Dec 08

Trademark Tips for Naming Your Start-up

By Dmitriy Molchanov and Jeffrey Bashara, Penn Law ’17

Whether you want to launch an app, a social startup, or a traditional storefront business, being aware of trademark issues at play will be crucial to protecting and growing your brand. Here, we focus on one of the earliest considerations:  choosing a name.

Conducting a thorough search, being deliberate, and picking an appropriate timing strategy are crucial.  Don’t just take our word for it – read the cautionary tales below.  Heavy hitters in technology, manufacturing, and pharmaceuticals – as well as smaller online businesses – have all learned the hard way.

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Dec 01

Does the Decision in Alice Leave Software Patents in Wonderland?

By Alex Lee, Penn Law ’17

John_Tenniel-_Alice's_mad_tea_party,_colour

Suppose I create a new computer program that gathers all the data on the personal computer of every student at Penn and uses a highly accurate matchmaking algorithm to pair students with their ideal Penn mate.  I call it “PENNty of Fish.”  For PENNty of Fish to work, students install the program on their personal computer, run the program, and discover their perfect match.  Privacy and creepiness issues aside – is PENNty of Fish patentable?  The recent Supreme Court decision in Alice Corp. v. CLS Bank Int’l provided some guidance, but left many questions unanswered.

 

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Nov 09

Beverages & Cheese: Act #2

Love cheese? Love hearing about Intellectual Property from your fellow classmates? Come to PIPG Beverages & Cheese #2. Listen and be informed on the newest and most interesting aspects of Copyright, Trademark, and Patent Law.

When: Thursday, November 13 @ 4:30 pm
Where: Silverman 240B

Nov 09

1L Summer Jobs Panel

Interested in Intellectual Property? Come listen to 2Ls and 3Ls describe the search for the “perfect” IP-focused 1L summer job.

When: Wednesday, November 12 @ 12:00 pm
Where: Silverman 240A

Lunch will be provided!

Nov 04

Animal-Generated Work: A Barrel of Monkeys for Copyright Law?

by Thomas Chisena, Penn Law ’16 and Jeffrey Bashara, Penn Law ’17.

Admit it.  You – like most of us – have probably turned your smartphone or camera around and taken a “selfie.”  In fact, a recent research study found that 55% of millennials (the generation spanning 18-33 year olds) have not only taken a selfie, but have also posted it online.   Overall, 26% of Americans have posted at least one selfie online through social media.  Selfies have become so popular that Merriam Webster added the term to its dictionary, and technology developers like Apple are seeking patents for the “selfie system[s] of the future.”

But selfies do more than just boost our vanity; they also pose novel intellectual property questions concerning both ownership and use.  One such dispute arose when our animal cousins jumped on the selfie bandwagon.  In Indonesia in 2011, two black macaque monkeys grabbed photographer David Slater’s camera and took several selfies of their own:

One-of-the-photos-taken-b-013

Slater then – in true selfie practice – posted them online.  The monkey selfies went viral with features in popular media, including The Guardian, The Telegraph, and The Huffington Post.

Then, like all things of even trivial fame, the monkey selfies found their way onto Wikipedia.  Wikipedia displayed the macaque selfies on Wikimedia – Wikipedia’s holding pen for images in the public domain.  Slater claims considerable, real damage from the free and unlicensed use of the monkey pictures.  Slater insists he owns the rights to the photos because he went through real expense to secure them.

But can a person acquire exclusive rights over animal generated work?

In the United States, 17 U.S.C. § 102 requires three criteria be satisfied to grant copyright protection.  First, the work must be “fixed in a tangible means of expression.”  Here, this element is not in dispute because photographs have long been recognized as a tangible means of expression.

Second, the work must be original.  To be original, the work must be independently created by the author (as opposed to copied from other works), and it must possess at least some minimal degree of creativity.  The amount of creativity required is generally a low bar – for example, the 11th Circuit held the term “You Are Special Today” engraved on a plate protectable.  McCulloch v. Albert E. Price, Inc., 823 F.2d 316 (9th Cir. 1987).  However, photography often poses special considerations.  The photographer must show that she did more than just lift the camera and shoot; she must show that she imparted some creative element to the photograph.

As anyone who has seen the masterpieces created by painting elephants will argue, animals can have creative inclinations.  However, no one can claim that every time an animal creates something it is enough to pass the required threshold.  For example, every time a dog barks in succession he is not writing a copyrightable song.  Whether Slater’s monkeys had some creative purpose in taking their selfie, or just lifted the camera and mechanically pressed the button is debatable (as much as this author wants to believe they actually did know what they were doing).

Lastly, and perhaps most problematically here, a work must be fixed by an author.  This element of copyright protection is particularly important because ownership of the selfie vests “initially in the author.”  17 U.S.C. § 201.  The author of a work is the person “who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.”  Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989).

