Category: Intellectual Property

Cybersquatter Gets Swatted Down
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Cybersquatter Gets Swatted Down | Mark Kaufman

They said it couldn’t be done, but Kaufman & Kahn recently not only won summary judgment against a prolific cyber-squatter, but also won an award of statutory damages and attorney’s fees. Gregory Ricks, a renowned cyber-squatter, had registered the domain name justbulbs.com, and he’d done that because, frankly, my client named JUST BULBS had failed to renew it. So arbitration was commenced.

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Need Help with a Trademark? Consult a Law Student!
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Need Help with a Trademark? Consult a Law Student! | Pat Werschulz

In the past, we’ve talked about the patent pro Bono program. This program offers assistance to individuals who have inventions that may be patentable, but can’t afford an attorney. It’s sponsored by the United States Patent and Trademark Office (USPTO) and administered locally. Generally, you must have a low income.  You can learn more about that program on the USPTO’s website here. There are several other programs that the USPTO is involved in that are available to those looking for help with intellectual property, but I want to talk about something a little different. You may not be able to afford an attorney, but qualify for pro bono assistance. And that’s where the USPTO’s Law School Clinical Certification Program comes in.

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Pass Go & Collect: How to Patent Board Games
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Pass Go & Collect: How to Patent Board Games | Pat Werschulz

The Story of Monopoly… A patent is a limited monopoly that the government grants for an invention. The government granted inventor Charles Darrow a patent US2026082A on the board game Monopoly in 1935. There’s some controversy about the 1935 patent: Darrow learned about another game called “The Landlords’ Game” that was patented in 1904 by a woman named Elizabeth Phillips. That game was created as an educational tool about monopolies in the landlord/tenant context. Darrow first played The Landlord’s Game in 1933; he changed the game enough to earn a patent on his version, Monopoly, two years later. Monopoly was one of many board games that became popular in the post-Depression 1930s, when people couldn’t afford to go out much.

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Copyright and Patents
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{3:06 minutes to read} As discussed previously, in the United States, copyright and patent law are explicitly anticipated in Article I, section 8, clause 8 of the U.S. Constitution, which accords to Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” It is worth pointing out that the words “science” and “useful arts” were understood somewhat differently in the 18th Century than they might be today. “Science,” in the parlance of the era, had a meaning closer to “knowledge”[1]; the “useful arts” were what we might now call “technology.”[2] Accordingly, the references to “science” and “writings” underpin the present copyright law; the references to “useful arts” and “discoveries” underpin the present patent law.

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Foreign Filing License & Your Filing Receipt
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Foreign Filing License & Your Filing Receipt | Pat Werschulz

Most people who are filing for a patent in the United States don’t even realize that, at the same time, they’re applying for a foreign filing license. What’s that? Well, it turns out that if some or all of the inventive process takes place in the United States, before you can apply for a patent outside of the United States, you must be granted a foreign filing license.

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Hotel California: A Great Song, a Great Title, But a Great Hotel?
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Hotel California: A Great Song, a Great Title, But a Great Hotel? | Mark Kaufman

Here’s the case of a dark, desert highway with, perhaps, a cool wind in your hair:  The Eagles Ltd v. Hotel California of Baja. It concerns a hotel in Mexico that had been opened in the 1950s under the name Hotel California. The owners decided to stop using that name and retitled the property “The Todos Santos Hotel,” catering to American tourists. Recently it was sold again, and the new purchasers went back to using its old name — and proceeded to market it as the “legendary Hotel California.” Promotional literature contained strong allusions that the hotel was the inspiration for the song.

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Brexit’s Effect on European Patents
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Brexit’s Effect on European Patents | Pat Werschulz

It’s official: the United Kingdom is leaving the European Union. While Brexit will have no effect on your U.S. patent (which protects your rights in the United States), as an inventor, you may be curious about how Brexit affects foreign patents, since many U.S. inventors have extended their patents by filing through the European Patent Office (EPO). When you file a patent application with the European Patent Office, that entity examines it against the prior art available and determines what claims are allowed. Up to this point, the process is pretty similar to the patent application process in the United States.

