Intellectual Property Law

September 27, 2013

USPTO Seeks Comments on Post-Registration Trademark Amendments

Washington, D.C. — The U.S. Patent and Trademark Office (“USPTO”) is seeking public comment on amendments to trademark registrations with respect to identification of goods and services which may be necessary due to changes in technology. The USPTO cited changes in the manner or medium by which products or services are offered for sale and provided to customers as a result of evolving technology. Comments are due no later than Nov. 1, 2013, and should be emailed to TMFeedback@uspto.gov, with the subject line “Technology Evolution.”

Under §7(e) of the Trademark Act, a registration based on an application under §1 or §44 of the Trademark Act may be amended for good cause upon application of the owner and payment of the prescribed fee, provided the amendment does not materially alter the character of the mark. 15 U.S.C. §1058(e). With respect to the identification of goods/services, an identification may be amended to restrict the identification or change it in ways that would not require republication of the mark. See 37 C.F.R. §2.173(e). However, no goods/services may be added to a registration by amendment. Moreover, under current USPTO practice, changed circumstances, such as new technology, will not render acceptable an amendment that is not otherwise permissible. TMEP §1609.03.

Recently, the USPTO has received a number of requests for amendment under §7, as well as inquiries from registration owners, seeking to amend identifications of goods/services due to changes in the manner or medium by which products and services are offered for sale and provided to consumers, particularly because of evolving technology. In some cases, these requests have also sought a corresponding change in classification.

August 22, 2013

U.S. Department of Commerce Produces Comprehensive Analysis Addressing Copyright Policy, Creativity, and Innovation in the Digital Economy

By Overhauser Law Offices, LLC

Washington, D.C. — The U.S. Department of Commerce recently released a green paper on Copyright Policy, Creativity, and Innovation in the Digital Economy (the “Green Paper“) to advance discussion on a set of policy issues critical to economic growth. The Green Paper discusses the goals of maintaining an appropriate balance between rights and exceptions as the law continues to be updated; ensuring that copyright can be meaningfully enforced on the Internet; and furthering the development of an efficient online marketplace.

The Green Paper is the most thorough and comprehensive analysis of digital copyright policy issued by any administration since 1995. The report is a product of the Department of Commerce’s Internet Policy Task Force (“IPTF”) with input from the U.S. Patent and Trademark Office (“USPTO”) and the National Telecommunications and Information Administration (“NTIA”). Through the IPTF, the USPTO and NTIA will solicit further public comments and convene roundtables and forums on a number of key policy issues.

“Copyright law strikes a number of important balances in delineating what is protectable and what is not, determining what uses are permitted without a license, and establishing appropriate enforcement mechanisms to combat piracy, so that all stakeholders benefit from the protection afforded by copyright,” said U.S. Secretary of Commerce Penny Pritzker. “Ensuring that our copyright policy provides incentives for creativity while promoting innovation on the Internet is a critical and challenging task. The Green Paper released today is an important step toward ensuring that the United States’ creative industries continue to have a substantial impact on strengthening our nation’s economy.”

Copyright has been a vital contributor to U.S. cultural and economic development for more than two hundred years, fostering the production and dissemination of the valuable expression that has put America at the forefront of the global creative marketplace. Maintaining a balanced and effective copyright system should continue to drive the production of creative works while at the same time preserving the innovative power of the Internet and the free flow of information. The Green Paper provides a comprehensive review of current policy related to copyright and the Internet, and identifies important issues that call for attention and development of solutions. The solutions may entail a combination of legal remedies, technology, private sector cooperation, and public outreach and education, along with the continued development of options to legally access copyrighted works.

In the Green Paper, the IPTF proposes the following actions:

· Establishing a multi-stakeholder dialogue on improving the operation of the notice and takedown system under the Digital Millennium Copyright Act (“DMCA”).

