Thursday, April 28, 2011

Federal Juris-Prudent

It is interesting how really smart, astute, worldly and, at times, humorous, a federal judge can be about so many issues that require attention and decision. See this interesting Order from Judge Melgren of the District of Kansas.


Keith Aoki

An amazing copyright scholar, Keith Aoki, passed away yesterday at the age of 55. Most recently, Keith taught law at UC Davis, but much of his earlier career was spent at the University of Oregon School of Law where he taught several IP courses including, yes, copyright law. After Keith left UO for UC Davis, I had the amazing fortune to spend several years teaching the copyright law class at UO as an adjunct. I was unimaginatively humbled to slide into Keith's spot.

A wonderful write-up about Keith's scholarship and life work is presented on The Public Domain. I'm sure that more information will be provided in the days to come at the UC Davis law school site and the UO law school site.

Keith successfully merged his comic drawing talents with his IP scholarship. A copy of his entertaining and creative Pictures within Pictures should not be missed.

Thursday, April 14, 2011

What We Learned From our Mothers

Do not steal. And if you do steal, give it back and apologize.

Many of us learned this basic truth in our youth, but the message is often forgotten in adulthood. Or, so it seems when it comes to IP infringement. Indeed, the more public and obvious the infringement, the greater the apparent need for an embarrassing public apology.

We all may recall that John McCain's presidential campaign, along with the Republican National Committee and the Ohio Republican Party, were sued by Jackson Brown for infringement of his classic "Running on Empty" during the McCain-Obama presidential contest. McCain provided an embarrassing and public apology for the infringement as part of the settlement of the ensuing litigation.

Most recently, two days ago former Florida governor Charlie Crist posted a video apology on You Tube relating to the unauthorized use by his 2010 Senate campaign of the Talking Heads' 1985 classic "Road to Nowhere." The full text of the Crist apology is transcribed and follows:
Hi, I’m Charlie Crist. During 2010, I ran for a seat in the United States Senate. During that campaign, a video advertisement utilized a song made famous by David Byrne and the Talking Heads called Road to Nowhere. The advertisement was posted on my campaign website, on You Tube and sent out via e-mail. Regrettably, the campaign did not ask permission to obtain a license from Mr. Byrne to use Road to Nowhere in the advertisement. In fact, Mr. Byrne has never permitted his songs to be used for advertising of any kind, a position I respect deeply. The use of David Byrne’s song and his voice in my campaign advertisement without his permission was wrong and should not have occurred. I do not support, nor do I condone, any actions taken by anyone involved in the Senate campaign that were inconsistent with David Byrne’s rights, or with any other artist’s rights, or the various legal protections afforded to intellectual property. I sincerely apologize to David Byrne for using his famous song and his unique voice in my campaign advertisement without his permission. I pledge that should there be any future election campaigns for me, I will respect and uphold the rights of artists and obtain permission or a license for the use of any copyrighted work. Thank you.
It is an ironic observation that politicians as a class are not immune to infringement claims when many politicians are working in Congress to stem abuse of U.S. IP. In any event, politicians, and all of us, need to be vigilant concerning the wrongful use of IP owned by others. This is particularly true when oversight may be lacking in large organizations, or when the IP misuse occurs during the heat of the moment. Indeed, this is exactly why organizational and managerial tools must be in place in all organizations to insure that infringement does not occur by lower ranking employees.

And if infringement does occur, someone will have to eat crow. Or, post an embarrassing apology.

Monday, April 11, 2011

Ninth Circuit: The Winklevosses Cannot Undo Their Facebook Settlement

The Ninth Circuit holds today that the Winklevoss twins and Divya Narendra (the “Winklevii”) cannot void their settlement with Facebook. The Winklevii accused Mark Zuckerberg of stealing the idea for what has become Facebook while they were students at Harvard. For its part, Facebook accused the Winklevii of hacking into the Facebook computers and attempting to steal Facebook users.

The parties sought to end their contentious litigation by entering into a settlement arrangement. They signed a short, one and one-third page, handwritten settlement document, including a full release and an agreement that all information presented during the settlement discussions were confidential and could not be introduced in any judicial proceeding. The Winklevii received considerable cash and Facebook shares in the settlement. Unfortunately, their disputes continued unabated, and the parties continued to disagree as to whether the settlement was valid. The Winklevii argued in part that the settlement was not valid due to the omission of material terms. They also argued that the settlement was induced by fraud; specifically, that the value of Facebook was less than it was represented to be during the course of the settlement discussions.

