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When students prove the experts wrong

Cool discoveries and inventions can result from science fair projects

By Kurt Leyendecker

Invention often results from someone doing what the conventional wisdom of those “in the know” understand as being impossible or improbable. Just as knowledge and experience can provide the insight for advancement, it can also hinder advancement, causing avenues of study and experimentation to be overlooked or avoided. Sometimes, genius is demonstrated by those that are just too stupid to realize the folly of examining ideas and questions overlooked by the intellectuals in a particular field or endeavor.

On Feb. 17-18, the Denver Metro Regional Science and Engineering Fair will be held on the University of Colorado Denver campus. For two days, aspiring scientists and engineers from grades 6-12 will present their research and findings in a slew of scientific categories. Those that do well at the regional fair will be invited to the state fair, and those that excel at state will be invited to the national fair.

Interesting discoveries and inventions can result from science fair projects.  Middle and high school students often don’t have the depth of knowledge and experience to realize their hypothesis and suppositions are unlikely to be borne out and will likely result in failure. Sometimes, perhaps more often than one might think, the students prove the experts wrong.

My daughter is attending the fair for the first time this year, having prepared her science project as part of her high school biology class. It took her some time to come up with an area of study and her project. I made several suggestions that related to areas of my engineering expertise and experience.

Before becoming a lawyer, I received a degree in metallurgical engineering, and practiced materials engineering for many years with an aerospace firm located in the Denver metro area. One of my areas of expertise was adhesive materials (or “glue”). My daughter ultimately decided to focus her project around surgical adhesives and a specific area of improvement thereof.

Upon hearing of my daughter’s project, I was understandably skeptical. I knew enough about the chemistry of the adhesive and the nature of the additives she was investigating to realize she was almost certainly doomed to failure: The adhesive and the additive once mixed would not have a sufficient pot life to permit its application. Nevertheless, a science project is as much about the process as it is the results, so I laid low as she pursued her idea and offered my supposed sage advice now and then as she proceeded.

As you might expect, given my introductory paragraph, I turned out to be wrong. Based on my daughter’s initial testing, her modified surgical adhesive turned out to be just as strong, if not stronger, than the base adhesive. Most importantly, it resulted in a significant reduction in bacterial growth on the biomatter substrate in the region of the modified adhesive’s application when compared to the base adhesive control.

Sometimes conventional and learned wisdom is improved by a youthful exuberance and desire to try something new. And while I can’t predict whether my daughter’s discovery and modified surgical adhesive will ever mature into something adopted by medical care facilities, sometimes bucking the prevailing trend, going against the grain, or taking a side road may just result in something extraordinary that has the potential to change the world.

If you want to know more about the Denver Science Fair, visit their website at www.denversciencefair.com. And if you have the time, you might want to attend and see what our future scientists, engineers, inventors, innovators, business-people and entrepreneurs are up to. Who knows – you may even meet a future Steve Jobs or Bill Gates.

By | February 17th, 2017|BLOGGING|Comments Off on When students prove the experts wrong

Websites, beware: Using third-party content can be illegal

The Digital Millennium Copyright Act offers a safe harbor for service providers

By Peter Lemire

These days most websites and other online service providers accept and host some sort of third-party content. The hosting and display of user-generated content can potentially subject the website or service provider to liability for its users’ online copyright infringement.

Seeing that this potential liability may stifle the development of interactive environments and the restriction of user-generated content by service providers, Congress enacted a safe harbor for service providers with the Digital Millennium Copyright Act (DMCA). The safe harbor limits a service provider’s liability if it is in compliance with the act and follows a certain protocol, which has become to be known as Notice and Takedown.

To be eligible for the safe harbor, however, a service provider must register a copyright agent with the copyright office and provide contact information for that agent. The agent is responsible for reviewing takedown notices and following the procedures set forth in section 512(c) of the DMCA. Upon receipt of a notice meeting the requirements of Section 512(c) by a copyright owner or its agent, the service provider is to block access to the infringing content.

The service provider then sends notice to the alleged infringer about the claimed infringement and that the material has been removed, as well as notice that the alleged infringer may provide a counter notice to get the material reinstated. If the alleged infringer sends a proper counter notice providing why their use of the copyrighted material is allowed under the law (e.g. a license, fair use etc.) the service provider can reinstate the material without liability to the content owner.

But to benefit from the notice and takedown procedures and the liability protection they afford, a service provider must first appoint a copyright agent with the copyright office. Since the advent of the DMCA, this has been a paper-driven process in which the notice of agent forms were filled out and either mailed or faxed to the copyright office. These forms are then scanned and placed in the office’s database for public viewing. A service provider only had to fill the form out once and they were good to go, until now.

