Category: Universal IP

Changes Coming for Copyright…

Posted on by Delain Law Office

This year’s two-year Congressional House Judiciary Committee’s review of copyright “focused on music licensing, discussing recently introduced legislation that has the backing of the music industry. One proposal, the Fair Play, Fair Pay Act, would establish a performance right and also require all radio formats to pay royalties for the performance of pre-1972 recordings.”

These changes to copyright are, for obvious reasons, supported by the musicians and recording artists. Royalties for playing their pre-1972 songs on the radio, in all radio formats no less, are a really good thing for them in that the royalties add additional income to the songwriter’s purse, enabling them to have at least a larger subsistence. It might even enable some of them to leave their day jobs to write music full time, which would add bounty to the music of the culture for which they write.

But wait. Let’s look at the radio stations for a minute. Radio is still a viable medium, but the radio industry has changed from the FCC-recognized model of the station and the broadcast tower and the receiver to the internet. There are literally thousands of shows run by people who want to do a radio show for whatever reason; some of those shows are talk shows, and some are music shows, and some are just junk. I worry about the music shows that play the oldies under this new law. These folks do not, as a general rule, follow the intricacies of the changes to copyright law, and, without proper publication and warning about this new royalty requirement, they could be caught in a vise from which they do not have the means to escape. I can see coming down the pike a reenactment of the RIAA vs. Music Downloaders huge number of cases of the early 2000s. That didn’t work well then; I see no reason why it would work better today.

Don’t get me wrong. I support this addition to the Copyright Act. I want to see songwriters get paid fairly for their contributions to the world, and I think that pre-1972 music should be compensated just as much as post-1972 music. However, I support the addition with the proviso that the public be thoroughly and completely noticed using communication means that they simply cannot miss getting something through even the foggiest radar about this new law. I want to see and hear discussion of this new copyright provision on the news, in the newspapers, on the radio, on PSAs, and all over Facebook and Twitter, and I want to see multiple iterations of the warnings that this new law can, and probably will, cause liability for a careless radio show host for a large bundle of preventable judgment money and attorneys’ costs. This new liability will be in effect even for a fly-by-night internet radio show host. These are the folks who stand to lose the most and who therefore need to see the warning of the effect of this new addendum to the Copyright Act.

Copyright Alert System

Posted on by Delain Law Office

Huh. Isn’t this interesting. The ISPs are initiating a six-strike system to help enforce copyright.

I’m glad to see the ISPs getting involved more proactively in the enforcement of copyright. The internet is a wonderful invention, but it does lend itself to infringement. Copying without permission is very, very easy in this online world, but that copying may infringe the rights of others. That’s how the recording industry made $millions from the “free” downloading of protected music.

Google and Publishers Settle Their Suit

Posted on by Delain Law Office

Well this part of the suit against the Google Library Project is done. The American Association of Publishers (AAP) has settled with Google.

Google, as you may know, took on the ambitious project of digitizing libraries to make that content available online. The Google Books site provides book excerpts for free. Not unexpectedly, this project really bothered copyright owners, and the AAP, the Author’s Guild, photographers and visual artists and several individuals filed suit to stop the project in 2005.

Although the full terms of the AAP settlement are confidential, the settlement, importantly, allows publishers to opt in or out of Google Books, and thus in or out of the digitization project.

The AAP settlement still does not resolve the authors’ separate suits, which are still pending in the Southern District of New York, still presided over by Judge Chin (sitting by designation after his elevation to the Second Circuit Court of Appeals).

DNA Data

Posted on by Delain Law Office

Seems Harvard has encoded data — a lot of data — in a DNA strand.

I’m not sure what I think of this. Is it WAY cool technology? You bet. However, the thought that a life-force molecule like DNA can be used to store 700 terabytes in one drop? Hmmm… WHAT data will now get stored? WHO controls the storage? HOW can data stored be expunged? WHEN will the data deteriorate or be eliminated? WHERE will the technology lead us? WHY do we do this to ourselves?

Sometimes, technology advances at such a fast pace that we plunge ahead without considering the ramifications. This particular technology has ramifications that boggle the mind; data storage is only a drop in the bucket. To paraphrase Michael Crichton, who said it best in Jurassic Park: “Sometimes we did it because we could without stopping to think about whether we should.”

