November 14th, 2014
– Third Party Challenges to Pending Patent Applications –
— New Procedure Under the America Invents Act –
By: Sharon Adams
November 14, 2014
One addition to U.S. patent law provided by the American Invents Act is the ability for a third party to challenge a pending patent application. See, 35 USC § 122(e). Using this procedure, while an application is being examined, a third party may submit printed publications, along with a concise description of the relevance of each document to the U.S. Patent & Trademark Office for consideration (“Submission”).
This procedure is ideal for businesses that wish to challenge a competitor’s pending application while it is being examined and before it may issue into a patent. Competitors are often knowledgeable about what is prior art, and may be more knowledgeable than a patent application examiner. Competitors work daily in the field, and often know exactly when something new arrives on the scene. Competitors also may get wind of pending patent applications, and may wish to challenge the application immediately. Read the rest of this entry »
October 29th, 2014
By: Sharon Adams
Oct. 23, 2014
The recent case of Noriega v. Activision Blizzard presents the question: Does infamy give rise to the right of publicity?
Manuel Noriega, the former Panamanian dictator, filed suit against Activision Blizzard, Inc. in July of this year, claiming that Activision’s use of his image and likeness in the wildly popular video game Call of Duty: Black Ops II violates his rights of publicity under California Civil Code § 3344, and common law. In this video game, Noriega is depicted as a kidnapper, murderer and enemy of the state, according to Noriega’s complaint, and one objective of the game is to capture Noriega.
Former New York City Mayor Rudolf Giuliani is defending Activision, and argues that Noriega’s lawsuit is meritless. He recently appeared in Los Angeles superior court, seeking dismissal of Noriega’s case. He argued that Noriega, as a historical figure, has no right restrict the First Amendment rights of Activision. Well, that is the job of a defense attorney — to argue and cast doubt. But, does Civil Code § 3344 really say that?
Statutory Right of Publicity
Civil Code § 3344 prohibits the use of:
“another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling … without such person’s prior consent”.
There is no provision that prohibits historical or public figures from seeking damages under this section. Section 3344 does allow the use of images of public or historical figures in the news, sports broadcasts, and political campaigns. But, when such use is for the purpose of selling products, then Civil Code § 3344 can be used to prohibit use of a public figure’s image, as shown by some recent cases. In these cases, living public figures have received compensation for violations of their rights of publicity.
For example, recently, college athletes received a settlement of $40 million from Electronic Arts, which is part of Activision. The athletes made the same claims being asserted by Noriega — violation of their publicity rights under Civil Code § 3344, based on Activision’s use of the athletes’ images in video games such as NCAA® Football.
In another similar case, the rock band No Doubt featuring lead singer Gwen Stefani, settled its claims for violation of publicity rights against Activision. In this case, Activision had a license agreement with the band, granting Activision rights to use band member images. However, the complaint alleged that Activision used band member avatars in violation of the license terms. In addition, the band claimed violation of their statutory and common law rights of publication, and that Activision had engaged in unfair business practices in violation of Business & Professions Code § 17220 (these are the same claims being made by Noriega).
In the No Doubt case, the California appellate court held that the First Amendment did not protect Activision’s use of images of the band. The court recognized the tension between the First Amendment and the right of publicity, writing that: “the state’s interest in preventing the outright misappropriation of such intellectual property by others is not automatically trumped by the interest in free expression or dissemination of information.” The court appeared to base its decision in part on the fact that No Doubt band members are celebrities, noting that:
“often considerable money, time and energy are needed to develop one’s prominence in a particular field. Years of labor may be required before one’s skill, reputation, notoriety or virtues are sufficiently developed to permit an economic return.” (Emphasis added.)
In Noriega’s case, Giuliani also argued that Activision’s use of Noriega’s images is transformative, and therefore protected by the First Amendment. This exact issue was also addressed in the No Doubt case. There, the court acknowledged the creative elements of the game, including the fanciful venues. But, the court held that there was no transformation of the band avatars, finding that “the game does not permit players to alter the No Doubt avatars in any respect”. Because of this, the court rejected Activision’s “transformative use” defense, and found in favor of the band.
