Friday, March 13, 2015

Pi Day

Image result for pi

March 14th is PI day. As in π. As in the ratio of the circumference of a circle to its diameter. As in  22÷7. As in 3.14.15...

In the 13th century, the infinite number pi was calculated by the mathematician Ludolph van Ceulen to 35 digits. Here is a website that expresses pi to a million digits. Computers have determined pi to a trillion digits, apparently (but who knows for certain!). 

And special pi occurs at the time 9:26:53 (both a.m. and p.m.) on March 14th, when we'll pass through time reflected in the first ten digits of pi: 3.141592653 ... These calendar and time numbers will not be repeated for 100 years. So enjoy tomorrow at 26 minutes and 53 seconds past 9 a.m. and 9 p.m.

How many digits of pi did you memorize in school? How many do you still remember? 

Tuesday, March 3, 2015

A Valid Service Mark Requires Actual Service

The Federal Circuit determined for the first time that the validity of a registration for a service mark requires both that the applicant publicly offer the service and actually render the service at least as of the date of the application. Offering services under a service mark without actually rendering the service will not support registration.

In Couture v. Playdom, Inc. decided yesterday, the applicant filed a use-based application for the service mark PLAYDOM, and submitted as a specimen his webpage that provided:
Welcome to We are proud to offer writing and production services for motion pictures film, television, and new media. Please feel free to contact us if you are interested:
The website included this disclaimer: Website Under Construction.

The applicant did not actually render any offered services until well after the application was filed. The registration eventually issued. Thereafter, a competing service provider sought to register the same service mark PLAYDOM for the same writing and production services. The competing service provider filed a petition to cancel the registered PLAYDOM mark, arguing that the applicant had not done anything other than advertise and offer his service at the time the application was filed. The cancellation was allowed by the TTAB and, following appeal to the Federal Circuit, the TTAB's cancellation was affirmed.

The Federal Circuit observed that it had not previously addressed whether the mere offering of a service, without actual rendering of the service by the application filing date, is sufficient to constitute "use in commerce under Lanham Act §45." But the Court now confirms that use in commerce of a service mark requires both that the mark be publicly "used or displayed in the sale or advertising of services" and that the services must actually be provided. The bad news is that the first applicant lost his registration because he had not provide the service by the application filing date. The double bad news is that he lost his registration to a direct competitor.

Triskadekaphobia All Over Again

Those sufferers of triskadekaphobia will experience a double dose of Friday the 13th this month, and a triple dose this year. There is a Friday falling on March 13, as there was a Friday falling on February 13. And there will be another Friday falling on the 13th during November this year.

Image result for 13

The last time Friday the 13th fell on two consecutive months was six years ago in 2009. Prior to that, it occurred in 1998. This double whammy can only occur in a February - March combination, and only during certain non-leap years. No more than three can occur during any one year. For more information on how Pope Gregory XIII's calendar causes this interesting phenomenon, click here.

Wednesday, February 18, 2015

Intel Is The Top Contributor To The Linux Kernel

The Linux Foundation reports today that Intel is now the top contributor to the Linux kernel. To place this in a bit of perspective, the foundation reports that "Since 2005, some 11,800 individual developers from nearly 1,200 different companies have contributed to the kernel." The foundation further reports that since 2011 Linux open source software has been deployed in more computer systems than Windows software. More information concerning Linus Torvalds is available on my prior post, here.

Presently, the top contributors to the present kernel release are:

Red Hat
Texas Instruments
Vision Engraving Systems
Renesas Electronics
Free Electrons
FOSS Outreach Program for Women
Huawei Technologies

Tuesday, February 17, 2015

U.S. Design Patent Protection under the Hague Agreement

It has become a little bit easier to protect U.S. design. Plus, sometimes good things occur on Friday the Thirteenth!

This past Friday, February 13, 2015, the U.S. deposited with WIPO (the World Intellectual Property Organization) in Geneva its instruments of ratification to the Hague Agreement. As a result, the U.S. will become a full member of the Hague Union in 90 days, as of May 13, 2015. The Hague Union will grow to 62 countries and territories by this May 13th.

Once the Hague Agreement goes into force, U.S. design patent applicants (and non-U.S. applicants who seek design protection in the U.S.) will obtain two significant advantages. First, applicants can file a single design patent application with the PTO or with WIPO and thereby seek extended design protection with all other Hague Union members. Second, U.S. design patent protection will have a 15 year term from the date of grant for applications filed on or after May 13, 2015. 

