Take a look at our newest article in Co-Biz magazine about the most misunderstood aspect of intellectual property law – the Trade Secret.
http://www.cobizmag.com/articles/trade-secrets-lonely-and-misunderstood/#.TyFlSkKUte0.email
Do you or your business use independent software developers? If so here’s an important read about copyright law that affects you and your business.
http://www.cobizmag.com/articles/i-paid-for-it-so-i-own-it-right/
Check out our newest article about trademark bullies and how to deal with them at Colorado Biz Magazine!
http://www.cobizmag.com/articles/trademark-bullies/
Check out our article at Colorado Biz Magazine for the answer!
http://www.cobizmag.com/articles/is-a-win-always-a-win/
Yeah, yeah, I know what you are going to say: there are no snow storms in San Diego. Well, may be not now but this occurred before global warming. And I will admit my recollection might be a bit fuzzy.
The following is actually a post I wrote 6 long years ago back when the clocks ran slower and I had time to draft such long posts. I came across it this morning as I was reviewing old posts looking for inspiration for an online ColoradoBiz magazine article I am writing. Pete and I are going to be writing an Intellectual Property column twice a month for for the magazine’s online presence. Check them out at www.cobizmag.com and sign up for the FREE print magazine and the daily E-newsletter. Hey, our column alone will make it well worth the cost.
Enough with the plug, I decided to republish the post largely because we have been remiss in publishing anything in the last two weeks and this one seemed as good as any.
Here is the the post, which was originally entitled: Letting a Multi-Million Dollar Opportunity Slip Away!:
First off, this article is not what you think it is. In fact, it has absolutely nothing to do with intellectual property, patents or business law. Rather, this is less of an article and more of a story: a funny story that I can laugh about now but while it was happening, I was a bit terrified. And perhaps this is a bit of commentary concerning our litigious society. So enjoy…
Back in the late eighties and early nineties long before becoming an attorney, I was a composite materials engineer with Martin Marietta. During my five year tenure at Martin, I had the opportunity to travel to San Diego several times including once to attend the annual meetings of the Society for the Advancement of Material and Process Engineering (SAMPE) at the then new convention center. I was fortunate to have a room in the hotel right next to the convention center. The hotel is currently a Marriott but I don’t remember if it was a Marriot then. Here is a link with pictures of the hotel. I was given a room near the top of the high rise with a very nice bay view.
Anyhow, one evening I came back to my room after the conference sessions had ended and decided to snap a few shots of the bay at sunset. Since it was getting dark, I took a cheap inexpensive tripod I had packed onto the balcony with me to hold my camera steady for the long exposure shots. It was a bit nippy (around 55 degrees or so) but since I was going to be outside a mere 5 minutes or so I didn’t bother with a jacket.
I shot a few pictures, decided the lighting or composition wasn’t that interesting and decided to return to the warmth of my room rather than waste anymore film. I turned to open the sliding glass door and guess what, it wouldn’t open. It had become locked! I was locked out on the balcony at 150-200 feet above the ground! Ok, some of you are wondering why in hell I closed the door in the first place. Yeah, I was wondering that then as well as: I guess I was trying to conserve energy. And it seemed almost immediately after I couldn’t open the door that the temperature dropped another 5-10 degrees, although that may have been me.
Apparently, the latch was loose and slid downwardly when I closed the door behind me. Anyhow, my frantic jiggling of the door probably only made the latch more secure. Why in hell do they need locks on balconies 15 or more stories above the ground anyway!
I looked over to the rooms to the left and right of me and they were dark. Perhaps their doors were unlocked but because of the way the balconies were recessed into the building’s exterior, there was no way to climb to them without risking a life-ending slip.
I looked below and saw a number of people milling about the entry to the hotel. “Help, Help, I am locked on the Balcony!” No one heard me! They just kept going about there business. The temperature seemed to drop even further and I thought I saw snow. People have told me since that it doesn’t snow in April (or ever) in San Diego but I swear I saw it.
Again, I looked at the neighboring rooms. Their lights were still out! What if those rooms were empty? There was a small gap between the edge of the balcony and the wall of the room where I peeped down at the room below me. Its light was also out!
