Naples FL Intellectual Property Attorneys Blog

FBI gets serious about state-sponsored trade secret theft

2012-05-18T19:02:57Z

If you're under the impression that intellectual property is a rather...dry area, the FBI's most recent public-relations initiative might change your mind.

The FBI believes that state-sponsored theft of trade secrets from American companies has gotten so out of control that it has become a national security concern; when jobs are as scarce as they are these days, we risk economic instability by losing even more jobs when companies have their secrets stolen.

]]> That's why the FBI is taking out billboards across the country alerting viewers to a website where they can find some telltale signs that a coworker might be stealing their employer's trade secrets. (The campaign hasn't started just yet, so we don't yet know whether any of these billboards will appear in Florida.)

According to the FBI, employees who stole their employer's trade secrets and sold them to foreign companies caused American businesses to lose $13 billion last year. One industrial spy, for example, sold a chemical formula to a South Korean company. The formula was so valuable that the parent company of the American business, Warren Buffett's Berkshire Hathaway, had to buy out the South Korean company that bought the secret just to stay in business.

Industrial spies are nothing new in certain fields, like defense contracting, but they have recently gone after companies that aren't as diligent about guarding their secret information, like software developers.

If the FBI is concerned about the hijacking of American trade secrets, then it's pretty clear intellectual property concerns are a big deal indeed.

Source: The Wall Street Journal, "FBI's New Campaign Targets Corporate Espionage," Evan Perez, May 11, 2012

Maker's Marks swats tequila maker over trademark-infringing wax seal

2012-05-11T20:50:21Z

When you see a bottle of liquor with a bright red wax seal on it, what is the first phrase that comes into your head?

Beam Inc. hopes that most Florida residents would respond, "Maker's Mark," because since its establishment in 1958, the company has invested serious money in marketing its Marker's Mark bourbon chiefly by promoting each bottle's decorative wax seal. But the owners of a Mexican tequila brand that started using a similar wax seal in 1997 don't think Maker's Mark should be able to trademark the wax seal.

]]> A trademark is defined as a word, symbol, logo or other graphic representation used by one manufacturer to distinguish its goods from those of another. Trademarks must be unique and descriptive and cannot be generic (meaning no one could trademark the term "refreshing" for their beverage, for example, because that is not specific enough). If one company has successfully applied for a trademark with the U.S. Patent and Trademark Office and has been diligent about using the mark and making sure others do not use it, then no other party can infringe on the exclusive right of the trademark holder to use the trademarked image.

Now, bear in mind that neither part has claimed that the wax seal is in any way necessary to its packaging; in fact, both admit it is superfluous and merely there for looks. So, keeping that in mind, what would you say? Do you think Maker's Mark should be able to say the wax seal is its trademark, or is that too generic?

The answer is that the court agreed with Maker's Mark and told the tequila maker it had to stop. Evidently, the attorneys for Maker's Mark were able to say their client had used the wax seal for a longer period of time and were able to portray the tequila company as "free riding" on Maker's Mark's well-known detail.

Source: The Chicago Tribune, "Maker's Mark wax seal deserves trademark: court," Jonathan Stempel, May 9, 2012

Famous authors have different opinions on fan fiction and copyrights

2012-05-05T19:49:01Z

Having flocks of devoted readers is probably one of the greatest compliments an author could ever hope to receive. After all, there is no better proof that people love an author's work than if millions of them buy it and read it.

But what if these hordes of enthusiastic readers take an author's characters and use them in stories of their own? Is that just another testament to the power of the author's work, or is it a violation of the author's copyright?

