July 30th, 2014
If an executive agency, the Trademark Trial and Appeal Board (“TTAB”) decides an issue, are courts bound to follow that decision? The circuit courts of appeal have multiple conclusions, but the Supreme Court seems poised to resolve this in the next year, because of its decision to hear a case called B&B Hardware v. Hargis Industries. At stake could well be both the right to trial by jury, and the power of the judiciary.
The President, subject to the advice and consent of the Senate, appoints the Secretary of Commerce, who then appoints the TTAB judges. Most of the 21 current TTAB judges are former TTAB examining and interlocutory attorneys; few have much experience outside of the United States Patent & Trademark Office. Their powers derive from the President’s powers under Article II of the Constitution. Federal courts derive their powers from Article III of the Constitution. The President specifically appoints federal judges, and the Senate gives its advice and consent. While few Article III judges have the depth of trademark registration experience that most TTAB judges have, they do have much broader experiences, both as judges and in their former careers as lawyers.
Further, trademark infringement litigants have the right to a trial by jury under the Seventh Amendment. The Ninth Circuit Manual of Model Jury Instructions has its own jury instruction (No. 15.16) for establishing likelihood of confusion, which lays out the Ninth Circuit’s traditional Sleekcraft test. Requiring federal courts to give preclusive effect to TTAB decisions would rob a jury of its right to decide matters, and instead grant that right to an executive agency. Such a ruling would violate both the Constitution’s Seventh Amendment, and the Separation of Powers doctrine. Read the rest of this entry »
July 5th, 2014
Biologists assure us that scavengers are an important part of the ecosystem, because they consume the carrion so that the material can enter the food chain again. In the financial world, scavengers take the form of buyers of bad debt, but there is a difference – the carrion, regular people in difficult circumstances, are still very much alive.
The plunge from the easy money of the 2004-2008 era to The Great Recession hurt a lot of people. The easy credit of plastic morphed into a nightmare of bills and the inability to make even minimum payments. People who lost their jobs or were unable to afford finance charges that, in some cases, exceeded 20% annually, were saddled with debt that they couldn’t pay back, and no one gave them a break. However, the banks that initially extended the bad debt, at worst case, were folded into healthy banks, and usually sold their bad debt at a deep discount – as low as 1%-2% of the total value – to companies that make their living suing those who can’t pay back their debt. How does someone in tough circumstances fight back against the hyenas? Read the rest of this entry »
June 26th, 2014
Look at the picture: what is it? A duck? A rabbit? Both? Depending on what hunting season it happens to be, a lot can depend on the answer.
The same is true in copyright. Cable companies rebroadcast transmissions to their customers from broadcasters. Originally, the Supreme Court ruled that was acceptable, but Congress overhauled copyright law to make it unacceptable without a retransmission fee. On the other hand, using your personal tape deck to record a show that is broadcast over the airwaves to you, and then watching the show later is permissible “time-shifting,” as was found in Sony Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984).
On June 25, 2014, the US Supreme Court handed down its decision in ABC, Inc. v. Aereo, Inc.. Aereo allowed viewers to record television programs broadcast over the airwaves, and then watch the programs at a time, and on a platform, convenient to the viewer. Aereo did not pay retransmission fees that broadcast networks demand of cable operators. So the question became: was Aereo a duck — a retransmitter, or a rabbit — a timeshifter? Read the rest of this entry »
June 23rd, 2014
Ah, the conundrums of a child’s summer: butterscotch, or strawberry? Mint chocolate chip, or triple fudge? Cone or cup? Businesses have their less-tasty choices, but they are still there: what flavor is your non-disclosure agreement? There are almost as many options for NDAs as there are at your local ice-cream store.
NDAs are not one-size fits all. They need to be tailored to the situation. Here are some questions to ask about an NDA:
- Who is covered? If someone presents an NDA to you, does it cover only the other’s sides secrets, or does it cover yours as well? If you offhandedly mention the secret of your competitive advantage, while the other side is discussing theirs, you don’t want your secret exposed, while theirs is protected.
- What secrets are being covered? Is it about a specific type of information, like formulations, or financial data, or is it broader, so that anything you see, hear, taste, or feel is protected? If you walk across the production line and notice that they are using machinery in a unique way, are you prevented from using what you noticed?
