Monday, November 29, 2010

Wants to sell vodka drink trademark on eBay

Dear Rich: I read about selling trademarks online. What about eBay? Have you ever heard of any success of selling a trademark through them? I have a trademark and domain register for brand name for a pomegranate and vodka drink that I am trying to sell. Any ideas on how to value and sell this? Vodka and pomegranate? What a wonderful way to get your daily dose of anti-oxidants. We're wondering what your trademark is ... Vomegranate? Or what about Podka?  
If you're not using the mark in commerce. If this is just an idea -- that is, you've come up with a good choice for a name and you don't plan on manufacturing and selling the drink -- then you don't really have any trademark rights to sell. Trademark rights are derived from use of the mark in commerce (or to some extent a bona fide intent to use the mark in commerce). If all you have is an idea, then you have no proprietary rights and once you post the name for sale, anyone can use it. (And the first company to use it -- assuming the trademark is distinctive-- will acquire trademark rights.)
If you are using the mark in commerce. If you are using the mark in commerce, and hopefully you've registered the trademark, then you can sell or auction it anywhere that permits such a sale. Ebay policy doesn't expressly prohibit the sale of trademarks, so we assume eBay permits it. And there's at least one eBay store that seems to specialize in the sale of trademarks and domains. And of course, there are various intellectual property auction sites where you can sell trademark rights. The Dear Rich Staff has had no experience with these sites so we can't vouch for any of them.
The domain names would be a different story. The domain names may have value whether you are selling the product or not. And because you control the ownership via a domain name service, selling domains is easy. As you're probably aware, there are many sites such as afternic and great domains, where you can sell your domain.
What's your trademark worth? Short answer: you'll find out when you try and sell it. Long answer: you can hire a professional IP valuation team to give you an opinion -- a procedure that may cost you more than your mark is worth. Here are some of the gruesome details.

Sunday, November 28, 2010

You can see trademarks in my film: Is that okay?

Dear Rich: I just got done shooting the major portion of my new short film Quick Shop, which takes place in a convenient store/meat market. There are several shots where logos and brand names are fairly apparent, and I'm wondering if I should be worried. Take this shot for instance. You can distinctly see most of the Marlboro name and logo in the back. Other shots include images of Shur Fine, Martin's Potato Chips and possibly a Pepsi logo. I did my best to cover up really obvious brand names and logos, but I guess I missed a couple. So am I going to run into any problems when I go to submit to film festivals, or is something like this OK? I mean, it's not like I was going out of my way to include this stuff. I'm pretty sure I can fuzz out these images, but I'd rather not.We'd rather you didn't fuzz them out either. As a general rule, there's nothing wrong with including trademarks in a documentary or fictional film. In both cases, your free speech rights should trump someone else's trademark rights. That was the case when Caterpillar sued Walt DIsney over use of the Caterpillar tractors and trademarks in the movie "George of the Jungle 2" (Alas, no Brendan Fraser in this direct-to-video sequel!). A district court ruled there was no trademark confusion or trademark dilution (Caterpillar might have been displeased by the fact that the bad guys in the film used caterpillar tractors). By the way, the amazing 2010 Academy Award short,Logorama,used over 3000 trademarks without permission. We should also mention, there's a case in which the makers of a film could not use the title Dairy Queen under various trademark theories (though we wonder about the logic of that case.)
Ennnyway ... Even though the law is likely to be on your side, that doesn't mean you won't run into problems. Distributors may require trademark clearance regardless of our legal explanation, and the same may be true for networks, festivals, or if the film is purchased. (Hopefully, if the film is sold, you'll be able to afford a clearance expert to help you.) At the same time, a company may feel that its trademark is being exploited for an improper association and fire off a cease and desist letter. Even though chances are good that you would eventually prevail in court, you may not be capable of overcoming the bullying tactics (and be forced into fuzzing your signage). By the way, you can further lower your risks of getting a C&D letter by avoiding any implication that the other company endorses or is associated with your film -- that is, by not using any other company's trademarks in your film's advertising, posters, and possibly even the trailers.