It seems that the Copyright Office has decided to enter the modern age and require that all new companies must register through the Copyright Offices new online system. All existing service providers will have until Dec. 31, 2017 to file under the new system or risk losing their protection under the safe harbor.

The renewals during this period will be $6, reduced from the “oh-so logical” amount of $105 going forward. The designations will need to be renewed every three years, even if the information is the same. Failure to renew the designation will result in a loss of the safe harbor protection.

This seemingly minor change could have large impacts for businesses that utilize user-generated content, especially smaller companies. First, companies need to be aware that if they previously filed a paper notice, they still need to create a user account with the copyright office and refile through the electronic system, even if the information has not changed. Failure to do so by December 31, 2017 will result in a loss of the safe harbor protections and the company could be liable for the copyright infringements of its users.

Secondly, companies also need to now establish a system to prompt them to file renewals every three years. This is a change from the old “file and forget it” system. It is not clear whether the Copyright office will send out electronic reminders in regards to renewing. As a result, companies would be best to calendar these dates themselves as a backup precaution in case the Copyright Office does not elect to send reminders.

Additionally, companies should also start adding the $105 renewal fee to their IP budgets. While these costs are not large, increases could happen in the future and it is a wise practice to note these as expected line item expenditures.

The DMCA has proved to be a very valuable tool for both service providers and content owners. The new regulations now make it more incumbent on the service provider to make sure they are in compliance with the terms of the safe harbor. Failure to do so could result in a vengeful (or entrepreneurial) content owner taking advantage of the lack of a safe harbor and pursue monetary damages against a service provider for the acts of its users.

By | January 9th, 2017|BLOGGING|Comments Off on Websites, beware: Using third-party content can be illegal

Should you patent or not?

When it comes to software, it’s as clear as mud

By Kurt Leyendecker

One of the most common questions I get when meeting with new clients is whether their invention is patentable.

To be patentable, an invention must satisfy three basic criteria: it must be the proper subject matter; it must be new; and it must not be obvious. For most of the last 20 years or so, the first criteria was an easy call.

If the invention was a useful process, a machine, an article of manufacture or a composition, it was patentable subject matter. If the invention as described and claimed in a patent application was also found to be new (novel) and not an obvious derivation from that which was already known, then a patent would issue.

Unfortunately, when lawyers and the courts get involved, even the straight forward plain language of a statute can be made to appear confusing. Those of us over 40-years-old might recall it when President Clinton, a soon-to-be disbarred lawyer, argued that the word “is” had potential several different meanings in relation to statements he made concerning the Monica Lewinsky scandal.

If a lawyer can, with a straight face, argue about what the meaning of the word “is” is, imagine what a skillful lawyer could do to something like the patent statute. The problem is, when lawyers and the courts play word games, they soon find they have worked the law into an impossibly-difficult legal jigsaw puzzle.

This is exactly the situation that developed in the patent world concerning software-related inventions. For most of the 70s and through the 80s, software methods were generally not considered patentable subject matter for a whole host of reasons: they were drawn to abstract ideas; they were the equivalent of mental steps; they pertained to business methods and did not have technical character; and they were mere algorithms.

A hole formed in the software patent dike in 1981 when the Supreme Court declared in a case concerning DNA-related inventions that “anything useful under the sun invented by man is patentable.”

It seemed a simple enough pronouncement, but the Patent Office and the lower courts continued to struggle with the notion for the next 17 years until a couple of cases in the federal court of appeals finally directly applied the DNA-related Supreme Court holding to software. The decisions coincided with the dot.com boom, releasing a biblical-size flood upon the patent office and later on the courts that had to interpret this new breed of patent.

At the time as a law school student, I authored a law review article concerning the march towards software patentability and concluded that the matter was finally and correctly settled: “[it] appears the … debate is finished in the United States. Software is to be treated no differently than any other invention.”

I spoke far too soon. Clever lawyers and sympathetic judges immediately began rebuilding the dam and just under two years ago the Supreme Court weighed in, dealing a mortal wound to a high percentage of the software-related patents issued over the last 15 years, and effectively preventing patent protection for thousands of new software innovations.

While patenting software innovations isn’t dead, the uncertainty of whether a particular software-related invention is patentable subject matter has become highly uncertain. Also, the average cost of obtaining a software-related patent for those applications that survive the subject matter inquisition is considerably higher than it was even five years ago.

The two-step test laid out by the Supreme Court to determine whether a software-related invention is patentable subject matter is rather simple on its face, but almost nonsensical in practice.

First, a patent examiner must determine whether the claims are directed to a patent-ineligible concept, and then if claims are directed to patent-ineligible concepts, he must determine whether the claim’s elements, considered both individually and as an ordered combination, transform the nature of the claims into a patent-eligible application.

