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Archive for January, 2011

Advice to a Software Counterfeiter

31 Jan

Question

I recently got in touch with some wholesalers from china and they told me that they sell a very expensive software at a very cheap price. so i thought I could make some money selling those. I put many ads on Craigslist advertising that i am a wholesale dealer selling the product. My plan was that if someone order that from me , i would i have one of the wholesalers from china ship the product straight to them and get some money out off the deal. some people contacted me about the product but we never went all the way through. i was not able to sell any. I recently received an email accusing me for piracy. the email says that i violated the copyrights. I contacted the people and and explained them the situation and they told me that even though i never sold any, i violated the copyrights just by offering the product online. they asked me to pay some money and they will drop the case. if not i will be in big troubles. Am i really in trouble?? what should i do?
Missouri 64112 2011-01-05
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Answer 2011-01-31 :
I see you still have no answer. I did not answer earlier as you sounded like a sleazy counterfeiter to me and I don’t want any sleazy clients – they tend not to pay their bills. Still, you deserve a response, and you may be honest and just made a mistake. You should hire a copyright attorney to give “the people” a response explaining that offering to sell a counterfeit is NOT copyright infringement if no copying occurs. If any of your ads result in a sale, even if you are not the one producing, shipping, distributing, etc. you are guilty of contributory infringement or inducing infringement. So, “the people” as you call them are probably right. However, that is not the end of the story. In advertising the software you have undoubtedly infringed on the software producer’s trademark, as well, and have even more liability, to the point they could sue you and perhaps get punitive damages and attorneys fees. So you need more than a copyright lawyer, you need an intellectual property lawyer versed in both trademark and copyright litigation to analyze the CDL (cease and desist letter), talk to the software company lawyers knowledgeably, and to assure them you learned your lesson and won’t be bothering them with counterfeits anymore. The word of a counterfeiter will mean nothing to them, but a lawyer’s assurance will. I am such a lawyer, and I am licensed in Missouri, and I am experienced in this type of situation. In fact, I have gotten letters like that myself from Charter, Microsoft and Autodesk when testing BitComet, Limewire, Grokster, Kazaa, and the like. There are other good IP lawyers in Missouri, but they will cost you more and likely know less. Before I do this for you I would need to chat with you (618-462-3450), for free, to be sure I would want to work for you on it, to find out who “the people” that wrote you are, and to discuss my fees for doing it. Specifically, if you are a counterfeiter who intends to keep counterfeiting and just wants to duck your responsibility in this case and keep infringing, I want nothing to do with you. If this was a mistake and you do not intend to repeat this, then I want to help you out. If you don’t call, I will know you are dishonest counterfeiter whom I would not want to work anyway. If you do call then I will expect you to do the right thing and stay legal and we can talk and I can probably solve this for you at minimal expense.

 

A Taste of Trademark Law – Similar Mark on Different Product and Service

31 Jan

Question

Hello, I am in the process of publishing a book and I am from Chicago. In the city of Chicago we have a event that happens every year called Taste of Chicago that all the restaurant in the city come and sell there foods and on the fourth of July the city does the fireworks from the lake for the event. I want my book title to be A Taste of Chicago but it has nothing to do with food, it is a book based on a young girl from Chicago that left and went into the military and began that wonderful journey of life. I wanted to know if i could use that name even thought it has nothing to do with that event and since it starts with A and not Taste?
United States | Illinois | 60643 | Intellectual Property
New Answer

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If this question is inappropriate, mis-categorized, or unanswerable, you may reject this question.
Please do not reject this question if another attorney may be able to answer it.
01/31/11, 6:39 pm
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Your question has been on lawguru quite long without an answer so I will give you one, although I am located downstate near St. Louis in Alton, IL. A second comer has a legal duty to avoid an likelihood of confusion with existing marks. You are to be commended for checking your position to try to comply with that duty. I think you can do this quite safely if you provide a disclaimer on the title page of your book: “This book has nothing whatsoever to do with the annual Taste of Chicago food sampling festival.” The use of “A” is irrelevant to the question, as very few people, even in Chicago, would recognize any difference. This question is already answered by reality. There is a restaurant by the same name:Taste of Chicago Restaurant
3170 S Ashland Ave # H, Chicago, IL 60608-6261 (773) 579-0355 . Certainly if they can do it for the same services – food services – you should be safe to do it for something quite different. In fact your mark would be, at most, a trademark, not a service mark like the food festival name since it is used on a product rather than on a service. Trademarks and service marks are classified by type of goods or services into over 40 international classes, and absent any other factor, different classes are normally not considered likely to be confused with each other unless closely related. Books and festivals are not closely related unless the book were about a festival. Even then, a descriptive title is not normally considered a trademark infringement, especially if there is a disclaimer. The disclaimer should seal the deal and keep you safe and the public unconfused.

