Archive for the ‘IP – Intellectual Property’ Category

Intel Trademark Enforcement On The Rise

Intel, the world’s largest computer chip maker whose microprocessors can be found in personal computers and other products worldwide, has been active lately in attempting to enforce its trademarks. Like many successful companies, Intel spends substantial sums to do so. According to one report, earlier this year the Company asked the WIPO Arbitration and Mediation Center to cancel or transfer fifteen domain names that included the “Pentium” mark.

Trademark law generally protects a mark holder against infringement only if the allegedly infringing mark is identical to or confusingly similar to the mark in question. The owner of a trademark that is famous can also sue for trademark dilution in cases where there may not be confusion as to the source of goods or services but the use nonetheless dilutes the strength of the well-known mark through blurring or tarnishment.

Recently, Intel sued Intelspec, a construction and engineering company based in Utah for trademark infringement and dilution based on the Intelspec name and domain (www.intelspec.com). In order to make its case that Intelspec is an infringing mark, Intel alleged that Intelspec is confusingly similar to Intel.

The hurdle Intel faces with respect to its infringement claim is that Intelspec is in a different business. It’s a construction and engineering firm, not a chip maker or computer company. This lessens the likelihood of confusion in the market as to the source of its goods and services.

Still, Intel is making its case. According to the Complaint, the crux of Intel’s lawsuit with respect to the infringement claim is as follows:

“[C]ommunications infrastructure for public and private entities” is a “primary focus” of Intelspec’s business and “[g]iven Intel’s involvement in communications, the vast use of Intel’s products and services by the military and in other engineering applications, and the similarity of the marks, there is a likelihood that those customers will attribute the quality and content of Defendant’s offerings to Intel.”

Some see this as a stretch. But one thing is certain. When a corporate giant is protecting its trademarks, sometimes smaller companies, even those in different industries, end up in their target.

Schein & Cai LLP, focused business and intellectual property law firm advising startups in the Silicon Valley and beyond, including San Jose, Santa Clara, Mountain View, Sunnyvale, Morgan Hill, Oakland, San Francisco, Palo Alto, San Mateo, Santa Cruz, South San Francisco, Daly City, Cupertino, Saratoga and Emeryville.

Find Schein & Cai at http://www.sacattorneys.com/.

UCLA Defeats Copyright Infringement Claim Using Sovereign Immunity

An educational video producer licensed a DVD titled “The Plays Of William Shakespeare” to the University of California Los Angeles (UCLA). After UCLA copied and reformatted the DVD, and placed it on the Internet so students and faculty could view it from remote locations, the video producer sued the UCLA Regents and various University officials.

The complaint set forth several theories of liability. But the US District Court for the Central District of California shot down every one of them in a
decision dated October 3, 2011, granting the Defendants Motion To Dismiss.

Of special interest was the claim for copyright infringement. One might think that fair use under US Copyright Law came into play, but the Court actually dismissed the copyright claim based on sovereign immunity. The principle of sovereign immunity is found in the Eleventh Amendment to the US Constitution which states:

“The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.”

Based on the Eleventh Amendment, Courts have held that lawsuits by citizens against States, for money damages or equitable relief, cannot be brought in Federal courts without the State’s consent.

Because the Regents of UCLA is an arm of the State, sovereign immunity came into play. The court held that the Defendants did not waive sovereign immunity as part of their agreement with the video producer, and noted that Courts have held the Copyright Act does not validly waive sovereign immunity either.

Schein & Cai can advise you with respect to all copyright matters. We assist companies in Silicon Valley and beyond, including San Jose, Santa Clara, Mountain View, Sunnyvale, Morgan Hill, Oakland, San Francisco, Palo Alto, San Mateo, Santa Cruz, South San Francisco, Daly City, Cupertino, Saratoga and Emeryville.

Find Schein & Cai at www.sacattorneys.com.

Apple’s iCloud Meets and Defeats iCloud Communications In Trademark Battle

Apple announced its iCloud storage and synching service after its Worldwide Developer Conference held in June of this year. Shortly
thereafter, an Arizona based company, iCloud Communications filed a lawsuit against Apple for trademark infringement. At first blush,
the lawsuit seemed meritorious. iCloud Communications claimed to have been using its name in the marketplace since 2005, it was in
the telecommunications business which according to its complaint involved products that were “identical to or closely related” to Apple’s. Thus the likelihood of confusion in the marketplace seemed real, a hallmark of trademark infringement.