· Soliciting public comment and convening roundtables on:

o The legal framework for the creation of remixes;

o The relevance and scope of the first-sale doctrine in the digital environment;

o The application of statutory damages in the context of individual file-sharers and secondary liability for large-scale online infringement;

o The appropriate role for the government, if any, to help improve the online licensing environment, including access to comprehensive public and private databases of rights information.

“Copyright protection is a foundation for creative services and products that drive a significant part of the U.S. economy,” said Acting Under Secretary for Intellectual Property and Acting USPTO Director Teresa Stanek Rea. “The Internet must continue to support a legitimate market for copyrighted works as well as provide a platform for innovation and the introduction of new and dynamic services that drive digital commerce.”

“We see a digital future in which the relationship among digital technology, the Internet, and creative industries becomes increasingly symbiotic,” said Assistant Secretary of Commerce for Communications and Information and NTIA Administrator Lawrence E. Strickling. “In this digital future, the rights of creators and copyright owners are appropriately protected; creative industries continue to make their substantial contributions to the nation’s economic competitiveness; online service providers continue to expand the variety and quality of their offerings; technological innovation continues to thrive; and consumers have access to the broadest possible range of creative content.”

The Green Paper reiterates the Administration’s support for legislation creating a public performance right for the broadcasting of sound recordings and enabling prosecutors to seek felony penalties for unauthorized streaming to the public. It supports congressional or regulatory attention to determine how best to rationalize rate-setting standards for different types of music services; reform music licensing, particularly the mechanical license for musical compositions; and ensure consumers can unlock their cell phones, subject to applicable service agreements. It supports the U.S. Copyright Office’s work to address the problems of orphan works and mass digitization, consider possible small-claims procedures, update the statutory exception for libraries, and improve public registration and recordation systems. The Green Paper also supports and encourages enhancing public education and outreach efforts.

With respect to the difficulties in enforcement against websites dedicated to infringement, the Green Paper encourages ongoing voluntary initiatives, such as those facilitated by the U.S. Intellectual Property Enforcement Coordinator (“IPEC”), that benefit all parties and are consistent with the principles of privacy, free speech, competition, and due process, and states that the IPTF will follow these developments and assess their impact in order to determine whether additional action is needed. The USPTO has also extended its request for comments regarding the processes, data metrics, and methodologies that could be used to assess the effectiveness of cooperative agreements and other voluntary initiatives to reduce intellectual property infringement. This comment solicitation is part of the Administration’s 2013 Joint Strategic Plan for Intellectual Property Enforcement.

Then-Secretary of Commerce Gary Locke launched the IPTF in April 2010, bringing together the USPTO and NTIA, as well as the International Trade Administration (“ITA”), the National Institute of Standards and Technology (“NIST”), and the Economic and Statistic Administration (“ESA”) to conduct a comprehensive review of privacy policy, copyright, global free flow of information, cybersecurity, and their respective relationships to innovation in the Internet economy. In preparing the Green Paper, USPTO and NTIA held more than a dozen listening sessions with interested stakeholders, convened a symposium, received hundreds of public comments, and reviewed comments submitted to other agencies on relevant topics. The IPTF will consider feedback it receives from public comments, roundtables and forums to determine how the current copyright framework can be improved to serve creators, right holders, service providers, consumers, innovation, and national economic goals.

The Green Paper can be found online at: http://www.uspto.gov/news/publications/copyrightgreenpaper.pdf.

Practice Tip: Among the issues to be considered as part of this initiative, public comment will be solicited regarding the application of statutory damages in the context of individual file-sharers. This subject has created a considerable range of response from the judiciary. On one end of the spectrum are opinions, for example, one citing a “disturbing trend of internet piracy“ and another which assessed statutory damages of $150,000 in an illegal-downloading case in which the defendant did not appear to answer the allegations of infringement.