The Supreme Court, however, did a poor job in defining what is a “patent-ineligible concept,” providing some broad categories but not defining them very well. The Patent Office moved in and issued guidelines to fill in the blanks.

Even the Patent Office became confused. In guidelines drawn to natural products, which have also come under scrutiny as not being patentable subject matter, the Patent Office provided an example of the proper application of the two-step test.

The Office hinted gunpowder would not be patentable subject matter as a natural product, stating, “gunpowder as recited in the claim [is] not markedly different from what exists in nature.” The document in question was issued by a deputy commissioner at the Patent Office and was presumably vetted before being issued.

The office ultimately recognized the error and issued a new example, this time finding that gunpowder would be patentable subject matter if it were newly invented. The mistake seems harmless enough, but imagine if you are one of hundreds or thousands of potential patentees that suffered a rejection of your patent application because the Patent Office was trying to sort out the law.

Where does all of this leave the inventor or company seeking to protect its software-related intellectual property? Unfortunately, this is all about as clear as mud.

I think the Patent Office overreacted to the Supreme Court holding, interpreting it much more narrowly than was intended and that over time more and more software-related patents will be found to be proper subject matter. In fact, some lower court decisions are just starting to trickle in seemingly rejecting the Patent Office’s narrow interpretation.

My advice to inventors of software-related products and processes is to assess the potential value of the innovation and determine whether the high cost of patenting this type of invention is worth the expense.

For those that are, I often recommend filing a provisional patent application first to gain an extra year before the subsequent non-provisional patent application is examined by the Patent Office. In the two to four-year wait for the Patent Office to take up the application, hopefully the interpretation of the law will have loosened a bit and what might be an invention of dubious merit under the current subject matter paradigm will sail through without raising an eye. Time will tell.

By | November 28th, 2016|BLOGGING|Comments Off on Should you patent or not?

A closer look at taco trucks and baskets of deplorables

Politics takes issues around phrases and sound bites to a new level

By Peter Lemire

In our internet and meme-driven world, there always seem to be issues surrounding the ownership and protection of sound bites/short phrases/and or slogans. Election years take these issues to a whole different level.

Political speech makes a nice illustration of the sometimes rocky road to protecting short phrases and slogans. While one would think the law in this area would be pretty cut and dry, it can actually have a profound impact on businesses and their ability to protect their products, in this case apparel, and the slogans/sound bites/catch phrases used in conjunction with them.

Let’s appropriate some of today’s headlines to help us walk through this minefield. Luckily, the candidates, or their supporters, of the two major political parties have given us ample fodder to work with – “Taco Trucks on Every Corner” and “Baskets of Deplorables.”  Both phrases are somewhat catchy and would look good on t-shirts or bumper stickers. Each could also be used by either side, depending on the context.

First let’s turn our attention to the political realm and then we can discuss the commercial aspects. One of the first questions is whether the opposite side can utilize the phrase of the other party and whether the party that originally made the statement can prevent the other side from using it on products. First amendment considerations aside, the ability to restrict the usage of the phrases falls under the jurisdiction of intellectual property law.

There are three main areas of intellectual property law – patents, copyrights and trademarks. Patents cover inventions and are not relevant to the situation at hand. This leaves copyrights and trademarks as possible areas of protection.

Copyrights protect works of original artistic expression that are fixed in a tangible medium, and trademarks protect identifiers of goods or services used in commerce (think brand names, logos etc.). With copyrights, the rights initially vest in the author of the work, which in this case would be the party that originally made the statement. However, there could be an issue of whether they were fixed in a tangible medium; but more importantly, the Copyright Act expressly excludes individual words or short phrases from copyright protection. Therefore, copyright protection is also not applicable.

Trademarks protect source identifiers of goods and services in commerce. The interesting thing about trademarks is that the rights vest in the party that first starts using the mark in conjunction with its goods or services, not necessarily the person who conceived or “authored” the mark. Additionally, there are a whole host of other arguments, constitutional and otherwise, that would most likely come down in favor of the other side’s use of the respective phrase on t-shirts and bumper stickers not being a violation of trademark law.

Even in a purely commercial context, the use of short phrases on products can be problematic from a protection standpoint. Often times, the first to market strategy is going to rule the day. Companies or individuals need to get into the market quick, make their money by being the first into the market, and then watch as a flood of competitors enter behind them. If you come up with a witty or catchy phrase and want to sell products with it emblazoned on them, you can. However, you most likely will not be able to prevent other people from doing the same thing.

