Intellectual Property

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It’s funny the vast differences acronyms have. On Instagram, “FTO” stands for “flexible time off,” and on Facebook, it stands for the game “Faery Tale Online.” For purposes of this article and in the patenting world, an FTO is an assessment of the ability to make, use, and/or sell products/services without infringing another party’s rights.

Do I need an FTO performed if I already have a patent?

Now for my favorite attorney answer…it depends. First, we must understand what rights a patent gives.

A registered patent provides the owner of a useful, new, and non-obvious invention of patentable subject matter with the legal right to exclude others from making, using, or selling the patented invention for a limited period of time.

Isn’t “legal right to exclude” just a fancy legal way of saying that I have the right to make, use or sell my patented invention?

No! The right to exclude does not mean the same as the right to make, use, or sell.

To illustrate this, suppose inventor Sue Yoo develops and patents a system – that has not been previously invented – for preventing the sinking of a boat with a breached hull. The patented invention involves manually or automatically deploying helium-filled balloons which provide the boat with the ability to remain afloat. From these basic facts, it appears that Sue Yoo’s invention met the requirements for patentability, it is useful (prevents boats from sinking), new (hasn’t been previously invented), non-obvious (debatable but hey, for our purposes it’s not obvious), and of patentable subject matter (trust me on this one).…

Continue Reading What is an FTO?

Firing their first shot on June 6, 2022, Shosh Yonay and Yuval Yonay, heirs of Ehud Yonay, took aim at Paramount by filing a complaint in Federal Court asserting that the movie Top Gun: Maverick, infringes upon a copyrighted story written by Ehud Yonay (“Story”). Shosh and Yuval claim that in May of 1983, Paramount obtained from Ehud, exclusive motion picture and allied rights – creation of merchandise or a television series – to the Story. Shosh and Yuval assert further that in January of 2018, they notified Paramount of their election to terminate those rights as of January of 2020.

On May 27, 2022, flying high over complaints from Shosh and Yuval and well after the termination date, Paramount released Top Gun: Maverick domestically bringing in over $120,000,000 during its opening weekend. Have Shosh and Yuval found their cash cow??

Do Shosh and Yuval have legal standing?

First, can Shosh and Yuval ‘elect to terminate’ rights in which they did not give? 17 U.S.C. § 203(a)(2)(A-B) states that in the case of any work other than a work made for hire, the exclusive or nonexclusive grant of a transfer or license of copyright or of any right under a copyright, executed by the author on or after January 1, 1978, otherwise than by will, is subject to termination under the following conditions:

[w]here an author is dead, his or her termination interest is owned, and may be exercised, as follows: [t]he widow or widower owns the author’s entire termination interest unless there are any surviving children or grandchildren of the author, in which case the widow or widower owns one-half of the author’s interest and [t]he author’s surviving children, and the surviving children of any dead child of the author, own the author’s entire termination interest unless there is a widow or widower, in which case the ownership of one-half of the author’s interest is divided among them.

This means that Congress provided copyright owners with the ability to recapture their works thus allowing the copyright owner to take actions such as renegotiating an agreement or creating their own works based on the original work.

Here, there is no indication that the work is for hire, the grant does not appear to be by will and allegedly occurred after 1977, plus Shosh is the widow and Yuval is the son of Ehud. It is clear that in this case, as the grant of rights occurred after 1977 and that Shosh and Yuval are widow and son, respectively, of Ehud, that they had the right to terminate the extension of rights to Paramount.

Did Shosh and Yuval provide Paramount with proper notice?

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Continue Reading Copyright Claim Soars Over Top Gun: Maverick

Patent SearchA patentability search allows a patent practitioner to assess the likelihood of successfully obtaining a patent with the United States Patent and Trademark Office (“USPTO”). The USPTO may issue a patent to whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, subject to certain conditions and requirements.

A patentability search allows a patent practitioner to better understand the scope of the state of the art, the level of skill of a person in the art, and the potential for obtaining a peiroatent registration that protects the new and useful process, machine, manufacture, or composition of matter.

What does it mean to be “novel” and “non-obvious”?

To be patentable, the new and useful process, machine, manufacture, or composition of matter (“invention”) must be novel and non-obvious. In assessing novelty, a patent practitioner searches and reviews the universe of prior art, such as issued patents, expired patents, patent applications, and other non-patent literature, to determine if the exact invention has already been disclosed. In general, a prior disclosure by a third party is a complete bar to patentability, and a prior disclosure by the inventor is subject to specific timing as set by statute regarding such previous disclosures.…

Continue Reading What is a patentability search and why should I have one conducted?

Henderson Franklin’s legal team returns to Sanibel Harbour Resort & Spa on Friday, February 25, 2022 with a new twist. The main room will offer the firm’s most popular workshop, HR Law & Solutions.

New for 2022, attendees will have the option to attend breakout sessions focusing on niche corporate matters and contracts, family businesses, startups and how to make informed real estate decisions. Click here to download the brochure.

