Lock Down fatigue is setting in, and budgets are tightening, but there are plenty of things that you can do at little or no cost while hunkered down at home to improve your Company’s IP Portfolio for when the business resumes.

1. Establish an Company wide IP Policy. An IP Policy can help cast the company in a more favorable light should a dispute arise, and they can actually drive employee conduct.
2. Establish a formal trade secret program, including protocols for protecting the Company’s trade secrets and confidential information, and an employee training program to make sure those protocols are followed.
3. Update the Company’s Employee Agreement. Does your agreement include a present assignment of employee inventions? Does it take into account the Defend Trade Secret Act? Does it take into account state employee inventor statutes. Does it give the Company a power of attorney to act for departed or uncooperative employees?
4. Update your invention disclosure form. Does it take into account the changes in the AIA? Does it include a assignment of rights?
5. Establish a virtual IP Committee that can meet using an online documents to evaluate new disclosures and make maintenance decisions.
6. Cull the IP portfolio to reduce on-going maintenance costs. Look for donation opportunities to off-load unused IP at a tax-advantageous manner. Consider making some IP available for compulsory licensing, which can reduce maintenance costs by as much as 50%,
7. Look for licensing opportunities, to generate revenue from the portfolio. A good source of licensees are owners of patents and applications cited in your own patents and applications, and the owners of patents and applications which cite to your patents and applications.
8. Look for enforcement opportunities. A good source are the owners of subsequent patent applications where your patents have been cited.
9. Finally polish up your Confidential Disclosure Agreements. Do they take into account effects of the AIA?
10. Establish procedures for handling the receipt of unsolicited ideas form outside the Company. These continue to be a source of risk from unfounded claims.
11. Audit patent marking, and finally get around to virtual patent marking under 35 USC 287(a).
12. Audit trademark marking, and particularly where U.S. products with brands marked with an ®, are exported to countries where the mark is not registered.
13. Create definitive trademark use guidelines,
14. Revamp the Company’s website’s terms and conditions.
15. Establish a Company social networking policy and email guidelines
16. Finally take the time to see how the Madrid Protocol can reduce maintenance costs, and expand the scope of the Company’s trademark portfolio.
17. Create a permissions for to address requests for permissions to use the Company’s trademarks and copyrighted materials.
18. Register the copyright to the Company’s product literature, packaging advertising and promotional materials. Registration is a prerequisite to bringing suit, and obtaining the registration before infringement begins gives access to an award of statutory damages and attorneys’ fees.
19. Create a new employee IP orientation program.

It may come as a surprise that even patent attorneys don’t believe that every invention should be patented. The time, effort and expense of preparing and filing a patent application should be reserved for those inventions that are likely to provide an advantage. Here is a list of criteria to help judge evaluate whether an invention should patented. These can also help prioritize multiple inventions, and help decide which inventions may be worthy of extra investment.

Nike recently sued Skechers for infringement of twelve of Nike’s design patents. The Complaint convincingly establishes the similarity of the appearance of the shoes:

In addition to appearance, the Complaint also develops a convincing case on appearances, detailing Sketchers strategy of copying:

Nike explains Skecher’s practice of Skecherizing competitor’s designs:

Nike’s Complaint recognizes that while competition is legitimate, people inately believe that copying is wrong. While Skechers appears to embrace its conduct, most business work to preserve its image as a legitimate competitor, and not merely a copier. To this end, a business should pay attention to how it characterizes its own conduct. Internal project names that make the business look like a pirate, or internal communications that talk about “ripping off, “knocking off,” or even “copying,” can cast the company in a bad light to a judge or jury. If what the business is doing is legimate, there is no need to characterize the conduct as improper or inappropriate — when the issue is design patent infringement, appearances can matter just as much as appearance.

