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Steven M. Shape, IP Attorney

Sunday, November 10, 2013

Congratulations on Your New Company - 5 Simple Steps to Protect Your New Brand from Being Pirated

By Steven Shape, IP Attorney

As every young entrepreneur starts their new company, there’s a lot of time and energy spent in creating a unique name and logo to represent its products, services, visions and aspirations. As the company grows and prospers, its name, logo, and its brand become assets that are much too valuable to let a third party imitate or copy them in any way.

In order to protect these assets from the start, the legal system can help keep brand piracy to a minimum.  Brand piracy is the counterfeiting of a retail product by importing or producing and selling a product in the United States that uses a confusingly similar name, logo, image or the like to confuse the public.  A number of legal and practical steps can be taken to help protect a company's brands from piracy.  By taking several simple steps, a company can protect its brands from being diluted by such sales of inferior counterfeit products.

  1. Organize your company and protect your trademark - A company should be formally organized as a limited liability company or corporation.  In many cases, the name of the company is used as a trademark as well and should be properly protected.  For example, Apple is a corporation organized in the state of California.  Apple is also a registered trademark of Apple Inc.  By both properly organizing the company and protecting the name when used as a trademark, the founders of Apple Inc. were able to properly protect this highly regarded brand.

  2. Protect the corporate indicia and other distinctive images that identify the business and its products -Trademarks should be protected and include the company logos and images used in advertising, brochures, websites and similar marketing materials.

  3. Register domain names currently being used and others that may be used in the future - Before introducing, marketing or selling a new product, thoroughly research and register any domain names to be considered or used.  It is much less expensive to secure the rights to domain names in advance, rather than having to fight an uphill battle to procure your rights from a third party after the fact.  Getting your intellectual property rights back becomes very expensive after you and your brand have become well known.

  4. Trademark all variations of the company name and its products – Research the perspective names and secure protection of new products, including intellectual property, before introducing new products or product lines.  As an example, Pepsi has trademarked the names and logos of additional products such as Pepsi Next, Cherry Pepsi and the like.

  5. File a complaint with the federal government. In an effort to protect a company’s brand and consumers from brand piracy, the federal government has set up a special agency and website to coordinate protection effort.  It is important to register your trademarks with the federal government upon receiving your registration, particularly if your company has been a victim of brand piracy.

Disclaimer: Please note that this article does not constitute legal advice, and should not be relied on, since each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This post does not create an attorney-client relationship.

© 2013 Steven M. Shape  All Rights Reserved.

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Protecting Your Children When Posting Videos on Social Media Sites Including Facebook and YouTube

By Steven Shape, IP Attorney

Your children post videos to YouTube every day.  Did you ever think they could be exposed to significant damages by these postings?  They certainly can…..

You Tube and Facebook can be problematic for the unsuspecting youth when simply using the sites to stay connected with friends.  When publishing a video on YouTube, Facebook or other social media sites, as a parent you must consider three important points to be sure your posting is safe from legal ramifications and potential damages:
  1. Is the video original?  Has the source content been changed to transform it or give it a different meaning?
  2. Is the video commercial or not?  Is the creator making money from the publication?
  3. Does the published video compete with the market for the original work?  Would a viewer obtain the same benefit from the publication that they would from the purchased video?

The Center for Social Media of the School of Communication of American University has recently published the Code of Best Practices in Fair Use for Online Video.  According to the Code (, fair use likely exists if the video is:
  • commenting on or critiquing copyrighted material;
  • using copyrighted material for illustration or example;
  • capturing copyrighted material incidentally or accidentally;
  • reproducing, reposting or quoting in order to memorialize, preserve or rescue an experience, an event, or a cultural phenomenon;
  • copying, reposting or re-circulating a work or part of a work for purposes of launching a discussion;
  • quoting by recombining elements to make a new work that depends on the meaning of relationships between the elements (often unlikely).

While other uses can be considered fair use, it would depend on a court’s interpretation of the facts in determining the ultimate outcome.  Fair use has been found by courts in many situations, such as:
  • news reporting including clips and commentary;
  • mash-ups and fan-made music videos including anime music videos;
  • filming yourself singing a copyrighted song;
  • movie reviews containing clips of copyrighted films;
  • video game tutorials with commentary or a walk through;
  • video logs (V-logs), video documentaries and pod-casts;
  • parody videos including political parody (which comments on the original work) and satire (which comments on an unrelated subject);
  • documentary or home videos which incidentally include or capture copyrighted material.

