We’ve previously posted about the Defending Trade Secrets Act allowing plaintiffs to pursue a trade secret claim in federal court. Our colleagues at Employer Law Report recently reported on how employers can take advantage of this Act. An important piece of the Act includes immunity from criminal and civil liability for employees who disclose their employer’s trade secrets. Read the post, “Employers wanting to take full advantage of the Defending Trade Secrets Act should consider including immunity notice in all new and updated confidentiality agreements.”…
While patent, trademark, and copyright cases have had a place in federal law and a home in federal court, trade secret law has been relegated to the jurisdiction of state courts. Until now. With the passage of the Defend Trade Secrets Act of 2016 (DTSA), which President Obama signed in to law on May 11, 2016, a plaintiff can pursue a trade secret claim in federal court. The DTSA amends the Economic Espionage Act, creating a federal cause of action for trade secret misappropriation. It is expected to provide uniformity to trade secret law, which should provide better predictability for litigants who seek to protect their trade secrets. It also opens the door to the federal courthouse for trade secret claims.
Despite the ability to sue in federal courts, it is not a sure bet that federal courts will experience a flood of trade secret claims. Certainly there are provisions of the DTSA that would appeal to plaintiffs, and litigants may benefit from the perceived sophistication of a federal court judge. But there are some key considerations that might cause plaintiffs to pause before filing a trade secret misappropriation action under the federal law.…
Porter Wright continues its tradition of providing cutting-edge information about how technology affects your business with the 2016 Technology Seminar Series, beginning May 18.
This year’s sessions are:May 18: Big Data, Data Analytics & the Law 2016: What Your Company Needs to Know About the Evolution of the Next Big Thing
“Big data” is one of today’s most prevalent buzzwords across virtually all industries worldwide. But who truly understands what big data is and how it’s used? How is information collected, stored and analyzed? How are businesses leveraging big data in the workplace and the marketplace? How should companies balance data-driven trend-spotting against consumer protection? What laws or ethical frameworks apply to the use of big data, and how can you be sure your company is complying with them? This seminar provides an introduction to big data analytics, to the legal and strategic issues that big data raises for business, and to the ways that companies can position themselves to handle these challenges. It then zeros in on the use of big data in the modern workplace to illustrate how some of these issues play out in a context familiar to many companies.
Speakers: Dennis Hirsch, Professor of Law, Faculty Director of the Program on Data, Law, Ethics and Policy (DLEAP), The Ohio State University Moritz College of Law and Brian Hall, Porter Wright Morris & Arthur LLP…
Companies across industries – from tech to transportation – should be paying careful attention to Friday’s executive action signed by President Obama. Our colleagues at Antitrust Law Source, Jay Levine and Chris Yook, wrote an article discussing the order’s requirements and what we can expect as it is implemented. Check out the article: “Breaking: President Obama’s executive order requires all federal agencies to examine antitrust issues.”
In addition, Jay Levine was interviewed by Martha C. White for NBCnews.com for his thoughts on the subject. As Jay notes, patent applications may see increased scrutiny – definitively something we will be watching as agencies implement this order. Check out the full story here.…
Remember the dispute of copyright ownership over a selfie taken by a macaque in 2011? I wrote about it earlier this year when the owner of the camera that was used to take this shot sued Blurb, Inc., for unauthorized use of copyright.
Well, the monkey has apparently spoken. On Sept. 22, PETA filed a lawsuit against the owner of the camera and Blurb on behalf of the monkey, who PETA says wants to be known as Naruto, to have the monkey declared the owner of the copyright in the photograph.
As the previous post reports, the U.S. Copyright Office has stated that a photograph taken by a monkey (or any non-human) is unprotected intellectual property that may be used without permission. But that is just policy. U.S. law does not specifically state that a non-human cannot own a copyright. The Copyright Act only defines a “copyright owner … [as] the owner of that particular right” (see 17 USC Section 101). PETA argues that, because Naruto took the photo, she owns the copyright.