But early in September word broke that iCloud Communications was moving on its own to dismiss the lawsuit with prejudice. The company has now changed its name to Clear Digital Communication.

What happened between the time the suit was filed and dismissed? Is this a case of Apple flexing its muscles and strong-arming a smaller player into submission notwithstanding the merits of the case? Did the parties reach some sort of amicable agreement leading to the dismissal of the lawsuit? Did Apple compensate iCloud Communications and make it easier for the smaller company to give up its right to use the name?

We don’t know for sure what occurred but it has been reported that iCloud Communication never registered its iCloud trademark with the US Trademark Office. Of course, it’s an axiom of trademark law that trademark rights are established through use, not registration, though registration brings many advantages and is highly recommended in most cases.

One important clue suggests facts that might have tipped the balance in Apple’s favor. As it happens, a cloud computing company in Sweden, Xcerion, actually registered iCloud as a trademark on February 2, 2010. According to US Trademark Office records, Xcerion assigned its iCloud trademark to Apple Computer on July 11, 2011, the month after Apple’ Worldwide Developer Conference in which it announced its iCloud service and shortly after Apple was sued by iCloud Communications.

Perhaps this strategic acquisition of a trademark registration from a third party was the lever necessary to force Apple’s nemesis into submission.

Schein & Cai LLP, focused business and intellectual property law firm advising startups and established companies in the Silicon Valley and beyond, including San Jose, Santa Clara, Mountain View, Sunnyvale, Morgan Hill, Oakland, San Francisco, Palo Alto, San Mateo, Santa Cruz, South San Francisco, Daly City, Cupertino, Saratoga and Emeryville.

Find us at www.sacattorneys.com.

The New Patent Law, Small Business and Individual Inventors

The debate continues to rage over the America Invents Act, recently signed by President Obama, the first major revision to US Patent Law in more than half a century. Is it good for innovation or bad? Does it favor small business or large?

Steve Perlman, a serial entrepreneur credited with inventing QuickTime and WebTV, and currently CEO of OnLive, a game streaming service, recently offered his opinion. Perlman sees little benefit for the small guy in the newly revised patent system. Under the old law, an individual inventor or small business could attempt to prove in court that they had been the first to invent patentable subject matter that a larger or more powerful company was claiming as their own. But now, because the US is adopting the first-to-file rule, which grants patents to the first inventor to file for the patent, rather than the first to invent, there is concern that small inventors will be at a disadvantage because they often try to shop their patents before filing, or may not have the money to pursue a patent application which can be costly.

Perlman also states that the new law does nothing to prevent so-called “patent trolls” from litigating as a business strategy. Patent trolls are companies, often formed for the purpose of patent litigation, that acquire or license patent portfolios not to use them for manufacturing products, but as swords to sue other companies whose products arguably infringe. These efforts can be financially rewarding, producing legal settlements and judgments. But critics argue they do little for innovation and economic growth. Because of “patent trolls” legitimate companies often acquire patent portfolios for defensive purposes, using money that might be best spent elsewhere in order to avoid or protect against such lawsuits.

We’ll highlight counter arguments in future posts on this blog.

For more information on the America Invents Act and its impact on your business, contact Schein & Cai.

Schein & Cai was recently named one of the Top US Patent Firm for 2010 by Intellectual Property Today®. We assist companies in Silicon Valley and beyond, including San Jose, Santa Clara, Mountain View, Sunnyvale, Morgan Hill, Oakland, San Francisco, Palo Alto, San Mateo, Santa Cruz, South San Francisco, Daly City, Cupertino, Saratoga and Emeryville.

Google And Oracle Are Trying To Settle Their Android Lawsuit

Oracle and Google are locked in a patent and copyright infringement battle that involves Java software and the Android mobile operating system. The Android mobile OS runs on 150 million mobile devices, with another 550,000 activated each day. Oracle owns the Java software as a result of its 2010 acquisition of Sun Microsystems and claims that the Android OS relies on Java, and is being used without license.

