Ghouls, Goblins and Beer

On this frightful day of ghouls and goblins of all shapes and sizes, let us pause to toast a singularly important individual. Joseph Bramah of Yorkshire, England (1748-1814) on this date applied for his beer engine patent. Bramah was a proficient inventor, having devised the Bramah lock, the hydraulic press, the rotary engine, the first pumper fire truck, and other important inventions during England's Industrial Age. But he will, perhaps, best be remembered for the device that led to frothy suds, the beer engine device that became the precursor to the beer tab. England's Patent Office bestowed Patent No. 2196 on this device. Subsequent adaptations lead to the beer faucet (U.S. Patent No. 325,316, issued Sept. 1, 1885 to E.A. Byrne and J. P. Lenahan), a close cousin to today's beer tap.

There is an additional patent that Bramah obtained that in some circles closely compliments the beer engine. That is, Bramah received an English patent for the flushing toilet in 1778.

So, here's to Bramah. Tonight, let us offer up a toast!

Joseph Bramah (1748 - 1814)

More on the Computer Fraud and Abuse Act

My post of May 5, 2011 discussed the recent Ninth Circuit criminal case of US v. Nosal applying the Criminal Fraud and Abuse Act to actions by an employee that violate an employer's rules of computer usage. Two out of three members of the Ninth Circuit panel determined that an employee's violation of an employer's computer use restrictions can constitute a felony under the CFAA. In effect, the Ninth Circuit's opinion permits a private entity -- an employer -- to define what is or is not criminal liability under the CFAA. Utah District Judge Tena Campbell, sitting by designation on the Ninth Circuit panel, dissented from the majority decision, arguing that if every violation of an employer's computer use rules, including innocuous, personal usage, created felony liability under the CFAA, then the arbitrary application of the CFAA would render the CFAA unconstitutionally vague.

A majority of the rest of the Ninth Circuit must believe that Judge Campbell's view has merit. Last Thursday, the Ninth Circuit entered an order agreeing to rehear the Nosal case en banc. The prior Nosal opinion is no longer valid. More to come.

To Obtain A Trademark Registration, There Must First Be A Trademark

It sounds axiomatic that the registration of a trademark requires the existence of a trademark. Similar to giving birth, a trademark can register only after it exists. Rene Descartes said it best: Cognito ergo sum ("I think, therefore I am").

But some trademark owners claim the right to a trademark when, in fact, there is no trademark. A case in point pertains to the recent decision of the Trademark Trial and Appeal Board upholding the refusal to register the proposed trademark LOCKBACK pertaining to a folding utility knife. The examiner refused to register based on descriptiveness and the TTAB agreed. Indeed the TTAB determined that the proposed mark is generic and pointed to the product packaging provided by the applicant as proof of genericness.

The TTAB observed that the proposed mark is used on the product packaging in a manner that serves to described the product rather than in a manner that serves as a trademark.

The term “Lockback” is used to describe the type of utility knife (i.e., “Folding Lockback Utility Knife”). The term “Lockback” is not set off from the other words with which it is used.  “Lockback” is displayed in the same size, font, and style as “Folding” and “Utility Knife.”  As displayed on the package, consumers would perceive Ser No. 76679933 SHEFFIELD as a trademark, but not “Lockback.”  In this regard, applicant’s use of the federal registration symbol does not transform “Lockback” into a trademark.  See In re Aerospace Optics Inc., 78 USPQ2d 1861, 1864) (TTAB 2006); In re Brass-Craft Manufacturing Co., 49 USPQ2d 1849, 1853 (TTAB 1998); In re Remington Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) (mere use of the “TM” indicator cannot transform an otherwise unregistrable term into a
trademark). 

The lesson: if you want to register a word as a trademark, then it is necessary to treat the word as a trademark. As instructed by the TTAB regarding the LOCKBACK application:

1. Don't use the proposed mark on packaging to describe the product.
2. Set off the proposed mark on the package so that it looks different from surrounding text. Use different font style, font size or graphics to create a different appearance for the proposed mark than the surrounding text.
3. Do not use another word on the packaging that appears to be the trademark, thereby creating confusion as to the true trademark.
4. Merely putting a TM symbol next to the proposed trademark does not create a trademark.

