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The Right of Publicity in Board Games

Brett J. Trout

Kickstarter recently suspended a campaign for a board game showcasing a well-known intellectual property. The public suspension notice stated the campaign was the “subject of an intellectual property dispute and is currently unavailable.” So did the creators of the game launch their Kickstarter campaign without securing all of the necessary the intellectual property rights? 

Kickstarter did post an additional fact about the issue, namely that the dispute involves “Use of images of Mother Firefly, played by actress Karen Black” and that the infringing materials is the “Likeness of Karen Black.” Even before the dispute was finally settled, Andy Van Zandt of the creator, Trick or Treat Studios, confirmed that their position was that “Our House of 1000 Corpses Kickstarter has been temporarily paused due to an infringement dispute surrounding likeness rights of an individual. Please be assured this is an officially licensed product, and we were diligent in securing all necessary approvals.” While it appears the dispute is settled and the creators may have indeed obtained all of the necessary releases, very little information has been publicly disseminated about the issue, so any opinion on the matter is little more than conjecture at this point.

Although this particular dispute may be one of mistaken allegations, it provides an opportunity to review what it means to “license an IP.” In addition to licensing the trademarks and copyrights, if your game includes names and/or likenesses of actual people you must also consider licensing the name, image, and likeness of everyone you intend to use in your game. Typically, for a movie, the name, image, and likeness rights will have been previously obtained and rolled into one agreement, this is not always the case. Sometimes, while the IP owners may have obtained the name, image, and likeness rights as they pertain to the movie, they may not have obtained the right to sublicense those rights for other projects, such as board games. 

Assume, hypothetically, you are running a Kickstarter campaign. How do you avoid a dispute like this? The best course of action is to have everyone whose name, image, or likeness you intend to use in your game, including the estates of any deceased individuals, (the “Talent”) execute a name, image, and likeness agreement. The agreement should include clauses detailing how long the agreement lasts, how much the Talent is to be paid, whether the Talent has approval rights regarding the final product, governing law, reservation of rights, etc. 

Lets assume though, that you were rash and licensed the intellectual property of a movie for your game, but failed to have one the Talent, sign a name, image, and likeness agreement. Lets also assume that Talent refuses to let your game go forward with her image and likeness. What do you do then? The first thing you do is find out what the Talent wants. Does she want money? Does she want changes to the final product? Does she not want to be associated with the project? Once you know her motivations, you can move toward a settlement. If that is not possible, your only option may be to replace all images of the Talent in your game. 

So just what are name, image, and likeness rights? Name, image, and likeness rights are publicity rights. Publicity rights stem from privacy rights which, in turn, stem from the Fourth Amendment to the Constitution. The right of publicity is of a much more recent vintage than the right of privacy however, dating back only a century or so. Unlike the right of privacy, the right of publicity is a person’s right to control the commercial exploitation of their name, image, likeness, etc. to market third-party goods or services without that person’s consent.

Unlike the right of privacy, which is protected by the Constitution and specific federal statutes, the right of publicity is a patchwork of state and common law. This means your rights to your name, image, and likeness vary depending on which state law applies. Even if what you want to do is legal in your state, it may not be legal in another. So if you plan to sell your game nationwide, it is important that you comport with the publicity rights of every state.  The best way to do this is to have a name, image, and likeness agreement drafted to cover all aspects of your project in compliance with the law of every state. Make sure to anticipate all of your intended use of the name, image, and likeness, so you do not have to go back later. Plan on having expansions to your game? Make sure that is covered in the agreement. Plan on creating an online version of your game or spinning off a video game? Make sure those are covered as well. Given the complexity and potential issues with these types of agreements, it is important to retain a lawyer who has the requisite experience dealing with intellectual property and the right of publicity.

The right of privacy is an ever-changing minefield that can easily land you and your game in court facing down and injunction that could send your game into development hell. Be aware that what constitutes the right of publicity today may be different tomorrow. To avoid third-party lawsuits it is important to educate yourself as to what laws govern your particular intended use of other-people’s names, images, and likenesses. Be prepared to spot right of publicity issues before they arise, so you can get all of the proper licenses in order. Even if you have obtained all of the proper licenses, be sure to quickly address all accusations of infringement to clear up any potential misunderstandings. Being technically right will be of little solace if your game gets confiscated at your warehouse due to a lawsuit by a model or an actor who may have less knowledge of image rights than you do. 

