Wednesday, November 30, 2011

The Time For Mandatory Patent Assignment Recording Is Now

Something strange occurs when the U.S. Patent Office issues a patent monopoly; it does not necessarily know the identity of the monopoly recipient. U.S. patent applications are required to identify the inventors of the invention pursuant to Section 116 of the Patent Act, but they are not required to identify the owner of the application or the resulting issued patent.

The lack of an accurate database of owners of issued patents can be troubling for the public. The absence of readily accessible patent ownership information can inject an unacceptable level of mystery and risk into patent clearances and chain-of-title searches. This is particularly true if the ownership interests in a patent become fragmented among several parties, including lien holders or other creditors.

Further support for an accurate patent ownership database comes from the “bona fide purchaser for value” rule incorporated into Section 261 of the Patent Act. This section confirms that an unrecorded patent assignment or grant is void as to a subsequent purchaser or mortgagee for value and without notice of the unrecorded assignment or grant. A voided assignment can, in turn, create undesirable liability on the part of an assignor to a patent acquirer.

But, good news. The U.S. Patent Office is presently seeking comment on several rules that would mandate the disclosure of any patent assignment. Specifically, the PTO is proposing to require that disclosure of the current assignee be made:
  1. At the time the patent application is filed, 
  2. At the time of payment of the patent issue fee, 
  3. Any time an assignment is made after the application filing date, 
  4. Any time an assignment would cause the loss of entitlement to the small entity fee, 
  5. In order to obtain a discount of maintenance fees. 
Provide your comments regarding the proposed mandatory disclosure of assignments prior to January 23, 2012. Send your e-mail comments to More information regarding mandatory assignment filing is available in the Federal Register.

Tuesday, November 22, 2011

JFK: 11-22-11

John Fitzgerald Kennedy
May 29, 1917 - Nov. 22, 1963 (12:30 p.m. CST, Dallas, Texas)

"So let us begin anew—remembering on both sides that civility is not a sign of weakness, and sincerity is always subject to proof. Let us never negotiate out of fear. But let us never fear to negotiate.
Let both sides explore what problems unite us instead of belaboring those problems which divide us."
Inaugural Address, Jan. 20, 1961

Friday, November 11, 2011

Another Veterans Day: "Sweet and Fitting"


[Written 1917, published posthumously 1920]

Bent double, like old beggars under sacks,
Knock-kneed, coughing like hags, we cursed through sludge,
Till on the haunting flares we turned our backs
And towards our distant rest began to trudge.
Men marched asleep. Many had lost their boots
But limped on, blood-shod. All went lame; all blind;
Drunk with fatigue; deaf even to the hoots
Of tired, outstripped Five-Nines that dropped behind.

Gas! Gas! Quick, boys!---An ecstasy of fumbling,
Fitting the clumsy helmets just in time;
But someone still was yelling out and stumbling,
And flound'ring like a man in fire or lime...
Dim, through the misty panes and thick green light,
As under a green sea, I saw him drowning.

In all my dreams, before my helpless sight,
He plunges at me, guttering, choking, drowning.

If in some smothering dreams you too could pace
Behind the wagon that we flung him in,
And watch the white eyes writhing in his face,
His hanging face, like a devil's sick of sin;
If you could hear, at every jolt, the blood
Come gargling from the froth-corrupted lungs,
Obscene as cancer, bitter as the cud
Of vile, incurable sores on innocent tongues,---
My friend, you would not tell with such high zest
To children ardent for some desperate glory,
The old Lie: Dulce et decorum est
Pro patria mori*.

[* How sweet and fitting it is to die for one's country.]

The Silence of Veterans Day

In Flanders fields the poppies blow
Between the crosses, row on row,
That mark our place; and in the sky
The larks, still bravely singing, fly
Scarce heard amid the guns below.

We are the Dead. Short days ago
We lived, felt dawn, saw sunset glow,
Loved and were loved, and now we lie,
In Flanders fields.

Take up our quarrel with the foe:
To you from failing hands we throw
The torch; be yours to hold it high.
If ye break faith with us who die
We shall not sleep, though poppies grow
In Flanders fields.

By Lt. Col. John McCrae, written on May 3, 1915 upon witnessing the death in combat of his good friend Lt. Alexis Helmer, 22 years old.

Flanders Field American Cemetery and Memorial, Belgium

Thursday, November 10, 2011

Nike - Joe Paterno - Child Abuse - Common Sense

The Joe Paterno Center on Nike's campus outside of Portland houses Nike's child day care facility for its staff. The Oregonian reports this morning that Nike has no present intention to change the name on this building, notwithstanding the outrageous child abuse controversy presently surrounding Paterno and his football program at Penn State. Question for Nike: Is it really appropriate to have Paterno's name associated with a child care facility? Put his name on a sporting field, a gymnasium, the snack lounge, anyplace - but not on a child care facility.

The Non-Fixed, Illusional Copyright

CTV published a report today about magic troubles involving the Dutch illusionist, Hans Klok The article explains that Klok was found liable by a Dutch court for copyright infringement of a magic trick developed by his former assistant, Magician Rafael van Herck. The magic trick that is the center of the litigation is described as involving a fight with a stubborn butler, reaching through his body to get a glass of water, and capped by smacking off his head.

