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Aereo Seeks to Stave Off Copyright Suits

Sheldon Mak & Anderson — Thu, 23 May 2013 01:20:17 +0000

Aereo, Inc. is hoping to ride the success of its current copyright infringement suit in New York. After the Second Circuit Court of Appeals ruled in its favor, the start-up is seeking to prevent companies like CBS from launching a new copyright infringement suit in every market that Aereo seeks to launch its new service.

As we have previously discussed on this IP Law Blog, Aereo takes broadcast television signals for the New York-area television stations and retransmit them over the Internet to subscribers. The plaintiffs, who include Fox Television, PBS, and ABC, argue that because Aereo has not licensed this television programming, it is committing copyright infringement. The Second Circuit recently ruled that Aereo’s use of rabbit ear antennas makes its service akin to recording television programming on a DVR, which does not violate the Copyright Act because it is not considered a public performance.

In the latest development in this contentious legal battle, Aereo filed a declaratory judgment action in New York naming CBS, its Boston affiliates and its wholly owned and operated companies located in Aereo’s initial expansion markets. CBS had previously announced it would file copyright infringement suits in each jurisdiction Aereo launches its services.

"[T]hreatened follow-on suits would be an attempt to avoid or evade the District Court's rulings... by seeking 'do-overs' in other courts," Aereo argues. "The threatened follow-on suits would involve the same technology, involve the same witnesses, and implicate the same legal and factual issues that are already the subject of the Consolidated 2012 Actions."

As this case highlights, intellectual property issues can make or break a company, particularly when dealing with novel technology. We will continue to closely follow these cases and provide updates as they become available.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge - and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, our attorneys possess more than two decades of experience. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842); Ventura County (805-988-0876, 300 East Esplanade Drive, Suite 1200, Oxnard, CA 93030-1247; Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

To Kill a Mockingbird at Center of Copyright Suit

Sheldon Mak & Anderson — Wed, 22 May 2013 10:16:34 +0000

Harper Lee, the Pulitzer Prize winning author of To Kill a Mockingbird, has found herself inside a real courtroom. Lee recently filed a lawsuit alleging that the son-in-law of her longtime literary agent tricked her into signing away her royalty rights.

Lee, who is now 87 years old, only wrote one book. However, the story of Atticus Finch, a lawyer who defends a black man accused of raping a white woman in a small Southern town, is widely considered a classic and sold more than 30 million copies.

According to the copyright lawsuit, Samuel Pinkus, the son-in-law of Lee's long-time agent, Eugene Winick, "engaged in a scheme to dupe" Lee into assigning her copyright in the novel without any compensation. While Lee has no memory of the transaction, court documents reveal that Pinkus attempted to secure for himself an "irrevocable" interest in the income derived from To Kill a Mockingbird.

After he retained the rights to the novel, Pinkus failed to provide Lee with any royalty statements, according to the complaint. He also failed to respond to licensing requests from HarperCollins related to e-book versions of the novel and the 50th anniversary of the publication.

The copyright suit asks the court to return to Lee all rights in the novel purportedly held by Pinkus. It also seeks the return of all commissions Pinkus received since 2007.

As this case highlights, copyrights to novels and other works can produce licensing royalties for many years. Therefore, it is important to have protections in place to account for the possibility of incapacity, due to illness or injury.

Source: Reuters

Which Countries Are Seeing the Greatest Growth in Trademark Activity?

Sheldon Mak & Anderson — Tue, 21 May 2013 12:02:53 +0000

Trademark protection is invaluable for companies operating here in the United States and worldwide. As business becomes more global, trademark activity has spiked in countries like China.

In a recent report, Special Report: 2012 State of Trademarks, Thompson CompuMark examined trends in global trademark activity. Below are a few findings of note:

Trademark activity in 2011 and 2012 remains somewhat flat, a result of a global economy that is still weakened and subdued.
China had the most published trademarks for 2012, followed by the United States, Brazil, Turkey, France, South Korea, Japan, Germany, Canada and the United Kingdom.
The Chinese trademark office published nearly 925,000 trademarks in 2012, more than triple the United States' total of 234,527.
Among the countries that showed trademark growth, the U.K. leads at 10 percent followed by Turkey at 8 percent.
Of all the classes, class 35: Advertising & Business Management, was by far the most active in 2012, with nearly 393,000 published trademarks filed across the 186 authorities studied.
Following class 35, the next most active class was 25: clothing, Footwear, Headgear, with nearly 270,000 published trademarks.

