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Brett Trout Selected For Inclusion in The Best Lawyers in America® 2013

For the fourth year in a row, Brett J. Trout has been selected by his peers for inclusion in the annual edition of The Best Lawyers in America®. For 2013, Mr. Trout has been selected for inclusion in the specialties of both Information Technology Law and Patent Law. The Best Lawyers in America® publication is the oldest peer-reviewed publication in the legal profession. Since 1983, Best Lawyers® continues to be regarded, by both professionals and the public, as the definitive guide to legal excellence in the United States.

The 2013 Best Lawyers in America® publication covers the largest and most targeted audience of any legal profession peer-review listing. Excerpts from the Best Lawyers® publication appear in The Washington Post, The Los Angeles Times, New York Magazine, and more than dozens of other regional publications, reaching more than 18 million readers.

Best Lawyers selection process is based upon exhaustive and rigorous peer-review surveys. Over four million confidential evaluations by leading legal professionals are considered in the process. The American Lawyer and Corporate Counsel magazine describes The Best Lawyers in America® as “the most respected referral list of attorneys in practice.”

Posted in General.

So You Want to Protect Your Trademark?

Your Company’s Most Valuable Asset
Trademarks are often the most valuable asset of a company. They are what consumers use to associate your product with your company. Trademarks embody the goodwill of your company. Everyone talks about what makes a good trademark, but what makes a bad trademark? Knowing what makes a bad trademark can be just as important as what makes a good trademark. You do not want to pin the goodwill of your company on a bad trademark.

Good vs. Bad Trademarks
What makes a good or bad trademark to a trademark lawyer is quite different than what makes a good or bad trademark to a marketing consultant. Trademarks do not exist in a vacuum. Trademarks only exist in their association with a particular good or service. Merely descriptive terms like “Yellow Delicious” for bananas, or generic terms like “Bananas” are not registrable trademarks for bananas. Basically, any terms your competition would normally use in its identification or description of the product or service is something you are not allowed to take out of the public domain and slap a trademark on. “Yellow Delicious” or “Bananas” may be a perfectly registrable trademark for a record company, just not for bananas themselves.

Forbidden Trademarks
Other types of “bad” trademarks, that are not allowed to be federally registered, include immoral, deceptive or scandalous trademarks. What constitutes an immoral or scandalous trademark today, is quite a bit different than what might have been considered immoral or scandalous in the 1950′s. Trademarks depicting a name, portrait, or signature of a living person who has not given their consent to the trademark are also not available for federal registration. You also cannot register the name, portrait, or signature of a deceased united States President without the written consent of his widow. You cannot register trademarks that disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. Trademarks that include a true representation of the flag of the United States, any state, municipality or foreign nation, or is a simulation thereof, are also out.

Test the Waters
Before you invest thousands of dollars behind a marketing campaign for your new trademark, contact a trademark attorney to make sure you are not running afoul of any obvious trademark no-nos. While no trademark attorney is going to thoroughly vet your trademark against all existing registrations for free, you might be able to find a trademark attorney who will give you a little free advice over the phone regarding whether your trademark runs afoul of any obvious prohibitions. You might even find one willing to run a free trademark search through the Patent and Trademark Office while you are on the phone to see if anyone has already registered your proposed trademark.For more information on trademarks, check out our FAQ.

Brett Trout

Posted in Iowa Law, Trademark Law. Tagged with , .

Congress Just Threw You Under a Bus

What Just Happened?
Yesterday, the House of Representatives passed a bill entitled Cyber Intelligence Sharing and Protection Act (H.R.3523), or CISPA for short. CISPA is a bill that allows the government to obtain your private information from companies without a warrant. Oddly, under the guise of making CISPA less abusive, the House actually slipped in some language at the last minute that made CISPA even worse. What SOPA was to online censorship, CISPA is to online privacy. Whereas SOPA was about stripping away your First Amendment rights (free speech); CISPA is about stripping away your Fourth Amendment rights (freedom from unreasonable search and siezure).

The House ostensibly passed CISPA to “provide for the sharing of certain cyber threat intelligence and cyber threat information between the intelligence community and cybersecurity entities.” Privacy advocates fear that the government will use CISPA to exploit your private and personal information in unconstitutional ways, far beyond those outlined in CISPA.

What Does CISPA Do?