Many observers believe the case will be resolved before trial, set to start October 31. Google, which is cash rich, may prefer to settle rather than risk an adverse judgment. And Oracle, which is interested in generating license revenue to justify the Sun Microsystems acquisition, especially since Sun’s hardware sales have been falling, can’t get too greedy and demand exorbitant fees that would make Android less competitive in the marketplace.

Thus the circumstances for settlement appear to exist. Now it’s a question of whether the parties can agree on a number.

How much should Google pay Oracle as a license fee for each Android device to settle Java related claims? According to a Business Week report, analysts at Citigroup believe the license fee could be as high as $15 per mobile unit. But some see this as too high, an amount that would slow the sale of Android devices. Other analysts have suggested numbers ranging from less than $1 per device, to $10 per device.

It will be fascinating to see if the parties can reach agreement without trial – and what the magic number ends up being.

Schein & Cai was recently named one of the Top US Patent Firm for 2010 by Intellectual Property Today®. We assist companies in Silicon Valley and beyond, including San Jose, Santa Clara, Mountain View, Sunnyvale, Morgan Hill, Oakland, San Francisco, Palo Alto, San Mateo, Santa Cruz, South San Francisco, Daly City, Cupertino, Saratoga and Emeryville.

Fair Use Under US Copyright Law

Fair use is one of the most difficult concepts to apply under US Copyright Law. It requires the application of general guidelines, set forth in US Copyright Law, to the specific facts of each case. It’s no surprise this process often leads to confusing, sometimes contradictory results in seemingly similar cases.

As a legal principle, fair use acts as a limitation on the exclusive rights of a copyright owner. The exclusive rights of a copyright owner include (i) the right to reproduce (copy) the work, (ii) the right to distribute the work, (iii) the right to prepare derivative works based upon the work, and (iv)
the right to display (or perform) the work publicly.

However, a third party may have a defense to copyright infringement for doing these things if making “fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or research.” 17 USC 107

The kicker is that courts are directed by statute to consider the following factors in determining whether a particular use qualifies as fair use:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work

One can see how factors such as these, which are general in nature, might lead to varying even unpredictable results when applied by different courts to similar fact situations. That’s why fair use under US Copyright Law is a fascinating area for attorneys, even though it may be confusing and frustrating for their clients.

Schein & Cai can advise you with respect to all copyright matters. We assist companies in Silicon Valley and beyond, including San Jose, Santa Clara, Mountain View, Sunnyvale, Morgan Hill, Oakland, San Francisco, Palo Alto, San Mateo, Santa Cruz, South San Francisco, Daly City, Cupertino, Saratoga and Emeryville.

Find Schein & Cai at www.sacattorneys.com.

YouTube, like many websites that permit users to upload and publish content, has policies under which a third party may provide notice to YouTube that it has a good faith belief that material (e.g. videos) appearing on the site infringe their copyright. Upon receipt of a proper notice, YouTube can shield itself from liability for copyright infringement with respect to such material if it responds expeditiously to remove, or disable access
to such.

After removing or disabling the allegedly infringing material, YouTube can also shield itself from liability to the person who posted the material online by promptly notifying such party of its actions. Counter notification procedures allow the party who posted the material to dispute the claim of copyright infringement which could result in YouTube reversing its actions and notifying the third party who alleged infringement that it will replace the removed material or cease disabling access to it.

The legal requirements surrounding these various notice and take down procedures are set forth in greater detail in US Copyright Law, 17 USC 512 (Limitations on liability relating to material online).

If you post videos to YouTube and receive notice that one or more of your videos is being removed because of a copyright infringement claim by a third party, what do you do? Here’s a handy How To Dispute Copyright Claims video, posted by a YouTube user, which explains how to access your YouTube account and contest a claim of infringement by providing counter notification using the tools and account features made available by YouTube.

The video is not legal advice but does show how to use your account features to accomplish this, assuming you’re on solid legal ground.

Schein & Cai can advise you with respect to all copyright matters. We assist companies in Silicon Valley and beyond, including San Jose, Santa Clara, Mountain View, Sunnyvale, Morgan Hill, Oakland, San Francisco, Palo Alto, San Mateo, Santa Cruz, South San Francisco, Daly City, Cupertino, Saratoga and Emeryville.

