Over the course of my practice, I have often had clients come to me after receiving a cease and desist letter. Usually, the cease and desist letter, written by an attorney trained by or from one of the "Big Firms," promises hellfire and damnation to my client unless it immediately acquiesces to their client's laundry list of demands. The demands are lengthy, and often include requiring my clients their first and second born. I am not a big fan of these types of letters, in firing off cease and desist letters indiscriminately, or such intellectual policing tactics. Unfortunately, sometimes such tactics are necessary when the other side is simply unreasonable and uncooperative.
As I often counsel my clients when they want me to send a cease and desist for them, it is usually better to try the nice approach first rather than immediately going for the mean approach. In fact, I often try to get the client to agree to ending the cease and desist letter with an offer to have a dialogue about the issues raised in the letter in the hopes of avoiding having to litigate. Other times, I try to get the client to think of ways to turn the issue into a "win-win," for my client and the other party. For many small business (and some medium businesses), litigation is bad business--well, except for us litigation attorneys who usually will get paid regardless of result.
So, when I ran across this article about the attorney for Jack Daniels sending a cease and desist letter to author Patrick Wensick over his book cover art, I was impressed. I disagree with the article saying that such a letter is "unlawyerly," since the letter gets across the conundrum that every intellectual property owner faces: if you do not protect it, you can lose it. Apparently, Mr. Wensick was impressed with the letter because he posted it on his website. I am sure that Jack Daniels did not expect, but does welcome the free good publicity. Moreover, as an intellectual property owner himself, Mr. Wensick clearly understands the issues and does not need a nasty letter telling him that he going straight to hell for infringing on Jack Daniels' label design.
Three cheers to Jack Daniels' attorney and a big thank you for reminding us that sometimes you can catch more bees with honey than with vinegar!
Tuesday, July 31, 2012
Tuesday, July 24, 2012
Apple v. Samsung Over Galaxy and a Schizophrenic UK Court Ruling
In another chapter of the international legal saga between Apple and Samsung over their intellectual property relating to their tablets (iPad and Galaxy), a UK court made an interesting ruling. While the UK judge found that there was no infringement by Samsung of Apple's design rights, he also will allow Apple to opine that Samsung infringed its design rights. What? Yes, you read that correctly, but wait, it gets better. The same judge ordered Apple to pay for ads in various UK media and on Apple's website to correct the impression that Samsung violated Apple's design rights in the iPad.
From what I understand of this ruling, it is about as schizophrenic as any ruling I have ever seen. On the one hand, the court finds that there is no infringement of Apple's design, requires Apple to place ads stating that Samsung's Galaxy tablets do not copy Apple's iPad design, but allows Apple to claim, as an opinion, that Samsung infringed the design of the iPad. Of course, Apple states that it plans to appeal this ruling. It will be interesting to see if the ruling withstands the appeal.
From what I understand of this ruling, it is about as schizophrenic as any ruling I have ever seen. On the one hand, the court finds that there is no infringement of Apple's design, requires Apple to place ads stating that Samsung's Galaxy tablets do not copy Apple's iPad design, but allows Apple to claim, as an opinion, that Samsung infringed the design of the iPad. Of course, Apple states that it plans to appeal this ruling. It will be interesting to see if the ruling withstands the appeal.
Friday, July 6, 2012
Settling with Proview Bought Apple Two New Lawsuits in China
Well, after settling with Proview for its iPad name, Apple appears to have bought two more lawsuits over its intellectual property in China. Thursday, a company named Zhi Zhen Internet Technology sued Apple over Siri. Zhi Zhen alleges that Siri infringes its voice assistant service patents named Ziao i Robot. According to reports, Zhi Zhen applied for its patent in 2004. Apple recently announced adding Mandarin and Cantonese versions of Siri which undoubtedly is what caught Zhi Zhen's attention. Of course, the recent $ 60 million settlement with Proview must have caught Zhi Zhen's eye, as well.
Jiangsu Xuebao is also suing Apple for allegedly infringing its Snow Leopard trademark. Apparently, Jiangsu registered the Chinese equivalent of Snow Leopard in 2000. In 2008, Apple tried to register that same word, but the Chinese trademark authority refused to register that name. Presumably, the denial of registration stemmed from Jiangsu's prior registration. Jiangsu seeks $ 80,000 and an apology. The timing of this lawsuit is curious, indeed.