The language of CISPA is pretty difficult to understand. CISPA states that any business that provides goods or services for cybersecurity purposes to itself may use its cybersecurity systems to identify and obtain cyber threat information to protect the rights and property of such self-protected entity and share such cyber threat information with any other entity, including the Federal Government. But what does that mean? Based upon my reading of the definitions contained within CISPA, it means any business that does anything online can share your private information with the government. It also means no state can enact a law preventing the business from sharing your personal information in this manner. As long as the company handed over your private information in “good faith,” CISPA also prohibits you from suing a company for handing over the wrong information.

What Does That Mean for Me?
CISPA contains no effective oversight of what private information the government is requesting and receiving. This opens the door to companies handing over all of your private information to the government and the government misusing that information once received. According to Rep. Jared Polis, a Colorado Democrat and onetime Web entrepreneur, CISPA will “waive every single privacy law ever enacted in the name of cybersecurity.” Rep. Polis went on to state that “[a]llowing the military and NSA to spy on Americans on American soil goes against every principle this country was founded on.” While addressing online security concerns is a laudable goal, there is absolutely no proof CISPA would result in a net increase in online security. Even if CISPA were to increase online security, it is not worth trampling over the Constitution to reach such a speculative goal.

CISPA guts the Fourth Amendment to the United States Constitution, eliminating the need for the government to show probable cause, or get a warrant to obtain your personal information. The FBI, BATF, Secret Service or any federal agency would simply ask the company holding your private information and the company could hand it over. As long as the exchange has some tangential relationship to the intentionally inscrutable phrase “cyber threat,” the CISPA insulates both the government agencies and the companies from liability as they exchange your private information. Not surprisingly, CISPA does very little in the way of protecting you or your constitutional rights from mistakes, overreaching and lack of oversight in the transaction.

Can I Find Out What Information of Mine the Government Obtains Under CISPA?
No. Cyber threat information shared in under CISPA is exempt from disclosure under section 552 of title 5 of the United States Code. This means that not only will the government not tell you what information of yours they request or receive, but you cannot even get this information pursuant to a Freedom of Information Act (FOIA) request.

Who is Behind CISPA?

The U.S. government, mainly. The government argues that it needs access to your personal and private information to stop online security threats. The government has also brought many large companies on board, companies, not surprisingly, who hold massive amounts of your personal information. Companies like AT&T, Boeing, Facebook, IBM, Intel, Microsoft, Symantec and Verizon are just a few of the 800+ companies supporting CISPA.

Who is Against CISPA?
Dozens of privacy groups, including: The Electronic Frontier Foundation; The American Civil Liberties Union; The American Library Association; The American Association of University Professors, Consumer Watchdog, Demand Progress, Government Accountability Project, Patient Privacy Rights, and the U.S. Bill of Rights Foundation are all strongly opposed to CISPA. Their main concern is that CISPA will allow companies holding our most sensitive and personal information to share that information with the government, and that lack of oversight will lead the government to use this information for purposes completely unrelated to cybersecurity.

What Can I Do?
Time is running short. Once the Senate passes CISPA and President Obama signs it it will be too late. President Obama said he would not sign CISPA, but he said the same thing about NDAA (indefinite detention of U.S. citizens) right before he signed it. Contact your state senators. You can find out their contact information here. Introduce yourself to the person who answers the phone as a constituent of the senator. Ask them about their office’s stance on CISPA. They will ask for yours and report those number to the senator. If you know enough about CISPA to address the particulars, ask to speak with a legislative assistant. If one is not available, leave your number and have them call you back. Ask them about the status of CISPA and the parts of CISPA about which you have a particular concern. If you do not feel up to speaking with a legislative assistant, follow up your phone call with an email and/or letter outlining your objections to CISPA. Most importantly, make your senators aware of your objections to the unconstitutional privacy invasions inherent in CISPA. Do it today.

Brett Trout

Posted in General, Internet Law. Tagged with .

Judge Rules Bloggers Do Not Have to Be Paid

Under American jurisprudence, for a contract to be legal, each side must provide what is called “consideration.” That means that each side promises to do something, or not do something, in return for the other side agreeing to do something or not do something. If I sign a contract agreement agreeing to give you $1,000, that contract is not enforceable unless you promise to give me something in return, or do something in reliance upon my promise. Given that parties to contracts, by definition, value what they are getting more than what they are giving, courts do not get involved with the comparative values of the promises. As long as each side gives at least something, the contract is valid. As Lord Somervell noted in Chappell v Nestlé, half a century ago “A peppercorn does not cease to be good consideration if it is established that the promisee does not like pepper and will throw away the corn.”