The witty phrase on a t-shirt does not identify the source of the goods to the consumer or communicate any of the similar consumer impressions that a valid trademark does. The consumer buys the shirt because they like the phrase or graphical design and most likely don’t know or even care about who produces the shirt. Because of this, the law has been wary to allow for trademark protection for items that are arguably a merely ornamental design as opposed to a brand.

To the contrary, when consumers see brands such as Nike, Under Armor, Tommy Hilfiger, Michael Kors, Levi Straus and Ralph Lauren, they invoke impressions that might include quality, style or performance. These impressions have been molded over time through the consumer’s experience and the company’s advertising and brand promotion efforts.

What sort of strategy a company takes depends on where it wants to position itself in the marketplace. Apparel companies that want to build brand awareness and established clothing lines definitely want to invest in trademark portfolios.

Careful strategy and preplanning that takes into account trademark law is crucial for those companies looking to build those brand portfolios and have protectable intellectual property that can be enforced in the future. If on the other hand, the strategy is to operate on the bleeding edge of pop culture, a fast first to market strategy that doesn’t focus on the protection and enforcement of intellectual property rights will be the most likely strategy to follow.

It’s really the time-tested adage in play once again: An ounce of prevention – you know the rest.

By | September 22nd, 2016|BLOGGING|Comments Off on A closer look at taco trucks and baskets of deplorables

To patent or not to patent: That is the question

A patent could offer protection from poachers, but is it worth it?

By Kurt Leyendecker

Prospective clients routinely ask whether getting a patent makes sense given that she would not likely be able to afford the cost of the lawsuit necessary to enforce the patent and stop an infringer.

The truth is that patent infringement litigation is expensive; attorneys’ fees alone usually exceed $1 million in a case taken through trial. Moreover, even if the patent holder prevails, there is no guarantee he will be able to recover attorney fees. In fact, under the American Rule, attorney fees awards are the exception rather than the rule. The good news is that the award of attorney fees in patent cases have become more common in recent years; nevertheless, it is still somewhat foolish for a litigant to assume she will be able to recover fees.

So why bother filing for a patent on an innovation?

First, patent protection levels the playing field a bit. Sure, the large multinational competitor might still command the higher ground, but the slope won’t be as steep. The competitors may have the money, the lines of distribution, the manufacturing experience and brand recognition but only you have the legal right to manufacture your patented article or practice your patented process.

Big companies with a public presence generally don’t like to knowingly infringe another’s patent: it could garner negative press and it could subject them to a lawsuit without a certain outcome (big companies hate uncertainty). Besides, it is usually behooves a large competitor to cut a deal with you.

A patent or at least the filing for one might prevent you from getting proverbially locked out of capitalizing on your innovative product or service. In 2013, the United States became a first-to-file country wherein the first to file for a patent on an invention wins over any second comers even if the later filer invented before the first filer.

Independent inventors and small companies with limited development budgets can take longer to develop a new product compared to a big company with a large R&D budget. If the big company beats you to the patent office before you’ve introduced your product to the public, you lose and they win. Your best bet is to file an application early, usually a less expensive provisional application, to stake your place at front of the line.

A patent gives you leverage. If your product or service takes off, you may not have the resources or cash flow to expand as rapidly as the market demands. Having the exclusive right to make, use or sell the patented property, gives you leverage in enticing investors to fund your expansion.

Without the patent, investors might start a well-funded competing venture without you, or perhaps more likely, they will just decline to become involved realizing that there is nothing stopping a big company in the space from entering the market and driving their company under. With the exclusivity offered by a patent, investors are often more willing to take the risk realizing that infringement by the big company could mean a big payday at the end of an infringement suit if it becomes necessary.

Back to big companies hating uncertainty. They would much prefer to enter a market with a new product that is protected so that they can prevent competition from the other large players and thereby command a higher price and greater profit for the product.

Simply put, a big company noticing your success would rather cut a deal with you for exclusive rights under your patent and pay you 5 to 10 cents on the dollar so that they can charge 10-20 cents more in the marketplace. Without a patent, the value of acquiring your company is severely reduced given the risk that another large competitor could not be stopped from competing.

In the end, it is simple: With a patent protecting your innovative product or service, you have a better chance at capitalizing on your invention. Without a patent, there is nothing stopping well-heeled investors or competitors from moving in, copying your innovation and profiting from your intellectual prowess.

Is the patent worth it, then? Ultimately, this depends on your innovation and its potential value in the marketplace.

By | August 1st, 2016|BLOGGING|Comments Off on To patent or not to patent: That is the question

Protect your trade secrets or pay the price

Act now to ensure your company’s sensitive information never gets compromised.