 

Old Art. Is it public domain? Are copies public domain?

31 Jan

Question

1. I am making a booklet and the pictures are of Art in the 13th to 17th century. there were no laws of record during these days. Information was given to me by an art e-site that since the artist who painted or owner who had the painting made is deceased more than 70 years that the art then becomes “public domain”.

Is this correct?

2. If a photograph or drawing was taken or drawn and there is no copyright, is the works “public domain”?

thank you for your assistance in fulfilling this request!

Jasper Snellings – Texas 77382 – 1/31/11, 10:11 am
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Answer

In the future do not post your name, Jasper. That is unwise on several levels.

Answers:

1. Yes. All artistic works prior to 1881 are now public domain, since the term would have expired. The most recent law (PL 102-307) extended pre-1976 registrations to a maximum of 95 years. For pre-1976 copyrights, lifespan of the author (which is important for post-1976 copyrights) is irrelevant as to term of protection.

2. No. You mean “and there is no copyright registration” not “and there is no copyright”, since copyright is automatic while registration must be obtained through application and payment of a fee. A photograph or drawing will usually add something artistically new which might be separately copyrighted and thus subject to copyright protection as to that which was added and to the modified version so produced. Unless you copy the original work you cannot be sure you are safe from copyright infringement. The best procedure there is to find out who made the photograph or drawing and call or email them and ask if it is public domain, and if not can you have permission.

If this is a large commercial undertaking with significant value on your part, Jasper, you need a copyright lawyer (you can reach me at 618-462-3450) since it is clear you do not yet have a firm grasp on the legal principles of copyright law. If it is just an academic question or you cannot afford that, then the above will have to do.

 

broadcasting on the web

31 Jan

Question:

Can I broadcast a live show on the web with my band. Playing cover songs and original songs without getting in trouble? We aren’t gettting paid for the show but we are asking for donations in a guitar giveaway. To help with more broadcasting equipment and chords, strings etc.

Texas 77530 1/30/11, 4:27 pm
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Answer:

Yes for original songs, although you should obtain copyright registration on any original work of your band. You would be subject to royalty payment for any copyrighted songs you play. Call me (618-462-3450) if you need more detailed advice. I represent several bands in intellectual property law matters, which seem simple on the surface but can get sticky if you do not take the proper steps to create protections to protect your creations and if you do not respect the copyrights of others.

 

Regional versus national and first use of service mark – a band gets in a “jam”

31 Jan

Question

I have applied for a trademark for the mark ___________ (my bands name). It is now being reviewed by a lawyer, and has a serial number filed with the USPTO. We have been using the name regionally in south texas since 2007, and have recorded and self-released an album. All of our music has been registered with ASCAP, and each member of the band is a member of ASCAP. There are a handful of bands with the same name. Since we are about to tour nationally, do i need to send C&D letters. I have tried to send very nice messages to each of the bands letting them know we have applied for the trademark, and for all intents and purposes it is a done deal. I have heard nothing from them. The info the USPTO sent me states that we MUST be vigilant in keeping up with our mark, and if we do not stop other entities from using the mark, we will lose ours. Please point me in the right direction.
San Antonio, Texas 78239 – 1/31/11, 9:44 am

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Answer:

