Justice Stevens proves to be the go-to Justice once again when it comes to IP issues on the Supreme Court.
It just released a unanimous decision that he authored, holding that the NFL can be sued for anti-trust violations for trying to give exclusive manufacturing licenses for producing trademarked clothing with NFL logos on them.
(It doesn't rule on whether the lawsuit will be ultimately successful or not, only that the NFL isn't immune from such lawsuits.)
Read the decision here:
(A harbinger of the forthcoming Bilksi patent decison? We shall see...)
[Posted at 05/24/2010 01:14 PM by Justin Levine on IP Law comments(3)]
As noted in this alert
by the law firm Fulbright & Jaworski
, the U.S. Patent and Trademark Office (PTO) has announced that it is rescinding controversial rules promulgated in 2007 that have been ensnarled in litigation since then. The rules sought to limit the number of patent claims per patent application, and the number of continuing applications that could be filed. As I noted in Radical Patent Reform Is Not on the Way
, these changes are not radical, as the patent privileges lobby paints them. But the very fact that they were so vociferously opposed by the organized patent bar, such as the AIPLA
, indicates that these changes would probably have been in the right direction. Basically, anything the AIPLA is against, the libertarian should be for.
Following the rule that each President is worse than the last and eventually makes you nostalgic for his predecessor, here we have a case where the Obama administration is fighting one of the few halting, tentative efforts of the Bush administration to actually improve matters. As a PTO press release stated, the current PTO Director "has signed a new Final Rule rescinding highly controversial regulations, proposed by the previous administration, that patent applicants felt unduly restricted their capacity to protect intellectual property." As Fulbright's alert notes, "The exact scope of the PTO's procedural rulemaking authority, a highly contested issue in this dispute, remains unresolved. The rescission of these rules may prove to be a tactical decision in a quest for greater PTO rulemaking authority. Despite the PTO's emphasis that these rules were proposed by the previous administration, the current administration, via Secretary of Commerce Gary Locke, is actively lobbying for substantive rulemaking authority at the PTO."
[LRC post; SK post]
[Posted at 10/09/2009 03:24 PM by Stephan Kinsella on IP Law comments(3)]
Patent attorney and pro-patent shill Dale Halling writes
: "According to US Patent and Trademark (USPTO) Power Point presentation the allowance rate has again fallen to 41% by mid year 2009. This continues the sad trend of falling allowance rates that started in 2002."
Why is it a "sad trend"? What if there are "too many" "poor quality" patents being issued, and fewer junk patents are being allowed?
[Posted at 10/02/2009 09:49 AM by Stephan Kinsella on IP Law comments(4)]
John Spiers was recently in Hong Kong and has a report about IP problems there. Any of our readers who think they might interested in helping can get in touch with him through his website (below)
I bought your book and noted you've made anti-IP presentations in Hong
Kong. I have one book on small business international trade, and am
working on another which will feature an argument against the
individual entrepreneur from seeking IP rights, or even exclusive
contracts (I disagree even with your trademark exception, but that is
for another day.) I am alarmed by the concerted efforts to promote IP
law in Hong Kong and China.
I was there a few weeks ago and read this article: link here
I then emailed the reporter and he replied keen on a follow-up.
Thank you for writing in to the Standard.
The defendent's details were not revealed by Customs because he has
yet to be charged while forensic investigations are still ongoing.
I will follow up with the Department of Justice and Customs at a later
date on whether I can obtain his hearing date and location.
You're POV on IP rights is definetly novel and very interesting and
look forward to reading what other developments you may have in the
Thanks again and I shall reply again to you sometime next week.
Dear Mr. Chui,
I enjoyed your article today on "Customs Nabs Second Cybercriminal"
in the Hong Kong Standard.
I have been trading in designed goods with China since the 1970's,
and there is a good argument against intellectual property rights,
although the argument is not popular. I was interested in your
article because it might offer an opportunity to put forth the
argument in a legal setting.
I work with a small group of people in USA who endeavor to eliminate
intellectual property rights law. The group includes academic,
lawyers and business people in USA. I may be able to persuade this
group to write a "amicus curiae" brief to teh judge in this case.
An amicus curiae brief is where parties not involved in a case
plead a point to the judge. One point among others would be the
fllow was unemployed, could not afford to pay for the movie,
nothing was really "taken" when he downloaded the movie, so, no
harm no foul. The lawyers would do a better job of explaining of
If you could provide me the name of the defendant and the
identifying court and case number, I would attempt to persuade my
associates to prepare and submit sucha brief to the court. Should
they do so, I would inform you first, so if you wish to have an
exclusive story, you would have it. This all may do the defendant
Please let me know if are interested. I look forward to your kind
[Posted at 05/21/2009 07:08 AM by David K. Levine on IP Law comments(0)]
[PDF] is a legal opinion on trademark law that is well worth reading. [E.S.S. Entertainment v. Rockstar Games, Inc.]
The opinion contains several gems such as:
"A reasonable consumer would not think a company that owns one strip club in East Los Angeles, which is not well known to the public at large, also produces a technologically sophisticated video game like [Grand Theft Auto] San Andreas."