Friday, November 26, 2010

Acting like a library and claiming rights to 1970s doll patterns

Dear Rich: I was just wondering about something. A site I visited while looking for free patterns for my vintage Crissy doll offered commercially made patterns from the early 70s (as old as the doll). The owner enables PDF downloads of these patterns with her watermark on them and says that the patterns are not in the public domain but since she is offering them for free, her site is doing this legally, much as a library would. It seems to me that either something is in the public domain or it is copyrighted.  Correct me if I'm wrong, but while the library "allows" us to photocopy books, doesn't it only tolerate this conduct because the library and publishers can't control what we do with the material we borrow?  I am curious about this issue because there was a huge stink at our  library recently regarding users making copies of digital material like movies. Also on another but related topic are we allowed to put our watermark on someone else's work? My doll would look awesome in those clothes, but I'd rather go through the hassle and expense of buying the patterns than stealing them. Wow, we can't believe we're answering a question about the 'Beautiful' Crissy doll, the amazing little pre-Rogaine figurine with its growth-on-demand hair. Crissy presaged a world of harvested body parts grown from little genetically manipulated bots ... Well, maybe she didn't do all that, but she definitely paved the way for My Little Pony and other tween hair play-fascination amusements.
Right, you had a question(s). Yes, you're right. Things are either public domain or they're protected under copyright (and that includes creative commons stuff, too). Because Crissy debuted in 1969 and hit her stride in the 70's, the patterns are still protected under copyright and renewal wasn't necessary. The website owner is acting as if these patterns are "orphan works." That's because the Ideal Toy Company, who probably owned the copyrights originally, has disappeared. It's been swallowed up by Mattel and by CBS Toys (which also went under). And because the doll's been dormant, the site owner is probably assuming there will be no hassles. In other words she views it as an untended copyright, sort of like the tree that falls in the forest and no one hears (or records). That may be the case, although USPTO records show that Mattel still maintains a live trademark for Crissy for dolls and doll clothing. So, we're going to presume that Mattel -- who's not known for being a shrinking violet when it comes to litigation -- will roll out the big guns if someone comes out with a rival Crissy doll.
The library thing. You're right about the library analogy. A library has the right to circulate copies of works. It doesn't have the right to make copies of the works (with the exception of some archiving exceptions). The patron's use of a photocopy machine may be a fair use or it may be an unexcused infringement. That's why libraries post those notices on photocopy machines, to deflect liability for the illegal acts that patrons may use books for. And the laws regarding a library's rights differ for printed books, digitial books, movies, music, etc.
The watermark. We haven't seen the watermark, but if Mattel is actively pursuing infringers of Crissy, they may have a good argument under trademark law that the watermark confuses consumers as to it's source. On that basis they could stop the distribution. (But maybe the giant won't wake up for a website that's distributing  40-year old doll patterns.) Oh, and in case you're interested, the patent (pictured above) for the hair-growing device is in the public domain.

Tuesday, November 23, 2010

We Agreed on 50-50 Copyright Split for Movie; Now We're Splitsville!