This suit faces challenges, but brings up a number of interesting legal issues. Can a non-human be declared the owner of property? If the monkey owns the copyright of the image, how does the monkey give permission for others to use it? Is it just monkeys (and how did PETA find Naruto)? What about elephants that paint artwork? Can non-humans infringe copyright?
Another interesting issue is the requirement that a copyright must be registered to bring a …
Earlier this year, the Supreme Court finally resolved an issue that divided the U.S. Court of Appeals for the Federal Circuit (CAFC) for nearly 20 years. In Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, the Supreme Court unanimously held that a trial court’s underlying factual determinations with respect to extrinsic evidence used in patent claim constructions must be reviewed on appeal under the clearly erroneous standard rather than de novo.1
Before the Supreme Court’s decision in Teva, the CAFC reviewed patent claim constructions de novo, including any allegedly fact-based questions relating to the trial court’s claim construction. As a result, it was quite common for the CAFC to reverse a trial court’s claim construction well after the completion of a lengthy jury trial. The case would be remanded to the trial court (unless the CAFC determined that the error would not have affected the judgment), in some instances leading to an entirely new trial on the merits (and, perhaps, another appeal to the CAFC). After Teva, many hope that CAFC claim construction reversals will be less frequent, particularly when litigants are able to introduce extrinsic evidence such as expert witness testimony into the claim construction process.
The CAFC has now had an opportunity to reconsider on remand not only its decision in Teva, but also Lighting Ballast Control LLC v. Philips Electronics N.A. Corp. which the Supreme Court also remanded to the CAFC for reconsideration in light of Teva.…
Probably the most important takeaway from the second installment of Porter Wright’s Technology Seminar Series was this: No single thing defines a so-called patent troll — and if (or when) you get a letter accusing infringement, there’s no uniform way to respond. Instead, stop and take a breath. Then, be tenacious about collecting information about the accuser and assessing those compiled details. Use this assessment to develop a plan that allows you to handle the situation in a way that meets your comfort level regarding risk, cost and desired outcome.
Speakers Jim Liles and Rick Mescher walked attendees through several crucial aspects of analysis and action steps during the June 17 seminar titled “Proactive strategies for combating ‘patent trolls.’ ” Here’s an excerpt:
Common actions of a patent troll
Not all allegations by non-practicing entities (NPEs) or patent assertion entities (PAEs) are meritless. But allegations from entities that participate in any the following common practices are likely suspect.…
The new gTLD program, considered to be one of the most important Internet developments in recent years, continues to gain momentum since ICANN delegated its first new gTLD back in October 2013. ICANN has delegated more than 600 new gTLDs to date. Of those delegated strings, 365 are open to the general public. A little more than 1 million new domains had been purchased at this time last year; now, that number is nearing the 6 million mark. And don’t expect things to slow down. New gTLDs continue to roll out in quick succession, spurring about 20,000 new domain purchases every day.
During the past several months, the leaderboards have seen a great deal of movement, with each new gTLD jockeying for the top spot as they become available to the public. Though some have remained dominant, such as .xyz and .club, more recently released gTLDs including .网址 (URL or internet site) and .science have made huge strides.
The top 10 gTLDs in terms of number of domain registrations:…
In one of its only pro-patentee decisions in recent years, the Supreme Court held last week that an accused infringer’s good-faith belief of patent invalidity is not a defense to a claim of inducing infringement. Even though the court reaffirmed that a good-faith belief of non-infringement is a defense to inducement, the court’s decision benefits patent owners, including so-called patent trolls.
A patent grants its owner the right to prevent others from making, using, selling, offering for sale and importing the patented invention in the U.S., as well as the importation into the U.S. of goods manufactured overseas using a patented process.
A direct infringer is someone who engages in one of the prohibited acts (making, using, selling, etc.). There is no requirement that the accused direct infringer was even aware of the patent, let alone knew that they were infringing.…
President Barack Obama has called on the U.S. Congress to lift the U.S. embargo on Cuba and normalize trade relations. French President François Hollande recently urged the same of the U.S., saying there is growing interest in doing business with Cuba. When the embargo is lifted, U.S. companies should be prepared to enter the Cuban marketplace. Being prepared means seeking trademark registration.
