Category: Universal IP

Inventions are Either Dogs or Cats

Posted on by Delain Law Office

Some inventions actually are dogs. You’ve met the dog I’m talking about. It’s that big, friendly, in-your-face, social charmer who wants — nay, needs — to be the center of attention. They wear their hearts on their shoulders (dogs don’t generally wear sleeves) and you know exactly what this dog … of whatever breed … is thinking.

A dog-invention is one that, once introduced, you can reverse engineer. You know what it’s made of, and you know what it does. It becomes clear from tinkering with the invention just exactly how the invention works.

Dog Interacting
Dogs Love to Interact

 

A dog-invention is something you need a patent to protect. You cannot protect a dog-invention in any other way. For a patent to issue, the best mode of making and using the invention must be disclosed at the time of filing the application for patent. No problem! The dog-invention’s best mode is disclosed when you publish the dog-invention to the world. You can’t hide it; its very nature is to be a big, friendly, in-your-face invention.

Some inventions are cats. You’ve met the cat I’m talking about. It’s that shy, skittish kitty that hides from the world and watches with distrustful eyes as you try to tease it out of its spot. The very last thing it wants in the world is to be the center of attention. It is the diametric opposite of a friendly dog. It is secretive.

Cat In Box
Cats LOVE to hide…

 

A cat-invention can also be protected by patent, but we need to remember that a patent is an exercise in disclosure, which is the diametric opposite of this cat-invention’s nature; for a patent to issue, the best mode of making and using the invention must be disclosed in the application … which is then published to the public. We also need to remember that a patent’s enforceability is finite; it expires, at most, 20 years from the date you file the application. This cat-invention might be happier, and its profitability could potentially last much longer, if you simply keep it as a trade secret and let it do what cat-inventions do — hide from the world, watching with distrustful eyes as others try to tease it out.

ATTRIBUTION: The dog photo is a free download from pexels.com (since I don’t have a dog); the original filename is pexels-pixabay-97082.jpg. The cat is a photo of of my class-clown-cat, Linus.

 

Privacy and Home Base in COVID-19

Posted on by Delain Law Office

So. You’re being a good citizen of the world and sheltering in place. Your employer actually allows you to work from home and you’re accessing your employer’s information over your home-based wi-fi. You have a password on your router, a password on your local computer, your  and you have never seen a neighbor lurking on your internet system.

But now you’re accessing your employer’s sensitive and private intellectual property using your home-based internet. Is your home-based security sufficient?

My guess is that no, it is not.

Hackers love a challenge. And a home-based internet security system is usually not set up to handle a hacker’s attack. There are resources available on the internet to help you beef up your home’s internet security; the Federal Trade Commission provides these tips; here’s ZDNet’s article; Digital Guardian lists 101 Data Protection Tips; and there are other references available. You must be proactive in keeping your and your employer’s data secure.

The best advice, though, is to follow your employer’s internet security protocols. If they have a PITA VPN, use it. If they want you to use the Tor browser rather than your favorite Internet Explorer or Firefox or Safari, use it. Be careful about email, especially email that can travel across the open internet; you can simply assume, de facto, that emails are open communication with the world. And if you or your employer don’t want something forever on the internet, don’t put it there.

If you want to keep something private, you must keep that something private. Remember, not everything belongs on the internet.

 

Why Do YOU Need a Lawyer?

Posted on by Delain Law Office

You’re forming a business. You need a lawyer because you need to do it right. You need the magic words that form the business you want to form in the formation documents (do you know what those magic words are?).

Or maybe you’re developing a brand for your new business. You need a lawyer because you need to do it right. Yes, a lawyer is expensive, but a trademark infringement action brought by a senior user of the mark you adopt … without knowing there even IS a senior user … gets mighty pricey mighty quickly.

Or you’ve invented something and you want to get your invention out to the public immediately. But wait; do you want to profit from your invention? You need to take steps to protect that invention. Do you know what steps are available to you? And do you know how steps that seem to be diametric opposites and never able to work together can actually allow you to effectively extend the term of protecting your invention? You need a lawyer because you need to do it right.

