Implications of Bilski on Innovation in 2010 and Beyond

7 01 2010

Back in November, we first posted about the US Supreme Court case of Bilski v. Kappos (Not Looking Good for Method/Software Patents).  The Supreme Court heard oral arguments at the end of 2009, and should rule on the case in 2010.

The invention in Bilski basically was a method where information was analyzed and acted upon.  Such a method has been referred to, and probably rightly so, as a pure business method.  The U.S. Court of Appeals for the Federal Circuit called into question the patentability of such business mentods, as well as software and other processes.  As stated by Gene Quinn at IPWatchdog (Praying the Supremes Get Bilski Right in 2010):

So in order to kill pure business methods the Federal Circuit shot at and killed much more.  In truth, what the Federal Circuit did was akin to pulling out an elephant gun to shot a fly.  There has been and will continue to be enormous collateral damage unless and until the Federal Circuit Bilski debacle is fixed.

How the Supreme Court deals with the Court of Appeals’ decision in Bilski will have a profound impact on current patents and patent applications for software and other method/process patents such as medical, analytical and diagnostic processes.  Gene Quinn also states in the same IPWatchdog post:

It is not at all an overstatement to say the fate of future innovation in the US rests squarely on the Supreme Court getting the Bilski ruling correct.  Long ago the manufacturing jobs started leaving and they are gone and not coming back.  To the extent that the US has anything other than a service economy it is thanks to intellectual property and intangible assets, and everyone who seriously considers the matter knows that the chief intangible asset for businesses is software.  Just take a look at the technology sector and the companies in that space and you can’t help but notice that the major employers in the US all have one thing in common — they use, create and exploit software.  Erase software patent protections and hundreds of thousands of jobs will be erased from the economy and investment dollars will go elsewhere.

- Gregg J. Lallier


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Microsoft Getting Binged with a Trademark Infringement Suit

17 12 2009

As many of you know, Microsoft launched its re-designed search engine, Bing, this past summer.  The search engine was aimed at challenging the market shares of Google and Yahoo (see the WSJ blog article from June 1, 2009, What Do You Think of Bing?). 

It looks like Bing will have more to worry about than just Google and Yahoo, as Bing! Information Designs is alleging trademark and unfair competition against Microsoft in a suit filed Wednesday, December 16.  The suit, Bing! Information Design LLC v. Microsoft Corporation, case no. 0922-AC18341, filed in the Circuit Court of the City of St. Louis, MO asserts claims for trademark infringement, unfair competition and tortious interference with business expectancy.  According to the press release from the law firm filing the suit (see it here on BusinessWire), St. Louis-based Bing! Information Design creates interactive and computer-related illustrations, designs, interactive graphics, animations, technical diagrams and related services, and has used the mark Bing! since at least 2000 and has applications pending to register the mark.  Here’s the quote from Bing! Information Design’s lawyer (Anthony G. Simon of St. Louis’ The Simon Law Firm) from the press release:

For nearly 10 years my client has been using the Bing! mark…My client selected this unique mark to distinguish itself in the marketplace and invested substantial time and effort promoting its business using Bing!.   Microsoft’s use of the identical mark and its aggressive advertising have gutted all of my client’s efforts to distinguish its business and created confusion that must be remedied.

This should be a classic case of David v. Goliath, although, looking at their website, David may have more than just a sling to go to battle with:

http://www.bing.biz/

I have to mention that I mildly amused myself by researching information regarding this case via Microsoft’s Bing! search engine.

-Gregg J. Lallier


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High Court Punts Washington Redskins Trademark Case

19 11 2009

The Washington Redskins have finally prevailed in a decade-long legal attack upon its nickname and logo.  In the case of Pro Football v. Harjo, the US Supreme Court chose not to review a lower court’s decision that the plaintiffs’ claims were barred by the doctrine of laches  – a common law remedy that operates similar to a statute of limitations.  In other words, the plaintiffs waited too long to challenge the trademark.

Gene Quinn of IP Watchdog has posted an excellent summary of this case, and its long history.  Attorney Quinn explains why the Supreme Court took a pass on hearing this appeal:

It is impossible to know why the Supreme Court did not decide to hear this case, that information is known only to the Justices on the Supreme Court. What is known, however, is that there were not 4 Justices who wanted to hear the case, which is why it was not accepted by the Supreme Court. I do still continue to believe that the right legal decision has been reached here in this case. There simply was no evidence to support the challenge and the [Trademark Trial and Appeals Board] should never have ruled as they did. While we can argue over whether the term “Redskin” is disparaging, and it almost certainly is disparaging, in order for the plaintiffs to prevail the law would have had to be ignored, and evidence from years after the fact would have needed to be relied upon in exchange for evidence in existence at the relevant time, namely the time or registration.

Click here to read Attorney Quinn’s article in its entirety.

This article is cross-posted at Connecticut Sports Law.