Cuba is a first-to-file country for trademark protection; in other words, a registration is awarded to the first applicant, even if that applicant has no legitimate claim to the trademark. Currently, an exception to the embargo permits U.S. companies to obtain trademark registrations — as well as submit patent applications — in Cuba. Proactively seeking a trademark registration in Cuba may avoid problems when the embargo is lifted.
An applicant can apply for a Cuban trademark registration using the international Madrid Protocol mechanism if it has an existing U.S. registration. A Cuban trademark application is screened against existing registrations by the Oficina Cubana de la Propiedad Industrial (OCPI). If a registration exists for the mark of the application, the OCPI will reject the application.
Generally, if your brand is well-known in the U.S., it is more likely that a trademark squatter might register your mark in Cuba to demand payment from you in exchange for the trademark. It is more expensive for trademark owners to obtain rights from others rather than to seek early trademark registration in first-to-file countries.
Though it may take time to reach normalized …
Google has been one of the most vocal critics of so-called patent trolls, more formally referred to non-practicing entities (NPEs) or patent assertion entities (PAEs), as well as a proponent of measures designed to improve software patent quality. At the same time, Google is one of the largest patent holders in the world. Though Google files its own patent applications, it also actively acquires patents from others. In 2011, for example, Google paid $12.5 billion for Motorola Mobility and its purported 17,000 patents. In 2014, Motorola Mobility was sold to Lenova for $2.9 billion. But Google kept almost all of those 17,000 patents.
Apparently looking to further expand its patent portfolio, last week Google announced a Patent Purchase Promotion. Described as an “experimental marketplace” for patent owners to sell their patents to Google, the program runs May 8-22, 2015. Patent owners interested in selling their U.S. patent to Google can make a binding offer to sell via an online portal.
If Google is interested, submitters will be notified by June 26, 2015.1 Following notification of Google’s interest, a brief period of due diligence will follow. Google will then decide by July 22 if it accepts the offer, and payment will be made within 30 business days thereafter.…
In February 2015, I wrote a comment about Katy Perry’s ineffective attempt to assert copyright to stop a 3D printer from selling figurines similar to a shark costume used in her Super Bowl XLIX halftime show. In an attempt to establish rights in various expressions of that shark, Perry (Killer Queen, LLC) filed U.S. trademark applications for BASKING SHARK, DRUNK SHARK, RIGHT SHARK, LEFT SHARK and for three applications that depict designs of a shark. Each of the applications recite the goods to be used with the trademarks as cell phone covers, stickers, mugs, T-shirts, sweatshirts, hats, plush toys, action figures, certain costumes, certain figurines, and live musical and dance performances. Those applications have now been examined by the U.S. Trademark Office.
Trademarks, which provide protection for brands and other source identifiers, differ from copyrights, which cover original works of authorship. Although Perry did not come up with the term “Left Shark,” originality is not a requirement for rights in a trademark; however, other requirements may be of issue for her applications.
Perry’s word mark applications appear to be in line for allowance with some amendments, but two of the applications that cover a shark design — a front view of a standing shark and a side view of a standing shark— have been refused because the Trademark Examiner determined that the designs are of a character and do not function as trademarks. (Note: The third application for a shark design used a photo of an actual 3D shark figurine …
If manufacturing or selling goods in China is part of your current or future business strategy, it is not too early to ensure protection of your intellectual property in China. On May 8, Porter Wright is holding half-day seminar titled Strategies for protecting IP rights in China to discuss U.S. businesses’ experiences as they enter the Chinese market. During this in-person event taking place in Columbus, Ohio, business leaders have the rare opportunity to gain insights directly from Beijing-based IP attorneys. Skilled IP practitioners from the U.S. and China will discuss real-world scenarios and strategies about how businesses can ensure their intellectual property is protected. Topics are:
Obtaining patent protection and challenging patent validity in China Get an overview of the types of patent protection available in China, and how U.S. businesses can leverage these patents to protect their new technologies and products. If a Chinese business or other Chinese patent owner makes an accusation of patent infringement, also understand procedures that can be taken to invalidate a Chinese patent. Speaker: Gary Wu, Kangxin Partners
Preventing unauthorized importation of your products from China Sometimes, regardless of efforts to protect your company’s IP, it happens: A rogue manufacturer or other party copies the product you are manufacturing in China and starts selling it in the U.S. (and elsewhere). Learn what steps you can take to minimize risk, pursue legal options, decommission unlawful operations and maintain the value of your intellectual property. Speaker: Jim Liles, Porter Wright
You may have heard about the dispute of copyright ownership over a selfie taken by a macaque in 2011. The wildlife photographer who owned the camera claimed ownership when a website published the photo without his permission.