As this report highlights, international trademark registration is an increasingly important part of comprehensive brand protection. Because the process differs by country, it is imperative to consult with an attorney experienced in foreign intellectual property concerns.

We have developed long-standing, close relationships with firms and experts worldwide to enable us to offer our clients in-depth experience in foreign law. Contact us today by phone or email to schedule your free 30-minute consultation.

New U.K. Orphan Works Law Causes a Stir

Sheldon Mak & Anderson — Mon, 20 May 2013 03:25:57 +0000

The United Kingdom recently approved the Enterprise and Regulatory Act. Among other provisions, it amends how British copyright law treats “orphan works.”

The Enterprise and Regulatory Act defines an orphan work as a copyrighted work for which the copyright owner cannot be found “after a diligent search made in accordance with the regulations.” If the owner cannot be found, the law allows media publications or others to obtain a license to use the image. The copyright license fee is then held should the rights holder come forward.

As Wired reports, many commentators broadly interpreted the law to mean that pictures from popular social media sites like Facebook and Instagram would qualify as orphan works, as it can be difficult the owners’ real name and contact information. The new law caused such a stir that the Intellectual Property Office stepped in to clarify it.

"Owners of photographs posted online will not lose control of their copyright under changes outlined in the Act," said a spokesperson. "Nor do the changes mean anyone can use a copyright work without permission or free of charge. If someone copies a photo posted online they still need the permission from the rights holder of the photo to do so. If they don't have this permission they will have to apply for and buy an orphan works license."

Despite the Intellectual Property Office’s reassurances, critics of the law still contend that it will hurt photographers and other rights holders. They are specifically concerned with the stringency of the due diligence requirement for locating a work’s owners. The specific details of the licensing process are also still being flushed out with stakeholders. We will continue to monitor this legislation and provide updates as they become available.

Weekly Roundup May 13 to 17, 2013

SHELDON MAK & ANDERSON — Sun, 19 May 2013 14:44:14 +0000

Copyrights

International IP

Which Countries Pose the Highest IP Risks to U.S. Businesses?

IP Law

Patents

Patent vs. Trade Secret Protection: Which One Is Better?

Latest High-Profile Software Decision Tackles Standard-Essential Patents

Understanding Design Patents: A Primer

Trade Secrets

Patent vs. Trade Secret Protection: Which One Is Better?

Trademarks

EU Seeks to Modernize Trademark System

Which Countries Pose the Highest IP Risks to U.S. Businesses?

Sheldon Mak & Anderson — Fri, 17 May 2013 10:12:19 +0000

Ukraine was recently flagged by the Office of the United States Trade Representative as the worst abuser of U.S. intellectual property (IP) rights. The designation was part of the agency’s annual report on the adequacy and effectiveness of U.S. trading partners’ protection and enforcement of IP rights.

As explained by the U.S. Trade Representative, the agency designated Ukraine a Priority Foreign Country (PFC) due to severe deterioration of IP enforcement. Specifically referenced areas of concern included “government use of pirated software and piracy over the Internet, as well as denial of fair and equitable market access through the authorization and operation of copyright collecting societies.”

This was the first time in seven years that a country earned this designation. The PFC designation is reserved by statute for countries with the most egregious IP rights violations, policies and practices with the greatest adverse impact on relevant U.S. products, and that are not entering into good faith negotiations or making significant progress in negotiations to provide adequate and effective IPR protection. Under Section 301 of the 1974 Trade Act, the United States is authorized to seek sanctions directly or through the World Trade Organization (WTO).