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Posted in Board Games, Copyright Law, Trademark Law.

Can I Patent my Board Game?

Brett Trout

The short answer is “yes.” Many board game designers have patented their board games. Given that board games are indeed patentable, the better question might be “Should I patent my board game?” With the cost of patenting a board game running $12-$25K or more and the cost of suing someone for infringing your board game patent running up to seven or eight figures, unless you are planning on making large profits from your game, you may want to forego patent protection. Conversely, if you do anticipate large profits from your game, patent protection may dramatically increase those profits. The extreme example would be the patent on Magic the Gathering that carved out a monopoly allowing the owners of that patent to sell over 20B cards to over 20M players. So while patenting your board game is a good idea, it likely only makes sense if: 1) you plan on your game being in the top 5-10% in overall game sales; and/or 2) you have a publisher willing to pay you a large fee to license your game.

Say your game is the exception, rather than the rule, and you do want to pursue patent protection. What does it take to get a patent on a board game? Board game patents do not protect the entire game. They only protect a narrowly-defined combination of elements that make up a certain mechanic or part of the structure or play of your game. A patent cannot protect the name of your game, your logo, your text, your artwork, or your graphic layout. Those items may instead be protected by trademark and copyright. You also cannot obtain a patent on simply an idea or a concept for a game. To obtain a patent, you have to describe in detail exactly how to make at least one actual embodiment or mechanic of your game.

To obtain a patent, your board game must be new, useful, and nonobvious. Proving your game is new and useful is not as difficult as proving your game is nonobvious. To be nonobvious, your game must be more than simply a new combination of old mechanics. Your game has to either employ a new mechanic, or a combination of existing mechanics in a way that your average skilled board game designer would not have thought of combining. In denying your patent application, patent examiners are allowed to combine mechanics from several other games to show your game is merely an “obvious” combination of old elements and therefore unpatentable. Factors weighed in this determination include: the commercial success of your game, long-felt but unsolved needs in the industry for a game such as yours, failure of others to design similar game, and unexpected results of your particular combination of pre-existing mechanics. None of these factors are dispositive, however, meaning that the determination of the patentability of your game will depend on your specific game, the specific games that preceded yours, and the desire in the industry for a game such as yours.

Unlike trademark and copyright registrations, patent registrations are more detailed and complex. One small error may invalidate your entire patent. Moreover, if you had fifty patent attorneys draft a patent covering your board game, no two of the patents would be the same. They would all have a different scope of protection, varying from narrow to broad. The more narrow your patient, the easier it is for competitors to change one or two items to circumvent your patent. The broader your patent, the better able it is to carve out a larger monopoly. So picking the best patent attorney for your game is extremely important. While disclosing your new board game design does not necessarily prevent you from later applying for a patent, if you wait a year or more after such a disclosure, your game design may be in the public domain and, therefore, unpatentable. If you have disclosed your game to playtesters, publishers, or anyone else, it is important to contact a patent attorney as soon as possible to determine the deadline for getting your patent application on file.

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Posted in Board Games, Choosing the Best Lawyer, Patent Law. Tagged with .

Can you patent inventions created by artificial intelligence? 

It depends (what did you expect a lawyer to say?). The United States Patent and Trademark Office (USPTO) has just issued guidance  indicating inventions created solely by artificial intelligence are not protectable by patent and no artificial intelligence system may be named as an inventor on a patent application. This is not too surprising as it closely mirrors the U.S. Copyright Office’s recent refusal to register copyright in artistic works created solely by artificial intelligence. 

So artificial intelligence cannot be an inventor, but what if artificial intelligence is only used to assist in the creation of the invention? Is the resulting invention patentable? 

According to the new UPSTO guidance, a human inventor may file a patent application on an invention developed with the assistance of AI if the human inventor provided a “significant contribution” to one or more of the claims in the patent application. For the human inventor to obtain a patent on an invention developed with the assistance of AI: 1) the inventor must be a human being; 2) the patent application must be filed on or after February 13, 2024; and 3) the human’s contribution to at least one patent claim must satisfy all of the factors outlined in Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998) (the “Pannu” factors). 

To meet the Pannu test, the human inventor must: (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is significant when measured against the full invention, and (3) do more than merely explain to the other inventors (be they human or AI) well-known concepts and/or the current state of the art.  If the human fails to meet even one of these factors, that human is not an inventor of the invention, regardless of any AI contribution to the development. 