Cognito ergo sum

PTO To Critique China's Patent Enforcement

Encouraging public insight to pour forth, the PTO has requested comments from inventors regarding personal experiences in enforcing patent rights in China. The PTO will use these public comments to prepare a report on the patent enforcement landscape in China.

The PTO held a series of roundtables in several Chinese cities this past summer to develop experience-based knowledge into enforcement of patent rights in China. The specific topics of the roundtables included:

1. the ability to acquire and enforce utility model and design patents in China,
2. the process of evidence collection and preservation in Chinese courts,
3. the ability to obtain damages and injunctions in Chinese courts,
4. the enforceability of Chinese court orders, and
5. administrative patent enforcement in China.

Now, the PTO is extending an invitation to any member of the public to submit written comments of personal experiences in China dealing with each of the above five patent protection topics.The PTO notice in the Federal Register, published October 17, explains:

To ensure that the USPTO receives a wide array of views, the USPTO would like to invite any member of  the public to submit written comments on China’s patent enforcement system, including, but not limited to, the five specific issues listed above. Examples of firsthand experience using China’s patent enforcement system, and recommendations on ways to improve the system, are encouraged. Based on these comments, the USPTO intends to produce a report that details the patent enforcement landscape in China and identifies any challenges faced by U.S. innovators, together with recommendations for improving the system.

Written comments can be e-mailed no later than November 4 to IP.Policy@uspto.gov, or mailed to Mail Stop OPEA, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 USA, Attention: Elizabeth Shaw.

Creation and Protection of an Actor's Audiovisual Performance Right

As discussed in my August 4 blog post, WIPO has shown a recent and enlivened interest in developing international copyright-based protection for an actor's audiovisual performance. Further to its purpose of protecting performance rights for actors, WIPO has recently announced that it intends to convene a diplomatic conference in 2012 to finalize a treaty protecting the rights of actors in their audiovisual performances.

The preliminary drafts of the proposed WIPO Treaty for the Protection of Audiovisual Performances give the exclusive right in the first instance to actors for the download of their performances by wire and wireless means.The current draft of the treaty provides in pertinent part that "Performers shall enjoy the exclusive right of authorizing the making available to the public of their performances fixed in audiovisual fixations, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them." In other words, the treaty gives actors the exclusive right to control on-demand downloads of movies. As an alternative to granting actors exclusive rights over movie downloads on demand, the proposed treaty allows a contracting party to "establish a right to equitable remuneration for the direct or indirect use of performances."

A proposed amendment to the current draft would permit the transfer of the actor's exclusive right to the producer of the audiovisual work. "Contracting Parties may provide in their national law that once a performer has consented to incorporate his or her performance in an audiovisual fixation, the exclusive rights of authorization * * * shall be owned or exercised by the producer of the audiovisual fixation."

It will be interesting to understand how the proposed international protection of audiovisual performances will play out in the U.S. Under the U.S. Copyright Act, a motion picture or other audiovisual work is deemed to be a work for hire, meaning that the authorship (and the right to copyright in the first instance) vests with the commissioning party, provided that there is a writing signed by the parties indicating that the work is a work for hire. Since application of U.S. law stops at the border, there may be a real concern on the part of motion picture and audiovisual producers, distributors and lenders regarding an independent performance right of actors in on-demand downloads occurring outside of the U.S. If foreign law does not recognize the U.S. work for hire rule in relation to the actor's performance rights, then the work for hire principle may not have much viability for overseas on-demand downloads of audiovisual and motion picture work. In this case, producers and commissioning parties may need to re-evaluate their actor compensation models and actor assignment agreements. Importantly, given the longevity of copyright interests in motion pictures and audiovisual work, producers, distributors, commissioning parties and actors should begin planning now for the potential impact of WIPO's proposed treaty.

Is 100,000 Year Old Art Copyrightable?

The October 11th edition of Science magazine features an article concerning the discovery of an early-human "art factory" in the Blombos Cave area of South Africa. The archaeological find may provide important insight into the early development of human reasoning, including the development of creative tasks. This find also raises an interesting question in copyright. That is, if the landowner of a parcel of land on which an ancient piece of art is found outside of the U.S. becomes the lawful owner of the treasure trove, does this also mean that the landowner can claim a U.S. copyright interest in the previously unpublished art once the art is published in the U.S.?