Gwen Stefani, in Band Hero
Noriega’s complaint alleges that he is “readily identifiable in the video game” and there is no way to alter the Noriega avatar. Thus, there may not be a “transformative use” defense in this case, as well. However, this is a question for the court to decide.
It is clear that when public figures that have spent years cultivating their public image are protected by the statutory and common law rights of publicity. It remains to be seen whether Noriega’s “notoriety” entitles him to the same rights as celebrities or college athletes.
October 8th, 2014
By Daniel Richardson
Beginning July 1, 2015, nearly all California employers will be required to provide full-time and part-time employees with a minimum of three days of paid sick leave per year.
The Healthy Workplaces, Healthy Families Act of 2014, signed into law by Governor Brown on September 10th, makes California the second state (the other is Connecticut) to require certain employers to provide employees with paid sick leave. In addition, the new law mandates notice and record-keeping obligations on employers. California employers should become familiar with the law’s requirements before it goes into effect next July to avoid administrative fines and other civil penalties. This article will provide an overview of some of the new law’s requirements.
Employers and Employees Covered by the New Law
The new law applies to nearly all California employees regardless of the size of the employer. There are, however, some carve-outs in the law for employees covered by collective bargaining agreements. For instance, an employee covered by a valid collective bargaining agreement is not subject to the new law if the agreement expressly provides for the wages, hours of work, working conditions, paid sick days, arbitration of disputes concerning the use of sick days, premium wage rates for all overtime hours worked, and a regular hourly rate of pay of not less than 30 percent more than the state minimum wage rate. Construction employees covered by a collective bargaining agreements with the same provisions are also exempt from the law if the collective bargaining agreement was entered into before January 1, 2015 or expressly waives the new law in clear and unambiguous terms.
Additionally, the law also exempts providers of in-home supportive services and certain individuals employed by an air carrier as a flight deck or cabin crew member. Read the rest of this entry »
Obtaining ® For Your Trademark – Classification is Crucial – New Trademark Guidelines Regarding Service Mark Classification
October 2nd, 2014
By: Sharon Adams
Every trademark application must identify the exact mark, and the goods or services that are associated with the mark. The Trademark Examination Guide (released in August 2014) makes clear that improper classification of the goods or services may result in rejection of the trademark application.
The Guidelines state:
To be acceptable, a service-mark specimen must show the mark sought to be registered used in a manner that demonstrates direct association between the mark and the services. Guidelines 3-14, §II, (emphasis added).
Correct Classification Is Essential To Success of Your Trademark Application!
Every registered trademark must have a “specimen” showing use of the trademark in commerce for the specifically claimed goods or services. Goods or services are grouped by international trademark classification. There must be a clear association between use of mark on the submitted specimen and the classification of goods or services identified in the trademark application.
Applicants must pay a fee for each classification selected, therefore many applicants prefer to limit the number of classifications in a trademark application, often selecting only one classification. It is crucial that the selected classification(s) be correct, or the applicant will have to start over again, and pay a new fee. Read the rest of this entry »
September 17th, 2014
California Governor Jerry Brown has signed new legislation that voids language in contracts that prevents a consumer from commenting on the performance of a product or service.
New Cal. Civ. Code § 1670.8 states that a“contract or proposed contract for the sale or lease of consumer goods or services may not include a provision waiving the consumer’s right to make any statement regarding the seller or lessor or its employees or agents, or concerning the goods or services.” The hotel in Hudson, New York that would withhold $500 from deposits for every negative review by someone in a wedding party had best be glad it is not on the Left Coast.
Some may worry that this could legalize defamation (which consists of oral slander or recorded libel). It doesn’t. Cal. Civ. Code § 1670.8 only prohibits provisions waiving rights to make statements. Defamatory statements are still prohibited under Cal. Civ. Code §§ 44-48a.
Over three centuries ago, Jonathan Swift said that “falsehood flies, and the truth comes limping after it.” In the social media age, where negative comments can be published immediately to thousands of potential customers, businesses have to resist the temptation to squash the negative comments. The better practice is to show the business is attuned to the criticism, and responds to the reasonable expectation of the customer. Potential customers appreciate businesses that show some flexibility; they don’t appreciate “I’m right, and you’re not.”
