IP-Data.biz [Scam Alert]

Just a quick note about IP scams. Recently, a client sent me a document which claimed to be from a patent database provider. They were offering to publish the client's PCT application in their publicly accessible database. All they wanted in return was 2600.00 USD.

IP-Data.biz and companies like them make money based on the lack of information surrounding patents, publications and international filings. The World Intellectual Property Organization (WIPO) already publishes the applications. It is part of the outrageous fee you paid them about 18 months prior.

Safe to say, the only international authority you should pay (assuming you have filed a PCT application and done so pro-se is the national receiving office of the PCT.  This will be a reputable organization, like the USPTO located in Washington or the EPO located in Brussels. It will not be a nondescript drop box in Bratislava. 

Hopefully, if on one falls for their scams, they will move on to other, less low hanging fruit.

Girls be illin?: Don't waste your start-up capital on non-essential legal fights

Story: Goldieblox, a toy company marketing engineering toys to girls, used the Beastie Boys famous / infamous song "Girls" in a parody music video to promote their start-up project. The music video went viral on youtube, spawning mostly ardent praise and affection.

The Cerberus Legal dogs of Universal Music sent Goldieblox a pleasant letter (by Cerberus legal dog standards) asking them to take down the video. The letter claimed that the parody video was outside the scope of the fair use exception to copyright use, and constituted an impermissible use of the underlying work.

The legal counsel for GoldieBlox filed a declaratory judgment action seeking a finding on non-infringement under the parody provision of fair use.  This could be a educational case about how a "letter" is never really a letter, but an invitation to bring a DJ action.

A lot of digital ink has been split regarding the merits of the parties positions. If you are in favor of the permissible parody argument, then the Electronic Frontier Foundation (eff) has a great rundown of the law and their interpretation.

The point being missed here is one of resource allocation. It is argued that any press is good press. If that is true, then this entire episode is a net benefit to Goldieblox and their start-up ambitions.

However, from a business point of view, getting into a law suit with a major entertainment company is a huge hassle. Aside from your own legal costs, which could have been better spent on non-legal blog based marketing, you run the potential risk that you might lose and owe someone, or some mega corporation, lots of money. That outcome is unlikely here (even if GoldieBlox loses, they will likely have minimal damages), but that is besides the point.

A cursory level of diligence would have shown that not only do the Beastie Boys not like "Girls" (they refuse to play it anymore), they are actually quite litigious. As such, perhaps their IP, regardless of your use, was not the best media to use.

For the legal costs involved in filing and arguing a Declaratory judgement action, you could have hired a band or a composer to generate a all new song. The point here isn't that the Beastie Boys are right to argue about fair use, it is that a start up generally should avoid potentially bruising legal fights.  IP counsel should always be mindful of not only the legal arguments, but the overall business position.

Start-up resources should never we wasted on non-essential legal fights. If you need access to a particular piece of technology or code in order for your idea to function, then roll the dice, take the risk. If you want to make a music video parody of a famous song, think about the necessity to the bottom line.

Jordan Garner

Product Design IP in the age of 3D Printers

Dieter Rams designed Coffee Maker

Intellectual property protection for industrial design and industrial designers has always been a fraught process. The nature IP does not lend itself easily to the tasks Industrial Designers might put to them. However, new technology might begin to change how Industrial Designers see Intellectual Property protection.

IP Limits

Conventionally, industrial design is protected through a design patent.  Design patents allows the designer to get protection on their purely ornamental design for 14 years from filing.  Unfortunately, this means that if the product has a functional component (enhanced ergonomics etc.) then the designer relinquishes that functionality, or they are forced to obtain the more expensive and time consuming utility patent. A utility patent covers the function of a device , process, compound or article of manufacturer. For example, a designer could hold a patent on the manufacture of a particular item. While this might successfully deter large scale copying, it does not prevent wide spread dissemination of the construction methods and processes.

Copyright protects artistic and literary works for 70 years, plus the life of the author. Text and audio-visual works are the primary focus of copyright. Once you move beyond the artistic realm into the functional, Courts have held that copyrights no longer apply.  However, the age of 3D printing might be about to change the rules of the game.

