Got content for kids? You better get to know the new COPPA

If you say “COPPA” to somebody who works in the business of providing online content to kids, they will instantly know exactly what you are talking about, and it might cause them to have a panic attack. Due to regulations promulgated by the FTC this past December, many more business owners will need to become familiar with the law, the associated regulations and their requirements.

The Child Online Privacy Protection Act (“COPPA”) was passed in 1998. The purpose of the bill was to regulate how online businesses collected and used personal information of children under age 13. The act sets forth requirements for what must be disclosed in privacy policies and mandates that covered businesses seek verified consent from parents prior to obtaining any information from children under 13 years of age.

Read more at ColoradoBiz Magazine

File that Patent! Time is Running Out

Do you or your company have a product or process that you’ve been developing for some time but have yet to patent? If so, a new law could considerably affect your ability to patent.

In 2011, Congress passed the America Invents Act (AIA), with the provisions of the act to be amended over time.  The most significant provision takes effect on March 16, switching the U.S. patent system from a first to invent paradigm to a first to file paradigm. This change brings U.S. patent laws in this regard in line with those of almost every other industrialized nation.

Under the old paradigm, the pertinent consideration in awarding a patent to one person over another was when the inventor first conceived of his or her invention. Conception of an invention occurs the first time an inventor mentally envisions the invention: in other words, the “ah ha” moment. At this moment, the inventor might not know exactly how the invention will work or be implemented, but the invention is formulated in her mind to a sufficient degree. It is considered a sufficient degree if the details of the invention can be disclosed to someone of at least average skill in the particular field to which the invention pertains, and this person could, through the development process, make or implement the invention.

After conception, an inventor is required to reduce the invention to practice. This can be accomplished in one of two ways: by actually making or implementing the invention or by filing a patent application. Providing the inventor is diligent in developing the invention from conception through reduction to practice and files a patent application, she will be awarded a patent over co-pending applications by inventors who later conceived of a similar invention. The foregoing is the case even if the other inventors actually filed a patent application first.

All this changes on March 16, when only the inventor who first files a patent application on a particular invention will be eligible for a patent. If you file your application on March 17, it will not matter at all that you have been working on the invention diligently for years. Rather, someone else who first conceived of the same invention independently of you only a month ago, but files a patent application before you on March 16, will be awarded the patent.

The new first to file paradigm will change the inventing process in the United States. For instance, in my firm’s practice, we will be recommending that clients file patent applications sooner rather than later, even if there are a few bugs to be worked out in a particular invention. In the past we often recommended the inventor perfect his invention before filing, since the filing date was not wholly determinative of patent priority. If the invention changes after the application is filed, an additional sibling application can be filed to incorporate any new or different features. Inventors will also be encouraged to more quickly reduce an invention to practice, compressing development times as much as possible.

For smaller companies and independent inventors, the new paradigm may prove more costly, requiring more resources to be expended on development and requiring filing of additional patent applications as a new product morphs into a final design during development. Certainly, these changes favor larger entities with substantial product development and legal budgets.  However, large companies are also often bureaucratic in nature and take longer than they should to accomplish even the most sensible tasks, so their new-found advantage may not be fully realized.

Nevertheless, this column is a call to action for any company or individual that has a product or process that they have been developing for some time to consider filing a patent application on the invention before March 16, thereby preserving first to invent status for the invention.

As the lead times in drafting a patent application can be significant, the sooner you discuss your situation with a competent patent attorney the better. Filing before March 16 instead of after could make all the difference in whether you can ultimately receive patent protection.

Revenge of the prom dress: Fashion Wars episode 100,001

Over the years, our firm has represented numerous apparel companies with regard to intellectual property matters, and we have observed many of the difficulties these companies face in protecting the value of their designs. The interesting aspect facing apparel companies is that often times the “low brow” fashion of graphic T-shirts and sneakers are more protectable than the “high brow,” haute-couture fashions of world-famous designers.

Apparel companies are a good example of where two different theories of intellectual property protection come together and, to some extent, overlap. When applied to an apparel company, the two main forms of protection we are talking about are trademarks and copyrights.

Read more at ColoradoBiz Magazine

Does Tim own Tebowing?

And does this mean you can’t do it any more?

Has a trademark taken Tebowing off the table?

The short answer: No. Neither Tim Tebow nor any business entity with which he is involved owns a trademark on his signature move.