Dear Rich: I emailed you sometime back regarding a documentary I'm producing and while I didn't hear back from you I thought I'd send you a note just the same with something else that just came up with the very same documentary. So I have a contract, also known as a "documentary film deal point memo' of my client's devising, that states that we both share 50% copyright of the finished documentary DVD. Now that we've reached a bit of an impasse, shall we say, they are claiming said 50% copyright extends to the source tapes (mini-dv tapes I actually shot all the footage on). My belief is no but they are threatening a lawsuit to make me turn them over. Furthermore, my question is does the copyright extend to my work files in Final Cut Pro, the digitized footage? I'm trying to negotiate my way out of this project but I have some serious concerns. We know we never answered your first email (actually emails). You had a lot of interesting questions, at least four or five and we wanted to answer, we really did. But you know that overwhelming feeling you get sometimes like when you didn't to do the dishes for a few days and it seems so overwhelming that you decide to switch to paper plates - at least until your mood changes? That's the way we felt sometimes when we looked at all your questions. Sometimes when we get letters and they have a few questions, we remember that lawyer joke where a new client comes to see a big shot lawyer and says, "Can you tell me how much you charge?" and the lawyer says "I charge $200 to answer three questions!" And the client says, "Well that's a bit steep, isn't it?" And the lawyer goes, "I suppose so. What's your third question?" ... Anyway, we can imagine what you're thinking. If the staff has enough time to sit around telling stale lawyer jokes, why can't they answer your email.
Right, you had a question. No matter what you agreed upon in your deal memo, splitting copyright ownershiprequires that you conform to copyright law's principles of ownership. Under those rules, ownership is always derived (at least initially) from authorship. A 50-50 copyright split would occur if: (1) you and the client are joint authors of the film (unlikely, unless the client participated in the creation/making of the film with you); (2) you are the sole author, and under the agreement you assigned 50% to the client; or (3) you are making the film as awork made for hire for the client, and the client (as the owner), assigned you 50% of the copyright. If it's not a work made for hire and the co-ownership is not based on one of the other scenarios, there could be a problem for the client trying to claim copyright. That doesn't mean that the client gets nothing -- a court would likely imply a 50-50% revenue split -- but it does mean that the client may have trouble gaining control over work product like the Final Cut files or mini DV tapes. So our first suggestion is that you have the agreement reviewed by a lawyer to be sure that the 50-50 copyright split is effective. (Here's a case where the client thought it had created a work made for hire but couldn't control later sales of stock footage.)
Let's assume you have a 50-50% copyright split. Okay, if we assume that you split the copyright ownership 50-50 somehow, then you need to review the deal memo to see what that copyright refers to. If, as you claim, it refers to the finished film, the client probably couldn't claim dibs on work product; they could only go after the edited result. But if you assigned half the copyright to everything created during the filmmaking process (or if it's a work made for hire arrangement), then the client could probably claim rights to the work product that is on the mini DV tapes. (That's probably true for the Final Cut conversions and files, too.) So our second suggestion is a lot like our first one -- you'll probably need an attorney to review the agreement. 
Separating the physical from the copyright. A final thought ... It's possible that if the client has been paying for everything, then the client owns the physical goods -- the mini DVs, the hard drives, etc. So even if the client can't do anything with the copyrighted materials, the client can retain ownership of the raw materials on which they're stored. That could lead to a Mexican standoff in which the client possesses the physical storage devices and you control the right to copy and edit the enclosed files.
Bottom line. We feel like we've provided a long-winded, but unhelpful answer. That's frustrating for us and for you, as well, but it's often the case when copyright ownership is disputed and the details are buried in an agreement. And what was your third question?

Friday, November 19, 2010

80 Proofed: Somebody bought my liquor trademark!

Dear Rich: I bought an alcoholic beverage business along with the domain names. However another company who are in the same field bought the trademark to my company name. They have no need for the trademark as they will not be able to produce any goods under it as it does not relate to any part of their business. I feel it is merely a tactic to slow my business down. Currently we have little option but to try and make sure our products are distinguishable however we really have no idea what else is required to either transfer trademark to ourselves and/or continue business producing and bottling our products. We're not a drinking blog, but if we were, we'd certainly have a nip of your product. (It comes from a part of the world that we think is a lot of fun.)  According to our notes, you've said that you purchased your company from a larger one. And that the larger company later sold all its assets (including your trademarks) to another large company. 
Buying the trademarks. Usually when one company buys a business, the buyer also acquires the trademarksand associated will that goes with the trademarks. We're going to assume that didn't happen in your case and that the seller later sold (or "assigned") the marks and good will connected with your business (and other assets) to the third party. We wish that weren't so and that the trademarks traveled with your purchase. So far, the other company has not sought a federal trademark registration for the marks. Although we can't read too much into their inaction, we do know that they can only register the marks if they have a bona fide intent to sell products under that name.
The trouble is ... As you can imagine there are problems when someone else owns a mark that you intend to use. For one thing, the trademark owner -- particularly if they apply for and acquire federal trademark registration -- can hassle domain holders under ICANN rules and under the anti-cybersquatting laws. In addition, they have a reasonable basis to hassle your company if they choose to oppose your federal registration.
Are you using the mark now? If you are currently selling products under the trademark, you should consult with a trademark attorney. Come to think of it, you should consult with a trademark attorney even if you're not selling any products under that name. You need to clear all rights and determine what the other company owns. You may wonder, what good is the Dear Rich staff, if we're referring you to an attorney? It's because some situations are too complex to resolve in a 500+ word public blog entry (and we're afraid your situation is one of those). After all, the success of your business may be at stake, so let's lower your risks (while we increase your expenses). BTW, as a general rule, don't fear dealing with trademark attorneys; we've found them to be a relatively erudite, amiable bunch. 

Thursday, November 18, 2010

Can I Register Blog Name as a Trademark?

