Skip to content


Top 5 Legal Issues for Podcasters – Number 2: Trademark Infringement

In this five-part series, we examine each of five potential intellectual property pitfalls podcasters can face and the steps you can take to reduce the likelihood of having one of these issues be the centerpiece of a lawsuit with your podcast’s name on it.

2. Trademark Infringement

A trademark is something that identifies goods or services as coming from a particular source. A trademark can be a word, a logo, a sound, or even a scent. If your podcast has a name, you need to be concerned about whether that name infringes someone else’s trademark rights. Unfortunately, given that trademarks, like copyrights, do not require registration, there is no central repository to determine definitively whether or not the name of your podcast infringes someone else’s trademark. The United States Patent and Trademark Office website contains a definitive list of all federally registered trademarks, but does not include a list of state and common law trademarks.

In the United States, you obtain trademark rights not from filing paperwork, but from actually using the trademark in association with a good or a service. The minute you begin using a trademark (assuming the trademark is not generic or merely descriptive and no one else has superior rights to that trademark), you obtain what are known as “common law” trademark rights. The first person to use the trademark in association with a good or a service in commerce is the “senior” user of the trademark. The senior user has priority over any subsequent, or “junior,” users of that trademark. While common law trademark rights are real and enforceable, they only extend to the actual geographic area into which your trademark has penetrated. It is therefore entirely possible to have two distinct companies, both having valid common law trademark rights to the same trademark in different geographic areas.

One of the many benefits of federal trademark registration is that federal registration extends the owner’s trademark rights to the entire country, regardless of their actual market penetration. However, since a senior user of a trademark has priority over a junior user, even if a junior user obtains a federal trademark registration, a non-registered senior user of the trademark may still have superior trademark rights to the extent of their actual market penetration. As podcasts are rarely geographically restricted however, it is unlikely that the owner of a podcast trademark would not be able to demonstrate use throughout most, if not all, of the country.

It is important to note that not all word are protectable as trademarks. Merely descriptive terms like “red” for apples, or generic terms like “apple” itself are not protectable as trademarks for apples. As a general rule, any words your competition would normally use in its identification or description of its products or services are not protectable as trademarks. Those terms are in public domain and outside the purview of trademark protection. So while “podcasting” may not be protectable as a trademark for podcasting, it may be protectable as a trademark for a board game, or other good or service where podcasting does not have a descriptive or generic connotation. Similarly, while “bananas” would not be a protectable trademark as applied to bananas, it might be protectable as a trademark for podcasting.

Trademarks do not exist in a vacuum. Trademarks only exist in association with their particular goods and/or services. Therefore, if someone has a trademark for “bananas” as used in association with medical syringes, your use of the same exact trademark for your podcast may not infringe the trademark as applied to medical syringes. To figure out whether your use of a particular trademark infringes the rights of another particular trademark owner you must determine the likelihood of confusion. It is not enough to simply change one letter in the trademark, or combine two words into one, you must avoid the likelihood that consumers may assume your podcast is affiliated with the owner of the other trademark. If it is likely that a consumer would be confused by the name of your podcast into thinking that your podcast is affiliated with another business with a similar trademark you may find yourself with a trademark infringement lawsuit on your hands.

To determine is if there is or is not a likelihood of confusion, it is important to examine what are called The Polaroid Factors. The Polaroid Factors act as a guide to help judges and juries determine whether one trademark use infringes another. The Polaroid Factors examine the following eight criteria:

1. the strength of senior mark;
2. the degree of similarity between the two marks;
3. the proximity of the users’ products;
4. the likelihood of the senior user entering the junior user’s market;
5. actual confusion;
6. the junior user’s good faith in adopting its mark;
7. the quality of the junior user’s product; and
8. the sophistication of the buyers.

Determining the extent to which the foregoing factors apply in a particular case can be a daunting task. Moreover, there is no guarantee that every judge and jury will apply the factors in the same way. There is a distinct possibility that one judge or jury could apply the factors differently than another judge or jury and come up with a completely different determination as to whether there has been a trademark infringement or not.

Trademark is a complex area of the law. About the only way to select a non-infringing trademark without going through a trademark lawyer is to pick a long, random alphanumeric string of characters. As long, random alphanumeric strings of characters do not typically roll off the tongue, if you want a memorable trademark for your podcast with a reduced chance of infringing a third-party trademark, it is probably best to go through a trademark lawyer.

A trademark lawyer can conduct a trademark search and give you a legal opinion as to whether the trademark you want for your podcast is likely to infringe anyone else’s trademark rights. While you can search Google and the United States Patent and Trademark Office website for similar trademarks, using these sources to search synonyms and homonyms across different classes of goods and services is difficult and time consuming. Even if you elect to go through a trademark lawyer to obtain a federal trademark registration for your podcast, your registration is still susceptible to attack for the first five years. During that first five years, before your registration is made “incontestable,” it is important to stay alert and bring any accusations of trademark infringement immediately to your trademark attorney.

Be sure to check out the other posts in this Top 5 Legal Issues for Podcasters series:

Number 1: Copyright Infringement
Number 3: Defamation
Number 4: Rights of Privacy and Publicity
Number 5: Patents

Brett Trout

Posted in Internet Law, Podcasting, social media, Trademark Law.

Top 5 Legal Issues for Podcasters – Number 3: Defamation

In this five-part series, we examine each of five potential intellectual property pitfalls podcasters can face and the steps you can take to reduce the likelihood of having one of these issues be the centerpiece of a lawsuit with your podcast’s name on it.

3. Defamation

Defamation is one of those few areas of law where someone will spend more money suing you than they know they can reasonably expect to collect. Defamation lawsuits are often more about hurt feelings than collecting money. The last thing you, as a podcaster, want to see on the other side of a lawsuit is a deep pocket with even deeper emotions.

