Intellectual PropertyAfter months (or, perhaps, years) of diligent legal work, your business has finally secured its intellectual property rights through a patent, a trademark registration, a copyright registration or some combination thereof. Finally, you breathe a sigh of relief, put your legal paperwork in a file cabinet and get back to running your business. Years later, you find that a competitor is infringing your rights. After blowing the dust off your paperwork you discover, to your dismay, that your intellectual property rights were not properly maintained and have expired. What happened and what do you do now?

Unfortunately, many clients fail to realize that most intellectual property rights carry maintenance obligations until it is too late. That being said, these are pitfalls which can be easily avoided, and clients often have tools they can use to “backfill” rights if a deadline is inadvertently missed.

Patent Maintenance

patent lawU.S. Patents are subject to periodic maintenance fee payments. The motivation behind this is the anti-competitive effect patents have on the market. Congress decided that there should be some affirmative, monetary obligation of patent owners to maintain patent rights as a means of culling unused patents which might otherwise be preventing competition. Such patent maintenance fees are due at the 3½, 7½ and 11½ year marks. These fees follow the following schedule:

  • 3½ year maintenance fees can be paid between 3 and 3½ years after the patent issuance date;
  • 7½ year maintenance fees can be paid between 7 and 7½ years after the patent issuance date; and
  • 11½ year maintenance fees can be paid between 11 and 11½ years after the patent issuance date.

Additionally, each of these fees can be paid within a six-month grace period (for an additional fee).

If these fees are not timely paid, then the underlying patent lapses and is no longer enforceable. This can be an enormous problem. Many clients either forget or are not told about patent maintenance obligations. The result can be a loss of rights and the inability to stop knock-off products. There are certain procedures to try to reinstate a patent which was unintentionally abandoned in this way, but the costs can be high and the probability of success can vary. This can also open the door to intervening rights by certain competitors. The best thing to do is to carefully calendar maintenance fee deadlines ahead of time and engage counsel to help you.

Trademark Maintenance


Continue Reading IP Maintenance 101: Keeping Your Intellectual Property Rights Alive

IP LawAfter years of research and development, your company is finally about to launch a new “game changing” product. You know you need to protect this product, but where do you start? What do you name your new product, and how do you protect that name? These and other frequently asked questions often arise in new entrepreneurial ventures — whether for new businesses or new product lines for existing businesses.

Most business owners intuitively understand the value of their intellectual property. They understand that their products, brands and other ideas need to be protected, but can be confused by some of the “jargon” used in intellectual property law with words like “patent,” “trademark” and “copyright.” This post helps explain some of the key differences between patents, trademarks and copyrights.

What is a patent?

A patent is a legal right to exclude others from making, using, selling, offering for sale, or importing a patented invention for a fixed period of time. In the U.S., patents are exclusively under federal jurisdiction and are awarded by the U.S. Patent and Trademark Office in exchange for making public an enabling disclosure of the invention, and generally last for 20 years (15 years for design patents).


Continue Reading What is the difference between patents, trademarks and copyrights?

Product packaging is a critical part of every manufacturer’s operations (and even that of many wholesalers and retailers). A product’s packaging is often the first thing customers see: and first impressions count. That is why, for example, an entirely new discipline – packaging engineering – has grown over the last several decades and why companies like Starbucks® and Apple® work so hard to have every napkin, cup, box and bag uniformly branded.

Yet despite the obvious commercial and marketing importance of product packaging, many companies fail to protect the intellectual property rights embodied in such packaging – rights which can often be secured under patent, copyright and/or trademark law.

Product packaging is one of those often overlooked areas of intellectual property. Manufacturing clients rightly focus on protecting their products but sometimes forget that consumers usually see their packaging first. Failing to protect such packaging can be a major misstep since competitors often infringe upon both packaging as well as products.

Design Patent

A design patent protects the ornamental design (i.e., the “look and feel”) of an invention. In other words, design patents protect the way an invention (including, potentially, product packaging) looks. When most people think about patents, they think about a “utility patent” – something which protects utilitarian or functional aspects of an invention. But a “design patent” is different – it protects the appearance of an invention. That’s often perfect for packaging. In general, that means that new, useful and non-obvious packaging designs can potentially be protected.