The short answer is YES and NO and OMG and SNAFU. When you allow others to use your service mark (what you applied for was a service mark registration, not a “trademark”) uncontested, then you have great difficulty stopping anyone later on. The logic is that why should a Court intervene to protect your band’s name when you didn’t protect it when you had the chance and should have. You have major problems with protecting your band’s name due to long and prominent prior use by others. You need a top notch lawyer (I am one & there are many others) that is experienced in trademark litigation if you are to have any chance to get out of this mess. Location of your lawyer is not nearly as important as the skill of your lawyer, as you will recognize upon reading this. The _____ punk rock band in _____ probably has you 5 from ___________ beat legally unless you play this exactly right. The ___________ reggae band in ______________ likewise probably has you beat legally unless you handle this exactly right. Are there others? Call me (618-462-3450) and I can explain why and what you need to do. I handle several bands and have gotten people out of similar situations before. Do not send out a CDL (cease and desist letter) to them until you get your ducks in a row legally or you could lose your band’s name. You also have serious problems with your the service mark application apparently self-filed by _____, which I can explain to you. Also, you should not have posted this on the online legal answer site __________ as someone may tip off your opposition. For example, since you are not yet a client, there is nothing yet to stop me, for example, or any other attorney from simply emailing or picking up the phone and calling up one of the other bands and representing them instead and heaven help you if that happens before you get this cleaned up. Who the heck is advising you legally, to let you do something like this and get into this awful mess? The application lists _____ as correspondent, which implies that you are using self-destruction as your attorney. You are cruisin’ for a bruisin’ so consider this a top priority item if the name is important to you. To others, the lesson to be learned is that choosing and protecting a band’s name is not something for do-it-yourself amateurs, you need good legal representation so it is done right or you, too, could get in this type of jam. [names redacted to avoid hurting this band further]

-bb-

 

Patent interviews may not affect response deadline

31 Jan

Question

I am watching a patent application and the last status was back on November 16th and according to that the applicant had an interview on October 20th (it took almost a month to update on USPTO). All of the claims were rejected by the examiner and the letter says:

APPLICANT IS GIVEN A NON-EXTENDABLE PERIOD OF THE LONGER OF ONE MONTH OR THIRTY DAYS FROM THIS INTERVIEW DATE, OR THE MAILING DATE OF THIS INTERVIEW SUMMARY FORM, WHICHEVER IS LATER, TO FILE A STATEMENT OF THE SUBSTANCE OF THE INTERVIEW.

It’s been over 2 month without an update. Is it safe to assume that the patent application didn’t go through?

Thank you.
Inquiry from Illinois at zip code 60047-1/31/11, 8:25 am
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Answer

No, that is not safe to assume. The notice merely tells the applicant that the applicant can, if he or she wants, file applicant’s version of the substance of the interview. The Examiner will file an Examiner’s summary of the interview and this is notice that unless applicant files his or her own version, the Examiner’s summary will be uncontested and thus conclusively the record of the interview. The interview is not a rejection of the claims, that presumably happened before the interview. The interview is simply a means for the applicant to try to convince the Examiner to allow the claims and remove the rejection. Apparently, in the case you are following, the applicant or applicant’s attorney was not successful in achieving that purpose. It is usually not wise for an Applicant to file a statement of the substance of an unsuccessful interview unless the Examiner violated some procedural rule or law in the interview, as such a statement will limit the applicants arguments on appeal. Better is to appeal and make the criticisms there for various strategic reasons. So even the best patent attorneys usually don’t file such a statement, and the absence of one means little or nothing. Having been unsuccessful in the interview, the applicant has 6 months from the date of the Office Action (not the interview) rejecting the claims to respond or appeal. So, you are monitoring the wrong date. Go back to the date of the Office Action before the interview and count six months forward for the real deadline. Then add a month for the record to be updated online and you should have a reliable date to work with. If the applicant appeals the rejection, you could have several years of additional pendency before the claims are abandoned or allowed. If you want someone to monitor this who fully understands patent practice, call me at 618-462-3450. Otherwise, you can try to cut corners on cost, take a big risk and just reread the preceding. Hopefully you now understand and you should be able to make a reasonable guess as to whether prosecution in the application is closed or not. Just realize that knowledge like that just given is why people go to patent attorneys for important matters like this where a mistake can cost you thousands of dollars, if not millions. In patent matters, as I am oft heard to remark, if you are you own “attorney”, you may have a fool for an attorney and your “attorney” may have a fool for a client. –bb–

 

Design Needed for Provisional?

