Litigation of IP (Copyrights, Patents or Trademarks) Lawsuits: sometimes, it is not about the Technology or the Experts, but a simple Motion to Stay and Change Venues!

So, very recently, I was involved in a very heated and contentious Intellectual Property (“IP”) dispute with both sides taking entrenched positions.  Some abstract concepts were involved and there were some nuanced issues relating to our clients’ ability to estalish valid IP rights.  I received the case from a prior business attorney, and my team and I were able to re-plead the Answer, and raise some new affirmative defenses; but purposely, raised no counterclaims (were not required to raise them).

Next, we set out to complete written and oral fact discovery for all the major issues, or key depositions, within the next three (3) months. Hell of a three months, let me tell you.  However, despite having attorneys examine and question them for the full seven (7) hours allowed under the FRCP; the clients, remained entrenched in the same positions.  Ok, so, like any good defense attorneys, we draft, research and prepare a motion for summary judgment (“SJ”) to try and get our clients IP rights recognized and enforced, as a matter of law.

Next, we wait for about six to nine (6-9) months for a Ruling on the Summary Judgment Motion.  All the while our clients are able to continue their business operations and revenue generation activities (no injunctions were issued).  The time for trial is soon, upon us, and we have not received a Ruling on our summary judgment motion. We prepare a motion to continue trial, and gently, remind the court clerk of the pending and fully briefed motion for summary judgment.

You know what happens next, right?  Our motion requesting a Ruling is granted and the trial dates are rescheduled.  However, within less than, thirty (30) days our motion for summary judgment is denied in a five (5) page opinion that makes a blanket statement that “genuine issues of fact exist for trial.”  There are no citations to the records, exhibits or the legal authority in the parties’ briefs, and for that matter legal authority supporting the opinion’s Rulings or SJ standards.

We prepare a motion to reconsider, and assert an error of law, in application of the SJ standard, and that we had met our burden of proof and production on the issues relating to our clients’ valid IP rights and affirmative defenses.  We identify, the lack of admissible evidence at trial in the responding party’s briefs, and the failure to raise a genuine issue of material fact requiring a trial.  We limit our focus to issues that are dispositive establish the validity of our IP rights and the affirmative defenses permitted on an SJ motion.   We remind the court clerk of the responding party’s obligation to produce admissible evidence that creates a genuine issue of trial (thank god for Celotex and its progeny).

Within, twenty one (21) days, we get a Ruling (1-2 page opinion) that denies our motion for reconsideration, and essentially, says see our prior opinion.  We (our clients and us) believe, that we can prevail at trial, but want to avoid the burden and expense of a trial or the risk of potential adverse factual findings.  The the thing about IP claims, whether, they involve copyright, patent or trademark infringment; there are often, interested third parties (not required just generally interested).  You never know, how the factual findings in one case may, impact your clients rights vis-a-vis these interested third parties.

So, how do we get an interlocutory appeal or writ for mandamus relief, in this situation? Is that even worth it?  Can the clients afford the appeal and/or writ, and the trial if, our SJ is denied on remand? Then, it hits me changing the decision maker, does not require an appeal or a writ of mandamus and that is what we really want to do.  So, how do I change the decision maker for our case?  Ah ha–some claims between the parties that are tangentially related, but not barred could be brought in a different venue.

In fact, we could file in the other venue, and seek a stay in the venue, where we got adverse Rulings on our motions for summary judgment and reconsideration.  We start preparing the clients for this possibility, and we discuss how to get the stay granted, and it looks good.  Plus, this decision maker or court clerk does not appear to want to dig through our briefs or motions–so, we believe there is an incentive to grant our motion to stay and avoid having us go to trial.

We were in the process of executing on this strategy, but it turns out that we may be able to resolve the dispute, without even having to file the tangentially related claims in the new venue.  Never forget, the value of changing the decision maker or court clerk that gives you adverse Rulings. Not all of these situations require an appeal or mandamus relief, sometimes a simple re-pleading of some tangential, but new claims in a different venue, may save you, and your clients, the burdens and costs of an appeal and/or writ, or a trial.