Dear Rich: Might you know whether blog names get trademark protection? Many thanks for any insight you can offer! Yes, blog names can acquire trademark protection and can be registered at the U.S. Patent and Trademark Office. Here's an article with a step-by-step explanation how to do it.
(We registered our blog name last year and didn't run into any problems.)
You'll have to meet the requirements for trademark protection and registration, much of which we set forth hereand in our helpful book on the subject. The online registration process should cost approximately $300 depending on which method you choose. And when you register, you would describe your blog services as "On-line journals, namely, blogs featuring commentary and information in the fields of [describing the content or field of the blog]."

Wednesday, November 17, 2010

Ex-Affiliate Scraped My Touch-Up Paint Database

Dear Rich: I have a website at Another site copied my entire color database and used it to create their site and sell touch up paint. I actually know this individual as he used to be an affiliate of and I used to pay him for referring sales to my site. My color list was based on customer requests for specific paints and these colors would ONLY be available in this format on The infringing site lists the exact same color and codes as my site here. (He copied the tens of thousands of colors from my site. He obviously used a program that automated the process of downloading all my color database information.) I only have a general copyright on my site. My company is in Nevada and the other site is based in New Jersey. Wow, the Dear Rich staffloves touch-up paint and will never forget the first time we used it to hide certain incidents from certain people (Or as Walter Matthau told his amazing wife, Carol, after stealing her cash for gambling purposes, "Sorry darling ...").
Right, you had a question. We checked out the other site. Yes, it looks like your database has been ripped off. You have two challenges: (1) You have to categorize the ripoff as a valid legal claim, and (2) you need to find out if there's a way to sue in Nevada (otherwise, you will you have to hire an attorney in New Jersey).
(1) Making a Valid Legal Claim. Okay, here's a long-winded explanation of the possibilities:
  • The Affiliate Relationship. You say the owner of the other site used to be your affiliate. Did you enter into an affiliate agreement (some sort of click-to-accept agreement that sets out the terms of the affiliate relationship)? If so, you may have  a few choices available to you. For example, many affiliate agreements prohibit reverse engineering, "scraping" of your site's code, and similar types of behavior. Affiliate agreements also often contain things like attorney fees provisions, or jurisdiction clauses (and that may require the other party to consent to Nevada jurisdiction). If an agreement exists, that could be your best strategy.
  • Terms and Conditions. A second (and similar) route is to enforce the terms and conditions of use of your website. The terms and conditions of your site prohibit reposting of the material and also require that lawsuits be filed in Nevada. That may assist you. However, we don't see a mechanism by which the user of your site must agree with those terms and conditions before proceeding. For example, we don't see a box to check when registering that says "I agree to abide by the terms and conditions of this website." That would certainly help as the enforcement of end user agreements usually requires that the other party demonstrate some form of consent to the terms and conditions. 
  • Copyright Claims. If you can't rely on the affiliate agreement, you may be able to pursue copyright infringement. If the other site "scraped" your site, you may have a claim for copyright infringement of your site's code, or alternatively, of your database. (You'll need to demonstrate that your database is sufficiently unique and required some judgment or creative skill to create.) We talk about database protection in more detail, here. You should register copyright applications for both the website and for the database using the Copyright Office's system for electronic registration (and you'll get a registration back within six to eight weeks). If you need a registration sooner than that, you could speed it up by using a more expensive special handling system.
  • Unfair Business Practices. There is also a patchwork set of state laws known as unfair competition lawsthat prohibit sleazy business practices and scraping of your site may qualify as such. 
(2) Jurisdiction. We mentioned jurisdiction (which refers to where you would have to sue). A lawyer can best advise you on how to proceed but we think that you may have a reasonable basis to sue in your home state of Nevada based on the previous affiliate relationship, your terms and conditions, and possibly because the other site may have customers in Nevada. All of these are factors in determining long-arm jurisdiction. You can read more about it here.

Monday, November 15, 2010

Do Poltergeists Have Legal Rights?