Under U.S. law, copyright in a photograph is the property of the person who presses the shutter on the camera — not the person who owns the camera, and not even the person in the photo. Unless a written agreement exists that makes the photo a work made for hire, any person you ask to take your picture with your camera owns the copyright in that photo — not you. How many of us have those photos on our cameras or cell phones? Selfies appear to be a better idea. But do monkeys own copyrights?
The answer is: “No, they do not.” The U.S. Copyright Office issued a document in December 2014, reiterating that it will not register works produced by nature, animals or plants. According to the Copyright Office, a photograph taken by a monkey is unprotected intellectual property. The monkey selfie falls into the public domain and may be used by anyone without permission.
So maybe the answer to owning those vacation photos of yourself is a drone? The Copyright Act states that copyright protection subsists in original works of authorship that are made either directly or with the aid of a machine or device. Copyright in photos from a drone operated directly by a human most likely are owned by …
In trademark infringement litigation, the critical and usually pivotal issue is whether there is a likelihood of confusion between two allegedly similar marks. Eliminating a defendant’s ability to defend against an allegation of likelihood of confusion can be tantamount to establishing liability against the defendant. Yet, that will be the situation for many defendants following the U.S. Supreme Court’s March 24, 2015 decision in B& B Hardware, Inc. v. Hargis Industries, Inc. In that case, the Supreme Court held a defendant can be precluded from contesting “likelihood of confusion” if that issue, or a non-materially different issue, was previously decided between the parties in the Trademark Trial and Appeal Board (TTAB), a tribunal in the U.S Patent and Trademark Office (USPTO).
At first blush, the decision might not appear unusual. The doctrine of “issue preclusion,” a doctrine that prevents a party from relitigating an issue previously decided between parties, is long established law. TTAB decisions, however, are different for several reasons. First, the TTAB is part of an administrative agency (the USPTO), not part of the judicial system. Second, TTAB decisions are based on “the mark as shown in the application [for trademark registration] and as used on the good described in the application,” not the mark as actually used in the marketplace. Third, and perhaps far more significant in practical terms, many trademark registration proceedings in the past have been conducted under the assumption that the stakes involved in the proceeding were relatively modest. TTAB proceeds were viewed as …
ICANN has made it possible to serve up every brand owner’s worst nightmare; welcome to [yourbrand].sucks. ICANN and registries of new gTLDs have painted a rosy picture of the new Internet landscape, advocating that the introduction of new top level domains, like .app and .restaurant is a way to increase choice and competition. Unfortunately, the introduction of the new gTLDs has created a harsh reality for brand owners who are forced to decide how far they are willing to go to protect their valuable brands through the preemptive purchase of domain names with otherwise undesirable gTLDs.