]]> The answer, of course, is that "fan fiction" is both, but people do not tend to see it that way. Most writers of fan fiction say they are just giving their beloved characters new life, but not all authors are comfortable with that. Here, we have a rounded up for Naples readers a sampling of author's opinions on the topic:

Stephenie Meyer, who made millions of tween girls weak in the knees with her "Twilight" series, has said she does not mind fan fiction and finds it kind of flattering.
J.K. Rowling, the author of the phenomenally successful "Harry Potter" series, has given off the opinion that fan fiction is tolerable as long as it stays PG. She told one interviewer she has seen some more...mature stories involving her characters and does not approve of those because she doesn't want young readers to stumble across them and think she wrote them.
George R. R. Martin, whose book "A Song of Ice and Fire" is the basis for the HBO series "Game of Thrones," has said he does not like the idea of anyone but him using his characters because they are his creation and his alone.
Science fiction writer Charlie Stross doesn't tolerate people using his characters either, but unlike Martin, his reasons are not personal or artistic. He cheerfully told an interviewer he does not want people "ripping off" his characters because it is through them that he earns his livelihood.

As you can see, authors have quite an opinion on the subject of fan fiction. Have you ever read any of it, or written it yourself? What's your take on it; is it a harmless homage or do you feel that authors who object to it have legitimate grounds for doing so?

Source: Flavorwire, "Abusing the People of Westeros: Famous Authors on Fan-Fiction," Emily Temple, April 19, 2012

Patent office seeking comments regarding extra secrecy for certain applications

2012-04-26T14:59:31Z

National security is a priority that has waxed and waned throughout time. When our country is at war, for example, we are willing to make concessions in the name of national security. But during peacetime, we view it as less of a priority.

Recently, the U.S. Patent and Trademark Office announced that it would seek comments on the idea of putting a secrecy order on "economically significant" patent applications in the interest of national security. This may matter to South Florida inventors more than you might think at first; sure, we do not have many munitions makers here, but depending on how "national security" is interpreted, a wide variety of patents might be considered "economically significant."

]]> Apparently, the concern here is that there is too much lag time between when a patent application is filed and when a patent is granted (or denied). That window allows "foreign entities" to exploit the material seeking to be patented and then access markets before the U.S. company can have a go at them.

This has an impact on national security in two different ways. First, there is some concern that the existing patent process provides too much access to designs and plans before they are legally protected. Second, there is also the worry that we are undermining our competitive advantage by not acting more quickly to head off overseas competitors.

Keeping in mind that patents already afford legal protection and that some people feel those protections are too strong, does this seem like a good idea to you?

Source: Bloomberg, "Comments Sought on 'Economically Significant' Inventions Secrecy," Victoria Slind-Flor, April 24, 2012

Lawsuit asks whether recipes can be considered a trade secret

2012-04-20T15:16:47Z

Update: For an interesting perspective on intellectual property as it applies to recipes, check out this story. It originates in Singapore, so the laws naturally are not the same as in the U.S., but the philosophies at work are probably similar.

It has been awhile since we have brought Naples readers a story about trade secrets. A trade secret is business information, such as a formula or process, that is kept confidential to maintain an advantage over one's competitors. To be protected as a trade secret, the information must be subject to reasonable efforts to preserve its secrecy and it must obtain some sort of economic advantage from not being widely known.

Recently, a bakery in Chicago sued its former chef for allegedly taking two binders full of recipes when he left. The bakery claims that the recipes are trade secrets.

]]> So, what do you think? Could recipes be trade secrets?

First, in order for the recipes to be considered trade secrets, the bakery must have tried to keep them secret. The bakery owner has said she spent 3.5 years creating the recipes and reproduced them only in one place; the binders that the former chef allegedly stole. So, the recipes probably meet part one of the two-part trade secret test.

The next part might be a little more difficult. The bakery owner claims that her recipes are not widely known and that because of this, her bakery earns an economic advantage because people want her baked goods instead of someone else's. That could be debatable; even if her recipe for, say, coffee cake is famous, how different could it really be from other types of coffee cake recipes? And it may be difficult to prove that people came to her bakery for the food alone, as opposed to another reason like its convenient location.

The case has only just begun, so we do not yet know the outcome. If we learn the conclusion, we will update this blog with the court's finding.

