Design Patents v. Trade Dress

Moderator: Brian G. Bodine — Merchant & Gould

Panelists
George C. Rondeau — Davis Wright Tremaine LLP
Michael G. Atkins — Graham & Dunn PC Writer of the Seattle Trademark Lawyer Blog
Brian C. Park — Dorsey & Whitney LLP

A design patent is a patent granted on the ornamental design of a functional item. Normally these products can not be protected by copyright because they copyrighted elements are inseparable from the functional item. Examples of Design patents include; Ornamental designs of jewelry, beverage containers and computer icons.

Trade dress is the look and feel of a business. This can include almost all nonfunctional characteristics of a business from the festive colors to the Neon sighs to the use of metal blue doors for entrance. Pinning down exactly what a trade dress is at any company is somewhat difficult to say the least.

The most troubling part of the panel was the the intersection of design patents and trade dress. Two of the panel members basically stated that you could get a design patent for an item, exclude others from using the design for 20 years. During this exclusive period you can use the item as trade dress to build up secondary meaning. Once the patent expires you can then use trade dress to exclude competitors forever.

Second Life and Online Liability

Moderator: Signe H. Brunstad — UW School of Law

Panelist:
William C. Rava — Perkins Coie LLP

Neal Black — Vice President of Legal and Corporate Affairs, Live Gamer
Don McGowan — Attorney for Microsoft Game Studios

This was a very tech literate panel I was impressed by Don McGowan. The panel focused on issues ranging from users rights to ingame IP to EULA’s and baning users who own items in game.

“Hard Core gamers are not nesecerialy rational actors when it comes to defending their perceived rights online.”

There is a strong tension between game designers and marketers who want to give users the world to get them involved in the game and the legal staff that wants to limit liability. A key to success in online virtual worlds is giving users as many rights as you can.

Blog recommendation: Virtually Blind - covers legal news, issues, and events that impact virtual worlds. It is edited by editor Benjamin Duranske is a writer and an intellectual property attorney.

Final Note on Ethics: The ethics section was not related to ethics and IP. The session was about how to run a lawsuit without malpractice. I was hoping to see a discussion of contracts of adhesion, orphaned works and pharmaceuticals patents access for the poor. Ethics should be more than crossing your “t”s and dotting your “i”s in litigation.

Bill Ferron, Jr.

Seed IP Law Group,

Topic Revisions to the TTAB Rules and Practical Tips

Ferron spoke about the basics of a trade make hearing before the Trademark Trial and Appeals Board (TTAB). This is not a topic of particular interest to FFIP but was useful for understanding the differences between a TTAB hearing and a full federal trail. At the TTAB can be a useful vehicle for challenging marks but only on the grounds of registerability. The rest of the presentation focused on TTAB rules directly. I am escaping to spy on the patent presentation.

Scott T. Wilsdon

Yarmuth Wilsdon Calfo PLLC

Topic: RIAA and Direct Liability

Mr. Wilsdon is on the other side of of the copyfight from FFIP. With this said, Wilsdon does know the law in this area and covered the main cases from Napster to Thomas. He gave interesting insight on jury instruction number 15 used in Capital Records v. Thomson, which makes one who merely makes work available through a shared folder liable for actual distribution. This jury instruction lower the proof need to convict in p2p case to almost nothing.

Bruce E.H. Johnson

Davis Wright Tremaine LLP

Topic: Fair Use and the First Amendment

Fair Use started not as a statute but as an equitable defense to copyright infringement. Now Fair Use is embodied in Section 107 of the copyright act. Nimmer argues that some works are the inherent expression of an event or act and may not be inseparable in a traditional facts v. idea separation. One example of this is the Zapruder’s film of the JFK assassination.

The Q & A section had a lively discussion on the Harry Potter Lexicon and Fair Use v. transformational derivative works.

This is an interesting conference as it divides the first half of the day between soft and hard IP. Soft IP being copyright and trademark and hard IP being patents. It was a tough choice for me as I am taking both trademark and patents currently. I also strongly respect Joseph Miller, Associate Professor at Lewis and Clark, and he is speaking on the patent side. Despite that, I chose the copyright side due to a speaker talking directly to Fair Use and the First Amendment.

Dan Laster

Associate Professor of Law
University of Washington

Laster spoke on several cases from a practical perspective here the two that I think are most interesting.

Genericide
The Freecycle Network, Inc. v. Oey, — F.3d —-, 2007 WL 2781902 (9th Cir. September 26, 2007) The defendant was a former member of the Freecycle network and is now trying to kill the potential mark through using it in a generic way. The District Court granted an injunction against the defendant stopping him from engaging in acts against the mark. The appeals court vacating the ruling stating that their is no trademark action for disparagement under the Lanham Act. The court had the opportunity to avoid the first amendment issue.

Keyword advertising- can Google sell keywords of someone else trademark? The second circuit says you must have use in commerce. Merck & C. v. Mediplan Health Consulting Inc.(2nd) draws the analogy that keyword advertising is merely product placement. 7th circuit disagrees with the 2nd and views keywords as use in commerce. In the 9th circuit things are up in the air.

I also recommend Burnett v. Century Fox Film Corp. 491 F. Supp. 2d 962(2007) for parody rights.

Kate Spelman

Copyright Year In Review

Spelman recommends Be Kind Rewind, not as a good movie but to understand the public opinion on copyright. “We need to stop using piracy as a term.”