If no humans meet all of the Pannu criteria, the invention is not patentable and the USPTO will reject any patent application covering the invention under 35 U.S.C. 101 (no “whoever” (human) exists to have invented or discovered the invention) and/or 35 U.S.C. 115 (failure to name the inventor). 

The USPTO gave itself wide berth in applying this new guidance, stating there is no bright-line test as to what constitutes a human’s significant contribution to inventorship. Without committing itself to any specifics, the USPTO states it will use the following factors to interpret the application of the Pannu factors: 

Does not constitute inventorship                 

Using AI to invent something             

Creating plan to attack problem

Recognizing a problem

Inputting that problem into an AI system

Recognizing an invention in AI output

Owning or overseeing an AI system used to an invention

May indicate inventorship 

Making a significant contribution to AI-assisted invention

Constructing a specific AI prompt to elicit a desired solution to a narrow problem 

Making a significant contribution to the output of AI to create an invention 

Successfully experimenting on AI output

Developing an essential building block from which the claimed invention derives

Designing, building, or training an AI system to a specific problem in a way that makes a significant contribution to an invention output by the AI system

To assist in the application of the foregoing principles to various fact patterns the USPTO provides some straightforward hypotheticals.

Bear in mind though, while the foregoing guidance is what the USPTO currently uses to analyze patent applications filed on or before February 13, 2024, the guidance is not only not the law, it is not even a formal rule. If you have an edge case or if it is unclear how the foregoing guidance applies to a particular fact pattern, it is best to review your particular facts directly in light of existing case law, such as Pannu, and governing statutes, such as 35 U.S.C. 101 and 35 U.S.C. 115.

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Who Owns the Pooh?

Brett J. Trout

As of January 1, 2022 Winnie the Pooh entered the public domain. But what does that mean? 

Can you write a book about Winnie the Pooh and Tigger too? No. 
Can you sell Winnie the Pooh branded socks? No. 
Can you start a Winnie the Pooh comic strip? Probably not. 

But why? The answer is that although the original copyright in Winnie the Pooh has moved into the public domain, the copyrights in all of his friends and all of the books published after 1926 are still in force. More importantly, all of the trademarks covering Winnie the Pooh goods and services are still in force and may never expire. 

So how did Disney come to own Winnie the Pooh? A.A. Milne published the first Winnie the Pooh book in 1926. In 1930, Milne transferred United States and Canadian rights in Winnie the Pooh to Stephen Slesinger who, in turn, transferred his rights in Winnie the Pooh to Walt Disney Productions the rights in 1961. Between 1981 and 2017 Disney has filed a dozen or so trademarks on Winnie the Pooh, covering everything from mattresses to coin purses.

If Winnie the Pooh is in the public domain, why can’t you use Winnie the Pooh however you want? Since the copyright in the original 1926 Winnie the Pooh book is in the public domain, you are free to print your own copies of that book. But since Disney owns a whole host of trademarks on Winnie the Pooh, you are not allowed to use Winnie the Pooh in any manner that would imply to the purchasing public that what you are selling is marketed, manufactured, or authorized by Disney. Unfortunately, that leaves a very narrow avenue of authorized uses, even after the 1926 work has entered into the public domain.   

What is a copyright? A copyright is the exclusive right to reproduce or distribute an original work of authorship. Copyrights protect things like books, songs, movies, etc. A copyright does not protect more abstract things like ideas, procedures, processes, systems, forms, methods of operation, concepts or principles. Since 1989, copyright protection attaches to a work as soon as it is “fixed” in a tangible medium and only last for the life of the author plus 75 years. Copying to a disk or hard drive, or ripping to a flash drive all constitute “fixation” for the purposes of copyright protection. Prior to 1989, copyrighted works like Winnie the Pooh entered into the public domain 95 years after their first publication. That is why the original Winnie the Pooh book is in the public domain, but later Winnie the Pooh books, and the characters, like Tigger, introduced in those later works, are not. 

What is a trademark? A trademark is a word or symbol (“mark”) that identifies goods or services coming from a particular source. The mark may be a word, name, phrase or symbol. By identifying goods or services as coming from a particular source, consumers can go back to that good or service time and again, relying on the quality they have grown to trust.  You only obtain trademark rights through actual use of the trademark to market a good or a service. Unlike copyrights, trademarks can last forever, as long as the owner keeps using them and keeps enforcing them against infringers. 

