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:

Company	Changes	Total
Intel	10108	10.5%
Red Hat	8078	8.4%
Linaro	5415	5.6%
Samsung	4290	4.4%
Unknown	3842	4.0%
IBM	3081	3.2%
SUSE	2890	3.0%
Consultants	2451	2.5%
Texas Instruments	2269	2.4%
Vision Engraving Systems	2089	2.2%
Google	2048	2.1%
Renesas Electronics	2004	2.1%
Freescale	1690	1.8%
Free Electrons	1463	1.5%
FOSS Outreach Program for Women	1418	1.5%
Oracle	1166	1.2%
AMD	1109	1.1%
Nvidia	1078	1.1%
Broadcom	1001	1.0%
Huawei Technologies	971	1.0%
ARM	788	0.8%

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.

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.

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!).

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 www.lacl.org. [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." www.jacl.org.

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.

What You Can Do To Protect Your Business From Negative Internet Posts

What can a business do when it becomes the subject of a negative Internet post? My article addresses this important issue: here.

The Creation of the Nike Swoosh Logo

For all of you startups out there, and for those of you who do not have time to take an MBA class in creating a fantastic business brand or corporate logo, here is an excellent article that describes the creation of the Nike Swoosh.

Joyeux Noel

Merry Christmas from Portland.

Joyeux Noël de Portland.

Feliz Navidad de Portland.

Frohe Weihnachten von Portland.

Feliz Natal de Portland.

Nollaig Shona ó Portland.

Sretan Božić od Portlanda.

Buon Natale da Portland.

С Рождеством Христовым от Портленда.

God jul från Portland.

Vrolijke Kerstmis van Portland.

聖誕快樂從波特蘭

Christmas Truce of 1914

One hundred years ago today, the British and German soldiers along the Western Front in France put down their guns and sang Christmas carols to one another. Pope Benedict XV in early December 1914 suggested to the nations fighting the Great War that a truce should exist over Christmas. The warring countries refused, but their soldiers didn't.

The scene along the Western Front is described in History.com:

At the first light of dawn on Christmas Day, some German soldiers emerged from their trenches and approached the Allied lines across no-man’s-land, calling out “Merry Christmas” in their enemies’ native tongues. At first, the Allied soldiers feared it was a trick, but seeing the Germans unarmed they climbed out of their trenches and shook hands with the enemy soldiers. The men exchanged presents of cigarettes and plum puddings and sang carols and songs. There was even a documented case of soldiers from opposing sides playing a good-natured game of soccer.

Merry Christmas from Portland.

Public Domain Christmas Carols

Ah, Christmas carols, wafting through the shopping mall.

Most people do not consider the copyright implications of Christmas carols.They are concerned more with last minute gifts.

But many popular Christmas carols are covered by copyright protection. Singing these songs at home in front of a small gathering does not violate the public performance right in copyright. But for those of us who are more adventuresome and desire to stretch our tonsils in public, there is a list of well-known public domain Christmas carols published at the Public Domain Information Project.

And here is a list of other well known Christmas songs still under copyright protection.

We wish you a Merry Christmas ...

Merry Christmas Johnny Marks

Christmas music has been dominating local radio play since Thanksgiving. For five weeks every year, many old – and some newer – seasonal standards are played over, and over, and over on local radio stations, cable and Internet music services and at local music shops. And we have Johnny Marks to thank for much of this.

Johnny Marks may be Mr. Santa Claus to the recording industry. He is responsible for composing some of the most well-known and beloved holiday music, including: Rudolph, the Red-Nosed Reindeer; Run, Rudolph Run; Rockin’Around the Christmas Tree; A Holly Jolly Christmas; Silver and Gold; Happy New Year Darling, and many, many more. Marks is a member of the Songwriters Hall of Fame, and a complete listing of his song catalog appears on the SHF website.

Marks passed away in 1985, but his estate continues to profit from the five week bonanza of air play for his songs. And by far, his single most famous and most profitable song is Rudolph the Red-Nosed Reindeer. Numerous singers have recorded versions of Rudolph, including Gene Autry, Bing Crosby, Dean Martin, Ray Conniff, Alvin and the Chipmunks, Paul Anka, Burl Ives, The Temptations, The Jackson Five, Ray Charles, Dolly Parton, Ringo Starr, Lynyrd Skynyrd, Destiny's Child, Barry Manilow, DMX and more. A1980 article in People Magazine states that Marks earned over $800,000 in annual music royalties at that time, with 75% attributed to Rudolph.

Merry Christmas, Mr. Santa to the record business -- Johnny Marks.

Lies, Damn Lies and Trademark Lies

Some people lie. Shocking.

Some trademark applicants lie on their official government forms. Doubly shocking.