Two separate events are highlighted this week in our continuing coverage of high tech meetings and conferences in the Silicon Valley and San Francisco areas.

First, the Silicon Valley Conference 2011 takes place on October 4-5 at the Santa Clara Convention Center. Events include the World Developer Challenger and World Start-Up Challenge, a well as the Silicon Valley Awards Ceremony.

For more details on Silicon Valley Conference 2011 go here.

A few days later, the Silicon Valley Code Camp takes place on the weekend of October 8-9, 2011 at Foothill College in Los Altos Hills. Code Camp is a free community event where developers learn from fellow developers and includes informal talks and presentations.

For more details and to register for Silicon Valley Code Camp go here.

If you attend either event, let us know. Post a comment here with your review.

Schein & Cai LLP, focused business and intellectual property law firm advising startups in the Silicon Valley and beyond, including San Jose, Santa Clara, Mountain View, Sunnyvale, Morgan Hill, Oakland, San Francisco, Palo Alto, San Mateo, Santa Cruz, South San Francisco, Daly City, Cupertino, Saratoga and Emeryville.

Disclaimer: Schein & Cai does not endorse any event featured on this blog. Listings are included as a convenience for the readers. Readers should investigate each event and determine if it is right for them.

President Obama signed the America Invents Act in a public ceremony on September 16, 2011. The Bill makes significant changes to US Patent Law, including bringing the US into conformity with the rest of the world by granting patents to the first-to-file (i.e. first inventor to file) rather than the first-to invent. Our previous articles noted this and other issues addressed by the Bill.

The White House announcement about the signing claims that the new law will, among other things:

1. Offer a fast track option for certain patents to be approved within one year vs. the standard three year waiting period;

2. Reduce the patent application backlog (currently at 680,000) because of additional resources;

3. Provide an expedited method of resolving patent challenges in-house, leading to increased patent quality; and

4. Enhance the ability of American inventors to protect their IP abroad, due to increased efficiency and predictability as a result of the US harmonizing its patent law with that of other nations.

It will be interesting to see if the America Invents Act lives up to its billing and achieves these worthwhile goals.

For more information on the America Invents Act and its impact on your business, contact Schein & Cai.

Schein & Cai was recently named one of the Top US Patent Firm for 2010 by Intellectual Property Today®. We assist companies in Silicon Valley and beyond, including San Jose, Santa Clara, Mountain View, Sunnyvale, Morgan Hill, Oakland, San Francisco, Palo Alto, San Mateo, Santa Cruz, South San Francisco, Daly City,Cupertino, Saratoga and Emeryville.

Patent law is supposed to reward innovation and provide incentives for inventors. Instead, the muddled system we’ve created often does the opposite. Granting of questionable patents, including many software patents, ends up creating a minefield of litigation risk. The end result is that companies spend outrageous sums defending and settling such suits. Many go so far as to acquire competitors in order to own their patent portfolios, shield themselves from further risk and accumulate intellectual property ammo that can be used to sue others.

The recently announced acquisition of Motorola’s smart phone business by Google is a prime example, according to many. The value of Motorola’s patents has been noted
by almost every news report about the deal and not because these patents will allow Google to innovate further or build on existing technology.

According to the Wall Street Journal, Google’s top attorney recently noted that competitors in the field purchase wireless patents because they want to make “Android devices more expensive for consumers.” This could be why Microsoft and Apple, Google’s Android competitors, recently teamed up to buy thousands of patents from Nortel.

Google’s response? Purchase thousands of wireless patents held by Motorola.

Google has stated that the acquisition of Motorola’s smart phone business is about more than patent litigation, that it serves other useful business purposes. But
considering the current state of our patent system, especially with regard to software patents, many feel otherwise.

Schein & Cai was recently named one of the Top US Patent Firm for 2010 by Intellectual Property Today®. We assist companies in Silicon Valley and beyond,
including San Jose, Santa Clara, Mountain View, Sunnyvale, Morgan Hill, Oakland, San Francisco, Palo Alto, San Mateo, Santa Cruz, South San Francisco, Daly City,
Cupertino, Saratoga and Emeryville.