Gonzaga Saul Lefkowitz Trademark Moot Court Team: BEST Brief
Congratulations to Gonzaga’s team of Lorie Mallari, Reid Jennings, John Nelson, and Libby Zinke competing down in San Francisco for having the best brief in the region!
For more information on the Saul Lefkowtiz Moot Court Competition: INTA.org
Temporary Restraining Order Issued Against RIM over BBX Trademark
By: Peter Nguyen, 3L, Gonzaga University School of Law
In an update to the post on November 2, 2011 by Alex Ferguson, a judge has issued a temporary restraining order against RIM from using BBX as the name of its next operating system at an upcoming developer’s conference in Singapore. As a result, RIM has decided to rename its operating system to the Blackberry 10.
In the order against RIM, the judge found in favor of Basis, the registered holder of the BBX mark, because it found that a likelihood of confusion (LOC) existed. In its analysis, the court examined found that all of these LOC factors favored Basis: (1) the degree of similarity between the marks; (2) similarity of products and manner of marketing; (3) the strength or weakness of the mark; (4) evidence of actual confusion; (5) intent of the alleged infringer in adopting its marks; and (6) the degree of care likely to be exercised by the purchasers.
Links:
(1) NYT – After Court Ruling, Rim Changes Name of New Operating System
Apple vs Samsung: The Complete Picture
By Alex Ferguson, 3L, Gonzaga University School of Law
New technology website, The Verge, put together an incredible timeline of the patent war between Apple and Samsung over various design patents. As the article points out, the war erupted between Apple and Samsung in the United States and then spread throughout the rest of the world. Each side has won some battles in different regions of the world.
In the recently released biography of Steve Jobs by Walter Isaacson, Steve Jobs said, “I will spend my last dying breath if I need to, and I will spend every penny of Apple’s $40bn in the bank, to right this wrong.” Additionally, Steve Jobs told Isaacson. “I’m going to destroy Android, because it’s a stolen product. I’m willing to go thermonuclear war on this.” The biography also reports that Steve Jobs was not interested in settling the claims.
Apple brought suit against HTC, another Android handset maker, in March of 2010 for patent infringement. HTC has counter-sued Apple. The case with HTC is still ongoing. In October 2010, Apple sued Motorola for patent infringement. Apple brought suit against Samsung in April of 2011, also for patent infringement. Even though the suit against Samsung is the most recent of the patent suits filed by Apple, it has garnished the most attention, because of the global scale and ferocity that each side has been fighting.
It will be interesting to see how the cases against Samsung proceed in the coming months as new devices are released and more hearings are held throughout the world. However, more interesting will be how Tim Cook, Steve Jobs successor, handles any settlement offers.
The full timeline, with updated events, can be found at http://goo.gl/DyvkA
IP Licensing Drafting Issues
By: Reid Jennings, 3L, Gonzaga University School of Law
This is an overview of the presentation given by K&L Gates attorney, Nancy S. Kim, at the WSBA Intellectual Property Institute regarding the issues that crop up when drafting IP Licensing agreements. These were some of the highlights and takeaways from the presentation.
The first step when meeting with a client regarding an IP licensing transaction is to educate the client about the most common terms covered by these types of agreements. A partial list of topics and terms that should be covered are discussed in the General Drafting Tips section below. The next step to be taken when meeting with a client is to figure out what IP the client wants to license and what rights in the IP those licenses will grant. For example, consider whether software and/or the source codes are going to be licensed and whether the licensee has the right to reproduce such material. Finally, after the broad scope of the agreement has been determined, you should help the client to formulate approaches to each of the topics of the agreement.
- Topics to specifically address in your IP licensing agreement
- Work made for hire – this issue is present in many IP licensing agreements (this is especially relevant for employee-employer relationship).
- Extra security built into agreement in the form of assignment to any outside collaboration or outside exposure to the IP.
- Make sure to include the scope of the license grant (this includes all the applicable terms from the statutes – e.g. for patent, you should include terms addressing make, use, have made, offer to sell, sell, import).
- General Drafting Tips and issues
- License Conditions v. Contract Covenants – broader damages are allowed for license conditions (license grant is subject to another event, such as promise not to do something).
