping is that people didn't know they were doing anything wrong in the beginning.  Now that they know, they're addicted to the free music.

Some claim a new business model is in order.  Others claim that it is unfair to force the IP holders to change their business to thwart thieves.

I agree with both positions.  It is unfair to force the lawful IP holders to make accommodations for law breakers.  However, it's probably in the IP holders' best interest to do so.  It's like installing locks on a house.  We shouldn't be required to install locks on our houses to keep burglars out, but we install them anyway.  Like personal jewels or electronics, IP is an asset that requires protection beyond ownership.

Posted by at 11:22 AM.
Permalink: Grokster Officals Settle Separate Copyright Case

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October 23, 2004

deliberate innovation

My favorite tool of the year is Furl.  Furl is a free service that allows you to bookmark and save a personal copy of a website.  You can save the site as it appears when you surf to it and search the sites you have saved. 

Another reason I love Furl -- it has an RSS feed of recently Furled entries by members.  The serendipitous effect of looking at what others are furling and saving (a bit voyeuristic) is insanely interesting.  There are a lot of entries - so set your archiving settings high (I only save the last 2 days worth).

For example, the latest feed shows this page Furled by a user:

Canada School of Public Service

Innovation has been described and defined in numerous ways. The Roundtable chose "a transformative idea that works" as its working definition. While there will always be active debate about what constitutes innovation, most people would agree that they "know innovation when they see it". Innovation is about passion, purpose, and profound results.

This toolkit provides a powerful resource for group leaders to exploit the potential of their teams to generate transformative innovations. It provides teams with a practical and deliberate approach to innovation.

Interesting read - check it out.

 

Posted by Douglas Sorocco at 09:26 PM.
Permalink: deliberate innovation
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October 21, 2004

innovations on this date -- October 21st

October 21st -- A banner day for new inventions: On this date in 1879 Thomas Edison invented the electric light bulb; the first transatlantic message by radio telephone was sent, from Arlington, VA, to Paris, France in 1915; in 1925, the photoelectric cell was first demonstrated by the Westinghouse Co.

Other October 21st events.

From "Today in Science History" -- a great website when looking for odd science trivia.

Posted by Douglas Sorocco at 06:36 PM.
Permalink: innovations on this date -- October 21st

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October 20, 2004

young entrepreneurs

BusinessWeek online has a Technology Special Report entitled "Tech's Young Entrepreneurs" available.

One of the offerings includes:

A New Generation of Tech Visionaries
These folks are a little older and more experienced than back in the '90s heyday. However, they're just as inspired and determined

Posted by Douglas Sorocco at 12:53 PM.
Permalink: young entrepreneurs

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October 13, 2004

ashcroft on DOJ IP taskforce

Attorney General John Ashcroft announced on Oct. 13, 2004 the recommendations of the Justice Department's Intellectual Property Task Force.  The task force is charged to examine all aspects of how the Department handles intellectual property issues and report on proposals for future activity.

"Intellectual property theft is a clear danger to our economy and the health, safety, and security of the American people," said Attorney General Ashcroft. "The enforcement of our intellectual property laws is among the highest priorities of the Justice Department, and I created the Intellectual Property Task Force to explore ways for us to strengthen our protection of the nation's valuable intellectual resources. With the recommendations put forward by the Task Force, the Department is prepared to build the strongest, most aggressive legal assault against intellectual property crime in our nation's history."

"I am confident that our nation's creative and intellectual resources will be better protected when the recommendations of the Task Force report are implemented. The Justice Department will have additional tools to fight movie theft and product counterfeiting," said U.S. Attorney Yang. "With the increased protection and new law enforcement resources, our nation's intellectual property will continue to enhance our daily lives and play a role in the continued growth of the American economy."

The IP task force report can be found here in PDF.

Posted by Douglas Sorocco at 05:55 PM.
Permalink: ashcroft on DOJ IP taskforce

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October 11, 2004

economy tied to innovation

The Modesto Bee had an interesting article this weekend about innovation and the growth of the technology industry.  It is skewed toward the expansion of technology companies and technology purchasing, but it is also an interesting read to see yet again, the economy is fundamentally tied to innovation.

In the past, there was a strong correlation between technological innovation and broad-based stock rallies, especially when those innovations were readily useable by corporate America. From the introduction of the IBM personal computer in late 1981 to the rise of the Internet and server-client corporate networks in the early to mid-1990s, the need to keep up with the times kept companies spending - and kept technology firms coffers overflowing.

But now, there's no overriding reason to spend big on technologies because the innovation of the 21st century has been incremental, rather than revolutionary.

 

Posted by Douglas Sorocco at 02:30 PM.
Permalink: economy tied to innovation

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October 08, 2004

... and the us state department offers funds for overseas ip training programs

The State Department will spend over $2.5 million on 16 United States Government-sponsored international training programs in various parts of the world to combat piracy and counterfeiting efforts.

Several countries will receive the funds, for example:

Tri-Border Initiative: $100,000

A major obstacle to fighting transnational crime is poor cooperation between enforcement entities across borders. This has been the case with the nations in the Tri-Border region of Paraguay, Argentina, and Brazil. The intersection of these three countries has long been a hotbed of piracy and counterfeiting of all kinds of products. Funding for this project will allow U.S. Department of Justice and U.S. Department of Homeland Security officials to train prosecutors, police, and customs officials from the Tri-Border Region to combat intellectual property crime. By bringing together officials of all three countries, this project will improve intellectual property rights enforcement skills while fostering communication and cooperation, a joint sense of responsibility, and stronger operational efforts to fight intellectual property rights crimes.