Trademark owners are required to establish use of their trademark on the goods or services indicated in their trademark filings. Proof of use of the trademark requires both a declaration confirming use in commerce plus an appropriate specimen for at least one of the designated goods or services in each class. These filings are signed pursuant to an official declaration or oath.

But during a two year period, from July 2012 to mid-October 2014, the federal trademark office conducted a pilot study to determine compliance with the use requirement. What the PTO learned is not pretty -- in about one-half of the registrations the trademark owners were not able to verify claimed use.

The PTO selected 500 registrations for this study. In about 16% of the selected registrations, the trademark owner failed to prove use of the mark on the indicated goods or services. The PTO cancelled these registrations. And in about 35% of the selected registrations, the trademark owner was not able to prove use on at least some of the listed goods or services, causing the PTO to delete the unsupported goods or services from the registrations.

The PTO reached this sorry conclusion: "of the 500 registrations selected for the pilot, to date a total of 253 registrations, or 51%, were unable to verify the previously claimed use in their Section 8 or 71 Declarations." The statistics for the falsely claimed trademark use are provided by the PTO:

Deletions/Cancellations/Acceptances to Date by Basis for Registration

Basis for Registration	Percentage of Registrations Selected for the Pilot Deleting Goods/Services Queried Under the Pilot	Percentage of Registrations Selected for the Pilot Receiving Notices of Cancellation	Percentage of Registrations Selected for the Pilot Receiving Notices of Acceptance (Including for a Narrowed Scope of Goods/Services)
Section 1(a)	27%	18%	80%
Section 44(e)	58%	7%	89%
Section 66(a)	59%	14%	82%
Combined Section 1(a) and 44(e)	63%	13%	81%

The concern here goes beyond the false statements contained in government filings. That is, of course, bad in and of itself for both legal and moral reasons. But the concern here, too, relates to the misuse of government filings to obtain a trademark monopoly grant, thereby depriving a genuine user of the right to register the same or similar trademark on similar goods or services.

We may all be aware of genuine trademark users who were unable to register their marks because someone obtained an active registration when, in fact, the registrant was NOT using the mark on its indicated goods or services.

The federal trademark office has established an e-mail address for public comments and suggestions for potential solutions to this problem: TMPolicy@uspto.gov. 

Trademark Office Reduces Filing Fees

If you can wait three weeks to file that new trademark application, you can save some money. Effective Saturday, January 17, 2015, the U.S. trademark office is reducing some of its fees.

The fee for a new electronic trademark application filed on and after January 17, 2015 is reduced $50, provided that the applicant agrees to e-mail communication and agrees to file documents electronically during the prosecution period.

So, a TEAS fee will reduce from $325 to $275 per class, and a TEAS Plus fee will reduce from $275 to $225 per class. There is no reduction in the fee for a new paper application. This remains at $375 per class.

The registration renewal fee will also reduce by $100 for electronic renewals through TEAS, from $400 per class to $300 per class.

More information about the reduced fees is available in the Federal Register notice.

The Copyright Act's Limit on Post-Mortem Author Rights

A window or widower of a copyright author has certain rights available under the Copyright Act, but these rights may be cutoff depending on which State the copyright author was domiciled in at the time of death. The present Copyright Act, in Section 101, defines an author's widow or widower as the "surviving spouse under the law of the author's domicile at the time of his or her death."

One problem here relates to same-sex married couples. An author's widow or widower does not include a same-sex married spouse if the State in which the author is domiciled at death fails to recognize same-sex marriage.

Of import, the Copyright Act, in Sections 203 and 304, grants the author's widow or widower the termination interest of a deceased author. Since the Copyright Act preempts conflicting common law and State law, Section 301(a), this restricted definition of widow or widower is a big deal.

Legislation was recently introduced in Congress to resolve this issue. Pending bills in the House and Senate would include same-sex spouses in the definition of widow and widower. The pending revision to the Copyright Act would provide that:

An individual is the widow or widower of an author if the courts of the State in which the individual and the author were married (or, if the individual and the author were not married in any State but were validly married in another jurisdiction, the courts of any State) would find that the individual and the author were validly married at the time of the author’s death, whether or not the spouse has later remarried.

It does not appear likely that the pending bills will become enacted in the current lame duck Congress, and it is presently unclear how the makeup of the new Congress in January will impact this issue.

Filing of a Copyright Case Requires Registration and Not a Mere Application

Following the passage of the country's first copyright statute in 1790, and continuing with numerous revisions to the present day, one would assume that the precondition for filing a copyright infringement lawsuit would be settled. It is not. Whether or not a lawsuit can be filed if the copyright Register has not first granted or refused registration remains in considerable dispute.