Or maybe you’ve written something. Let’s say you’re J.K. Rowling and you’ve just completed your very first “Harry Potter” book. You want all the protection you can get for that book. Do you know the ins and outs of obtaining and using that protection? You need a lawyer because you need to do it right.

Or you want to … ooh, ooh, ooh … start up a company that franchises its business methods and trademark (i.e., you’re Ray Croc) out to others. What do you need to do to start that franchise and comply with the state and federal laws that govern franchises? What business and legal models do you need to have in place? You need a lawyer because you need to do it right.

Or you don’t want to franchise, but you do want to license your intellectual property for others to use. How do you license out your intellectual property without creating a franchise? You need a lawyer because you need to do it right.

Or someone has handed you a contract to sign. It’s long and full of legal jargon. What does it actually say? Remember, lawyers use words differently than most people do, and it’s lawyers who will interpret any contract you sign that goes south. You need a lawyer because you need to do it right.

You need a lawyer because you’re in business and you need to do it right.

Delain Law Office, PLLC

 

Happy Earth Day 2017!

Posted on by Delain Law Office

The patent world is full of technologies that support the Earth. From solar panels to ever-more-efficient batteries to new recycling technologies, inventors throughout the USA are working to protect our environment.

Even the oil and gas industry have worked, at least a little, to help keep things cleaner. According to www.oilprice.com:

Oil companies, working alongside environmental organizations, scientists, biologists and engineers have developed numerous solutions for spills occurring both on land and in the water. Water spills can now effectively be cleaned by presses that involve straining and draining while containing the oil slick, using “floating booms” to corral the oil while skimmers and vacuum pumps cleanse the water and reclaim large percentages of the spilled oil.

Another “eco-friendly” oil spill management method for both water and land spills is called “Bio-Remediation. It’s a technique that uses living organisms such as bacteria and fungi to degrade, break down and in some cases; actually eat the oil as it safely cleanses the spill without hurting the environment.  Meanwhile, serious upgrading of the technology now being used for the drilling and refining of oil is cutting previous pollution levels down tremendously, as the oil industry increases profits by processing more usable oil while polluting a lot less.

Oil companies are now investing billions of dollars in socially responsible programs and are quickly becoming one of the largest supporters of environmentally friendly programs worldwide. Oil is already largely responsible for many of the major advances in medicine, pharmacology and world wide health care infrastructure, but now they are some of the largest supporters of research dedicated to promoting renewable energy sources.

This text was written in 2009; whether it remains true in the new administration or not is questionable. Our current administration is not friendly toward our planet, and that fact needs to be mitigated through strong Congressional action that puts into statute environmental protections which have, up until now, been administrative.

So, along with lobbying for science, we need to lobby for statutory control of air pollutants, water pollutants, increased use of green energy sources, and all the rest of the stuff formerly regulated by the Environmental Protection Agency. There is so very much technology out there already to support an eco-friendly country … we just need to have the backing of the government to continue to develop and use it.

Cheerleader Outfit Designs ARE Covered by Copyright

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Star Athletica, L.L.C. v. Varsity Brands, Inc., et al., 580 US ___, a newly (22 March 2017) decided copyright case, finds that the design elements of a cheerleading outfit can be covered by copyright.

According to the syllabus of the case, SCOTUS holds: “A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated. That test is satisfied here.”

This case is interesting because it tells us where lies the line between industrial design, which is not protected by copyright (it may be protected by patent), and artistic design, which is. Courts have disagreed where that line lies.

Here, the District Court held that the designs did not qualify for protection under copyright because the designs served the useful purpose of identifying the outfits as “cheerleading uniforms.” The designs are therefore utilitarian, cannot be separated out to stand on their own, and therefore cannot be protected by copyright (you can read the District Court’s opinion at 2014 WL 819422 (WD Tenn., Mar. 1, 2014)).