As a rare once in a millennium April ice storm descended on San Diego, I was trapped on the balcony hundreds of feet above the ground. Could I last the night, I wondered. As I buttoned the top button on my polo shirt, it hit me: I could break the glass on the sliding glass door and gain entry to my room, warmth and safety. But the glass seemed rather thick and how could I break it. And if I did, would the hotel charge me for the damage. They shouldn’t I thought since the locking door was their fault. If I broke it, would shards of glass descend upon me? After all to break the thick seemingly bullet-proof glass, I would have to lie on my back and slam the bottoms of my shoes into the glass. The risk of a large piece of the pane falling downwardly at my legs and chopping them off seemed all too real. I decided to wait a little while longer.
And then I realized I was hungry too! I had not eaten dinner yet! The darkness enveloped me. As drifts of snow began to form next to where I was seated on the frozen concrete balcony floor, a beam of warm inviting light shot up from the room below indicating the source of my salvation. The occupants were home. Hallelujah! At first I yelled at them through the small gap between the balcony floor and the room wall but they did not hear. Perhaps, I was not to be rescued after all.
In harrowing and difficult circumstances, people have the ability to rise to an occasion to save themselves or those around them. An epiphany came to me at that moment as I hit bottom: take the tripod; stick it through the gap; and tap on the door below. I don’t know how I summoned the strength but I crawled over to a drift of snow and dug out the tripod from where it had been buried cutting my frost bitten hands on shards of ice. I lowered the tripod and I tapped it. I tapped it with every ounce of strength in my worn and ravaged body.
And the door opened. I was saved!
Very soon after, hotel personnel opened the sliding glass door and pulled me to safety. I was just glad to have survived those never ending 15 minutes exposed to the elements. Miraculously, The clouds outside blew away, the snow and sleet stopped and the air temperature warmed to about 60 degrees. Grateful, I thanked my rescuers and went out to a nice seafood dinner.
What made me recall this difficult and trying time that I had all but blocked from my memory? Recently, a person in Colorado filed suit against Home Depot for being glued to a toilet seat in the store’s bathroom further claiming that Home Depot’s employees did not respond quickly enough. And what does this victim claim the waiting (about 15 minutes), the humiliation, and the suffering worth to him: 3 million dollars. Some commentators and media personnel have wondered whether the whole thing is a hoax. I just can’t figure out how one would become glued to foreign toilet seat in the first place. Who in their right mind sits on a toilet seat in a store restroom without looking first! Shouldn’t he have seen the glue? And given background as a materials engineer, I cannot think of an adhesive that would remain tacky for any significant period of time and then set immediately when coming into contact with an ass.
Anyhow, what if I had sued the hotel because the latch on the balcony door was defective? If a butt glued to a toilet seat is worth three million what would my experience be worth: 100 million or more? Instead of being a humble patent attorney writing this blog article, I could have been sunning on my personal south pacific island. But truth be told, I never considered suing. It didn’t even cross my mind until yesterday.
And to attorneys that wonder why our profession has such a bad reputation; I present to you as exhibit A the attorney representing the aforementioned Coloradan.
Most of our Blog posts to date have not been self serving but the foregoing is a question we hear regularly and I can’t think of a better forum to address this question. Truth be told, picking a good patent lawyer and intellectual property law firm can be a very difficult task and is not one that should be entered into lightly. But why should you choose us over the competition? There are many reasons and in the next week or so I will discuss them in a series of blog posts.
Check back in the next few days or so for additional reasons in parts 2 & 3, and perhaps, even part 4.
How many small businesses and individual inventors are ready to commercialize their inventions immediately after their patent application is filed? The answer is, not many. Quite often, such folks need to obtain more capital, develop a viable business plan, etc. They may have achieved the status of “Patent Pending”, but still do not know whether their invention is in fact patentable, and would like to not be spending a lot more money in the patent-prosecution process until they are on better business footing. For many entrepreneurs, filing a Patent Cooperation Treaty (PCT) application from the start, in lieu of a US patent application, can provide a strategic way to give some temporal and financial monetary breathing room.