Topics and speakers

General Session #1, Lingering Effects of COVID on Florida Employers, presented by Scott Atwood, Esq.

From business shutdowns and PPP loans to vaccinations, COVID has presented unique challenges to Florida businesses. Henderson Franklin’s employment group chair Scott Atwood will address the multi-faceted employment issues that employers may face, including: current obligations over masks and mandatory vaccinations; how to deal with possible long-term disability claims and leave issues arising from COVID; increased union activity; and the pros and cons of a remote/hybrid workforce.

General Session #2, Saving a Buck can Cost you a Million. Update on Recent Employment Cases and Mistakes that Employers Keep Making, presented by Scott Atwood, Esq. and Robert Shearman, Esq.

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Continue Reading Registration is Open: Southwest Florida Legal Summit

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

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

Launching your own business is a huge decision, one not to take lightly. From developing your product or service and getting funding to taking measures to protect your business, entrepreneurs must do their homework. As a business and tax attorney, one question I often hear is:

What is the best way to set up a new business?”

While the answer varies depending on the goals of each client, an LLC is often chosen.

What is an LLC?

An LLC, or limited liability company, is a U.S. business structure that combines the simplicity, flexibility, and tax advantages of a partnership with the personal liability protection of a corporation. The owners of LLCs are called members. An LLC can have one or many members. Members can be individuals or other businesses, and there is no limit to the number of members an LLC can have. With an LLC structure, members’ personal assets are protected from the LLC’s creditors. LLCs are more cost effective and simpler to form than a corporation. This, in addition to the discussion below, has led to LLCs becoming the ‘go-to’ business structure to form.

Who should form an LLC?

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Continue Reading What is an LLC and why do I need one?

Data privacyCurrently, there is no broad, generally applicable federal law or regulations concerning data privacy, the collection and use of data or consumers’ rights regarding same. Instead, the matter has been left to the individual states to address. California has led the charge and its data privacy laws are generally regarded as the strongest and most consumer-friendly.

2021 Florida Legislative Session

Earlier this year, the Florida legislature took up the question of online privacy and considered HB 969, the Florida Consumer Data Privacy Act. Modeled after similar legislation in California, HB 969 contained provisions that, among other things, imposed requirements on businesses that collect information from consumers via websites or apps. Specifically, such businesses would be required to inform consumers exactly what data they collect and how they use that data. Consumers would then have the opportunity to grant or deny authorization to collect and/or use that data. HB 969 also contained a provision that would have allowed consumers to sue businesses that used information without authorization.

Because of the parallels to California privacy law and the rights it would give consumers, HB 969 was a landmark piece of legislation that, in terms of data privacy, would rank Florida among the most protective states in the Union. However, HB 969 was heavily lobbied and debated as business interests did not like the potential exposure to suits from consumers relating to the use of personal data. While there was broad, bipartisan support for the bill, the Legislature could not compromise and HB 969 died on the floor on the final day of the legislative session.

Where does Florida rank?

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Continue Reading Data Privacy in the USA: Where does Florida rank? Where are we heading?

trade secretWhen many entrepreneurs think of trade secrets, they think of high-tech companies or large manufacturers. For example, software architecture and source code are generally protected using trade secrets. Another example of businesses that have many trade secrets is legacy manufacturers which need to protect how products are made, what products are made out of, etc. Famous examples of trade secrets from these industries range from Google’s® search algorithms to KFC’s® “11 secret herbs and spices.”

But all businesses – even the most “simple” – have trade secrets. At the very least, all businesses have customer lists, vendor lists, profitability/pricing information, etc. – with many businesses having much more. The best way to evaluate whether certain information might be a trade secret is to think about real-world business consequences. I often ask my clients,

If one of your best employees left for a competitor and took certain business information with them, would that be upsetting?”

If the answer is “yes,” then that information needs to be evaluated for potential trade secret protection. That can run the gamut from customer lists to the “secret sauce” that makes a business successful.

Whether your business is large or small, below are five important tools that can be used to protect trade secrets.

Legal Tools to Maintain Secrecy

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Continue Reading 5 Tools Small Businesses Can Use to Protect Their Trade Secrets

CryptocurrencyOver the last several months, there have been dozens of news stories about cryptocurrencies, Blockchain, and the related technologies they have created. One item, in particular, has received an incredible amount of press—the NFT. Who has not heard of the $69 million price tag on Everydays – the First 5000 Days and other outlandish prices for digital art. This article will try to explain just what an NFT is and, because of their relationship to the creative arts, some of the intellectual property issues surrounding them.

It all starts with Blockchain

Blockchain is a technology that has emerged as an innovative, record-keeping technology that authenticates transactions. It is essentially a transaction ledger that is open and decentralized, so anyone, with proper access credentials, can view the ledger to the authenticity of whatever is being transferred and the chain of ownership. Blockchain is the technology behind cryptocurrencies like Bitcoin and Dogecoin and ensures that the cryptocurrencies being transferred in a transaction are authentic.

What is the difference between “fungible” and “non-fungible”?

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Continue Reading NFTs and Intellectual Property

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?