Posted by Douglas Sorocco at 08:04 PM.
Permalink: ... and the us state department offers funds for overseas ip training programs

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intellectual property theft crackdown

From the Boston Herald: according to Attorney General John Ashcroft, The Justice Department will launch its most aggressive crackdown on intellectual property theft next week.

Ashcroft told a conference of prosecutors that the department response to intellectual property theft "must be as forceful and aggressive and successful as our response to terrorism and violent crime and drugs and corruption has been.''

He said the department will release a report next week that follows the creation earlier this year of an intellectual property task force. Officials will also announce a tougher response to intellectual property theft, which he said costs the United States $250 billion a year, affecting industries from auto parts manufacturing to pharmaceuticals.
 

Posted by Douglas Sorocco at 07:49 PM.
Permalink: intellectual property theft crackdown

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congratulations to Receptor Logic ltd.

Congratulations to Receptor Logic Ltd. of Amarillo, Texas for winning a multi-million dollar Advanced Technology Program (ATP) grant from the National Institute of Standards and Technology.

Receptor Logic's proposal, entitled "TCR Mimics: A New Class of Antibodies Against HLA-peptide Complexes for Diagnosis and Therapy of Breast Cancer" was one of 4 ATP grants awarded to companies in the state of Texas, the first ATP grant awarded to a west Texas company, and one of only 32 awards made nationwide.

Another win for a DCR client!

Posted by Douglas Sorocco at 03:41 PM.
Permalink: congratulations to Receptor Logic ltd.

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October 07, 2004

defending IP - what is it worth

Senate Report 108-344, which accompanies the appropriations bill for Commerce, Justice, and State (S.2809), states that:

It is estimated that 50 percent of United States exports now depend on some form of intellectual property protection, compared to less than 10 percent 50 years ago. United States companies lose an estimated $200,000,000,000 to $250,000,000,000 to counterfeiting and piracy each year. Companies' ability to profit from their intellectual property is critical to their growth and, in turn, the health of the United States economy. There is widespread concern -- and the Committee [on Appropriations] agrees -- that not enough is being done to combat the counterfeiting and piracy of American intellectual property. Emphasis added

Another reason why IP (patents, copyrights, trademarks etc) is important.  Strong intellectual property systems enhance competition and grow the economy - they do not stifle it.

Thanks to Promote the Progress for the tip.

Posted by Douglas Sorocco at 02:53 PM.
Permalink: defending IP - what is it worth

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October 05, 2004

monsanto wins 12 year interference case against max planck institute

Monsanto Company has won a key patent office battle regarding biotech-gene technology for the transformation of plants such as cotton. The decision by the U.S. Patent and Trademark Office that Monsanto's scientists were the first to invent this important discovery ends a 12-year patent interference dispute with the Max Planck Institute and other parties.

The decision, issued Monday by U.S. Patent and Trademark Office, recounts the basis for finding that Monsanto was the first company to invent the agrobacterium transformation process which is used to introduce genes into plants.

"We are delighted that this scientific dispute has been resolved in Monsanto's favor," said Hugh Grant, chief executive officer for Monsanto. "We're pleased for our Chief Technology Officer Robb Fraley, and the team of devoted researchers at Monsanto who drove the groundbreaking science that pioneered the tools of agricultural biotechnology."

Simply put: An interference is a priority fight (i.e. who invented first) in the patent office.  In the U.S. we grant patents to the first person to invent and at times there are debates as to who the first inventor of a particular technology.  An interference proceeding is a procedural nightmare and a very specialized area of patent law.  A key indicator of this nightmare is the time it took to finalize this proceeding: 12 years of uncertainty relating to the ownership of a particular technology.

Posted by Douglas Sorocco at 09:39 PM.
Permalink: monsanto wins 12 year interference case against max planck institute

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October 03, 2004

"i believe in ip" manifesto

Thanks to Russ Krajec over at Anything Under the Sun Made by Man IP blog for the link to a pointed defense of intellectual property (and specifically patents) by Jonathan Schwartz of Sun Microsystems.

A little snippet from Jonathan's post:

Now, a few weeks ago, the CEO of one of the more popular open source companies called and asked me to support their stance on the invalidation of software patents. I listened closely, I respect the guy and his company. But this was the same CEO who forbade Sun from shipping his open source technology with Solaris based on a curious interpretation of the GNU Public License. And based on rabid enforcement of copyright. He was looking for broadscale support for invalidation of software patents - not spurious patents, not the kind that are acquired for litigation, but the whole concept of software patents.

And so I asked - "I'm not sure why you're asking my support to invalidate what Sun's stockholders have invested tens of billions of dollars to create, when you'd cringe if I told you to give away your largest asset, your copyright and brand." His answer, "You just don't understand." He was right, I didn't and don't. And we're going to agree to disagree. He and I, and I with a vocal minority of folks on the 'net who feel software should have no patent protection (leaving copyright and trademark untouched). I do not support that view, any more than I believe any other field of endeavor should be subjected to such a double standard. From drug discovery to academic work, the protection of IP is part and parcel of what incents inventors to and investors to invest.

Inventors, invent.&n