31 Jan

Question

Do i have to submit a product design to make a provisional patent, or is there a way that i can patent an idea?
From: Texas 78114, 1/31/11 @ 8:49 am
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Answer

Yes and yes. If the “idea” you want to “make a provisional patent” (which you probably mean “to file as a provisional utility patent application” or “PUPA”as there is no such thing as a “provisional patent”) is susceptible of a drawing, a drawing is required. If not, such as a chemical method, then “examples” are required in lieu of drawings. In metallurgical cases, microphotographs are used in lieu of drawings. Yes, you can patent an idea if you can describe the best mode you have of making your idea with sufficient specificity to enable a hypothetical person having ordinary skill the relevant arts to make your invention, otherwise not. However, PUPAs are only examined as to formalities, so you could file a deficient PUPA, having the necessary forms, spec, and dwg and get a PUPA filing date and the right to call your idea “patent pending” even though no valid patent would issue as a result of that PUPA, but it would be mostly just a legal “bluff” as any good patent attorney would like see through the bluff and advise a client to ignore it. So, to avoid that you need a good patent attorney to write your PUPA so it is at least an effective bluff if not something on which to base a regular utility patent application (RUPA) or delayed utility patent application (DUPA) under the 24 month pilot program. If you don’t understand each of the preceding sentences you have no business trying to file any of these and need to hire a registered patent attorney such as myself (Although my office is near St. Louis, I am licensed in Texas, was raised in Texas and went to law school at Hook Em Horns U) or one of my esteemed colleagues in patent law.

 

Copyright Law

31 Jan

Question:

1. I am making a booklet and the pictures are of Art in the 13th to 17th century. there were no laws of record during these days. Information was given to me by an art e-site that since the artist who painted or owner who had the painting made is deceased more than 70 years that the art then becomes “public domain”.

Is this correct?

2. If a photograph or drawing was taken or drawn and there is no copyright, is the works “public domain”?

———————————

My Answer:
1. Yes. All artistic works prior to 1881 are now public domain, since the term would have expired. The most recent law (PL 102-307) extended pre-1976 registrations to a maximum of 95 years. For pre-1976 copyrights, lifespan of the author (which is important for post-1976 copyrights) is irrelevant as to term of protection.
2. No. You mean “and there is no copyright registration” not “and there is no copyright”, since copyright is automatic while registration must be obtained through application and payment of a fee. A photograph or drawing will usually add something artistically new which might be separately copyrighted and thus subject to copyright protection as to that which was added and to the modified version so produced. Unless you copy the original work you cannot be sure you are safe from copyright infringement. The best procedure there is to find out who made the photograph or drawing and call or email them and ask if it is public domain, and if not can you have permission.

If this is a large commercial undertaking with significant value on your part, you need a copyright lawyer (you can reach me at 618-462-3450) since it is clear you do not yet have a firm grasp on the legal principles of copyright law. If it is just an academic question or you cannot afford that, then the above will have to do.

thank you for your assistance in fulfilling this request!

 

President’s speech – good for inventors & artists

25 Jan

As supporters of start-ups and inventors we are delighted to see the President put innovation as his first topic in his State of the Union speech tonight and to give it the greatest priority. We are going to actively suggest improvements in our system to make it better for inventors. We supported Obama from the very first announcement and we are Democrats from IL who have promoted many of his changes, so we have reason to expect to be heard. Give us any suggestions for patent system improvements you want us to mention. Here are a few of our current suggestions: (1) switch to a registration system with examination following grant [purpose: to get immediate rights for inventors and immediate publication], (2) have a 2 tier systems, a short term – low royalty minimum for all novel inventions and a longer term with exclusive rights for non-obvious claimed inventions [gives an inventor some minimal reward, including the reward of getting a patent, even if not such as to warrant exclusive rights], (3) search & examination only on request and as to specific claims and specific commercial item so the Patent Examiners are examining on things that matter and where examination makes commercial sense, (4) mandatory determination by the PTO, with short turnaround, as to infringement or non-infringement and validity or non-validity of a patent prior to suit in Court [so we get the real objective experts at this determination, the Patent Examiners, determining infringement & validity questions] thus eliminating most patent suits and getting quick certainty.–bb–

 

Nice Video for Beginning Inventors – from the US Patent Office

19 Jan

A nice pep talk video is available from the USPTO online in wmv format at http://wsd-ais-03.uspto.gov/asxgen/II.wmv

The video is short on practical details, but is nice as encouragement for new inventors.