When inventors initially file a US patent application, they realize the significant commitment of time and money to prepare and file the patent application. Unfortunately, when the US patent application is actually reviewed by a Patent Examiner, the “patent-prosecution” phase of the patent application starts, and virtually all utility patent applications are subjected to at least one round of patent-claim rejections. Overcoming such rejections costs money. Many inventors would prefer to put off the “pain” of such prosecution costs as long as possible until such inventors have a chance to:
• Further develop and refine their invention;
• Figure out whether their invention will have commercial legs, and in which countries patent protection would be beneficial and viable;
• Figure out whether their invention can attract investment capital;
• Try to save/obtain more capital in preparation for the eventual patent-prosecution phase; and/or
• Try to establish a market beach-head by trading on the inventors’ “Patent Pending” status, and giving potential competitors “cause for pause” based on that status (even if the inventor(s) do not think that their chances of actually obtaining broad-based patent coverage are very good).
The PCT allows an inventor to delay the entry into the “National Stage” of any of the member countries (which then begins the patent-prosecution phase) for a minimum of 30 months after the inventor’s priority filing date. Some foreign countries, such as Canada, allow even longer delays.
Conversely, if an inventor files a US non-provisional patent application, then in some technology areas, he or she can expect to receive an Office Action detailing Examiner rejections within about 18 months — occasionally even sooner. (However, in some technology areas representing a huge backlog within the United States Patent and Trademark Office (USPTO), such as software, a first Office Action might not arrive for 2-1/2 to 3 years!) Adding roughly 18 months on top of 30 months means that an inventor can strategically delay the US patent-prosecution phase for nearly four years. This may be particularly desirable to businesses whose main goal is to be “Patent Pending” for as long as possible. In addition, sometimes evidence of great commercial success can help overcome certain rejections, based on supposed “obviousness”. Delaying the patent-prosecution phase might give a business a chance to establish a sales and/or licensing track record while they wait.
Over the past year or two , Leyendecker & Lemire has seen a huge rise in potential clients coming to us regarding lawsuits regarding illegal downloading of movies. In the past two years there have been several prominent lawsuits filed against thousands of alleged infringers. In fact, a company called the US Copyright Group (“USCG”) has built a business of approaching independent film makers (usually films that have won OSCARS®) to allow USCG to enforce the rights on the film makers behalf. I suspect there is a sharing agreement based on whatever USCG is able to collect from potential infringers. Anyway, USCG files lawsuits with thousands of “John Doe” defendants, which are placeholders for people that have certain IP addresses that illegally download the movie through bit torrent sites. USCG then subpoenas the ISP and gets the individuals identity. Once they have the identity, they send a demand letter to the individual requesting thousands of dollars or the individual will be served in the lawsuit and face an award up to $150,000.00. The two main movies we see this for is the Hurt Locker and Far Cry. While some recent developments have potentially limited companies like USCG’s ability to sue thousands of defendants from various states in one lawsuit, there is still may be a threat that they could file against large groups of people in the state that they reside and this issue will be one that will continue into the near future.
There are usually two different categories the individuals that receive these notices 1) those that intentionally downloaded the materials and 2) those that have no earthly idea how they are involved in the situation. The latter group is composed of parents with children, people with roommates and those with unsecured wireless routers. Unfortunately these potentially innocent people are now unwittingly part of a mass shakedown that leverages the legal system. In my opinion USCG’s business model strategically prices its “settlements” at a point that is a pretty big hit for the alleged infringer, but cheap enough that it doesn’t make economic sense to fight it in court. Therefore, it makes economic sense for individuals to fork over thousands of dollars even if they haven’t done anything wrong. This is especially true in the case of an unsecured wireless broadband router. Many people don’t realize that when they purchase a wireless broadband router that its default configuration is set to have the security features disabled. Therefore, anyone that receives the wireless signal can log on and surf the web using your broadband connection – your next door neighbor, the person that live above or below you in an apartment complex or someone sitting in their car outside your residence with a smart phone or laptop. Moreover, your IP address is associated with everything that the individual does while they are on-line. Furthermore, since the demand letters often come more than 4 months after the movie was downloaded, figuring out who did it can often be hard as most consumer routers do not keep their audit logs for long, so any evidence that could help prove your innocence and get you out of the suit quickly is likely to be long gone. Therefore you are left with the choice to either pay the settlement or pay even more in legal fees to defend the suit. A much scarier scenario is if the 3rd party is utilizing your IP address to attempt to hack networks or download child pornography. In that case you could have law enforcement knocking at your door.