On the other end of the spectrum are opinions such as Judge Otis Wright’s scathing indictment of copyright trolls. In Judge Wright’s opinion, he details the abuse of the legal process committed under the authority of The Copyright Act. In the now-famous “Star Trek”-themed order, Judge Wright began by opining, “Plaintiffs have outmaneuvered the legal system. They’ve discovered the nexus of antiquated copyright laws, paralyzing social stigma, and unaffordable defense costs. And they exploit this anomaly by accusing individuals of illegally downloading a single pornographic video. Then they offer to settle–for a sum calculated to be just below the cost of a bare-bones defense. For these individuals, resistance is futile; most reluctantly pay rather than have their names associated with illegally downloading porn. So now, copyright laws originally designed to compensate starving artists allow, starving attorneys in this electronic-media era to plunder the citizenry.”

Among other measures in this case, the Court awards attorney’s fees and costs in the sum of $40,659.86 to the defendant. It then, as a punitive measure, doubled the award, yielding $81,319.72.

Judge Wright later concluded with an explanation for the sanctions which he was imposing against the attorneys in the case, “though Plaintiffs boldly probe the outskirts of law, the only enterprise they resemble is RICO. The federal agency eleven decks up is familiar with their prime directive and will gladly refit them for their next voyage. The Court will refer this matter to the United States Attorney for the Central District of California. The will also refer this matter to the Criminal Investigation Division of the Internal Revenue Service and will notify all judges before whom these attorneys have pending cases. For the sake of completeness, the Court requests [defense counsel] to assist by filing a report, within 14 days, containing contact information for: (1) every bar (state and federal) where these attorneys are admitted to practice; and (2) every judge before whom these attorneys have pending cases.”

June 10, 2013

Patent Trolls – A Growing Problem Receives National Attention

By Overhauser Law Offices, LLC

Litigation by patent-assertion entities (“PAEs,” commonly known as “patent trolls”) has skyrocketed in the last two years. A chart released by the White House in a June 2013 report entitled “Patent Assertion and U.S. Innovation” demonstrates that such trolls now file over 60% of all patent-infringement lawsuits. (The red portion of the bars shows patent lawsuits brought by PAEs.)

The patent-trolling business model includes no productive operations. Instead, investors’ money is used to purchase patents for the sole purpose of alleging infringement and extracting payment under the threat of litigation. Because litigation can be very costly, the patent trolls’ targets face a difficult decision: settle (typically by buying a license from the troll) or pay significant litigation expenses — and face the potential of losing at trial, which is somewhat unlikely but where damages can be enormous. In contrast, the trolls often use contingency-fee attorneys and, thus, have little more at stake in any given lawsuit than a few hundred dollars for a court-filing fee.

Many view this type of litigation with suspicion, if not outright derision. At least four patent-reform bills are pending in Congress and the Obama Administration recently released a harsh indictment detailing the damage to innovation and the economy caused by the “abusive practices in litigation” committed by patent trolls. Various measures to curb frivolous patent litigation have been suggested, including increasing transparency of patent ownership and establishing a website through the U.S. Patent and Trademark Office to inform patent-troll victims of their rights.

May 20, 2013

U.S. Supreme Court Rules Against Indiana Farmer in “Roundup Ready” Soybean Patent Decision

By Overhauser Law Offices, LLC

Washington D.C. — The U.S. Supreme Court has ruled that “patent exhaustion” does not bar an infringement claim against Indiana farmer Vernon Bowman for reproducing patented seeds by planting and harvesting second generation seeds without the patent holder’s permission. Bowman v. Monsanto Co., U.S., No 11-796, 5/13/2013. Monsanto produces and sells patented soybean seed that is genetically altered to resist its “RoundUp” herbicide. Bowman is a farmer who purchased soybean for planting from a grain elevator, expecting that most of the grain elevator soybean would be Monsanto’s herbicide-resistant soybean. In the subsequent patent infringement brought by Monsanto, Bowman argued that Monsanto’s sale of its seed that he ultimately purchased from the grain elevator exhausted any patent rights in the seed. The argument was rejected by both the District Court and the Federal Circuit, and the Supreme Court agreed to review the case.

