Posts Tagged ‘Copyright’

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By: Mark R. Malek

As promised in my last article, I wanted to provide you with an example that I have come across of the overenforcement of copyrights. The articles that I am posting lately regarding copyrights find their origin in a debate I had recently on twitter with some folks that believe that copyrights should be abolished.  As indicated in my last article, I just do not understand the thoughts of copyright abolitionists.  That is despite the several times that they have tried to explain it to me.  Go back and read some of the back and forth comments in the last article.

I do understand the view that copyrights are sometimes over enforced.  The example I provided in my last article was when an alleged owner of software attempted to bring a copyright infringement lawsuit against one of my clients, but took the position that since my client’s software performed the same function, it must have infringed the copyright of his software.  WRONG!  The unfortunate part is that my client had to engage in federal litigation in order to win his case, but it just should not have ever even come to that point.

In that particular case, the two parties attempted to enter into a business relationship, but for a number of reasons, they decided to go their separate ways.  One party moved forward with a very old version of his software.  The other party, my client, decided to independently create a new version of the software without copying a single line of code or any screen shot of the original version of the software.  In fact, the new version of the software was written in a completely different software language, had a different appearance, and carried out far more functions than the original.

Despite all of the above, my client was, nonetheless, served with a lawsuit alleging, among several other ridiculous causes of action, copyright infringement.  There are two options at that point.  First, ignore the lawsuit, have a default judgment entered against him, and the court grant all the relief that the plaintiff is asking for.  Second is to fight the suit.  Of course, a third option, settlement, was explored, but that did not exactly work out.

Throughout the process, I was up against an attorney that really did not have much experience in copyright litigation.  This is despite being admitted to the bar for about 30 years (probably more, but I didn’t care to ask).  I have always said that intellectual property law is not something that an attorney should dabble in.  It is pretty specialized, and although times may be tough for some attorneys, that does not mean they need to start practicing door law, i.e., they can handle any case that walks in the door.  It was very frustrating to continuously try to explain copyright law to opposing counsel, and to have to appear before the court simply for the court to also explain why certain things were not discoverable.  Turns out the case was just an attempt for the plaintiff, who was not a proficient computer programmer, to get his hands on my client’s source code so that he could infringe it.

Almost needless to say, the case ended in my client’s favor, but to what end?  My client spent substantial sums of money defending a case for copyright infringement when there really was no case to be made for copyright infringement.  This was an example of someone trying to overenforce a copyright.  This guy had a copyright in the original software, but was not pleased that someone else had a software that carried out a similar function.  Again – function is not protectable with copyright.

I’m going to keep posting on this topic.  Some of the issues I want to discuss in the future is going to be about the copyright term (why it may be too long) and the blurred lines between copyrights and patents.

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By: Mark R. Malek

As many of you know, I am quite active on twitter.  Feel free to follow me if you would like @ptolawyer.  With over 23,000 followers, I often discus intellectual property topics using the twitter interface.  For the most part, I provide updates to intellectual property law and answer questions of some of my followers. I have met many colleagues on twitter, and often use it to bounce questions off of them.  I especially like hearing about the success of some of my colleagues in the patent and/or trademark prosecution process.  Twitter is also a great way for me to follow the various conferences that may be going on around the country.

Over the past couple of days, however, I found myself in a debate with a few twitter users about copyrights.  For the most part, I understood most of their points, and I did not necessarily disagree.  The big issue was the extent of copyright protection.  At least that is what I thought it was.  Turns out that a few people who decided to chime in were trying to advance the position that copyrights should be abolished completely.

 That’s where they lost me.  Let me first address the argument that copyrights are overly broad and that they are sometimes overly enforced.  I agree with the later part, but not so much the first part.  I guess if someone is trying to use copyrights to enforce something that they are not meant to protect, there is an issue.  For example, I have seen too many times over zealous parties trying to enforce the function of software using a copyright.  Let me say this in no uncertain terms – COPYRIGHTS DO NOT PROTECT FUNCTION.  There simply is no discussion to be had on this.

Copyrights do have their place though, which is why I even begin to understand where the copyright abolitionists are coming from.  During the twitter debate this past week, the copyright abolitionists were trying to explain to me how copyrights infringed their civil liberties and that Congress is not empowered to provide for copyright protection. Seriously?  The United States Constitution specifically provides Congress with the power to promote arts and science through copyrights and patents.  Guess what?  They did just that.