Takedown notices can give minimum contacts. (Dudnikov v. Chalk & Vermillion 2008) This is a huge development as it can add a large risk to sending takedown notices.

Gladwell Gov’t Servs, Inc. v. Country of Marin No. (9th Cir. January 28, 2008) – This case reads the work for hire provisions as very limited and does not extend work for hire to clause that merely state work for hire in contracts.

Cases to watch:

Greenberg v. NAt’l Geographic Soc’y, et al., 488 F.3d 1331 (11th Cir. 2007) Does copyright include the right to organize? This case was just argued last week.

Jacobsen v. Katzer (N.D. Cal. August 17, 2007) Defendant tried to patent GPL License derivative work. Damages were limited to contract and copyright has been forfeited under GPL. This is a real bad outcome for the GPL as it removes the teeth of the copyright act from the GPL limiting enforcement.

Perfect 10 v. Google 416 F.Supp.2d 828 (C.D. Cal 2006) – miniaturization is Fair Use, this case shows how fair use is being asked to do too much in the digital age and how we need other exceptions to copyright.

On the Negative side: This is the first conference I have been to in a long time with only 1 power outlet per 60 people and very bad wifi (part of the room has no wifi). Coming from a techy background I forget sometimes that computers are not the norm in all professions.

This is a huge Month for IP in Seattle. There are 4 major Events happening between the 7th and the 28th:

13th Annual Intellectual Property Institute
Seattle University CLE on Software and Piracy
Washington State Patent Law Association CLE
Music in the New Millennium

I will be live blogging from both the 13th Annual IP Institute and the Music for the New Millennium event. I will be in New Orleans for the 2009 Nonprofit Technology Conference for the other two. If anyone is interested in attending and representing the FFIP / Free Culture point of view and would like to blog about it please contact me (Brian at freedomforip.org). I will also be adding these events to the FFIP Google calendar (Along with the NOLA conference).

13th Annual Intellectual Property Institute

Date: March 7th
Event: IP Conference
Location: WA Convention Center
Cost: $225 GA, $100 for first 20 students

Speakers:
20 plus Highlights include:
Joseph Miller, Lewis and of Clark Law, speaking on recent supreme court cases
Bruce E.H. Johnson, Davis Wright Tremaine, speaking on Fair Use and the First Amendment
There is even a whole panel on Second Life and Online Liability!

The Intersection of Intellectual Property, Patent Law, and Software Piracy

Date: March 14th
Event: Software CLE
Location: Seattle University Law School

Speakers:
Judge James P. Donohue, Magistrate Judge, Western District of Washington
Katheryn Frierson, Assistant U.S. Attorney, Criminal Division, U.S. Attorney’s Office, Western District of Washington
William J. Harmon, Senior Attorney, Microsoft Corporation, Redmond, WA
Michael D. Stein, Partner-in-charge, Woodcock Washburn, Seattle, WA

Register Online for the SU Software Piracy CLE

Washington State Patent Law Association CLE

Date: March 19th
Event: Lunch CLE on Patents
Location: Washington Athletic Club, First Floor

Schedule
Registration 11:30 a.m.
WSPLA Business 11:55 a.m. – Noon (Please note early start)
Program and Lunch: Noon – 1:30 p.m. (Please note due to volume of material to cover, the Program will begin at noon sharp)

Cost: WSPLA Members $55 Students $35 Others: $75
Panelists:
-Dale R. Cook, Intellectual Ventures
-Scott R. Hayden, Amazon.com
-Jennifer K. Johnson, Zymogenetics
-Brian C. Park, Dorsey & Whitney

Cases Discussed:
SanDisk Corp. v. STMicroelectronics, Inc. (Federal Circuit repudiates “reasonable apprehension of suit” standard for patent declaratory judgment actions and might allow DJ actions in response to any invitation to license)
In re Comisky (Method claims that depend entirely on use of mental processes do not contain patentable subject matter)
In re Nuijten (Federal Circuit says electrical signal not a “manufacture” and therefore not patentable subject matter)
In re Seagate (Federal Circuit replaces duty of due care standard for avoiding enhanced damages with “objective recklessness” standard)
KSR Intl v. Teleflex (Supreme Court rejects rigid application of Federal Circuit’s “teaching, suggestion or motivation” test for obviousness)

Music in the New Millennium

Date: March 28th
Event: Future of Music panel talk
Location: Davis Wright Tremaine LLP, 1201 Third Ave, 22nd Floor Seattle Wa
Cost: Suggested contribution of $15 (law students are free).

Speakers:
Dave Dederer Lead singer of Presidents of the United States of America and VP of Content for Melodeo
Robert Sullivan, Music attorney for Johnny Cash, Randy Travis
Dan Sheeran, SVP RealNetworks
Online Registration

“Orphaned Works” comprise the majority of works from the 20th century culture. Most works produced after 1923 are still under copyright, but the copyright owner cannot be found. As a result, orphaned works are not used in new creative efforts or made available to the public due to uncertainty over their copyright status, even when there is no longer anyone claiming copyright ownership, or the owner no longer has any objection to such use.

One possible solution to the orphaned works problem is a “Use it or Lose it” provision: a statutory end to copyright if the work is not made available in commerce for a period of time. In the trademark realm, one loses the rights associated with a mark if they do not use it or if they abandon it. Copyright is granted to bring works to the pubic. Limiting the exclusive rights when works are not brought to the pubic is congruent with Article 1 Section 8 Clause 8: “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries; ”

More on Orphaned works at Duke