By Kurt Leyendecker

In the world of intellectual property law, trade secrets have always been the issue that gets stacked behind patents, copyrights and trademarks. Transactional intellectual property lawyers don’t know quite what to make of trade secrets or, perhaps more precisely, don’t know how to make money off them.

Unlike patents, trademarks and copyrights, there is no mechanism to register trade secrets for federal protection. Because proper protection of trade secrets requires the development, implementation and policing of specific company policies, business owners who have more on their to-do lists than they have time to complete often push enacting a trade secrets policy down the list, intending to get to it eventually.

Broadly, trade secrets are confidential and propriety information held by a company that gives it a potential competitive advantage. Trade secrets can include critical manufacturing processes, certain product formulations (the Coca-Cola recipe is one famous example) and pricing models. Trade secrets also can include more mundane things, such as supplier and customer lists. The key to making such information a trade secret is simply keeping the material “secret”—restricting the access of the information to only those company agents who need to know it.

When an employee leaves a business and uses the knowledge gained at his or her previous employer, it’s not uncommon for the previous employer to cry foul, claiming the employee stole trade secrets. The cry often rings hollow, as the company never bothered to properly protect the information.

Protecting sensitive information can be invaluable. For instance, while non-compete agreements relative to most employees in an organization are legally frowned upon and largely unenforceable, this often is not the case when the basis of the non-compete is to prevent the misappropriation of trade secrets.

In many jurisdictions, including Colorado, non-compete agreements can be enforced against former employees who had access to sensitive trade secret information. Injunctions can be used to prevent companies that hire former employees or agents from making use of their former employers’ trade secrets.

Of course, these potential advantages are meaningless if the information is not properly treated as trade secret in the first place.

Recent changes in the law portend a brighter future and increased importance for the lowly trade secret. Business-method patents, the darling of the patent world for much of this century, are largely no longer considered patentable by the U.S. Patent Office based on a ruling from the Supreme Court last year. Courts also are invalidating business-method patents issued prior to the Supreme Court edict, much to the chagrin of the patent holders. Insomuch as a business’ business methods are internal and not publicly known, the only manner left to effectively protect such information may be trade secret.

President Obama recently signed a federal trade secrets act that provides a federal cause of action for trade secret misappropriation. Incidentally, the Defend Trade Secrets Act passed 410-2 in the House of Representatives, making this a rare circumstance of political consensus. The federal cause of action mirrors causes of action available in most states but makes suits between parties in different states a bit easier.

Furthermore, if the proper language is provided in its employment agreements, a company may be able to recover exemplary damages and/or attorney’s fees for willful, malicious or bad faith misappropriations. Certainly, the threat of having to pay large damages to a former employer can prevent a former employee from even considering the use of his former employer’s confidential information.

Many companies will never have reason to file for a patent, yet nearly all companies have information that if taken by a former employee and provided to a competitor could have a negative impact on the bottom line.

The cost of retaining a competent intellectual property attorney to develop and assist in implementing a trade secret policy is likely less expensive than obtaining even a simple patent. Still, too few companies consider the value of protecting this information until it is too late.

By | June 28th, 2016|BLOGGING|Comments Off on Protect your trade secrets or pay the price

Is corporate America killing hashtags with trademarks?

Consider the case of PepsiCo and #GetNaked

By Peter Lemire

I recently read an article regarding the rise in trademark filings for hashtags. According to the article, 1,398 were filed worldwide last year; the figure for the U.S. was around 500 — a drop in the bucket among millions of trademarks filed worldwide every year.

However, the increase in the number of filings over the previous year is significant. The increase in attempts to trademark hashtags may cause one to ask: Is this a hostile takeover of social media in an attempt to chill free speech? And should my business consider trademarking hashtags?

The answers are: No, not really; and it depends.

Some people argue that trademarking hashtags is an attempt to limit free speech. That’s only partially true. Trademarks seek to prevent the use of a mark in commerce that is likely to cause confusion among consumers. Trademark law doesn’t take those terms out of the public lexicon. One of the applications cited in the article is #GetNaked, which was filed by PepsiCo Inc. with regard to its Naked Juice product.

Should this filing strike fear in the hearts of college students across the country, who can’t use the #GetNaked hashtag when posting skinny-dipping selfies without the fear of PepsiCo suing them? No, because generally those sorts of activities are not considered the commercial use of a mark. The same goes for writing a scathing tweet about PepsiCo or their products and including the #GetNaked hashtag.

What the filing would prevent is a competitor such as Odwalla putting the #GetNaked hashtag on its juice bottles. The stickier question is whether Odwalla could use the #GetNaked hashtag in its own social media. Interestingly, there are certain circumstances in which they could. If Odwalla is engaging in comparative advertising in a social media post, then it probably could include the hashtag. If, on the other hand, #GetNaked was used by Odwalla in an attempt to confuse consumers to buy Odwalla rather than Naked Juice, that would most likely be an infringement.

