Intellectual Property

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Recent court decisions show that patent infringement opinions are still important for any person or entity that becomes aware of a United States patent that is similar to their products, methods or processes.

Under federal patent law, anyone who either makes, uses, offers to sell, or sells any patented invention in the United States or actively induces another to do so is liable for patent infringement.  In addition to regular damages, courts may award up to three times the damages for willful infringement.  Under the 1983 Underwater Devices Inc. v. Morrison-Knudsen Co. opinion, if a party had actual notice of another person’s patent rights, then that party had an affirmative duty to exercise due care to determine whether that party was infringing those patent rights.  This affirmative duty included the duty to obtain patent infringement opinions prior to engaging in any potentially infringing activities.Continue Reading Patent Infringement Opinions Continue To Be Important

Beginning at 12:01 a.m. (Eastern Standard Time), on Saturday, June 13, 2009, members of the social networking website, Facebook, will be able to claim usernames to associate with their Facebook accounts and Facebook pages. This will allow Facebook pages to be accessed by using a url such as, http://www.facebook.com/unitedairlines, or something similar.

Facebook is…

As we continue our shift to a more knowledge-based economy, frequently the greatest assets of a company reside in the creativity of its employees. This is especially true for service companies in which the services can be repeated for multiple customers (example: software). Whether or not a company owns something that has been created by one of its employees will depend to a great extent on the category of intellectual property into which the creation is classified. Generally, the creations or discoveries of employees will fall into the intellectual property categories of copyright, patent, or trade secret.
Continue Reading Great Ideas by Employees – Who Owns Them?

“Someone is using my photos and website design on the internet without permission. What can I do?” These questions arise more and more with the increased use of the internet in business. The technical answer is that you have a potential claim for copyright infringement. Filing a federal lawsuit under the Copyright Act, however, is not a realistic option for many businesses, particularly when monetary damages may not be at issue. The goods news is that with the enactment of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C 512, victims of internet copyright infringement now have a more practical option for achieving the desired result – removing the infringing material from the internet – without filing a lawsuit.
Continue Reading Stopping Internet Copyright Infringement Short of Filing Suit

A jury in California issued a $6 million verdict against SLB Toys USA, Inc. (also known as ToyQuest) in favor of Wham-O, Inc., the manufacturer of the famous backyard yard toy, the Slip ‘N Slide. Wham-O owns two registrations for design marks for water slides which include the color yellow as part of the registration. Wham-O claimed that its famous yellow water slide has become an instantly recognizable iconic symbol of summer fun, and is famous among both children and adults.
Continue Reading Jury Sides with the Wham-O Slip ‘N Slide

On April 23, 2006, Twentieth Century Fox Film Corporation aired an episode of “Family Guy” entitled “Peterotica.” In this episode, Peter Griffin, who was an Archie Bunker-like character, enters a porn shop with his friends and comments that the porn shop is cleaner than he expected. One of Peter’s friends explains that Carol Burnett works part-time as a janitor. At this point, an animated character resembling the “Charwoman” from the Carol Burnett Show appears mopping the floor near several blow-up dolls and a rack of “XXX” movies. At this point, a slightly modified version of Carol Burnett’s theme song is playing in the background. One of Peter’s friends remarks, “You know, when she tugged her ear at the end of the show, she was really saying good night to her mom.” Another friend responded, “I wonder what she tugged to say good night to her dad?”
Continue Reading Carol Burnett Action Tossed Based On Fair Use

The purpose of due diligence in the acquisition of licensing of intellectual property assets (namely patents and copyrights) is to give a buyer an opportunity to investigate and evaluate the asset concerned in some detail. More particularly, due diligence involving patens and copyrights can present ownership issues if the author/inventor is or was married and resides in a community property state. Whatever level of diligence is required for the particular transaction, the buyer should consider inquiring as to the current and past marital status of the inventor/author of the intellectual property if the inventor/author is either the seller; a direct owner of the seller; or in some cases, even a past owner of the intellectual property.
Continue Reading Intellectual Property Due Diligence In a Community Property State

The Fifth Circuit recently addressed the issue of copyright ownership in its unreported decision in Pritchett v. Pound, civil action 05-41445 (5th Cir. 2005). In 1981 Ronald Pound was hired by Pritchett, L.P., a business consulting firm founded by E. Price Pritchett. The employment contract provided that he was responsible for “completing regular written assignments and development of new products and procedures.”   It also stated that, “[s]hould the Employee produce any written materials in the course of his work with the Employer, then such shall be done for and on behalf of Employer and all work produced shall be the exclusive property of the Employer.”
Continue Reading FIFTH CIRCUIT ADDRESSES COPYRIGHT OWNERSHIP

The Dilution Statute was enacted as part of the Lanham Act in 1996. The Dilution Statute provides in 15 U.S.C. §1125(c) that the owner of a famous mark shall be entitled to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use causes dilution of the distinctive quality of the mark and to obtain such other relief as provided in this subsection. The courts have been wrestling with the meaning of the terms in the Statute since that time.

On October 6, 2006, President Bush signed the Trademark Dilution Act of 2006 into law to further refine the applicability of the Statute and clarify many of the legal issues. Many of the provisions of the Act are important to note.

First, the Act retitles the cause of action to be for Dilution by Blurring and Dilution by Tarnishment. Presumably, this eliminates the possibility of another basis for claiming dilution. Blurring is defined as an association arising from the similarity between a mark and a famous mark that impairs the distinctiveness of the famous mark. Tarnishment is defined as an association that harms the famous mark’s reputation.Continue Reading PRESIDENT BUSH SIGNS TRADEMARK REVISION ACT OF 2006

eBay is in litigation with a small company that claims that its patents cover the online auction method used by eBay. Blackberry users were a judge’s pen stroke away from an injunction that would have stopped all Blackberry use in the U.S. In that case, the patent owner, again a small company, claimed that the famous Star Trek type devices infringed the company’s patent. These patents might have been detected during a patent search, if eBay or Blackberry undertook such searches. This article will discuss each type of patent search, the cost, and the purpose.

Patentability Searches

Suppose your company develops a new product that appears to be innovative. You would like to obtain a patent if it is feasible. Before spending the money for a patent application (the initial filing cost could range from $8000 to $20,000), it may be wise to conduct a patentability search. The purpose of this search is to look through the issued patents and published patent applications at the U.S. Patent & Trademark Office (PTO) to find those patents which are relevant to the invention. Once you know of the existing patents, known as the prior art, you can make a better determination of your chances at obtaining a commercially viable patent. A patentability search and report can range from $500 to $2500, depending on (1) the complexity of the technology and (2) whether the results are reported in a formal opinion or are merely discussed in a meeting.Continue Reading Patent Searching