Create, Consult, Control
News & commentary on intellectual property issues.
Jul152010 | Steve O'Donnell
Does downloading really hurt DVD sales?
The movie industry often blames flat or decreased DVD sales figures on file sharing, but are those that download the same group that would have otherwise bought a disc?
I don't know the answer, and I don't have any data to support a position, I was just thinking about this the other night and would like some feedback.
On the one hand it makes sense that at least some people wouldn't buy something they could get for free (even if that meant infringing a copyright and running the risk of getting caught). On the other hand, if movies suddenly weren't available through file sharing avenues anymore, how many people would move to Netflix or similar, and how many would start buying discs?
There are four options (maybe more): downloading, borrowing, renting, and buying. If downloading is removed, and you don't have a friend that already owns a movie, then the next cheapest option is to rent it. Buying is still quite a bit more expensive than renting.
I suspect that the businesses getting hit hardest by movie downloading are rental places, and since rental places don't seem to be complaining about their bottom-line, maybe movie downloading isn't hurting film makers.
I'm only talking about downloading movies out on disc. Movies still in theaters and other types of media all have their own issues.
What are you thoughts?
Jul072010 | Steve O'Donnell
What happens to patents when a company closes.
A couple days ago someone found this blog by searching for “what happens to a patent when a company goes out of business,” which is surprising, because I don’t recall posting on that. At least it’s less disturbing than the time this blog was found by someone searching for “how to seduce a swan” (I hope they were looking for this.
So, what happens to a business’ patents when the business closes? The answer is pretty close to what you’d hear if you asked “what happens to a business’ copy machine when the business closes?” Patents are property, intellectual property, and even though they differ from physical property in certain ways, in many ways they’re the same.
A closing business can do any number of things with a patent. It could assign or license it to someone, the patent could be part of the company’s assets in a bankruptcy reorganization or liquidation; it could auction it off or dedicate it to the public; the patent could also be left to expire on its own.
The “expiration” is probably what people mean when they ask what happens to patents when the owner goes out of business or dies. For a patent to remain in force, periodic maintenance fees need to be paid to the government. Whether this is for a laudable reason, such as prompting the early public dedication of unused patents or if it’s just another way that the government can extract money from people is a question you can mull over later.
Currently these fees are due at 3.5 years, 7.5 years, and 11.5 years after the patent issues. The cost of these fees increases with each payment. The first maintenance fee is $980, the second is $2480 and the third is $4110 for a large entity and half that for a small entity. I’ve never thought of it before, but those are some strange amounts. If anyone can explain them to me, please leave a comment.
If those fees aren’t paid, the patent expires prematurely. If they are paid, a utility patent will normally expire 20 years after its filing date.
So I guess the answer to the question is closer to that for “what happens to a business’ car when it closes?” Not unlike a car, a patent can be sold, transferred, etc. Also, if a patent is left to languish and isn’t maintained it can be irretrievably lost.
If you’re concerned about a patent, the best thing to do is to have a patent attorney research the patent’s file and determine the best course of action.
Jun292010 | Steve O'Donnell
Bilski didn’t change much except my dinner plans
I (and every patent lawyer) have been anxiously awaiting the Supreme Court’s decision in Bilski, which should have given us a handle on when business method and software patents were patentable. The decision came down yesterday, and the Court punted.
Most patent attorneys had expected J. Stevens to write the opinion and guessed that it would tamp down on the patentability of business method and software patents. J. Stevens didn’t write the majority, and the opinion didn’t really change anything, or leave us with a clear indication of when business methods or software were patentable or not.
For the last few months I had some thoughts on what this post should be, I expected some softer rule than what the Fed Cir had stated, but we didn’t get a rule, only a dodge.
I anticipated a flurry of analysis and writing today and planned on picking up dinner while coming home from getting my kids at daycare to free a few more minutes for drafting. Since the Court didn’t give me much to work with, I decided that rather than trying to expound on a narrow ruling that gives little or no guidance, I instead will just write about what I made for dinner last night since the Court was kind enough to free me from my expected burden. So, here it is, Green Curry Macaroni and Cheese:
This recipe was based on Alton Brown’s Baked Mac & Cheese and inspired by Roger Mooking’s Curried Mac & Cheese.