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What’s So Special About Tyler, Texas, Anyway?
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What’s So Special About Tyler, Texas, Anyway? | Pat Werschulz

Most people don’t even know where Tyler, Texas, is, but for patent litigators—that is, attorneys that try patent cases—it has become their home away from home. First, I need to give a little bit of background about the federal court system that a lot of people aren’t aware of. The federal courts have exclusive jurisdiction concerning patent and copyright cases in the United States. What does that mean? If you have a patent or a copyright and somebody infringes, i.e., copies you, you need to go to federal court to get justice. If you file a complaint in state court, it will be dismissed and you’ll be told, “Hey, you knocked on the wrong door. You need to go to federal court.”

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A Friend of a Friend Said… You Should Actually See a Lawyer
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A Friend of a Friend Said… You Should Actually See a Lawyer |  Mark Kaufman

The other day a client sent me two pictures. One was of a someone else’s textile design, and the other was my client’s own rendering of it. The client said “We copied our design from their design. Can you tell us whether it’s infringing?” Rather than respond to the email, I called my client and reminded him about the rules of discovery:  although any communications I have with my clients—including communications in which a client admits to having copied something—are protected by attorney-client privilege, mistakes can happen when even privileged documents are inadvertently produced in discovery in the event of a lawsuit.  Also, if he inadvertently shares those communications with third parties, the attorney-client privilege goes out the window.  So, saying incriminating things in emails (or texts or worst of all social media) can live forever in a way that’s inconvenient if not destructive.

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“UL” is Not in the Public Domain. Don’t Mess with Certification Marks!
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“UL” is Not in the Public Domain. Don’t Mess with Certification Marks! | Mark Kaufman

What two words are worth $500,000 each? In the case of HOVERBOARD (R) re-seller The Space Chariot, those two word are “UL Certified.” (Yes, HOVERBOARD is a federally registered trademark; while it appears to be on the road to becoming generic, that’s a topic for another day.) Why they are called HOVERBOARDs is beyond me. They clearly have wheels that touch the ground, but if kids (or those “young at heart” who prefer not to use their own horsepower) want to use their imagination, far be it for me to intervene. Most people have seen these devices on the street and have figured out that operating them relies on tilting them with your body weight, much like a Segway scooter. But unlike the Segway, these inventions have a history of bursting into flames at the most inconvenient of locations, which is why so many airlines have banned them from flights.

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A Personal Story: My Path to Becoming a Patent Attorney (Part 2)
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A Personal Story: My Path to Becoming a Patent Attorney (Part 2) | Pat Werschulz

Last time, I explained the circumstances that led me to start law school after I “retired” from chemistry. Now the rest of the story. It’s very different to start law school when you’re…I’ll be kind to myself and use the word…”mature.” I was the second oldest student in my class, and I was the oldest woman. There literally were classmates who had been classmates of my sons. They would come up to me and ask if we were related, and I’d answer, “Yes, okay, I’m his mother.” So, I was thrown into competing with the younger generation.

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A Personal Story: My Path to Becoming a Patent Attorney (Part 1)
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A Personal Story: My Path to Becoming a Patent Attorney (Part 1) | Pat Werschulz

When I meet new clients, they don’t realize at first that being a patent lawyer is actually a second career for me. Since a lot of people find how I got to where I am today an interesting story, I’ve decided to share it with you, my readers. When I was in high school, I was captain of the debate team, and I seriously considered going into law. But back in the sixties, there weren’t many women who were going into law, and the ones who did were exceptional, like Ruth Bader Ginsburg.