-Dan Fitzgerald


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Obama Administration’s Developing Intellectual Property Policy

17 11 2009

As everyone knows, with each new presidential administration, comes new policies with new focuses over a variety of issues.  As everyone also probably knows, the Obama administration’s policies on Iraq, Afghanistan and healthcare have dominated the public’s attention for most of the past year.  However, there are other policies to be revealed and developed, including intellectual property policies.  Over recent weeks, the administration has given inventors, developers and holders of intellectual property (and, in particular, patent holders) some reason for optimism about the Obama administration’s IP policy.

Most recently, Gene Quinn of IP Watchdog posted in No Climate Deal in Copenhagen Good for Green Patent Rights that:

It had been feared that in order to obtain an international agreement the Obama Administration would broker the patent rights held by US concerns and give them to third world and developing nations in exchange for them taking steps to curb carbon dioxide emissions

The IPWatchdog post goes on to say that, as reported in the Wall Street Journal, it seems unlikely that the United Nations Climate Change Conference in Copenhagen (December 7-18, 2009) will result in a binding international treaty which “can allow patent and intellectual property advocates breathe a sigh of relief, at least for now”.

This comes on the heels of the November 6, 2009, recorded video of Commerce Secretary Gary Locke announcement to the Independent Inventors Conference at the United States Patent and Trademark Office, as reported in the same IPWatchdog post, that “the Obama Administration pledges to continue to provide full support to all inventors and to continue to support the strongest intellectual property protections in the world.”  (See also IPWatchdog Secretary Locke Promises Strongest IP Protection in the World)

These are encouraging signs of the Obama administration’s commitment to IP, which is good news for the business community, and entrepreneurs and start-ups in particular.

-Gregg J. Lallier


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MLB, Red Sox & Bon Jovi Tangled Up in Copyright Lawsuit

11 11 2009

soxSox and Dawgs has the scoop on the copyright infringement lawsuit filed by Bart Steele against Turner Broadcasting, Major League Baseball, The Boston Red Sox, and Bon Jovi.  The lawsuit arises from what Steele alleges to be the improper use of his song “Man I Love This Team” in the production of a commercial for Major League Baseball.

Steele describes the lawsuit in his own words on Sox and Dawgs:

My lawsuit is based on what I believe was the defendants’ use of my Boston baseball playoff song “Man I Love This Team” as a temp track in the production of a commercial for Major League Baseball. The audio portion of that commercial was performed by Bon Jovi. I believe that commercial–both the visual images and the Bon Jovi audio-were derived from my song.

I sent my song to the Red Sox and Major League Baseball and told them I had written another version called “Man I Really Love This Town.” In basic legal terms, what I believe defendants did was make an “unauthorized derivative work.” Their MLB “I Love This Town” campaign was one of the most expensive sports commercials in history.

It is important to note that Steele, who represented himself, has already seen his claims defeated at the trial court level.  The U.S. District Court for the District of Massachusetts granted the defendants’ Motion for Summary Judgment on the grounds that no reasonable juror could find that the original elements of Steele’s song are substantially similar to the TBS promotion.  (Read the Court’s decision in its entirety here).  Steele has now taken an appeal of the District Court’s ruling.

Also see Boston Magazine’s feature on Steele and his lawsuit.

This article is cross-posted at Connecticut Sports Law.

-Dan Fitzgerald


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Not Looking Good for Method/Software Patents

10 11 2009

Based upon the Supreme Court’s questioning during oral arguments in Bilski v. Kappos, it could very well be that getting patents for business methods/software may become a more difficult proposition.  A nice summary of the oral arguments can be found at IP Law & Business.  Some good resource material regarding software patents can be found at IP Watchdog.

ConnTIP will be relaying more info about this important topic in the future, so keep a look out.

-Gregg J. Lallier


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Whalers Trademark: Who Owns The Rights?

22 10 2009

Hartford_WhalersWith the introduction of retro Hartford Whalers jerseys to the market, questions concerning the rights to the mark “Hartford Whalers” abound.

The prevailing thought appears to be that the City of Hartford or State of Connecticut owned the trademark rights to “Hartford Whalers” but let the registration expire this summer.  There is confusion over whether the rights are now owned by the NHL or the former owner of the Whalers and current owner of the Carolina Hurricanes, Peter Karmanos.  In the absence of any concrete information as the ownership of the Whalers trademark rights, allow me to speculate:

First, there are at least two sets of rights.  The City of Hartford likely has the exclusive right to use the name “Hartford Whalers” in connection with a NHL team.  This right is likely the product of a contractual agreement between the NHL and the City entered into when the Whale moved to Carolina.  These rights have nothing to do with a trademark.  Rather, these rights prevent the NHL from using the Whalers nickname in connection with another franchise.  A similar example might be the Cleveland Browns franchise, which moved to Baltimore in 1996 but left behind the team name, history and records to the City of Cleveland.  I don’t believe that any such agreement would include exclusive rights to license Hartford Whalers merchandise.  Those rights likely belong to the NHL.