Making things even more difficult when your podcast gets sued for defamation is the fact that defamation is defined differently in different states. Although statements on your podcast may be perfectly fine in one state, they may constitute actionable defamation in another. Generally, defamation involves four things: 1) a statement, either written (libel) or spoken (slander) that is; 2) false; 3) published; and 4) harmful to someone’s reputation.

The best way to reduce the odds of seeing your podcast on the receiving end of a defamation lawsuit is to only put things on your podcast that are true. While the truth is an absolute defense to a claim of defamation, as you might imagine, proving the truth in court is easier said than done. Even if what you say is true, that is no guarantee that a vindictive, or emotionally fragile, third-party, workign more on emotion than logic, will not sue you anyway, even if their lawyer has advised them against it. And once you are in a defamation lawsuit, it may be very difficult to get out.

As you may have already gathered, defamation lawsuits are more likely than most other types of lawsuits to be driven by angry people with more money than reason. So unless your podcast is generating a large excess cash flow you want to start redirecting to your intellectual property lawyer, it is important that you consider more than simply the truth and legality of what you include in your podcast. From a staying out of court perspective, it is also important that you also constantly consider the likelihood that what you and your guests say on your podcast might make someone so furious that they sue your podcast for defamation, regardless of whether such a lawsuit has merit or not. When you or your podcast editor notice something in one of your shows that might cause an issue, strongly consider snipping out that entire portion of the podcast before posting it for public consumption.

It is also a good business practice to remind your guests of these issues surrounding defamation before they take to your microphone. Remind them that in addition to sticking to the truth, there is no reason to go out of their way to anger anyone. Let them know that if they ever find themselves on the fence as to whether a statement about someone may get them (and your podcast) sued, discretion is the better part of valor, at least until they have enough extra cash laying around to go halvsies on a new vacation home for your intellectual property lawyer.

Be sure to check out the other posts in this Top 5 Legal Issues for Podcasters series:

Number 1: Copyright Infringement
Number 2: Trademark Infringement
Number 4: Rights of Privacy and Publicity
Number 5: Patents

Posted in Internet Law, Podcasting, social media.

Top 5 Legal Issues for Podcasters – Number 4: Rights of Privacy and Publicity

In this five-part series, we examine each of five potential intellectual property pitfalls podcasters can face and the steps you can take to reduce the likelihood of having one of these issues be the centerpiece of a lawsuit with your podcast’s name on it.

4. Right of Publicity and Right of Privacy

The Right of Privacy

In 1928, United States Supreme Court Justice Louis Brandeis noted in his dissent in Olmstead v. United States, 277 U.S. 438 (1928), that the right of privacy is “the right to be let alone,” and is “the most comprehensive of rights and the right most valued by civilized men.” Ninety years later, a majority of the United States Supreme Court affirmatively cited Justice Brandeis’ dissent in defense of the proposition that as “subtler and more far-reaching means of invading privacy… become available to the Government,” the “progress of science” must not erode protections guaranteed American citizens under the Fourth Amendment to the United States Constitution. The Fourth Amendment deals with restricting the government from invading the privacy of American citizens, through eavesdropping, video surveillance, improper searches, etc.

Federal protections of the right of privacy are broader than merely restrictions on the government. Federal law 18 U.S.C. § 2511(2)(d) prohibits anyone from intentionally disclosing, or endeavoring to disclose, to any other person the contents of any wire, oral, or electronic communication intercepted without the parties’ knowledge. Under federal law, it is not illegal to disclose the contents of an intercepted communication, as long as you are one of the parties to whom the communication was delivered. So under federal law, it would not be a violation of the right of privacy to disclose on your podcast the contents of an email if you are a party copied in on that email. It would also not be a violation of this federal law to publish a portion of a podcast conversation recorded before or after the guest believed the recording had started or stopped. It may be unethical to publish such a conversation, and it may violate other laws, and it may dissuade future guests from coming on your podcast, but it is not a violation of 18 U.S.C. § 2511.

While federal law only requires the consent of at least one party to a conversation to allow the conversation to be recorded and published, many states require the consent of all parties. At the time of this writing, thirty-eight (38) states and the District of Columbia have only a “one-party” consent requirement. Eleven states require all parties to the conversation consent before a recording of the conversation can be published. Nevada is kind of odd. While under Nevada law, the consent of only one party is required, Nevada’s Supreme Court has held that the consent of all parties is required.

Avoiding Lawsuits Over the Violation of Someone’s Privacy Rights

The right of privacy is one of those things that evokes deep emotion. If a guest or someone you discuss on your podcast feels you have invaded their right of privacy, they may sue you regardless of the strength of their case. For new podcasters and/or podcasters without the financial resources to defend a lawsuit, it is best to avoid disclosing private information of third-parties without their written consent. If you want to use recordings of guests before or after the official start of the podcast, be sure to obtain the guest’s written acknowledgement before the podcast, preferably in the form of a signed release, and remind them again in person when they arrive, that everything is being recorded and that those recordings may or may not be be edited into the podcast.

The Right of Publicity

The right of publicity is of a much more recent vintage (just the last 100 years or so), than the much, much older right of privacy from which it developed. 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. The right of publicity often comes into play in situations where a celebrity’s likeness is used to market third-party goods or services without their 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. Without knowing which state law applies to your activities, it is impossible to know which laws relating to the right of publicity apply to your podcast. Even if what you want to do is legal in one state, it may not be legal in another. It is therefor important to check the laws of the applicable state, and have those laws applied to the facts of your proposed actions by a lawyer who has experience dealing with right of publicity cases.