It seems as if Apple is caught in the Chinese conundrum. It is a huge potential market. It also is ambivalent to intellectual property protection. I am sure there will be more to these stories.
Jiangsu Xuebao is also suing Apple for allegedly infringing its Snow Leopard trademark. Apparently, Jiangsu registered the Chinese equivalent of Snow Leopard in 2000. In 2008, Apple tried to register that same word, but the Chinese trademark authority refused to register that name. Presumably, the denial of registration stemmed from Jiangsu's prior registration. Jiangsu seeks $ 80,000 and an apology. The timing of this lawsuit is curious, indeed.
It seems as if Apple is caught in the Chinese conundrum. It is a huge potential market. It also is ambivalent to intellectual property protection. I am sure there will be more to these stories.
Monday, July 2, 2012
Apple Buys iPad Name from Proview
As I wrote a few months ago, a Chinese Company, Proview Technologies, was the purported owner of the iPad name in China. Well, as suspected, Apple was essentially left with no choice, but to pay to get the iPad name back. According to reports, after a round of mediation, Apple settled its dispute in the Chinese courts by transferring $ 60 million to an account the court designated.
As you may recall with regard to the dispute, Apple thought it had purchased the global rights to the iPad trademark when it bought Proview's parent company. Proview, a financially troubled company, disagreed and embarked upon attempting to secure payment for its mark through several lawsuits. After two years rumbling through the Chinese Courts, Apple finally succumbed. Apple now owns the iPad trademark in China and may continue with its planned expansion into that market.
As you may recall with regard to the dispute, Apple thought it had purchased the global rights to the iPad trademark when it bought Proview's parent company. Proview, a financially troubled company, disagreed and embarked upon attempting to secure payment for its mark through several lawsuits. After two years rumbling through the Chinese Courts, Apple finally succumbed. Apple now owns the iPad trademark in China and may continue with its planned expansion into that market.
Tuesday, June 12, 2012
Regular Joes Are Making an Impact on Patent Litigation and Advertising
Two articles I read recently discussed how companies are saving costs by enlisting people "off the streets" to assist them. The first article discussed how Silicon Valley companies who face exorbitant costs of patent litigation seek the help from the masses to conduct prior art searches.
This is how it works: a company called Article One Partners LLC allows a company like Apple, Microsoft, etc. post a description of the technology for which they are being sued and allowing them to post awards for those who find the prior art. The award is larger the better the prior art. Article One then hires students, techies, and others on a part-time basis to search for the elusive prior art. These people submit photographs, literary references, foreign patents, and other obscure documents which they hope is enough to convince the technology company that it can invalidate the patent being enforced against it.
I was involved in a patent case which cost hundreds of thousands of dollars for the patent validity search alone. I recall the attorney who conducted the search (a very thorough guy) filled a room full of bankers boxes worth of items which could or could not be prior art. Article One Partners puts the search in the hands of amateurs who do not charge the hourly rates of the attorneys. The company's attorneys undoubtedly review the submitted prior art, but utilizing the services of Article One Partners can save a technology company a boatload in attorneys' fees and costs. While Article One Partners services big companies, it could be an invaluable tool for a small startup company facing a patent lawsuit from a huge conglomerate.
The second article discussed a company called Poptent, Inc. which appears to have gathered inspiration from the Doritos Crash the Super Bowl Contest from a few years back. In case you forgot, Doritos held a contest asking amateurs to create and submit a commercial with the best one(s) being shown during the Super Bowl. The winning commercial cost the group of filmmakers who created it $ 12. The cost of using Poptent's stable of students, hobbyists, and film school graduates to create a television commercial costs a company about ten percent of the cost of using a traditional advertising firm. That is a huge savings.
The lesson learned from these articles is that a company should think about utilizing other resources rather than the "traditional" ones which may be outside of that company's budget. In my practice, I am always trying to work with my clients to achieve a quality product that fits within their budget.