Dear Rich: In 1978 a woman (now dead) had her house over run by a poltergeist. The case was called the Enfield poltergeist. It was reported by dozens of people and was investigated by many people. There are thousands of different sources that report this incident. I want to make a film about this case. I would probably dramatize any reports and use my own words to convey this story. The facts would remain the same but I would artistically change everything. Is this okay? We're hesitant to say that ghosts don't have any rights. We certainly don't want to be subpoenaed by an apparition of Roy Cohn (and let's not forget there have been reports of Clarence Darrow poltergeist sightings in Chicago). And anyway for some ghosts (or at least their estates) there may be post-mortem rights of publicity in certain states. However, in general, the Dear Rich staff thinks you're in the clear with your film. Here's why: 
Making a film based on real events. When making a film based on real events, there are three primary concerns: (1) Are you stepping on anyone's copyright? (2) Are you defaming or invading the privacy of any individual? and (3) Are you stepping on anyone's right of publicity?
  • Copyright. The facts of the case are available for everyone to use. As a general rule, the more that you fictionalize the less chance you'll run into copyright problems. However, too much fictionalization of real-life characters may lead to claims of defamation if the fictional liberties cause people to suffer harm. In other words if you fictionalize a real person doing something illegal or immoral, you might hear from a lawyer (or barrister since this is a UK story). Still, we wouldn't worry too much, see below.
  • Defamation/Invasion of Privacy. Occasionally people complain that a movie portrays them in a libelousmanner or a "false light." Such lawsuits rarely get very far because judges give movie makers a lot of free speech leeway. For example, a former ambassador sued the makers of the film The Missing on that basis, and the case was dismissed.
  • Right of Publicity. A right of publicity claim is unlikely to succeed solely on the basis of a film. However, it may get more traction if the film sells merchandise or other commercial items using the person's image or personna.
Bottom line dept. There have been plenty of re-tellings of the Enfield poltergeist story and so we think there's room for yours as well. 

Wednesday, November 10, 2010

Songwriting Credit Removed From Album

Dear Rich: These are strange times. Are we sinking to new lows? Just this week, I discovered, quite by accident, that songs I had co-written in the mid 1970s are now being sold on the Internet. The person I co-wrote them with, was a famous artist, but is now deceased. His name appears (apparently to help them sell), but my name is missing, I made contact with the record company who is selling one of these songs, as part of an album of featured artists. After a couple of emails back and forth, it appears I am now being ignored. Also, the person I corresponded with, never once provided their name. My impression is that the original publishing company may have sold all or part of the song catalog to this record company, who may now own the publishing rights. Why my name was dropped from the credits doesn't make much sense. I would think the famous artist's surviving widow is receiving some royalties. If they were simply split in half, it seems to me that the royalty payout would be the same. There were other songs I co-wrote as well, which could appear. This is worrisome, if not downright sickening. Is this a dirty new twist in the music industry? Yes, it's sickening; No, it's not new. The history of the music biz is peppered with stories about how songwriting credits have "gone missing" or have, on occasion, been deliberately or negligently misrepresented by publishers and record companies. Actually, it was easier to get away with this practice in the old days because today anyone with an Internet connection can check up on how songs are credited using online databases. 
Gather info and check your status. Whether you handle this on your own or you get a lawyer, you need to start by gathering information. You need to review these websites and plug in your song titles: HFALimelight,BMI, and ASCAP. You should find out who is listed as publisher of the song and who is listed as songwriter. You should also search the Copyright Office website to see if the songs have been registered and whether you are listed as co-writer.
  • If you're not listed as co-songwriter ...  then you're going to need to prove ownership. That will require documentation from the past -- either publishing contracts if you have them or circumstantial evidence (vinyl recordings listing you as a co-writer, credits listing you at other websites, previous payments for the songs, etc.). 
  • If you are listed as co-songwriter ... then you will have an easier time proving your case and hopefully recovering royalties (and if you are listed as a co-writer at BMI or ASCAP then you should be receiving quarterly payments directly for radio and certain digital performances -- unless your contact information is outdated).
Get a lawyer. Once you've gathered this evidence, we think it's time to contact a lawyer. We know it may cost you money but if the recording artist was well-known and the songs are generating thousands in revenue per year, it could be worth your while to get an attorney involved. If you live near a volunteer lawyers for the arts organization, you may be able to find an ideal attorney. Otherwise, you will need to look for a copyright attorney who might hopefully be willing to take your case on a contingent fee basis.