As of this writing, twenty-eight states protect the right of publicity in some form or another. Seventeen states have actual statutes protecting the right of publicity. The remaining eleven states rely on common law, rather than statutes, to protect the right of publicity, which ironically often creates broader protection for the individual’s right of publicity than states with actual statutes. Throughout the country, the duration of the right of publicity varies widely from state to state. The duration can be as short as the life of the individual or as long as commercial exploitation of the persona continues. Although right of publicity laws vary from state to state, several states include some common concepts in their right of publicity laws. The following is a synthesis of various state right of publicity laws that may, or may not, be applicable to your podcast:

While state laws protecting the right of publicity ostensibly protect everyone’s right of publicity, more and more often the right of publicity is being asserted by celebrities interested less in stopping the use of their likeness, and more in promoting the “right” kind of publicity. It is these celebrities who are driving, and will continue to drive, how the right of publicity is, and will be, interpreted by courts far into the future. The key to avoiding getting your podcast embroiled in a lawsuit over violating a celebrity’s right of publicity is to avoid any promotion of your goods or services or the services of your sponsors that is identifiable by the public with a particular individual. If the public identifies such usage on your podcast with a celebrity’s image, avatar, voice, video, or movements, such usage may violate that celebrity’s right of publicity.

The primary defense to a claim that a podcast violates an individual’s right of publicity is that the podcast did not use the likeness in a commercial context. If your podcast does not generate any money, it is easier, in theory, to defend against a claim that you violated someone’s right of publicity. In reality, however, if your podcast is not generating any income, you are less likely to have the financial resources to hire a lawyer and even get to a point where a judge or jury determines whether or not you have violated someone’s right of publicity. Other defenses to claims your podcast violated someone else’s right of publicity include your usage being used for critical commentary, news reporting, social commentary, parody of the individual, etc. These are allowable usages of a person’s likeness that trump their right of publicity. But again, these defenses may be difficult to prove in court. For instance in a podcast about a celebrity’s recent drunken escapades, you would legally be able to use the celebrity’s name and relevant quotes in association with the podcast under a claim that the newsworthiness of the story and the use of the podcast as a media outlet overrides the celebrity’s right of publicity. That does not, however, mean you will not get sued, or that you would have the financial resources to defend the case long enough to get it in front of a judge or jury, or that no jury would ever find you liable for violating the celebrity’s right of publicity.

The typical relief sought in a right of publicity case is an injunction from the court preventing the podcast from continued use of the individual’s name or likeness to commercially promote goods or services without authorization. Additionally, an individual may collect from a podcast the estimated value of an appropriate licensing agreement for the alleged usage, damages for deceptive marketing, and injury to emotion or reputation, which may total seven figures or more. Some states afford greater protection for the right of publicity, while some afford none. As a result, if you get sued by someone for violating their right of publicity, you can expect that they will do everything they can to sue you in a state that affords their right of publicity the maximum amount of protection and affords you the fewest set of potential defenses.

Avoiding Lawsuits Over the Violation of Someone’s Right of Publicity

The right of publicity not only strikes at the heart of a person’s identification, it also strikes at their pocketbook. If someone’s likeness is valuable enough for you to want to use it to promote your podcast’s goods or services, their likeness is probably valuable enough for them to defend in court. Because right of publicity cases are complex, if your podcast gets sued for violating someone’s right of publicity, it is unlikely you will will be able to get a court to determine, with any alacrity, whether you did or did not violate the plaintiff’s right of publicity. This means that unless you are sitting on a pile of cash, there is a good chance you will run out of money before a court even determines whether you were right or wrong. This typically leads to a default judgment, that includes not only an injunction, but a monetary award large enough to shut down your podcast. Discretion is therefore the better part of valor. If you are unsure whether the use of a person’s likeness on your podcast is a violation of their right of publicity, do not use their likeness. As for guests on your podcast, be sure that the release you have them sign includes a release for their right of publicity as it relates to their appearance.

Conclusion

The right of privacy and the right of publicity are ever-changing minefields that can easily land your podcast on the costly end of a lawsuit. What constitutes the right of privacy and the right of publicity today may be different tomorrow. As the use and consumption of social media changes, so do the expectations of the public regarding the protection of their likeness and private information. To avoid third-party lawsuits and ill-will from third-parties, it is important to educate yourself not only as to what the law protects in terms of privacy and publicity, but also as to the reasonable expectations of third-parties. Even if something does not technically violate anyone’s right of privacy or publicity, that will be of little solace if your podcast goes bankrupt halfway through a lawsuit brought against you and your podcast for allegedly violating someone’s right of privacy or right of publicity lawsuit. It is therefore important to keep yourself updated as to not only what you can do in terms of avoiding violating a third-party’s right of privacy or right of publicity, but also what you should do.

Be sure to check out the other posts in this Top 5 Legal Issues for Podcasters series:

Number 1: Copyright Infringement
Number 2: Trademark Infringement
Number 3: Defamation
Number 5: Patents

Posted in Choosing the Best Lawyer, General, Internet Law, Podcasting, social media.

Top 5 Legal Issues for Podcasters – Number 5: Patents

Avoiding Lawsuits

Although podcasting is at an all-time high, most podcasters still do not understand the legal issues that can land them in court. Given the high cost of defending a lawsuit, if you get sued, it may not even matter whether you are right or wrong. The cost of the lawsuit itself may be more than enough to shut down your podcast and put you on the hook for a default judgment that includes an injunction, large compensatory damages, punitive damages, and attorneys’ fees. Making matters even more complicated, many podcasting activities that technically violate the legal rights of others are unlikely to land you in court, while activities that are otherwise legal might can end up making someone angry enough to sue you, even if they are unlikely to win at trial.