Major companies have been using design patents to protect product packaging for over a century. For example, U.S. D48160 is a design patent issued in 1915 over what we now know as the Coca-Cola® bottle. More recent examples include everything from Chobani’s design patent covering product packaging for yogurt boxes (U.S. D828766S1) and Kraft’s design patent covering a salad dressing bottle (U.S. D659000S1) to Starbucks’ design patents for a coffee cup (U.S. D529762S1) and a coffee cup lid (U.S. D516424).

How should companies decide whether or not to consider seeking design patent rights?


Continue Reading Copyright and patent protection apply to product packaging, too

In today’s internet-driven economy, businesses recognize the importance of using digital content to reach consumers. However, this often creates unique intellectual property issues – including potential copyright infringement questions.

Photographs and videos are amongst the most effective digital content – garnering significantly more likes, comments and click-thoughts on social media than text-based posts alone. While the use of photographs and videos presents an enormous marketing advantage, it also raises additional potential for legal exposure where such photographs or videos are not carefully sourced.

Protections under Copyright Law

Copyright law protects the creative expression of an idea – be it words on a page, notes in a song, brushstrokes on a canvas or the various compositional elements in a photograph or video: such as lighting, shadow, camera angle, etc. Such copyright protection can extend to photographs of products, places and people. While you cannot “copyright” a person, for example, copyright protection could extend to a particular photograph of a person.

Copyright protection over photographs has been recognized in the U.S. since the late 1800s – and therein lies the challenge. Often we are left trying to fit 21st century issues into 19th century legal frameworks. Sometimes, this results in illogical outcomes.


Continue Reading Copyright Issues Using Photographs and Videos on Websites and Social Media

With Election Day rapidly approaching, campaigning has become fierce. From President Donald Trump and Joe Biden down to Congressional, State Legislature and local candidates, everyone is blasting out their “message.” One way politicians like to get their messages across is by music. Snippets of songs create earworms that voters begin to associate with certain candidates — so why wouldn’t a candidate use music in their messaging, especially anthemic songs like Bruce Springsteen’s “Born in the USA,” Neil Young’s “Rockin’ In the Free World,” or Tom Petty’s “I Won’t Back Down”?

While candidates love the association a song gives voters, often the artists do not. Every election cycle contains at least a few artist/politician disputes over use of music. How is this controlled and who has the right to control when and by whom music is used politically?

Copyright Law

Copyright protects original expressions reduced to tangible form. This includes music, both recorded and written, lyrics, and the song composition or arrangement. For a given piece of music, there may be several different copyright owners — the songwriter may own the lyrics, the composer may own the score, a record label or publisher may own the recorded version of a song. Copyright gives the owner of the expression the right to control copying, distribution and even use of copyrighted material in particular circumstances.

How does this play in to political marketing and who controls the use of songs?


Continue Reading Political Music — Who Controls Use?

The past ten years have seen amazing advances in technology and the next ten promise even more. How has the law kept up to ensure intellectual property rights are adequately protected and what are some major driving forces that will shape IP Law over the next decade.

2010-2020

  1. Globalization. With the rise of e-commerce and the Internet, falling borders and widening markets, businesses are now almost instantly global. No matter where a business is located, it must think beyond its borders and where its customers are and must take steps to protect their intellectual property across national boundaries. While only a select few businesses needed to worry about global IP protection during the 2000s, by 2020 the issue has become far more generally applicable. This has required businesses and their IP counsel to consider global issues at all phases of IP development and to devise appropriate global protection strategies.
  2. The Leahy-Smith America Invents Act (AIA). This 2011 overhaul to the United States Patent Act altered the long-standing US rule that the “first to invent” had superior rights to a “first to file” rule. This significant change brought the US patent system in step with the majority global rule. The AIA implemented other changes in the patent system, but the “first to file” change was most significant and just one of several that updated an antiquated statutory regime.
  3. IP as a Business Asset. For decades, the value of a business was primarily represented by its tangible assets — property, equipment, inventories, etc. This has changed, however, and intangible assets, specifically intellectual property assets, now account for significant portions of business valuation. Indeed, according to the IP-oriented merchant bank Ocean Tomo over 84% of the value of the S&P 500 in 2015 was represented by intangible assets. Further, the USPTO has reported that in 2014, “IP intensive industries” accounted for approximately one third of US GDP. With intellectual property becoming such a major component of the value of a business and such a significant element in our national economy during the past decade, businesses have had to adapt and become much more proactive to protect those assets.
  4. Alice. In Alice Corporation v. CLS Bank International, the Supreme Court ruled that merely applying an abstract idea on a computer is not patent eligible. What this effectively meant was that computer software programs that simply took abstract ideas—like hedging currencies—and implemented those ideas electronically could not be protected by the patent laws. This led to invalidation of a significant number of software patents and made it extremely difficult for software designers to patent their software. Designers had to react by resulting to different means to protect their inventions. While very few software patents have been issued since Alice, courts are beginning to interpret the decision in ways that pave the way for at least some wider availability of patent protection for software.