- Is there a duty to return or destroy information? If you are giving out information, you probably don’t want it lying around in the other side’s files and computers forever. If the information is to be destroyed, it is usually not enough to assume that the other side will do it; there ought to be a positive representation that the information no longer exists, and was not copied.
- How long does the non-disclosure last? The NDA should identify how long it lasts, recognizing that different information has different periods of potency. Manufacturing methods can be useful for a very long time; customer research may be valueless after 12 months. If you are asking the other side to promise not to disclose matters, you want something that will last long enough that there will be no competitive advantage.
- Is there a geographic limitation to the information? Is it banned in one area, but not another?
- Who is obligated to protect information? Does the NDA cover subsidiaries, parent companies, or joint venturers? Is there a specific competitor you want to make sure does not get the information, even if it buys the other side later? Are there specific individuals on the other side that you want to be the only ones to see the information? If so, that needs to be in the NDA.
- What happens if the NDA’s provisions are violated? Is there a mandatory damage provision that lawyers call “liquidated damages?” How and where is a violation proven – in a court of law, or in mandatory arbitration? Does the loser have to pay the winner’s attorneys’ fees? Often, the question of attorneys’ fees controls the decision whether to take it to court.
One of the delights of the ice cream shop is selecting your serving size and flavor. No one goes in to get whatever the kid behind the counter is willing to give. The same should be true for an NDA – it should be based upon your selections, not on what is given to you. While no NDA could taste as delicious as a double scoop of strawberry ice cream on a sweltering day, the sensation of getting what you want can be just as pleasant.
June 13th, 2014
By Daniel Richardson
Is your employee handbook up to date? An up to date employee handbook is important because it outlines for the employee the employer’s policies and procedures as well as establishing the expected standards. Using an employee handbook from the outset of the employment relationship to establish expected standards can be invaluable in litigation if the employment relationship turns sour. Sometimes, an employment handbook may even create an enforceable contract between the employer and employee.
The employment law landscape is constantly evolving. Employers need to ensure that their employee handbooks are updated to reflect new legal developments. Below are some examples of employment law developments that employers should consider incorporating into their employee handbooks. Read the rest of this entry »
June 6th, 2014
The FBI has asked us all to be on the lookout for foreign intelligence agents — in the form of American students who interned overseas.
The FBI tells the story of Glenn Shriver, a former college student from Michigan who learned Mandarin and lived in China in 2004. He made some friends who encouraged him to find a job with the US government. He received some $70,000 merely to apply for such a job, but by the time the FBI arrested him, he realized that his friends were actually intelligence agents wanting to place a mole inside US agencies.
National agencies are not the only targets. US companies are also subject to foreign espionage. Just last month, the Justice Department announced indictments of five members of China’s military for stealing US companies’ trade secrets. US companies, both big and small, need to understand that foreign competitors may have government assistance in accessing American trade secrets.
Still, little beats the morality tale of an American student seduced by success. When nothing is on the 570 channels you commonly flip through, when HBO isn’t running Game of Thrones, our FBI friends have a video for your enjoyment:
May 23rd, 2014
By: Sharon Adams
The U. S. Patent and Trademark Office (USPTO) recently commemorated the issuance of the 700,000th design patent for a “Hand-Held Learning Apparatus” currently assigned to the Emeryville, California-based LeapFrog Enterprises, Inc.
A design patent often is an excellent intellectual property solution for many small businesses, especially businesses selling a product. If the business has a unique design for its product, or a unique design imprinted on the surface of an object, a design patent may be the solution to obtaining relatively inexpensive intellectual property protection.
Design patents, like all patents, have certain benefits and certain drawbacks. Some benefits include lower USPTO filing fees, and a relatively rapid turn around time at the USPTO, with an average pendency of 15 months. See, Design Patents Report, 1988-2013 – USPTO Electronic Information Products Division – PTMT. In addition, there are no USPTO maintenance fees once a design patent has issued.
A potential drawback to design patents is a shorter patent term. The design patent term is 14 years, in contrast with utility patents, which have a patent term of 20 years.
A design patent covers only the design actually shown in the patent drawings. Federal law limits the scope of a design patent claim to the ornamental design disclosed in the patent drawings.
37 C.F.R. 1.153 … claim…
- (a) … The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.