Compounding the problem is that even if you successfully defend a lawsuit, the damage to your reputation and your pocketbook may be enough to erase any traction and goodwill you had hoped to achieve with your podcast. For these and many more reasons, winning a lawsuit is far less preferable than not getting sued over your podcast in the first place. While you may get sued for many things, some of the most costly and complex lawsuits over podcasts involve intellectual property disputes. Intellectual property disputes over podcasts typically fall into one of the following five categories: patent infringement, copyright infringement, defamation, trademark infringement, and right of publicity/right of privacy. In this five-part series, we will examine each of these potential pitfalls and the steps you can take to reduce the likelihood of having one of these issues be the centerpiece of a lawsuit with your podcast’s name on it.

5. Patent Infringement

Patent infringement is one of the least likely intellectual property problems your podcast will face. However, if you do receive a patent infringement cease and desist letter, how and when you handle that letter can mean the difference between whether your podcast lives or dies. Given the growing maturity of the podcasting market, it is unlikely a patent has or will issue covering a portion of your podcast activities. It is far more likely that a patent does or will exist that someone may simply claim you infringe. Patent holders know that the cost of successfully defending a patent infringement lawsuit through a jury trial runs about two and a half million dollars in attorney fees alone. Unscrupulous patent owners may leverage this knowledge to extort monetary settlements out of small podcasters. They know that there is a high probability that if they sue you for patent infringement, you will run out of money and give them their default judgment long before you ever get the chance to present your defense to a jury.

Patent owners who do not make, use, or sell the invention, but merely sue infringers are called patent trolls. These patent trolls know that few podcasters have the resources to fight a patent infringement lawsuit. But they also know that taking the case all the way to trial could mean a court might rule their patent is invalid and unenforceable, putting an end to their shakedown activities. So what patent trolls often do is demand money in exchange for agreeing not to file a patent infringement lawsuit. The amount of money they demand is calculated to be just enough to convince the accused infringer to pay them, rather than fight them. That is what happened to podcasters in the face of United States Patent Number 8,112,504 (the “‘504 Patent”). What the owner of the ‘504 Patent did not count on however, was that podcasters would rally together, pooling funds and crowdsourcing resources to actually fight the patent.

The fees expended in the podcaster’s defense of the ‘504 Patent infringement lawsuit far exceeded the amount of patent infringement damages any one podcaster would have had to pay. The hope was that once the patent owner realized the funds were available to fight, the patent owner would back down. And that is exactly what happened. The patent owner filed a patent infringement lawsuit against a podcaster, the podcaster used the funds to fight the case, and the parties eventually settled the lawsuit, with the patent owner agreeing to not only drop the lawsuit, but to not pursue patent infringement lawsuits against other small podcasters as well. That was not even the end of it. After the lawsuit was settled, the Electronic Freedom Foundation attacked the ‘504 Patent before the United States Patent and Trademark Office, using its own resources and crowdsourced documents to show the invention claimed in the ‘504 patent had been invented years before the patent was filed. As a result, the Patent Office’s Patent Trial and Appeal Board invalidated all of the claims of the ‘504 patent, based on two documents showing the invention had already been invented by someone else.

Thankfully, the story of the ‘504 patent had a happy ending, but that is unusual. Had the podcasters not pooled their resources behind a large podcaster willing to spend more money to fight than to simply pay the amount demanded by the patent owner, or had the public not scoured the internet to find the two documents showing the invention had already been invented, things might have turned out very badly for all podcasters. The chance of such a lucky confluence of circumstances and such successful document crowdsourcing ever happening again is small at best. Do not count on ever being this lucky. If you receive a patent infringement cease and desist letter, the key is to act quickly. Contact an intellectual property attorney immediately to determine the strength of the patent infringement claims against you and discuss your possible options. There may be creative solutions available to get you out of the patent infringement crosshairs and back to podcasting with a minimal expenditure of time and money. Even if there are no simple of inexpensive options in your particular case, ignoring a cease and desist letter is the surest way to turn a manageable problem into a problem that brings down your entire podcast.

Be sure to check out the other posts in this Top 5 Legal Issues for Podcasters series:

Number 1: Copyright Infringement
Number 2: Trademark Infringement
Number 3: Defamation
Number 4: Rights of Privacy and Publicity

Posted in General, Patent Law.

Patent Application Indicates Google Has Eyes On What You Do In Your Bedroom

Patent applications are just that, applications. They do not indicate that a product has been commercialized, or even the existence of an operational prototype. Patent applications do, however, give some indication of the research the patent applicant has been conducting behind close doors.

One patent application I found of particular interest is United States Patent Application Number US20160260135A1. This patent application, the Orwellian-entitled “Privacy-aware personalized content for the smart home,” envisions a home system that harnesses the Internet of Things, such as “computers, smart televisions, tablets, smart thermostats, lighting systems, alarm systems, entertainment systems, and a variety of other electronic devices” to collect otherwise unattainable private homeowner data to provide the homeowner with more targeted content, such as advertising, that is more likely to result in “converting user viewing of the content to user interaction with the content.”

If that does not sound frightening, I do not know what does. While the Google application does not come right out and provide a wiring diagram for Mr. Charrington’s junk shop honeypot, it is fairly easy to put two and two together in this application to come up with five. Google’s patent application describes deploying various types of sensors, such as microphones, cameras, passive infrared sensors, heart rate monitors, voice and facial recognition systems, etc. to determine things like the number and identity of all of the people in a room, the heat being given off by those people, their physical activity level etc. The application teaches combining that information with additional information received from other sensors, like microphones, to determine what is happening in a room and ostensibly using that data for the benefit of the homeowner in ways such as adjusting the thermostat, ambient lighting, music etc.

One of the less creepy suggestions in the application for use of the technology is to combine data from the sensors with rules-based inference engines or artificial intelligence provided through a cloud-computing system, to detect or monitor the progress of Alzheimer’s Disease in a homeowner.