Source: Reuters, "IL Chef Sues Over Bakery's Missing Recipes," Stephanie Rabiner, Esq. April 18, 2012

AOL sells patent portfolio to Microsoft for $1.1 billion

2012-04-10T15:14:20Z

South Florida readers may remember that a month or two ago, we wrote about how the struggling Eastman Kodak Co. was trying to sell off its patent portfolio to raise some much-needed cash. That may be a move that will become more common thanks to two factors: first, companies continue to struggle in our lackluster economy and so are looking for new ways to raise money; and second, patents are becoming ever more valuable as the technology they protect increases in worth.

The recent announcement that America Online will sell over 800 patents to Microsoft for $1.1 billion underscores that observation. America Online, better known as AOL, has been floundering for years and Microsoft has been waging war with its rivals Google and Apple in an attempt to secure a portion of the lucrative market for smartphones, tablets and social media sphere.

]]> Neither Microsoft nor AOL has said exactly which patents Microsoft has purchased or what they protect.

AOL is not the only "elder statesman" of the technology community to start putting its patents to work. Yahoo recently sued Facebook for patent infringement; a former employee later accused Yahoo of "weaponizing" its patents and suing Facebook just before its IPO in the hopes of getting "go-away" money. (Yahoo denied the former employee's claim).

These two stories show once again that patents are among the most valuable assets a business owner can possess. Not only are they crucial as a means of protecting part of what makes your business succeed, they also double as a potentially lucrative resource that is good to have in case of a rainy day.

Source: The Washington Post, "AOL sells patents to Microsoft in $1.1 billion deal," Hayley Tsukayama, April 9, 2012

It's Chick-fil-A v. Kale in trademark tussle

2012-04-05T20:37:06Z

For what was intended to be a lighthearted and humorous campaign, Chik-fil-A's "Eat mor chikin" slogan is stirring up quite a bit of trouble.

Naples residents might have seen the advertisements for the chicken-centric fast food joint. Usually, they depict cows or pigs writing the slogan "eat mor chikin," with the joke being that they are trying to discourage consumers from eating beef or pork and thus save their own skins in the process.

You might not think this funny approach to branding would result in a lawsuit, but Chick-fil-A recently sued an artist who has built up a business selling T-shirts that read "Eat More Kale," claiming that his slogan violated their trademark. Chick-fil-A wants him to take down his website and stop selling T-shirts that say "Eat More Kale" on them. Since this man's livelihood is making these T-shirts, this amounts to a request for him to end his career and search for some other means of support.

]]> In a preliminary ruling, an attorney with the U.S. Patent and Trademark office concluded that there was a likelihood of confusion between the two slogans.

Naturally, the artist disagreed with this. He said he has been selling his T-shirts for 11 years and has not had a single customer tell him that his "Eat More Kale" saying reminds him or her of Chick-fil-A's "Eat mor chikn."

What do you think? Do you think there is enough similarity between these two that one should not be allowed to use his slogan? Or do you think they are separate enough that there really is no reason to worry that consumers will be confused?

Source: Seven Days, "Kale Imitation." Corin Hirsch, April 4, 2012

'Trademark squatting': The bane of U.S. intellectual property holders

2012-03-30T15:33:14Z

In a recent post, we told south Florida readers about how Yahoo had been accused of "weaponizing" patents. Weaponizing is not the only controversial trend developing in intellectual property today. Another such trend is what is being called "trademark squatting."

Trademark squatting refers to the practice by which foreign companies register the names, slogans and other marketing tools of U.S. companies before that company has a chance to do so itself.

]]> This is especially a huge problem in China, where about three times as many trademarks are filed each year as are filed in the U.S. A lot of those are opportunistic filings from people who hope to later sell the trademark later for a lot of money. For example, J.Crew does not sell its clothing in China, but someone has already trademarked the name "J.Crew," so now if the J.Crew really does want to move into the Chinese market, it is going to have to pay that trademark holder a lot of money to get the rights to its own name.