The Huffington Post
The Huffington Post is a news website, distributing posts from over 9,000 unpaid bloggers. As noted in The Huffington Post Terms and Conditions:

(b) By posting or submitting content on or to our site (regardless of the form or medium with respect to such content, whether text, videos, photographs, audio or otherwise), you are giving us, and our affiliates, agents and third party contractors the right to display or publish such content on our site and its affiliated publications (either in the form submitted or in the form of a derivative or adapted work), to store such content, and to distribute such content and use such content for promotional and marketing purposes. Without limiting the generality of the foregoing, with respect to any video submissions to us made by you from time to time, you understand and agree that (unless you and we agree otherwise) we may, or may permit users to, based solely on functionality provided and enabled by our website, compile, re-edit, adapt or modify your video submission, or create derivative works therefrom, either on a stand-alone basis or in combination with other video submissions, and (unless you and we agree otherwise) you shall have no rights with respect thereto and we or our licensees shall be free to display and publish the same (as so compiled, re-edited, adapted, modified or derived) for any period.

Nowhere are the terms, consideration, fee, payment or compensation mentioned in the Terms of Use.

The Lawsuit
On February 7, 2011, AOL announced it had agreed to acquire The Huffington Post for $315 million. In response, a group of The Huffington Post bloggers brought a class action lawsuit against AOL, Inc., asserting the roughly 9,000 Huffington Post bloggers deserved to split $105 million of that purchase price. The lawsuit alleged The Huffington Post engaged in deceptive business practices, deceiving the bloggers as to the popularity of their posts, and was unjustly enriched by the revenue generated therefrom. The lawsuit alleged that “Unlike social networking internet platforms, micro-blogging internet sites, and other digital media sites, such as, selects its content providers and does not allow content from non-vetted providers. [...] Plaintiff and the Classes were not officious contributors to the and, rather, were carefully selected, and in some cases recrutited, by to perform services for it.”

Yesterday, U.S. District Judge John Koeltl dismissed the bloggers’ lawsuit, ruling “No one forced the plaintiffs to give their work to The Huffington Post for publication and the plaintiffs candidly admit that they did not expect compensation.” The Judge went on to note “[t]he principles of equity and good conscience do not justify giving the plaintiffs a piece of the purchase price when they never expected to be paid, repeatedly agreed to the same bargain, and went into the arrangement with eyes wide open.” In response to the dismissal, the bloggers’ attorney stated “We are reviewing the decision and considering our options.”

Content, Content, Content

Social media is all about the content. Bloggers leverage better content to convince bigger content distributors to distribute that content to a wider audience. Most bloggers never attract the eye of a content distributor with a million plus unique visitors a day, like Often, it is only when a content distributor generates large amounts of revenue, that the blogger begins to think about compensation. The bloggers may become indignant “That distributor is generating huge amounts of revenue our work, and we are not receiving any money.” But the bloggers are getting some compensation, at least according to Judge Koeltl. The fact that the bloggers are only getting publication in return for their work does not matter, as long as they are getting something in return, even if that is only a peppercorn.

Negotiate Before, Not After

If you are a blogger, website developer, graphic designer or other content provider, negotiate the terms of your service up front, in writing. You may decide that the opportunity to garner you work some exposure is worth the cost of creating it. If so, that is fine. Just be prepared if your work starts generating revenue for some third party, beyond your wildest expectation. The increased exposure of your work is likely the only additional compensation you will receive, which is nothing to sneeze at.

Brett Trout

Posted in Internet Law. Tagged with , .

Trademark Office Warns of Unscrupulous Companies Requesting Deceptive Fees

The Deceptive Letters
The United States Patent and Trademark Office has just released a warning that unscrupulous companies are attempting to deceive trademark owners into paying unnecessary trademark fees. Using confusing names, like “United States Trademark Registration Office,” these companies send out thousands of letters, attempting to collect necessary “Processing Fees.” The letters use language like: “WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE DOCUMENTS ABOVE DURING THE SPECIFIED TIME PERIOD.” They also incorporate publicly available trademark application and registration information from the United States Patent and Trademark Office, making them appear like official government documents. While the failure to pay certain fees and file certain documents may result in the abandonment of the owner’s trademark, none of the “Processing Fees” requested in these letters go toward paying the government fees required to prevent abandonment of the owner’s trademark.