A somewhat creepier use of the Google system involves combining data from the sensors with other data to make suggestions to the homeowner. One example given in the patent application is the system using a camera to identify a copy of the novel “The Godfather” on the homeowner’s nightstand, using optical character recognition to identify the title, and sending the homeowner the following message:

“I noticed you have a copy of ‘The Godfather’ by your bed. The movie based on this novel is showing tonight at 9:30 PM on channel 5.”

It is difficult to imagine that statement not being read in Hal 9000’s voice.

Another example provided in the patent application is the system using a camera to identify a “tee-shirt on a floor of the user’s closet and recognize the face on the tee-shirt to be that of Will Smith. In addition, the client device may determine from browser search history that the user has searched for Will Smith recently. Accordingly, the client device may use the object data and the search history in combination to provide a movie recommendation that displays, ‘You seem to like Will Smith. His new movie is playing in a theater near you.’”

Getting creepier for sure, but the scariest implementation can only be read between the lines of the application.

Google’s patent application notes in its description the use of video cameras, and placement of devices in ceilings and bedrooms. The system also details the use of application program interfaces to allow “applications executed by the third parties to initiate specific data processing tasks that are executed by the central server or the cloud-computing system 64, as well as to receive dynamic updates to the home data 82 and the derived home data 88.” Given all of the foregoing, it is not difficult to extrapolate that the system could be used to identify all of the people in a bedroom, infer the activity they are currently involved in, and send video of the activity to a third-party provider.

In fairness, the application does state that the system may be configured to use a private network to communicate the people/object data between devices to preserve the privacy of the user, since the data is not sent to the external server. So, if you trust the system to differentiate between the information you want maintained on your private network and the information to send to third party advertisers, this system may be for you. Otherwise, you may want to pass on installing this first generation privacy-aware personalized content in your bedroom.

Brett Trout

Posted in General, Internet Law, Patent Law.

The Most Valuable Sentence Ever Written

I go to encounter for the millionth time the reality of experience and to forge in the smithy of my soul the uncreated conscience of my race.

James Joyce, “A Portrait of the Artist as a Young Man”

The immense value of that sentence is undeniable. However, without some evidence that in its absence someone would have paid Mr. Joyce $125 billion to forge that particular sentence in the smithy of his soul, it is not the most valuable sentence ever written.

Opinions as to which sentence is the most valuable sentence ever written have been wide-ranging since the day the first reed stylus was put to to the first clay tablet by the first ancient Sumerian scribe back in 3200 B.C. While top literary contenders, like the James Joyce sentence above, are certainly compelling in their aesthetic, much like the created conscience of Mr. Joyce, they are simply not susceptible to an objective quantification of their value. From a subjective standpoint, there is no way to quantify opinions to determine the most valuable sentence ever written. This post, therefore, leaves the centuries-old “literary value” debate to scholars and aficionados of the literary arts. This post inquires less of the aesthetic and more of the uncultured pedestrian endeavor of quantifying the most valuable sentence ever written, in terms of cold hard cash.

In terms of money, it would be quite challenging to argue the most valuable sentence ever written is anything other than a patent claim. A patent is a document that both describes an invention and outlines the metes and bounds of the monopoly the patent affords its owner. Regardless of the complexity of the invention, or of the patent, these metes and bounds are contained within a single sentence. Patent claims may be short, or may be over one thousand words long, but they must be only a single sentence.

Counterintuitively, longer patent claims are not always the best patent claims. Indeed, since patent claims list all of the elements something must have to infringe the patent, the longer a patent claim is, the more opportunity there is for a competitor to simply eliminate a single element in the sentence from their competing product and avoid infringement. So why then are patent claims not all incredibly short?

Counterpoised to this desire to shorten a patent claim, is the need to include within the patent claim enough elements so as not to have the patent claim cover something that is already out in the public, or something that would be an obvious modification therefor (the “prior art”). The reason the government grants patent owners a limited monopoly is that the grant is in exchange for the inventor telling everyone how to make and/or use their invention. If the inventor is simply telling everyone how to make something that already exists, the quid pro quo for the monopoly is absent, and the inventor is not entitled to a patent.

The sentences that make up patent claims are typically drafted by special attorneys, called patent attorneys. Patent attorneys must have an undergraduate degree in a STEM field, or at least have completed a minimum number of college STEM classes, to even be allowed to sit for the patent bar exam. All patent attorneys must pass the very challenging patent bar exam before thy are allowed to practice before the United States Patent and Trademark Office.

In drafting a sentence that will make up a patent claim, these specially trained patent attorneys must avoid making the patent claim too narrow by including everything and the kitchen sink. This would make it too easy for a competitor to eliminate one of these “kitchen sink” elements and avoid infringing the patent. Conversely, patent attorneys must avoid including in the patent claim only a short collection of elements that are already in the prior art. This would make the claim legally unpatentable, since it would improperly cover things already known to society. The challenge, therefore, is for a patent attorney to include in the sentence enough elements to define the invention over the prior art, but not include so many elements that competitors have commercially feasible options to capitalize on the inventor’s efforts by simply eliminating one or more of the claimed elements.

Drafting a patent claim that precisely balances these dual purposes is as much of an art as it is a science. If one were to hire fifty patent attorneys to draft a patent claim covering a complex invention, it is unlikely that any two of the resulting sentences would be identical. A well-crafted patent claim may take even a seasoned patent attorney dozens and dozens of hours to draft. Add to that the hundreds of hours sometimes required to adequately review all of the relevant existing prior art in the form of patents, products, and methods, an inventor can easily have hundreds of hours and tens of thousands, if not hundreds of thousands, of dollars invested in attorney fees just to create the perfect patent claim. Thankfully, most patent claims do not require nearly that amount of time or money to prepare. However, in a situation where even a slight variance in the interpretation of the patent claim can mean multi-millions of dollars in lost revenue, resulting from a patent claim later deemed invalid or easily circumvented, the return on investment for the extra effort in drafting the perfect patent claim can be massive.