Would-be gTLD domain registries were required to pay at least $175,000 to obtain the right to offer domain names with a new gTLD of their choice, so it was understood that the cost to domain registrants for a second level domain wouldn’t necessarily be cheap. Plus, the registrars need to mark the prices up to account for integration, registration and the continued maintenance of the domains. When brand owners find themselves paying top dollar for second level domain names only for the purpose of preventing someone from disparaging their brand, exorbitant registration costs may feel like blackmail.…
The Sixth Circuit Court of Appeals recently took a broad view of preemption under the Uniform Trade Secrets Act (UTSA) and held that Ohio’s version of the UTSA preempted state-law claims for tortious interference with prospective business relationships and conspiracy to misappropriate trade secrets because those claims arose from the same set of facts as a trade secret misappropriation claim. Stolle Machinery Co., LLC v. RAM Precision Industries, No. 13-4103 (6th Cir. Mar. 16, 2015). In reaching its holding, the Sixth Circuit noted that federal and state courts across the nation are divided about the scope of trade secret preemption under the UTSA, and the Supreme Court of Ohio has not yet addressed this issue.
The UTSA provides for damages and injunctive relief to a plaintiff whose trade secrets have been misappropriated. The UTSA contains a preemption clause that preempts “conflicting tort, restitutionary and other laws” of a state which provide civil remedies for misappropriation of a trade secret.…
The Internet was in a tizzy back in 2011 when ICM Registry began selling .xxx domain names for use by adult entertainment providers, selling nearly 250,000 addresses and netting more than $50 million. Just last year the registry sold sex.xxx for $3 million dollars, the highest price paid for a non-dot-com address. Which leads us to wonder if the addition of .adult and .porn will generate the same concerns and profits. ICM Registry has set aside nearly 1,000 domain names such as sex.porn, hoping to replicate the success they had with .xxx. But the concern for many trademark holders, as was the case with .xxx, is how to protect their brands during the launch of .adult and .porn?
ICM Registry has set up an elaborate registration period, in effect now through the launch to the general public, which is expected in early June. The two gTLDs opened their Sunrise periods March 2, which will give trademark holders who are registered in the Trademark Clearinghouse (TMCH) the opportunity to secure their registered trademark within the new top level domains. Domains names are available on a first-come, first-served basis to validated marks in the TMCH. The cost of registration fees will be the standard registration fees without any additional sunrise application fees.
Once the Sunrise period has closed, .adult and .porn will launch a Sunrise B period from April 6 to April 30 for .xxx Sunrise B applicants. Sunrise B applicants consist of trademark owners who participated in the .xxx Sunrise B …
Though the U.S. Patent and Trademark Office (USPTO) has reduced patent prosecution time a bit during the past five years, it still takes, on average, at least 18 months before the patent examiner acts upon an application. Throw in two or more office actions, and the average pendency of a patent application is more than three years from the filing date to either issuance or abandonment. However, a number of programs are available that can significantly reduce prosecution time.
Track One prioritized examination (PE) was introduced in September 2011 and provides expedited examination of a patent application for an additional fee. Though the additional fee is $4,140 ($2,070 for small entities), examination is significantly compressed. On average, PE results in either a notice of allowance or a final rejection in about seven months. Applicants must request PE at the time the application is filed, or at the time a request for continued examination (RCE) is filed.1
Accelerated examination (AE) also continues to be available, but is generally less desirable than prioritized examination. An AE petition only requires an additional fee of $140, but the other requirements are burdensome. In particular, the applicant must not only conduct a patentabilty search before filing the application, but also submit an Examination Support Document (ESD). The ESD must identify where each claim limitation is supported in the specification and describe how each claim is patentable over the closest prior art — including identifying any claim limitations that are disclosed in the prior art. As …
By now, you probably have heard of the infamous “left shark” in Katy Perry’s Super Bowl XLIX halftime show, who went off script and did its own moves during “Teenage Dreams” and “California Gurls.”
So much buzz built about the shark that a 3D printing service, Shapeways, starting offering Left Shark models online, which prompted a letter from Perry’s attorneys insisting that the service stop sales immediately, claiming that the shark character was protected by copyright.
Shapeways sent a response stating that it did not appear that Perry owned the copyright for Left Shark (because a copyright is owned by the “author,” in this case the costume designer, and she did not design the costume), and that she had no basis because courts have held that costumes are useful articles and, thus, ineligible for copyright protection.
