… and “How a Doll Can Help Teach Networking to the Next Generation of Trademark Lawyers”

 

shutterstock_112218026Dateline: May 2, 2015, San Diego, CA. The International Trademark Association (INTA) has just launched its annual ginormous conference here in “America’s Finest City.” My colleagues back at the office feign jealousy that we are in San Diego on a ‘junket.’ But the truth is, this five day mega-networking meeting presents tremendous challenges.

The opportunity beckons: Come and network with 10,000 of your colleagues (some of whom are your competitors!). Highlight your talents and skills! Be erudite, witty, knowledgeable, magnetic and fun, all while running (really, literally, running) from venue to venue meeting as many people as you can, current and potential clients and colleagues for about 18 hours a day for 5 days straight…

shutterstock_81091828It’s grueling. It requires a plan, a steely yet warm exterior, and boundless energy. Without a plan, it can feel like you are back on the playground egging to get picked for someone’s team and wondering what you need to do to get in the game.

While 10,000 potential targets is obviously a daunting number, INTA tries to reduce the intimidation by helping young practitioners learn … Keep reading

shutterstock_268287902Anyone who knows me at all knows that I suffer from a terrible affliction called “early adopter syndrome.” I had a cell phone when it really was more of a brick with a speaker and the first smartphone, I can tell you, was not terribly smart at all. There was a lot of staring at the screen waiting for it to bring up a website or a low res photo… As a result of my affliction, there is a veritable cemetery of old devices at my house, all acquired soon after launch.

So now I’ve been hit again – this time with Apple’s… iWatch, er… the Apple Watch. What is that thing called? Officially it’s the “Apple Watch.” A simple name. All business, elegant design, understated but direct. The name fits the device. Just a watch – but it’s not just a watch right? It’s the Apple watch. It’s about as much of a watch as a Tesla vehicle is just a car. Why is a company that has invested so much in the “i” prefix to connote that its devices are “new,” “more,” and “unique” suddenly reverted to referring to its super integrated wrist candy as a mere … Keep reading

shutterstock_244812262 (2)Trademark owners are in the midst of another ‘think’ about the best way to protect and preserve their reputations online.  Specifically, beginning on March 30, 2015 the Sunrise Period opened for brand owners to fork over $2499 for domain names that end in .sucks. This $2499 payment is necessary annually to keep yourbrand.sucks from the clutches of an unhappy customer who might use it to make a career out of publishing any material they wish (fair, unfair or otherwise) about your company, or if you are celebrity – about your performance or personal  life.  To add insult to this expensive injury, after the end of the Sunrise Period, pretty much anyone (other than the brand owner) can pick up the same domains for $9.99 making the barrier to entry for complainants rather low.

As reported by The World Trademark Review and others, the CEO of .sucks registrar Vox Populi, John Berard, claims that intent of the apparently inapt pricing scheme is to encourage brand owners to engage with consumers.  By making the price high, there will be less warehousing of domains and some brand domains will find their way into the hands of people who will … Keep reading

The Noise About Privacy: Is Big Brother Watching, Or Is He Just the Most Compulsive Hoarder of ‘Random’ on the Planet?

 

On May 19, CNNMoney’s Jose Pagliery published a provocative piece: “What you really accept to when you click ‘accept’“–an exposé on the privacy policies of 18 of the most popular websites and mobile apps.  The article shines the klieg lights on one of the dirty little secrets of consumer internet usage– that online privacy policies are ephemeral, dense, rarely read, one-sided and, sometimes, over-reaching.  Pagliery infers from these conditions that most companies care little for a user’s privacy and want nothing more than to collect the maximum information and use it in any way that increases the bottom line.

At the risk of sounding defensive, I’d say that conclusion is largely unsupported and pretty far from accurate for most web-based companies.  In fact, the density and vagueness of privacy policies often is caused by a variety of competing pressures faced by online companies.  Varied international laws and regulatory schemes applicable in different jurisdictions to different kinds of data create part of the problem. There is no single or baseline set of standards for … Keep reading

You Can Trademark That?  They Can Own What? Who Knew?

There are many reasons we have IP laws – but primary among them is to encourage creative types like artists and inventors to profit from their efforts by way of royalties or exclusive rights.  To encourage those efforts, the intellectual property laws give authors and creators a relative monopoly over something they’ve created – a trademark, an invention, a script, a computer program, etc.  It’s like society is saying “you made it, so you can own it – at least for a while…”

But a natural tension immediately presents itself when we grant these exclusive rights.  Our culture wants to embrace, use and assimilate all that is cutting edge and new without having to ask for permission.  We take – no, we borrow Pharrell Williams’  “Happy” riffs and make them background music to our YouTube® videos of our cats and our dogs.  We expropriate “just a” screen capture from the Godzilla movie and create e-cards or embed them on our Facebook® pages.  Our post-90s, crowd sourced, media-centered sensibility has created this “if it’s out there it must be free” (or “it wants to be free”) ethos … Keep reading

Scam AlertThere are few things more annoying than the feeling that you have been duped into paying for something that you neither need nor want.   IP owners, and particularly trademark owners, are common targets for scammers seeking to obtain fees for bogus, unnecessary or questionable services offered at outrageous prices.  No doubt these scams work because people are busy – but the notices also are steeped in what looks like official language, may appear to come from official governmental auspices, and seem to suggest that the fees cover “renewal,” “registration” or “publication.”  These activities are all items that IP owners are accustomed to paying for, so when they see notices requesting payment (rather than merely soliciting interest in a service) they tend to pay the invoice rather than ask questions about the content or source of the purported services.