Last month, General Chuck Yeager sued Airbus for violation of right of publicity, false endorsement, and trademark infringement. The basis of his complaint? In introducing its new Racer high-speed, cost effective helicopter, Air Bus referenced General Yeager’s breaking of the sound barrier at a press conference, and then repeating the reference on line and in print. Specifically, Air Bus said:

This seems little more than an innocuous reference to a historical fact. It adds some information and interest to an otherwise bland commercial statement, but it seems highly unlikely to cause anyone to believe that General Yeager is in any way connected with the Racer helicopter, let alone endorses it. Shouldn’t anyone, including a commerical entity, have the right to reference a historical event to make a point — at least if they do so in a way that doesn’t make it seem that they have the approval or endorsement of those involved in the event?

Unfortunately, the right of commercial speakers to reference historical events is not so clear. Had Air Bus been a slightly better student of history, it might of known that this is a lesson that General Yeager taught AT&T nearly a decade earlier. AT&T Mobility — then called Cingular — referenced General Yeager in an eerily similar press release:

To paraphrase George Santayana, those who don’t study history are doomed to repeat it. One might add that if you are commercial entity, even if you study history, you best not talk about it!

Le-Vel Brands, LLC recently sued Thrival Nutrition, LLC in the Eastern District of Texas (4:19-cv-00698-SDJ) for trademark infringement and unfair competition arising from Le-Vel’s use of THRIVE and Thrival’s use of THRIVAL

To prevail, Le-Vel will of course have to prove the there is a likelihood of confusion, but Le-Vel has help in meeting this burden from an unlikely source — Thrival’s own social media posts. As set forth in the very first paragraph of the Complain, Thrival has admitted on its Facebook page that there is confusion between the two companies:

While Thrival may ultimately be able to explain away these posts, the bottom line is that they are going to have to. Lured by the ease and informality of posting in social media businesses often post messages without vetting the content. The reality is that such posts are virtually permanent, and relatively easy to find, and thus the content should be vetted the same way it would review formal press releases and advertising

A business should restrict who can post on its behalf, and should have some process for vetting the content of those posts to avoid embarrassment or worse — liability.

It seems everyone has great idea for a t-shirt. Fortunately there are numerous ways to protect these great ideas.

Utility Patents

Although t-shirts have been around for more than 100 years, a novel and non-obvious improved t-shirt can still be protected with a utility patent. A utility patent protects the construction or function of the t-shirt and not its appearance. It typically takes just over 24 months to get a patent, and even on a simple invention like a t-shirt it can cost $7,500 or more. Utility patent protection is not for every invention, but it can provide 20 years of exclusivity for inventions that meet the three tests of utility, novelty, and non-obviousness.

Design Patents

Design patents protect the appearance of a product, not its construction or function. The inventor of a t-shirt with a new and non-obvious appearance can protect that appearance for 15 years with a design patent. It is generally faster, easier, and less expensive to get a design patent than a utility patent, and thus can be a better option, and if the appearance is the only novel feature, it may be the only option.

Trademarks

The words and designs on a t-shirt may function as a trademark. The owner can claim common law (unregistered) rights in these trademarks, but the rights are stronger and easier to enforce if the owner registers the trademark. Trademarks can be registered at the state or federal level. A federal registration provides nationwide protection of the mark, it allows the owner to use the ® symbol, and it makes enforcement easier and less expensive. However, it can be difficult to obtain a registration words and graphics on the exterior of the shirt, because the USPTO may regard the text or graphics as merely ornamental, and not as a trademark. Thus, some additional effort may be required to show that the mark is more than mere ornamentation.

A state registration is relatively fast, easy, and inexpensive to obtain, but it does not provide the same strong benefits of a federal trademark registration and what limited rights it does provide are limited to the borders of the state, Nevertheless, a state registration may provide some benefit where a federal registration is not an option.

Copyright

Copyright provides protection of graphics against copying, but does not protect single words or short phrases or designs that do not exhibit minimal authorship. Copyright arises automatically from the moment a the work is fixed in tangible form, but two steps will ensure the strongest possible copyright rights: First, applying copyright notice to the work. Copyright notice consists of the © symbol, the name of the copyright owner, and the year of first publication. For example for a work first published in 2018, the notice might be: © Copyright Owner 2018, even though it is no longer 2018. Second, registering the copyright with the Copyright Office. Although the copyright exists without registration, prompt registration entitles the copyright owner to statutory damages and attorneys fees.

