Category: Blake’s Patents, Trademarks, and Copyrights

BE CAREFUL WHEN SENDING DEMAND LETTERS

Mercedes Benz USA (MBUSA) recently sued street artist and Canada resident Daniel Bombardier a/k/a DENIAL. What happened was that back around January 2018, MBUSA photographed several of its vehicles in the Detroit area.  Murals by local artists, including DENIAL, were captured in some of these photographs.  MBUSA posted these photographs in its Instagram account.  Around March of 2019, the DENIAL contacted MBUSA claiming that that photographs constituted copyright infringement and demanded monetary damages.  MBUSA removed the photographs from its Instagram account and then on March 29, 2019, sued DENIAL in Federal Court in Michigan.  In the lawsuit, MBUSA was asking for relief from the court, namely a declaration from the Court that MBUSA did not infringe DENIAL’s copyrighted works.

DENIAL probably has a good claim of copyright infringement. However, I wonder if DENIAL was prepared to be almost immediately sued in a US Federal Court, even though he lives in Canada?  I always counsel my clients, that when sending a cease and desist, or demand letter to a possible patent, trademark, or copyright infringer, there is a chance the infringer will turn around and sue my client in a court that is convenient to the infringer, and inconvenient to my client.  Therefore, be careful when sending demand letters, you could be sued yourself, even though you believe you are the one who has been wronged.  The MBUSA vs. Bombardier lawsuit can be found here.

Consider Trade Secrets to protect your Intellectual Property!

Most of my clients want Patent, Trademark, or Copyright protection for their intellectual property. However, many people do not think about Trade Secrets.  If a person or business has an important invention, or information, they may use trade secret to protect it.

Connecticut Uniform Trade Secrets Act (“CUTSA”) can be found at the Connecticut General Statutes §§ 35-50 to 35-58. The remedies for misappropriation or threatened misappropriation of trade secret include injunctive relief (e.g. the court forces the defendant to not use the information protected by the trade secret, or the defendant must not communicate with competitors of the trade secret owner).  Monetary damages are available, as well as punitive damages and attorney’s fees.

CUTSA defines trade secret as follows: “ ‘trade secret’ means information, including a formula, pattern, compilation, program, device, method, technique, process, drawing, cost data or customer list that: (1) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” Connecticut General Statutes §35-51.

So, if you have an invention a trade secret may be a good option. You should note that it is completely legal for someone to by a product that embodies the invention that is protected by trade secret, break it open, and reverse engineer it to figure out how to make the device and how the device works.  Thus, trade secrets should only be considered for inventions that are difficult or impossible to reverse engineer.

Things like customer lists, company procedures, marketing schemes, etc. are good candidates for trade secret protection. The CUTSA can be found here.

Trademark Boot Camp refresher course

I plan to attend the American Intellectual Property Law Association  (AIPLA) trademark boot camp in June of 2019.  This should be a good opportunity to stay up to date on my trademark practice, meet fellow trademark lawyers, and explore Arlington, Virginia.  I hope to see some familiar faces this year!

Texas A&M involved in Copyright Lawsuit

My alma matter, Texas A&M, where I obtained my mechanical engineering degree is involved in a copyright lawsuit.

Recently, on March 15, 2019, Texas A&M University asked U.S. District Court Judge Andrew S. Hanen to find that the Texas A&M Athletic Department is not a separate entity and therefore is entitled to immunity in the Texas A&M “12th Man” copyright suit.

Michael J. Bynum, an author, sued Texas A&M after Texas A&M posted on its website a substantial portion of Mr. Bynum’s unpublished book, “12th Man: The Life and Legend of Texas A&M’s E. King Gill”. According to the complaint, Texas A&M, “nearly word-for-word,” copied a large section of Bynum’s work without permission and violated Bynum’s copyright in his unpublished work.