Patent Exhaustion Only for Sold Article

Under the patent exhaustion doctrine, an authorized sale of a patented product cuts off the patent owner’s right to control of that product, because the sale of that product fulfills the patent law by providing a reward to the patentee. However, this limitation on patent rights applies only to the particular article sold. If the purchaser could make and sell endless copies, the patent would effectively protect just a single sale.

In this case, the patent exhaustion doctrine provides Bowman with the right to use the purchased product in several different ways without Monsanto’s permission, including resale, human consumption or animal consumption of the product. However, it does not permit Bowman to make additional patented soybeans without Monsanto’s permission.

Bowman contended that his use of the purchased seed was covered by the patent exhaustion doctrine because that is the normal way farmers use seed, and that Monsanto seeks an impermissible exception to the exhaustion doctrine for patented seeds and other self-replicating technologies.

The Court rejected the argument, pointing out that it is Bowman who seeks an unprecedented exception to the well-settled rule that the exhaustion doctrine does not extend to the right to make a new product.

December 31, 2012

Northern District of Indiana Amends Local Rules Effective January 1, 2013

By Overhauser Law Offices, LLC

Local Rules for the Northern District of Indiana have been revised and are effective January 1, 2013. The rules which have been amended are L.R. 1-1, L.R. 5-3, L.R. 6-1, L.R. 16-1, L.R. 83-6.7, L.Cr.R. 47-2, L.Cr.R. 47-3 and Local Patent Rules LPR 1-1 through 6-1.

A complete copy of the newly adopted Local Rules can be viewed by following the link provided below.

December 10, 2012

Indiana Court Denies Motions to Sever and Quash in Bittorrent Porn Copyright Infringement Suit

By Overhauser Law Offices, LLC

Fort Wayne, IN – Copyright attorney Paul Nicoletti filed a lawsuit on behalf of Malibu Media in the Northern District of Indiana alleging copyright infringement of the pornographic movie “Romantic Memories.” It alleges the infringement occurred by downloading it using the Internet file sharing “bittorrent” protocol. The suit was against 14 as-yet-unnamed Indiana Defendants, John Does 1-14. “Romantic Memories” had been coded with a “Unique Hash Number,” and upon investigation, 14 Internet Protocol (“IP”) addresses were identified. Upon receiving permission from the court, Plaintiff served third party subpoenas on two Internet Service Providers (“ISPs”) to discover the names and other contact information of each Defendant.

Defendant John Doe No. 12, acting pro se, filed a Motion to Dismiss or Sever for Misjoinder and to Quash Plaintiff’s Subpoena. The court rejected the Motion to Dismiss on a technicality, noting that under local rules motions must be filed separately, and denied the Motions for Severance and to Quash.

Doe No. 12’s Motion to Quash under Fed. R. Civ. P. 45(a) argued that there was no evidence that any improper use of his IP address would be sufficient to support an assertion that he was responsible for such misuse. The Court acknowledged that Doe No. 12 had standing to object to the subpoena on the grounds that it would implicate his privacy interest. However, it went on to reject his argument as a mere denial of liability and not relevant to a Motion to Quash. Doe No. 12 further asserted that the subpoena should be quashed as a burden on his ISP. The court found that argument unpersuasive as 1) the subpoena would not burden Doe No. 12 personally and 2) Rule 45 only requires a court to quash a subpoena when it subjects a person to an undue burden. Fed. R. Civ. P. 45(c)(3)(A)(iv). Further, the court held that no exception for privilege was applicable, as courts have consistently held that “there is no expectation of privacy in Internet subscriber information because it has already been exposed to a third party, the Internet Service Provider.”