Other famous names that have been appropriated by Chinese trademark holders include Facebook, Justin Bieber, Kardashian, Oprah Winfrey and Angry Birds.

This causes U.S. companies a lot of consternation, particularly because they are used to intellectual property laws that tend to generally favor the first user of a trademark. There is an escape valve in that if a trademark holder can prove that its name or image was so well known there is no way the Chinese trademark holder could have filed in good faith. Still, U.S. companies do not appreciate the time and energy they have to spend on these disputes.

Source: The Los Angeles Times, "Trademark squatting in China doesn't sit well with U.S. retailers," David Pierson, March 28, 2012

Does 'The Hunger Games' infringe on a similar Japanese novel?

2012-03-23T16:43:36Z

Suzanne Collins' "The Hunger Games" trilogy has become a bona fide phenomenon all across the country, and Florida can't be much of an exception. Her three novels about a tough-as-nails heroine who competes in a televised battle against other teenagers have captured the imagination of millions of readers. The film adaptation starring Oscar nominee Jennifer Lawrence, which opens Friday, will likely lure in even more fans.

When something is as popular as "The Hunger Games" is, there is always likely to be a little scandal. In this case, that scandal comes in the form of infringement claims and allegations that Collins' novels are not original because of the debt they owe to a Japanese film and novel with similar themes.

]]> The film, "Battle Royale," was released in 2000. It centers on 42 Japanese teenagers who are given weapons and forced to fight one another until there is only one left. The movie was never released in the U.S., however, nor was the novel upon which it was based.

So, if the movie and book were never released in the U.S., there is a good chance that Collins did not even know about them until after her own book was published. If that's the case, then the Collins could argue that she independently created "The Hunger Games" and would have a good argument against allegations of copying. Second, there is arguably not all that much that is original about either plot; stories of young people being selected for a bloody spectator sport have been around ever since the Greek legend of the Minotaur. Naturally, no one person can lay claim to such a common idea.

(And lastly, it does not seem the author or director of the "Battle Royale" book and film ever applied for a copyright in the U.S.)

Source: ABC News, "'The Hunger Games,' a Japanese Original?" Akiko Fujita, March 22, 2012

Are Yahoo and other tech companies improperly 'weaponizing' patents?

2012-03-15T12:50:44Z

We have told Naples readers before about high-tech companies battling it out over patents and accusing each other of infringing on the all-important technology that distinguishes their products and services from those of their competitors. That story is nothing new.

What are new, however, are recent allegations about "weaponizing" patents. Saying someone is "weaponizing" a patent means that a patent-holder rushed to patent something, perhaps before the subject of the patent was even finished, so that the patent-holder could later use the patent to sue a competitor and keep that competitor at a disadvantage. It's contrary to the idea that a patent should be used defensively and has attracted some criticism from patent experts.

]]> A recent illustration of "weaponization" comes from a former employee of Yahoo. This employee claims that Yahoo encouraged its employees to file patents and is now using some those patents to "extort" money from Facebook. That would not be a problem except for that Yahoo filed deliberately vague patents, according to this employee, and is suing just before Facebook makes its IPO (which means it has an incentive offer Yahoo "go away" money to avoid bad publicity). Essentially, the allegation here is that Yahoo did not seek these patents to protect its intellectual property; it filed them so it would have arrows in its quiver.

It is important to note that the employee who made these claims no longer works for Yahoo, so he could just have a bad attitude towards the company. We muyst also note that these are only allegations. Still, he is not the only tech-industry professional to make allegations of patent "weaponizing." It will be interesting to see if this is indeed a trend in the industry and, if it is, whether government regulators will take measures to stop it.

Source: The Telegraph, "Yahoo 'weaponising' patents to take on Facebook," Matt Warman, March 14, 2012

Pinterest moves swiftly to address copyright fears

2012-03-09T15:01:37Z

Many Florida readers have probably already heard about, or maybe even joined, Pinterest. It's the latest social media phenomenon; sort of an online bulletin board where users can post pictures of things they like (photos, recipes, quotations, etc.), see other users' bulletin boards and share and comment upon what other people have posted.