Both the trial court and, now, the Ninth Circuit have held that the settlement is valid and enforceable. As to the question of whether material terms were omitted, the Ninth Circuit found that all material terms that needed to be included were included. Concerning the issue of fraudulent representation of Facebook value that the Winklevii argued induced their agreement to settle, the Ninth Circuit held that this claim was fully released and, in any event, could not be proven due to the confidential nature of the information disclosed during settlement discussions. Of note, the Ninth Circuit points out that the present value of Facebook is some 3.33 times the value that the Winklevii claimed they were lead to believe the shares were worth during the settlement discussions.

Finally, the Ninth Circuit’s pointed observation about this dispute bears some scrutiny:

The Winklevosses are not the first parties bested by a competitor who then seek to gain through litigation what they were unable to achieve in the marketplace. And the courts might have obliged, had the Winklevosses not settled their dispute and signed a release of all claims against Facebook. With the help of a team of lawyers and a financial advisor, they made a deal that appears quite favorable in light of recent market activity. See Geoffrey A. Fowler & Liz Rappaport, Facebook Deal Raises $1 Billion, Wall St. J., Jan. 22, 2011, at B4 (reporting that investors valued Facebook at $50 billion —3.33 times the value the Winklevosses claim they thought Facebook’s shares were worth at the mediation). For whatever reason, they now want to back out. Like the district court, we see no basis for allowing them to do so. At some point, litigation must come to an end. That point has now been reached.

Friday, April 8, 2011

Response To The Slants Trademark Post

My March 25, 2011 post addressed whether the PTO is too touchy when it comes to perceived scandalous trademarks. Below is a response that I received to that post from the attorney for the trademark applicant, the Slants music group:

"Hi Michael:

Not sure if you remember this, but I believe that you and I spoke for a few minutes a few years back at a CLE. Hope you are doing well. I was reading up on some of the recent commentary regarding the trademark case involving my client, The Slants, and I noticed you recently talked about the case on your blog. I appreciate the coverage, but I also wanted to point out that this matter is one that involves an allegedly “disparaging” mark and not a “scandalous” one. The difference is significant because, unlike the case of scandalous marks, the legal test for deciding whether a mark is disparaging ultimately looks only to the views of the referenced group (as opposed to the views of the general public). See In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267 (TTAB 2006) (citing Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1740-41 (TTAB 1999), rev’d on other grounds. The point was also addressed in the Harjo case at 1339, where the opinion states that “the perceptions of the general public are irrelevant…[O]nly the perceptions of those referred to, identified or implicated in some recognizable manner by the involved mark are relevant to this determination.”

Best regards,

Spencer I. Trowbridge, Esq.
McNamer and Company
920 SW Third Ave, Suite 200
Portland, Oregon 97204
ph: 503.727.2502 fax: 503.727.2501"

USPTO Will Not Close Today

The USPTO has issued its press release informing the public that, in the event of a government shut down after today, it will remain open and operational through April 18, 2011.

Tuesday, April 5, 2011

Trademark Audit

A trademark audit, comprehensive to unfold,
Doth require patience, detail and examination in bold.
The audit provides true knowledge of worth,
And, Eureka, its owner sees royalties with mirth.

See yesterday's blog, down below, for a summary list of issues to address in a trademark audit.

Monday, April 4, 2011

Have You Audited Your Trademarks?

Do you know what intellectual property your business owns? Do you know what type of legal and business condition your business IP is in? Maintaining clean intellectual property is just as important as maintaining a clean set of financial records. Your financial records are audited, right? So, too, should your business IP be thoroughly examined. Doing so provides assurance of ownership, confirms value, clarifies rights of use, and places your business is a better posture for the license of its IP or the sale of its assets.

This article provides a list of potential issues to address concerning your firm’s trademarks. Future articles will address domain names, copyrights, patents and trade secrets.

Here is a list of potential issues to consider in conducting a trademark audit.

Trademark Due Diligence:

 Have you identified your firm’s trademarks? Is the trademark limited solely to a word mark or to a design mark (logo)? Or, does your firm’s trademark include product trade dress, the design of a product or its packaging?

 Have you documented your firm’s trademark use? Do you have written documents showing specifically how your trademark is used? If not, why not?

 Have you registered your trademark for each type of good or service that your firm offers to the public? If not, why not?