September 10th, 2014
By: Sharon Adams
A product may be labeled as “patent pending” once a patent application has been filed, and until a patent is issued or the application is abandoned. This includes all types of patent applications, including provisional applications. Filing the application is all that is required.
If a patent application is abandoned for any reason, the product may not be labeled as “patent pending” and may be subject to a fine for improper use of the phrase. Likewise, “patent pending” is no longer appropriate if the patent application results in an issued patent; instead the product should be labeled as patented and provide the unique patent number.
An invention that’s labeled as “patent pending” has provisional rights (provisional rights are distinct from, and not to be confused with, provisional applications, mentioned above). These provisional rights include the right to send a cease & desist letter to potential infringers. However, there is no right to collect damages for infringement unless and until a patent actually issues.
Four Advantages to Patent Pending:
- It may be the highest level of patent protection you ever get. Statistics from the U.S. Patent & Trademark Office indicate that roughly 50% of all patent applications result in an issued patent. That includes all the people who absolutely believed that their invention was completely unique and patentable. Therefore, the only time a product may ever have the word “patent” on the product (as in “patent pending”) is during the pendency of the patent application.
- It may deter some infringers. Many people are unsure exactly what “patent pending” means, and may assume that the product is patented, or is about to be patented.
- It provides notice to competitors that there is a pending application covering the product. In today’s market environment, with the timeline needed to develop and launch a product, competing businesses may choose to alter business plans, rather than risk developing a product that may infringe an existing product on the shelves that is labeled “patent pending”.
- Getting your product to the market with the label “patent pending” allows you to market get actual sales of the product. This is good for your bottom line! In addition, “commercial success” may be used as evidence to overcome a rejection of the pending application for non-obviousness.
How to Obtain
Simply file a patent application online or contact us at Bay Oak Law for help filing your patent application.
September 10th, 2014
By: Daniel Richardson
Although virtual currencies are not new they have rapidly evolved in recent years and their use is entering the financial mainstream. Bitcoin is the most widely used of the virtual currencies and is accepted by over 10,000 online retailers including Overstock.com and Expedia.com. So, what is Bitcoin? Is it currency, property, a security, or a wholly new financial instrument altogether? More importantly, what are the upsides and pitfalls of using Bitcoin?
What are Bitcoins and How do You Get Them? [i]
Bitcoin is used as a substitute for real currency. Bitcoin has no physical presence and is not backed by gold, U.S. Dollars, or any other thing of value. Instead, a database of Bitcoins is maintained over a peer-to-peer network where every transaction is documented in what is known as a “blockchain.” Bitcoin and other virtual currencies like it are known as cryptocurrency because the validity of each Bitcoin is verified through cryptography.
Bitcoins are “mined” by sophisticated computers using free software that solves a series of complex algorithms that verify a Bitcoin transaction. When an equation is solved, the “miners” that solved the equation first extract new Bitcoins in blocks of 25. The number of Bitcoins that can be mined is limited by the Bitcoin protocol which requires each equation to be successively harder, thus limiting the total number of Bitcoins in circulation. The Bitcoin program is designed to only allow 21 million Bitcoins into circulation. Currently, there are just over 12.66 million Bitcoins in circulation with the final Bitcoin expected to be mined in 2140. Although the software to mine Bitcoins is free, the computing power required to mine the coins is substantial and off-the-shelf computers do not have the power to mine for Bitcoins. However, all is not lost for prospective miners on a budget. Small miners can contribute their computing power to pools of other miners on sites such as Slush’s Pool and receive a percentage of Bitcoins awarded based on the computing power they contribute. Read the rest of this entry »
September 9th, 2014
One characteristic of mobsters is the threat of something bad happening if you don’t do what the mobster wants you to do. It is even an unforgettable part of The Godfather: when the Hollywood studio head wouldn’t let Johnny, Don Corleone’s godson, star in a movie, he wakes up with the bloody head of his prize stallion in his bed. The legal world sees it, too, but judges are increasingly wise to the wiseguys.