Today the Supreme Court clarified two small but significant copyright issues, relying on the express words of the copyright statute in one, but deviating slightly in the other.  In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, [17–571] the Supreme Court held that §411 explicitly requires that a plaintiff actually have a copyright registration before bringing a copyright suit. However, in Rimini Street, Inc., v. Oracle USA, Inc., [17–1625] the Supreme Court held that the term the term “full costs” in §505 of the Copyright Act simply means the “costs” specified in the general costs statute codified at 28 U.S.C. §§1821 and 1920, and does not include a party’s other costs, in effect giving no weight to “full” in the statute.

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, Fourth Estate sued for infringement of its news articles from Wall-Street’s failed to remove them from its website after canceling the parties’ license agreement. Fourth Estate had filed applications to register the articles with the Copyright Office, but the Register of Copyrights had not acted on those applications. The District Court dismissed the complaint because 17 U. S. C. §411(a) provides that “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.” The Eleventh Circuit affirmed, holding that registration has not been made under §411(a) until the Copyright Office actually registers the copyright.

The Supreme Court affirmed, agreeing that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers the copyright. This resolves a split in the circuits, as the Fifth, Seventh, and Ninth Circuits and a smattering of district courts held that merely filing a complete application was sufficient, while the Tenth and Eleventh Circuits, and other district courts maintained that “registration” in 17 USC §411 meant actual registration. Todays decision also does not leave copyright owners in too difficult position.  The Copyright Office has a process for expedited copyright registration (https://www.copyright.gov/help/faq/faq-special.html), and the Supreme Court reiterated that the copyright owner can still recover pre-registration damages.  At most this ruling should slow a copyright plaintiff a week or two, and cost a few hundred dollars more – barely a blip for a plaintiff heading off to federal court to enforce its rights.

In Rimini Street, Inc., v. Oracle USA, Inc., after a jury awarded Oracle damages for copyright infringement, the district court added Oracle’s fees and costs, including $12.8 million for litigation expenses such as expert witnesses, e-discovery, and jury consulting.  The Ninth Circuit affirmed the award, acknowledging that it covered expenses beyond the six categories of costs enumerated in general federal statutes authorizing district courts to award costs (28 U. S. C. §§1821 and 1920).  The Ninth Circuit explained that the additional award was appropriate because 17 U. S. C. §505 gives federal district courts discretion to award “full costs” to a party in copyright litigation. The Supreme Court reversed, holding that Sections 1821 and 1920 define what the term “costs” encompasses in subject-specific federal statutes such as §505.  The Supreme Court said that while Congress may authorize awards of expenses beyond the six categories specified in the general costs statutes, the courts may not award litigation expenses that are not specified in §§1821 and 1920 absent explicit authority. The Court said that its precedents have consistently adhered to that approach, and the Court rejected Oracles arguments that this ignored Congress’s use of “full” to modify costs in §505.

Photographer Douglas Kirkland has sued the Kfir Moyal Art Gallery Inc., in the Southern District of Florida (1:19-cv-20293-DPG), alleging that the Gallery copied and distributed Kirkland’ copyrighted Work for purposes of advertising and promoting Kfir Moyal’s business, and in the course and scope of advertising and selling products and services.

The courts have been accommodative of artists who use preexisting images in their work, as long as the use is “transformative.” The question is whether Kfir Moyal’s image on the left is in fact transformative of Kirkland’s 1965 photo of Brigitte Bardot on the right.

Kirkland’s lawyers are cleverly focus the Complaint not on the artistry of the Kfir Moyal’s image, but on its commercial use in advertising and promotion, hoping to avoid favorable treatment many courts give purely artistic works. It remains to be seen if this strategy is successful.

Advertising, press releases, and even product packaging all communicate the company’s value proposition to the consuming public, but occasionally they can do more harm than good. These items are a direct reflection on the company and its products and services, and need to be carefully vetted. This is more than just careful proofreading, but fully vetting the content to reduce the risk of embarrassment and even legal problems.

