gTLD update: .adult and .porn on the horizon

By Porter Wright on March 6, 2015

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 Program and are given a priority option to register matching marks in .adult and .porn before the gTLDs become available to the general public. Following these periods, the gTLDs will open a Domain Matching Program set for May 6 to May 31. During this time, any .xxx registrants can secure available second level domains in .adult and .porn for which they hold a valid .xxx registration. To participate in this phase, a .xxx name must be registered by April 30. Once completed, general availability will begin June 4. Continue Reading

Expediting patent examination in the United States

By Marty Miller on February 24, 2015

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 a result, many applicants will find prioritized examination to be the more affordable option. In addition, the information required to be included in the ESD may affect patent scope during enforcement proceedings against infringers. Continue Reading

Katy Perry’s left shark

By Porter Wright on February 16, 2015

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.

Leading European privacy law conference points to key themes, suggests strategic directions

By Porter Wright on February 12, 2015

A few weeks ago, more than 1,000 academics, legal practitioners and government officials convened for one of Europe’s premier privacy law events: the Computers, Privacy and Data Protection (CPDP) conference in Brussels, Belgium. Europeans dominated this crowd but a significant number of participants from other countries, including the U.S., made this a truly international gathering. I was fortunate to attend the conference and be able to present on two panels: “The EU-U.S. Interface: Is it Possible?” and “Privacy by Analogy.” This article provides an overview the conference, identifies the main themes that emerged from the three days of panels and discussions, and draws a few strategic conclusions for a U.S. audience.

Led by Professor Paul de Hert, faculty and graduate students from the Free University of Brussels (Vrije Universiteit Brussel) organized much of the CPDP conference. Leading companies, law firms and public interest groups — including Google, Microsoft, Deloitte, epic.org, HP, Intel and others — sponsor the event. An array of universities and other entities organize the 70 panel discussions that form the backbone of the conference (videos of many of these panels are available online). American universities and organizations are getting more involved. This year, Yale, Fordham, the University of Washington and the U.S.-based International Association of Privacy Professionals (IAPP) each sponsored a panel.

Viewed as a whole, the panel topics offer insight into the key themes that are of concern in European and international privacy law circles. Continue Reading

The saga of strict de novo review of patent claim construction comes to an end — U.S. Supreme Court tweaks the standard of appellate review

By Marty Miller on February 6, 2015

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 meaning to a person of ordinary skill in the relevant art. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). The ordinary meaning is not determined in a vacuum, however, as claim terms must be interpreted in the context of the patent as a whole, including the specification (i.e., the written description and drawings that precede the claims in a patent). The court also considers the prosecution history of the patent, particularly if the patentee made statements reflective of a narrower definition of a claim term than might otherwise be the case. Continue Reading

Life sciences patent subject matter eligibility — two steps forward, one step back

By Porter Wright on January 27, 2015

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 analysis proceed to the last step, which determines if the claim recites “significantly more” than the exception itself. Conversely, if a markedly different characteristic is found, the claim is determined patent subject matter eligible. Continue Reading

Supreme Court charts clear course for trademark tacking determination

By Porter Wright on January 23, 2015

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. Continue Reading

Warrant required for cell phone searches

By Porter Wright on January 19, 2015

A recent U.S. Supreme Court decision provides “a very clear and straightforward message” to law enforcement: You must obtain a warrant to search the contents of any cell phone. Kelly Johnson provides a review of the court’s decision in his article, “Privacy Comes at a Cost — Warrant Required for Cell Phone Search,” published by the Cincinnati Bar Association in its CBA Report.

gTLD update: gTLD delegation sluggish after holiday season

By Porter Wright on January 14, 2015

ICANN has not started the new year off with a bang, delegating a mere four new gTLDs this January and only 11 in total since our last gTLD update. Those newly delegated gTLDs are:

.fit
.lat
.kddi
.bank
.shriram
.zuerich
.flowers
.ggee
.sale
.amerstadam
.video

Similarly, there are only a small number of gTLDs about to enter or in the sunrise phase this month.

These gTLDs are on the horizon: Continue Reading