Maybe this is one of those times.

Who Owns the Posting

Posted on by Delain Law Office

Suppose you run an internet site that accepts postings from users. Suppose some of those postings are pretty good. Users voluntarily and without payment post to your website.

Who owns the postings?

The answer to this question depends on the Terms of Use on your website and how users access your site.

The author of the posting owns the original copyright in his or her posting. For the website owner to obtain copyright in the author’s posting, there needs to be a written transfer of copyright interest, which can be done with a “click-through” contract for users to access the posting capabilities of the website. It has to be worded correctly, though; this is not a do-it-yourself opportunity. You need your copyright lawyer to draft this clause for you.

Creating the click-through contract does NOT give copyright to the website owner for materials posted before the website requires the click-through contract to access the web posting capability transfers copyright. For those postings, if the website owner wants copyright ownership, the website owner must obtain and register with the US Copyright Office a signed document transferring copyright from the original author of the post.

If the postings can be published as a “collection,” then the website owner may — MAY — own the copyright in the collection, depending on several factors.

Intellectual Property Insurance

Posted on by Delain Law Office

You need to know this.

If you own any IP, what is your threshold for litigation? Rest assured, even the smallest businesses get involved with IP litigation, then find they can’t afford it because their general business liability policies don’t cover it. There is no need for you to be on your own in the IP courtroom; IP insurance can be a cost-effective way to handle the ever-rising costs associated with litigation of your IP rights.

I don’t endorse any particular carrier, but I found these videos on YouTube; they contain a good overall discussion of why you should carry IP insurance and of how IP insurance works.

IP Enforcement Insurance

IP Defense Insurance

Are you dead? Your IP isn't

Posted on by Delain Law Office

Albert Einstein, who died in 1955, earned $18 million last year.

Charles M. Schulz, whose PEANUTS characters live on in syndicated reprints, earned even more.

Ted Geisel, who will live forever in his timeless Cat in the Hat and Lorax and Sneetches and wacky machinery, earned more yet.

We all know you can’t take it with you, but you can keep earning it even when you’re not here to earn it. Well, not you, but the value of your intellectual property can carry on after you go gently into that good night.

Thus, if you’re the owner of any intellectual property at all, you need to bother protecting it. Whether you benefit from the protection personally or not, your heirs may very well benefit from it.

If the copyright in your work of authorship isn’t registered, register it. It costs $45 in the US, plus the time to fill in the Copyright Office’s #$% form if you do it yourself; it’s a bit more expensive to hire an attorney to do this for you, but you stand a better chance of successfully battling off any challenge that the Copyright Office might mount to your registration.

If the trademark that you’ve been using to designate your goods or services in commerce isn’t registered, register it. This is more involved than is copyright registration and you really should have an attorney do this for you.

While we pay lip service to the common-law rights of an intellectual property owner, registration of intellectual property rights provides significantly — SIGNFICANTLY — more and better protection.

IP can be passed on to another by will. You need to work with your attorney who handles your will and estate in concert with your attorney who handles intellectual property matters (and these are probably two different lawyers) to properly protect and pass on your IP. Your IP is a valuable part of your estate and needs to be treated every bit as decisively as does the dining room table or the computer or the … whatever.

After all, Einstein earned $18 million last year for his estate; why shouldn’t you do that after you’re gone?

SIPO reports dramatic increase in patent applications for 2008

Posted on by Delain Law Office

I met Lynn Wang, a Chinese IP attorney who works in California, at a NYS Bar Association Intellectual Property Section meeting at Lake George’s Sagamore Resort a couple of years ago. Since that time, I’ve gotten weekly updates from her on the status of IP law in China.

Her latest tells me:

“According to the latest statistics on China’ State Intellectual Property Office (SIPO) website, China received 828,328 patent applications last year, including the applications for invention, utility model and design, an increase of 19.4 percent year-on-year.

“The SIPO received 289,838 applications for invention in 2008?up 18.2 percent over the last year. Among them, 194,579 applications for invention were filed by Chinese applicants; a yearly increase of 27.1%. 95,259 applications for invention were filed by foreign applicants; a yearly increase of 3.4%.

“In 2008, totally 411,982 applications were granted, an increase of 17.1 percent year-on-year.”