Presently, and prior to May 13, 2015, it is not possible for a U.S. design patent applicant to obtain design protection outside of the U.S. without separately filing in all relevant jurisdictions. And presently, the term of a U.S. design patent is 14 years from date of grant.

The PTO has not yet issued rules of practice under the Hague Agreement, but final rules are expected from the PTO by May 13, 2015.

More information concerning the U.S. accession to the Hague Agreement is available here form the PTO.

Wednesday, February 4, 2015

Copyright in a War Memorial

The Korean War continues to cost the federal government money.

In 2012, my blog post addressed the copyright infringement claim brought by Frank Gaylord against the U.S. Postal Service for printing a photo of The Column -- the Korean War Memorial standing on the National Mall in Washington, D.C -- on U.S. postage stamps.

The Memorial

Mr. Gaylord, a World War II veteran and renowned sculptor, was selected to create the central focus of the Memorial -- 19 statues depicting an infantry squad on patrol. Mr. Gaylord was paid $775,000 for his work. But the U.S. government never obtained a license to use the statues for any purpose other than as a display on the National Mall.

In 2002, the Postal Service wanted to issue a stamp commemorating the 50th anniversary of the Korean War armistice. For this purpose, the Postal Service paid a photographer $1,500 for the right to use a photograph of The Column, but did not pay Mr. Gaylord a royalty for the use of the statues. Nor did the Postal Service seek Mr. Gaylord's consent to use a photo of the statues.

The Stamp

Mr. Gaylord held a copyright interest in the statues by virtue of his creation, and his contract with the federal government did not transfer the copyright interest or give the government any rights other than to display the statues. The government certainly did not have the right to use a photograph of the statues on a postage stamp. But it did. The Postal Service printed 86.8 million stamps of The Column at a cost of $181,412. The stamps had a face value of 37 cents each for a total of $31.82 million. At least 47.9 million stamps were sold.

Mr. Gaylord sought copyright damages from the Postal Service for its profits in copying The Column without a license. The stamps were used for three purposes: to send mail, as an image on commercial merchandise, and on unused stamps sold to collectors. The parties agreed that no damages would be awarded for use of the stamps to send mail (the Postal Service regularly loses money on its postal operations), and agreed to a per-unit royalty of ten percent for commercial merchandise. But the parties disagreed on the amount and type of royalty for the stamps sold to collectors.

The Court of Federal Claims determined that a reasonable royalty for the collector stamps was a per-unit royalty of ten percent, based on its finding of what a reasonable licensor and a reasonable licensee would agree to in a hypothetical negotiation. The Postal Service disagreed and sought a limited up-front, one-time lump-sum payment of $5,000. The trial court determined that $5.4 million was earned by the Postal Service on the collector stamps and that virtually this entire sum represented a profit. The court awarded Mr. Gaylord a royalty on the collector stamps of $540,000, plus an additional $33,092 in royalties for the commercial merchandise. The Postal Service appealed to the Federal Circuit, which upheld the trial court's determination.

Three things are noted by this case. First, Mr. Gaylord as a private citizen owns the copyright in a renown and beloved memorial to the veterans of the Korean War. Second, the U.S. government failed to secure any right of use of the statues apart from the display on the National Mall. Third, a per-unit royalty of ten percent is reasonable for this particular form of special edition, collector memorabilia -- a postage stamp. Why Mr. Gaylord should have been paid $775,000 to create the statues and allowed further to own the copyright is beyond belief. And why the federal government did not retain any meaningful use interest apart from the Mall display compounds the disbelief. And why the U.S. government cannot control the central component of the memorial that honors the veterans and war effort of a significant post-World War II conflict is befuddling.

Friday, January 9, 2015

Patenting Food -- And Controlling Access To Food

Today's new patent opinion from the Federal Circuit reminds us that:
1. Food can be patented;
2. New food plants developed with public monies by the USDA does not necessarily benefit all US citizens equally; and
3. Wrongful disclosure by an inventor's employee of confidential information concerning a newly discovery invention does not necessarily start the one year on-sale bar ticking.
In Delano Farms v. California Table Grape Commission, plaintiffs sought to invalidate a USDA patent on new varieties of table grapes: the Scarlet Royal and the Autumn King.