Courts have found the following use not to be fair use in the circumstances and facts presented:
  • clips from movies and TV shows that are not modified or edited
  • music videos produced professionally;
  • music included in a soundtrack to a commercial or other performance for financial gain (found to infringe the artists synchronization rights); and
  • lyrics videos playing the copyrighted song with a posting of the lyrics and pictures on the screen is (usually not changed enough from the original to be considered fair use).

These examples are not comprehensive, but the factors typically reviewed by the courts include whether the work is non-commercial, changes the original work, uses no more of the copyrighted work than is necessary, harms the market, and is a substitute for the original work.  The commercial aspects of publishing a video are not solely determinative of its status as a fair use.  However, such commercial benefits, when found, will reduce the chances that work will be considered a fair use.

YouTube typically requires proof of license for the posted material, so simply claiming fair use may not be enough to satisfy YouTube and avoid a takedown notice.  To properly protect your children when posting such video, you are best advised to discuss the matter with an attorney versed in copyright law and intellectual property matters.  As you can tell, posting on YouTube and Facebook seems innocent, but it’s an area that is fraught with land mines for the unwary, especially for kids and young adults who are just trying to have a good time.

Disclaimer: Please note that this article does not constitute legal advice, and should not be relied on, since each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive  consultation and review of all the facts and documents at issue. This post does not create an attorney-client relationship.

© 2013 Steven M. Shape  All Rights Reserved.

The Hazards of Applying for Patents by Yourself

By Steven Shape, IP Attorney

Technically, you don’t need a lawyer to prepare and file a provisional patent application.  However, you will miss out on having a trained professional help you avoid all the pitfalls that are typically made by an uniformed inventor.  An improperly prepared provisional patent application can be just as detrimental as no application at all. You must consider three major hazards:

  1. Insufficient data - If you don’t describe your invention in sufficient detail including how to make and use it, you will not be able to support your claims and you will lose the benefits which may be provided by a properly drafted provisional application.  Specifically, you need to be sure you have included as many details as possible to ensure that there will be proper support for the claims you need to set forth in your non-provisional application.  This involves thinking broadly to anticipate what will be necessary to support your formal claims.  This is an important reason to engage a patent attorney to draft your provisional application.

  2. Patent Profanity - There are particular statements that should never be used in a patent application.  For example, you do not want to say that your invention is limited to “only” one way of constructing or using your invention.  Such statements will limit what you can set forth and claim in the future, and particularly in your non-provisional application.  Talking with a patent attorney concerning phrases and words to watch out for can make a significant difference in the value of your intellectual property and how you can enforce and license it. 

  3. Weakening the signaling value – An important reason to file a patent application is to provide comfort to investors and potential licensees and partners that you are serious about your technology and that your company and its management team are focused to drive the company forward to profitability.  A poorly drafted provisional patent application with no substance or detail will surely undermine your goals.  Investing in a patent application serves as a strong foundation for a robust patent portfolio and will serve to benefit you and your company.  Certainly such will be looked at as a much better business decision, over having a free provisional patent application that cannot support valuable patent claims. 

You will be tempted to save money and write the provisional patent application yourself.  But it is always worth getting at least some guidance from an attorney on these and other landmines before venturing down the do-it-yourself path.  Well-written provisional patent applications give you the opportunity to effectively manage and control the costs of the patent application process.  This strategic management will give you time to validate markets, gather data, raise funds, court partners and build your company without risking your intellectual property protection.  Get the proper advice  before you start.  This will save you and your partners the heartache of finding out that a poorly drafted provisional application prevented you from properly protecting your intellectual property.

Disclaimer: Please note that this article does not constitute legal advice, and  should not be relied on, since each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This post does not create an attorney-client relationship.

© 2013 Steven M. Shape  All Rights Reserved.

Wednesday, September 4, 2013

Protecting Grandma's Secret Recipe

By Steven Shape, IP Attorney

Typically, recipes are not legally owned by anyone. Take for example the large number of recipes you can find online, all free for the public's use.