Let me take another approach regarding the copyright abolition view.  Let’s pretend that you are musician and you and your band have scratched and clawed to make it.  You have played in dive bars on late Friday nights to a rowdy crowd (yes, I have been a part of those crowds before) and you might be paid barely enough to cover the expense of the fuel to and from the bar.  One day, a song of yours becomes really popular and it turns out that there are some people who are willing to pay for your music.  You have finally made it, and the way that you are going to make a living from now on is to sell your music.  Unlike the big music business of today, you decide to go it alone without a label, put your music up on iTunes, and sell it for a reasonable price.  Despite selling it for a reasonable price, some folks decide that it is not worth paying for it.  These are the ones that start sharing your music in the form of digital files on some nefarious internet sites.  What can you do?  You can attempt to use copyright law to stop them from distributing your music without your consent and, more importantly, without paying you.

The copyright abolitionist is ok with this.  Apparently, no one should be compensated for creating new works of art.  To be fair, the copyright abolitionist does not come out and say this.  Instead, they stop short and just say that there should no longer be copyrights.  Ok, tell me the end of the story.  How does the creator of an original work of art ensure that the original work of art is not misappropriated?  Is the creator simply left to rely on the decency of people and hope they will pay for something that is otherwise available for free?  Get real.

I guess that brings me to the question of the day to the copyright abolitionist – what does the creator of a work of art do if the work of art is misappropriated in the absence of copyright?

I will continue to post on this topic.  Let me know what you want to chat about and I’ll write some more.  I figure my next article will be about the over enforcement of copyright.  Perhaps I’ll even discuss some copyright cases that I have had in the past and how some copyright owners are just out there on what they believe their rights really are.

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At first blush, it makes sense. You, the owner or chef of a restaurant, invest a lot of time, energy, and trial and error into a new creation, only to see a knockoff down the street scoop it up, perhaps after hiring your departed sous chef. Wanting blood, and some money too, you call a lawyer to find out your options, and sitting on your hands and watching your, ahem, trademark, recipe be mishandled and misappropriated just won’t do.

According to the United States Patent and Trademark Office:

A mere listing of ingredients is not protected under copyright law. However, where a recipe or formula is accompanied by substantial literary expression in the form of an explanation or directions, or when there is a collection of recipes as in a cookbook, there may be a basis for copyright protection. Note that if you have secret ingredients to a recipe that you do not wish to be revealed, you should not submit your recipe for registration, because applications and deposit copies are public records.

The USPTO provides further explanation: “Copyright law does not protect recipes that are mere listings of ingredients . . . Copyright protection may, however, extend to substantial literary expression—a description, explanation, or illustration, for example—that accompanies a recipe or formula or to a combination of recipes, as in a cookbook.” And don’t try to sneak your recipe in either, unless you want to give everyone in the free world a courtesy copy: applications and deposit copies are public records, so your secret ingredients will be forever available for use and abuse. In short, keep it in your pants.

That is, in short, why Coca-Cola (supposedly) keeps its recipe in a sealed vault. Should the formula escape, there’s no legal protection afforded it. However, the law sets the lowest bar for personal and business conduct. Ethics and common courtesy inform us that one should not use someone else’s idea, at least not without proper attribution. Just like your fourth grade research project, anyone lifting a recipe should, in my judgment, give credit where it is due.

Cookbooks are a different story. The introductory flourishes preceding each recipe, the illustrations, and other original works of authorship may be copyrighted.

What about that errant sous chef? The solution to employees running off with recipes is to ask all employees to sign an intellectual property assignment.  It’s never too late, but an IP assignment matters most before the recipes are invented. It’s trickier to get the genie back in the bottle, but in early stages of growth, make sure your employees assign all recipes developed during the course of their employment to your restaurant.  This is also important for the all-important sale of your restaurant, because the buyer will likely insist that you provide proof and/or assurances that your recipes are owned by the restaurant. The IP assignment should be an unimposing, short agreement. It’s important that your employees receive “consideration” when they sign to make it enforceable. A small bonus or promotion is sufficient.

Aaron Thalwitzer is an attorney practicing civil litigation and intellectual property law with Zies Widerman & Malek in Melbourne, Brevard County, Florida.

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Relax.  It’s not that kind of post.

Today I am christening a new TacticalIP blog category:  Intellectual Asset Management (IAM).  To introduce some terminology used in the field, I thought I would share the story of my initiation to the world of IAM.

Long before I became a patent attorney, I was a software engineer and entrepreneur.  My five-employee company licensed property insurance rating software to agents across the State of Florida.  One day, I called my only competitor and pointed out that the Florida rating software market “wasn’t big enough for the both of us” (yes, it was an awkwardly John Wayne-esque conversation between two computer geeks).  I eventually agreed to sell my software line of business to the competitor company.