The Trademark Office
So many of these deceptive letters have gone out to so many trademark owners, that the United States Patent and Trademark Office has stepped in, posting an official warning on its website. The Office of the Solicitor of the United States Patent and Trademark Office even sent a cease and desist letter to the outfit calling itself the “United States Trademark Registration Office.” The United States Patent and Trademark Office is warning trademark owners to be on the lookout for deceptive letters that appear to be sent from the United States Patent and Trademark Office.

What Can You Do?
The most important thing you can do is to not pay these unnecessary fees. If you had a trademark attorney file your federal trademark application for you, the Trademark Office will not send you anything directly. All official correspondence will go directly to your attorney. If you are unsure whether a letter is legitimate, contact your attorney. If you do not have a trademark attorney, contact a local trademark attorney. Trademark attorneys will often give you a few free minutes on the phone to answer questions regarding potential scams. If you have received a deceptive letter requesting fees associated with a trademark, contact your state’s Attorney General. You should also file an on-line consumer complaint with the Federal Trade Commission (“FTC”), at and email the United States Patent and Trademark Office at

Brett Trout

Posted in Trademark Law. Tagged with , .

The New Business Identity Theft

Identity Theft vs. Business Identity Theft
Almost everyone is familiar with identity theft. A criminal obtains your personal information, and uses that information to steal, leaving you to mop up your decimated credit. Business identity theft can also involve criminals using private business information to create fake financial accounts to defraud third parties. Not all business identity theft requires the thief to obtain your private business information or set up fake financial accounts. There is a growing trend of cybercriminals spoofing small businesses, using publicly available information to create look-alike or sound-alike businesses to steal customer information.

The Spoof and the Scrape
Spoofing involves criminals mimicking various aspects of a legitimate business to mislead people into providing the criminal with personal information. A criminal may spoof a legitimate company’s name, its trademark, its website, its advertising or any other public presence the legitimate business has. The criminal may steal, or scrape, the pictures, text and layout from the legitimate business’ website and post that information to a fake website. With a seasoned spoofer, it can be very difficult to distinguish the spoofed website from the real thing. The criminal may even set up a phone number using a local area code or a brick and mortar address to fool the small business’ customers. The criminal relies on lazy customers who might not notice the website they are visiting, or the yellow page advertisement they are reading is just a knock-off. Customers may contact the criminal, thinking it is the trusted business, and provide personal or financial information, that the criminal then exploits. The criminal may even offer to supply sub-standard goods or services under the legitimate company’s name.

Stopping the Spoofing
With ordinary identity thieves, freezing financial accounts usually curtails the ongoing damage. With spoofers, the ongoing damage may not be so easy to stop. Since spoofers are only using publicly available information, and are not using the legitimate businesses’ private information, or creating financial accounts using the legitimate business’ credit, it can be difficult to convince law enforcement to take action. As no private information is being used, law enforcement may view the spoofing as a civil matter, rather than a criminal one. Adding to the problem are privacy laws, that can prevent a legitimate business from finding out who or where the spoofing identity is. This forces the legitimate business to seek out an attorney with experience in this area to bring an end to the ongoing fraud.

Get Your Ducks in a Row

The best time to defend against business identity theft is before a problem arises. Be sure you have the appropriate trademark and copyright registrations in place. If you wait until a criminal starts spoofing your business identity and defrauding your customers, you may have to wait months to obtain a copyright or trademark registration. Registering your trademark prior to an attack allows you to sue in federal court, and to ask a federal judge to order any phone numbers and domain names associated with the spoofer be turned over to you. Registering your copyright prior to an attack and registering your Digital Millennium Copyright Act (DMCA) agent with the Copyright Office allows you to shut down any website using copyrighted material scraped from your website.

Time is of the Essence
As businesses become more adept at addressing existing criminal threats, criminals continue to innovate novel scams, stealing tens of billions of dollars every year. Many businesses are simply not prepared for a scam that law enforcement refuses to pursue. By the time an unprepared business takes remedial action, so many of its customers may have been scammed that the company may never recover from the long-term damage done to the company’s goodwill. Thwarting business identity spoofing theft is not as hard as it seems. Small business identity spoofers tend to prey on the weakest and least knowledgeable victims. Simply protecting your trademarks and copyrights, and indicating the protection on your website, may be enough to convince a cyber identity thief to pursue a less well-prepared and less knowledgeable victim.

Brett Trout

Posted in Internet Law, Trademark Law. Tagged with , .