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Take the Gig, But Lose the Content?
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Take the Gig, But Lose the Content? | Mark Kaufman

Parties, events, and weddings are the lifeblood of working musicians. It’s money in the hand, as opposed to what might come out of royalties down the road. This incentive is what led a client to reach out to me recently; he had a great gig booked, was looking forward to it…and then the contract came. The event is being hosted by a large and well known corporation, at a third-party venue, and the pay is good enough to warrant calling an attorney. The contract not only requires each performer to waive their rights of publicity/privacy (in their name and likeness, so photos posted on the internet won’t garner a lawsuit), but also provides, in essence, that “you allow us to record your performance, and you grant us an irrevocable worldwide in perpetuity license to use your performance.”

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What Goes Into a Patent Application?
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What Goes Into a Patent Application? | Pat Werschulz

Many people are under the impression that drafting a patent application is just a matter of filling out forms, like any type of government application, and perhaps submitting a picture, as you do when you’re applying for a passport. Nothing could be further from the truth. In fact, preparing a patent application is a complex legal process. The United States Supreme Court has even said that drafting a patent application is the most complicated legal writing in the profession. A patent application has three main parts: the written specification, the drawings, and the claims. This is true of any type of patent applications, whether it’s for a utility application, a design application, or even (in those rare instances) a plant patent application.

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Breitbart’s Biggest Enemy is the Truth…Including Todd Bigelow’s Copyright
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Breitbart’s Biggest Enemy is the Truth…Including Todd Bigelow’s Copyright | Mark Kaufman

A lawsuit was recently filed in the Southern District of New York that isn’t exactly fascinating for its merits, but it does speak to the perennial issue of intellectual property rights: the erroneous but popular idea, even among commercial users, that “if it’s on the internet, it’s free to use!” In Bigelow v. Breitbart News Network, LLC, photographer Todd Bigelow is suing Breitbart News over its use of one of his photographs without his permission. In addition to garden-variety copyright infringement, Bigelow also sued under the Digital Millennium Copyright Act, because Breitbart had removed the identification of the artist and its copyright from the image.

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Copyright and Trademark: Titles, Words & Short Phrases
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{4:12 minutes to read} It is a truism among intellectual property lawyers that no matter how often one may encounter discussion of a “copyrighted word” or a “copyrighted phrase”—and this notion appears frequently in media—copyright law generally does not protect titles, words, slogans or phrases.[1]

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Intellectual Property: Are You Set Up For Success?
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Intellectual Property: Are You Set Up For Success? | Bettina Eckerle

One of my mantras when advising clients is to pay particular attention to their intellectual property when thinking about building value in their companies. This requires a comprehensive IP strategy that covers IP creation and protection. It is best started from the get-go, but it is never too late. You’ll need it to build and protect your IP assets to help you to monetize what you have built.

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No Trademark? No Problem
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No Trademark? No Problem | Mark Kaufman

An interesting case was recently decided in the Southern District of New York called Charisma World Wide Corp v. Avon Products. It appears to be a case over intellectual property rights, but decided without relying on intellectual property law. The case was over a technical analysis as to whether the court had subject matter jurisdiction to even listen to the complaint. It hinged on the court’s analyzing whether the conduct that the plaintiff was complaining about had a substantial effect on domestic (that is, U.S.) commerce. Charisma World Wide Corp. (Charisma) is a Panamanian company that sells “renowned products” in Panama under the trademark “Charisma.” America’s own Avon, of door-to-door sales, fame, had been selling similar products in Panama, also called “Charisma.” Both products are cosmetics and, to a casual observer, seem like exactly the same thing.

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What is Patentable? The Phenomena of Nature Exception
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What is Patentable? The Phenomena of Nature Exception | Pat Werschulz

The answer to the question “what is patentable?” should be pretty straightforward, because the applicable law says: “a machine, a manufacturer, composition, or a process, or the improvements thereof, are patentable.” However, over the years, the courts have created very specific guidelines concerning what is or is not patentable. One exception to patentability is called the “phenomena of nature” exception. The Supreme Court discussed this exception in a 2013 case called Association for Molecular Pathology v. Myriad Genetics.