The US Court of Appeals for the Sixth Circuit disagreed; they held, with one dissent that upheld the District Court’s opinion, that the graphic designs are indeed “separately identifiable” because a cheerleading costume without design is still identifiable as a cheerleading costume, so the graphics on such a garment can indeed be separated out and separately displayed and are thus protectable under copyright (read the 6th Circuit’s opinion at 799 F. 3d 468, 471 (2015)).

The Supreme Court affirms the 6th Circuit.

So what does this case teach us? We now know that designs on clothing CAN be separated out from the clothing, making the design on the clothing, even if the design relates to the function of the clothing, protectable under copyright.

We know that “The statute … provides that the “design of a useful article” can include two-dimensional “pictorial” and “graphic” features, and separability analysis applies to those features just as it does to three-dimensional “sculptural” features.”

We know that “…a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.”

Copyright remains one of the most case-by-case determinations around. The findings of this case have yet to be tested on utilitarian items other than clothing; we’ll watch this with some interest to see what, if anything, happens.

Crowdfunding IP

Posted on by Delain Law Office

This is a good article about the taxability of crowdfunding.

But who owns the intellectual property in a crowdfunding situation? Does the inventor or author always get to keep the rights to the Big Idea they fund?

Well, as with whether a crowdfunding campaign is taxable or not, that depends.

Intellectual property is transferred by agreement between the owner of the rights (the originator of the work or an assignee) and the assignee of the rights. If the originator of the work assigns the work to another, then that other owns those rights. If s/he does not, then that other does not own those rights.

So what makes a valid transfer of rights?

A signed writing that transfers the rights. This need not be a contract; there need be no consideration.

That writing can be a “work made for hire” agreement, in which the originator of the work agrees that s/he has been hired by another to create, and the results of the creation belong to that other.

That writing can be an assignment of rights, in which the originator of the work assigns the rights to another. This assignment can take the form of a contract (offer, acceptance, consideration), or it can be a simple assignment without the trappings of contract.

Without that signed writing, though, the IP rights remain with the current owner, who may be the originator or an assignee.

If the crowd were to get rights to the intellectual property it funds, the owner of those rights must assign those rights to the crowd. That doesn’t happen very often; in fact, I know of no instance in which the crowdfunders have shared in the IP rights their funds help to develop. The crowd must generally settle for something else. Stock, for instance. Or a sample of the product. Or even just a T-shirt. But IP rights? Possible, but not likely.

Crowdfunding and venture capital are entirely different in this regard. Venture capitalists regularly take ownership interest in the company, including the IP rights, in exchange for funding.

What Is the DOJ Thinking?????!

Posted on by Delain Law Office

The Department of Justice has basically denied songwriters a living wage from their hard work. 

Yuck. There is some light at the end of this tunnel, I don’t see a lot of it.

This is administrative law. Admin rulings like this can be appealed at the District Court level, but not for content per se; only for abuse of power. Since there is 60-year-old precedent in place, and since federal courts are all about precedent, it will (not “would”; “will”) take a really good litigator to convince the judge to rule against the DOJ (that’s not me; I’m a transactionalist). Once it’s in the court system, it can proceed through the appeals process like any other case.

Even though I am not a litigator, it’s always fun to do some backseat driving in cases like this. I’d do a bit of forum shopping before I would take this to the District Court. Whoever brings the admin appeal to the District Court should be sure to bring it in either the US District Court for the Southern District of New York (that court is king of copyright and performing arts) or in the US District Court that covers L.A. and Hollywood (that court is the other king of performing arts). That shouldn’t be a tough one; songwriters live in droves in those places. The lawyer would just need a local client to bring this to the attention of one (or both) of those two courts. If it gets brought in both places (two different plaintiffs), hope to God the rulings disagree with each other. That makes the appeal easier to get through the chinks, especially if they appeal to the 2nd and 9th Circuits and those rulings disagree. That could turn it into a SCOTUS case … if SCOTUS grants certiorari. That’s a big “if.”