So while Winnie the Pooh is technically in the public domain, and you are free to copy the original 1926 Winnie the Pooh book, most of the rights in Winnie the Pooh are still owned by Disney and tightly enforced. 

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Posted in Copyright Law, Trademark Law, Trademarks. Tagged with .

Snap Makes a Spectacle of Itself Over Trademark Dispute

Brett Trout

Snap, Inc., the owners of Snapchat and Bitmoji, are also a the self-styled “camera” company, and have been selling augmented reality (AR) glasses under the name “Spectacles” since 2016. Snap is currently on its fourth-generation AR glasses system, currently only being provided to a select number of AR technology developers to assist them in developing applications for the latest version of the Spectacles.

According to documents Snap has filed with the United States Patent and Trademark Office (USPTO), Snap has been using the name “Spectacles” in association with electronic publishing services since August 14, 2017, obtaining a federal registered trademark for that use on January 21, 2020 (Reg. No. 5,964,422). USPTO documents also reveal Snap’s claim to have been using the word “Spectacles” in association with “wearable computer peripherals” since November 11, 2016 (See. No. 87/177,292), but that trademark application has been repeatedly rejected by the USPTO.

For the wearable peripheral application, namely Snap’s AR glasses, the Trademark Examiner at the UPSTO has rejected Snap’s trademark application, arguing the mark is “generic,” “merely descriptive,” and has insufficient evidence supporting Snap’s contention that the mark as the “acquired distinctiveness” necessary for trademark registration. Not surprisingly Snap disagreed with the Trademark Examiner and appealed the Examiner’s rejection. In November of 2021, the Trademark Trial and Appeal Board (TTAB), the body responsible for hearing trademark disputes with the USPTO, issued a ruling siding with the Examiner in rejecting Snap’s trademark application.

Undeterred, on January 5, 2022, Snap filed a federal lawsuit in the Central District of California requesting the federal court to overturn the decision of the TTAB, arguing the “term “spectacles” is an old-fashioned term popular in the 18th century. It is not often used today in the United States—especially by the younger demographic of consumers of Snap’s SPECTACLES camera product—but when used, it is almost always meant to describe corrective eyewear.”

Last year’s adverse ruling from the TTAB, combined with the century-long ubiquitous use of the generic word “spectacles” for glasses, make Snap’s success in this lawsuit a long shot. But given the time and resources Snap has expended to date, it appears unlikely that even an adverse ruling from this district court will dissuade Snap from its Sisyphean battle to lock down the Spectacles trademark on its latest AR glasses.

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Are You Ready for Techstars Iowa?

It looks like Techstars, the world-famous $18B American seed accelerator, will be coming to Iowa, namely Des Moines. According to this job listing, Techstars is looking for a Managing Director to run Techstars Iowa.

As is the case with the other 50+ Accelerator programs Techstars operates around the globe, the Des Moines Managing Director will be responsible for investment, namely finding and investing in the companies with the best opportunity for growth under the Techstars program. The Managing Director will work with a Program Manager who will focus on assisting companies accepted into the program with Techstars’ proven strategies for growth.

Given Iowa’s, and particularly Des Moines’, wealth of technology talent, entrepreneurship, and investment capital, it not surprising Techstars has singled out the capital city for its next accelerator. This looks to be an incredible opportunity for all parties involved.

If you are interested in applying for the Techstars program, you better start working on your application now. Although Techstars has accepted over sixteen hundred companies into its programs over the years, the typical acceptance rate is less than one percent.

Brett Trout

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Disney Sues Locast for Providing Local Television Stations Online

Disney, ABC, Fox, CBS, NBC, and others have just sued Sports Fans Coalition NY, Inc. (“SFCN,” the parent company of Locast) for allowing consumers to watch local television affiliates online through the Locast service. You can read the lawsuit here. The lawsuit revolves around the issue of local network television affiliates. Although most local network affiliates are available for free over-the-air, consumers already paying for satellite and cable subscriptions would rather not have to deal with an antenna and all of the problems associated with receiving over-the-air transmissions.

Satellite and cable providers are happy to provide the local affiliates to consumers. Indeed, The Telecommunications Act of 1996 actually requires that local television stations give cable systems or other multichannel video programming distributors (MVPD) consent to rebroadcast the local television stations’ signals. Satellite and cable providers negotiate with local television stations for this consent to rebroadcast, typically in exchange for cash or other consideration. If the satellite or cable provider is unwilling to pay the price dictated by the local affiliate, however, the consumer ends up not being able to view the local affiliate. This happens more than you might think. Currently, due to an apparent breakdown of such negotiations the ABC affiliate in my own market is unavailable through my DirecTV subscription.