Continue Reading Looking Back, Looking Forward: Significant Intellectual Property Developments and Trends for the Future

Copyright is the exclusive right to reproduce, adapt, distribute, perform, and display works of original expression. These rights accrue upon creation of the work and a copyright registration is not required to own a copyright or acquire these rights.

U.S. Copyright Act

The U.S. Copyright Act, 17 U.S.C. 101, et seq. provides a means for registering copyrights with the U.S. Copyright Office, which is a part of the Library of Congress. The Federal registration process, while simple, can take nine to twelve months to complete before any Registration Certificate issues. The Copyright Act also provides various rights and remedies for copyright infringement, including statutory damages and attorney fee recovery. However, the Act also states

[N]o civil action for infringement of the copyright … shall be instituted until … registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. 411.

What Qualifies as Actual “Copyright Registration”?


Continue Reading Supreme Court Requires Registration of Copyright to Claim Under Copyright Act

5Pointz

The building once known as 5Pointz was a block-long warehouse structure in Queens, NY. During the ‘90s, the area was rundown and crime-riddled. As a way to discourage vandalism to the building, the owner allowed graffiti artists to paint on the walls, giving them a canvas to display their works. Ultimately, the 5Pointz building became well known among graffiti artists and tourists and artists traveling from all around the world to add their art to the structure. For almost 20 years the developer and the artists existed this way. However, wanting to take advantage of rising real estate prices, in 2010 the owner of the building decided to redevelop it as a residential complex. The owner ultimately obtained permits to demolish the buildings and redevelop the parcel.

The Litigation


Continue Reading Landowners and Artists: Be Careful Before You Remove Street Art

Under the Digital Millennium Copyright Act (“DMCA”) any website that allows site users to post content, including anything such as comments, reviews or videos is considered a “Service Provider.” A Service Provider is potentially exposed to copyright infringement liability based on content posted by site users. However, the DMCA also offers a Safe Harbor that, under certain conditions, can insulate Service Providers from third-party copyright infringement claims based on such user-generated content.

To qualify for protection under this Safe Harbor, the Service Provider must meet certain conditions:

  1. the Service Provider must not know about or participate in the infringing conduct and cannot benefit from that infringement;
  2. the Service Provider must promptly remove any infringing content once it discovers same, either on its own discovery or by notice from a third-party; and,
  3. to qualify for the Safe Harbor, a Service Provider must designate an agent to receive notice of copyright infringement claims and must register the identity of that agent with the U.S. Copyright Office.

New Law


Continue Reading Important Action All Website Owners Should Take As Soon As Practical

Flickr Diet BosEvery entrepreneur knows that a key piece of success is a strong and identifiable brand. Because much thought, effort and money goes into branding and so much success rests on it, it is important to ensure you can own, use, and protect that brand. This article addresses some basic intellectual property considerations entrepreneurs and startups should keep in mind from the beginning.

Copyright

Brand creation may involve a number of people including both employees and outside consultants such as ad agencies and designers. Their output, including potential product names, website copy, strategic reports, etc., is likely something they could claim copyright in. While these people can provide valuable creative input and direction, unless proper precautions are taken in the beginning, you might not end up owning what they create.
Continue Reading Image is Everything – Make Sure You Own and Can Use Your Brand Identity