Doe No.12’s Motion to Sever under either Federal Rule of Civil Procedure 20 or 21 argued, that there was no single transaction or series of transactions as is required for permissive joinder. Courts across the country are split regarding whether joining anonymous defendants alleged to have participated in a single BitTorrent “swarm” in a single suit is appropriate. The court here allowed joinder as the Plaintiff alleged a set of facts sufficient to support a finding that the separate actions were part of the same series of transactions, noting that the file sharing protocol required each participant to send and receive portions of the work in order to download and view the entire work. The second requirement for joinder under Rule 20, a “common question of law or fact,” was sufficiently pled by the Plaintiff’s assertion, without exception, of the same counts of copyright infringement against all Defendants. Discretionary severance under Rule 21 was also denied as unnecessarily cumbersome at this stage of the litigation.

Finally, the court issued a warning to plaintiffs in situations such as these, stating that “the litigation strategy Plaintiff has employed in this case has a history of becoming abusive and potentially giving rise to sanctions under Rule 11.” The court further cautioned plaintiffs against improperly leveraging a defendant’s reluctance to have his identity revealed to coerce a settlement.

October 19, 2012

Patent Office Proposes New Rules for Patent Attorneys

By Overhauser Law Offices, LLC

Washington, DC. The US Patent Office has released a proposed new set of rules of professional responsibility, completely redrafted from the present professional responsibility rules. The proposed rules would cover patent lawyers in Indiana and elsewhere, and are based on the American Bar Association’s 1983 Model Rules. The Office also proposes to revise the existing procedural rules governing disciplinary investigations.

The current Rules have not been revised since 1985 and is also based on the previous ABA Model Rules. Since that time, the vast majority of State bars in the United States have adopted substantive disciplinary rules based on the newer ABA Model Rules of Professional Conduct.

According to the notice from the Office, the extensive changes are meant to bring standards of ethical practice before the Office into closer conformity with the Rules of Professional Conduct adopted by nearly all States and the District of Columbia, while addressing circumstances particular to practice before the Office.

July 31, 2012

CP Productions, Inc. Sues John Doe for copyright Infringement of Video: “GH Hustlers – Maryjane’s Second Visit”

By Overhauser Law Offices, LLC

Indianapolis IN – Copyright lawyers for CP Productions, Inc. of Phoenix, AZ filed a copyright infringement declaratory judgment suit in alleging John Doe, an alleged serial infringer known at this time only by an IP address, infringed the copyrighted work “GH Hustlers – Maryjane’s Second Visit” which has been registered by the US Copyright Office.

In the complaint filed by attorneys for CP Productions, John Doe and other un-named parties are believed to have infringed a copyrighted video belonging to CP Productions. CP Productions is a producer of adult entertainment and seeks judgment against John Doe and others for the alleged serial infringement of the video “GH Hustlers–Maryjane’s Second Visit” to which the Plaintiff owns the copyright. John Doe and the joint tortfeasers are not known by name but rather, through their IP address and attorneys for CP Productions will be filing a Motion for Leave to Take Discovery in order to ascertain the actual identities of the Defendants from their ISPs. CP Productions is seeking judgment from counts including copyright infringement, civil conspiracy, and contributory infringement. CP Productions claims to have observed John Doe’s infringing multiple copyrighted content through agents the Plaintiff has employed using the BitTorrent protocol because the Plaintiff employs P2P netword forensic software to provide real time monitoring of the BitTorrent swarm that distributes the video. This software allowed CP Productions to log John Doe and the joint tortfeasers unlawful activities. CP Productions further alleges that John Doe and the joint tortfeasers intentionally downloaded a torrent file particular to the Plaintiff’s video, purposefully uploaded the torrent into their BitTorrent clients and entered a BitTorrent swarm particular to the Plaintiff’s video and reproduced and distributed the copyrighted video among themselves and third parties thereby becoming both and uploader and downloader of the video. By doing so, CP Productions claims that this “ever growing swarm will jointly contribute to the complete download of the Video for all individuals that enter the swarm at any given moment.” CP Productions believes that this lawsuit is the only practical means by which to combat BitTorrent based infringement. Because the damage claimed by CP Prodcutions includes economic and reputation losses, to which Plaintiff asserts will continue, the Complaint sets out demand for actual or statutory damages allowed under the Copyright Law, compensatory damages for the counts of civil conspiracy and contributory infringement, and an order or impoundment for all copies of Plaintiff’s works, photographs or other materials in the Defendant’s possession or control.