So what is the answer? What is the most valuable patent claim, and therefore the most valuable sentence ever written? While there are many patents worth one billion dollars or more, the likely top contender for the most valuable sentence ever written is contained within United States Letters Patent No. 6,605,636 covering “atorvastatin hemi-calcium form VII,” more commonly known as the cholesterol-lowering drug “Lipitor.” During its lifetime, the 6,605,636 patent generated over $125 billion in revenue over 14.5 years, sometimes generating over $1 billion per month.

And just what does $125 billion look like in sentence form? Prepare to be underwhelmed:

“Atorvastatin hemi-calcium Form VII or a hydrate thereof having a powder X-ray diffraction pattern substantially as depicted in FIG. 1.”

(Fig. 1 is the X-ray diffraction pattern associated with this post.)

Brett Trout

Posted in Choosing the Best Lawyer, General, Patent Law.

Girl Scouts Sue Boy Scouts For Trademark Infringement

Girls Scouts of the United States of America (GSUSA) has just filed a federal lawsuit against Boy Scouts of America (BSA) claiming federal trademark, infringement, trademark dilution, and unfair competition. In the lawsuit, GSUSA claims that only GSUSA has the right to use the word “scouts” with leadership development for services for girls.

While the two organizations had peacefully co-existed for over 100 years, GSUSA took issue with BSA’s public statement, released on October 11, 2017, that BSA would open its Boy Scouts programs to girls beginning in February of 2019.

The 50-page lawsuit includes several examples of allegedly infringing use of the Scout trademark used to recruit girls, allegations of actual consumer confusion, claims of interference with prospective economic advantage, etc. The lawsuit seeks a permanent injunction prohibiting BSA from using the terms “scout,” “scouts,” or “scouting,” without an inherently distinguishing preceding term like “boy”, to market or provide services directed to girls.

The suit also seeks withdrawal with prejudice of several trademark applications BSA currently has pending before the United States Patent and Trademark Office and the award of attorneys’ fees and punitive and compensatory damages for all profits BSA has earned as a result of the alleged infringing activities.

It is easy to see how dwindling enrollment in scouting programs has led to an inevitable overlap in marketing efforts between GSUSA and BSA to target an increasingly smaller and smaller pool of children interested in scouting. It will be more difficult, however, to anticipate how the courts might rule on the issue of prohibiting the marketing of trademarked services to protected classes of consumers. Regardless of how the courts rule on this issue, the one thing we know for certain is that whatever the ruling is, it will be sure to have far-reaching ramifications for Trademark Law for years to come.

Brett Trout

Posted in Internet Law, Trademark Law.

Do I Need to Patent My Invention?

What Is a Patent and Why Do I Need One?
One of the first things people think of when they come up with a great idea is “I should get a patent on this.” But what is a patent? A patent is simply a document describing your invention and telling everyone which parts of your invention you want to protect. A good patent describes your invention in broad terms, making it more difficult for your competitors to simply change a few things and get around your patent. As you might imagine, good patents are hard to get. If you write them too broadly, they cover things that are already out in the public. This makes it easy for your competitor to invalidate your patent. The key is to draft a patent that is narrow enough to avoid covering anything already out in the public domain, but broad enough to prevent competitors from easily circumventing your patent. This is not an easy task. Patents are so complex, that ordinary lawyers are not even allowed to get them for their clients. Patents are drafted by special patent lawyers, who receive special training, have undergraduate studies in a science and pass a special Bar exam, allowing them to practice before the United States Patent and Trademark Office (USPTO).

How Much Does a Patent Cost?
As with anything, different patents have different prices. A very narrow patent on a very simple invention might run $3,000. But it is unlikely that a $3,000 patent would get you much protection, or be easy to enforce against infringers. On the opposite end of the spectrum, you can pay $100,000 or more for a broad patent on a complex invention. It is important to talk to several patent lawyers to get quotes for the cost of obtaining a patent and the scope of protection they believe they can obtain for you. You will likely get a range of price quotes for your patent. Any quotes substantially below the average are likely to be too narrowly drafted to be of much value, while quotes substantially above the average are likely to be overkill. $9,000 to $12,000 is the price range you can expect for a quality patent covering a simple mechanical invention.

How Long Does It Take to Get a Patent?
For a simple mechanical invention, it may take three years or more to get your patent. While there are ways to reduce this time, these expedited options typically come with dramatically increased costs. Once you file your patent application, you can start marking your invention “patent pending.” While you cannot sue infringers while your invention is patent pending, the patent pending marking serves as a warning to competitors that you may have a patent shortly, that may force them to stop selling their infringing products immediately. Getting your patent faster is not always a good thing though. If you are still developing your invention, having the patent in the pending stage allows you to adjust the scope of your patent protection to narrow it ways that do not affect its commercial viability and broaden your scope of protection to cover aspects of your invention you may not have believed were as important early on. While you cannot add additional material to your patent application once you file it, you can adjust your scope of coverage to cover things you may have described in the original patent application, but may not have originally sought to protect. As you can see, having a detailed patent application from the start allows you adjust your scope of protection as your invention develops. This is another good reason to spend a little more time finding a patent lawyer who focuses not only on where your invention is today, but on where it may be three years from today.

Is My Invention Even Patentable?
To determine if your invention is already out in the public you can obviously Google your idea. In addition, you can conduct a cursory search of patents and patent applications at Google Patents. If you do not find anything similar in your searches, your patent lawyer is available to perform more comprehensive searches. Some of these searches include infringement searches, to determine if your invention infringes anyone else’s patent, and patentability searches to determine if your invention is patentable.