China is quickly catching up to the United States in terms of the number of patent applications filed. They’re not there yet, but for a country whose IP protection has been nonexistent for millenia, they’re doing really very well. Patent protection (and trademark and copyright protection, too) represents a real shift in the Chinese people’s paradigm. The expression of ideas in China have been free for the taking forever; now, thanks to Western influence and market demand, the expression of ideas isn’t free for the taking anymore.

I visited the SIPO (the Chinese State Intellectual Property Office) website (http://www.sipo.gov.cn/sipo_English/) and learned that 2009 is the first time for Chinese Premier Wen Jiabao to give equal stress in his Government Work Report to the Three Strategies for China:

  • IP strategy
  • rejuvenation of China through science and education, and 
  • reinvigorating of China through human resources development . 

This equal stress on all three initiatives will further promote the development of China’s IP cause.

Thanks to Lynn for keeping me updated on the development of intellectual property in the country that covers 1/4 of the world’s land mass.

CAFC hands down its opinion in Tafas v. Doll rulemaking case

Posted on by Delain Law Office

Tafas et al. v. Doll was handed down from the US Court of Appeals for the Federal Circuit (CAFC) yesterday (to read this file, you will need Adobe’s Acrobat Reader).

This case came about when the USPTO decided a couple of years ago that it wants the patent applicant to take on the burden of patent searching, and threw in some rules limiting the number of total claims, the number of independent claims, and the number of requests for continuing examination that the patentee could make. This was interpreted by the bar as being about the USPTO being understaffed and overworked and trying to dig out from under its enormous backlog of patent applications.

Dr. Tafas, along with GlaxoSmithKline, took exception to the new rules and sued the USPTO in an action that claimed that the new rules went way, way beyond the USPTO’s rulemaking authority as granted by Congress. The case was heard in the US District Court for the Eastern District of Virginia (EDVA), which agreed with Tafas and enjoined the USPTO from enforcing its new rules on October 31, 2007 — the day before the new rules were to go into effect. The district court agreed with Tafas et al. that the Final Rules were “substantive rules that change existing law and alter the rights of applicants such as Tafas et al. under the Patent Act” and issued a summary judgment in favor of Tafas et al. The USPTO appealed the summary judgment to the CAFC, which holds exclusive jurisdiction over patent cases among the circuit appellate courts. Lots and lots of interested parties filed amicus briefs arguing one side or the other of this issue that is being carefully watched by patent practitioners.

Today, the CAFC handed down its decision on the appeal. They affirmed the EDVA’s rejection of Final Rule 78, which deals with the number of continuation applications that an applicant can file based on one parent application, but they overturned the lower court on the other rules and remanded the case to the EDVA for further proceedings.

This case is not over, but a couple of questions that have affected patent practice for the last two years have been answered.

  • Patent applicants are still entitled to file the number of requests for continued examination, without limitation, that are needed to prosecute the patent application to issuance or final, dead rejection;
  • Patent applicants must show valid reason for having more than 25 claims in a patent application, and more than three independent claims based on the prior art;
  • Patent applicants must now provide a search of the patent and non-patent literature with each patent application; and
  • Patent applicants must provide a detailed write-up in the specification explaining why the applicant believes the invention is patentable in the light of the prior art.

The new rules, that will doubtless go into effect soon, will change patent practice, in some cases dramatically but in other cases not so dramatically. It will be interesting to see how the case itself plays out.

The search requirement is interesting, to say the least, especially since under the new rules the applicant is now required to provide the USPTO with a detailed reasoning as to how the invention is patentable over the prior art (that’ll be interesting…). Until now, the USPTO has been responsible for the searching of literature that pertains to a patent application. Now, however, the patent applicant is required to help the USPTO along by providing a search and an analysis of that search in the patent application.

This is not as much of a boon to the patent searching industry as it may appear at first glance to be; patent searching is something that most sensible patent applicants do anyway, since it makes absolutely no sense to submit a patent application only to have the examiner find a prior-art reference that stands squarely in the way of the applied-for patent. A search avoids that, and has been common practice before the new rule went into effect. The difference now is that we must tell our clients that searching is required before a patent application can be submitted under this Tafas case.

This places a burden of requirement on applicants where none existed before (although common sense dictates that a patent search be done).

I’m watching to see how the rest of this case plays out. Meanwhile, watch out, World; here come the new rules!