No tangible property changed hands in our sales transaction, as my little software company owned no buildings, vehicles, furniture, nor even our rapidly-depreciating computing hardware.  To support the sale, I collected an inventory of all the intellectual property my company was to formally hand over to the buyer.  For example, our copyrighted software code, training manuals, and website content all qualified as intellectual property.  Also, the trademarked software product name, logo, and slogans I conveyed to the buyer were all intellectual property.  Had my company owned and transferred any patent rights to insurance-related inventions, those patents certainly would have qualified as intellectual property.

Immediately after the deal to sell my rating business closed, the buyer unceremoniously pitched all of my company’s inventoried intellectual property directly into his trash can (figuratively, if not literally)!  Why?  Refer to the beginning of my story:  the buyer was a competitor!  That company already had its own insurance rating source code, training manuals, website content, product name, logos, slogans, etc.  So what exactly did that competitor really buy if not formal, government-registered intellectual property?  It turns out the only asset my company had that was of value to that competitor was … our customers!

While my company was operating, we followed the common industry practice of keeping our customer database confidential to complicate, if not prevent, pilfering of those customers by competitors.  Proprietary information used in the operation of a business and that is maintained confidential for competitive advantage is called trade secret.  My company’s customers were not its property (no company can “own” its customers).  Nonetheless, that trade secret list of customers was certainly an intellectual asset and, in the eyes of that competitor anyway, it was the only asset my company had that was of any value at all to his business.

Moral of the story:  Intellectual assets certainly include formal intellectual property rights (e.g., patent, trademark, copyright), but also may include a vast array of intangibles that nonetheless are of value to the asset holder or to some interested acquirer.  Intellectual Asset Management (IAM) is all about creating, managing and exploiting such intellectual assets to realize value for the owner.  What constitutes an intellectual asset often is limited only to the eye of the beholder.

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By: Mark R. Malek

Anyone who knows me knows that I am an avid (and sometimes rabid) fan of the New York Jets.  Therefore, it is no surprise that my email inbox this morning was flooded with links to a story that Tim Tebow’s attorney has sent a cease & desist letter to a T-Shirt company that is making the T-Shirt pictured below.  The letter can be found here.

As we indicated in some previous articles, cease & desist letters are a good starting point for enforcing your intellectual property rights.  For more information, take a look at the articles here, here and here.  Some of these articles are directed to protecting your patent rights, and some are directed to protecting your trademark rights. Either way, a cease and desist notice is one in which the intellectual property owner merely informs the alleged infringer of their rights, and demands that any further infringement be stopped.

Back to the story at hand, as you can see, the shirt in question changes the current New York Jets logo to read “MY Jesus” instead of “NY Jets.”  So I guess my question is what intellectual property right is Tim Tebow attempting to protect?  The letter indicates that the shirt makes it appear as if Tim Tebow endorses the T-shirt company. Really?  I am trying to figure out why that would be.  Is Tim Tebow the only Jets fan that believes in Jesus (I can say for a fact he is not – I’m one!!)

Of course, when my anti-Jets fan friends (especially the dang Dolphin fans and the Patriot fans) found out about the story, it made for the same joke over and over again – Even Tim Tebow thinks he’s Jesus!  Aghh!  Enough already.  I suspect that young Mr. Tebow does not really understand the ins and outs of intellectual property law and why his overzealous attorney is sending out letters like this.  Granted, Tim Tebow, like the rest of us, does enjoy a right to his own likeness, but it is not as though there is a trademark issue here for Tim Tebow, and if this is about a right to his likeness, then what likeness is being protected.  Does he really think that a reference to Jesus in connection with football is a reference to him?  News flash – there have been plenty of very talented NFL players that believe in and worship Jesus long before Tim Tebow came around.

At best, there may be a trademark issue for NFL Properties, who I believe is the owner of all the NFL logos, or perhaps even the NY Jets.  There is likely even a copyright issue here.  Technically, the NY Jets logo (in all its glory) is afforded copyright protection.  Therefore, this T-shirt can technically be thought of as a derivative work.  With that in mind, not one of these intellectual property rights is Tim Tebow’s to assert.  To the owners of Chubby Tees – I would be pleased to respond to Mr. Tebow’s attorney for you.  Side note – Before the Florida Bar asks, I am not soliciting business…I just want to have some fun with the response to the attorney that thinks the name of Jesus is the same as an endorsement by Tim Tebow!


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FRIDAY, OCTOBER 24, 2014

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