That will definitely have go into the file bank for future use.   Want to know more, or hear more similar stories, then check out:  www.bipeblawg.com or www.vrplawgroup.com

Apple’s new product venture-smart headphones and patents on headphones! What are they?

Apple has filed patents for smart headphones that play music you want based on your mood, feelings, heart rate, sweat, and your exercise routines. When you lift weights and are looking to max out–the headphones scroll through your playlist and play eye of the Tiger from Rocky.

If you are performing yoga, then it plays forest and water sounds from your playlists. If you want to meditate it plays-chant, ok not all of us will want to listen to a chant, as we try to meditate.  The point is Apple has redefined the concept of providing customized products.  This concept is not new and the idea of creating smarter products is not new, nor is providing customers customized goods-so, what is so great or innovative about Apple’s headphones?

Like anything else it is extension of the concept of providing customized goods and execution and delivering a set of headphones that automatically customize themselves to each consumer.  Plus, Apple is developing technology that does not require a user to select from a category of options for headphones or require user intervention to provide the consumer what he or she may want in real time!

Now, that is something a product that is able to keep track of your prferences, tastes in music, sense what you may want and self select it to customize itself to give the consumer what he or she wants. Apple’s ability to execute will determine how many Smart Headphones they will sell.  However, their design and utility patents will enable Apple to protect its ability develop these innovative Smart Headphones.

Do you see some other potential applications for this technology?  Of course you do, why stop at headphones? How about watches, heart rate monitors, glucose monitors, headbands, cell phones, shoes, clothes, necklaces, bracelets, literally anything that a consumer wears, uses or may do can use a Smart Product or Service!  Apple’s ability to profit and protect its licensing, sales and prevent others from copying its product will determine the keys to its success.  Apple’s ability to increase and monitor infringement of its patent, trademark, and copyright portfolios will be a crucial party of that success.

Want to know more about Smart Products, then call Apple, IBM, or Google. Want to know how to protect your product, brand or technology, then contact us at: www.vrplaw.com or www.vrplawgroup.com

Design Patents-What are they? Are they worth getting?

Design Patents are a form of patent that covers the nonfunctional creative and design aspects of a product. They are valid and can be used to exclude others from practicing your invented design. However, design patents do not cover the useful or functional aspects of your product design.

Although you can combine a utility and a design patent, this would allow you to protect both the useful and aesthticaly pleasing aspects of your invention. This may allow you to protect the functionality and cool look of your invention. Apple and Steve Jobs were masters of using this form of layered intellectual property protection to take advantage of trends and consumer preferences.

However, you could still add more layers of intellectual property protection by registering the product packaging as a trade dress and/or coprights on the original aspects of your product design. This allows for the creation of a portfolio of IP rights to give you a greater advantage in the market place.

This form of tiered IP protection strategy also helps against the expiration of IP rights. For example, design patents last for 14 years, utility patets are good for 20 years, copyrights last for the life of the author plus 70 years, and trade dress rights are notlimited by time. If you have any concerns or questions, then please contact us at: www.vrplawgroup.com

Copyright Infringement, Misappropriation of Likeness, violation of the Illinois Right of Publicity Act and DMCA Take Down Requests-Oh My!

In many cases involving the use of a photograph concerning the image or likeness of a person, there are multiple methods of seeking a removal and seizure of the photographs.  In IL, there is an IL Right of Publicity Act that many individuals, advertising, marketing or sales professionals and even attorneys fail to consider or utilize.

The IL Right of Publicity Act, provides for statutory damages and legal fees, and it can be just as if, not more effective, than a DMCA Take Down Notice.  However, it is a relatively unknown right provided for based on the common law tort of misappropriation of likeness arising out of the First Amendment.