Apparently, you need to see it to appreciate it.

The article explains that the Dutch court determined that the magic trick is copyright protectable because the "combination is unique."

Hans Klok
The Dutch decision granting copyright protection to a magic trick addresses an interesting issue under U.S. copyright law. That is, can a magic trick (or any performance art, for that matter) be protected by copyright? The U.S. Copyright Act, of course, establishes fixation as a central tenet of copyright. "Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression * * *." 17 U.S. §102(a). So, the lack of fixation in a tangible medium of a publicly performed magic trick causes any thought of copyright protection to disappear up the sleeve before our very eyes.

But wait.

While there may not be any copyright protection under federal copyright law, there may be protection under a particular state's copyright law. The U.S. Copyright Act preempts any conflicting state law equivalent to "the exclusive rights within the general scope of copyright." But federal preemption exists only as to "works of authorship that are fixed in a tangible medium of expression." 17 U.S. §301(a). There is no preemption under federal law for works not fixed. 17 U.S. §301(b).

Indeed, California has its own version of copyright protection for non-fixed works.Under Cal. Civ. Code §980(a)(1), the state of California grants copyright-like protection to an original work of authorship that is not fixed in a tangible medium of expression. This copyright-like coverage would certainly appear to extend to the public performance of a magic trick, particularly a trick that the Dutch court determined is unique. Indeed, what can be more non-fixed than an act of illusion?

Now you see me, now you ......................................

Friday, November 4, 2011

Where, Or Where, Did The Copyright Litigation Go?

The federal litigation statistics published by the Office of U.S. Courts reveals striking information about the litigation climate for copyrights -- it's disappearing. For several years now, the number of filed copyright cases has been dwindling. The following table contains new copyright litigation filing data from U.S. Courts statistics for the past five years (no stats yet for 2011). There has been a consistent reduction in the number of new copyright cases filed with the federal courts during that time, representing a cumulative drop in new filings since 2006 of 63.85%.

New Copyright Cases Filed
% Change From Prior Year
Five year change


There may be different reasons for this trend, but the U.S. Copyright Office believes that the cost of copyright litigation, particularly for the small litigant, is one significant contributing factor. As a result, the Copyright Office is undertaking a study of the possibility of establishing a small claims resolution process for certain copyright claims. Possibilities include establishing a small claims department within the federal courts, providing for a small claims procedure through the Copyright Office, or some other small claims process. The Copyright Office wants to hear from interested persons on this issue. Its website provides information on this study, together with a link to provide comment. The comment period runs through January 16, 2012.

Odds and Ends: Oklahoma City Thunder; Blown Insurance Coverage; Marybeth Peters

Some odds and ends for Friday:

No Copyright Infringement By The Oklahoma City Thunder Basketball Team For "Go Thunder." The NBA team and its owner were sued for copyright infringement by the composer of a copyright registered song containing the words "Thunder Up," "Go Thunder," and "Let's Go Thunder," among other phrases. The composer argued that the Thunder cheer group, the team mascot, and members of the crowd often violated his registered copyright by using these words while chanting during Thunder games, plus in advertising and on banners. The composer sought up to 30% of the Thunder net gross as compensation. But, alas, the court gave the composer a slam dunk facial, pointing out that words and short phrases, including slogans, are ordinarily not copyrightable, that these common cheers do not contain minimal creativity supporting copyright protection, and that the idea embodied in these cheers merge into the common expression of the cheers. The court pointed out that merely because a copyright registration issues does not mean that there is copyright protection. Syrus v. Bennet (10th Cir., Nov. 3, 2011).

How To Void Trademark Insurance Coverage. Rockland was sued for trademark infringement, told its insurance company, GAIC, about the lawsuit some seven weeks later, and forwarded a copy of the papers to GAIC after about three months. The Second Circuit held that the obligation to provide immediate or prompt notice of claims to an insurer is breached when the purported covered party waits seven weeks to provide oral notice of a claim and three months to provide written notice of a claim. Rockland Exposition v. Great America Ins. Co. (2d Cir., Nov. 2, 2011).

Marybeth Peters Is Now A Part Of The Public Domain. Marybeth Peters, recently retired as U.S. Register of Copyrights for the past 16 years, has joined the private sector, electing to become a practicing attorney with the Oblon Spivak firm of Alexandria, Virginia. You cannot keep a good copyright lawyer down -- congratulations, Marybeth!

Thursday, November 3, 2011

Eliminate Software Patents: The White House Responds

My post of September 27 explained how the White House's We The People website elicited an interesting petition, presently supported by about 15,000 signatures, to eliminate the issuance of software patents. The White House  responded to this petition, and explains its position on software patents. The White House argues that the recently enacted American Invents Act (AIA), and the resulting patent reforms, will reduce the number of overly broad business method patents that may improperly reach into unpatentable areas. The White House further points out that the PTO's renewed emphasis on quality patent review will assist in this effort. Read the entire response provided by the White House and provide your comments as to whether the AIA will reduce the prior level of perceived abuse in the issuance of overly broad method patents.