Monday, November 8, 2010

Making Coffee Sleeves from Purchased Items

Dear Rich: I am producing coffee sleeves from fabric purchased from fabric stores, thrift shops, garage sales and flea markets. I don't always know if there was a copyright on the material. Does copyright ownership persist through secondary resale of fabric, wrapping paper, or similar materials? Does a company or association (NFL,AFL,NCAA, etc) with trademarked imagery on such material have rights to prevent any commercial use of these materials? Could the statement "Intended For Personal Use Only - Unauthorized Use Prohibited" be considered threatening or intimidating behavior - harassment? Besides, making sleeves directly from the above mentioned fabrics I also provide the service of reformatting a reproduced digital copy of a client's previously purchased product such as images from a book, photos, fabric, etc - recreating a new fabric from those reproductions in the shape of a coffee sleeve. Am I violating copyright with either of these activities? I have contacted many of the producers and copyright owners requesting licensing to use the materials and have not received replies. When do I have the right to use materials where I have made a good faith effort to obtain permission and licensing? When I do make contact I am often asked what I will use the materials for only to then have them deny me licensing. When does the law begin protecting the individual and not just the corporate entities with huge bankrolls? Wow, that's a lot of questions (and sorry, we had to cut your letter in half but like our friends, The Residents, used to say, "Editing is no sin"). So let's see if we can knock off your questions one-two-three.
First sale doctrine. The first sale doctrine provides the right "to sell or otherwise dispose" of authorized copies of copyrighted works so as a general rule you will probably be okay using fabric that includes copyrighted images (assuming it's not bootleg fabric). There are limitations and complications. The more you split up a purchased work -- for example cutting out prints from a photography book and reselling them as framed works -- the more likely someone will come after you. We explained these principles here and here
Copying from books. You will not be okay copying images from books or photos and applying them to coffee sleeves. In that case you're not reusing a copyrighted work, you're actually making copies and that's prohibitedunder copyright law. 
"Intended for Personal Use." We wouldn't worry too much about statements such as "Intended for Personal Use" unless as a condition of buying fabric or some other product, you entered into a license. That fact should have been evident at the time of purchase -- often a statement such as "By breaking the seal on this package, you are entering into a license, etc. "
Using trademarks. Even if you purchased authorized fabric, you're almost always violating the law by placing another company's trademarks on your product because it is likely to confuse consumers that the company that owns the trademark is associated with your venture. Consider the situation from the trademark owner's perspective. Would you want your mark to appear on a product that you didn't make, had no control over, and for which you receive no revenue?
Making a good faith effort. Making a good faith effort to find the owner of rights doesn't get you off the hook for infringement but it is likely to reduce the damages if someone comes after you. For this reason you should always document your searches.
Blah blah blah Dept. As for your question as to why (or whether) the law protects corporate entities with huge bankrolls ... the Dear Rich staff believes that -- considering the terrible governments and laws that exist in the world today -- the U.S. copyright law and our federal judges are relatively fair and balanced. We think your beef is with the way the legal system (not "the law") can be gamed by fat cats because the well-heeled can better survive the costs of legal enforcement. In truth, digital copying of movies, music and books has reduced many of these "huge bankrolls" (consider the demise of EMI  for example).

Friday, November 5, 2010

Do We Need Permission for Out-of-Tune Song in Mockumentary?

Dear Rich: My friends and I recently made a short film. It is a "mockumentary" on Sunday school. In the video, a teacher poorly sings (no instruments accompanying her) a popular song for about 10 seconds. The song in question is Blame it on Cain by Elvis Costello. The question is, do we need to obtain copyright for an out of tune rendition? We would eventually like to submit this film to local film festivals and want to make sure we're in the clear before we pursue anything. Alas, copyright law doesn't care whether your version is in tune or out tune (or even if it's out-of-tune and you later use this to fix it). Ifout-of-tune singers didn't have to pay for rights, the music biz would likely go belly up (Ashlee Simpson, call your lawyer). So we'll start with the premise that any unauthorized version is considered an infringement, even if only for ten seconds. 
Possible defenses. It's unlikely you can afford a lawyer to fight but if you want to defend your use, you have two arguments. One is fair use. You can argue it's a traditional fair use and that you've only taken a small amount to comment on the song. Or alternatively, you can argue it's a parody in that the out-of-tune version of Blame it On Cain sung in a Sunday School mockumentary is being used to poke fun at the lyrical message -- blaming sin on a Biblical character. Cases such as this one (When Sunny Sniffs Glue) and this one (the Pretty Woman case), may bolster your defense. Alternatively, you might be able to make the argument that the amount you took was so small that it didn't matter (known as a de minimis argument). But as we remind readers, these are defenses -- which means you're hoping to stop someone who's already on the offensive -- and unfortunately that often means you're on your way to court.

