What Are the Most Important IP Protections for U.S. Businesses?

A recent study reveals that most U.S. businesses view trademarks and trade secrets as the most important forms of intellectual property (IP) protection. The study was conducted by the National Science Foundation (NSF) and the U.S. Census Bureau as part of their Business R&D and Innovation Survey (BRDIS).

According to a NSF press statement, the survey polled a nationally representative sample of about 40,000 companies, including companies in both manufacturing and non-manufacturing industries. Here’s what else they had to say:

Fifteen percent of all businesses reported trademarks as either very important or somewhat important to their business (6 percent said trademarks were very important, while 9 percent said they were somewhat important).
Fourteen percent of surveyed businesses reported trade secrets as very important or somewhat important (6 percent and 8 percent respectively).
Twelve percent of those surveyed identified copyrights as important.
Five percent of respondents indicated that design patents are important, while four percent viewed utility patents as an important form of IP protection.
“Much of today’s business derives its competitive advantage from the ability to protect and exploit exclusive rights over investments in intellectual property,” said John Jankowski, lead author of the report in NSF’s National Center for Science and Engineering Statistics. “Hence, IP protection is a persistent and recurrent concern of businesses.”

Supreme Court Will Review Attorneys’ Fees Award

The U.S. Supreme Court granted certiorari in John Wiley & Sons Inc. v. Kirtsaeng, No. 15-375 (cert. granted January 15, 2016). The issue in this case is the appropriate standard in awarding attorneys’ fees to a prevailing party under Section 505 of the Copyright Act.

There are currently four different standards used by district courts for awarding attorneys’ fees: (1) whether the prevailing party’s successful claim or defense advanced the purposes of the Copyright Act (9th and 11th Circuits); (2) a presumption in favor of attorneys’ fees for a prevailing party (5th and 7th Circuits); (3) the four “non-exclusive factors” listed in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994) (3rd, 4th, and 6th Circuits); and (4) the 2nd Circuit’s placement of “substantial weight” on the objective reasonableness of the losing party’s claim.

In this case, a college student sought to win attorneys’ fees after defeating claims he imported and illegally sold foreign edition textbooks on eBay.  The case first reached the Supreme Court in 2013 where it was held that the Copyright Act’s first-sale doctrine applies to goods made anywhere.

As a result of the ruling, Kirtsaeng did not have to pay $600,000 in damages to Wiley for willfully infringing the company’s copyrights. However, Kirtsaeng lost his bid to obtain attorneys’ fees from Wiley, which lead to the present case.

Stay tuned for more information as the case develops.

Copyright FAQ: Who Has the Rights to a Collective Work?

Special copyright rules apply to collective works under the Copyright Act.  A collective work is defined as a work “in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.” Common examples include magazines, academic journals, anthologies, and encyclopedias.  The articles, columns, or short stories that make up the collective work are referred to as “contributions to a collective work.”

The copyright in a collective work covers only the collective work as a whole (i.e., the order and organization of the entire magazine or encyclopedia). Thus, the copyright in each individual contribution is distinct from the larger work.

In the absence of an express transfer from the author of the individual article, the copyright owner in the collective work is presumed to have acquired only the right to use the contribution in the collective work and in subsequent revisions and later editions of the collective work. However, in many cases, authors submitting articles to magazines and journals must agree that they will not retain a copyright to the work once it is published as part of a collective work.

For individual advice on the copyrights to a contribution to a collective work, please contact me.

Supreme Court Will Review Claim Construction Standard

The U.S. Supreme Court granted certiorari in Cuozzo Speed Technologies, LLC v. Lee, U.S. No. 15-446 (cert. granted January 15, 2016).  There are two issues in this case.

The first issue is in regards to the claim construction standard used during Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).  Currently, the PTAB construes the claims of an issued patent in an IPR proceeding according to their broadest reasonable interpretation.  This standard is different than the “plain and ordinary meaning” standard used in federal district court. The question is whether or not the PTAB is using the correct claim construction standard, or if it the claims should be interpreted according to their plain and ordinary meaning.

The second issue is whether or not the PTAB’s decision to institute an IPR proceeding is judicially unreviewable. In Cuozzo, the Federal Circuit held that 35 U.S.C. 314(d) bars it from reviewing a PTAB decision to institute an IPR, even if the issue is raised in an appeal of a PTAB final decision.

Stay tuned for more information as the case develops.