Charles Eames Design Patent 

3D Printing

For the uninitiated, a 3D printer is a device that builds an object, usually out of some resin, layers at a time. It is the electronic opposite of a very fine mandolin slicer. MakerBot, and companies like them are pioneering a way to have an "internet of things." The eventual goal would be a repository of templates for the production of all manner of goods, ready to be downloaded and printed, the way one might download a song and burn it to a CD [ed. do kids ever do that any more ?].

 The software used in 3D printers vary from device to device. However, they all use some form of stereolithography file to instruct the device on how to lay down layers of material. Once all the layers have been deposited, you should have a reasonable copy of object described by the file.

It should be apparent that 3D printing allows for the production of many useful things, it also allows for the re-production of industrial design elements without authorization from the original creators. Where 3D printing has created a problem, it might also offer a solution.

IP Incorporation into Designs



Since the procedures for manufacturing the item begins with a digital file. It is possible to encapsulate the design within the boundaries of Copyright law. If the software file, the instruction set for making a particular design is complete (that is, it does not require additional tooling, or minimal machining) then the software encapsulates the design.

It might still hold true that the tangible representation of the software (i.e. a chair or lamp) is not covered by copyright, the software code that executes the 3D printer is a valid piece of IP.  Therefore, the nexus of IP infringement of the design would occur when the digital file is copied (i.e. on a file share network). Thus, developing code for the 3D designs will become as important as the conceptual prototypes. Court are well positioned to hear arguments on the illicit trade and sale of pirated software. This presents an opportunity for Industrial designers and software coders to collaborate on clever implementations of the software to render the designs with minimal post processing. The closer the code is to representing the object, the stronger the case for infringement. Once the code base of a portfolio has been engineered, a simple licensing program [not in bitcoins!!!] (think Itunes) could offer people the world over the chance to download an use a particular firm's designs.

Alternatively, or additionally, a designer could include a structural trademark element. For instance, the design of a chair could,  incorporate a logo. In this instance, merely printing the object does not create a cause of action. However, once an unscrupulous manufacturer attempts to sell the copied design, they are engaged in trademark infringement.

There are likely more elegant solutions than these two for the potential problems posed by 3D printing. However, these solutions show that IP in 3D printing can be maintained and creators can be protected.

Jordan Garner

Developer's IP checklist

Awhile back I got a call from a video game developer that was about to go live with their product. The lead developer/CEO had just discovered that there was a trademark registered to a major company, that happened to be the same name as their game.

Luckily, we were able to resolve the issue prior to them going live, but it raises an interesting point.

A lot of the discussion relative to IP in the start up / developer space is colored by the larger market discussion on software patents and their role in, or hindrance on, innovation.  This discussion has sucked all the air out of the room as it applies to the multiple forms of IP that are pretty critical to a successful brand.

As such, I figured I would just do a quick check list for all the app/game/social media/ tech start-ups out there that maybe thought that having a position on patents was their sole IP issue.  Here is the quick check list, followed by some in-depth discussion.

1. Do you have Copyright Assignments for Coders, Designers and UI/GFX Modelers
2. Do you have a Trademark on your company / product name. Do you have a domain name on the same?
3. Do you have a firm wide confidentiality policy?

Copyright  Assignment Documents:
 In the U.S. any works of authorship, which includes drawings, character models, wireframes, code, or text, is covered by copyright.  The copyright vests in the creator at the time of creation. So, as soon as your character modeler generates an awesome character for your app, the copyright in that character vests in the creator. Not, I repeat, Not the company who they they are working for.

This is always true, UNLESS, you have an agreement in place that assigns all of that work to the company.

This can be done in two ways. The first is to have everyone that is working on the project sign a document that assigns all of their work to the company.

Second, which is more subject to legal challenge, is a Work For Hire Agreement. A Work For Hire Agreement that states that the works created were done so as a commissioned work of authorship. This is the language you will find in employment contracts for large media companies and software companies alike. The problem is, if you and your buddies are coding the killer app, when did you sign employment agreements? Odds are you didn't Once you are ready to go live, pitch investors, or hit Kickstarters, everyone who has contributed to the project should agree, in writing that they are assigning their rights over to some entity.  However the agreement is made is largely irrelevant, the goal is to get the assets essential to the company under the ownership umbrella of the company.

As a second point, I always suggest filing a few federal copyrights on art assets or screen shots, just to deter scrapers, clones and knockoff artists.