If someone’s goal is complete control and domination of the use of a hashtag, trademark law probably won’t help much, as the law inherently recognizes that a trademark holder cannot prevent all third-party usage of a mark — just those uses that are likely to cause consumer confusion.

So is it worthwhile for businesses to try to register hashtags they’ve developed? The answer: It depends.

For a company to establish trademark rights for a mark, it needs to be used as a source identifier (think brand) for their goods or services in commerce. If the hashtag is being used with goods, then the hashtag must appear on the product or product packaging.

For services, the hashtag can appear in advertisements, including social media. In the Naked Juice example, the #GetNaked hashtag has to appear on the bottle itself or on multipack packaging. If your company produces actual products and you are not anticipating putting the hashtag on the products or product packaging, then filing a trademark application for a hashtag would be a waste of money.

A business also should consider how long it anticipates using the hashtag. Filing for federal trademark registration is not a quick process. It takes eight months, on average, from the date of filing the application to the issuance of the registration; if the Patent and Trademark Office issues an office action, the time frame extends to more than a year.

When hashtag usage is anticipated to be short term, then it makes sense to rely on common law rights that automatically accrue based on the use of the hashtag rather than seeking formal registration. Given the ephemeral nature of hashtags, it may make sense for a company to forgo formal protection in favor of a more fluid and dynamic usage of hashtags in their social media campaigns.

Finally, a business should consider whether applying for a mark in the form of a hashtag makes sense. Because the # symbol generally doesn’t add any distinctive features to the trademark, a business may want to consider just filing for the words contained in the hashtag. In the juice example, this would mean filing for the mark GET NAKED (the all caps signifies that the mark can be used with any combination of uppercase and lowercase letters).

A GET NAKED registration would cover not only the words “get naked” but also uses such as www.getnaked.com (which incidentally is used by a private electronic messaging company) and #GetNaked. If the hashtag is intended to be used in the context of a comprehensive marketing plan, then it may make more sense for a company to register a word mark that will allow broad usage.

When it comes to trademarking hashtags, it may make sense sometimes. But I wouldn’t recommend running out to register every hashtag you use in a social media campaign. Filing a boring, old-fashioned word mark might actually make more sense and allow for greater flexibility in the future with respect to our ever changing technological landscape.

The bottom line is, if you are inclined to take skinny-dipping selfies, don’t worry about using #getnaked when you share them online. Whether you should share the pictures in the first place — well, that’s another question.

By | April 27th, 2016|BLOGGING|Comments Off on Is corporate America killing hashtags with trademarks?

Why a trade secret is the Spanish Inquisition of intellectual property

Nobody expects it — until it’s too late

By Kurt Leyendecker

“Nobody expects the Spanish Inquisition!” If you’re old enough, this phrase invokes a classic Monty Python skit starring a trio of bumbling 15th century cardinals who burst onto the scene. Perhaps you’re wondering why the Spanish Inquisition is making an appearance in a column about intellectual property.

You didn’t expect this, did you?

People with at least passing familiarity with the term “intellectual property” can associate it with patents, trademarks and copyrights. But “trade secret” doesn’t often come to mind. Simply put, a trade secret is the Spanish Inquisition of intellectual property: Nobody expects it until it is too late.

Perhaps you and some colleagues left your jobs to start a business competing with your former employer. You figure that with reduced overhead, long hours, hard work and a little luck, you can provide the same product or service at a higher quality and for greater value. You and your business partners form an LLC, rent office space and advertise. You call some of the suppliers you used at your previous job, and you call upon some of your former customers to see if they are interested in switching.

You and your partners invest your life savings into making this new venture a go. But one day there is a knock on the office door, and a process server hands you a complaint and summons. You are being sued for misappropriation of trade secrets.

Or perhaps you own a successful company that employs a number of sales people. Things are going great until one day your best three sales people unexpectedly quit. A month or so later, your biggest customer informs you he is transferring his business to a company started by your former employees that is offering a similar product at a steep discount. Obviously, your former employees have taken knowledge of your clients, suppliers and pricing models and used this information to start a competitive enterprise.

Sensing the unfairness, you make an appointment with an intellectual property attorney who asks if you treated the sensitive information as a confidential trade secret, or if you had the former employees sign non-compete agreements for the protection of trade secrets. You didn’t.

You go forward with a lawsuit for misappropriation anyway, hoping the fact that you lock your office doors at night and every employee’s computer is password protected is enough to get the pilfered information deemed a trade secret. It almost certainly isn’t enough. But the inquiry is very fact-specific and your case will proceed, potentially running up a hefty legal bill for both you and your former employees.