SOPA and PIPA Are Bad

Update: KCCI just posted a great news story of me, countering arguments by PIPA/SOPA co-sponsor Sen. Charles Grassley. You can watch it here.

SOPA and PIPA Are Bad
There seems to be some confusion on this issue, so let me make it clear. The Stop Online Piracy Act (SOPA) and the Protect Intellectual Property Act (PIPA) are bad. They are bad for you, bad for me, bad for anyone with a blog, a Facebook profile, or any other type of website. SOPA and PIPA are bad for anyone who uses the Internet.

Isn’t Stopping Infringers a Good Thing?

Yes, and ever since the Copyright Act of 1790, United States law has provided copyright owners with the tools they need to stop infringers. Not only that, but the entertainment industry has gotten many additional laws passed. These new laws not only increased the length of copyright protection from 28 years to 150 years or more, but addressed everything from downloading, to file sharing, to circumventing digital rights management (DRM) software. Needless to say, even without SOPA and PIPA, the entertainment industry has more than enough recent laws at its disposal to stop copyright infringers.

So What Are SOPA and PIPA All About?

What Congress and the entertainment industry want you to believe is that SOPA and PIPA are about stopping online piracy. They argue that it is still too difficult to target infringers who have moved their operations overseas. If passed, SOPA would allow the U.S. Attorney General to target the companies providing Internet service to alleged infringers. It would also force search engines and websites to remove links to allegedly infringing websites and allow seizure of advertising and other revenue coming from the United States. The reality is that SOPA would not work. It would do nothing to actually prevent people from accessing the alleged infringing overseas websites. Even if the domain name was filtered, people could just type in the Internet Protocol (IP) Address directly and access the website. Although SOPA will not stop people from accessing overseas websites, SOPA will stifle innovation and generate thousands of new lawsuits. SOPA will take money taxpayers and small companies are currently spending on innovation and redirect that money into the pockets of attorneys, hired by our government and the entertainment industries to stifle that innovation.

Why Have I Not Heard of This?
You might think that a bill that threatens to affect what you do every day (assuming you use the Internet every day) and has nearly 1,000 registered lobbyists working on it, would make the news. Unfortunately, most major news providers, including Fox News and NBC-Universal, are strong supporters of SOPA, and have chosen to keep both SOPA and PIPA out of the limelight while Congress attempts to pass the bills into federal law.

Why Is Congress Supporting SOPA/PIPA?
Individual members of Congress will give you different reasons why they are supporting this innovation-killing legislation. There is no denying, however, that the entertainment industry has spent millions of dollars pushing SOPA/PIPA. Looking at just two of the bills’ sponsors, Lamar Smith (R-TX) and Patrick Leahy (D-VT), they have collectively received nearly two million dollars in campaign contributions from the TV/Movies/Music industry.

What Are the Dangers of SOPA/PIPA?
The danger is that big companies will use SOPA/PIPA to put small companies and websites out of business. Less competition would be great news to large media concerns that have been steadily losing market share to the Internet. While a bigger, broader and more diversified Internet is good for you and me, it is bad for large entertainment companies that refuse to innovate as fast as their smaller competitors.

SOPA/PIPA would also make it easier for large entertainment companies to use automated programs to search the Internet and send erroneous copyright take-down notices. According to Erik Martin, the general manger of the popular Reddit website, “human beings aren’t even looking at this – the potential for abuse is huge.” SOPA/PIPA threatens to place law-abiding small companies in the position of having to redirect innovation resources to pay an attorney to respond to a baseless infringement take-down notice.

Another danger of SOPA/PIPA goes to the heart of Internet security. The Internet is based upon a system of numerical addresses, called Internet Protocol (IP) addresses. The Internet’s Domain Name System (DNS) takes a domain name, like Google, and translates it into the associated website’s unique IP address, such as While typing either or into your address bar will get you to the same place, domain names, such as Google are much easier to remember. By allowing the government and the entertainment industry to filter the Internet, SOPA/PIPA risks opening up the secure DNS system, as well as even more secure systems, such as DNSSEC, to exploitation by cybercriminals. Not only that, but the SOPA/PIPA domain name blocking provisions will do little to cripple offshore infringing websites. Simply typing in the IP address, instead of the domain name, into your address bar makes the SOPA/PIPA domain name blocking provisions worthless.