A family recipe can be protected by trade secret law (the Coca-Cola formula and KFC’s secret recipe of 11 herbs and spices are famous examples), but only if your family member has carefully maintained the recipe under lock and key and hasn't shared it with anyone before, or has insisted that everyone sign a non-disclosure agreement before seeing the recipe. All of which are highly unlikely. Typically, trade secret protection is used and preferred by larger companies.

It is not typical to obtain utility patent protection on a recipe because recipes usually aren't inventions. Patents are the most expensive form of IP to acquire so they're best for big ticket inventions which will have significant commercial impact over a shorter period of time.

Copyright protection is not available, as a list of ingredients and instructions are not copyrightable. Specifically, mere listings of ingredients in recipes, formulas, compounds, or prescriptions are not subject to copyright protection. However, it is possible to create a cookbook of many recipes and copyright that literary work.

The best choice to protect your recipe and launch a marketing campaign may be a trademark. If you choose a unique and distinctive trademark, and develop impactful and attractive advertising, you could sell the product made from a recipe. Marketing in this manner may allow you to beat others to market, while forming a strong bond between your brand and consumers. You might consider requiring your manufacturers and vendors to keep the recipe as a confidential trade secret under a non-disclosure agreement, but your real protection may very well be in selling the product under your trademark and grow your brand.

Disclaimer: Please note that this article does not constitute legal advice, and should not be relied on, since each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This post does not create an attorney-client relationship.

© 2013 Steven M. Shape  All Rights Reserved.

Top 5 Important Provisions of the America Invents Act

By Steven Shape, IP Attorney

First to File

The biggest change to US patent laws, and certainly the most notorious, is that the United States has now converted from a first to invent system to a first to file system. First to file may be a misnomer for the new US system, as the term “first to file” has certain international meanings that will not apply.

Traditionally a first to file system is one that demands absolute novelty in order to obtain a patent.  In a traditional first to file system, if there is a prior use or publication of information relating to the invention no patent can be obtained. The new US first to file system does not mandate such a strict standard.

Under the US first to file system the inventor will still have a personal grace-period, which is not available to inventors outside the US. This personal grace-period provides that the inventor’s own disclosures, or the disclosures of others who have derived from the inventor, are not prior art as long as they occurred within 12 months of the filing date of a patent application relating to the invention. However, disclosures of third-parties who independently arrived at the invention information will be considered prior art against the inventor. In other words, there is no grace-period in the case of third party, independently created disclosures. This is a significant difference between the old law and the new law.

It is important to understand that under the new law an inventor is always better off filing sooner rather than later. The new adage is "file early and often."  However, the new US law does not set up a true race to the Patent Office.  In order to be awarded a patent one must still be an inventor. Those who learn of an invention cannot beat the inventor to the Patent Office and obtain a patent.  Inventors must contribute to the invention and stealing from another cannot provide the conception that is necessary to support the award of a patent.

Joinder & Consolidation

The AIA has curtailed patent troll litigation. The new law now prevents patent trolls from bringing patent infringement litigation against multiple defendants in a single infringement action. Courts that previously allowed such filings (sometimes well over 50 defendants were joined in a single case) prevented each defendant from fully defending itself, thereby effectively allowing a shakedown of the defendants.

Before the AIA, a patent owner could sue any number of defendants who were geographically scattered across the country and who offered different products.  The patent owner could then select a district court that offered a friendlier environment for a patentee (typically the Eastern District of Texas).  This would allow a patent owner to economically sue a large number of defendants and then proceed to seek to settle the case for nuisance value.  This effectively allowed the patent owner to easily obtain significant awards by offering settlements that were far less than the cost of litigating. This was quickly characterized by many to be a form of extortion.

Under the AIA accused infringers may be joined in one action or have their actions consolidated for trial only if: (1) a claim is made against parties jointly or severally, or a claim arises out of the same transaction, occurrence, or series of transactions or occurrences; and (2) questions of fact common to all defendants or counterclaim defendants will arise in the action. Under the AIA, patent owners can no longer sue multiple defendants in the same case by simply alleging that they all infringe the same patent.

The joinder and consolidation provisions of the AIA have already curbed activities. Therefore, small business shakedowns are now less commonplace.