Believe it or not, the First Amendment has a Right of Privacy that provides for a number of tort claims, such as, false light, public disclosure of private facts, and misappropriation of likeness.  This common law misappropriate likeness claim has been codified in IL under the IL Right of Publicity Act.  Thus, IL citizens have more options for preventing someone from using their photographs or images without their written permission.

Often times, copyright and DMCA claims suffer from a failure to register the Works and this allows the Infringer to continue to dispute your copyright.  However, the Right of Publicity cannot be disputed and provides for relief, where Copyright Law may not allow for a quick remedy.

If you have any concerns or questions, then please contact us at: www.vrplawgroup.com

Understanding Trademark Trials and Appeals Board Proceedings: Trademark Cancellation and Opposition Practice!

The United States Patent and Trademark Office (“USPTO”) has a Trademark Trials and Appeals Board (TTAB) that allows individuals to contest and oppose the rights of Trademark Applicants and Holders.  The TTAB’s cancellation and opposition practices are often, viable alternatives to filing a full blown trademark infringement lawsuit against competitors, counterfeiters, copycats or duplicate trademark application filers.

The cancellation and opposition proceedings permit for discovery and motion practice similar to what is provided for under the Federal Rules of Civil Procedure and Federal Rules of Evidence.  However, there are some important differences that you should be aware of before deciding to file a trademark infringement lawsuit in Federal Court or filing an opposition or cancellation proceeding with the TTAB.  First, the TTAB cannot award money damages, they can sanction individuals for violations of discovery, but cannot provide monetary relief.

In addition, the TTAB can only, rule upon the particular application numbers and registrations numbers involved in the opposition or cancellation proceeding.  They cannot make a final determination of trademark rights.  They can only make a determination of allowing or cancelling trademark applications or registrations.  However, depending on what evidence is considered by the TTAB and the factual findings it makes–A District Court may be required to give deference to the TTAB’s findings.

However, the TTAB is never the final authority on issues relating to interpretation and application of trademark law.  Federal Courts will always review all legal findings that the TTAB makes de novo.  In addition, the trial proceedings are drastically different and of a more limited nature than Federal Court Trials.  If you or someone you know is trying to figure out if, they should file for a trademark cancellation or opposition proceeding, then feel free to have them contact us at: www.vrpawlgroup.com

Isn’t everything on the internet part of the Public Domain? If it’s on the internet, then its free to use, Right? No, this is a very common misconception!

One of the most common mistakes business owners, marketing individuals, SEO Consultants, Website Developers, Social Medial Consultants, and new authors or musicians make is assuming that everything on the Internet is free source material for them to use.  If you make this assumption you are exposing yourself and your clients to potential copyright infringement claims. Whether, you are talking about written articles, e-books, blog posts, videos, photographs, website architecture and content (Collectively “Works”), many of the issues from a copyright infringement perspective are the same.  If someone has published something on the Internet that does not mean it is part of the Public Domain, and can be used by anyone.  You must still review it to determine if, the Original Work or Source Material is copyrighted and if, you are using it in violation of the owner or author’s Copyrights.

First, you should look for a Copyright notice on the Source Material or Original Work.  Second, you should check the U.S. Copyright Office’s records.  Third, you should determine how much of the Copyrighted Work you are actually using in creating your own New Work.  If the amount that you have appropriated is covered by the Copyright Registration, then you may very well still be liable for Copyright Infringement.   If the material is covered by a Copyright you should review your New Work to see if, it is substantially similar to the Original Work covered by the Copyright Registration.  If your New Work is substantially similar or uses the heart of the original Work, then you should check to see if, your New Work qualifies for a defense or exception from infringement. You should also see if, you can take advantage of the safe harbor provisions and the Notice and Take Procedure of the Digital Millennium Copyright Act (DMCA).

To determine if, you are allowed to use someone else’s Original Work as source material for a New Work that you create, without committing copyright infringement, you need to compare your New Work to the Original Work or Source Material and see if, there is an applicable Fair Use, Parody, Innocent Infringer, Copyright Misuse, De Minimis Infringer, Copyright Invalidity, Public Domain, Copyright Troll, or a DMCA Safe Harbor Defense.  If not, then you may be liable for Copyright Infringement, which, can be a substantial and ongoing source of liability.