What Can I Do?
Contact your congressional representatives today. There are already many federal laws in place to prevent online infringement. While SOPA and PIPA will do little to curb future online infringement, they will, if passed into law, stifle innovation, censor the Internet, and make the Internet less secure. On January 18, 2012, websites like Google, Reddit and Wikipedia gave you a small taste of what SOPA and PIPA are all about. If you prefer that SOPA and PIPA not censor thousands and thousands more websites, contact your Representatives and tell them to vote “No” on SOPA, and contact your Senators and tell them to vote “No” on final passage of PIPA. Tell them you will remember their votes on Election Day.

Brett Trout

Posted in Copyright Law, Internet Law. Tagged with , .

SOPA – This New Censorship Bill is a Job Killer

Yesterday, the House Judiciary Committee held a hearing on the deceptively named Stop Online Piracy Act (SOPA). Representative Lamar Smith (R-Tex.) introduced the bill on October 26, 2011 as H.R.3261. SOPA expands the Internet censorship provisions of the Protect IP Act, a bill Senator Patrick Leahy (D-Vt.) shepherded into law earlier this year. These additional restrictions make it easier for large corporations to stop websites from getting paid, not for just allegedly infringing content, but for all content on the website, even if the alleged infringement makes up only a tiny part of the website’s content. SOPA threatens not only to censor a small amount of allegedly infringing content, but a lot of non-infringing online content along with it. The result will be a law much better suited to punishing entities that disagree with the entertainment industry’s vision of a censored Internet than stopping piracy.

Job Killer
Michael O’Leary, representing the Motion Picture Association of America (MPAA), the film industry trade group, argues the motion picture and television industry supports jobs. Google, Facebook, Twitter, venture capitalist, civil liberties groups and trade associations say just the opposite. The Electronic Frontier Foundation (EFF) has even labeled SOPA a “massive piece of job-killing internet regulation.”
Several members of Congress not swayed by entertainment industry contributions have come together in bi-partisan fashion to defeat SOPA, warning that SOPA will result in an “explosion of innovation-killing lawsuits and litigation [...] At a time of continued economic uncertainty, this legislation will result in fewer new businesses, fewer new investments, and fewer new jobs.”

Won’t SOPA Stop “Pirates”

I don’t know what your definition of a pirate is, but my definition does not YouTube, just because one person uploaded a video of their kid playing with a puppy, while a portion of a copyrighted song played in the next room. But SOPA does not discriminate. SOPA does not require a judge or jury to decide what does and what does not constitutes piracy before an alleged “victim” unilaterally shuts down an entire website. As for the pirates? SOPA will do little more to stop pirates. SOPA is like continuing to reduce the speed limit for everyone, because one or two criminals keep driving through town at 100mph. You are only punishing the people already following the law. Large scale pirates depicted in industry advertisements are clandestine and mobile, creating their own closed networks. Even if the industry were to spend time tracking pirates down and shutting off their access, these “real” pirates would be back up and running on a new private network within hours. The entertainment industry knows this and knows it is much easier to target legitimate companies, where alleged infringement may make up less than 1% of their online activity, than to focus on dedicated criminals, where infringement makes up the majority of their online activity.

Won’t SOPA Help Artists
While entertainment industry giants are in favor of SOPA, many individual artists are not. Smaller artists understand “piracy” for what it is, “a symptom of a new technology (the internet) that many haven’t yet understood how to monetize.” SOPA is trying to use twentieth century legislation to thwart twenty-first century technology. SOPA makes the internet more difficult to use, while pirates continue to make content easier to steal. The solution is not to make things harder for the good people. The key is to make it easier for them to obtain content legally. While it is not clear what the new paradigm will look like, services like Spotify, Pandora, Rdio and Grooveshark are embracing new technology and giving us a glimpse of more artist and consumer friendly alternatives.

So Who Do SOPA the The Protect IP Act Benefit?
If campaign donations are any indication, the entertainment industry and certain members of Congress will be the primary beneficiaries of the new internet censorship embodied by SOPA. The MPAA is no longer playing coy. Pushing for the new Internet censorship at yesterday’s House Judiciary Committee hearing, O’Leary tried to address the argument that SOPA would frustrate the implementation of a more secure domain name protocol, namely DNSSEC, stating “this argument conveniently ignores not only the history of the creation of DNSSEC but also the very nature of Internet protocols, which is simply this: when new developments or circumstances require changes to these codes, the codes change,” And just who is responsible for making these changes? Well, the second biggest industry donor to Senator Patrick Leahy’s (Protect IP Act) election campaign committee, and the biggest donor to Representative Lamar Smith’s (SOPA) election campaign committee, are both the TV/Movies/Music industry. So if it turns out you have a problem with the protocols implemented by either SOPA or the Protect IP Act, and the MPAA does not, how likely do you think it is that those protocols are going to change?