Baked Green Curry Macaroni and Cheese
ingredients
1/2 pound elbow macaroni
3 tablespoons butter
3 tablespoons flour
2 tablespoons green curry paste
3 cups milk
4 teaspoons coconut extract
1/2 cup yellow onion, finely diced
1 large egg
12 ounces provolone
1 teaspoon kosher salt
black pepper
fresh Cilantro
directions
1. Preheat oven to 350 degrees F.
2. In a large pot of boiling, salted water cook the pasta to al dente.
3. While the pasta is cooking, in a separate pot, melt the butter. Whisk in the flour and keep it moving for about five minutes. Make sure it's free of lumps. Stir in the milk, onion, and curry paste. Simmer for ten minutes.
4. Temper in the egg. Stir in cheese and heat till melted. Season with salt and pepper. Fold the macaroni into the mix and pour into a 2-quart casserole dish.
5. Top with cilantro for service.
Notes: the curry paste container says to use 4T per can of coconut milk. . . which would translate to about 6T for this recipe. I find that to be waaayyy to hot, so I went with a third of that (and it's still pretty spicy, and I'm a guy that drenches pizza with hot sauce). I considered using coconut milk instead of milk+extract but I was concerned that the recipe needed the protein in the milk. . . plus, coconut milk is pretty fatty and there's already a bunch of fat from the cheese. I went with provolone because it’s a mild cheese and wouldn’t compete with the curry paste. The mix is very wet before it goes into the oven, but firms up nicely during the bake. When it was still hot from the oven, the curry spiciness was stronger than I anticipated, but as the dish sat, the spiciness mellowed yet was still very flavorful.
And no, this recipe isn’t patented.
Jun252010 | Steve O'Donnell
When the "little guy's" copyright is infringed
This morning @TimothyPONeill on Twitter pointed out at article that referenced a website that highlights a few cases of small artists getting their work infringed by bigger fish. Uff-da, how’s that for full disclosure? Why yes, I am originally from Minnesota, why do you ask?
Take a second and look at some of the examples listed at the well named You Thought We Wouldn’t Notice. Note that these are reports originating from the artist themselves, and not necessarily someone that knows anything about copyright law. Some of the examples are just as likely coincidences as they are infringements, a few probably wouldn’t survive a motion to dismiss, but others, well some of them are simply blatant copying.
What is an independent artist to do when some thing like this happens? Well, honestly, for most, there isn’t much to do. If the copyright isn’t registered, damages are probably limited to actual damages and an court order telling the infringer to stop. For most cases, it probably doesn’t make economic sense to sue on an unregistered copyright.
There are still a couple ways to address the issue. Sometimes the infringement was a mistake (believe it or not, that happens) and other times the company also got ripped off by someone claiming to be the artist. In that case, a letter explaining the issue will probably result in some relief, or at least a check. If that doesn’t work, one might be able to pressure the company through some online forum, blogging, Twitter, etc and drawing attention to their infringing activity. Other than that, options are slim.
On the other hand, registering a copyright is fairly straight-forward and rather reasonably priced. Doing that gives an artist a lot more power when it comes to dealing with an infringer because instead of just actual damages (which can be an immense pain to prove) and an injunction, registration allows one to opt for statutory damages. Lets say some company takes a photo, puts it on a t-shirt and sells 100 shirts at $20 each. For actual damages the artist may have to demonstrate what percentage of the $2000 in sales was due to the infringed work. If we’re looking at statutory damages, the calculation is between $750 and $30,000 (possibly up to $150,000) PER infringement. So those 100 shirts are likely going to cost the infringer a lot more if the case goes to court.
I know which position I’d want to be in if I was suing an infringer.
May202010 | Steve O'Donnell
Is there a better way to police a trademark?
Recently I posted about Chick-Fil-A’s actions against someone using the mark “Eat More Produce.” Phoenix Patent Attorney commented on that post and brought up another recent instance about Monster (the energy drink) going after Vermonster beer for a similar alleged infringement and mentioned how certain of these cease and desist letters find their own life on social media. . . which got me thinking, should attorneys rethink their strategy in cases like this because of social media?
Both Chick-Fil-A and Monster have suffered some negative publicity blowback due to their actions because many people view their actions as the big guy going after the little guy for an alleged infringement that is, really, pretty minor.