 

Cuozzo v. Lee, 579 US ____ (2016)

Posted on by Delain Law Office

I was present in the Courtroom for the announcement of the Cuozzo decision by SCOTUS. This decision makes it clear that inter partes review by the USPTO is not appealable, and that the USPTO can institute such review sua sponte (by its own initiative). It’s an interesting decision.

35 USC §314(d) says that the “determination by the [Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable.” (Emphasis added.)

35 USC §312 says that petitions must be pleaded “with particularity.” Those words, in its view, mean that the petition should have specifically said that claims 10 and 14 are also obvious in light of this same prior art. Garmin’s petition, the Government replies, need not have mentioned claims 10 and 14 separately, for claims 10, 14, and 17 are all logically linked; the claims “rise and fall together,” and a petition need not simply repeat the same argument expressly when it is so obviously implied.

The “No Appeal” provision’s language must, at the least, forbid an appeal that attacks a “determination . . . whether to institute” review by raising this kind of legal question and little more. §314(d).

Moreover, a contrary holding would undercut the Patent Office’s significant power to revisit and revise earlier patent grants. Congress would not likely have granted the Patent Office this reexam authority if it had thought that the agency’s final decision could be unwound under some minor statutory technicality related to its preliminary decision to institute inter partes review. Congress has told the Patent Office to determine whether inter partes review should proceed, and it has made the agency’s decision “final” and “nonappealable.” §314(d). SCOTUS’s conclusion that courts may not revisit this initial determination gives effect to this statutory command.

However, the Court limits its green-lighting of the USPTO’s unappealable reviews: “… we need not, and do not, decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond “this section.”” The Court does not “…categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, [or] enable the agency to act outside its statutory limits by, for example, canceling a patent claim for “indefiniteness under §112” in inter partes review.”

AVVO Gets Sued for Using a Lawyer’s Professional Information Without Consent

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According to the ABA Journal, a Chicago lawyer is suing the lawyer review and ranking site Avvo “…contending that the company’s online lawyer directory is violating a[n Illinois] state statute by using professional information on the site without permission.”

It’s an odd suit. Evidently, this Chicago lawyer is aggrieved that Avvo compiles data, including her name, from publicly available sources, then uses that compiled information to market its attorney marketing services to lawyers. She sees this as Avvo profiting from her personal information. She hasn’t paid Avvo for its services and doesn’t want them to be able to use her information for their own benefit. Since lots of other lawyers in Illinois have also not paid Avvo for their services but have their personal information used in this same way, this complaint is filed as a class action suit.

It’ll be interesting to see what Avvo’s response to this complaint is. I suspect they’ll basically tell the plaintiff that her suit is a bunch of hogwash, but we’ll see.

“Happy Birthday To You” Is Apparently Public Domain

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For years now, we have labored under the impression that a valid copyright exists on “Happy Birthday To You.” Evidently, that copyright’s validity is … um … questionable.

It’s not often that a big, dramatic revelation happens in a court case, but in Good Morning to You Productions Corp. et al. v. Warner/Chappell Music, Inc. et al., currently before the US District Court for the Central District of California, a new piece of evidence has just turned up that turns the copyright on “Happy Birthday” on its ear. Evidently, “Happy Birthday” is a derivative of a song called “Good Morning to You,” which was published under the 1909 Copyright Act — without notice of copyright. Today, notice means little in the world of copyright, but under the 1909 Act, notice was everything. If notice of the copyright wasn’t published with the work, the copyright in the work was void.

Interestingly, the important subtitle on the song’s manuscript was blurred in the version given by Warner/Chappell to Good Morning to You Productions as a document produced in discovery (late, I might add). That made people curious. With some good document analysis, the truth came out: the work was published without notice and therefore without copyright.

This case is still ongoing at Docket #2013-CV-04460; no court has actually invalidated the copyright on “Happy Birthday To You,” but I don’t think we need to wait too long for the Central District of California to enter judgment on behalf of Good Morning to You Productions, voiding the copyright. We will soon be able to sing “Happy Birthday” without worrying about paying a royalty.