With consumers bearing the brunt of these negotiation breakdowns, both in terms of unavailable local channels and the costs of available local channels passed along by their subscription providers, a new service entered the scene. As I detailed back in February is a service that offers local broadcast television stations online. Locast argues that since it is adhering to a loophole in copyright law that allows nonprofits to rebroadcast local affiliates to extend their reach, it is not infringing anyone’s copyright. The law in question, 17 U.S.C. § 111, states “The secondary transmission of a performance or display of a work embodied in a primary transmission is not an infringement of copyright if [….] the secondary transmission [….] is made by a governmental body, or other nonprofit organization, without any purpose of direct or indirect commercial advantage, and without charge to the recipients of the secondary transmission other than assessments necessary to defray the actual and reasonable costs of maintaining and operating the secondary transmission service.” When Congress wrote 17 U.S.C. § 111, the theory was to protect local nonprofits that simply installed repeater antennae to boost local affiliate signals for consumers with poor or obstructed signal.

How has Locast succeeded in exploiting 17 U.S.C. § 111 to offer local affiliate transmissions online where others have failed? First, to comport with 17 U.S.C. § 111, a rebroadcaster must be a nonprofit. Second, the rebroadcaster must be rebroadcasting without the purpose of commercial advantage. Those two requirements are fairly large hurdles for most rebroadcasters to overcome. So how is Locast surviving? Where is it getting its money?

When I wrote about Locast back in February of this year, it did not appear clear that Locast had very deep pockets. According to today’s lawsuit, however, the Plaintiffs assert that SFCN, through Locast, is receiving large donations from pay-TV distributor AT&T. Why would AT&T want to pay to see a rebroadcaster like Locast to succeed? One reason may be that if Locast succeeds, that will provide consumers with an option to receive local affiliates directly without an antenna. If consumers can receive local affiliates directly online, the inability to receive local affiliates through their satellite or cable provider may not cause consumers to drop their satellite or cable provider. This dramatically reduces the incentive of satellite and cable providers to pay the large amounts of money demanded by local affiliates to rebroadcast their stations through the satellite or cable provider.

Ten years ago asking a consumer to get out of their satellite or cable package and open another package to watch their local affiliates might have been a big ask. Today, with consumers accustomed to getting in and out of packages to view content on HBO, Netflix, Hulu, etc, the ask is not so big. As a result, if Locast were to go nationwide, the market for local affiliates selling rebroadcast rights to satellite and cable providers could disappear.

With that background in mind, it is not difficult to see why Disney et al. is worried about Locast and why Disney is suing Locast’s parent company SFCN. This is far from the first time Disney has aggressively asserted copyright law to its advantage, and it will likely not be its last.

The court in this case will have the difficult job of applying old law to new technology. Did Congress intend 17 U.S.C. § 111 to apply to nonprofits that rebroadcast local network affiliates online? Does receiving money from AT&T and removing ads in return for consumer payment constitute “commercial advantage”? Does collecting consumer data constitute “commercial advantage”? These are the issues that the district court, and most likely an appellate court, will have to decide.

Regardless of how this lawsuit resolves, it is unlikely the broader issue of online rebroadcasting of local television affiliates will resolve without congressional intervention. Given the technological and legal complexities inherent in the issue, it is hard to see Congress passing a new law in this area without substantial help from lobbyists on both sides of the issue. If Disney’s past copyright lobbying efforts are any indication, things do not bode well for consumers.

Brett Trout

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Posted in Copyright Law, Internet Law.

The Supreme Court and the Registration of the Trademark “FUCT”

“Viewpoint discrimination is poison to a free society. But in many countries with constitutions or legal traditions that claim to protect freedom of speech, serious viewpoint discrimination is now tolerated, and such discrimination has become increasingly prevalent in this country. At a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination. We reaffirm that principle today.”