- Licensee v. Licensor – who are the parties actually benefiting from the agreement (is a third party receiving deliverables with licensee’s added work or is licensee passing IP straight through).
- Restrictions that should be included – reverse engineering; open source access; disclaimer of implied licenses; export restrictions (licensee may gain implied rights if those rights are not disclaimed).
- Term and Termination – these must be considered in terms of clients short and/or long-term goals, the relationship of the parties, and the type of technology
- Confidential and Sensitive Information concerns – should also consider specific remedies for breach of these obligations.
- Indemnification – licensee indemnification from licensor or mutual indemnification; insurance; choice of counsel; rights/obligations of parties (settlement approval, notice, cooperation with litigation, etc.).
- Warranties and Limitations of Liability – non-infringing use warranties; any other excluded warranties.
- Assignability – whether the IP can be assigned; approval by licensor; portions of IP to be assigned; limitations on assignment.
The Value of Yahoo!’s Patents & How They Might Affect Facebook
By: Peter Nguyen, 3L, Gonzaga University School of Law
According to an article on Forbes.com, Yahoo! is the current owner of a patent that could substantially hurt Facebook. However, as a result of Yahoo!’s relationship with Microsoft (a Facebook investor), the company has not attempted to license the patent or initiate any legal actions against Facebook. But if Yahoo! were to be sold, the new owners of Yahoo!’s patents might not be so charitable. And who might want to purchase Yahoo!’s patents you might be wondering… Google of course.
Link to Article:
The Owner of Yahoo!’s Patents Could Cripple Facebook’s IPO Aspirations
The Power of Patents: Patents May Save Kodak From Bankruptcy
By: Peter Nguyen, 3L, Gonzaga University School of Law
Kodak, the company associated with popularizing photography, is apparently in financial distress. However, Kodak may be seeing a large infusion of money if they can work out a deal for the sale of 1,100 of its digital imaging patents, about 10% of its patent portfolio. The company hopes that the sale will relieve it of some of its ongoing financial problems.
Many analysts, based off of the recent sale of the Nortel patent portfolio, have projected that the 1,100 Kodak patents could sell for $2 to $3 billion, while others believe it might sell for even more than that. However, some analysts have pointed out that the value of the patents may be less due to possible licensing deals Kodak may already have for some of those patents.
Looking at recent history, two obvious potential buyers are Google and Apple. With all of the patent litigation going on over both company’s mobile devices, it would not be unexpected for these two technology giants to purchase some more “ammo” to both defend themselves and go after their competitors.
Regardless of the actual figure that these patents sell for, this is another example of just how important patents have become. Whether through licensing revenue (Kodak has informed its investors to expect revenue of $250 to $350 million through 2013 from IP licensing) or the sale of the patents, they are of monumental importance to the profitability and overall health of a company, especially those in the technology field.
Links to Source Articles:
(1) Huffington Post - Kodak Patent Sale Could Save Photography Company From Bankruptcy
(2) WSJ – Kodak Starts Patent Sale
(3) Bloomberg – Kodak Said to Face Pressure From Bondholders on Patent Sale
By: John McDonagh, 2L, Gonzaga University School of Law
Enacted on September 16, 2011, the Leahy-Smith America Invents Act (AIA) revises 35 U.S.C. and is the most significant change in the United States patent system since the Patent Act’s 1952 revision. Most notably, the new law disposes of the traditional “first to invent” approach and adopts the “first to file” approach. Effectively, this change eliminates the traditional grace period that previously provided an inventor with one year to file for patent registration after the invention’s date of conception without risking another inventor successfully filing and qualifying as prior art. This shift to a first to file system will have the largest impact on smaller inventors who lack the resources of larger corporations that can afford the high cost of multiple patent applications.
As enacted, the first to file system eliminates interference proceedings, which the USPTO previously used to determine application priority when near-simultaneous applications were filed for the same patent, and inventors are now required to submit multiple patent applications early-on in the inventing process in order to protect their idea. This creates an exponential increase in the costs affiliated with obtaining a patent, and provides a competitive advantage to large corporations and inventors with sufficient capital to invest in the process. The increased burdens on smaller inventors are further demonstrated by the AIA’s establishment of a Priority Examination option for patent applications, which is offered for an additional fee. A standard application can take years to be selected for review by the USPTO, whereas a Priority Examination application is reviewed within one year of filing. Accordingly, with the first-to-file system, an inventor waiting in the standard application queue risks another inventor filing for the same patent in the Priority Examination fast track and establishing prior art.