Here is a checklist of things go consider when reviewing advertising, press releases, and product packaging :

Ownership

• Did we create or obtain the right to use all of the text?
• Did we create or obtain the right to use all of the images?
• List all third party material used (including third party material we believe we acquired):
  • Do we have written permission to use the third party material, or has a Company lawyer concluded that the use is appropriate?

Publicity/Privacy

• List each person identified, mentioned, or depicted.
  • Do we have written permission/release to identify, mention, or depict this person?
• Does it appear that any person or entity is providing a testimonial or expressly or impliedly endorsing our products or services?
  • Do we have written permission/release to present this testimonial/endorsement?
  • Is the testimonial/endorsement accurate and fair?
  • If the testimonial/endorsement paid, is that fact disclosed?
• Is there any reason to believe that the person identified, mentioned, or depicted could be controversial or divisive, or otherwise impair our image or that of our products and services?

Content

•  Is the use of all unqualified superlatives necessary and justified?  (E.g., maximum, highest, lowest, critical, essential, important)
• Is the use of all absolute terms necessary and justified? (E.g., -free, -proof)
• Is the use of all terms necessary and justified? (E.g., -free, -proof)
• Are claims regarding “free” (i.e., no-cost) accurate?
• Are there any claims regarding safety?
  • Are they necessary?
  • Are they accurate?
• Are any claims regarding improved truthful?
• Have claims of improvement been vetted with legal (e.g. subsequent repair)?
• Are claims regarding place of manufacture (e.g. “made in USA”) accurate?
• If there are specific claims about our products or services (e.g. rankings or numerical data), are they accurate, provable, and documented?
• If there are comparisons with third party products, are they accurate, provable, and documented?
• If there are references to third parties or third party products, do we have express/implied permission, or are they otherwise legally justifiable?
  • Are all such references accurate, provable, and documented?
  • Are all such references not disparaging?

Our IP

• TRADEMARKS
  • Existing Marks
    • List all existing marks used.
    • Are our existing trademarks used correctly?
      • Used as an adjective?
      • Presented correctly (in compliance with existing usage guidelines) and consistently?
      • Identified with a TM, SM, or ®?
      • Displayed Distinctively?
    • New Marks
      • List all existing marks used.
      • Have our new marks been cleared?
      • Have we applied to register our new marks?
      • Are our new trademarks used correctly?
        • Used as an adjective?
        • Presented correctly and consistently?
        • Identified with a TM, SM, or ®?
        • Displayed Distinctively?
• Copyright Generally, press releases do not bear copyright notice as copying is to be encouraged.  However, packaging and advertising can and should be copyrighted.
• Trade Secrets
  • Are any of our trade secrets or confidential information mentioned?
    • Should they be?
  • Are any third party trade secrets or confidential information mentioned?
    • Should they be?
• Inventions/Patents
  • Are any of our inventions mentioned?
  • Has a patent application been filed?
    • Should the invention be mentioned/disclosed at this time?
  • Are any third party inventions mentioned?
    • Should the invention be mentioned/disclosed at this time?

Third Party IP

• Trademarks
  • List all third-party marks used.
  • Are all third party trademarks use truthfully?
  • Are the third party trademarks used correctly?
    • Used as an adjective?
    • Presented correctly and consistently?
    • Identified with a TM, SM, or ®?
    • Displayed Distinctively?
  • Do we identify correct owner of mark or at least disclaim we are the owner of the mark?
• Patents
  • Do we describe our products or services in a way that might indicate they are covered by a third party patent?
  • Do we make any claim about our product or service that might indicate they are covered by a third party patent?
• Copyrights
  • Do we have written permission to use third party works (text, images)?
  • Do we use correct copyright notice?
• Trade Secrets
  • Are we disclosing any third party confidential information?
  • Do we have written permission to do so? 

Disclaimers/Explanations

• Are any disclaimers or explanations needed?  For example, related to: third party uses, claims or statements made about the product, guarantees or warranties made, depictions of the product or service.