This brings up an interesting quandary: the trademark owner has to police their mark or they risk losing it, but there can be public opinion fallout if they police their mark against much smaller entities. . . is there a way to police without looking like a jerk?
I think there is. If the alleged infringement is borderline, where it touches upon someone else’s trademark, but doesn’t quite stomp on it, maybe trademark lawyers should take a different approach.
If we assume that most of these issues will eventually be resolved with an agreement reached after a few iterations of correspondence, why not just cut to the chase? Instead of the trademark owner firing off a standard cease and desist letter, what if they sent a letter pointing out what they think is the proper legal standard, but instead of making a demand, offered a reasonable settlement conditioned on the recipient not taking it to the press?
If Chick-Fil-A knows that they’d be satisfied with the “Eat More Produce” company agreeing to stay out of the relevant markets, they could have stated that in their first letter and conditioned such a offer on the terms of the letter being kept quiet. Chick-Fil-A would be happy because they’re protected their mark and their image, the other company would be happy because they’ve saved on attorney fees and don’t have a cloud of uncertainty hanging over their heads.
I’m not suggesting that the traditional model be abandoned, and many times, the only reasonable approach is going to be to take the cease/desist route.
I’m interested to hear what other trademark-minded people think about this approach, so please comment below, even if (especially if) you think this is a bad idea.
May182010 | Steve O'Donnell
Chick-Fil-A only wants you to eat more chicken.
As reported by the Consumerist, Chick-Fil-A has a beef (get it?) with a company suing the slogan “Eat More Produce.” Is this a case of someone being a bit over zealous and firing off unreasonable cease and desist demands?
On its face, this does sound like a pretty silly controversy. I think it’s doubtful that either Chick-Fil-A or their attorneys really think that someone using “Eat More Produce” will harm their business identity, but is that actually the concern?
I suspect that the actual impetus for the letter is less concerned with this one specific alleged infringement than it is with stopping a problem before it becomes one. If I was Chick-Fil-A’s lawyer (I’m not, but Chick-Fil-A--call me)I would suggest doing the same thing.
If a trademark owner fails to protect their trademark they run the risk of losing it. When a brand becomes so tightly linked to a product that the terms become interchangeable, then the trademark loses it’s unique quality. Escalator used to be a trademark but has become a generic term for a moving staircase; both Kleenex and more recently, Google, have been fighting against this erosion for years.
Consider this hypothetical: Chick-Fil-A does nothing about “Eat More Produce” because its considered too far-fetched of a claim to make; later, someone starts using “Eat More Seafood” and Chick-Fil-A does nothing because they don’t sell seafood; later someone starts using “Eat Mor Tofu,” that’s getting closer, the misspelled “More” is making this a pretty obvious trademark issue. Let’s go one farther and say that some eventually starts using “Eat Mor Turkey.” That finally gets Chick-Fil-A’s feathers ruffled so they take it to court. The judge looks at how Chick-Fil-A has allowed others to use similar slogans without doing anything to police their mark and quite possibly rules that Chick-Fil-A has lost their trademark because they haven’t done anything to protect it.
On the other hand, if Chick-Fil-A had contacted the minor alleged infringers and come to some agreement with each, they would have that paper trail to prove that they haven’t given up on protecting their trademark.
Although I can’t predict what will eventually happen in this matter, my guess is that each side will send a couple letters to the other side before an agreement is made that Chick-Fil-A will not protest the “Eat More Produce” company’s slogan as long as they refrain from entering the fast food or poultry markets. That would protect Chick-Fil-A and let the other company continue as they’ve been without either side having to commit to costly litigation with an uncertain ultimate result.
Apr202010 | Steve O'Donnell
What I learned at the 2010 Launch Music Conference
It’s been a long time since the last music conference I attended (when I was on the other side of the fence). It’s interesting to see how little has changed over the last 20 or so years, but what can we do to change the things that should change?