Second, we have the trademark rights.  Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods.  Trademarks can be renewed forever as long as they are being used in commerce.  As I wrote yesterday, the last activity in connection with the mark “Hartford Whalers” was a cancelled application back in 2001.  Thus, according to the US Patent & Trademark Office, the mark had not been registered in some time.

The fact that the mark was not registered does not necessarily mean that no one owns a right to the Hartford Whalers mark.  The NHL, or other entities, may own common law rights, arising from the use of the mark.  Federal registration is not a prerequisite to establishing rights in a trade mark.

The answer to who owns the rights to market the Hartford Whalers name is not entirely clear.  What is clear to me, is that there is significant interest in this issue and in the Whalers.

This entry is cross-posted on Connecticut Sports Law.  To read more on the Hartford Whalers, click here.

-Dan Fitzgerald


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Understanding Patent Representation

3 10 2009

A great blog entry over at IPWatchdog entitled Rules for Working With a Patent Attorney gives a nice summary of what to expect (and not to expect) when inventors/entrepreneurs/start-ups go searching for patent counsel.  In my experience, people oftentimes overestimate the services provided and underestimate the costs associated with such services.  Thus, it’s important to do one’s homework as to what’s entailed so an informed decision can be made.

-Gregg J. Lallier


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Friday ConnTIPs

26 06 2009

Innovation & Entrepreneur Summit

The 2009 Cantor Colburn Innovation & Entrepreneur Summit will be held in New Haven on September 17, 2009.  The 2009 Innovation Pipeline Awards will be awarded during the summit.  The following categories will be awarded:

  1. The Most New Patents Award
  2. The Most Significant Early Stage Capital Investment Award
  3. The Deal of the Year Award
  4. The Most Promising Technology Product or Service of the Year
  5. The most Promising Software Product of the Year
  6. The Most Promising New Internet/New Media Company of the Year
  7. The Most Promising New Medical Device Product of the Year
  8. The Most Promising New Green Tech Industries Company of the Year

The deadline to submit applications and nominations for Innovation Pipeline Awards is July 10, 2009.

Is Software Patentable?

Check out this post by Chuck Connell on IPWatchdog.

New Haven Office of Economic Development Bolsters Online Presence

The New Haven Office of Economic Development recently launched a  new website.  Click here for a direct link to the site. 

The intent of the site is “to assist in communication between the city, residents, business leaders, and those interested in relocating to New Haven,” officials said in a statement.

Was Tony’s LaRussa’s Twitter Lawsuit a Winner?

Here’s what Michael McCann of the Sports Law Blog had to say:

Tony La Russa’s lawsuit against Twitter was a lot like kicking dirt on the umpire: He got a lot of attention, and he made his point, but he wasn’t likely to win the argument.

Click here for the full article.


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Good Patent Advice from IPWatchdog…Bad Patent Advice from WSJ

4 05 2009

Any start-up tech company, entrepreneur or inventor who or which believes that he/she/it has a patentable invention should go check out a recent entry at the IPWatchdog blog  published by Gene Quinn (“Bad Patent Advice from the Wall Street Journal“).  In the article, Quinn critiques some “patent” advice given by Alexandra Levit in a recent column published in the Wall Street Journal (See column here).  More than just critiquing, Quinn provides some very valuable insight to those with the next “great” idea:

If I had a dollar for every time I received an e-mail from someone saying that they have a life-changing invention, or world-saving invention, I would be able to retire.  The story goes, as in this case, my invention is critical, essential, life-altering and I know without a doubt that it will succeed.  These messages then ALWAYS go on to say, I just don’t have the money, but those with money would get a great deal if they would partner with me and fund my invention.  Sometimes it even goes further and implies that anyone who is wealthy would be lucky to get such a great opportunity.  I try and preach to inventors that if they want to be taken seriously they need to keep it real, and this is an enormous red-flag and serious people will flee from you with this story.  The truth is ideas and inventions are everywhere, and if you are not willing to put up your own money that says you don’t believe in your own invention enough, so why should I?  Finally, inventors without “skin in the game” invariably walk away because they have nothing invested.  This story is not taken seriously by anyone in the industry and if you are serious and have an invention you cannot lead with this type of pitch.

Even though I’m not a patent attorney, I do practice in the “soft” IP fields (e.g. copyrights, trademarks, etc.), and, given the focus of my practice (technology, and, in particular, tech start-ups), I need to be familiar with patent principles.  Given that, I would say that Mr. Quinn’s insights are spot-on…more often than not the “inventor” wants all the riches without any of the sacrifices.  In a sense, the reason why an inventor/entrepreneur/start-up gets off the ground and is successful is the fact that they have their heads in the clouds.  They’re creative people with innovative solutions.  However, at some point, it’s necessary to have some reality checks, which is why having competent legal/financial/business counsel is so important.  I often tell my clients that a good lawyer may sometimes be perceived as the ultimate kill-joy….but in the long run, they’ll be thankful for such pessimism.

-Gregg J. Lallier


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