Advising Businesses In A Troubled Economy… Intellectual Property: Traps To Avoid Sponsored by University of Houston Law Foundation

IP Comparisons pages 1-4 What does it protect? What's required? Provisional Patent Application Allows subsequent disclosure without losing foreign rights A cover sheet and any description

IP Comparisons pages 1-4 What does it protect? What's required? Utility PatentFunctional features New and "non- obvious"

IP Comparisons pages 1-4 What does it protect? What's required? Design PatentNonfunctional aspects New and "non- obvious"

Design Patent On A Tennis Racquet? Is it Functional??? What if it had 2 handles? Or 2 heads?

Design Patent On A Tennis Racquet 2 Handles: D247,131

Design Patent On A Tennis Racquet 2 Heads: D247,057

IP Comparisons pages 1-4 What does it protect? What's required? Trademark, Service Mark Words, names, symbols, or devices Used to identify and distinguish goods (see page 76)

IP Comparisons pages 1-4 What does it protect? What's required? Domain NameExact spelling of your website Spelling variation; no bad faith

Domain Names

IP Comparisons pages 1-4 What does it protect? What's required? Trade DressOverall impression of nonfunctional features Used to identify and distinguish

IP Comparisons What does it protect? What's required? CopyrightComputer programs, photos, music, websites, architectural drawings Originality

IP Comparisons What does it protect? What's required? Trade SecretSecretsConfidentiality agreements & obvious security measures

Its Website Got Your Client Sued in Alaska. Page 5 Jurisdiction Traps

Alleged patent infringement P, Brit, sells patented products in CA No exclusive licensee, many non- exclusives No enforcement actions in CA D.J. possible in CA? New case Jurisdiction Traps

“A patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement.” New case Jurisdiction Traps

“Jurisdiction over foreign patentees like Oxford continues to be available in the United States District Court for the District of Columbia. See 35 U.S.C. § 293.” Autogenomics, Inc. v. Oxford Gene Technology Limited, No (Fed. Cir. May 18, 2009). New case Jurisdiction Traps

Patent Traps Attorney Not Registered Invention Already Described Grace Period in the U.S. ended Page 9 Page 10

Patent Traps The Applicant Is Not The Inventor The Inventor Lost the Race Employee Still Owns The Invention Improper Venue new case

Lear (Michigan) sued TS Tech (Ohio) in E.D. TX. selling infringing pivotal headrest assemblies to Honda E.D. denied transfer: several cars sold in E.D. Petitioned Fed. Cir. for mandamus New case Patent Traps - Venue

5 th Cir Volkswagen case “inordinate weight to plaintiff’s choice” “cost of attendance for witnesses” -- ignoring “100-mile rule” = “clear error” In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir ) New case Patent Traps - Venue

MHL(Michigan) sued (1) Audi, Nissan, Hyundai, Kia, Porsche, BMW, Isuzu, Subaru, & Volkswagen and (2) GM, Saturn, Ford, Land Rover, Volvo, Chrysler, & Mercedes-Benz E.D. denied transfer VW petitioned - mandamus New case Patent Traps - Venue

“the existence of multiple lawsuits involving the same issues is a paramount consideration” “judicial economy is served by having the same district court try the cases involving the same patents” New case Patent Traps - Venue

Denied mandamus. In re Volkswagen of America, Inc., Volkswagen AG, and Audi AG, No. 897 (Fed. Cir ). New case Patent Traps - Venue

Sanofi (Germany) sued Genentech and Biogen in E.D. Same day, G & B filed D.J. in N.D.Cal. E.D. denied transfer Defendants petitioned - mandamus New case Patent Traps - Venue

“not necessary …to evaluate the significance of the identified witnesses’ testimony” “The significant weight given to the inconvenience of the European witnesses is in direct conflict with the more appropriate approach of several other district court decisions” New case Patent Traps - Venue

“improperly used its central location as a consideration” (no witnesses in E.D.) “Sanofi is a German corporation that will be traveling a great distance no matter which venue.” New case Patent Traps - Venue

“the bulk of the relevant evidence usually comes from the accused infringer. Consequently, the place where the defendant’s documents are kept weighs in favor of transfer to that location.” “antiquated era argument was essentially rejected in Volkswagen” New case Patent Traps - Venue

Granted mandamus. In re Genentech, Inc. and Biogen Idec Inc., No. 901 (Fed. Cir ). New case Patent Traps - Venue