Ten countries – Algeria, Argentina, Chile, China, India, Indonesia, Pakistan, Russia, Thailand, and Venezuela – are on the Priority Watch List, the U.S. Trade Representative’s second most egregious ranking. With regard to China, the report cites troubling “indigenous innovation” policies that may unfairly disadvantage U.S. rights holders and the growing problem of misappropriation of trade secrets.

As the report highlights, “Thefts may arise in a variety of circumstances, including those involving departing employees, failed joint ventures, cyber intrusion and hacking, and misuse of information submitted to government entities for purposes of complying with regulatory obligations.” The report also notes that “public reports have further indicated that actors affiliated with the Chinese military and Chinese Government have systematically infiltrated the computer systems of over one hundred U.S. companies and stolen hundreds of terabytes of data, including all forms of trade secrets, such as proprietary technology, manufacturing processes, and confidential business information.”

Patent vs. Trade Secret Protection: Which One Is Better?

Sheldon Mak & Anderson — Thu, 16 May 2013 10:06:34 +0000

In some cases, trade secret protection of an invention is a viable alternative to patent protection. A trade secret is information, including a formula, pattern, compilation, program, device, method, technique, or process, that derives independent economic value from not being generally known to or readily ascertainable to others who might obtain economic value from its disclosure or use.

In order to maintain its value, a trade secret owner must take precautions to prevent disclosure of the secret information. Conversely, patent protection requires the inventor to provide detailed information about the invention in order to be granted the right to exclude others from making, using, or selling the invention for a specific period of time.

The two types of intellectual property also have a number of other key differences:

Process for protection: Unlike patents, trade secrets cannot be federally protected through applications to the U.S. Patent and Trademark Office. Rather, the owner of the trade secret holds the responsibility for keeping it safe. If the holder fails to maintain secrecy or if the information is independently discovered or otherwise becomes pubic knowledge, protection as a trade secret is lost.
Range of protection: U.S. patent law limits the scope of patent protection to include any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. A trade secret can include any of the various types of information referenced above such as customer lists.
Timeframe for protection: Trade secret protection can begin at any stage of the inventing process, while patent protection must comply with deadlines established under federal patent law.
Limitations of protection: Patents granted by the USPTO are limited to the United States, unless the inventor takes further steps to gain international protection. So long as the information remains confidential, trade secret protection can extend globally.
Term of protection: While patents have a specific term of years, trade secret protection does not expire. However, trade secrets can be discovered through independent discovery and reverse engineering.

Given the significant differences, choosing the most beneficial type of protection involves careful consideration of both the business and legal implications. For assistance, we encourage you to contact our experienced IP attorneys for a free 30-minute consultation.

EU Seeks to Modernize Trademark System

Sheldon Mak & Anderson — Wed, 15 May 2013 09:59:02 +0000

The European Union (EU) continues to announce ambitious initiatives to modernize its intellectual property laws. The latest proposal seeks to overhaul how the EU protects trademarks.

In Europe, trademarks can be registered at national level or at EU level as a Community trademark (CTM). The two types of trademarks coexist, and the same mark may be registered as a Community and/or as a national trademark.

The latest proposals seek to modernize and streamline both systems. As highlighted by the European Commission, there are several reasons for change. For instance, no significant changes have been made since national trademark registration in the EU Member States was harmonized 20 years ago and the unitary Community trademark was created more than 15 years ago. Since then, the business environment has changed significantly. In addition, many formal requirements and procedures remain non-harmonized.

As further detailed by the European Commission, the proposals do not seek to create a new system but perform a well-targeted modernization of existing provisions, with the following aims:

Streamlining and harmonizing registration procedures, by introducing principal procedural rules into the Directive and taking the Union (CTM) system as a benchmark
Modernizing the existing provisions and increasing legal certainty, by amending outdated provisions, removing ambiguities, clarifying trade mark rights in terms of their scope and limitations and incorporating extensive case law of the Court of Justice
Facilitating cooperation between the Member States’ offices and the EU Agency, by putting in place a legal framework for this cooperation
Improving the means to fight against counterfeit goods, in particular when they are in transit through the Union territory
Adapting the texts to the terminology and procedures of the Lisbon Treaty (e.g. renaming the Community trade mark which will be called the European trade mark in the future) and to the inter-institutional Common Approach on decentralized agencies of July 2012 (e.g. new rules on governance of the EU agency)
Making the fee structures more flexible to better meet the needs of users and adapting (reducing) accordingly the fees payable to the EU Agency.