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It Takes All Sorts of Torts, Indeed!
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It Takes All Sorts of Torts, Indeed! | Mark Kaufman

A copyright dispute late last year forced a holiday play to go dark before the Rockefeller Center tree was ever lit. The suit centers around the play Who’s Holiday by Matthew Lombardo. No, the dispute is not over the apparent typo in the play’s name. Rather, it is that the defendant’s play is based on the character Cindy Lou Who from the beloved Dr. Seuss book The Grinch Who Stole Christmas. Whether the play is an unauthorized derivative work (from the perspective of the Dr. Seuss estate) or a parody (from the perspective of the playwright) is what the court ultimately may need to decide. Who’s Holiday is a profane, one-woman show that documents the life of Cindy Lou Who after the denouement of Grinch. It finds Cindy living in a trailer park, after having married the Grinch, whom Cindy had murdered (allegedly in self-defense), before the curtain lifts.

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What Should an Attorney Charge to File and Prosecute a Patent Application?
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What Should an Attorney Charge to File and Prosecute a Patent Application? | Pat Werschulz

Not surprisingly, one of the first questions clients usually ask me is “how much does it cost to get a patent?” While there are some government fees that apply regardless of which attorney you choose to file and prosecute (i.e. prepare the application and shepherd it through to issuance) your patent, the attorneys fees can vary. For a utility patent on a simple invention that doesn’t involve software, high tech, or extremely complicated chemistry, a budget of $12,000-$15,000 over the period that the patent is pending is a reasonable cost. This cost covers a substantial amount of work at two stages.

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E = Who Are You?
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E = Who Are You? | Mark Kaufman

Readers of my blog know that I’m generally in favor of enforcing copyright. If you’ve got the goods on someone and those are your rights, you should be entitled to collect for it — or at least stop it. Likewise, if you’ve been called out for infringing, the right thing to do is usually to pay the pound of flesh required of you. But how does the would-be defendant know whether paying it will actually solve the matter? A client recently received a demand letter from a licensing agency for allegedly infringing on a copyright owned by a newspaper in Europe. The notice was referring to my client’s use of, let’s say, the famous image of a French boy running with a baguette on a relatively private — and certainly a non-profitable — website. In this case the pound of flesh was only a couple hundred bucks, but I was motivated by the sense that the purported licensor was a greedy, undeserving troll until proven legitimate.

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To Boldly Go Where No Nerds Have Gone Before…
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To Boldly Go Where No Nerds Have Gone Before… |  Mark Kaufman

To boldly go where no nerds have gone before… In Paramount Pictures Corp. v. Axanar Productions, Inc. the U.S. District Court for Central California was presented with a case of fan fiction gone awry. A small studio called Axanar Productions set out to produce a piece of Star Trek fan fiction centered around an obscure character named Garth of Izar. It was to be a feature-length film set as a prequel to the 1973 original series. In order to finance the production, the studio hosted a crowdsourcing campaign that was successful in raising $1.1 million.

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Tequila or Not Tequila: A New Certification Mark is Born
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Tequila or Not Tequila: A New Certification Mark is Born | Mark Kaufman

Ironically, the same week that the president of Mexico declined to meet with the president of a formerly friendly nation because of various perceived (and perhaps actual) insults, the United States Trademark Trial and Appeal Board (TTAB) granted a decision in favor of a Mexican non-profit association of distilleries. The Consejo Regulador del Tequila was granted a certification mark for the appellation ‘Tequila.’ According to the U.S. Trademark statute, a “certification mark”

means any word, name, symbol, or device, or any combination thereof to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services ….
So the TTAB determined that, despite its most unfortunate location South of the Soon to Be Very Tall Border,  the Consejo Regulador del Tequila can control the use of the word ‘Tequila’ within the United States.