Trademark Traps Assumed Availability Failed To Apply For Federal Reg. Insisted on a descriptive mark new 17 18

Pick A Mark For: Hospitality & Lodging services

“Motel”? Pick A Mark

or “Marriott” ? Pick A Mark

For: Legal services

“Trial Lawyer”? or “ Patent Lawyer”? or ? Pick A Mark

Time: Start to Finish Applied:May 18, 2008 Registered:March 17, 2009

Trademark Traps Used another’s trade dress new

Trademark Traps Failed To Use International Arbitration Panels For Domain Name Disputes 18

Fighting Trademark Infringers Standard TM Lawsuit$$$$$$ ACPA lawsuit$$$ TTABproceeding$$ International ADR $

Intl’l ADR -- ICANN Internet Corporation for Assigned Names & Numbers Non-profit corp. formed in 1998 Recognized by U.S. government: technical coordinator of the Internet’s domain name system. 18

ICANN: The Numbers 21 Generic top-level domains (gTLDs) (such as.com,.net,.org) 11 Internationalized domain names (IDNs) (such as δοκιμή, 測試, and إختبار ). 308 Country-code top-level domains (ccTLDs) (such as.au,.ca,.jp., and.uk)

ICANN: The Future 1 st Q 2010: Expected launch of new gTLD Program “Four overarching issues”: Trademark Protection The Economic Analysis of new gTLDs Financial Analysis Objection Process

ICANN ADR Uniform Domain-Name Dispute-Resolution Policy (UDRP) (1,823 cases in 2006) Ask: - what language? - what jurisdiction if challenged? -domain name identical/confusingly similar? - no legitimate rights/interests? - bad faith? Pages 26-27

Trademark Traps Did Not Use The ACPA To Get Rid Of A Cybersquatter 29

ACPA Anti-Cybersquatting Consumer Protection Act (“ACPA”) Elements: bad faith intent to profit registers, traffics in, or uses name: identical or confusingly similar, OR dilutes famous mark Pages 29-47

ACPA’s Advantages Liability without regard to the goods or services of the parties commercial use In rem action against domain name IF In personam jurisdiction impossible, OR Can’t find defendant Page 30 Page 31

ACPA In Rem Actions Sue in judicial district of registrar or registry ~ 900 current ICANN accredited registrars for generic TLD’s ~310 are located outside the U.S. ~300 more country code TLD’s 31

Copyright Traps Creator Was Not An Employee Outside Employee’s Job Scope Creator Did Not Assign Copyrights Violated website’s “terms of use”

Facebook sued Power-Ventures for collecting information from Facebook’s website Users must assent to “Terms of Use” PV “scrapes” user data from Facebook on behalf of registered users New case Copyright Traps - Websites

Website = protected compilation Accessing a website = copying Ticketmaster L.L.C. v. RMG Techs, Inc., 507 F. Supp. 2d 1096, 1106 (C.D. Cal. 2007) (granting preliminary injunction). Denied motion to dismiss. Facebook v. Power-Ventures, 2009 U.S. Dist. LEXIS (N.D. Cal ). New case Copyright Traps - Websites

Trade Secret Traps Ex-Employer Gave Valuable Trade Secrets Ex-Employee Took Negative Knowledge Combination of Known Elements Taken Was Unique 56

Privacy & Other Traps Website Attracted both children and the FTC. Hijacked & Mousetrapped Surfers 58 59

Patent Forms 1.Corporate policy for protecting IP61 2.Invention assignment66 3.Employee promise to assign 68 4.Encouraging innovation70 5.Invention disclosure

Trademarks, Trade Secrets, & Copyrights Guidelines for selecting trademarks 77 Employee promise to keep secrets 78 Copyright assignment from contractor

Patent Websites Searching & Fees:uspto.gov Examiner ’ s manual:same Free pdf copies: pat2pdf.org Foreign patents:wipo.int Law: a.shtml 84

Trademark Websites Searching & Fees: uspto.gov Examiner ’ s manual: same Domain name disputes: icann.org Law: a.shtml 85

Copyright Websites Searching & Fees: copyright.gov Law: copyright.gov/title17 85

Copyright Enforcers CCC: ASCAP: BMI: RIAA: BSA: 86

Winston Churchill Success is not final, failure is not fatal: it is the courage to continue that counts.

Thanks For Listening!

Tim Headley & Sarah Beth Foley