This past week on October 5, the Supreme Court heard argument in the copyright case of Golan v. Holder. The issue in Golan involves the constitutional ability of Congress to "restore" copyright protection to a work in the public domain under Section 104A of the U.S. Copyright Act. Reports of the oral argument in Golan suggest that Justice Ginsburg may be leaning to upholding the right of Congress to allow copyright protection for a work in the public domain under the view that a foreign work may never have had protection in the U.S. in the first instance (Scotusblog contains a full set of links to the various elements of this case). If an aged, foreign work has never been protected in the U.S., then one line of thinking suggests that there should not be anything wrong with granting full protection once the aged work comes into the U.S., even if the work becomes subject to U.S. copyright law years after its creation, assuming that the work is protectable in its home country.

Which takes us back to the ancient art factory in the Blombos Cave of South Africa. Wondering out loud what Justice Ginsburg's reaction would be to a copyright claim on a piece of art that newly arrives in the U.S. from the Blombos Cave? If the owner of the Blombos Cave art seeks to protect the 100,000 year old work under U.S. copyright law, would such an event not cause Justice Ginsburg, and everyone else, a bit of heartburn, assuming that South Africa would extend copyright protection to the previously unpublished work? Just thinking out loud.

Wyden to Obama: Declare ACTA Invalid

In his October 12th letter to President Obama, Sen. Ron Wyden (Dem., Oregon) asked President Obama to declare that the United States is not bound to comply with the terms of ACTA. The U.S., through the Office of the U.S. Trade Representative, and together with seven other nations, signed on October 1st in Tokyo the Anti-Counterfeit Trade Agreement. The signing nations are: U.S., Japan, Australia, Canada, Morocco, New Zealand, Singapore and South Korea. Of note, China, India and Malaysia are among the many nations not signing this agreement. ACTA seeks to establish an international legal framework for the uniform enforcement of intellectual property rights. Sen. Wyden argues in his letter that the President does not have authority under the U.S. Constitution to bind the United States on an issue relating to intellectual property and trade -- that only Congress has this authority. No response from President Obama has been noted to date, and no other members of Congress co-signed this letter with Sen. Wyden.

Rosh Hashanah

Happy Rosh Hashanah, the Hebrew New Year. The new year begins for people, animals and legal contracts.

Xenophobic Customer Support

New York Senator Charles Schumer may be experiencing a bit of xenophobic tendencies in his newly submitted bill, S. 1536. This proposed legislation, sponsored by only two other accomplices (Sen. Casey and Sen. McCaskill) seeks to require all U.S. businesses that outsources "customer service communication," via phone or wire, to (1) require that the physical location of the customer service assistance must be disclosed at the commencement of the communication, (2) require U.S. businesses to certify compliance annually to the FTC, and (3) authorize the FTC to penalize businesses that fail to comply.

My goodness. Everyone knows that call centers are located all over the place, both inside and outside of the U.S. Does anyone really care where the call center is located? Is it not more important for consumer purposes that the call center employee communicate effectively so as to properly assist the consumer's inquiry? Frankly, I have communicated with call center employees whom I suspect are located within the U.S. yet speak poor English and are difficult to understand. I have communicated with call center employees whom I suspect are located outside of the U.S. who speak English very plainly.

I'm wondering if this type of legislation is really needed. Does this sort of bill speak more to the fear of foreign workers? The location of a call center is not important. Most people would be surprised that when they place a call to a Miami-based cruise line that they are likely speaking to a call center off a land-locked freeway interchange in Springfield, Oregon. This is but one example of how modern communication technology allows the placement of call centers anywhere in the world. The issue should not be where the call center is located. The issue, rather, should be whether the person on the other end of the line knows how to schedule a cruise, answer a question responsibly, and communicate well.

Is it scandalous? Look in the dictionary!