In one recent copyright case, the wiseguy was the estate of Arthur Conan Doyle, the creator of Sherlock Holmes. Holmes first appeared in The Strand magazine in 1887 , and most of the Sherlock Holmes canon are in the public domain. However, because Doyle published a few Holmes stories in the mid-1920s, those few are still copyrighted in the United States.
Sherlock Holmes has had a renaissance in recent years, cropping up on television in both the United Kingdom and the US, to books by numerous authors, including a series by Bay Area author Laurie R King that imagines a pluckish San Francisco girl encountering the great detective during World War I.
One such author, Leslie Klinger, challenged the Doyle Estate’s practice of trying to force authors to pay a modest license fee, if only to avoid the possibility of litigating the issue. Mr. Klinger won a declaratory judgment in the trial court that he was free to use the “classic” (written before the 1920s) Sherlock Holmes. When the Conan Doyle estate appealed, Judge (and prolific author) Richard Posner affirmed the trial court in Klinger v. Conan Doyle Estate, finding no “basis in statute or case law for extending a copyright beyond its expiration. When a story falls into the public domain, story elements—including characters covered by the expired copyright—become fair game for follow-on authors.” Read the rest of this entry »
September 5th, 2014
The news has been dreary for some time now, and September has not been friendly in the recent past. Under all that gloom, it is easy to forget that there is a lot of good news out there:
- Lower Crime. Accounting for population growth, violent crime is down 48 percent over the last 20 years. The FBI recorded 1,926,017 violent crimes in 1993. In 2012, the last complete years records are currently available, there were only 1,214,462, even though the population grew over 21% during that time. Homicide, rape, robbery, aggravated assault – all down. Every violent crime is a tragedy for the victim and the victim’s family and friends, but more than 700,000 fewer violent crimes a year is unmitigated good news.
- Drunk driving deaths have declined more than 50 percent since 1982. That’s 30 people every day who are not killed by a drunk driver. Thank you, Mothers Against Drunk Driving.
- Free Flowing Information. Virtually every person over the age of five has immediate access to information – something unimaginable 30 years ago. If Siri or Google Plus on your smartphone cannot understand your question, a search engine is still available to track down what you want to know. Beats an out-of-date encyclopedia any day. Unfortunately, the Cliff Clavins of the world still exist.
- Air — Cleaner Than Ever. In the Los Angeles area – long considered the worst of the worst – the air is much cleaner than it was fifty years ago, even though the population has tripled since then. Vehicle-related pollutants are only two percent – 2%! – of what they were in the 1960s, according to Ilana Pollack, a scientist at the Cooperative Institute for Research in Environmental Sciences. As someone who grew up in the smog of 1970s Los Angeles, the lack of the brown stain in the air when in the Southland is a welcome change. We had more than 100 stage 1 air alerts every year; there has only been one (in 2003) in the LA area since 1998. Breathing clean air is definitely not overrated. (For those who claim it was better before cars, try living with horses for awhile. You remove the pollution with a shovel.)
- Lower Oil Imports. America is importing far less oil from unstable regions than 20 years ago. The United States is getting a lot more oil from domestic sources like Texas and North Dakota, and from North American neighbors, Canada and Mexico, while consumption is modestly declining. The US now produces more oil domestically than it imports, which hasn’t been true since the mid-1990s. As of 2013, fuel economy of US-sold vehicles improved more than 19 percent since 2007, meaning that fuel consumption by US drivers has declined 11 percent in less than a decade. The less oil the US uses, the less money its sends to those who do not share our values.
- Infant mortality rates have plunged around the globe, but even in the United States, it has averaged a decline of more than 2.5% per year for the period between 1937 and 2007. In 1937, more than 55 of every 1000 children born in the United States died; in 2007, that rate was just 6.9. The 2.5% annual decline is for both whites and blacks in the United States. Yes, there is still work to do, but this is pure wonder.
- Study Abroad. While American universities are well-known for hosting the top students from around the world, Americans studying abroad have tripled in the last two decades. Encountering new cultures on their home field enables American students to be better workers later, when they have jobs dealing with those cultures. As foreign students (who have been increasing at 20% annual rates) prepare to take exams so that they can study in American universities, they are studying the foundations of American democracy, like the Declaration of Independence and the Bill of Rights. Regardless of whether they are studying or staying here, those values will stick with them.