Should I Get a Patent?
From your patent lawyer’s perspective, it is always a good idea for you to pursue a patent. From your perspective, however, getting a patent is not always your best option. If your invention will only be of interest to buyers for a year or two, you are unlikely to need a patent. If your invention is similar to competitors in terms of value and maximum buyer price point, you are unlikely to need a patent. If your invention will not generate enough revenue to pay for the patent, you are unlikely to need a patent. However, if your invention will allow you to: 1) manufacture your product more cheaply than the competition; 2) provide buyers with increased value over the competition; and/or 3) allow you to charge more for your product than the competition, you may want to pursue a patent. Some important questions you should ask before pursing a patent include: What kind of annualized profit can I expect with a patent? How many years, if ever, will it be before my patent pays for itself? Are there non-infringing alternatives competing, or likely to compete, in my market space? Will my product be obsolete before the patent issues? Will less expensive “trade secret” protection suffice? Will anyone be interested in buying or licensing my technology? How you answer these questions will determine whether or not you should pursue a patent.

Do I Need a Patent Lawyer to Get My Patent?
Technically no. You do not need a patent lawyer to file your patent. Although you can file your patent application yourself, the odds of you drafting a better patent than a reputable patent lawyer are very small. The technicalities associated with preparing a patent application and arguing back and forth with the Patent Office are just too complex. You very well may end up with a patent, but it is unlikely that patent will be as broad or enforceable as that same patent drafted by a good patent lawyer. While you need a patent lawyer, it is unlikely that you need the best patent lawyer in the word. You just need the best patent lawyer for you.

How do I Pick My Patent Lawyer?
Finding the best patent lawyer for you means looking at factors like cost, skill, experience, and communication. Not surprisingly, all patents are not created equally. If you hired fifty different patent lawyers to draft a patent on your invention, all fifty patents would be different, each having a different scope of protection and enforceability. Skilled patent lawyers, who have obtained hundreds of patents for their clients, typically obtain better patents than more inexperienced patent lawyers, who have drafted fewer patents. While better patent lawyers often charge more, the best patent lawyer for you is not necessarily the most expensive. Ask around. Ask friends. Ask other lawyers. Search the internet for patent lawyers in your area. Go to the USPTO.gov Web site and see how many patents the patent lawyer has drafted. Go visit with the patent lawyer. If you like the lawyer, confirm that he or she will be the one actually drafting your patent and that he or she will not simply be passing your patent off to an inexperienced underling. Ask if the patent lawyer has experience defending patents in court. Success defending patents in court, often translates into drafting better patents. The most important thing to remember when choosing the best patent lawyer for you is that you feel comfortable working with that lawyer. You need to feel that you understand them and that they understand you. There are a lot of patent lawyers out there. Meet with as many as you can. Once you have weeded out the low end and high end lawyers, choose the one who makes you feel the most comfortable that they can address all of the concerns noted above. Spending a little more time up front picking the right patent lawyer will save you time, money, and heartache down the road.

Posted in General, Patent Law.

The Future of Artificial Intelligence in Cyborg Cybernetics

We are all familiar with the science fiction vision of cyborgs. From Luke Skywalker to the Terminator we have an idea in our heads that a cyborg is a futuristic combination of human and computer. Science fiction cyborgs are typically depicted as anthropomorphized machines that look and act, for the most part, like humans. That future is probably closer than you might think. Indeed, if you use a smart phone, you are technically a cyborg, combing your human body with the knowledge you input and output using your hand-held wireless computer.

Machines, such as robots, do a few things quickly and precisely. Humans do a very large number of things slowly and clumsily. Cyborgs can combine the efficiency of robots, with the problem-solving of humans. While there are relatively few problems a human can solve that a machine cannot be programmed to solve, many problems that companies need to solve occur so rarely, that it is inefficient to program a robot to accomplish them all. That is where the wide-ranging, albeit much less efficient, problem-solving of a human comes in handy. The cyborg is a symbiotic relationship. The cyborg can solve reoccurring problems and perform reoccurring tasks much faster than a human, and a human can solve more rare problems and perform more rare tasks than a robot.

As technology develops, we are seeing a full range of new cyborgs integrating humans with computers. Many of these task-specific cyborgs are readily distinguishable from mere humans. An example of such a task specific cyborg is detailed in Amazon’s United States Patent No. 9,280,157. Patent ‘157 describes a mobile metal cage that contains a human. The cage is designed to allow a human to safely navigate a work area populated with autonomous cybernetic robots in a setting such as an Amazon warehouse. Since these robots may or may not be programmed to identify humans in their workspace, a human simply walking into a warehouse with robots whipping by at high speed can lead to injury or death for the human.

The device described in the ‘157 patent has wheels under the cage and is controlled by the human operator inside the cage. The human can maneuver the mechanical/human cyborg to where it is needed to fix or retrieve items in the workspace. The computer monitors the other robots in the area to avoid collisions and protect the human. The system also has extensible barriers that allow the human to exit the cage while still protecting the human from nearby robots. While this particular cyborg is not in use, and is not planned to be placed into use anytime in the near future, it provides some insight into what future cyborgs might look like.

Industrial cyborgs, like Amazon’s moving human cage, combine the robot’s ability to move quickly and safely, with a human’s ability to solve unique problems. For most industrial applications, there is no need to make the cyborg look like a human. This allows designers to maximize the utility of future cyborgs to exploit the best aspects of the machine aspect of the cyborg, namely speed and precision, and the best aspects of the human, namely ready adaptation to a number of novel problems too numerous and rare to all be cybernetically programmed into the machine. So for the immediate future, it is likely that most of the industrial cyborgs being developed will look much more like Amazon’s mobile human cage than the Terminator.

