July 23, 2010
OZZY OSBOURNE AND TONY IOMMI SETTLE THEIR TRADEMARK DISPUTE OVER THE BLACK SABBATH NAME
The lawsuit between Ozzy Osbourne and Tony Iommi over the Black Sabbath trademark has been “amicably resolved” (source). Ozzy filed a lawsuit in May of 2009 after finding out that Iommi filed a trademark application for “Black Sabbath” with the U.S. Patent and Trademark Office. The lawsuit claimed that Iommi illegally took sole ownership of the trademark when he filed the application with the USPTO. The relief sought in the complaint for a 50 percent interest in the trademark, along with a portion of the profits that Iommi may have realized from use of the trademark. Ozzy claimed that it was his vocals that gave the band it’s extraordinary success. I’d bet that’s the same case for “The Osbournes,” the MTV reality show.
Black Sabbath is an English band formed by Ozzy, Iommi, Geezer Butler and Bill Ward in 1968. The band went through many iterations, but the one constant throughout the years was Iommi. Ozzy left the band in 1979. The original lineup reunited in 1997 and released one album.
Don't we all own the trademark???
This case was kind of interesting to me because it seemed to be a trademark dispute between two guys (Iommi and Ozzy) over a trademark that many people could probably claim an ownership interest in. From what I can see, there were more than 20 members of Black Sabbath over the years. It seems to me that many of those members, or their estates, could be entitled to some of the profits that are derived from the “Black Sabbath” trademark. Without question, Iommi and Ozzy are the most popular members of that band, and probably did lead to most of its success, but this case had every potential to get ugly quick. I am sure that this came up in the settlement discussions, i.e., some attorneys probably sat around a table and advised the two that if the case got dragged out, they should not be surprised if several other members of the Band came out of the woodwork to claim their piece of the pie.
Iommi is welcome to join our family anytime!
Appraently, the possiblity of yet another reunion has not been ruled out. It is a crying shame that “The Osbournes” reality show is not still around. Theycould have had entire episodes based solely on this lawsuit. The ratings would have been through the roof. Wishful thinking!
July 20, 2010
THE ROADMAP TO THE SUPREME COURT FOR BERNARD BILSKI
Many of my clients have been following the Bilski case. As our readers know, the case of whether or not a method for hedging risks in commodities trading was recently decided by the U.S. Supreme Court (see our updates here, here and here). The Supreme Court decided that Mr. Bilski’s “invention” was not directed to patentable subject matter. But how, you ask, did the question of whether or not Mr. Bilski’s invention was patentable get all the way to the United States Supreme Court? Shouldn’t these matters normally be decided by the U.S. Patent Office? Allow me to step you through the road map on how a patent applicant can find themselves before the United States Supreme Court arguing that the Patent Office, and everyone up to that point, is wrong about their invention.
The patent process begins with a spark of genius, i.e., coming up with your invention. The prudent inventor writes their invention down in an inventor’s log (try using a notebook that cannot have pages torn out of it). After the inventor gets their invention down on paper (or otherwise reduces the invention to practice), a search is in order. A great place to start your search is at www.google.com/patents. If you hit a brick wall, i.e., you cannot find anything close to your invention out there, then talk to a patent attorney and have a search done. It is highly unlikely that there is absolutely nothing out there like your invention. There is normally at least something related out there. After you have found the closest prior art, read it in detail, and point out the differences between the prior art and your invention. These are points of novelty that will form the basis of your patent protection.
At this point, it seems as though you are ready to file a patent application. Go to a patent attorney and see which patent application is right for you (see my previous posts on the right patent application for you here). Let’s assume that you have filed a utility patent application including claims directed to your invention. The claims of a patent application are the most important thing. Claims can equate to a property description. They lay out the boundaries of your protection and serve as the club with which you will later beat infringers or command a high licensing fee.
We are the gatekeepers of all invention!
Patentability is initially determined by the Patent Office through an initial opinion issued by a Patent Examiner in the form of an Office Action. It is not uncommon for an initial Office Action to be in the form of a rejection of all the claims that you have filed. The rejection is not the end of the world. When filing your application, you should have drafted some broad claims in an attempt to seek as much protection as possible. Similarly, the Examiner will likely read prior art references broadly and use them to reject your claims.
After receiving an Office Action, you will engage in a “negotiation” process with the Examiner. You will attempt to either amend your claims to narrow the scope somewhat, or argue that the prior art cited by the Examiner does not read on the invention as recited in the claims. In Mr. Bilski’s case, those arguments were futile, and the Examiner issued a Final Office Action. Your option at this point is to file a response to the Final Office Action, file a Request for Continued Examination (RCE) or appeal. An RCE starts the examination process over again and, in short, gives you another bite at the apple.