If you remember the Monty Python skit, you recall that the Inquisition’s red-robed cardinals — Ximénez, Biggles and Fang — were particularly inept, stumbling over their lines and not impressing upon their intended victims the seriousness of the alleged crimes. Likely, your lawsuit will be perceived in a similar fashion. Chances are things will settle in the end, but you will have to accept a resolution that is less favorable than you desired, and you will wonder whether it was even worth the expense.

Whereas few businesses will ever have the need to obtain patent protection, most could properly make use of trade secret law to protect sensitive information and business knowhow acquired and developed over the years. Protecting sensitive information isn’t particularly difficult and can be as easy as marking documents and electronic files as confidential and storing the information in password-protected files only accessible by personnel with a bona fide need to know the information.

Very few small companies — or even larger ones — bother. The importance of designating certain information as a confidential trade secret isn’t realized until this valuable information is being used by former employees to the company’s detriment. Those companies that do bother are much less likely to have former employees who violate policy in the first place.

Misappropriation of trade secrets is a common litigation claim seen in lawsuits between companies and former employees. The question of whether sensitive information was sufficiently protected and guarded to qualify as a trade secret is very fact specific; information that wasn’t marked and systematically segregated is subject to great uncertainty in front of a court. Tens of thousands of dollars can be spent just determining whether a company has trade secrets before even getting to the question of whether the information was misappropriated.

By | March 9th, 2016|BLOGGING|Comments Off on Why a trade secret is the Spanish Inquisition of intellectual property

Who owns the trademark to “You’re fired!”?

Hint: It’s not who you think

By Peter Lemire

Since it seems Donald Trump is on everyone’s radar screen, I decided that I must write a column on “The Donald.” Before you roll your eyes and prepare to tune out another political rant, let me assure you that my focus is purely related to intellectual property and a typical tension that many celebrities, and sometimes companies, face when trying to protect catchphrases.

Think back to 2004–05, when The Apprentice first aired. Hosted by Trump, the reality TV show featured contestants from various backgrounds who competed to win a job with Trump’s organization. The contestants were split into teams and were assigned tasks designed to assess their business acumen. At the end of each episode, the loosing team would be brought into the boardroom and Trump would let one member of the team go with the catchphrase “You’re fired!”

As the show gained popularity, the “You’re fired!” catchphrase began to proliferate, appearing on T-shirts, coffee mugs and a variety of knickknacks. Trump had anticipated this possibility, and 11 days after the first episode aired in January 2004, he filed trademark applications for use of “You’re fired!” with respect to goods including clothing, casinos, home furnishings, toys and alcoholic beverages.

The trademark filings made the news. People even wondered whether managers could tell someone they were fired without committing trademark infringement. The fervor eventually died down, but if you flash forward to today and ask people who owns the “You’re fired!” trademark, most would answer, “Donald Trump.”

But he doesn’t. There are only two live registrations in the U.S. Patent and Trademark Office (USPTO) for “You’re fired!” or derivatives. One registration is owned by You’re Fired LLC in Bedford, New Hampshire, for use with paint-your-own pottery studios. The other registration—“As my apprentice, You’re never fired” for use with evangelistic and ministerial services—is owned by GodSpeaks Inc. in Atlanta.

How is it possible that Trump doesn’t have protection over one of the most popular catchphrases on TV? While there are actually many different reasons his applications never issued into registrations, some of which likely were business decisions by Trump, others are illustrative of the difficulty in protecting catch phrases, especially when those phrases are the product.

In review, trademarks protect brands. Technically, we trademark lawyers would say that trademarks are identifiers of someone’s goods or services in commerce, but it is simpler to think of the marketing concept of a brand. That would include product names, logos and yes, even taglines. However, the sticking point with a lot of catchphrases is that the trademark has to identify specific goods or services, which causes an issue if the phrase itself is the good.

Think of other famous taglines, such as the “Ultimate Driving Machine” for BMW automobiles, or the “Quicker Picker Upper” for Bounty paper towels. These taglines are directly associated with the product they are used with, and when you hear these phrases you think cars, or paper towels. Each carries a distinct impression about quality or other product features.

The issue with a lot of taglines, especially those coined by celebrities, is that in most instances they do not act as brands because they don’t identify a good or service in commerce. This is especially true with clothing. Around the time The Apprentice aired, we saw the rise of what I call the “slogan shirt.” These are simply shirts or sweatshirts that had slogans or clever sayings on them. The creator of the slogan shirt would want to protect the saying so that others couldn’t copy it. These slogans are not patentable, because they aren’t inventions. They’re not copyrightable because U.S. copyright law explicitly prohibits copyright protections for short phrases or sayings. People turned to trademark in an attempt to get some sort of protection.