Don’t Get Scammed: Warning For IP Applicants and Registrants

There are ongoing scams targeting patent, trademark, and copyright applicants and registrants. Although each scam varies slightly, they all generally involve notices intended to look like they are coming from an official government office such as the U.S. Patent and Trademark Office.

The notices, sent by unscrupulous entities and organizations, are designed to solicit fees from applicants. In fact, they may often be called “invoices.”

To give the appearance of legitimacy, they usually contain publically available information about the application or registration and use names and logos that resemble official entities like the USPTO or, the case of an international application, the World Intellectual Property Organization.

In one recent case, a client received a notice from an entity calling itself the “United States Trademark Registration Office.” The “invoice” requested payment in the amount of $375 for registration with U.S. Customs and Border Protection and trademark monitoring services.

Despite what this mailing may lead one to believe, trademark monitoring and customs registration are not part of the official trademark application process. Although they are legitimate services, this notice clearly employed deceptive advertising to sell its services.
The bottom line—the United States Patent and Trademark Office is the only government agency that will contact you about your U.S. patent or trademark registration or application. If you receive an official looking document in the mail from someone else, it could be a scam.

What Are the Most Important IP Protections for U.S. Businesses?

A recent survey reveals that most U.S. businesses view trademarks and trade secrets as the most important forms of intellectual property (IP) protection. The study was conducted by the National Science Foundation (NSF) and the U.S. Census Bureau as part of their Business R&D and Innovation Survey (BRDIS).

According to a NSF press statement, the survey polled a nationally representative sample of about 40,000 companies, including companies in both manufacturing and non-manufacturing industries. Here’s what else they had to say:

  • Fifteen percent of all businesses reported trademarks as either very important or somewhat important to their business (6 percent said trademarks were very important, while 9 percent said they were somewhat important).
  • Fourteen percent of surveyed businesses reported trade secrets as very important or somewhat important (6 percent and 8 percent respectively).
  • Twelve percent of those surveyed identified copyrights as important.
  • Five percent of respondents indicated that design patents are important, while four percent viewed utility patents as an important form of IP protection.

“Much of today’s business derives its competitive advantage from the ability to protect and exploit exclusive rights over investments in intellectual property,” said John Jankowski, lead author of the report in NSF’s National Center for Science and Engineering Statistics. “Hence, IP protection is a persistent and recurrent concern of businesses.”

Beer Company Says Texas Should Not Intervene in “Alamo” Trademark Case

Alamo Beer Co. objected to a US Magistrate Judge’s recommendation that the state of Texas be allowed to intervene in a dispute involving “Alamo” trademarks.
The Alamo Mission is an iconic site located in San Antonio, Texas. In 1836, following a 13-day siege, it fell to Mexican troops and all the “Texian” defenders, including Davy Crockett, were killed. The battle inspired many to join the Texian cause, and the Texians defeated the Mexican Army later the same year.
Alamo Beer, based in San Antonio, sued Old 300 Brewing LLC, doing business as Texian Brewing Co., based in Rosenburg, Texas over the latter’s use of a silhouette of the Alamo on its products.
Alamo sought an injunction against Texian’s use of the image and also sought cancellation of its trademark registration for a logo that includes the silhouette.
Texian began using the logo on its products in 2011 or 2012. The tops of Texian’s tap handles (for beer on tap) are also carved into the silhouette of the Alamo.
Alamo contacted Texian about the matter on May 22, 2013. Texian allegedly failed to respond to the email and filed its trademark application the next day. The mark was registered in January of 2014.
Alamo apparently failed to oppose Texian’s proposed mark when it was published.
Alamo Beer has used the silhouette as part of its own logo since 1997 and obtained a trademark for the word “Alamo,” used in connection with beers and other beverages, in 1998. However, it did not register the image of the Alamo as part of its logo.
Texas filed a motion to intervene in the dispute, saying that the mark belongs to the state.
Texas claims that its interests in the “Alamo” mark may be harmed by the lawsuit. According to its motion,
The State of Texas is so situated that the disposition of the action may as a practical matter impair or impede The State of Texas’s ability to protect its interest in marks which include the word ‘ALAMO’ or a representation of the Alamo Mission.
In a 15-page report, the Magistrate Judge agreed with Texas, saying
It seems clear there is a common question between the state’s claim of ownership of the Alamo marks and Alamo Beer’s claims of infringement, unfair competition and false designation of origin by Texian’s use of the Alamo marks.