Mr. Bilski filed an appeal of the Examiner’s decision. An appeal of an Examiner’s decision is heard at the Board of Patent Appeals and Interferences (BPAI). The initial step is to file a notice of appeal and an appeal brief. The Examiner, in turn, files a response brief. The briefs are reviewed by a group of Examiners prior to going to the BPAI. Often times, issues are resolved at that level, but not in Mr. Bilski’s case. If you do not like the decision of the BPAI, then your option is to appeal to the United States Court of Appeals for the Federal Circuit (CAFC). This is the first step that the inventor has taken outside of the Patent Office.
This is truly a legal proceeding. At the CAFC, the inventor will file an appeal brief, and the Patent Office will file an answer brief. The case will initially be heard by a panel of three judges who will hear the inventor’s arguments and the Examiner’s arguments. The CAFC will issue a decision either upholding the Examiner’s decision, overturning the Examiner’s decision, or sending it back to the Patent Office with some instructions on how to further examine the case. In Mr. Bilski’s case, the CAFC upheld the Examiner’s decision and noted that Mr. Bilski’s invention was not patentable. The game did not end there, however. Off we go into extra innings (as I’m typing this I’m watching the Phillies/Cubs game).
Since Mr. Bilski was obviously dissatisfied with the decision of the three judge panel at the CAFC, he then requested a rehearing before the CAFC en banc, meaning that all the judges of the CAFC should hear the case. It was the decision of the en banc CAFC that gave us the “machine or transformation” test. As noted in my previous post, the en banc CAFC held that Mr. Bilski’s invention was not patentable because it did not meet the machine or transformation test.
The case didn’t end there, however. Mr. Bilski, and much of the patent community, was not satisfied with the en banc CAFC test as it had ramifications in many industries, and essentially did away with business method patents. The next step was to appeal this decision to the United States Supreme Court. The parties filed their respective briefs were filed, and several third parties filed amicus briefs (as was also the case at the CAFC) putting forth various points and opinions for both sides. After the Court took into consideration the briefs filed by both sides, as well as amicus briefs, they eventually handed down the decision that is before us today.
Clearly it was a long road for Mr. Bilski, and quite the dissatisfying one, but as a patent practitioner, I sure am glad he stuck with it. His decision to take this case to the High Court brought to the forefront the issues that have been plagued the Patent Office for years, i.e., are business methods patentable and are software inventions patentable. The answer to both is yes, but that came along with some more questions. I’ll be back soon with some more analysis about these issues.
July 12, 2010
BILSKI IS FINALLY DECIDED AND NOW WE HAVE SOME REAL QUESTIONS
As many of you already know, the United States Supreme Court has finally handed down its decision in the case of In re Bilski (Decision). For some background on the Bilski case, please see my previous posts here and here. The Court of Appeals for the Federal Circuit held that Mr. Bilski’s invention was not patentable. In doing so, the Federal Circuit essentially did away with business method patents and pronounced the “machine or transformation” test for patentability.
The Bilski Patent Application has Died
The Supreme Court affirmed the Federal Circuit’s decision with respect to Mr. Bilski’s patent application, i.e., his invention is not patentable. Mr. Bilski’s invention relates to a system for hedging risks in commodities trading. Although the Supreme Court noted that the Federal Circuit’s decision was too restrictive, the Court still held Mr. Bilski’s invention to be unpatentable. More specifically, the Court held that Mr. Bilski’s claimed invention fell into one of the three specific exceptions to §101 of the patent statute, finding that it was an abstract idea. The other two exceptions are laws of nature and physical phenomena.
In holding that the “machine of transformation” test is not the only test of patentability, the Supreme Court noted that the Federal Circuit erred by violating two principles of statutory interpretation: Courts should not read into the patent laws limitations and conditions which the legislature has not expressed and that unless otherwise defined, words will be interpreted as taking their ordinary meaning. Since Mr. Bilski’s invention was defined as a “process” the Court held that there is no meaning of process that would require Mr. Bilski’s invention to be tied to machine or to transform an article.
Finally, the Supreme Court held that the term “process” does not exclude business methods as being patentable. The Court specifically noted that it is not clear whether a business method exception would exclude technologies for conducting a business more efficiently. Of course, that raises many questions for inventors and patent practitioners across the board. It seems to me that it would be impossible to write a patent application that was not tied to machine or apparatus without it being an abstract idea. After all, is that not what Mr. Bilski was trying to do? The court does note that while §273 of the patent statute appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions. Therefore, the Court just let us all know that if you can somehow get a business method through the PTO, it had better be very narrow. I suppose you have to question the value of such a patent, i.e., is a patent that can be very easily designed around very valuable? In many cases, the answer can certainly be yes, but it is something that needs to be analyzed during the patent prosecution process.
Probably the toughest part to swallow about this decision is that the debate over business method patents and, more than likely, software patents, is far from over. This is evident in the last paragraph of the syllabus when the Court invites the Federal Circuit to develop other limiting criteria that further the Patent Act’s purposes and are not inconsistent with its text. At the end of the day, this decision likely created more questions than answers, but at least we know that patent litigators will still be busy over the next few years trying to flush out that which is still patentable. Stay tuned for some follow up articles on how the Patent Office is handling this decision.