Practice Tip: The BitTorrent protocol is a decentralized method that allows users to distribute data via the Internet, and has become an extremely popular method for unlawful copying, reproducing and distributing files in violation of the copyright laws. Where this market was once consumed by music copyright violations, the adult entertainment industry has seen an increase in litigation against infringers using BitTorrent-based technology. Although no concrete rules govern jurisdiction of the Internet, Indiana’s long arm statute (Indiana Rule of Trial Procedure 4.4) permit personal jurisdiction of Defendants if they either downloaded or uploaded the copyrighted material.

July 27, 2012

U.S. Patent Office Publishes Rules Implementing the America Invents Act

By Overhauser Law Offices, LLC

Washington, DC. On Thursday, July 26, 2012, the United States Patent Office published in the Federal Register proposed rules and proposed examination guidelines for the first-inventor-to-file provision of the America Invents Act. The first-inventor-to-file provision converts the United States from a “first-to-invent” to a “first-inventor-to-file” system. The proposed rules and proposed examination guidelines amend the rules of patent practice to implement the conversion and show the Office’s interpretation of how the conversion impacts sections of the Manual of Patent Examining Procedure related to novelty and obviousness. The proposed rules and proposed examination guidelines are accessible here:

First-Inventor-to-File Proposed Rules (77 Fed. Reg. 43742, July 26, 2012)

First-Inventor-to-File Proposed Examination Guidelines (77 Fed. Reg. 43759, July 27, 2012)

June 27, 2012

APP Press Sues Apress Media for Declaration of Non- Infringement of Trademark “App Press”

By Overhauser Law Offices, LLC

Indianapolis; IN – Trademark attorneys for App Press, LLC of Indianapolis, Indiana filed a declaratory judgment suit seeking a declaration that it is not infringing the trademarks of Apress Media, LLC of New York, New York.

App Press, LLC brings action against Apress Media, LLC in order to protect the right to use and continue to conduct business under the registered trademark, and asserts that use of the mark for App Press does not infringe on any trademark held by Apress. App Press is a company that creates, owns, and licenses the use of web-based software that allows consumers to create apps that can be used on mobile devices. According to the Complaint, App Press applied for trademark registration on January 7, 2011 and was registered by the United State Patent and Trademark Office on August 9, 2011. During this period, the trademark was open to opposition on May 24, 2011. Apress Media is a publishing company that edits, publishes and sells books with the focus on technological issues and how-to advice. Apress Media applied for trademark registration on May 7, 2010 and was registered on March 8, 2011. According to App Press, on August 15, 2011, Apress Media sent a cease and desist letter demanding App Press immediately stop the use of their trademark alleging that it infringed on the trademark of Apress and constituted trademark infringement, unfair competition, cyberpiracy and dilution. App Press claims that they forwarded the letter to their counsel who contacted Apress Media’s counsel by phone. Almost two weeks passed that counsel for both parties went back and forth via telephone before they were able to confer regarding the issues set forth in the letter in which App Press agreed and sent a letter describing their product and why it was not infringing on Apress Media’s trademark. Approximately eight months later, on May 8, 2012, Apress again contacted App Press and again asserted that App Press’s use of the App Press trademark was infringing on the Apress trademark. Counsel for App Press has filed the Complaint for declaratory relief and to obtain declaration that App Press’s use of their trademark does not infringe upon any trademarks owned by Apress Media.

Practice Tip: The remedy of declaratory judgment is found in 28 U.S.C.A. § 2201 and allows for any US court to declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.
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