As stated at the ceremony announcing the 700,000th design patent: “Design patents play a critical role in ensuring that America’s intellectual property system continues to be a catalyst for American companies and entrepreneurs to innovate,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle Lee. “The design area has increased from twenty five and a half thousand applications in 2009 to just over thirty five thousand filings in 2013.”
Please let us know if you are interested in finding out whether a design patent could benefit your business.
May 23rd, 2014
Our friends at Boyer & Conniff shared this warning about IRS scams:
The IRS does not initiate contact with taxpayers to request personal or financial information by email, texting, or any social media.
The IRS has been alerted to a new email phishing scam. The emails appear to be from the IRS and include a link to a bogus website intended to mirror the official IRS web site. These emails contain the direction “you are to update your IRS e-file immediately.” The emails mention USA.gov and IRSgov, though notably, not IRS.gov (IRS-dot-gov). These emails are not coming from the IRS.
Taxpayers who get these messages should not respond to the email or click on the links. Instead, they should forward the scam emails to the IRS at email@example.com. For more information, visit the IRS’ Report Phishing web page at www.irs.gov/uac/Report-Phishing. This page also contains instructions for reporting other kinds of suspicious communication such as letters, faxes or texts claiming to be from the IRS.
May 16th, 2014
Awhile ago, I wrote about how defendants can fight off bogus trade secret misappropriation charges by using California law to force plaintiffs to identify their trade secrets with particularity. Now, a recent San Mateo County case, Altavion v. Konica Minolta Systems Laboratory, Inc. , shows how a plaintiff can identify trade secrets with reasonable particularity on the way to winning a $4.8 million trade secret misappropriation case.
Plaintiff Altavion developed a digital stamping technology, or DST, that both authenticates documents and shows any alterations. It disclosed the information to KMSL under a non-disclosure agreement (“NDA”), because KMSL’s parent company, Konica, was interested in using DST in its multi-function peripherals (“MFPs”). KMSL had admitted that Altavion’s DST technology was unique, but the two parties could not come to terms on a development fee.
Two years later, Altavion learned that KMSL had applied for patents based on Altavion’s technology, and then sued.
KMSL attacked Altavion’s claim of trade secrets by claiming that the trade secrets identified were not reasonably particularized, as Cal. Civ. Proc. Code § 2019.210 requires. The Altavion court found that the test is to “describe the allegedly misappropriated information with ‘sufficient particularity’ to separate it from matters of general knowledge.” As the opinion cannot publish the trade secrets themselves without destroying their secrecy, the court was necessarily vague about how particular Altavion’s secret’s were, but found that Altavion had stated it in a reasonably particular way.
This suggests the obvious counter to a defendant’s demand for reasonably particular identifications of trade secrets – identify them with detail. It is not enough to simply name the process and say it is secret. The trade secret owner needs to identify all the parts to the trade secret so that both the defendant and the court can easily identify what was allegedly stolen. Even elements that are generally available can be protected as a trade secret if the way they work together is not generally known and has an independent economic value by not being known.
All this identification has to be done under a court’s protective order, to protect the information from being made public. Still, many plaintiffs stumble on what should be a low hurdle – good identifications of the trade secrets. If the opposing party stole the trade secrets, then telling them or a court what the trade secrets are should not be a problem. The multi-million dollar verdict that Altavion got flew up the scale because Altavion could identify its trade secrets with reasonable particularity.
May 13th, 2014
The Economist magazine has called 3D printing the “Third Industrial Revolution.” But, what is it and what do you need to know to protect your intellectual property rights and avoid infringing the rights of others?
Although 3D printing has been around since the early 1980s, recent improvements and price decreases of 3D printing technology has made it available to an increasing number of businesses and consumers. Advances in the technology have allowed designers to 3D print designs virtually impossible to make just a few years ago, from an assortment of materials ranging from plastic to living cells. The price barrier to 3D printing has finally lowered to a point where regular consumers have begun entering the marketplace and companies such as Stratasys and 3D Systems have begun making relatively inexpensive lines of 3D “desktop” printers targeted at consumers. 3D printing, much like the PC in the early 1980s, is poised to make the leap from the domain of big businesses, researchers, and hobbyists to everyday consumers and small businesses.