January 5, 2010
Paris Hilton continues her IP education… from the defendant’s chair
After getting the go-ahead from the Ninth Circuit earlier this year on her “That’s Hot!” trademark infringement case against Hallmark, hotel heiress Paris Hilton has apparently signed up (although unwillingly) for another intellectual property lesson. This time, she’s going to be studying design patents. Her professor, a footwear designer called Gwyneth Shoes, claims that its design patent has been infringed by Ms. Hilton’s kicks. (Source.)
If you look closely, you can see the heart.
Design patent protection is similar to copyright protection, in that the alleged infringer is in trouble if they’ve produced something that is substantially similar to the protected design. However, while the government simply gives out copyright registrations, upon request, design patents are only awarded after an examination is done and it has been determined that the proposed design is novel (i.e., no one else has previously designed a product like this).
Gwyneth’s design
The prize for successfully prosecuting a design patent application? Complete national monopoly for 14 years. Since copyright protection lasts for a minimum of 70 years, some people would argue that a design patent is hardly worth the effort and cost. The problem with that logic is that copyrights come with a whole boatload of limitations, leaving room for potential defendants to get away free. As a key example, fair use and independent creation are no defense to a charge of design patent infringement. Just ask Paris Hilton, who undoubtedly has just learned about this little wrinkle from her attorney.
October 23, 2009
DMCA Takedown Notices Must Consider Fair Use
The Digital Millennium Copyright Act (DMCA) was signed into law by President Clinton in 1998 and is an implementation of two World Intellectual Property Organization (WIPO) treaties. To make it much simpler than it really is, the DMCA is directed to provide protection to copyright owners that find their copyrighted materials improperly posted on the Internet. Again, that is a big oversimplification of the provisions of the DMCA, but it is enough of a background for this story. The full text of the DMCA can be found here.
On its face, the statute provides an important enforcement mechanism for copyright owners who can’t necessarily afford to hire a legal team. As it works now, copyright protection is created without any real effort on the part of the author, and as a result, it is incredibly easy for someone to have enforceable copyrights. With the current state of technology, it is becoming equally easy to infringe on them, so lawmakers wanted to make them just as easy to enforce. However, as with nearly every other well-intentioned legislative initiative, the DMCA’s power to do good has been twisted by the hands of the wicked into a weapon for evil.
October 14, 2009
Announcing the “IP Bully of the Month” Award
by Philip Zies
Due to the overwhelming popularity of our "IP Bully of the Week" award, or perhaps because of the prevalence of perceived IP Bullies, TacticalIP.com is rebranding its award as our "IP Bully of the Month" award and offers the following candidates for consideration, in addition to the award winner announced October 7, 2009:
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Big Boy Restaurants International, LLC — for demanding that a 14 foot big-boy-on-a-pole be removed from a memorial in Charlston, South Carolina. The memorial was created in honor of the original 1947 Shoney’s Restaurant, belonging to that chain’s founder, Alex Schoenbaum. At one point, Big Boy and Shoney’s were merged, but Shoney’s later split off again. (source)
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World Wrestling Entertainment, Inc. — for demanding that the The Wine School of Philadelphia stop using the name "Sommelier Smackdown" for the food and wine pairing competitions that it has held since 2007. (source)
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Hansen Beverage Co. (maker of Monster energy drinks) — for demanding that Rock Art Brewery, in Morrisville, Vermont, rename its beer, which is now known as "The Vermonster". (source)
Stay tuned for more nominees, and we may actually pick a winner at some point. Sound off in the comments with your favorite, or if you’ve got a nominee of your own.
October 3, 2009
The North Face claims that consumers don’t know their heads from their asses
Clothing producer, The North Face (TNF), recently got a lesson in how bad trademark enforcement decisions can make a company look silly. It seems a St. Louis teen thought that it would be amusing to create a clothing line parody, calling it “The South Butt,” — south being the logical opposite of north and butt being… well… you get the idea. TNF was not amused, however, and they set their attorneys to attack mode, sending a cease and desist letter to the college freshman (source).
TNF’s letter asserted that use of the “South Butt” logo (pictured below) constitutes an infringement of their own federally registered trademark (pictured above). On its face, TNF’s claim is not so unreasonable. As any trademark owner (who has a decent attorney) can tell you, trademark rights can be lost if you don’t enforce them. TNF must, in order to maintain its ability to sue legitimate infringers, actively look for unauthorized uses of its logo. However, owning federal trademark rights does not mean you can stop every use of your mark that you don’t like. Federal trademark law was created to prevent consumers from becoming confused about the source of goods, not give complete exclusionary rights in logos, words, and phrases. It certainly wasn’t meant to give companies the power to stifle criticism — a point that corporate attorneys seem to frequently fail to explain to their clients.