Last week, a federal court in Michigan (E.D. Mich., Case No. 14cv12933) determined that a plaintiff that had not yet obtained registration, but was awaiting a registration decision from the Register, was not able to bring a copyright infringement claim because there was not yet a registration. In determining that it is not enough to merely apply for a copyright registration, the Michigan court joins the Tenth and Eleventh Circuit in holding that "registration" means registration and not mere application. By contrast, the Fifth, Seventh and Ninth Circuits have determined that mere application, without any final decision on registration by the Register, is adequate to permit the filing of an infringement lawsuit.

As mentioned, one would think that this very basic precondition to filing a lawsuit would have become settled by now. Indeed, the 1909 Copyright act, in Sec. 12, required registration as a precondition to filing a lawsuit (" No action or proceeding shall be maintained for infringement of copyright in any work until the provisions of this Act with respect to the deposit of copies and registration of such work shall have been complied with."). And the 1909 Act, in Sec. 6 added in 1939, provided that the Register "is charged with the registration of claims." In other words, the Register had to do something in order to effect registration under the 1909 law. It was not enough that an application was filed in order to complete an act of registration. The Register was charged with registration, not the applicant.

In its 2010 decision in Reed Elsevier v. Muchnick, the Supreme Court confirmed that standard practice under the 1909 copyright law required the Register to grant registration as a precondition to filing an infringement lawsuit. And if the Register refused, then the applicant would need to seek mandamus. Indeed, the Reed Elsevier court cited with approval the 1958 decision of Learned Hand in Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., emphasizing that "we can think of no other added condition for 'registration' but acceptance by the Register."

Section 411 of the present 1976 Copyright Act is the focus of the discord between the "application means registration" courts and the "registration means registration" courts. This section emphasizes that the Register must do something in order to effect registration. Section 411(a) requires as a precondition for filing a lawsuit that "preregistration or registration of the copyright claim has been made." Only if registration has been refused by the Register can the applicant file a lawsuit.

* * * no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. 

17 U.S.C. Sec. 411(a).

Section 410(a) allows the Register to refuse registration if the applicant's deposit material does not constitute copyrightable subject matter or the copyright claim is otherwise determined by the Register to be invalid. As such, mere delivery of the application to the Register does not constitute registration. The Register must affirmatively allow registration. 

While the "registration means registration" approach may be inefficient, particularly when one considers that the denied applicant can sue anyway following rejection of registration, the obligation of a court to apply the statute as written remains important. Indeed, a court's adherence to the restrictions contained in Congressional enactments respects the role of Congress in ascribing the benefit and the burden imposed by statutes. 

As observed by the Michigan court last week, the language of the statute should be the starting point in determining its meaning, and should also be the ending point when the meaning is clear. It is tragic that after 224 years into this country's copyright regimen there exists a core dispute as to what condition must exist permitting the filing of a copyright lawsuit.

The Patenting of a Design Trademark

It appears that the U.S. Patent Office used to issue design patents for graphical trademarks. Portland patent attorney James Walters reports his astonishing find of a U.S. design patent, D3444, issued in 1869 for this trademark:

 The "inventor" set out the following "claim":

What I claim as my invention, and design to secure by Letters Patent, is--

The design for a trade-mark, herein set forth and shown.

Exactly how the Patent Office came to issue Letters Patent in a trademark is more than interesting. The Patent Act of 1836 was designed to improve patent quality by removing the then-authority for the issuance of patents from the U.S. Secretary of State to a new official, a Commissioner of Patents. The 1836 Act established a formal criteria for issuing patents, allowing a patent to an inventor who "discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale ..."

It is unclear why the Patent Office viewed the design of a trademark as a new or useful discovery, invention or improvement of useful art, machine, manufacture or composition of matter. A trademark is a source identifier, not an invention, and is not authorized under the patent clause of the U.S. Constitution, Art I, Section 8, cl.8. In any event, since the 1836 Act limited a patent's term to 14 years, this "inventor" may have outwitted himself by obtaining limited patent protection when a trademark, in theory, can last as long as it is used to perform its source identifier function -- perhaps forever.

It would be interesting to learn whether the Patent Office's issuance of Letters Patent was a common practice for design marks at any point in time, or whether this one presently known example is an aberration. If any reader has additional examples, kindly share.

Negotiation in the U.S. for the Sale of a Patent-Infringing Product Is Not Necessarily Infringement Under U.S. Law

Section 271(a) of the U.S. patent law permits an infringement claim against anyone who "without authority makes, uses, offers to sell, or sells any patented invention, within the United States..." A question exists as to whether a U.S. company is subject to a patent infringement claim when it negotiates in the U.S. for the sale of a patent infringing product, including the setting of price and sales terms. That is, is mere negotiation sufficient to constitute a "sale" or an "offer to sell"?