– Justice Samuel Alito Concurring with the majority opinion in Iancu, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office v. Brunetti

Defending the Thought We Hate
As I predicted back in January, the United States Supreme Court today invalidated that portion of the Lanham Act 15 U.S. Code §?1052(a) prohibiting registration of trademarks that “[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter.” Back in 2017 the United States Supreme Court invalidated another portion of Section 2(a) of the Lanham Act that prevented federal registration of “disparaging” trademarks. That case dealt with an Asian American musician, Simon Tam, attempting to register the trademark “The Slants” for his band. In invalidating the “disparagement” section of the Lanham Act in Matal v. Tam, 137 S.Ct. 1744 (2017), Justice Alito, writing for the unanimous Supreme Court, quoted Justice Oliver Wendell Holmes, stating “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”

Appealing the Case Up the Ladder

The Brunetti case involved Erik Brunetti, and artist and entrepreneur, who sought federal registration of the trademark “FUCT.” Given the Lanham Act’s prohibition on registering immoral and scandalous matter, the examiner at the United States Patent and Trademark Office (USPTO) rejected Brunetti’s application for registration, as did the USPTO’s Trade-mark Trial and Appeal Board (TTAB). Brunetti then appealed his case to the Court of Appeals for the Federal Circuit. The Federal Circuit invalidated the portion of the Lanham Act dealing with immoral and scandalous matter for violating the First Amendment. As the Supreme Court usually does when a lower court has invalidated a federal statute, The Supreme Court granted certiorari (agreed to hear the case on appeal).

The USPTO’s Viewpoint Bias

In upholding the Federal Circuit decision invalidating the immoral and scandalous prohibitions in the Lanham Act, the Supreme Court analyzed not only the Lanham Act, but how the USPTO was applying the Lanham Act in practice. The Court noted that the USPTO had rejected trademark registrations for pro-drug trademarks, while granting registrations for anti-drug trademarks. Similarly, the USPTO had granted trademark registrations for religious terms used for religious purposes, but rejected registrations for religious terms used for secular purposes.

The USPTO Viewpoint Bias Violates the First Amendment
The Supreme Court acknowledged that in the examples cited, the USPTO was rejecting trademarks expressing “opinions that are, at the least, offensive to many Americans.” The Court, however, referred back to its ruling in Tam, noting: “a law disfavoring ‘ideas that offend’ discriminates based on viewpoint, in violation of the First Amendment.” Determining that the immoral and scandalous prohibition in the Lanham Act “aim[s] at the suppression of ” views, the majority had no option other than to invalidate the law.

The Bad News
While it is great news that the Supreme Court has once again invalidated a portion of the Lanham Act in defense of the First Amendment, and defended the right to offend, the partial dissenting opinions are cause for concern. Justices Sotomayor, Breyer, and Roberts all dissented from the majority opinion in that they all believe the offending portions of the Lanham Act should simply be narrowly construed as to apply only to obscene, vulgar, or profane trademarks. While this may seem reasonable on its face, it is unclear how such an interpretation could be implemented without the USPTO examiner’s once again engaging in improper viewpoint discrimination.

In Defense of the Offensive
As a more general matter, I do not know if it is a good idea to have our interpretations of obscenity, vulgarity, and profanity defined by those in the most ivory of towers, completely disconnected from basic cable and the real world watching it. I am going to go out on a limb and opine that what the Justices of the United States Supreme Court might find obscene, may not be obscene to the less priggish South Park viewers in our midst. It is therefore unclear how anyone, let alone academics isolated from hoi polloi, would be able to divide proposed trademarks into a classification like “vulgar.” Such restrictions are nothing more than a defense of ongoing government-mandated viewpoint discrimination. As noted above, “[v]iewpoint discrimination is poison to a free society.”

Brett Trout

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Posted in Internet Law, social media, Trademark Law.

Olivia Jade Finds Out Preparing a Trademark Application is Harder than You Think

After allegedly allowing her parents, Lori Loughlin and J. Mossimo Giannulli, handle having someone else fill out her application to the University of Southern California, you would think Olivia Jade would be well-versed in getting other people to fill out applications for her. Unfortunately, like the rest of us, the people the 19-year-old beauty influencer Olivia Jade had fill out her trademark application for “Olivia Jade Beauty” made a few technical errors.