The AIA contains a provision that allows the Small Business Administration a year window to report on the resultant hardships and burdens that come with enacting the AIA. Unfortunately, the majority of AIA’s provisions do not go into effect until March 16, 2013, a full six months after the allotted time to report on resultant burdens. The concern arising from this six-month differential is that many attorneys may not counsel their clients on the new laws until after their effective date and after the allotted time to report concerns.
The effects of the AIA on inventors with limited resources are only a portion of the Act’s revisions, and their total effect will become more apparent as the law comes into effect. Accordingly, patent attorneys have a duty to establish immediate familiarity with the new laws and their effects to ensure their clients’ ideas remain protected.
For a comprehensive analysis and breakdown of the Leahy-Smith America Invents Act and its subsequent consequences on the U.S. Patent System, see Hal Wegner’s article: The 2011 Patent Law: Law and Practice – An Analysis of the Leahy Smith America Invents Act.
RIM hit with trademark lawsuit over BBX, name of next BlackBerry OS
By Alex Ferguson, 3L at Gonzaga University School of Law
Full article at RIM hit with trademark lawsuit over BBX, name of next BlackBerry OS.
Upon seeing the headline I assumed that this lawsuit was going to be in the same vein as all of the other recent mobile phone lawsuits, which appear to be filed to annoy competitors. However, it appears that Basis has a strong claim and reason for wanting to protect its BBx mark against RIM’s use of BBX.
Basis makes software tools that run on multiple operating systems, including Android, iOS, and Blackberry and is alleging that RIM’s use will confuse its customers into believing that its products will only be compatible with RIM’s BBX operating system. Therefore, Basis is seeking an injunction against RIM, preventing the use of BBX. RIM believes that the marks participate in different markets and will not lead to a likelihood of confusion.
“PepsiCo Accused of Deceptive Advertising to Teens with Hotel626 and Asylum 626 Digital Marketing Campaigns “
By: Alex Ferguson, 3L, Gonzaga University School of Law
“The interactive horror-themed websites Hotel626.com and Asylum626.com are the cornerstones of a complaint filed last week by a coalition of four consumer and privacy groups accusing PesiCo and its Frito-Lay subsidiary of “deceptive and unfair digital marketing practices.” The sites are interesting examples of the innovative methods of digital marketing — as well as the potentially problematic practices surrounding digital marketing aimed at adolescents.”
This is not a direct IP case, but it does raise some interesting questions and may be have an impact upon how IP is used in future digital advertising. The complaint filed by the consumer groups focuses on the fact that the viral websites operated by PepsiCo advertise to teens, “under the radar of parents and policy makers.” Viral marketing has become popular in recent years and websites like hotel626 are not new. Viral marketing is difficult to regulate, because the marketing is subversive. It will be interesting to see if this case will have a future impact on use of trademarks in digital advertising.
Full article available at: http://bigthink.com/ideas/40803
Library of Congress asks: how should we let you break DRM?
By: Alex Ferguson, 3L, Gonzaga University School of Law
Excerpt from the full article at Library of Congress asks: how should we let you break DRM?.
“For the fifth time since the Digital Millennium Copyright Act (DMCA) was passed in 1998, the Library of Congress is preparing to grant limited rights to crack DRM locks on digital content. Not that it matters much; despite an increased willingness at the Library to grant such permission, the actual tools most people need to bypass DRM remain forbidden. Even if you want to take advantage of your rights under the law, you’ll probably break the law to do so.
The DMCA made it illegal to bypass most DRM and to “traffic” in the tools to help do so. But to ensure that DRM couldn’t be abused too badly, the law also granted the Library of Congress the right to grant exemptions every three years. The Library couldn’t make DRM-cracking tools legal, though, and it also couldn’t make the exemptions permanent. Every three years they would reset, giving major music labels, movie studios, and even Apple the chance to quash them.”