Trademarks:

Trademarks are source designations of origin. They identify the good or service as coming from a particular entity. As I stated at the beginning of this piece, an invaluable use of time is to check the trademark office to see if the name of your game, company, or app is already in use. If so, is it is the same field of use. There is nothing worse then having to go back through code looking for references to a company name that needs to be changed at the last minute. Securing a trademark relative to a patent is a cheap and easy process. Once it is secured it can be used as your brand and the public show case of all your company has to offer.

I always remind clients that Twitter did not Trademark "Tweet", a decision that came back to bite them in terms of money and attorney fees. See here.

Confidentiality

As a rule of thumb, anything that pertains to proprietary technology, that gives you a perceived edge in the market place (google's search algorithms, Coke's formula, Zucherberg's Hoodie), should be kept confidential.  Not only is this just good practice, but it also lays the foundation of a strong Trade Secret Policy.  As I pointed out in an earlier post here, the rules for protecting valuable IP via Trade Secret Laws has been greatly enhanced.

Every Company should take advantage of that, not just vampire squid banks. The best way to do so, is to make sure that everyone has signed confidentiality agreements that lay out their responsibility to keep the companies secrets...secret.

For the large majority of start-ups and developers, this is all the IP you need. In the future, when you begin driving technology, Patents will become a critical component of your IP strategy. However, you will never get there if you don't secure your IP in the beginning.

Jordan Garner

Scammers Part 2

A while back I talked about watching out for scams in the form of "official" seaming documents coming from overseas and asking for "international patent" fees.

Well, short time ago, we started receiving inquires from our clients regarding the same issue but this time from a "official" international Trademark Office in Latvia. Note: There is no International Trademark Office. Second Note: If there were...It would not be in Latvia.

Just as in the first instance,Leason Ellis is taking the fight to the scammers.

See here: http://www.law360.com/articles/437509/ip-firm-leason-ellis-sues-to-shut-down-trademark-scammer

Check back for updates.

Success Against Scammers

In a previous post , I discussed how to not get taken in by Trademark scammers. Well, I am happy to announce that Leason Ellis has taken the fight to the con-men and put at least one of them out of business.  In the consent decree, USA Trademark Enterprises ( a notorious scammer that preyed upon unsuspecting trademark applicants) agreed that:

Defendants warrant and represent that they made substantial sales and shipments of the Catalogue in the United States, including New York State, and have made good faith disclosure to Leason Ellis of financial records concerning such sales;

Defendants warrant and represent that, within fourteen (14) days of the Settlement Agreement separately entered into between Plaintiff and Defendants (the “Settlement Agreement”), they shall permanently discontinue marketing, selling, offering for sale, and distributing the Catalogue in the United States per the terms of the Settlement Agreement;

Defendants warrant and represent that, within fourteen (14) days of the Settlement Agreement, they shall never again conduct business in the United States in the field of trademarks or, more generally, in the field of intellectual property; and

USA Trademarks and its owners, officers, stockholders, employees, agents, servants, affiliates, subsidiaries, attorneys, and all other persons in active concert and participation with it, including Timea Csikos and Andras Nemeth, shall abide by the terms of this Consent Judgment.

I am quite proud of the work my firm has done in putting these scam artists out of business. Congratulations are in order.  You can read more about it here.

Getting Hired in the IP Field

 Regardless of how you find yourself less than gainfully employed (or about to be less than gainfully employed), it is helpful to know that all IP associates are not equal in terms of their supply / demand curves. 

It is generally assumed that all IP associates (and partners) tend to land on their feet after a major event like Dewey. This, I can say from personal experience, is not always the case. Depending on your technical background (you have a technical background, right?) the market tends to set the going rate of demand differently for different kinds of associates.

So, how does one increase their desirability in terms of greater chance of employment? Well, going to a really good law school is really helpful, but not an indication of success.  Going to a decent (not terrible) school and doing really well is probably not better than going to an excellent law school and not doing so hot, but it is a decent consolation prize. Obviously the preferred option would be to go to a good school and do really well (and date supermodels). So, taking a clutch of associates, all of whom did well in undergrad and went to an excellent law school, who gets hired first? Who is in demand?

Well, if you have been on any recruiter websites (or get the e-mails) you can quickly create a ranking based on demand. While the list moves around a bit depending on Litigation or Prosecution emphasis, the top spots of the list remain largely intact. So who is on top: 

Electrical Engineering

Computer Science

Mechanical engineering

Chemical Engineering 

Civil Engineering

Pharmaceutical / Biotech (PhD. level) 

Biology (Non- Phd.)