I had a table at the 2010 Launch Music Conference last weekend and met a nice group of musicians and promotional professionals (and handed out a lot of brochures). It’s oddly comforting that some things have remained the same over the years, and probably will forever--musicians still wear genital-crushingly tight jeans and spend a disproportionate amount of time on their hair, they still get tattooed and still wear boots. Unfortunately, musicians still get screwed over. I’m not going to convince anyone to spend less time on their hair (and I’d never try) but hopefully I can convince someone that with a little planning, and a little legal help, they can avoid some of the most common headaches they’re likely to run into.
First off, a poor-man’s copyright isn’t worth the postage. Just don’t bother. Copyright registration is relatively inexpensive and quick. Copyright is also one of the few things that can benefit from an economy of scale, i.e., the more tracks you register at once, the less your attorney is probably going to charge you for each registration.
Secondly, about your band’s name, someone’s already using it. Ok, maybe that’s not the case, but you should assume it is, at least until you do some research and make sure that it’s not. Also, even it it’s all yours today, what happens when someone across the country comes up with the same name? What if they get picked up by a label before you, and register the name as their trademark? Do you then have to change your name? The best thing to do is to register a trademark for you band’s name. Maybe it doesn’t make sense right now to spend $1000 or so right now on a federal registration, but a state registration is a good first step, and probably a lot cheaper.
Thirdly, homemade contracts aren’t necessarily better than no contract, and might be worse. On one hand, I guess it shows to that punk isn’t dead, the DIY attitude is still thriving, but the business side of things should be left to the business people. No episode of Behind the Music contains the line "I'm sure glad we never hired a lawyer."
The biggest problem I heard was bands just not getting paid. Whether your agreement is for a flat payment or for a percentage of the gate, a lot of venues don’t like to pay musicians. The best way to avoid this is to have a contract upfront, if possible. It seems a lot of (especially smaller) venues shy away from contracts and think you should just trust them, maybe so they feel better about not paying. If that fails, the natural inclination is to resort to a little violent self-help. Generally, that’s not the best way of doing things and can lead to some other problems, such as not getting booked anywhere but the police station. Something that’s usually pretty simple and straight forward is a District Justice (Small Claims) lawsuit. These suits can be handled for a pretty small filing fee and without a lawyer, although it’s always a good idea to hire a lawyer if you can--some may take your case for a cut of what you win. Small Claims is limited (in PA) to claims under $8000 so if your agreed fee was more than that, you’ll need to file somewhere else.
Lastly, I also learned that some people like to dress as members of the Imperial Fleet and walk around the convention center.
Apr072010 | Steve O'Donnell
You probably don't want a provisional patent application
A number of “inventor assistance” services tout a provisional patent as a low-cost way of obtaining some degree of patent protection. Although a provisional is a little cheaper at the start, many people will wind up paying more in the long run than if they instead focused on a non-provisional application.
As I said before, I usually think of patents as consisting of two parts: the claims and everything else. A provisional patent is the “everything else.”
When I draft a patent, I start with what I consider the two hardest sections: the claims and the summary. The claims are tricky because they define the covered invention in as precise language as possible; the summary is tricky because it’s the “quick read,” plain language summary of the claims.
The claims are written for an intended audience of other patent lawyers and federal judges; the summary is written for potential infringers to read and hopefully come to the conclusion that a license makes better business sense than defending a lawsuit.
The rest of a patent is the foundation for the claims to stand on, and just like how like the visible portion of a building isn’t going to last without a solid foundation, patent claims will collapse if they’re not supported.
To carry that analogy a bit further, just as it doesn’t make sense to build a house without first considering the foundation, it doesn’t make sense to build a foundation without knowing what you’re going to build on it. For that reason, it doesn’t make sense to draft a provisional patent application without knowing what the claims are going to eventually look like.
If one does opt to file a provisional application there is likely going to be some degree of work duplication when, a year after the application is filed, a patent attorney has to refresh his memory on the subject matter of the application and then move to drafting claims. There are also going to be filing fees associated with the process that could be avoided by not first filing a provisional application.
Certainly there are reasons to file a provisional application, sometimes the initial few hundred dollar savings in filing fees demands the course. Other times there can be a looming statutory deadline that requires an application to go out the door before someone can sit down and draft a polished application. In other situations, it might make strategic sense to have a broad provisional on file for a year before deciding what aspect(s) of the invention should be patented. Whether a provisional application is the best route for you is something to discuss with your attorney, just don’t get attached to the idea, because odds are that it isn’t.