Is the design of a bottle, shaped to resemble a hand flipping the bird (a hand with the middle finger extended), scandalous and therefore not subject to trademark registration in the U.S.? Here is the proposed mark:

Luxuria, s.r.o. sought to register the mark depicted by the shape of the above bottle. The examining attorney took the position that this proposed mark is scandalous and not entitled to registration in the U.S. The matter was appealed to the TTAB, and the refusal to register was affirmed. The TTAB, citing existing law, confirmed that scandalous material cannot be registered, and confirmed further that vulgar material is scandalous for purposes of denying registration. Of note, the TTAB held that for purposes of defining whether material is scandalous, the PTO examiner can rely on dictionary definitions alone.

Dictionary definitions alone, if a term has no other meaning, are sufficient to satisfy the Office’s burden of showing that the mark is scandalous to a substantial composite of the general public.

Indeed, the examining attorney cited to several dictionary definitions of giving the bird to establish that, as far as lexicographers are concerned, the gesture is scandalous. So there you have it. If you can't tell whether material is or is not scandalous, look in the dictionary.

Petition to Eliminate Software Patents

The White House's website contains a We The People section, allowing common folks to petition the government via the web. The White House promises that it will respond to each petition that amasses a threshold number of e-signatures within a stated period of time. The present threshold is 5,000 e-signatures within 30 days of petition posting. There have been numerous petitions posted, but the one petition that has accumulated the most number of e-signatures in the shortest period of time (over 11,000 signatures in four days, so far) seeks to prevent the issuance of any further software patents in the U.S., and to cancel the software patents that have issued. Here is the text of the petition:

We petition the Obama administration to: 

Direct the Patent Office to Cease Issuing Software Patents 

The patent office's original interpretation of software as language and therefor patentable is much closer to reality and more productive for innovation than it's current practice of issuing software patents with no understanding of the patents being issued. 

Under the patent office's current activity, patents have been come a way to stifle innovation and prevent competition rather than supporting innovation and competitive markets. They've become a tool of antitrust employed by large companies against small ones. 

To return sanity to the software industry - one of the few industries still going strong in America - direct the patent office to cease issuing software patents and to void all previously issued software patents.

Happy Birthday, Scott -- Beat On!

F. Scott Fitzgerald was born in St. Paul, Minnesota on this date in 1896. A distant counsel of Francis Scott Key, for whom he was named, Fitzgerald could not carry a tune, but boy could he write!

Change to Blog Address

Notice: My blog address is migrating from us-ip-law.blogspot.com to us-ip-law.com. Same great blog, just at a different site.

Now You See It -- Now You Still See It!

One prerequisite to copyright protection is fixation. A work must be fixed in a tangible medium so that the embodiment is sufficiently permanent or stable to be perceived for a period of more than "transitory duration." So sayeth the Copyright Act. Under this statutory definition of fixation, is a garden filled with shrubbery and flowers fixed? The Seventh Circuit does not think so. Last February, the Seventh Circuit determined that the constant growth of plants in a garden destroyed the fixation, and thus the copyrightability, of a garden. And three weeks ago, the federal court in California (Kim Seng Company v. J. & A. Importers, Inc., CV 10-742) held that there cannot be copyright in a sculptured food dish, determining that food is perishable and, well, not fixed.

I don't know about anyone else, but I can store an arrangement of food on a plate in my refrigerator for more than a "transitory duration." I did so in college and I still do so. This is just the way it is in real life! Indeed, an examination of my refrigerator will reveal food that has been sculptured on a plate for days. Since copyright is not claimed in taste, but in appearance of food on a plate, a several day chill-out in my frig is not "transitory." As for the Chicago public garden, if the shrubs and flowers in Chicago grow as slowly as mine on the Pacific Coast, is a shrub and flower display really transitory? Just because a lawn is mowed weekly does not mean that  there cannot be a lawn sculptor, right? I mean, aren't brass statues polished periodically? Aren't old paintings touched up every decade or so? Aren't photos enhanced, cropped, stapled, mutilated and put back together?

Does the Supreme Court really need to explain the meaning of transitory to us?

Copyright Protection for Sound Recordings – Now

The Sound Recording Simplification Act (H.R. 2933) was introduced in the U.S. House last week, seeking to extend U.S. copyright protection to sound recordings fixed before February 15, 1972. Presently, §301(c) of the U.S. Copyright Act provides that federal copyright law does not preempt the common law and statutes of any U.S. state with respect to sound recordings fixed before February 15, 1972. This preemption prohibition drops out in 95 years – by February 15, 2067. The newly proposed legislation would delete this section entirely to provide exclusive Copyright Act protection to these sound recordings – now.