The technical errors included using the wrong punctuation in the trademark application. Unfortunately for Olivia Jade, the Trademark Office, has some rather hard and fast rules when it comes to using commas and semicolons in a trademark application. Not to bore anyone with the details, but in a trademark application for federal trademark registration, commas are to be used in the identification of goods or services to separate items within a particular category of goods or services. Semicolons, on the other hand, are used in the identification of goods or services to separate distinct categories of goods or services within a single class.  The proper use of commas and semicolons is far from the most esoteric of the technical requirements mandated by the United States Patent and Trademark Office (USPTO). If anyone is interested in perusing hundreds of pages of these odd and ever-changing rules, the The Trademark Manual of Examining Procedure (TMEP) will be right up their alley. Master the TMEP and navigating the odd world of applying for federal trademark registration should be no problem, at least until the USPTO rejects the trademark application based on a court case or two, at which point it may require a law degree to prepare a proper legal argument in response. Or, it will also require an experienced The Medlin Law Firm – Dallas lawyer, about which you can browse this site

This is not so much a critique of Olivia Jade’s trademark lawyers, who by all estimation are generally very good at what they do. This is more to point out how difficult and technical preparing an application for federal trademark registration can be. If even veteran trademark lawyers, with hundreds of federal trademark applications under their collective belts, have difficulty preparing trademark application and comporting with all the technicalities required by the USPTO, just think how difficult it would be for a layperson to get it right.

One big difference between trademark lawyers and laypeople is that when seasoned trademark lawyers make a minor technical error, they typically remedy it in a way that does not permanently impair any trademark registration eventually issuing on the application. Conversely, when a layperson makes an error in a federal trademark application, such as an incorrect date of first use, the trademark registration may issue with the defect in place.

The trademark owner may never realize their mistake until they actually try to defend or enforce their trademark rights. It is at this point, when the opposing party has their own trademark lawyer look into the matter, that the error will likely be revealed. Such revelation could invalidate the trademark registration and undermine the trademark owner’s attempt to defend or assert federal trademark rights they never really had, but it could also force the trademark owner to pay potentially hundreds of thousands of dollars or more in punitive damages and the other parties’ attorneys’ fees.

The bottom line is that navigating the Byzantine world of federal trademark applications is hard. It takes a lot of study, and a lot of talent to do it well. Olivia Jade’s trademark lawyer made some mistakes in her trademark application, but they will fix those mistakes, and make sure the resulting trademark registration will not implode five years down the road when it comes time to assert the trademark registration against an infringer. Whether you are a start-up or a Fortune 1000 company, this is critical information to understand before embarking on any trademark or branding protection strategy.

Brett Trout

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Posted in Choosing the Best Lawyer, social media, Trademark Law.

Elizabeth Holmes, Theranos, and the Patenting of Vaporware

Elizabeth Holmes set the biotech investment world on its head when she announced that her company had developed a small machine capable of performing hundreds of blood tests on tiny blood samples at a greatly reduced cost. Her company
Theranos (a portmanteau of “therapy” and “diagnosis”), immediately began receiving investment capital. These investments eventually totaled over $700 million, skyrocketing the company’s valuation to over $9 billion. But it was all based on a lie. Ms. Holmes had no machine with these capabilities. Not only did such a machine not exist, but an expert in her own company admitted that producing a machine, in such a tiny form factor, with all of its claimed capabilities, was simply impossible.

So how did Elizabeth Holmes and Theranos raise hundreds of millions of dollars based on technology that it did not, and would never, have? As detailed in the new HBO documentary The Inventor: Out for Blood in Silicon Valley, there are several reasons Theranos was able to receive so much money, based on so little technology. One reason was Ms. Holmes’ cult of personality, that kept investors from questioning why the Emperor had no clothes. Another reason was her ability to attract powerfully influential board members, like Henry Kissinger and George P. Shultz, who understood little about biotech, and even less about Theranos’ calims of a tiny miracle machine. Ms. Holmes also brought in investors who, after investing large sums of money into Theranos, had a large incentive to convince new investors to invest even more money, thereby dramatically increasing the valuation of their initial position.

So why did none of these investors confirm that Theranos’ technology actually existed, or that such a technology was even theoretically possible? It appears that instead of conducting sufficient due diligence of Theranos on their own, investors may have blithely relied on the mistaken assumption that at least one earlier investor, in at least one prior Theranos investment round, did confirm that the technology existed, or was at least theoretically possible. So what about the early investors? Why did they not demand to see evidence that the technology was viable? One reason may have been the complexity of the technology and the patents that allegedly protected it. If the company holds multiple patents and employs experts in the field, such as former Stanford chemical engineering professor Channing Robertson, the technology must exist, right?