Damages in a Copyright Infringement case can include statutory fees, attorneys’ fees, lost profits and/or reasonable royalties for the life of the Copyright or the author’s life plus seventy years.  So, before you go to a website and copy someone else’s Original Work to use as Source Material and expose yourself and your clients to a Copyright Infringement, Inducing Infringement, Contributory Infringement, Vicarious Infringement, or a DMCA claim, consider investigating whether the Original Work (book, song, lyrics, art work, photo, website, blog, blog posts, software, advertising materials, characters, mask work, designs and drawings, videos, or public performances) are Copyrighted. The best is if, you can create your New Work independently of the Original Work, then even if, it is the same as someone else’s Original Work you will be able to avoid copyright infringement by being an independent creator of your New Work.

If you have any concerns or questions about enforcing your copyrights or defending against copyright infringement claims, then please feel free to contact our Copyright Attorneys or see our website at: www.vrplawgroup.com

What kind of patents are there in the U.S.? How many patents actually make it to issuance? How long are patents valid?

In general, there are three broad categories of Patents, the Utility Patent, the Design Patent, and the Plant Variety Act Patent. In the United States, in 2012, there were 268,782 applications filed for Utility Patents, 32,799 applications for Design Patents, and only 1,149 applications for Plant Variety Act Patents. In 2012, the USPTO granted 121,026 Utility Patents, 21,951 Design Patents, and 860 Plant Variety Act Patents. The most common type of patent applied for and granted is the Utility Patent.

A Utility Patent is issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, it generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of filing the patent application, subject to the payment of maintenance fees.

However, within the category of Utility Patents there are subcategories of patents or patent claims (your inventions), such as the following: business method or process patent, product by process patent or claim, biotechnology patents (have a special deposit requirement for biological material), and traditional apparatus, mechanical, or device patents.

On the other hand, a Design Patent is issued for a new, original, and non-functional aspects of product design or design and permits its owner to exclude others from making, using, or selling the design for a period of fourteen years from the date patent is granted.  Design patents are not subject to the payment of maintenance fees.  Design patents are limited to the drawings and figures that are submitted as part of a unitary application.

The third type of Patent, the Plant Variety Act Patent is issued for a new and distinct, invented or discovered asexually reproduced plant including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, it permits its owner to exclude others from making, using, or selling the plant for a period of up to twenty years from the date of patent application filing. Plant patents are not subject to the payment of maintenance fees.

In addition, there are multiple types of Patent Applications (Provisional, Non-Provisional, PCT, Parent, Continuation In Part, Continuation Application, Child Applications, Small Entity Applications, Divisional Application, Reissue and Re-Exam Application.   As you can see by the statistics above, the USPTO grants only about half of the patent applications that are filed (by pro se applicants and by patent prosecution attorneys).

The USPTO recommends and we highly agree that a Patent Agent or Patent Attorney that is familiar with the Manual of Patent Examining Procedures (“MPEP”) be used to prepare and file any type of patent application.  We recommend VRP Law Group at www.vrplawgroup.com. Also, A useful application process guide and process flow diagram is available at http://www.uspto.gov/patents/process/index.jsp.

Copyrights? What are they? How do I get them and what about trade dress?

Copyrights are a bundle of statutory rights granted under section 106 of the Copyright Act.  There is no such thing as a common law copyright, it is all statutory. You cannot sue for infringement, without registering the copyright with the U.S. Copyright Office.  Unlike trademark or trade dress rights, which, can be based on common law rights–copyrights are purely a creature of statutes.

Copyrights are often considered soft IP, but may often be more valuable than patents. Copyrights allow individuals the right to publish, distribute, make derivative works, publicly perform or publicly display the copyrighted work.  There are also moral rights of attribution and integrity of the work.  Moreover, copyrights are often available for websites, where patent law will often exclude a websites design, layout or architecture from patent protection.