All the great hits of The Beatles, The Rolling Stones, Buddy Holly, Charlie Parker, The Beach Boys, The Big Bopper and more, that were fixed prior to February 15, 1972, are presently protected by local and state laws, including criminal laws, right of publicity laws, and a patchwork of other laws. This lack of uniformity, consistency and clarity in protecting this material has been a concern to librarians, historians, archivists and other users. On the other hand, the music industry has developed a comfort level, for the most past, with the present system by creating contract-based relationships and contract work-arounds.

Recorded radio broadcasts of the Four Horsemen, recorded civil rights speeches, recorded scholarly lectures and interviews by Faulkner, Einstein and others, and a host of additional historical material, would be protected in a uniform and certain manner by extending the exclusivity of the Copyright Act to these sound recordings.

Frankly, it makes sense to bring all copyrightable work under the wing of protection of uniform federal copyright law. The development of new digital technologies that permit enhanced access to new and historical works can best be regulated under a definitive and uniform national law. Since the present Copyright Act is the vehicle for national protection of all copyrightable work, except for pre February 15, 2067 sound recordings, the elimination of this singular exception will assist the uniform protection of all work in the face of new technologies.

“Where have you gone Joe DiMaggio …” 

Denton True Young

There, on this day in 1890, well before the so-called Modern Era of baseball, stood Denton True (Cy) Young, pitching for the Cleveland Stingers in his first professional game. Cy pitched in Cleveland, St. Louis and Boston before his amazing 22-year career was complete, amassing 511 wins.

Cy was elected to the Hall of Fame in 1937. The Cy Young Award, given to the best pitcher in each league, was instituted in 1956.

"Let others hunt, or fish, or sail

Afar o'er ocean's foam;

Give me the game that's played among

The sweet green fields of home.

Bases pitch on a level spot,

Beneath a smiling sky,

No sport for pleasure or for health,

With Base Ball then can vie..."


The Base Ball Song, by W.J. Bullock, 1874

New Protection For Film And Video Actors?

WIPO appears to be moving toward the revival of talks to develop a treaty to protect the performance rights of actors in audiovisual works. The potential issues in this treaty would not only extend moral rights to actors over their performance, but would extend control to actors over the ownership of their performance and the transfer or license of their performance to AV producers.

WIPO has been pressing since 1996 for some sort of performance rights protection but has not seen much movement. Its historical white paper appears here. WIPO now is exhibiting renewed energy in developing a consensus of members at this time.

The U.S. does not recognize moral rights in the same way as exists in other legal systems, although there is a limited right of attribution and integrity to authors of works of visual arts (Section 106A). Further, the U.S. has in place a "work for hire" rule in which the commissioning party in AV works receives a copyright interest without an assignment or transfer from the actors.

Any adherence by the U.S. to WIPO's proposed treaty would certainly require a re-work of both Section 106A's limited moral rights and the work-for-hire rule. It would perhaps also require new consideration of an actor's performance as a stand-alone work, separate from the AV material, together with re-thinking the early termination right.

Javier Bardem testified at a recent WIPO hearing concerning the proposed treaty, and his statement is set out here.

The Big 5 - 0 For The Big 4 - 4

Happy Birthday, Mr. President.

More On India's Missing Trademark Files

My post of last May 5th commented on the large number of trademark files that the government of India ... lost. It is now confirmed by India that some of these files have been found, but many still remain ... lost. Last week's announcement from India's Office of Controller General explains that, as of last April, some 37,046 trademark files could not be accounted for. The good news is that some 12,683 files have now been found. As for the rest, the government has been able to reconstruct some files with the aid of the registrants, the government has ignored some files since the marks had not been renewed (the files are still lost, but who cares?) and some 8,183 files continue to be ... lost.

Two comments. First, if one of the purposes of a trademark registration is to allow registrants to protect the commercial value of their marks, how does the Indian government's failure to manage its trademark files allow for commercial growth and confidence in India, and how does all of this impact U.S. business partners of Indian firms? Very scary. And second, it goes without saying that the annual fee "diversion" from the PTO raises the specter of similar burdensome administrative problems with the PTO. Another very scary concern for commercial business that relies on IP.