Interestingly, headlines just a week or so ago may have indicated otherwise. The opening line of the widely carried AP story reads, “Dropping to a knee like Tim Tebow might cost you now.” And an article on Yahoo Sports proclaimed, “We can argue that the intention of prayer shouldn’t be a copyrighted exercise, but Tebow’s legal and business acolytes would clearly disagree.” That particular author went on to write, “Genuine gesture or patent offense? The latter, we suppose.”

This kind of misreporting as it pertains to trademark law frustrates intellectual property attorneys, though maybe it shouldn’t. So long as lay people don’t understand intellectual property law and don’t know the difference between trademarks, patents and copyrights, my job is safe. And having a safe job in this economy is nothing to scoff at.

However, let’s set the record straight.

Tim Tebow’s marketing company XV Enterprises LLC, filed a number of trademark applications last year to protect use of the word, “Tebowing” to identify a number of products.  The application pertaining to the use of the mark to identify hats, shirts and t-shirts has been approved by the United States Trademark Office, and barring some unforeseen event, should issue in the next month or two. Once issued, selling t-shirts under the Tebowing name by anyone but Tebow himself will be infringement of a federally registered trademark.

Trademarks protect words and logos, often referred to as brand names, used to identify a product or a commercial service. They exist to prevent unscrupulous parties from trading off on the goodwill associated with a particular product or service as developed by another company.   Imagine if there were no trademarks and every soft drink company was able to call their cola, Coco Cola, and package it in the same manner as the real thing. When you went to buy a Coke, you wouldn’t be able to ascertain whether or not the cola on the shelf was the drink you know and love or some foul tasting knock off. Thankfully, because of trademarks, when you want a Coke and you buy a Coke, you can rest assured that it is a Coke.

Trademarks do not and cannot lock up the rights to non-commercial expression. They can’t prevent someone from selling a particular product or offering a particular service. They can only prevent people from using a particular name or logo to identify a product or service. Copyrights on the other hand can protect expression, but only an expression that is fixed in a tangible medium.

The act of Tebowing is not fixed in a tangible medium just as your strumming of Stairway to Heaven as you attempted to play the guitar so many years ago was not an infringement of Led Zepplin’s copyright. The act of Tebowing isn’t protectable by patent either, which requires a patentable method to be useful and have a tangible non-abstract result. While those partaking in Tebowing might take exception to any determination that the act is not useful, patent law is interpreted in relation to our physical existence and not benefits received or felt ethereally.

The moral of the story?  When you buy that Tebowing baseball cap, you can rest assured it’s backed by the original Tebower himself. And if this makes you want to fall down on one knee in prayer, feel free, because no one is going to stop you.

Kurt Leyendecker is a founding member of the intellectual property law boutique, Leyendecker & Lemire. Leyendecker & Lemire specialize in patents, trademarks and related complex civil litigation. Kurt Leyendecker can be reached directly at 303.768.0123 or kurt@coloradoiplaw.com.

 

The Perils of Employee Classification

An ounce of prevention and all that…

One of the battles employment attorneys constantly struggle with is raising
awareness about the consequences of misclassifying workers that are technically
employees as independent contractors. While these attorneys are concerned about
possible penalties from the government or lawsuits from employees, IP attorneys
are concerned with a possibly more serious issue – who owns potential “crown
jewel” assets of the company.

Read more at ColoradoBiz Magazine

The perils of public-generated content

There is a well-known phrase known to businesses relying on the internet to help drive marketing and sales: “Content is king.”

That phrase has expanded, in the wake of businesses turning to Facebook and YouTube and in the development and use of better consumer digital cameras and video. That new and improved phrase is this: “User-generated content is king.” Soliciting user-generated content (UGC) is often an attractive marketing strategy: It engages customers and cultivates much-desired online content for a business all at the same time.

Read more at ColoradoBiz Magazine

Avoidance: Understandable, but Often Painful

This is about pain — the avoidable kind.

Lawyers can get a bad rap for shark-ism and sometimes, that’s fair. In this case, however, the pain is shared across the board, by both the lawyers and the clients. No one, including a hard-working and ethical attorney, likes seeing people have to spend blood, time and money on heartbreak and angst that is fairly easy and cheap to avoid.

Our firm has been involved in a number of litigations that were very costly to our clients, but which could have been avoided. For the most part, those costs could have been side-stepped if the clients had engaged an IP attorney to help them set up intellectual property policies and procedures; properly protect the intellectual property (IP); and clearly define ownership.