- Teens Grow Up. Teenage pregnancy, abortion, and birth rates are at new lows. Whether this is because of more contraceptive use, more care by the young (both male and female), or just the MTV show “16 and Pregnant” showing the sacrifices of parenthood, this means a higher proportion of infants are being born to those in a position to take good care of them.
- Live Longer, Better. At the other end of the spectrum, life expectancy in the United States is continuing to increase. In 1900, a US male could expect to live 46.3 years; a woman, 51.08 years. In 1960, average male life expectancy was 66.6 years, for females, it was 73.1 years. In 2008, it was 78.0 years for men, 80.5 years for women. The virtuous circle: longer lives equals more grandparents; more grandparents means happier children.
These good news stories lack the drama of conflict. Whether it is late night explosions in the Middle East, natural disasters in places you’ve never seen before, or the latest televised car chase, it is easy to believe that things are going to hell in a hand basket. The things that are getting better lack the immediate drama but are making lives better all the same.
September 3rd, 2014
Employers have long known that they have to reimburse employees for out-of-pocket expenses like mileage or meals with clients. Now employers can add cell phone costs, when an employee uses his or her own cell phone and plan.
Employers have long provided landlines and cell phones to their employees. However, cell phones are already in nearly every pocket or backpack. Employers are increasingly relying on the employees’ personal phones for contact, even if the employee is not regularly out in the field.
Cal. Lab. Code § 2802(a) states: “An employer shall indemnify his or her employee for all necessary expenditures or losses incurred by the employee in direct consequence of the discharge of his or her duties, or of his or her obedience to the directions of the employer . . . .”
Cal. Lab. Code § 2802(c) defines “necessary expenditures” as “all reasonable costs, including, but not limited to, attorney’s fees incurred by the employee enforcing the rights granted by this section.”
In August, 2014, the Second District Court of Appeals in California ruled that employers have to reimburse employees who use their own cell phones as part of their job. In Cochran v. Schwan’s Home Service, 2014 Cal. App. LEXIS 724, 2014 WL 3965240, the appellate court found that
“The threshold question in this case is this: Does an employer always have to reimburse an employee for the reasonable expense of the mandatory use of a personal cell phone, or is the reimbursement obligation limited to the situation in which the employee incurred an extra expense that he or she would not have otherwise incurred absent the job? The answer is that reimbursement is always required. Otherwise, the employer would receive a windfall because it would be passing its operating expenses onto the employee. Thus, to be in compliance with section 2802, the employer must pay some reasonable percentage of the employee’s cell phone bill.”
(Emphasis added). This ruling applies even if the employee is not personally liable for the costs of the cell phone plan – for example, when the employee’s parent pays for the cell phone plan.
Employers can avoid looking at this as yet another burden placed upon them, and instead look at this as an opportunity to provide a tax-free fringe benefit to their employees. The Internal Revenue Service has already clarified the tax treatment of cell phone reimbursements. The Small Business Jobs Act of 2010 removed employer-provided cell phones from the roll of “listed property,” which normally requires extra record keeping. Employer-provided cell phones are no longer taxable to the employee if they are for business purposes. Similarly, reimbursements for business-related cell phone use will be treated as a de minimis fringe benefit that does not have to be reported as part of the employee’s income.
Employers may consider the question of cell phone usage reimbursement itself of minimal interest. However, under Cal. Lab. Code § 2802, employees can sue for up to three years of past reimbursement, and be awarded their attorneys’ fees and costs. For a company with fifty employees using their own cell phones, the three years’ past usage (at $50/month) would quickly rise to $90,000 – and attorneys’ fees could be twice that. This will be a lucrative area for employees’ lawyers. Employers will be wise to develop a policy that avoids a lawsuit. The Cochran court left the question of what a reasonable percentage of a cell phone plan is for another day, leaving employers to decide a reasonable reimbursement. Spending a little time now, putting a good reimbursement policy in place, can pay off for a long time into the future, while improving employee morale.