Here’s how it works.  A trademark owner files to protect its mark in the U.S. or abroad.  They might use a law firm for that service or file directly.  Regardless, information about the applicant and the mark is publicly available through the online database maintained by the U.S. Trademark Office (or other international offices).  The purported scammer service provider picks up

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Should Colors Be Protected as Trademarks? If Not, Should Letters? How Shoe Soles and Mobile Apps Might Be Related

One of the pleasures of practicing law, perhaps especially in the technology space –is in observing how technology trends and legal theories n Qualitex v. Jacobson, determined that single colors could be protected as trademarks—as long as the color, as applied to the relevant products, was not merely functional. Previously, some feared that granting trademark protection to single color (even if the color was non-functional) would be anti-competitive because colors were in short supply. Hence, no one should own one color exclusively. The Qualitex ruling seemed to provide closure on the issue by focusing the analysis on the functionality of the color shade rather than the potential for that color to be removed from the designer’s pallet.

But recently, as the trademark community knows, the Second Circuit Court of Appeals took up the appeal in Louboutin v. Yves Saint Laurent, a case that revisits the protectability of color, this time as used to identify a brand of shoes. The District Court opined that the use of red on a shoe sole (or on any fashion item) was “functional” by its very nature and that granting a monopoly to color on a fashion item was outside the bounds … Keep reading

Settlement

As of July 2, 2012, the World Trademark Review and its blogger, Helen Sloan, are reporting that Apple has agreed to pay $60 million to Proview Technologies for the IPAD mark in China.  As I previously summarized in an earlier post, Apple thought it had already acquired all the rights to the IPAD mark, but it learned after a transaction with Proview’s sister company that it had not (allegedly) obtained a complete assignment in China from the record owner of the rights there.  Apple’s proffered settlement is quite a bit larger than the $16 million it was rumored to be offering, but given the popularity of the Apple device and the potential market in China, the sum is a worthy investment.

Lessons from Apple’s experience include:

1)  Diligence needs to be thorough.  Mixed ownership of assets in related, sister and subsidiary names is not uncommon.  Making sure the papers are signed by the right entity is critical to finalizing a deal and getting genuine closure on the acquisition of any intellectual property right.

2) Negotiating through an acquisition subsidiary can be perilous.  Apple used a separate corporation to purchase rights to the IPAD mark in various countries … Keep reading

Nora Ephron

Last night, Nora Ephron passed.   Already the internet andblogosphere are filled with this news and discussion of the loss of an incredibly prolific, comical and impactful artist.  While she is associated with a broader feminist agenda, her real contributions were in giving comic and touching voice to life experiences that happened to be shared primarily by women.   Her clarion call to women, especially younger women, to “…be the heroine of your life, not the victim,” might have been her most poignant gift.

But what, you may well ask, has Ephron’s passing to do with intellectual property or the law of information?  Well everything and nothing at once…  I was once asked to opine upon the intersection of intellectual property protection and gender.  I was flummoxed by this question at first, feeling that certainly there was gender blindness when it comes to IP rights and their exploitation.  But if you scratch beneath the surface — as Ephron always did — the story is much more complicated.It’s breathtaking to remember that women were still considered chattel until several hundred years ago.  Then, having thrown off that burden, we still could not own property for another huge block of … Keep reading

Why or what or who is Lex Indicium?  Roughly translated, and with apologies to the classical scholars who may happen upon this blog, Lex Indicium means “law of information,” or “law of data” in Latin.  In a broad sense, the “law” that applies to data, and/or rights in data or information is what this blog seeks to explore.  In my law practice, I might say that I am an “intellectual property lawyer, who specializes in trademarks, copyrights, and information law.”  But my passion and interest have been drawn to this craft by fundamental questions  – “who owns or should own information—any information, be it text, raw factual data, art, etc?  Should it be free or should it be exploitable and monopolized and monetized?  And which answers lead to the greatest good for society?”
Since I began practicing law almost 20 years ago these questions really have been asked repeatedly in the context of one burgeoning cultural phenomenon known as digital technology—which technology has had one primary (and largely freely available) medium– the internet.  But the questions themselves and the issues that flow from them are ancient, stretching back to ancient times.  This, combined with my own background in
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