Thursday, November 4, 2010

Does my invention infringe an existing patent?

Dear Rich: About 10 years ago, I developed a concrete landscaping paver that was poured with fiber optic cables embedded into the paver itself. The fiber optic cable is then joined up with a light source, which illuminates the top side of the paver, offering a unique night time accent lighting. Everyone who sees them in my garden loves the idea, and has suggested that I make an attempt at selling them. Here I am almost a decade later, and I have finally gotten the urge to make a go at it. After a little research, I found that an existing company is selling a patented product that is almost identical to my own. Despite being very similar, my product has a distinct difference, in that the light source in my design is removable from the paver body. I would like to know if this subtle difference is sufficient enough to proceed forward, or if there are too many similarities, thus constituting patent infringement? 
If your invention has or performs all of the elements contained in the main or broadest claims of the existing patent then most likely you have infringed the patent. Even if your invention has additional elements, it will still infringe. For example, if the patent claim recites three elements, A, B, and C, and your invention has these three elements, it will infringe. Even if your invention has four elements, A, B, C, and D, it will still infringe. Beyond that, the Dear Rich staff is unable to give you more specific information and -- as much as we'd like to save you money -- you'll probably have to pay a patent attorney for a more specific opinion. That investment of a few hundred dollars will be worth it if it saves you from litigation or having to shut down a business in which you've invested your IRA and 401K.
Judging infringement. We asked Patent it Yourself author David Pressman about your situation. He suggests that in order to analyze infringement, you should make a claim chart with two columns. Break the first independent claim into its elements, each one in a respective block in the left column. In each corresponding block in the right column write a brief narrative stating why you feel the corresponding element in the left column is met (or unmet) by your device. If the other independent claims differ substantially from Claim 1, you should definitely do them. And keep in mind that even if the claims don't literally read (that is, they're not identical), there are still two ways that the patent holder can chase after you: the "doctrine of equivalents" and the "doctrine of contributory infringement." You can learn more about patent infringement, here.
Some other stuff to consider. Obviously, it's too late for you to get a patent. You say you developed your innovation 10 years ago. That's about the same time as the patent in question was filed. If you published information about your invention either more than one year prior to the filing of the patent (or any time before the patent holder's date of invention), you might be able to argue that the patent should not have been issued because it was not novel in light of the prior art. We're not recommending that as obviously, that can be an expensive and time-consuming battle. Which leads us back to our caveat -- if you're seriously thinking about moving ahead with your innovation, consult a patent attorney.

Tuesday, November 2, 2010

Reselling Patented Pool Cleaner Bags

Dear Rich: I have an idea of reselling (not producing) a bag for robotic pool cleaner but not sure is it is legal. I searched for a patent for that item on United States Patent and Trademark Office website and did not find any patents for the item I want to sell. I know that this kind of bag is sold on eBay and in a few Internet stores. How can I find if item is patent protected, or should I worry about that at all since I am just reselling the item in my retail store and not producing it? 
The Dear Rich Staff doesn't think you should worry about it. You're okay reselling pool cleaners bags provided that the bags are authorized (not fakes or knockoffs) and purchased within the U.S. The principle that protects you is known as the exhaustion doctrine. (We talked about it here.) This appears to be the general rule although according to this case, some patent owners can establish post-sale restrictions on patented products if the purchaser agrees to the license. In the case cited, that 'agreement' occurred when the consumer accepted a price incentive to purchase toner cartridges. So if you are about to buy pool cleaner bags and you see language in advertisements referring to a "license" to use the product --  for example, "By opening this package, you agree to the terms of the license agreement ..." then you may be bound by those terms provided that you can see the license agreement before you purchased the bags. In general we think this is unlikely. Although we don't own a pool, or a robotic pool cleaner, we did examine our vacuum cleaner bags and found no license language.
What you can and cannot do.  It's also possible, though unlikely, that if the bags you buy infringe a patent, the patent holder will move down the food chain and sue you as well. That's because anyone who makes, uses, or sells an infringing device can be liable. Some things you cannot do: you cannot remove trademarks and resell; and you cannot open pool bag cartons and place additional merchandise inside; you cannot combine other merchandise with pool bags and create the impression that the patent holder or pool bag manufacturer endorses your combo-package. Also, from an ecological POV, you should not fill the bags with mermaid repellent.