What Can You Do?
Do not let this bill pass. Do not let the movie and recording industries punish artists and fans and dictate which websites you can visit. Do not let corporate behemoths use taxpayer resources to shut down taxpayer websites. Tell your Congressional representative this bill is a job-killer, tell them it punishes artists as well as consumers.

You can find phone numbers and email addresses for your representatives here. If you need a script, you can use anything from this post and/or your own version of the following:

“Hello [Representative's name],

My name is [your name] and I am calling from [your city and state] to voice my concern about SOPA, the Stop Online Piracy Act. I do not believe this bill should be passed. The United States already has several laws in place for combating piracy, including the 1998 Digital Millennium Copyright Act, the 2007 PRO-IP Act, the 2011 Anti-Counterfeiting Trade Agreement and others. This bill is a job-killer. I urge you to listen to your constituents, many of whom will be adversely affected by this bill, and vote “No” on the Stop Online Piracy act. Thank you.”

Brett Trout

Posted in General, Internet Law. Tagged with , .

Should I Get A Patent?

What You Say vs. What Your Patent Lawyer Hears
Clients ask me all the time, “Should I get a patent?” While that is certainly the most important question an inventor can ask of a patent lawyer, most patent lawyers answer this question incorrectly. A “Can I” patent question is right in the patent lawyer’s wheelhouse. A “Should I” patent question is not. Patent lawyers therefore tend to hear the question as “Can I get a patent,” which is a much different question. The “Can I” question relates to whether the invention meets the minimum criteria for patentability, namely is it new, useful and non-obvious. Another reason patent lawyers answer “Should I” patent questions as “Can I” patent questions is that the answer to the “Can I” question is “Yes” far more often, and it is a rare patent lawyer that could not use and extra ten thousand dollars. A final reason why patent lawyers often view the “Should I” patent question as a “Can I” patent question is that if the patent lawyer incorrectly answers “No” to the “Should I” question and the client loses millions because they thought the patent lawyer was answering the “Can I” patent question, the patent lawyer could be on the hook for millions of dollars in malpractice damages. Conversely, if the patent lawyer erroneously answers “Yes,” instead of “No,” the malpractice damages are probably more in the tens of thousands of dollar range.

Is It Worth Getting a Patent On Your Invention?
While it is important to get input from patent lawyers, accountants, marketers and business professionals, only you can answer this question. Many new inventors plan on selling their patents to large companies. This is very difficult to do. Unless you have existing contacts in the industry, many large companies will not even meet with a first-time inventor. What most inventors do not realize is that without a great management team, business plan and/or industry contacts, very few businesses or investors will be interested in an invention, even if it is patented. A good place to start to develop a business plan to determine things like your start-up costs, projected revenue, and how much a patent would be worth. Not all patents are created equal. Good patents are worth more than bad patents. What makes a good patent? Market, Breadth and Quality.

Is your patent in a crowded market with low-priced substitutes? How much more can you demand from consumers because of your monopoly in this market? What percentage of this market can you reasonable hope to capture? If you are in a saturated low-margin market, with many viable substitutes, getting a patent on your product would likely be little more than a vanity.

How broad will your patent be? Is your invention similar to what else is out there? Is is an obvious combination of what is out there? How easy would it be for your competitors to “design around” your patent? No one can tell you ahead of time how broad your patent will be. But if there are a lot of similar items already on store shelves and/or already patented, even the best patent lawyer in the world will only be able to get you a narrow patent, one that is easy for competitors to design around and which provides you little value.

The quality of your patent depends a lot on your patent lawyer. If you hire 100 different patent lawyers to draft a patent application on your invention, you will get back 100 different patent applications. No two would be the same. The quality of the patent applications would probably range from great to worthless. While great patent lawyers cannot make a silk purse out of a sow’s ear, bad patent lawyers can certainly make a sow’s ear out of a silk purse. What makes a great patent lawyer? Look for a patent lawyer other lawyers recommend. Look for one with a lot of actual patent writing under his or her belt (search Google Patents for their name) and look for some particular expertise in the field of your invention. Look for a patent lawyer who has sued infringers for patent infringement and won. Patent litigators know what they need to put into a patent to win at trial and to convince infringers to settle.