These sorts of applications, however, are routinely rejected by the trademark office as being “merely ornamental.” That is, the slogans and designs that appear on goods like clothing, coffee mugs, and note pads are aesthetic designs and do not function as a brand. That makes sense. Would you go to the store planning to buy “You’re fired!” pants?  Probably not. But you would go to the store looking for a pair of Levi’s. The key difference is that Levi’s is a brand.

Other slogans have been deemed to be merely informational. Volvo unsuccessfully tried to trademark “Drive Safely,” but the USPTO reasoned that the slogan was just a good suggestion that we should all follow and did not act to identify Volvo’s cars.

For those wanting to protect a tagline that you use with your goods or services, do not despair.  With proper planning and forethought, a business can ensure that its slogan is a protectable trademark, as opposed to an ornamental design or a merely informational statement. Just ask the people at You’re Fired pottery studio.

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By | February 8th, 2016|BLOGGING|Comments Off on Who owns the trademark to “You’re fired!”?

DIY intellectual property: Really, how hard can it be?

Well, it’s kinda like removing your own appendix

By Kurt Leyendecker

We often receive inquiries at our firm from people wondering whether they can prepare and file either a trademark application or patent application themselves without an attorney. Of course, for purely selfish reasons as an attorney, I am not thrilled about losing potential revenue, but there isn’t any legal reason or rule that prevents a person from filing their own intellectual property paperwork. I say go for it — what is the worst that can happen?

As an aside, please forgive me if my column seems a bit disjointed and my prose a bit forced. You see, I am in a lot of pain right now. I noticed my abdomen was rather sore and tender a couple of weeks ago. After a little Internet searching, I came to the conclusion that my appendix was inflamed. With my deductible and copays, I figured an appendectomy was going to cost me several thousand out of pocket. Seriously, why is surgery so expensive? I mean all the doc has to do is cut a small hole, reach in and cut the appendix off, and sew everything back together. “How hard can it be?” I thought.

After a few hours of Internet research and watching a bunch of YouTube videos, I decided to give it a go and cut that pesky appendix out myself. I boiled water, sterilized a bunch of X-Acto knives, set myself up in front of a mirror and got busy.

I am not going to lie: It was a bit more difficult and painful than I imagined it would be. But I did find what I think was my appendix, and I did cut it out. Gosh, I really hope it was my appendix and not something else important. I managed to sew everything up, and well, I am just fine now except for the pain. I am in a lot of pain, and my abdomen is kind of sensitive to the touch and frankly, a bit inflamed. I am sure if I take a couple Tylenols I will be just fine. It’s not like an appendectomy is major surgery after all. I mean it couldn’t kill me, right?

Filing for trademark registration is nothing more than filling out an online form. Sure, you have to decide whether the mark is actually in use and what constitutes proper use as far as the trademark office is concerned. Sure, you have to pick a proper class of goods category and draft a proper description of the goods covered by the mark. None of this is anything that can’t be learned with enough time and effort. I suspect someone of above average intelligence could figure it all out and have a fighting chance of getting it right with 10-30 hours of research and study.

Really, what is the worst that could happen if you get it wrong? The registration never goes through; someone else starts using a similar mark for similar goods; you have to change the name of your product or service; and you lose all the goodwill built up over the years in your brand. Not so bad, right? Besides, you will have saved a few hundred dollars doing it yourself in first place.

Patent applications are a little more work. They aren’t so much applications in the traditional sense as written documents describing an invention and setting out the legal metes and bounds of your exclusionary rights. There are books available to help you draft an application yourself, and with a couple hundred or so hours of study, you should be able to do a passable job on everything but the claims.

Claims, which are the most important part of a patent application, take a bit more time to learn. I figure that a newbie patent lawyer right out of law school is good to draft claims on his or her own without partner review after a couple of years of practice, but absent a thousand or more hours of experience, you can still get lucky and write a great set.

Again, what is the worst that could happen? You never get a patent or the patent you get is extremely narrow in scope and breadth; a well-heeled competitor starts making something very similar and does great in the marketplace without infringing your patent rights because it made a small change to a rather insignificant feature you, for some inexplicable reason, included in your claims; and you lose the opportunity to license the patent for a sizable royalty. Seriously, what’s the chance your new product, service or innovation is going to do that well anyhow? The most important thing is that you saved a few grand now.

Ummm … I think I need to wrap this up. I am feeling kind of faint.

By | November 18th, 2015|BLOGGING|Comments Off on DIY intellectual property: Really, how hard can it be?