The Federal Circuit answered this question in the negative in the last week's Halo Electronics case. The mere negotiation in the U.S. by a U.S. seller for the sale of a product that infringes a U.S. patent, including negotiation in the U.S. over price and projected demand, is insufficient to constitute a sale or offer to sell in the U.S. This was so when the actual sales transaction, including the final formation of the contract, as well as all delivery and performance under the contract, occurred outside of the U.S.

The Federal Court noted that the final formation of the contract occurred outside of the U.S., and the performance under the contract including final product delivery occurred outside of the U.S. The Court determined that there is a strong presumption "against extraterritorial application of United States laws." As such, the Court ruled that "pricing and contracting negotiations alone are insufficient to constitute a 'sale' within the United States."

The Court further ruled that there is no "offer to sell" in the U.S. if the actual sale transaction occurs outside of the U.S. "In order for a offer to sell to constitute infringement, the offer must be to sell a patented invention within the United States."

 So, the negotiation within the U.S. for the sale of a patent-infringing product is neither a sale nor an offer to sell when the final contract formation, as well as performance and delivery, occur outside of the United States.

As the Federal Circuit noted, "if one desires to prevent the selling of its patented invention in foreign countries, its proper remedy lies in obtaining and enforcing foreign patents." In other words, a U.S. patent is not necessarily worth the paper its printed on outside of the U.S.

Lawyer Receives Accolades From Judge -- And Is Then Sanctioned

Stop me if you've heard this one.

A lawyer presented oral argument to a panel of the Federal Circuit concerning a patent issue. Apparently, the lawyer did very well. A judge on the Federal Circuit, who was not on the panel and who is presently retired from the court, happened to attend a judges-only luncheon held following oral argument. At the luncheon, the panel judges informed the now-retired judge that the lawyer performed exceptionally well. The retired judge was proud to hear this good news, as he was a friend of the lawyer. The retired judge sent a laudatory e-mail to the lawyer. The e-mail stated:

Note that the retired judge was not on the panel that heard oral argument. And note further that the retired judge specifically invited the lawyer to "let others see this message."

So, what happened? The lawyer sent copies of the retired judge's e-mail to clients and prospective clients. And what happened next? Once the Federal Circuit learned that this e--mail of accolades was circulated by the lawyer, the court en banc issued an order publicly sanctioning the lawyer for distributing the e-mail. A copy of the court's order is here. The court determined that the lawyer's distribution of the e-mail constituted unprofessional conduct in that it inferred the lawyer's ability to improperly influence the court.

Note, finally, that the retired judge was not a part of the en banc court, but apparently the three judges, who gave the high accolades to the retired judge, were.

PTO To Provide Courtesy Reminders of Maintenance Filings

The U.S. trademark office recently announced that, beginning in late January 2015, it will begin providing courtesy reminders of upcoming Sections 8 and 71 declaration deadlines, and of upcoming Section 9 renewal deadlines. The PTO announcement is here. Reminders will be sent at the beginning of the filing period, but only to registrations (1) that are "live" on the date of sending, (2) that have valid e-mail addresses, and (3) that have granted permission to the PTO for e-mail communication. Reminders will be sent only by e-mail, not by regular mail, and there will be no follow-up reminders in the event the first attempted reminder fails.

A Tale of Ghoulish Copyright Authors

Late last night, I settled into a chair in front of my warm fire.

With the windows closed and blinds drawn,

I picked up my Compendium of U.S. Copyright Office Practices,

Seeking guidance on the new copyright regimen.

I began with authorship, and learned that,

Right there, in Section 306, a new rule is presented,

Clarifying that only a work created by a human being can be registered.

“Work purportedly created by divine or supernatural beings” cannot register.

Intrigued, I wondered why it was necessary for such a rule?

Had divine beings previously sought the right of registration?

I wondered. I took my laptop, logged onto copyright.gov

And conducted an author search.

I searched filings by author names.

I searched Dracula, and Poltergeist,

Witch, zombie, demon, mummy

Ghoul and ghost.

During my search, I heard what I took to be

A knock at my door. But I assumed that it was

The wind pushing against the windowpane,

And nothing more.

I was surprised with my search findings.

There, on my laptop screen, were search results

In the author field for:

Dracula, and Poltergeist

And Witch, Zombie

Demon and Mummy,

And for Ghoul and Ghost.

Authors all.

How can this be, I thought, since only

Humans by rule can be registered authors?

And then it occurred to me that,

Given the learned experience of the Copyright Office,

These creatures must be human, and nothing more.

They are among us.

The wind continued to batter the windows.

But then I heard a distinct knock at my door.

I put down my laptop, stood from my chair,

And walked to my door.

"Who is there," I asked? "Who is knocking on my door?"

I pondered the copyright registrations by

Dracula

   Poltergeists

      Witches

         Zombies

            Demons

               Mummies

                  Ghouls, and

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I open the door, slowly.



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