So the big takeaway: Be sure to enable the security features of your wireless broadband router. If you don’t know how, find someone trustworthy to help you out. Otherwise you could be headed for a whole host of legal problems.
Policing how your trademark or business name appears on the Internet is important to insure it is being displayed in the manner you want. Even if your business’s online presence is minimal, recent changes in how generic top-level domain (“gTLD”) names are assigned could have significant impact on your company. These changes will affect how your mark may appear on the Internet and what tools are available to protect yourself.
To understand the changes, it may help first to understand the terminology: A top-level domain (TLD) is a domain at the highest level in the hierarchical designation of website names. For example, “.com “is TLD, as are .gov and .edu. There are different types of top-level domains. Generic top-level domains, or gTLDs, are a distinct group of top-level domains that do not have a country affiliation and are not sponsored by a particular organization. GTLDs include .com, .info, .net and .org, while sponsored TLDs (“sTLD”) include .mil, .gov and .edu. Management of most top-level domains is handled by the Internet Corporation for Assigned Names and Numbers (ICANN).
In March ICANN approved a new sTLD: .xxx. Further, in June ICANN announced its approval to expand the number of gTLDs available. Following this announcement, the limited number of TLDs will become as quaint as the idea of having only three TV channels. As the owner of a business and/or a trademark, it is important to be aware of how your mark may be used or infringed upon by these new developments.
With the creation of the .xxx sTLD, businesses in the adult entertainment industry will begin acquiring new domain names which have not been previously available. The .xxx domain, registration will begin this fall for new addresses, such as www.acme.xxx. While this particular domain has been designed solely for the use of the adult entertainment industry, its creation presents an expansion of the possible websites that have similar names to your own. You may be aware of domain names that are similar to yours within the TLDs of .com or .net, but you will now have to be aware of those with xxx. Simply searching for your business might take an Internet user to a website you would rather not have your business affiliated with. ( Just as this happened with sites early on in website creation, such as XYZcompanysucks.com, there are companies that will quickly take advantage of this expansion, and purchase domain names such as XYZCompany.xxx. ) To prevent your mark or business from being associated with this industry, or infringed by a new registration on this domain, there are several steps to take and tools too use:
Register your Trademark with ICM
ICM, the registry that has contracted with ICANN, has set up a tiered registration period that allows for different “classes” of registration. Concurrently running, Sunrise A and Sunrise B registration opened on September 7, 2011 and remain open for fifty-two days. Sunrise A is for “Members of the Sponsored Community” (online adult entertainment industry participants and those supplying products or services to that industry) and Sunrise B is for non-members wishing to block the use of their intellectual property. These non-members may submit an application to block their trademarks from xxx. At the close of the Sunrise Period, if no conflicting application by a Sunrise A has been filed, these names will be reserved from registration (blocked).
Disputes over intellectual property rights issues will be handled by the rapid evaluation service (“RES”). ICM has also instituted the Charter Eligibility Dispute Resolution Policy (CEDRP). Additionally a trademark holder can proceed under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP).
Conclusion
With the creation of the .xxx sTLD, many businesses in the adult entertainment industry will be seeking to expand their online presence. Such expansion could potentially put your trademark in danger of being infringed upon. It is essential for a small business owner and/or a trademark owner to stay informed as to the risks inherent in this change, and the mitigation measures available to them. Stay tuned to this blog for further discussion on the, I will ramifications for businesses from ICANN’s expansion of gTLDs.
On Wednesday, September 14th 2011 from 10am-12pm on KHOW (630 on the AM dial), I will be appearing on the Tom Martino show to discuss with him changes in the patent laws as a result of the Leahy-Smith America Invents Act that will be signed into law any day now.
Please tune in if you have the chance or if you are reading this after the fact listen or download the podcast at http://www.khow.com/cc-common/podcast/single_page.html?podcast=fullshow_martino.
Peter Lemire will be joining us as well and as is the case anytime we appear on the Tom Martino show, calls from inventors, artists, entrepreneurs and other creative types are welcome with questions on anything related to Intellectual Property Law including copyrights, trademarks and trade secrets in addition to patents.