Feb182010 | Steve O'Donnell
Avoiding Trademark issues when naming your band
Most people don’t realize that all of the issues one can run into when choosing a brand name for a product also come up in the context of band names. In fact, these problems can cause an even greater headache for bands than for other businesses.
David: So we became The Originals.
Nigel: Right.
David: And we had to change our name actually....
Nigel: Well there was, there was another group in the east end called The
Originals and we had to rename ourselves.
David: The New Originals.
Bands often change their names to differentiate themselves from other bands. Black Sabbath was Earth before they found another band named Earth was on the same bill as them. The trouble finding a great band name is the same as the problem with finding a great domain name, or a great product name. . . all the best ones seem to be taken. The problem might even be worse for bands because of the nature of a business where bands form and break up all the time, musicians are often in more than one band at any given time, and bands often perform under a different name for different audiences. In other words, the music business rips through band names at an insane rate.
The most common solution to a trademark issue involving a band is that whoever had it first gets to keep it and the second user has to change their name. Specific facts can change that general observation, or at least open up other possibilities, but usually the first to use it has greater rights to the name. Certainly, if your band is gaining steam, the last thing you want to do is change your name because a skiffle band half-way across the country started using the same name a week before you did.
It’s difficult for me to say when a band should trademark its name. Ideally, it’s done as early as possible, but for many bands that just doesn’t make sense. It takes a while to get a stable lineup and have some reliable income before a band really starts to think of themselves as a business and realize that they need to form a legal entity or at least have an operating agreement between members, decide how to handle copyrights, trademark their name, etc. Most bands never get to the point where any of this matters, the trick is knowing when to start thinking about these issues, and hopefully that point is before there is a problem.
If you’re looking for a name for your band I do have a couple suggestions: 1) make up a word, chances are that if you make up a word that you won’t find that someone else is already using it; 2) use a two or three word name; 3) search Google to see if someone is using the name; 4) search a band name registry like bandname.com, and bandnameprotection.com; and 5) have a trademark attorney search for similar names. Admittedly, few bands are going to take my advice of speaking with a trademark attorney, at least early in the game, but doing so is the best way of finding out about possible issues before they become a real problem.
Feb172010 | Steve O'Donnell
Two trademark cautionary tales
Over the past month I’ve had two people come to me with serious trademark issues that could have been easily avoided by speaking with a trademark attorney early in their branding process.
In the first instance, my client, a business that is primarily intrastate, but does a small amount of interstate commerce, received a letter from an attorney warning them that another business has filed a registration for the trademark and plans to enforce it if my client attempts to expand beyond their current geographic market. My client was using the name first in certain markets, so they can continue to use the name as they have been, but will run into trouble if they try to expand. My client doesn’t want to give up the name, but does have plans to expand, which is where their problem lies.
Since my client was engaged in a small amount of interstate commerce, they could have registered the trademark years before the other registrant came around. Unfortunately, they didn’t think about trademarking until they ran into this trouble. We’re still considering possible courses of action.
In the second instance, my client started using a trademark that is very similar to a mark that had already been registered. It was a completely innocent mistake and my client didn’t try to leech off the reputation of the other company, but that doesn’t matter. Trademark law attempts to eliminate consumer confusion and in this case, the marks were close enough to each other, and in the exact same market, that a determination of anything but trademark infringement is unlikely. That client has two options: fight it, or stop using the name. Fighting it is expensive and the likely outcome is not good, rolling over means that my client loses a large amount of their name recognition and google-juice.
If that client had engaged a trademark attorney to vet their proposed name or to try to register that trademark, the other user would likely have been identified and the problem avoided.
Compared to the time and money involved in creating and building a brand, having an attorney protect it is a small expense. Yet, without that relatively minor investment, all of the rest can be a waste.
Recent Posts
- Does downloading really hurt DVD sales?
- What happens to patents when a company closes.
- Bilski didn’t change much except my dinner plans
- When the "little guy's" copyright is infringed
- Is there a better way to police a trademark?
- Chick-Fil-A only wants you to eat more chicken.
- What I learned at the 2010 Launch Music Conference
- You probably don't want a provisional patent application
- Avoiding Trademark issues when naming your band
- Two trademark cautionary tales
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