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 saurabh.vishnubhakat@uspto.gov. More information regarding mandatory assignment filing is available in the Federal Register.

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

Another Veterans Day: "Sweet and Fitting"

DULCE ET DECORUM EST

by WILFRED OWEN

[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

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 ......................................

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%.
 

Year	New Copyright Cases Filed	% Change From Prior Year
2006	5488	--
2007	5074	-7.54%
2008	3346	-34.06%
2009	2780	-16.92%
2010	1984	-28.63%
Five year change		-63.85%

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!

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.

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.