The problem investors failed to realize is that patents are no indication that a technology exists, or that the technology is even possible. There is no requirement that you have a prototype, or even prove the technology works, before the United States Patent and Trademark Office (USPTO) will grant you a patent. There is a requirement under 35 U.S. Code § 112(a) that a patent contain a written description of the invention and the manner of making it “in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains [….] to make and use the same.,” but you only have to state that. You do not actually have to submit any proof the technology is viable unless the USPTO requests it. And why would the USPTO request it? Why would anyone spend so much money patenting technology that does not exist?

Now if an examiner at the USPTO became aware that a particular technology is impossible to make or use according to a patent application’s written description, such as in the case of applicants trying to patent perpetual motion machines, the examiner will refuse to grant a patent on the technology. The problem is that patent examiners at the USPTO have no ability to use the written description of a patent application to try to actually build or use the claimed invention. In many cases, especially in the case of complex technology, confirming the patent accurately describes how to make or use a viable technology would require massive amounts of time and money to produce a prototype. Given the rarity of applicants spending massive amounts of money try to patent a technology that does not exist, forcing the USPTO to conduct experiments to determine the viability of every claimed invention would be a massive waste of time and resources. The USPTO is, therefore, left with no choice, but to assume that the patent applicant has described the technology in the patent application sufficiently to allow a person of ordinary skill in the art to produce the claimed technology.

Why is this not a bigger problem? Why are more companies not getting patents on vaporware? First, a patent only gives the patent owner the right to stop someone else from making, using, or selling, the technology claimed in the patent. If the technology does not exist, the patent owner has no rights to enforce. Second, if a patent owner were to get a patent on fake technology and then try to enforce its patent against a competitor making a different product, the competitor would investigate the patent, and call in experts to invalidate the patent in court, by proving that the description in the patent does not describe a technology in such full, clear, concise, and exact terms as to enable any person skilled in the art to make or use the technology. So even if the USPTO were to grant a patent on a technology that does not exist, the market would ordinarily weed out those patents before they can do any harm.

But what if a company obtained a patent on an impossible technology and never tried to enforce the patent against anyone? What if the company simply touted its technology as “patented”?

Many investors hold tight to the mistaken belief that the USPTO vets patents to make sure the technology claimed in the patent is real. They erroneously rely on the USPTO to do the complex, costly, and time-consuming due diligence that would be necessary to ensure a technology is viable. Many investors view a patent as a seal of approval from the government that the technology is real and no competitors are allowed to compete in the marketplace.

In actuality, a patent is no guarantee that: 1) the technology is viable; 2) that the patent is valid; or 3) that a competitive technology is infringing the patent. While a patent is presumed valid, if a competitor can present a court with evidence that the patent covers technology that was in the public domain, the court will invalidate the patent. Similarly, a patent can be broad or narrow. A broad patent provides its owner with a monopoly not only on the exact technology, but on alternative technologies a competitor may try to implement to get around the patent. Conversely, a narrow patent allows competitors to change one or two minor elements of the technology to legally circumvent the patent. The breadth or narrowness of a patent determines the scope of the monopoly the patent provides over competing products. Whether a competitive technology infringes a patent or not is determined by a judge or a jury, after reviewing all of the evidence.

Investors, therefore, need to be aware that patents are no substitute for the due diligence required to determine if a technology is real. It is simply not the USPTO’s job to determine the viability of a technology covered by a patent. Investors need to realize what patents represent and what they do not. When the USPTO grants a patent, it is simply stating that, based upon the USPTO’s necessarily limited investigation, the USPTO has not found any evidence that the patent is attempting to cover technology that already exists or that will never exist.

From a technology viability perspective, a patent grant is similar “not guilty” verdict in a criminal trial. A “not guilty” verdict is not a certification that the defendant is innocent. It is simply an indication that there was insufficient evidence to find the defendant guilty. Similarly, a patent is not a certification that the technology is viable, just that the USPTO has not been presented with any indication the technology is not viable.

While most of the blame for the massive Theranos investor losses rests with Elizabeth Holmes and Theranos, some of the blame rests with the investors themselves. This blame rests with Theranos investors failing to conduct sufficient due diligence and for failing to understand what a patent means and does not mean. Investors, especially when investing in complex technology, must conduct their own exhaustive due diligence into the viability of the technology. In today’s complex investment market, there is simply no excuse for investors failing to understand the interplay between patents and technology and how patents do, and do not, factor into proper due diligence protocols.

Brett Trout

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