Human nature being what it is and cash always being tight in a young growing company, non-essential tasks and expenditures are often put off as more pressing fires are fought. This short-sightedness, however, can come back to haunt. It can be painful to witness.

The math is simple: An IP attorney review of website content may cost up to $1000, depending on its size. However, if one or more third-party photos are found on the site, an expensive five- or six-figure copyright infringement settlement could be immediately eliminated.

Moreover, seeking the blessing of an IP attorney and filing for trademark registration before settling on a brand for a new product or service might set an enterprise back less than a couple thousand dollars, but could save hundreds of thousands of dollars in litigation when, for example, a well-heeled competitor decides the brand is too close to one of theirs.

Registering copyrights for important materials and images typically cost a few hundred dollars each. It’s money well spent. Doing so can deter competitors from copying all or in part of the fruits of a business’ hard work and expenditures. Infringement could cost $150,000 per instance in statutory damages.

A business that institutes and follows a trade secrets policy that includes non-compete agreements with key employees might cost a few grand, all said and done. However, instituting a trade-secrets policy could prevent employees from being able to take specific knowledge learned while employed to a competitor. Not doing so, can cause a business to lose a competitive advantage worth hundreds of thousands if not millions of dollars over time.

Having clear and concise intellectual property clauses drafted for use in contracts with third party contractors sets an organization back a few saw bucks. Alternatively, the matter often ends up in federal court as the business and the contractor both claim ownership to a valuable piece of IP. If lucky, the experience will settle before trial and a company may only be out a $100,000 or so.

Many a wise business owner understands these warnings, but immediate demands call out.  The phone rings or a colleague comes into the office, or a deliverable needs immediate attention. Several years later, a complaint and the prospect of spending hundreds of thousands of dollars defending the company in court presents itself.

Sometimes an ounce of prevention truly is world’s better than a cure. No one likes to watch money eaten up after-the-fact on avoidable circumstances. IP protective measures can and often are an easy and preventative business strategy — and the truth is that everyone, including good lawyers, feel better about that.

Kurt Leyendecker is a founding member of the intellectual property law boutique, Leyendecker & Lemire. Leyendecker & Lemire specialize in patents, trademarks and related complex civil litigation. Kurt Leyendecker can be reached directly at 303.768.0123 or kurt@coloradoiplaw.com. Visit www.coloradoiplaw.com for further information, including Leyendecker & Lemire’s weekly blog, “Control, Protect & Leverage.” 

Caution: You’ve been hacked—and sued

The newest legal challenge on the horizon for businesses may be the rise of what is known as “The Copyright Troll.”  Copyright Trolls are generally companies formed by attorneys whose sole purpose is to secure the enforcement rights from content providers (usually movies) and then find infringers (using a special software) — wherein those same attorneys sue the infringers in federal district court.

Simply put, these lawyers build a list of people who illegally download things like movies or photographs and when they’ve built a list, they sue them all on behalf of the movie maker.

Read more at Colorado Biz Magazine.

Moving on up – and out

Some of you may have noticed that our firm has not published a new column in a few weeks now. The reason for this is that we were engaged in a Major Office Move.  You know the kind: anguished over for months, thought about repeatedly at 3 a.m. and again at 6 a.m. and over dinner with your spouse. But our move was inevitable. The firm has grown and along with that, we had outgrown our old office suite in more ways than one. In addition to simply needing much more space, we also wanted to be in offices that better reflected the firm’s character and personality.

This is, technically, our third space in the company’s history and we have been able to learn from our past experiences and plan for the future. For example, we learned that as you add attorneys to your staff, those attorneys tend to schedule meetings with clients and prospective clients. Also, if you have multiple meetings back-to-back and your main lobby is the size of a British phone booth, things will get crowded and look like I-25 prior to T-REX.

Generally speaking, this is not good for business.

Read more at Colorado Business Magazine.

Clash of the tax and retail titans

Since I counsel a lot of online businesses, including online retailers, I am often asked about the sales tax implications of online sales. Generally speaking, the answer is pretty easy: If you are a Colorado business and sell goods to individuals residing in Colorado, then you have to collect Colorado sales tax and the appropriate county and city taxes from the consumers and remit the sales tax to the appropriate taxing authority.

Technically speaking, Colorado consumers are supposed to report and calculate the value of goods purchased from out-of-state business and pay the state government the appropriate tax. Of course, no one does this, and the state has no way of knowing how much each taxpayer purchases and how much tax is owed.

Read more at ColoradoBiz Magazine