The proposals are largely good news for businesses seeking to protect their trademarks in the EU. If approved, they will not only lead to greater legal certainty but also reduced application and renewal fees. For assistance pursuing a trademark application overseas, we encourage you to contact our experienced trademark attorneys for a free 30-minute consultation.

Latest High-Profile Software Decision Tackles Standard-Essential Patents

Sheldon Mak & Anderson — Tue, 14 May 2013 10:36:45 +0000

Motorola (now owned by Google, Inc.) and Microsoft Corp. are the latest high-tech companies to square off in the so-called “patent wars.” In the lawsuit, Microsoft alleged Motorola tried to excise excessive licensing fees, while Motorola claimed that Microsoft infringed its standard-essential wireless technology patent.

As we previously discussed on this IP Law Blog, standard-essential patents are integral to the tablet and smartphone industry because they form the backbone of the basic technology they need to operate. While most owners of these patents have voluntarily pledged to grant licenses to other companies on “reasonable and nondiscriminatory” (RAND) terms, it is often easier said than done.

In a recent decision, U.S. District Judge James Robart established some useful guidelines for determining reasonable royalties for standard essential patents (SEPs). Since his opinion runs over 207 pages, it is impossible to outline all of them here. However, there are a few key takeaways.

To arrive at “reasonable” royalty, Robart conducted a hypothetical, bilateral negotiation between the parties. In doing so, the judge highlighted the need to consider the importance of the SEPs to the standard as well as the importance of the standard and the SEPs to the products at issue. The specific “economic guideposts” he cited included the following:

A RAND royalty should be set at a level consistent with the standard setting organization promoting widespread adoption of their standards.
In the context of a dispute concerning whether or not a given royalty is RAND, a proper methodology used to determine a RAND royalty should therefore recognize and seek to mitigate the risk of patent hold-up that RAND commitments are intended to avoid.
Likewise, a proper methodology for determining a RAND royalty should address the risk of royalty stacking by considering the aggregate royalties that would apply if other SEP holders made royalty demands of the implementer.
To induce the creation of valuable standards, the RAND commitment must guarantee that holders of valuable intellectual property will receive reasonable royalties on that property.
From an economic perspective, a RAND commitment should be interpreted to limit a patent holder to a reasonable royalty on the economic value of its patented technology itself, apart from the value associated with incorporation of the patented technology into the standard.

In the end, Robart’s RAND calculations more closely matched those urged by Microsoft. However, the methodology employed was that favored by Motorola. Overall, the case highlights that standard essential patent cases continue to raise challenging issues.

Understanding Design Patents: A Primer

Sheldon Mak & Anderson — Mon, 13 May 2013 02:37:47 +0000

While design patents are not as popular as their utility patent peers, they still offer a number of benefits for inventors, particularly when seeking to protect the unique appearance of an item.

In simple terms, a "design patent" protects the way an article looks, as opposed to how it is used or how it works. The specific subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.

Unlike a utility patent, a design patent only has one claim. It relies largely upon the drawings to designate what the patent protects. As explained by the U.S. Patent and Trademark Office (USPTO), “As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, that nothing regarding the design sought to be patented is left to conjecture.”

A design patent application must be examined the USPTO and subjected to a prior-art search. Under U.S. patent law, a design patent will be granted to any person who has invented any new, non-obvious, original and ornamental design for an article of manufacture. However, it is important to note that the design patent protects only the appearance of the article and not structural or utilitarian features. Once granted, design patents have a term of 14 years.

Proving infringement of a design patent also differs. The “ordinary observer” test is used to determine whether a design patent has been infringed. As first explained by the Supreme Court in 1871, the primary question is “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” The “ordinary observer” is not an expert, but defined as “a purchaser of things of similar design” or “one interested in the subject.”

For assistance pursuing a design patent, we encourage you to contact our experienced patent attorneys for a free 30-minute consultation.