Peter Matos

Peter Matos

Nebraska Attorney General Jon Bruning is facing a Federal Court challenge to his office's cease-and-desist order barring Farney Daniels, a firm he identified as notorious for representing “patent trolls”, from brining a patent suit against a Nebraska based defendant.  The primary issue is what, if any, roll or authority the Attorney General's Office has in regulating patent infringement actions, including the types of suits that can be brought and/or the law firms that can bring them.  It appears that the Attorney General is not backing down, and I am sure that his counterparts in numerous other states are paying close attention, especially as suits by "Patent Trolls" contiue to grow in both number and disfavor. For more read here.

Much has been written about the Apple v. Samsung patent dispute, with some claiming it goes too far and others claiming 'transparent' copying should justly be punished.  One thing that cannot be disputed is the value of a design patent.  As seen below, when consumers like the way something looks, others will migrate to that look, setting up a potentially strong case for design patent infringement, even as lawyers argue over the meaning of words in a related utility patent. Oh, and by the way, if you win, no need to settle for a reasonable royalty, as by statute, design patent infringement damages are set as profits.

Most of our clients have secured the “.com” domain name corresponding to their trademarks, but there are other top level domains such as “.net, “.org,” and “.biz.” While we usually do not recommend securing every possible domain, there is a new “.xxx” extension that is causing concern among trademark owners. From now until October 28, 2011 brand owners from outside the adult entertainment industry have the opportunity to pay a one-time fee to block the registration of “.xxx” domain names matching their federally registered trademarks. Generally, the names can remain blocked for at least the next 10 years. Of course, many technicalities and conditions apply in this blocking process, so please consider this to be general information only. For more information on how to proceed directly with approved registrars, visit the .xxx registry’s website, http://www.icmregistry.com/. If you would like our assistance, our estimated fees to assist with this domain blocking process would be $625.

In what could turn into a patent battle of epic proportions, Microsoft Co-Founder Paul Allen has sued a who’s who of Internet giants for patent infringement.  The suit, filed by Allen’s Interval Licensing, which names Apple, Google, Facebook, Yahoo, YouTube, AOL and eBay, among others, cites core Internet technology developed in the 90’s by another Allen project, the now defunct technology company, Interval Research, LLC.  Microsoft is, of course, conspicuously absent from the suit which can be read here.

A hot topic of late in the world of IP is the controversy over Google AdWords and its policy of allowing, and in some instances suggesting, that advertisers purchase the trademarks of their competitors as “AdWords” so that they will come up as a sponsored link when the competitor’s brand is searched.  Now a recently published Patent application filed by Google in June 2008 may signal a practice that could put an entirely new wrinkle on the AdWord controversy.

In its patent application, Google is essentially seeking to protect a method for identifying potential advertising locations within “an online geographic view”, such as its Street View feature within Google Maps, so as to allow for real time advertising to be positioned or superimposed into that view.  For example, if you are looking at an image of Times Square, Google could cover an actual billboard image with a targeted advertisement of its own.  While at first blush some might question whether replacing an old stale ad from an old image with a new fresh ad is a cause for concern, regardless of whether a patent ever issues, the practice described therein could be a virtual Pandora’s box of IP related issues.

Wednesday, 16 December 2009 18:50

SOTOMAYOR CONTEMPLATES SPEED DATING

Perhaps signaling that the clock may soon run out on pure 'Business Method' patents, several of the Supreme Court Justices, during oral arguments in Bilski and Warsaw v. Kappos last monthjoked whether patents should be permitted for innovations such as methods of horse whispering, methods of speed dating, or a method of teaching antitrust law. Although the exchange took on an air of judicial levity, the underlying message seems to point towards a decision invalidating an entire segment of already issued patents. This type of exchange ratchets up the anticipation and angst already being felt by a patent and corporate world that anxiously awaits the determination of whether "Business Method" patents will be dumped or stay the current bell of the ball. For more on this click here

Pursuant to Florida SB 872 the sate ficticious name statute 865.09, F.S, is being amended to require that a business publish its intent to use said ficticious name.  While some have noted some exceptions to this requirement, such as a valid Florida Trademark Registration, here, certaily the publication requirement offers a new way to police existing Sate and Federal Trademark rights. 

Friday, 26 June 2009 18:28

THE KING OF POP'S PATENT

Many titles were bestowed upon Michael Jackson during his lifetime, but one not commonly associated with him was "inventor".  

But indeed, The King of Pop is listed as a co-inventor of United States Patent Number 5,255,452, entitled "METHOD AND MEANS FOR CREATING ANTI-GRAVITY ILLUSION", and covering shoes of the type worn while performing dance routines in his hit single "Smooth Criminal", where he famously incorporated a 45-degree lean in the choreography.

 

Thursday, 25 June 2009 18:28

CAN DOWNLOADING MUSIC COST $9000 PER SONG

An order to grant a new trial in Capitol Records, Inc. v. Thomas should pique the interest of both music downloaders and music industry executives alike. A jury found the defendant liable for copyright infringement and awarded $220,000 in statutory damages in connection with the copying of 24 songs. The judge, however, ordered a new trial based on an error in the jury instructions, where the instructions were contrary to the precedent set by the Eight Circuit in National Car Rental System, Inc.  v. Computer Associates International, Inc., 991 F.2d 426, 430-31 (8th Cir. 1993)(requiring an actual dissemination of [sic] copies). In the jury instructions, Chief Judge Davis did not require a finding that the defendant actually distributed the works in question but required only a finding that the defendant made the works available to others to download.

The excessively large statutory award of $220,000, based on the only 24 songs, further compelled the judge to vacate the jury verdict. The judge opined that Congress intended that these large statutory awards deter those engaged in piracy for profit and that “it would be a farce to say that a single mother’s acts of using Kazaa are the equivalent, for example, to the acts of global financial firms illegally infringing on copyrights in order to profit….”   In his order, the judge suggested that Congress should address and amend the Copyright Act for liability and damages in these types of consumer cases. As the internet and advancements in technology increasingly permeate the lives of private individuals, copyright holders may face the unfeasible task of enforcing their rights against all infringing individuals. The courts and Congress must, however, protect the interests of intellectual property holders yet not allow large entities to financially ruin an individual for a seemingly minor offense.

Sebastian Ohanian Contributed to this Entry.

Wednesday, 03 June 2009 18:24

MORE ON BILSKI AND BUSINESS METHOD PATENTS

As noted below, On October 30, 2009, the United States Court of Appeals for the Federal Circuit rejected a business-method patent on the basis of the machine-or-transformation test (opinion). The widely varying dissents of the en banc decision suggest much contradiction among the respective justices, from comments indicating that either the majority goes too far or not far enough in restricting the use of these patents. Meritorious arguments submitted by amicus also advocate a multitude of policy considerations. On June 1st, the Supreme Court grantedcertiorari to review the decision, perhaps in response to the extent of the important implications that this case entails.

Those seeking to expand business-method patents cite economics as a “useful art” and explain that these patents encourage innovation and produce tangible results. Conversely, opponents indicate that the patents curtail the free-flow of information and claim abstract ideas, both contrary to the goals of patent protection. Certainly, the Court will seek to balance the interests of both inventors and the public, which benefits from the increased societal knowledge that patents provide. But, as of now, the Court of Appeals’ decision seemingly puts the property rights of many business-method patent-holders in jeopardy with both the legal and business worlds taking note and this being heralded by some as "The most important patent case in 50 years" (link). 

Sebastian Ohanian Contributed to this Entry.

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