The murky law of fair use

Weird Al doing a Michael Jackson song parody?

In our practice, we deal not only with the enforcement of intellectual property rights, but we also do a fair amount of defense of accused infringers. One of the surest ways of getting into an intellectual property dispute (aside from illegally downloading movies using

BitTorrent) is to make reference to, mention or otherwise utilize someone else’s intellectual property.

While this may seem obvious, it can creep up in the business context in unexpected ways. Generally speaking, business will cite that they are allowed to do their activities under the doctrine of “Fair Use.” Additionally, it is important to note that there is a difference in running afoul of the law and being embroiled in a conflict with another business. While a company’s actions may be justified legally, it may still find itself in a dispute which can cost a lot of money, time and resources.

Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

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A fool’s bargain: Part 2 – Think before you sue

(Editor’s note: This is the second of two parts. Read Part 1.)

In the first part of this article, I discussed what trademarks are, what they protect and what factors courts generally use to determine if a trademark has been infringed.  In this installment I will be discussing how courts have dealt with the rise of keyword advertising and the use of trademarks in keyword advertising.

Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

In the early days of the keyword advertising cases, the courts struggled with some threshold concepts, such as whether bidding on someone else’s trademark was a use in commerce. Some courts said yes, and some said no. After many years, everyone seems to agree that even though the consumer never sees the keyword bidding process, that the act of bidding on another’s trademark as a keyword is a use in commerce.

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A fool’s bargain: Part 1 – Should you sue over keyword advertising?

 

One thing is guaranteed; the law will always lag technology. That’s just the way it is. However, eventually the law catches up and usually comes up with the right result.

Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

 

Such is the case with paid search advertising such as Google Ad-words. In case you have been living under a rock for the past decade, paid search advertising is where a company purchases web-based advertising that is triggered by users typing certain keywords into a search engine.  When the user types in their query, the search engine will display the paid ads in addition to the organic search results. The ads generally contain a few lines of text and will have a link that directs you to the advertiser’s website.

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It’s not always best to follow the leader

Case in point: Twitter’s new IPA

A few months ago, I attended an intellectual property conference where the head IP counsel for Twitter discussed its new Innovator’s Patent Agreement, or IPA.

Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

A few of the panel members hailing from academic institutions were drooling over the IPA as a revolutionary new path for companies to take with regard to their employees and intellectual property rights. As I was not familiar with Twitter’s recent announcement, my immediate gut reaction was that the only good IPA is one in a frosty mug that is full of golden, hoppy goodness. Upon delving into the Twitter IPA, I have come to the conclusion that my initial assessment was correct — well, at least for most of us out there.

Twitter claims that the development of the IPA came about as a result of the need to recruit the best and brightest software developers. Since these individuals grew up in a time that movies and music were expected to be freely available on the Internet, the new generation of developers do not like patents and want more control over how their software innovations are used.

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Can you keep a secret? Resist the urge to blab about that new gadget

Sometimes keeping quiet about a new product, service or venture can be difficult. While it may be difficult to fight the urge to tell everyone on the street all about your new innovative process, formulation or gadget, it is wise for a business to take a bit of time and see whether the new innovation is protectable under one of the theories of intellectual property law.

Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

Some of the available protections such as trade secret require the business to take certain actions, or act in a certain way, and if not properly done, the protection under the law may be lost forever. In these cases we often discuss some of the more well-known intellectual property protections such as patents, copyrights and trademarks.

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Hey, that’s mine! The ins and outs of grey markets and the law

At some time or another, anyone who produces a product or commercializes a copyrightable work will inevitably run into the situation where you see your products being resold by someone that is not you or one of your direct distributors.

Oftentimes, this becomes an issue for a business because of the price at which the items are being sold (usually lower than the business would like) or possibly because of the bad reputation of the seller in question. Other times, it is a grey market situation where goods that were originally produced and sold in overseas markets make their way back to the United States.

The question my clients have is almost universally, “How do I stop this?” Generally speaking, the answer is that in the United States, it is either extremely difficult to stop it or you flat out cannot stop it at all, due to a theory of law called the Right of First Sale.

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The $64,000 Innovation Question

What do Yahoo, telecommuting and intellectual property legal services have in common?

At first glance, the popular answer may be “Absolutely nothing.” But those three seemingly unrelated topics might actually have a profound effect on your business and the quality of your intellectual property legal representation.

Peter writes a bimonthly column for ColoradoBiz Magazine

Yahoo made some waves last month by issuing an edict that it was discontinuing its telecommuting program.  While many in the techno press panned the decision as backward thinking, Yahoo’s rationale is actually quite interesting.  Yahoo’s reasoning was not based on efficiency, productivity or employee morale, it was based on innovation.

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Can I Patent That?

A question I frequently get from prospective clients is, “Is my invention patentable?” Variations on this inquiry include the following:

• “Can I patent an improvement to a device that is already available?”
• “Is it correct that in order for something to be patentable, it has to be at least 10 percent different than the known device from which it is derived?”
• “Can I get a patent on something that is already on the market, but I am using it in a new manner?”

The scope and breadth of what is patentable is very broad and wide. Chances are if your invention is useful, new (also referred to as “novel”) and not obvious, it is patentable.

Patents protect the rights of inventors to exclude others from making, using, offering for sale, or selling their invention throughout the United States or importing it for a specific period of time. Most people know this. But ask the same people what an invention is, and more often than not, the response will be much more narrow than is actually the case.

The prototypical invention is a completely new widget, tool or device that does something or accomplishes a task better (faster, easier or cheaper) than whatever was done before. In popular imagination, the likes of Thomas Edison remain the prototypical inventor: a person sitting in his lab, garage or workshop dreaming up ways to solve the world’s problems. Factually, however, the prototypical invention and the prototypical inventor are the exception rather than the rule.

Given the foregoing, perhaps the next question is: “What exactly is considered an ‘invention’?” You would think that this would be an easy inquiry to answer, but that would be wrong.

At its broadest according to Merriam-Webster, an invention is “something invented,” which requires us to look up the meaning of the verb “invent,” which is “to produce (as something useful) for the first time through the use of ingenious thinking and experiment.”

Putting this together, an invention is something new and useful invented by a person, and it can be anything from a new drug to a new medical device to a gardening tool to a manufacturing process to a musical composition. In other words, an invention may improve upon or create a new process, machine, device, product, result, function, discovery, art object—or even a genetically modified plant. Often times companies overlook patent protection because they do not consider the item or process an “invention.”

For example, even if the ultimate product is not patentable, the specific process, tool or machine that you use to make it is. If that process, tool or machine yields a product or result that is faster, cheaper or better than patenting the process, tool or machine may have enormous value to your company as you can prevent others from doing the same thing. This can give companies a competitive advantage in the marketplace, especially in mature industries.

If you think your invention is patentable, by all means protect it. Consult an attorney. The next step is to obtain a U.S. patent for your invention, which is the granting of a property right to the inventor(s), issued by the U.S. Patent and Trademark Office. Contrary to popular belief, new patents are issued all the time to ordinary people, just like you, with not-so-ordinary ideas.

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.

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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.