Thus, copyrights can be used to increase your internet presence and protect your online works, but you have to take steps to register the work, police infringement of your work and ensure that you renew any previously registered works.   Trade dress rights are now being extended to web store fronts or for online retailers, but are relatively new and only recognized by the Ninth Circuit.  Therefore, trade dress rights are not as likely to guarantee or protect your website as copyrights would.

Moreover, copyrights are available for books, songs, lyrics, music, videos, pictures, designs, semi-conductor molds, comic, literary and film characters, software, and a variety of other artistic works.  One of the novel forms of rights to copyright law that is different from other forms of intellectual property rights–is the right to produce derivative works.  A copyrighted work cannot be used by another person to create some derivative of the original work–i.e.-book to film, to character figures, to TV series or vice versa.   Thus, copyright portfolios and bundles of rights can often be a powerful tool in an IP development and monetization strategy.

If you have any concerns or questions about registering your copyrighted works, then please let us know.

Patents, Trademarks, and Copyrights! What’s the difference? What should I get and can I get both or all three? Maybe….

Patents, Trademarks, and Copyrights have been around for a very long time. The first patent law was enacted in 1790. Patents, Trademarks, and Copyrights are all different but all give some type of rights. Patents and Trademarks can be filed with the United States Patent and Trademark Office and Copyrights can be filed with United States Copyright Office. So what are Patents, Trademarks, and Copyrights?

There are many different kinds of patents for example a utility patent or design patent. A patent for an invention is the grant of a property right to the inventor. The patent protects the inventor from other inventor’s infringement. The Patent gives “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. The application for a patent has extensive guidelines to follow. It must state claims that specifically define the invention.  The application process to go through is lengthy to get an invention patented.

A Trademark is not the product itself, but the mark that identifies the goods. A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. The trademark rights granted only protect the mark not the goods being sold. The most common reason to refuse a trademark application is the “likelihood of confusion” with other marks.

A Copyright deals with the rights given to the creator of a piece of work. This allows the Creator to have control of the work and allows them the right to profit off of the work. The 1976 Copyright Act gives the owner of the Copyrights the exclusive rights to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. The Copyright protects the form of expression, rather than the subject matter of the writing.

Patents, Trademarks, and Copyrights all grant rights, but for different subject matter. You may need just a Patent or you may need a Patent, Trademark, and Copyright. All should be discussed with your Patent, Copyright, Trademark or Intellectual Property Law Attorney to choose the right option for you.

Intellectual Property (“IP”) Litigation is similar to other complex litigation, but requires more creativity and education of the Judge and/or Jury!

Intellectual Property (IP) rights are abstract and often difficult for laypersons, judges, and/or attorneys to understand.  Many attorneys have a difficult time understanding how copyrights, patents, trademarks, trade dress and/or trade secrets lawsuits should be litigated.

Making sure that you understand the technology behind the intellectual property, and can explain it to judges, juries and your opposing attorneys is vital to the success of any IP lawsuit.  Having good experts that can explain the technology to a judge or jury, can often be the difference between winning and losing an IP lawsuit.  An Intellectual Property Law Attorney is more of an educator and/or teacher than in most other areas of law.

A successful intellectual property attorney must come up to speed quickly on the clients’ technology, how the intellectual property protects the technology, the clients’ business interests, and how to use the litigation process to maximize the value of the intellectual property rights.  Often, a good intellectual property portfolio is only, as good as, the law firm litigating and enforcing your intellectual property rights.

The more successful you are with your intellectual property lawsuits, the more you will be able to command a higher royalty from your licensees.  However, if any of your intellectual property rights are invalidated, then there is the danger that one adverse ruling ruins your ability to monetize that copyright, patent, trademark, trade dress or trade secrets rights.

If you have any concerns or questions about your intellectual property rights litigation strategy, then please feel free to contact us at: www.vrplawgroup.com