However, Pinterest has also stirred up some copyright concerns. There has been some worry that people are using Pinterest for unauthorized sharing that copyright holders did not permit. Although there is some argument that Pinterest is a "fair use" exception (meaning it only uses a small part of copyrighted material, typically for a non-economic purpose), that has never been tested in a court of law.

]]> To fight accusation of copyright infringements, Pinterest recently disclosed how other website operators can include a line of code in their site that will prevent anyone from posting its contents to Pinterest. If someone tries, a polite message appears that tells the user this particular site does not participate in Pinterest.

This approach has been praised for respecting the rights of copyright holders. In many circumstances, copyright holders don't mind if a small part of their material appears on Pinterest because it generates visibility, but in case they do, this so far seems like an easy way to nip the problem in the bud.

Are you a Pinterest user? If so, have you ever tried to "pin" something only to discover you can't do so because the website doesn't allow it? Did that irritate you, or did you just forget about it and move on?

Source: BBC News, "Pinterest moves to address copyright fears with opt-out," Feb. 21, 2012

21st Century views challenge copyright law: Part II

2012-03-02T20:24:52Z

As we mentioned in our last post, 21^st century views regarding copyrighted material are proving to be a real challenge to businesses and artists. Whereas Naples residents once had very limited options for buying things like music, movies and TV, copyrighted material like this is now available freely and illegally on the Internet. This has meant media companies and artists have had to scramble to think of ways to head off this serious threat to their livelihoods.

Young people, the demographic that steals most copyrighted material, have had some ideas as to how to meet media companies in the middle.

]]> The first is to develop an iTunes-type system for movies, TV shows and written material. Music was widely pirated on the Internet (remember Napster and Limewire?) before iTunes came along. Because songs were so cheap on iTunes, many people were willing to pay for them instead of running the legal risks of downloading them illegally and the illegal trade in music substantially decreased However, iTunes offers movies and TV shows right now and people still download those illegally, so perhaps this is not the cure-all the industry needs.

Other people say the "old way" of doing things just needs to be done away with. For example, if we did away with bookstores and physical printed books, publishers wouldn't have to charge as much for written material that only existed on iPads and Kindles. If the content were cheap enough, they argue, people would buy it instead of steal it. (There's that iTunes argument again). Of course, changing an entire industry is easier said than done.

A third option people want is to make digital content freely viewable and shareable across platforms. Users get annoyed when they can buy a digital copy of a movie on Amazon, but then can't watch it on a smartphone or a Kindle. This would require large-scale cooperation, though, and it not likely to happen because technology is such a cutthroat industry.

As we said, none of these ideas has won out over the others yet. Do you have any thoughts as to how owners of copyrighted material can adapt themselves to an Internet-rules landscape?

Source: The Associated Press, "Young people's freewheeling view of copyrighted material is shaping its future distribution, "Martha Irvine, Feb. 18, 2012

21st Century views challenge copyright law: Part I

2012-02-24T15:01:43Z

Previously on this blog, we have told Florida readers about battles between high-tech companies over patented or trademarked property that, frankly, can a little too hard for the average person to grasp. But here's a story that is far more likely to hit home.

Internet piracy, or the unauthorized sharing and distribution of copyrighted material like music and movies, is presenting a real problem for many companies at the same time it is presenting consumers with a real boon: free (albeit illegal) media.

]]> Just how widespread is online piracy? A recent survey performed by Columbia University found that 46 percent of all adults had illegally purchased, copied or downloaded from the Internet copyrighted material, such as television programs, movies or music. Among adults aged 18 to 29 years old, the percentage of people who admitted to doing the same jumped to 70.