While machines currently lag behind humans in the number of mundane tasks they can accomplish, the use of artificial intelligence, or computer learning, is quickly closing that gap. Within a generation, it is likely that artificial intelligence will allow machines to surpass humans in nearly every situation. Humans simply transmit information too slowly to compete. No matter how much computing power you hold in your hand, there is simply no interface that can allow you to access that power as quickly or efficiently as a computer can.

To allow humans to compete with artificial intelligence on a more even playing field, researchers are developing improved personal human machine interfaces that link your brain directly to your computer. One such system is the mesh-brain implant. Such an implant would be injected directly into your brain, to allow you to send and receive information directly to a computer. While the mesh-brain implant is still a ways off in terms of human testing, more practical, albeit less efficient, human/computer interfaces like Elon Musk’s Neuralink interface are likely to be announced as a viable product in the relatively near future.

While these personal cyborgs will look more like Terminators than industrial cyborgs like Amazon’s mobile human cage, they each have their place. Given the rapid development of human/machine interface, it is more likely than not that you will have a neural implant within your lifetime. As to whether these new interfaces will allow you to compete with the even more rapid development of artificial intelligence, that has yet to be seen.

Posted in Internet Law, Patent Law.

Why Do Intellectual Property Agreements Have to Be So Long?

Unique Problems
Why are intellectual property agreements so long when so many other agreements are only one or two pages long? The main reason is that there are a lot more things that can go wrong in an intellectual property agreement that would never arise in a typical sales agreement. A comprehensive intellectual property agreement needs to address these unique problems to prevent one party from taking advantage of the other. One situation that often arises in intellectual property agreements is the issue of guaranteed minimum sales. Without guaranteed minimum sales being required under the agreement, the exclusive “seller” may simply shelve the product and not make any sales at all. Since the agreement is exclusive no one else can make sales either. The seller can therefore effectively take the product off the market and sell its inferior product for a larger markup. A 50% royalty is meaningless if the seller never intends on selling the product in the first place.

Unknown Contingencies
Another reason intellectual property agreements are so long is to force the parties to come to an agreement regarding various situations they may not even have considered. This ensures both the parties are on the same page when it comes to the other party’s expectations as well as the metes and bounds of the agreement. Forcing the parties to agree on these contingencies up front makes expectations more attainable, thereby reducing the likelihood the parties will ever end up going to court over these contingencies down the road.

Judgment-Proof
No matter how well-written an intellectual property agreement may be, no agreement will allow you to recover money the other party does not have. The number one rule with intellectual property agreements is to not get into a deal with a “judgment-proof” party. The lack of sufficient capital raises several red flags that must be addressed. Even if you have a watertight agreement and spend all the money you have to sue the other party for breaching that watertight agreement, a multi-million dollar judgment is not worth much if the breaching party is bankrupt. Avoid getting into a business with an entity that may not have the resources to cover any damage they might cause you by breaching your agreement. In some cases you may want the intellectual property agreement to require the other party provide a bond in the amount of damage you estimate may occur.

Trust
The number two rule with intellectual property agreements is that you trust the other party. A well-written intellectual property agreement is no substitute for making sure the party with whom you are getting into business is honest and reputable. While the best case scenario is a well-written agreement AND a reputable party with a proven track-record on the other side, if you have to choose between a well-written agreement and a reputable party with a proven track-record on the other side, choose the reputable party. A little due diligence in researching the track record of the other party can save you a lot of heartache down the road. Do not sign an intellectual property agreement with a party you would not deal with on a handshake. The intellectual property agreement, even a well-written one, is simply a backup that you hope never even comes into play.

Customization
Even if you trust the other party and the other party has money to pay for a potential breach, you still need an intellectual property agreement customized to your precise deal. Unlike most boilerplate agreements, it is very rare that an intellectual property agreement written for someone else will be applicable to your proposed deal. Intellectual property, by its very nature, is unique, with unique hardships and advantages. Any agreement dealing with the license or assignment of that unique asset needs to be unique itself. By the same token, there is no reason to go overboard. The agreement need not cover every remote possibility. Adding clauses that cover contingencies that will never happen is simply padding the lawyer’s pocket and adding delay to the transaction. A tight, trimmed-down intellectual property agreement will be plenty to read and negotiate. There is no need to waste the time of either party on items that are unlikely to come into play.

A Roadmap
The primary benefit of a carefully-drafted intellectual property agreement is not that it allows you to win a case in court, which it should, but that it serves as a roadmap for the parties to follow. By confirming that both parties are in agreement on all of the unique issues relating to the license or assignment, a solid, customized intellectual property agreement dramatically reduces the likelihood of going to court in the first place. Going to court is typically only good for the lawyers. You can think of a lawsuit as you agreeing to shoot off your toe if the other party shoots off their foot. Sure, they are more unhappy than you, but you are still let without a toe. Agreeing to terms up front is much less painful than agreeing to terms after years of litigation.

Getting Everyone on the Same Page
Customized detailed agreements, especially where intellectual property is involved, make sure both parties are on the same page as to what everyone’s rights and obligations will be. Being detailed and hashing out hypotheticals right from the start may slow down the deal a little as the parties argue over things they had not considered. But resolving these issues at the beginning pays off down the road, when the parties are both making money, and not spending their money on lawyers, over what very well may be a good faith misunderstandings over who was responsible for what.

Better Contracts = Better Business
A contract is a lot like a rule book for a board game. A better rule book improves the game. Well-written rules eliminate ambiguities and allow the parties to simply play the game. A game where both parties spend all of their time arguing over rules, neither of them were clear on from the start, is no fun at all. The best written contract, like the best written rule book, is one that answers all of the questions and clarifies everything up front, so that no one ever has to look at it again and the parties can get to the business of playing the game.

Brett Trout

Posted in Choosing the Best Lawyer, Copyright Law, General, Patent Law, Trademark Law.