"[F]ans can spend all nine innings of a baseball game at the hot dog stand;
that hardly makes Dodger Stadium a butcher's shop."
While the court's opinion is, of course, correct, I am continually amazed that the legal system still allows IP attorneys to even make such frivolous claims without being sanctioned.
[Posted at 11/05/2008 04:50 PM by Justin Levine on IP Law comments(0)]
The Federal Court of Appeal in charge of interpreting Patent Law has been an absolute disgrace. I would have thought that it should be obvious that only tangible technology could be eligible for a patent under the law. But the court has at times implied that even modes of thought and communication can somehow be patented if it leads to concrete results in the physical world. Maybe they are slowly staring to get the message of just how wrong they have been all along.
The U.S. Court of Appeals for the Federal Circuit redefined the margins of patent eligibility in State Street Bank & Trust Co. v. Signature Financial Group Inc. in 1998. The effect was to boost patent protection for business methods, such as financial models, contract provisions, insurance policy features, computer-related inventions and Internet startups.
There were unintended effects, too. The U.S. Patent and Trademark Office was deluged with new patent applications and had few examiners with the expertise to handle them. Four Supreme Court justices have bemoaned the precedent, calling it vague and contrary. And several financial-services companies, frequent targets of the business-method-patent holder, have run up millions and in some cases billions of dollars in royalties and damages.
After a decade of disagreement over the precedent's bearing on American innovation, the Federal Circuit decided Feb. 15 to revisit State Street through the lens of another case, In re Bilski, which lifts State Street's holding on business methods and attempts to carry it further.
In a rare move, the court scheduled an en banc hearing without prompting by the parties in the case. The hearing is set for May 8.
Read the whole thing here.
[Posted at 02/25/2008 02:44 PM by Justin Levine on IP Law comments(0)]
In a frighteningly bizarre Orwellian case, a guy who criticized the fact that an organization was trying to trademark the word 'freecycle' got sued for trademark infringement because he used the word in his criticism. The organization even got a lower court to issue a preliminary injunction preventing the guy from 'disparaging' the trademark.
Fortunately, the 9th Circuit Appeals Court freecycled the case back to reality - ruling that not only was there no trademark infringement here, but also declaring that federal law doesn't recognize an action for trademark 'disparagement'.
PDF link to the case here.
[Posted at 09/26/2007 11:48 AM by Justin Levine on IP Law comments(2)]
It is a well known secret that California-based burger chain In-N-Out has a 'secret
' menu that is not displayed or advertised at any of their stores. It allows people to order items that are not found on any of their limited menus.
When you order a 3x3 burger, or "Animal Style" burger, In-N-Out service people will know what you are talking about.
However, I have a problem with a judge ruling that such terms are trademarks owned by In-N-Out. [PDF alert. Hat-tip Courthousenews.com]
Even if In-N-Out actually registered a trademark in such terms, a minimum requirement for trademark protection demands that the mark actually be used in commerce. If you deliberately hide a mark from the public, you should lose trademark protections. (And no, simply referring to the terms on a company website should not count. If you don't use the mark on the product or place of business, there is no mark to protect.)
Although I recognize the legitimacy of trademarks to protect against actual consumer confusion in the marketplace, I think the judge blew it on this one.
[Posted at 09/06/2007 02:53 PM by Justin Levine on IP Law comments(4)]
ALEXANDRIA, VA. (CN) An inventor has sued the U.S. Patent and Trademark Office, challenging new regulations that will limit the number of continuations an inventor can file on an original patent. Plaintiff Triantafyllos Tafas has eight patents and 17 patents pending. He asks the Federal Court to enjoin Sections 1.75 and 1.78 of 72 Fed Reg. No. 161, promulgated on Aug. 21, to take effect Nov. 1, claiming they violate the Patent Act and the Constitution. The revised rules limit the right of a patent applicant to continue prosecution of applications related to a single invention
substantially change the regulatory landscape under which inventors
have traditionally operated, and, once effective, will frustrate the purposes of the U.S. Patent laws by preventing Dr. Tafas and other similarly situated inventors from realizing the full economic potential of their work.
Courthouse news has posted a copy of the actual complaint here. [PDF file link.
By the way, just how many patents does Adobe claim are contained in its Reader program? Try to count them as the PDF Reader program loads up.]
[Posted at 08/27/2007 02:47 PM by Justin Levine on IP Law comments(0)]
[Via Lawrence Solum
who is often on the lookout for new legal articles dealing with intellectual property law and philosophy.]
Viva Moffat has written an interesting paper on the problems resulting from overlapping intellectual property protections -
"The interactions between the three federal schemes of intellectual property protection copyright, patent, and trademark have often been overlooked. This article addresses some of the issues raised by the overlaps between these areas of law and concludes that the availability of more than one form of protection for certain creative or inventive works creates problems in many circumstances; that those problems have not been considered fully by policymakers or courts; and that overlapping protection interferes with the benefits meant to flow to the public."
[Posted at 04/03/2007 04:32 PM by Justin Levine on IP Law comments(0)]