As you can see, then, a huge demographic is not paying for the things it used to have to buy. This has Hollywood film studios, book publishers, artists and record labels scrambling to keep up and find a way to keep making money off their products. The problem is not that people do not want what they are selling; the problem is that they do not want to pay for it and, thanks to online piracy, often do not have to. It seems a whole generation of people finds paying for their media consumption to be took expensive and is willing to break the law and risk getting caught in order to still consume that media but without paying for it.

But copyright experts and media insiders say it does not have to be this way. In our next post, we will take a look at some proposed solutions. Maybe you'd care to weigh in on one or two of them and let us know if you think they'll ever fly.

Source: The Associated Press, "Young people's freewheeling view of copyrighted material is shaping its future distribution, "Martha Irvine, Feb. 18, 2012

Can you trademark a play on someone else's name, or is that "Linsanity"?

2012-02-17T21:55:38Z

Readers in Florida may not know the term "troll." In the legal profession, it refers to someone who exercises a legal right or privilege strictly for monetary reasons and not for a more traditionally acceptable reason, like rectifying a wrong or expressing a deeply held conviction.

So, is Yenchin Chang a "trademark troll" who is seeking to exploit trademark law and make money off New York Knicks sensation Jeremy Lin? Decide for yourself after reading the rest of this post.

]]> Chang, 35, lives in California and has no affiliation with Lin, who has become an overnight sensation by leading the Knicks to several 11^th hour wins. Chang recently sought to trademark the term "Linsanity" -- a term often used by media to described frenzied fans' reaction to Lin --- because he "wants to be part of the excitement."

Chan said he would be willing to sell the trademark to Lin if he is granted the trademark and if Lin is interested.

Neither Lin nor his agent have commented on Chang's filing, nor that of another man who is seeking to register the domain names linsanity.com and thejeremylinshow.com.

So, what is your take on this? On the one hand, "Linsanity" could just be a fun-sounding made-up word; Lin doesn't really "own" it in any sense. On the other, do we use that term for anything else other than to refer to Lin? No, and the fact that Chang is looking to profit from his trademark makes us a little suspicious. Of course you can use intellectual property assets to make money, but something about this does not pass the smell test for some people.

Source: Bloomberg, "'Linsanity' Reaches Patent Office as Knicks Win Streak Goes On," Victoria Slind-Flor, Feb. 16, 2012

Huggies goes to court, claiming competitor infringed on patents

2012-02-07T15:03:08Z

Naples readers who have ever had a baby in the house know that diapers can quickly add up in terms of expense. They are costly to begin with and naturally, they get used up.

Because most parents are not willing to go without disposable diapers, it should come as no surprise, then, that diapers are actually pretty big business. Companies that make diapers are not afraid to go to court to protect their intellectual property assets and keep competitors from using the designs they use as selling points.

Recently, a federal judge ruled that the question of whether the maker of store-brand diapers sold in Rite-Aid and Walgreens infringed on patents owned by Kimberly-Clark Worldwide, the maker of Huggies, should be answered by a jury.

]]> Kimberly Clark sued First Quality, which makes the generic diapers, in March 2009. At issue was an elastic band across the crotch of Huggies diapers; Kimberly Clark said this patented design distinguished Huggies diapers from their competitors and that First Quality had no right to use the design.

First Quality retorted in April 2009 with a lawsuit alleging that Kimberly Clark unfairly monopolized the disposable diaper market and was using frivolous litigation to discourage and frighten its competitors. It also said the patent was invalid.

So far, the judge has said there is enough evidence that First Quality's claims of monopoly can go forward, but so can Kimberly Clark's claims of patent infringement.

The case is being tried in federal district court in Harrisburg, Pennsylvania.

It will be interesting to see how this case turns out. Diapers do not immediately come to mind when one thinks of business areas with cutthroat competition, but it seems there is more at stake here than meets the eye.

Source: Courthouse News Service, "Diaper Giants Head to Trial on Patent Claims," Reuben Kramer, Feb. 3, 2012