Can you defend your patent?
The cost of getting your patent is chicken feed compared to the cost of successfully suing an infringer. Just the attorney fees alone average 1-3 million dollars per side for a full patent infringement jury trial. The key for a small inventor is to find a qualified, experienced patent litigator who will take the case on a contingent basis. In a contingent fee case, you do not pay any attorney fees unless you win. Convincing an attorney to take your case on a contingent fee basis means having a broad, high-quality patent, with damages large enough to justify the cost of going to trial. With a bad patent, it will be very difficult to a quality lawyer to take your case on a contingent fee basis.

Do the Legwork First
Determining whether or not you should pursue a patent on your invention takes some time. Find people you trust, attorneys, accountants, successful inventors and/or other business professionals who will sign a confidentiality agreement and help you build a business plan. If your business plan indicates a patent is a good idea, ask your advisers to recommend a patent lawyer. If they don’t know of anyone, ask them who they would ask for a recommendation. Search the patent lawyer’s name on Google Patent to see the kind of technology with which the patent lawyer is familiar. Check ratings agencies like Martindale-Hubble to see how the patent lawyer’s peers rate him or her (an “AV” rating is the best). Ask if the patent lawyer offers a free consultation and take them up on it. Ask them if you should get a patent and see what they say.

Brett Trout

Posted in Patent Law. Tagged with , , .

The Mobile Patent Wars – Google, Microsoft and Apple

“[O]ne of the most effective ways to respond to a threatened patent assertion is to be able to assert patents of your own,” says Google’s patent lawyer, Tim Porter. Porter made that statement in response to a question about why Google was still buying up patents. Despite Google’s recent patent acquisitions, Porter believes “the current system is broken.” Overly-broad software patents, granted during a salad days of software patent grants prior to 2007, says Porter, are fueling litigation. Despite Google’s concerns over software patents, the company paid $12 billion to acquire Motorola and its portfolio of over 17,000 patents. From Porter’s perspective, Google has no choice, but to join in the patent arms race. “But the concern” says Porter, “is that the more people get distracted with litigation, the less they’ll be inventing.

Horacio Gutierrez, deputy general counsel for Microsoft, sees things a little differently. Gutierrez sees Google as “standing on the shoulders,” and reaping the benefits, of predecessors like Microsoft. To Gutierrez, patents are what drive innovation. Microsoft has already negotiated ten license deals with Android partners. For 2012 alone, Microsoft is poised to earn nearly $444 million in Android license fees. You need patent protection, opines Gutierrez, to encourage companies to the spend the millions of dollars, and years of effort necessary to develop new technology.

Up until recently, Apple and Google were in completely separate markets, and the relationship between them congenial. Once Google launched its iPhone-killer Android, the gloves came off. In the last month, Apple, along with Microsoft and Research in Motion, outbid Google to acquire $4.5 billion in patents from Nortel. Instead of suing the leviathan Google directly, Apple is suing the smaller companies that make Android hardware, like HTC. In its lawsuit against HTC, Apple alleges HTC’s android phone is too close to the iPhone. Google is assisting Android partners like HTC, even selling a patent portfolio to HTC, that HTC used to sue Apple. Apple is also attacking Google at its heart, releasing the audible search engine application Siri, that experts say will soon spread across nearly all Apple platforms. Before his death, Steve Jobs told his biographer that Jobs would spend his last dying breath, and every penny of Apple’s $40 billion in cash to destroy Android. Jobs felt Google stole the Android from Apple, and Jobs was willing to go “thermonuclear” to right the perceived wrong.

Small Inventors
As the players continue to wage lawsuit after lawsuit in the mobile platform patent arena, and Congress continues to tweak its rules on allowing software patents, small inventors may end up the losers. The USPTO has come a long way since granting such infamous patents as the Amazon “one-click” patent, but the system still has a few bugs. To address those bugs, and the unprecedented expanse of patent infringement litigation, Congress passed a major change to United States patent law. The Leahy-Smith America Invents Act, (AIA) will add some consistency to the mix, thwarting patent trolls and spurring innovation. Unfortunately, what promises to makes the AIA work more smoothly for behemoth corporations, may harm smaller inventors, who lack the resources necessary to take advantage of the protections the AIA affords. With many provisions of the AIA not taking effect until next year, however, by the time we learn the true cost of Congress’ latest effort to ease the battle of the Titans, it may be too late for many small inventors.

Brett Trout

Posted in Patent Law. Tagged with , , .