Trademark

The best way to get a job in the current IP landscape is to have an electrical engineering degree or a computer science degree.  The hardest way is to not have a technical degree at all. This doesn't mean that Trademark Associates do not get hired (we have hired a few recently), it just means that the supply greatly outstrips demand, and will for the foreseeable future.  

Jordan Garner, Leason Ellis, White Plains NY.

Trademark Scams

The internet is full of scams, scammers, hackers and Nigerian Princes who are only inches away from giving you 10% of billions in unclaimed Federal Government cash and Russian Women who won't care if you are an unemployed baby-boomer living in your son's basement with an infectious skin condition. They love you, and all they want is for you to send them a bit of money.

IP is not immune to these fishing lures deployed by various shadowy groups bent on bilking you out of your hard earned money.  Recently, a client of mine received a letter, and invoice, purporting to be the "Register of International Patents and Trademarks (I am loath to link to them, but be forewarned- www.patent-online.org). I am not sure what tipped my client off to the scammy nature of the communication. Was it the fact that the "Office" was located in Slovakia? Or that the Bank transfer was to a P.O. Box in Austria? Or is it the fine print that states that "this is not a registration by a government organization." Why would the "International Patent Office" be a governmental organization, that is just crazy talk.  Maybe it is the fact that the invoice changes on every page?

This is nothing new. The publishing of Trademarks by the USPTO is done so that legitimate concerns by other users of similar marks can be addressed.  Unfortunately this means that sometimes unscrupulous people can try to take advantage by using a bit of public information and an official sounding name.

Well, if you haven't figured it out by now, these guys are a scam.  While you can get an internationally recognized Trademark, you must go through the Madrid Protocol Process provided by the World Intellectual Property Organization (which, surprise, surprise, is a international governmental origination). As I have stated previously, Trademark Rights are the first thing that most Start-ups and small business should focus on. Your branding is your identity, and you should take seriously the protection of that identity. Let the Twitter situations be a learning experience. While it might sound self-serving, you should always conduct your Trademark Matters through a qualified IP attorney (i.e. someone who has done this before and knows what they are doing).  Definitely what you shouldn't do is pay money to Eastern European scammers in the hopes that you will secure your rights on the cheap.

For you own research, I have produced the redacted letter that my client received. The prices and invoices are so wildly inflated, relative to what a trademark filing normally costs, as to be laughable.  If you have recently filed for a Trademark, please do not fall for this. If you have questions about internationally filing Trademarks, then consult your IP attorney. If they are too busy on the golf course, contact me. What ever you do, don't wire 2800.00USD to Bratislava, you won't even get a photo of a nice Russian Girl who loves you in return.


Bogu Tm Bills Confidential 1

New Feature

In the course of assisting a client with a trademark matter, I began thinking about all the decisions that eventually brought this client to my attention. While the hows and whys of the pertinent legal matter should always take precedence, I began to ask the client about their general impression of intellectual property law. More importantly, I began asking about what it meant to them before it became a focus of a dispute.

I think many practitioners fail to understand that the general public is largely aware of intellectual property concepts, but don't always know the best way to take advantage of the rights that our system provides. Much like in health care, IP practice focuses a lot of its time on preventable issues, that were never prevented.

I decided to get some data on what intellectual property producers think about IP, especially before it becomes something that is knocking on the front door of their livelihood. Issues like why producers opt for cheap invention services, why people fail to get federal copyrights or file for trademarks. My assumptions led me to believe, again like health care, that is was an issue of money. The capital outlay for preventative legal actions was seen as a waste of money, while remedial legal actions were undertaken as a option of last resort. In my interviews, I found this to be generally correct, however, there is a vista of thoughts, emotions and pre-conceptions that go into producer decisions.

In the coming weeks, there will be a new feature which will relate some of my interviews with designers, programmers, inventors and other producers of intellectual property. Hopefully to convey their impressions of our field and how those impressions influence their work, their decisions to hire attorneys, and their decisions to take action against other producers. Through these interviews, IP practitioners can learn as much about the people we seek to help as they learn about our field.

These posts will be labeled [Producer Profiles].

[GA]