Bad Faith Patent Litigation is Sanctioned

The Federal Circuit provides an important review of the expected legal and professional standards for non-practicing patent plaintiffs in the pursuit of their infringement claims. The new case is Eon-Net v. Flagstar Bancorp. The opinion describes the plaintiff, Eon-Net, as being in the lawsuit business. It, or its related entities, filed over 100 lawsuits and, in almost all cases, sought to settle quickly at a small fraction of the defendant’s anticipated litigation costs. In this instance, Flagstar Bancorp refused to settle and fought hard.

Eon-Net’s patent relates to a system of extracting information originating from a hard copy document and placed into computer memory. After extensive and expensive discovery, Flagstar filed its motion for summary judgment, confirming that it did not extract customer information from a hard copy document but rather from its website. The district court granted the motion and determined that the case was exceptional and merited an award of fees. The district court further allowed defendant’s Rule 11 motion for sanctions. Significant attorneys’ fees and sanctions were awarded against Eon-Net and its counsel.

The Federal Circuit reviewed the patent and confirmed that the claims and written description “repeatedly and consistently” defined the invention as a process that derives information from hard copy documents. “[T]he term ‘hard copy document’ appears over 100 times in the common disclosure of the [three] patents.” Flagstar’s customer information came from its website and not from hard copy documents. The case was not “a close call.” “[T]he specification unequivocally compels the construction adopted by the district court.”

The Federal Circuit confirmed that an exceptional case finding to support an award of awarding attorney fees must be based on clear and convincing evidence. The Federal Circuit will not overturn a district court’s determination except upon a finding of clear error. The Federal Circuit determined that the district court’s exceptional finding was not clear error because:

Plaintiff engaged in litigation misconduct:

• It destroyed relevant documents prior to litigation.
• It intentionally did not implement a document retention plan. Indeed, plaintiff’s principal testified that “I don’t save anything so I don’t have to look.”
• It engaged in abusive litigation tactics in that it failed to engage the claim construction process in good faith, it failed to offer a construction for any disputed claim terms, it lodged incomplete and misleading extrinsic evidence and it submitted declarations that contradicted earlier deposition testimony.
• It showed lack of regard for the judicial system by testimonial statements from its principal (“I am so sick of this stuff, especially this haggling over stupidities and trivialities which is the name of the game in litigation.”

Plaintiff brought baseless infringement litigation in bad faith and for an improper purpose: 

• The plaintiff’s patent “clearly refutes Eon-Net’s claim construction.”
• The infringement claim had an “indicia of extortion” because “it was part of Eon-Net’s history of filing nearly identical patent infringement complaints against a plethora of diverse defendants, where Eon-Net followed each filing with a demand for a quick settlement at a price far lower than the cost to defend the litigation.” “[T]hose low settlement offers – less than ten percent of the cost that Flagstar expended to defend suit – effectively ensured that Eon-Net’s baseless infringement allegations remains unexposed, allowing Eon-Net to continue to collect additional nuisance value settlements.”
• As a non-practicing patent plaintiff, Eon-Net had little to lose in the litigation. “In addition to its ability to impose high costs to defend against its meritless claims, Eon-Net placed little at risk when filing suit. As a non-practicing entity, * * * Eon-Net did not face any business risk resulting from the loss of patent protection over a product or process.  Its patents protected only settlement receipts, not its own products.”

The Federal Circuit took particular point to explain the obligation of plaintiff’s attorney. While plaintiff’s attorney stated at oral argument that his client was “difficult to control,” the opinion points out the obvious; “an attorney, in addition to his obligations to his client, has an obligation to the court and should not blindly follow the client’s interests if not supported by law and facts.”

On the issue of Rule 11 sanctions, the Federal Circuit upheld the district court’s determination and observed that plaintiff’s attorney “failed to perform a reasonable pre-suit investigation.” The court confirmed that “A reasonable pre-suit investigation, however, also requires counsel to perform an objective evaluation of the claim terms when reading those terms on the accused device.”

An award of attorneys’ fees and costs of $489,150.48 was upheld, as was the Rule 11 sanction of $141,984.70.  Grand total: $631,135.18.

Sobering.