Although this doctrine invites the “she who takes the selfie owns the selfie” mentality, precedent shows this mantra is not always true in photography.   For example, the Southern District of New York held that the director who planned the camera angles and sequence for a documentary film was the copyright author, not the diver that actually held the camera at the wreckage site.  Lindsay v. Wrecked & Abandoned Vessel R.M.S. TITANIC, No. 97 CIV. 9248 (HB), 1999 WL 816163, at *5–6 (S.D.N.Y. 1999).  If an artist can show that it was her idea captured, then she is the author, even if someone else physically clicked the button. Thus, if Slater could show that he came up with the idea for the monkey selfie, then even though the monkeys actually pushed the shutter button, Slater would remain the author.  Unfortunately, Slater has given no evidence of this genius plan; instead the monkeys themselves were seemingly inspired to take their own selfies.  Therefore, here, the monkeys are the authors and any ownership of the selfies would vest initially in them.

Pre-empting a full-fledged legal donnybrook over the monkey selfie, the U.S. Copyright Office released a public draft of the third edition of its Compendium of U.S. Copyright Office Practices this past August.  The issue was seemingly put to rest as it appeared to directly address the conundrum, asserting that under the new “Human Authorship Requirement,” the Copyright Office “will not register works created by nature, animals, or plants.”  Compendium of U.S. Copyright Practices, Third Edition, Public Draft, at 8–9 (August 19, 2014).  They explicitly cite the example of a “photograph taken by a monkey,” leaving no one in confusion about the rule’s impetus.   Additionally, they disavow other works of animal art such as the renowned elephant compositions and any claims based on naturally occurring formations like “driftwood that has been shaped by the ocean.”  Ultimately, this requirement necessitates creative input or intervention that differentiates from a process occurring randomly or automatically.

While this appears to have minimal repercussions going forward, aside from a fringe animal rights issue (PETA has not yet issued a statement), the concept enshrined does pose some interesting questions as technology continues to redefine the way we create.  Apple and other industry giants contemplate new ways that a machine can produce, leaving one to wonder about the ramifications of a masterpiece autonomously created through technology, but with an individual user’s device as the canvas.  Who would own such a piece?  With 3-D printing on the rise, the legal answer to this question may be quite complex.  However, until a future controversy sheds more light, we can take solace in knowing that animal-created art, including hilarious monkey selfies, belongs to us all.

Mar 20

Photos from the 2014 Symposium

Photos from the 7th Annual PIPG Symposium

Patent Law: The New, the Disruptive, & the Debate

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Mar 20

2014 Symposium – Patent Law: The New, The Disruptive, & The Debate

7th Annual PIPG Symposium

Patent Law: The New, the Disruptive, & the Debate

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Mar 06

Inter Partes Reviews – How Will They Affect the Future of Patent Litigation?

by Douglas Wentzel, Penn Law ’16.

When the America Invents Act (AIA) went into full effect on March 16, 2013, it brought along with it some major changes to American patent law. The most significant change was to switch the American first-to-invent patent-filing system to align with the system used around the world, first-to-file. Along with this major change came a new kind of “post-grant” proceeding called inter partes review, or IPR. Post-grant review proceedings are used to allow parties to challenge the validity of recently granted patents outside of federal court – in the Patent and Trademark Office.

The IPR proceedings have a number of features that distinguish them from the post-grant reviews of the past and from federal court litigation. IPRs promise decisions on the validity of a patent within 12-18 months of the filing for review. Such relatively quick turnaround, in an age when getting a patent filed takes upwards of three years, has been made possible by lowering the claimant’s burden of persuasion on the invalidity claim from “clear and convincing” to “preponderance of the evidence” and also by allowing for only limited discovery. By charging a minimum of $27,200 for IPRs, it would seem initially that such a review is much cheaper than litigating in federal court as well.

Despite the efficiencies that IPRs aimed to create for challenging patent validity, the fact that these proceedings are still relatively new means that attorneys need to prepare for them more and in different ways than they may have for post-grant proceedings in the past. More time spent means more cost to the client, which has the potential to destroy the cost savings of IPRs. Currently, factoring in reasonable attorney’s fees to prepare the IPR petition – around $75,000 – brings the total for these reviews to over $100,000. Because of lawyers’ inexperience with these proceedings, they still have not fully embraced IPRs, and there is good reason for their hesitation. While IPR decisions are appealable to the federal circuit, IPRs have estoppel effects, which could be very bad news for claimants. The AIA states that on appeal, the claimant in an IPR cannot allege that a patent claim is invalid “on any ground that the petitioner raised or reasonably could have raised” during the IPR. 35 U.S.C. §315(e)(2). So, if a claimant does not succeed on their invalidity claim in the IPR, they may be estopped from alleging their only bases of invalidity in any subsequent actions, thereby cutting them off from having a method of challenging the validity of what may very well be an invalid patent.