False Marking

False marking cases arise under 35 USC § 292.  Prior to the enactment of the AIA anyone could bring a legal action seeking damages when someone affixed a patent number on a product that was not patented, or the patent had expired. The damages that could be recovered by the person bring the lawsuit was $500 for each case of mismarking.

The Court of Appeals for the Federal Circuit recognized that interpreting §292 to apply on a per article basis would encourage a glut of false marking litigation by plaintiffs who had not suffered any direct harm.  Effectively a new business was born, with large corporations being sued for significant sums.

The AIA mandated a change in enforcement of §292 such that only the United States may now sue for a civil penalty.  Nevertheless, a person who has suffered a competitive injury as a result of marking a product in violation of §292 may file a civil action in a Federal district court for recovery of damages adequate to compensate them for the injury. Under the AIA, the marking of a product with an expired patent is no longer a violation.

Best Mode

The best mode requirement historically created a bargained-for-exchange where the patentee obtained the right to exclude others from practicing the claimed invention for a certain time period, and the public received knowledge of the preferred embodiments to practice the claimed invention. The best mode requirement was a safeguard against obtaining patent protection without making a full disclosure as required by the patent laws.  Failure to disclose the best mode of the claimed invention was grounds for finding the patent claim invalid.

With the enactment of the AIA the best mode requirement has largely been eliminated. The failure to disclose the best mode is no longer a basis on which any claim of a patent may be held invalid or otherwise unenforceable.  However, 35 USC 112 still requires the disclosure of the best mode known to the inventor. So legally, applicants are still required to disclose the best mode, even though failure to do so will not invalidate an otherwise valid patent.

Based on the changes to the patent laws under the AIA, further patent law changes may be on the horizon to completely eliminate the best mode requirement.

Non-Infringement Opinions

After the enactment of the AIA, the failure of an infringer to obtain advice of counsel relating to any allegedly infringed patent may no longer be used to prove willful infringement or intentional inducement to infringe a patent. The AIA now mirrors the Federal Circuit’s decision stating that potential infringers have no affirmative obligation to obtain a non-infringement opinion.

Several questions still remain unanswered -- will courts preclude consideration of the lack of an opinion of counsel in determining whether to award enhanced damages?  Will courts still consider the lack of an opinion of counsel in awarding of attorneys fees when there is little due diligence prior to bringing an action?

Ultimately, it may be up to the courts to police the practice of bringing litigation without any due diligence to avoid the plaintiff’s attempts to shakedown defendants.

Disclaimer: Please note that this article does not constitute legal advice, and should not be relied on, since each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This post does not create an attorney-client relationship.

© 2013 Steven M. Shape  All Rights Reserved.

Determining If Your Trademark Has Been Infringed Upon

By Steven Shape, IP Attorney

Here is a quick set of questions one can answer to determine if an alleged infringer is more than "alleged."  In other words, is your trademark being infringed upon?

1) Is your trademark currently in use?

To have ownership rights in a trademark, the mark does not have to be registered with the US Patent and Trademark Office (USPTO) or a state trademark agency.  If the mark is being consistently used as a trademark and the mark meets certain qualifications for trademark protection under the law (ie. the mark is not generic, merely descriptive, etc.), then you have rights.

2) What is the scope of your rights?

If the mark is not registered in the USPTO, then your rights are limited geographically to where it is being used. If it is registered in the USPTO, then you may have nationwide rights.

3) What are the goods and services?

What goods and/or services are you using the mark on?  Some expansion may be possible, but your current use will limit the scope of your protection.

4) Is there a Likelihood of Confusion?

When comparing your mark to the alleged infringing mark, would a consumer likely be confused as to the origin of the product or service on which the mark is used?  Many elements are considered in this analysis, but not one is conclusive -- they are all reviewed in their totality.  It comes down to the question of whether a consumer would be confused.  If the answer is yes, then there is arguably infringement.

If you are planning to use a mark, file an intent-to-use application with the USPTO to gain the upper hand on others who may adopt the mark after you file.  If you are using the mark in more than one state or on the internet, file an application with the USPTO immediately.

Disclaimer: Please note that this article does not constitute legal advice, and should not be relied on, since each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This post does not create an attorney-client relationship.

© 2013 Steven M. Shape  All Rights Reserved.