The “12th man” is a well-known phrase used by Texas Aggies, and originally refers to former football legend E. King Gill but now refers to the entire student body at Texas A&M. Texas A&M owns the trademark rights in the “12th man” and is known to enforce its rights, including filing many lawsuits.

The main issue I find interesting and distressing is the doctrine of sovereign immunity. The doctrine generally means a state cannot be sued without first giving its consent to be sued. So be careful if you ever want to assert your rights against a governmental body!  Information on the lawsuit can be found here.

Judging at the Milford Invention Convention

On Saturday March 23, 2019 I had the honor to be a judge for the Milford Invention Convention, where students from 3rd through 8th grade presented their inventions.  The winners will proceed to the Connecticut Invention Convention at UCONN in Storrs.  At the Milford Invention Convention, students think of problems, brainstorm potential solutions, prototype and refine a product, and eventually present their solution at the convention.  It was great to see these young minds innovate!  Information about the Milford Invention Convention can be found here, and information about the Connecticut Invention Convention can be found here.

2nd half of Patents, Trademarks, and Copyrights class a big success!

Last night I taught the 2nd night of my two-night class: “Patents, Trademarks, and Copyrights for the Inventor and Small Businesses”.  The 2nd night we discussed international patent applications, trademarks, copyrights and trade secrets.  The students had great questions about all the subjects.

Be on the look out for an announcement regarding my class in the Fall of 2019 on “Commercializing your Invention”.  Soon, you can find information on my blog, or at the Milford Adult Education website.

USPTO Expedited Trademark Cancellation Pilot Program

The USPTO has recently implemented an Expedited Trademark Cancellation Pilot Program.  USPTO random audits suggested that over half of active registrations include some goods or services for which the registered mark is not actually being used. Registered trademarks that are not actually in use in commerce may block other trademark owners from registering their marks.

Under the Expedited Trademark Cancellation Pilot Program, the Trademark Trial and Appeal Board (TTAB) identifies newly-filed trademark cancellation proceedings limited to abandonment or nonuse claims that may benefit by some form of the Board’s existing Accelerated Case Resolution (ACR) procedures.

You may participate in the pilot even if your case was not initially identified by the TTAB, and even if you already conducted your discovery conference. You can coordinate with your opponent and call the Interlocutory Attorney assigned to schedule a conference.  More information about the pilot program can be found here.

SUPREMES SAY COPYRIGHT REGISTRATION REQUIRED PRIOR TO FILING SUIT

On March 4, 2019, the United States Supreme Court issued an opinion that basically changed the long-standing practice of a plaintiff needing only to apply for copyright registration prior to bringing a copyright infringement lawsuit. Justice Ginsburg, writing for a unanimous court, said the law requires a litigant to have an issued registration, or a rejected application, subject to certain limited exceptions.  Prior to this ruling, many litigators only filed an application for copyright registration prior to filing a copyright infringement lawsuit.  However, the Supreme Court clarified the law, and made it clear that a copyright owner must have an issued registration or a refusal to register from the Copyright Office.

There are some exceptions. Such as “preregistration” for works that are particularly vulnerable to predistribution infringement, such as movies or musical compositions.  Once a work is “preregistered” the owner may bring suit.

The decision can be read here.

First night of Patents, Trademark & Copyrights Class a Success!

Last night I held the first night (of two nights) of my Patents, Trademark & Copyrights Class for Individuals and Businesses.  We covered patents last night.  The class continues on March 21, 2019 at Law High School.  For the second night we will cover Trademarks, Copyrights, and Trade Secrets!  More information can be found here.

The USPTO is presenting an Info Chat on Trademark filings!

Join the next USPTO Inventor Info Chat webinar, “Trademark: Live demonstration of how to file a trademark application,” on February 21, 2019 from 11 a.m. to noon ET. Through this live demonstration, you will learn how to effectively file your trademark application using the Trademark Electronic Application System (TEAS). You will also have an opportunity to ask questions by emailing [email protected].  To register, visit the Inventor Info webinar event page on the USPTO website, or click here.