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Patent Law: Business As Usual
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Patent Law: Business As Usual | Pat Werschulz

{6 minutes to read} We have a new president. We have new members of Congress with a different distribution between the two parties. And probably before the Supreme Court sits for a new session in October, we’ll have a ninth justice. The question is: How are the changes in Washington going to affect patent law? First, a history lesson in patent law…

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The Blurry Boundaries of Copyright
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{3:54 minutes to read} My practice—and accordingly this blog—focuses on copyright, or at least on what we call  “copyright” in the United States. However, “copyright” is only one segment of a broader spectrum called “intellectual property,” and—as is often the case with segments of a spectrum—the boundaries are somewhat arbitrary, and the subject matter can bleed across from one segment into the next. Just so with intellectual property. Indeed—and just to illustrate the fuzziness of even the concept of “copyright”—what we commonly describe as “copyright” subject matter in the United States encompasses segments which much of the rest of the world labels “authors’ rights” (i) and “neighboring rights” or “related rights.” Copyright in the Anglophone world begins with literary property: books and pamphlets. Over time, the realm of copyright expanded to cover maps, charts, graphic art, and more, as technology and culture required. The current definition of works covered by the Berne Convention, the oldest and largest multilateral treaty on copyright protection, includes:

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“Anything Goes”? Not Necessarily
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 “Anything Goes”? Not Necessarily | Mark Kaufman

You might think that the inaccuracy of the following statement is obvious: “If it’s on the internet, it’s free.”‘ Still, many of today’s internet users, including business owners, seem to believe it and use what they download with litigious results. There are at least two lawsuits in the Southern District of New York—Veronina v. Scores Holding Company and Taylor v. 44th Enterprises, d/b/a Diamond Club Gentlemen’s Cabaret—that involve the unauthorized use of images downloaded from the internet. Specifically, dozens of women are suing over the use of their photos in advertisements for strip clubs and escort services. (Not surprisingly, both cases are brought by the same attorneys.)

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FAQ: What Should I Expect When Meeting with a Patent Attorney?
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FAQ: What Should I Expect When Meeting with a Patent Attorney? | Pat Werschulz

{Read in 4:50 minutes} Many times when meeting with clients for the first time, they are very shy and say, “I’ve never met with a patent attorney before.” They don’t know what to expect or what they need to bring to the first appointment in order to discuss whether they should pursue a patent. There are some common things that every patent attorney will ask and review with potential clients. Some patent attorneys use what’s called a disclosure form, which asks the same questions that other attorneys go over in the initial meeting.

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How Can I Get My Patent Application Approved Faster?
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How Can I Get My Patent Application Approved Faster? | Pat Werschulz

{Read in 4:30 minutes} A question I often get is, “How long does it take to get a patent?” There may be business reasons to get your patent faster, such as to attract by showing investors you have a patentable idea. Or perhaps you just want to have patent protection before you introduce your product to the market. There may also be personal reasons; you need to move onto the next stage in your life and want to get this finished. So, how can you get your patent faster?

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Creative Team Behind Broadway’s Jersey Boys Hit with Copyright Infringement
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Creative Team Behind Broadway’s Jersey Boys Hit with Copyright Infringement | Mark Kaufman

Big girls may not cry, but the creative team behind the smash Broadway musical Jersey Boys might be doing just Creative Team Behind Broadway’s Jersey Boys Hit with Copyright Infringement that. On November 28, a jury in Nevada federal court found that the musical’s creators were guilty of copyright infringement—to the tune of 10% of the show’s profits. Jersey Boys centers around the life and times of 1960s doo-wop group The Four Seasons. After retirement, Tommy DeVito, who was a founding member of the band, began work on an autobiography with the help of a ghostwriter (also known as an “uncredited co-author”) named Rex Woodward. After Woodward succumbed to lung cancer in 1991, DeVito changed his tune about who had written the unfinished book, claiming that he alone authored it. Further, he gave permission for it to be used as the basis for the musical that would become Jersey Boys.

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