While it is easy to dwell on the negative aspects of such a new post-grant review, it seems reasonable to expect that as time goes on and more firms and lawyers get comfortable with the proceedings they will lower the price of their services while their preparation time is drastically reduced as well. As with many things though, only time will tell.

For more information on the new IPR regime, see http://www.dlapiper.com/the-impact-of-inter-partes-review-on-patent-litigation/ and http://www.postgrantproceedings.com/topics/article-CMR_PGR_IPR.html both of which served as sources for much of the information in this post.

Feb 11

When Copyrights Infringe the Law

Ignorance is no excuse for breaking the law. After all, the law is readily available. Unless it’s not.

In an engaging and interesting post on RegBlog, Jessica Bassett discusses the current debate in a subcommittee of the U.S. House of Representatives over federal standards that are not spelled out in the Code of Federal Regulations (uncopyrighted and free for all to access) but instead incorporated in the Code by reference to a private standard-setting organization responsible for setting those standards but under no obligation to provide them for free. Unsurprisingly, this has sparked some debate in the subcommittee responsible for reforming the copyright law. For the full discussion and the interesting arguments for and against “secret laws,” see Jessica Bassett, House Subcommittee Airs Debate Over Secret Law, REGBLOG (Feb. 11, 2014), http://www.regblog.org/2014/02/11-bassett-incorporation-by-reference-hearing.html.

Jan 28

IP Rights at Issue in the Largest Free-Trade Pact in History: Debating a Global Strengthening of Intellectual Property Rights in the TPP

By Sherry Shen, L ’16

What do Salt Lake City and Singapore have in common? Normally not very much, but officials from the United States, Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, and Vietnam have been burning the midnight oil in these two cities in order to conclude one of the most pivotal and sweeping free-trade pacts in history. The countries involved have a combined GDP of $28 trillion dollars or roughly 40% of the world’s GDP, and the agreement, known as the Trans-Pacific Partnership (TPP), seeks to enhance trade and investment among all the TPP partner countries. In the course of negotiations, some items that have drawn the most controversy, and still remain to be resolved, concern intellectual property.

Critics of the negotiations include internet freedom activists and advocacy groups who largely oppose the TPP on the grounds that it goes too far in mandating enforcement and criminal prosecution of those who unknowingly violate intellectual property rights. The expansiveness of the agreement and the fact that the negotiations are highly secretive have further fueled critic’s concerns that these negotiations will have extensive negative ramifications for users’ freedom of speech and right to privacy, as well as hinder  innovation. While drafts of the agreement have never been officially released to the public, drafts of the Intellectual Property Chapter that have surfaced on Wikileaks indicate that U.S. negotiators are pushing for the adoption of copyright measures far more restrictive than currently required by international treaties. Because all partner countries will be required to conform their domestic laws to the provisions of the Agreement, these critics contend that the negotiations threaten to further entrench controversial aspects of US copyright law, such as the Digital Millennium Copyright Act (DMCA).

In contrast, proponents of the agreement argue that in order to ensure the efficacy of the TPP, the United States needs to continue to insist on strong intellectual protections in order to foster innovation and job creation. These proponents insist that strong protections on copyrighted music and movies, patents, and pharmaceutical data protection are necessary because they provide the incentives required for innovators and scientists to invest in new ideas and research. Furthermore, because intellectual-property driven businesses are responsible for over 40 million American jobs, weaker intellectual property laws pose a serious threat.

While some of the arguments for and against stronger intellectual property rights have been aired in the past, what is particularly noteworthy about these discussions is the potential impact the outcome these negotiations will ultimately have both in the United States and globally. The Economist may have best captured the tension of the situation:

 “Some 100 Japanese officials descended on the tiny sultanate of Brunei in Borneo
this week to pursue it. Malaysian politicians are working themselves up about the
threat it poses. And, in Washington, at the office of the United States trade
representative, “the lights are on all night; they’re sending out for pizzas,” says
Mike Moore, New Zealand’s ambassador.”

The ultimate result of these negotiations remains to be determined, but it is certainly an outcome worth following, and we will be tracking their progress on the blog as more details are finalized and released.

For more on this topic, see http://wikileaks.org/tpp-enviro/ for the full leaked chapter on intellectual property chapter of the TPP.

For more sources that go more in depth into the differing opinions on intellectual property rights in the TPP, see the following:

(1)  The Economist provides a broad overview. http://www.economist.com/news/asia/21583995-negotiations-secret-optimism-about-path-breaking-trade-deal-hard-share-trade

(2)  The Electronic Frontier Foundation advocates for weaker intellectual property provisions and more disclosure of the TPP negotiation process. https://www.eff.org/issues/tpp,

(3)  Curtis Bramble, president pro tem of the Utah Senate and chair of the Intellectual Property Subcommittee of the International Relations Task Force at the American Legislative Exchange Council present his opinion on why intellectual property rights should be strengthened in the TPP.

http://www.sltrib.com/sltrib/opinion/57400654-82/trade-intellectual-property-american.html.csp

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