But wait! Though a costume may be classified as a useful article, courts also have held that design elements that are separate from the function of “clothing” are eligible for copyright. In fact, the U.S. Copyright Office lists a registration for “Shark costume; Children’s shark costume” (VA0000624682) owned by the Children’s Museum of Indianapolis.
Whether Perry does, in fact, own the copyright is yet to be determined, but this exchange is a lesson for business owners who send cease-and-desist letters without thinking about the consequences. In the past few days, the Internet has spiked with anti-Perry comments, and the model has been downloaded more than 11,000 times. Probably not the result Perry desired.…
As we reported last year, one of the issues that has divided the U.S. Court of Appeals for the Federal Circuit (the CAFC) for nearly 20 years is the proper standard of appellate review of patent claim construction rulings. No less than four CAFC en banc decisions addressed the issue. In each instance, the majority applied a strict de novo standard for appellate review with no deference to the trial court even with regard to underlying factual determinations, while vigorous dissents objected to this standard.
The dissenters have been vindicated, as the Supreme Court has now held that a trial court’s underlying factual determinations with respect to extrinsic evidence used in patent claim constructions must be reviewed on appeal under the clearly erroneous standard. This decision should, at least in theory, result in an increase in claim construction affirmances by the CAFC. It remains to be seen, however, whether there will be a significant increase.
Patent claim construction basics1
The scope of a patent is defined by its claims, and construing those claims is the heart and soul of nearly all patent litigation. The meaning of the words and phrases used in the claims is critical to not only the question of infringement, but also patent validity.
The task of construing the meaning of patent claims is a question of law for the court — not a jury — to decide. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390-91 (1996). Claim terms are given their ordinary and customary …
The U.S. Patent and Trademark Office (USPTO) released its revised Interim Guidance on Patent Subject Matter Eligibility under 35 U.S.C. 101 on Dec. 16, 2014. For the life sciences industry, the revised guidance provides significant relief from the previous guidance released March 4, 2014. However, just one day later, the joy that many life science patent practitioners felt from the revised guidance was tempered when the Court of Appeals for the Federal Circuit affirmed a district court’s holding of invalidity of several patent claims of Myriad Genetics based on patent subject matter ineligibility.
The good news
The revised guidance still employs a three-step analysis to determine subject matter eligibility, but has several notable changes. The first step of the analysis still questions if the claim is to a process, machine, manufacture or composition of matter as required by Section 101. However, the second step of the analysis questions if the claim is “directed to” a judicial exception, rather than the previous “involving” a judicial exception. As an example, the revised guidance notes that process claims that merely use a nature-based product are not necessarily subject to the analysis. Additionally, all claims — i.e., both products and processes — are subject to the same analysis.
Further, if a claim is identified as directed to a “product of nature” exception, the analysis compares the nature-based product to its naturally occurring counterpart to identify “markedly different” characteristics based on structure, function or properties. Only if there is no markedly different characteristic does the …
The U.S. Supreme Court created some wake by issuing their first substantive trademark ruling in more than a decade this week. The Supreme Court decided to hear a case on appeal from the Ninth Circuit’s decision in Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158 (9th Cir. 2013) cert granted, 134 S. Ct. 2842 (2014).
Of significant importance to the case is the trademark doctrine of tacking, which allows a trademark owner to make slight modifications of a trademark over time while maintaining the original first-use priority date. The doctrine holds that the original mark and the later, slightly altered, mark may be tacked when they are considered to be “legal equivalents” that “create the same, continuing commercial impression.” Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991).
The issue addressed by the Supreme Court is whether a judge or a jury should determine whether tacking is available — that is, whether the original and revised marks are legal equivalents — in a given case.…
ICANN has been making a final push this December after a couple sluggish months and has delegated 40 gTLDs since our last gTLD update. Those newly delegated gTLDs are:
- .商店 (shop)
- .网店 (webstore)
- .谷歌 (Google)
- .グーグル (Google)
- .八卦 (gossip)
Though ICANN has picked up the pace, there are only a small number of gTLDs about to enter or in the sunrise phase this month.…