 If your firm is using its trademark on different goods or services than as indicated in a trademark registration, is it appropriate to apply for an additional registration for the non-covered goods or services?

 If your firm uses its trademark on its website, is the on-line usage of the trademark covered by the trademark registration? Should there be an additional registration covering on-line usage?

 Have you conducted a search to determine whether there are other users of your trademark (or a similar version) and trade dress for similar goods or services? If not, why not?

 Have you documented your firm’s trademark and trade dress ownership? Was your firm’s trademark or trade dress initially developed or used by former owners of your business? Or by other parties? If so, does a transfer document exist from the prior users to your firm? If not, why not?

 If your firm acquired its trademark or trade dress from another person or party in the past, has a transfer document been recorded with the U.S. Patent and Trademark Office?

 Have you documented the first use date of your firm’s trademark or trade dress for each type of good or service provided by your firm? If so, does your documentation of first use adequately establish usage in interstate commerce, foreign commerce or commerce with the Indian tribes (these are the forms of "commerce" that Congress has the right to regulate)?

 Have you obtained documentation of the first use date of any trademark or trade dress obtained from a prior user?

 Is your firm’s trademark or trade dress “free and clear” of liens or encumbrances? Has your firm given a security interest to a lender covering your firm’s trademarks or trade dress? Or, covering “general intangibles”? Has a prior owner of your firm’s trademark or trade dress given a security interest to a lender covering the trademark, or covering general intangibles? If you license the use of a trademark or trade dress, has your licensor given a security interest in the trademark or trade dress, or in its general intangibles?

 Does your firm use its trademark or trade dress in a consistent manner, or does it modify its trademark or trade dress from time to time? Does the present use of your firm’s trademark or trade dress match exactly the representation or design that is registered (as to font, color, styling and other design attributes)? Has the appearance of your firm’s trademark or trade dress been altered over time, even slightly? If so, is it appropriate to apply for a new registration for the modified styling?

 Does your firm use its trademark or trade dress in foreign countries? If so, has it obtained protection in foreign countries?

 Does your firm intend to use a new trademark in the future? If so, has it filed an Intent to Use application with the Patent and Trademark Office?

 Does your firm license the use of its trademark or trade dress to others? Here, the term “license” applies to all forms of permission, from implied consent, to a consensual handshake, to a formal license document. If a license exists, is it in writing? If it is not in writing, why not?

 Does your trademark license contemplate new uses that presently do not exist but which may subsequently develop in your industry?

 Have you obtained the right to use a trademark or trade dress pursuant to a license obtained from another person or firm? If so, is it in writing? Is the trademark free and clear?

 Does the license to use a trademark or trade dress include specific obligations concerning quality control of the usage, the type or manner of usage, or other limitations or requirements of use? If not, why not? Does the licensor actually monitor quality control of the licensee’s usage? Does the licensee actually comply with its quality control obligations?

 Does the license to use a trademark or trade dress give the licensee any rights to the trademark or trade dress? Does it limit the usage of the trademark or trade dress to certain goods or services, or to certain geographic areas? Does it include a provision to reconcile any dispute concerning trademark use, quality control, termination of use and royalty?

 The PTO requires the filing of periodic maintenance documents, and the payment of periodic fees, in order to prevent cancellation of a trademark registration. Is someone specifically charged with monitoring and maintaining the registration status of the trademark?

 Do you allow your dealers, distributors or customers to use your firm’s trademark in their business name, in their domain name, or in their marketing materials? If so, do you have written documentation controlling this usage? If not, why not?

 What is your trademark worth? What is your trade dress worth? What would happen to your business in the event your firm lost the exclusive use and control over its trademark or trade dress?

The foregoing list of trademark due diligence issues is not intended to be comprehensive. Every business is different and these issues should be considered in the context of a particular business. But these issues represent the basics for many business users.

Saturday, April 2, 2011

Condom-Free Sex Film Tax Credits

Item No. 1: California requires sex actors working in pornographic film to use condoms.

Item No. 2: California has fined Hustler for non-protected sex by actors in its sex film shot in California.

Item No. 3: The Oregon House has agreed to extend the film production credits that were otherwise set to expire by the end of this year. These tax credits will encourage the production of all types of film and video in Oregon.

Item No. 4: Oregon shares a common, non-fenced border with California.

Query: Will the Oregon film tax credit encourage the production of condom-free sex films in Oregon?

Item No. 5: The present Oregon weather is 41 degrees, and cloudy with chance of rain.