Scarlett Royal           Autumn King
Plaintiffs asserted that the new grape varieties were in public use more than one year prior to the filing of the patent application. These new grape varieties were developed by the USDA, a government agency spending public monies. The USDA obtained a patent on the new grapes and then granted an exclusive license to the California Table Grape Commission. The grape commission in turn sublicensed the new grape varieties to California growers for a license fee that was split between the grape commission and USDA.

An employee working for the USDA in the office that developed the grape varieties secretly gave plant material to friends, California grape growers. This occurred more than one year prior to the filing of the USDA's patent application. The employee knew that he was not authorized to provide the plant material outside of the USDA and so did his friends, the California growers.

Plaintiffs in this case were California grape growers who did not want to pay the patent fee to the grape commission. They sought to invalidate the patent in the hope of obtaining the patent benefits for free. The Federal Circuit easily disposed of plaintiffs' contention that public use occurred more than one year prior to the filing of the patent application. Since the transfer of the plant material occurred without the consent of the USDA and in violation of its employee's confidentiality obligations, and since the recipients of the plant material knew that the material was secret and should not have been disclosed, then the public use never commenced at the time of the wrongful disclosure.

While the holding of this case is pretty straight forward, it nonetheless reminds us that:
1. It is critical for an inventor to maintain secrecy over the invention, and to liberally use confidentiality and nondisclosure agreements with those people who assist in the development of the invention.
2. Government agencies use public money to develop new food crops, but do not necessarily grant free use to the public of the very food that public money was used to develop.
3. Food can be patented, and use of food can thereby be restricted (here the USDA granted an exclusive license to the California grape commission but not to non-California growers!).

Wednesday, January 7, 2015

The Slants and Disparaging Trademarks

The Slants are upset with the federal trademark office.

The Slants describe themselves as “the world's first and only all-Asian American dance rock band.” The group’s manager and bass player, Simon Tam, applied twice for a federal trademark registration for the term The Slants for services consisting of “entertainment in the nature of live performances by a musical band.” Each application was rejected by the trademark office because the PTO maintains that the term highly disparages people of Asian descent. A copy of the recent decision by the Trademark Trial and Appeal Board (TTAB), containing the Board's decision and procedural information about the trademark applications, is available here.

The group is not shy about references to Asian elements. The Slants’ 2007 debut album played on Asian physical features with the title “Slanted Eyes, Slanted Hearts.” The group’s newly released album is entitled “The Yellow Album.” According to the TTAB decision, the group’s website previously featured Asian influences:

And, advertising for the band’s upcoming Seattle concert features Asian influences:

Section 2(a) of the Lanham Act prohibits registration of a trademark that "consists of or includes matter which may disparage or bring into contempt or dispute persons, institutions, beliefs or national symbols." The trademark office employs a two-part test to determine whether a mark violates Section 2(a),
1. what is the likely meaning of the term, and
2. if the meaning of the term refers to identifiable persons, institutions, beliefs or national symbols, whether the meaning may be disparaging to a "substantial composite of the reference group." 
The TTAB agreed with the trademark examiner's conclusion that the term The Slants, as used by the applicant, likely incorporates a highly disparaging reference to peoples of Asian descent, and that a "substantial composite" of Asians finds the term to be disparaging. The trademark examiner submitted evidence from dictionary definitions and common published references supporting the contention that the term is disparaging. 

The band pointed out that the word SLANT can have a non-disparaging meaning, and that the term had, in fact, been registered as a trademark for other uses, including as a mark for skateboards, water skis, surf skies, skies and snow boards, separately registered for motion picture film productions, production of radio or television programs, and two marks for serving ware for serving food.

But the TTAB noted that context is important. Here, the band uses the term in conjunction with Asian references. This is not the case with the other SLANT trademark registrations. The TTAB emphasized that the term incorporates a disparaging meaning as used by the band, and that the meaning is deemed disparaging by a substantial composite of Asians. Among the evidence in the record (cited in the TTAB decision) is the following statement from the Japanese American Citizens League:
"'Jap' is a derogatory term! ... And, so are terms link 'chink' ... and 'slant.'" Japanese American Citizens League Anti-Hate Program [sic] "The Japanese American Citizens League is a national organization whose mission is to secure and maintain the civil rights of Japanese Americans and all others who are victimized by injustice and bigotry."
More information about the Japanese American Citizens League can be found here.

The band has appealed the refusal to register The Slants to the Federal Circuit. Oral argument is scheduled for this Friday morning, January, 9, 2015, in Courtroom 201 in Washington, DC. Recordings of the oral argument can be obtained following argument at the court's website, here.