This is how it works: a company called Article One Partners LLC allows a company like Apple, Microsoft, etc. post a description of the technology for which they are being sued and allowing them to post awards for those who find the prior art. The award is larger the better the prior art. Article One then hires students, techies, and others on a part-time basis to search for the elusive prior art. These people submit photographs, literary references, foreign patents, and other obscure documents which they hope is enough to convince the technology company that it can invalidate the patent being enforced against it.
I was involved in a patent case which cost hundreds of thousands of dollars for the patent validity search alone. I recall the attorney who conducted the search (a very thorough guy) filled a room full of bankers boxes worth of items which could or could not be prior art. Article One Partners puts the search in the hands of amateurs who do not charge the hourly rates of the attorneys. The company's attorneys undoubtedly review the submitted prior art, but utilizing the services of Article One Partners can save a technology company a boatload in attorneys' fees and costs. While Article One Partners services big companies, it could be an invaluable tool for a small startup company facing a patent lawsuit from a huge conglomerate.
The second article discussed a company called Poptent, Inc. which appears to have gathered inspiration from the Doritos Crash the Super Bowl Contest from a few years back. In case you forgot, Doritos held a contest asking amateurs to create and submit a commercial with the best one(s) being shown during the Super Bowl. The winning commercial cost the group of filmmakers who created it $ 12. The cost of using Poptent's stable of students, hobbyists, and film school graduates to create a television commercial costs a company about ten percent of the cost of using a traditional advertising firm. That is a huge savings.
The lesson learned from these articles is that a company should think about utilizing other resources rather than the "traditional" ones which may be outside of that company's budget. In my practice, I am always trying to work with my clients to achieve a quality product that fits within their budget.
Friday, June 8, 2012
Ford Mortgaged Its Logo and Got It Back
In 2006, Ford sought to borrow money to restructure and streamline its operations. In order to do so, Ford secured the loan with most of its assets, including its trademarks. This move by Ford let it survive the downturn in 2008 and 2009 without filing for bankruptcy or seeking a federal bailout.
In order for Ford to get its trademarks back, it needed two companies to upgrade its credit. Fitch Ratings upgraded Ford's credit rating in April. Moody's Investors upgraded Ford's credit rating at the end of last month. Apparently, these two companies were impressed enough with Ford's efforts and turnaround to make it possible for Ford to regain its assets.
As we become more brand driven, it is no wonder that Ford's trademarks were collateral for a hefty loan which ultimately saved the company from the economic disaster that was 2008-2009. Even a small company may think about using its intellectual property for collateral in order to get funds to help it grow.
In fact, I represented some Angel Investors once who sought the patent of the company in which they invested when they discovered that the company had not been entirely forthcoming with information during the investor meetings (pitches). They all specifically stated that they invested their money based on the technology of the patent. Of course, this was pretty much the only asset of the company, but it is just more proof that a company should really think about leveraging its intellectual property to its advantage.
In order for Ford to get its trademarks back, it needed two companies to upgrade its credit. Fitch Ratings upgraded Ford's credit rating in April. Moody's Investors upgraded Ford's credit rating at the end of last month. Apparently, these two companies were impressed enough with Ford's efforts and turnaround to make it possible for Ford to regain its assets.
As we become more brand driven, it is no wonder that Ford's trademarks were collateral for a hefty loan which ultimately saved the company from the economic disaster that was 2008-2009. Even a small company may think about using its intellectual property for collateral in order to get funds to help it grow.
In fact, I represented some Angel Investors once who sought the patent of the company in which they invested when they discovered that the company had not been entirely forthcoming with information during the investor meetings (pitches). They all specifically stated that they invested their money based on the technology of the patent. Of course, this was pretty much the only asset of the company, but it is just more proof that a company should really think about leveraging its intellectual property to its advantage.
Tuesday, June 5, 2012
Served Via Facebook
I just came across an older article that discussed Flo Rida being served with a lawsuit by way of a post on his Facebook wall. Normally, when a plaintiff cannot find a defendant, s/he can seek an order from the court to serve that person by publication. I am sure you have seen the publications in your local newspaper--assuming you still read an actual newspaper (ahh, there is nothing like the black ink left on your fingers from actually turning pages rather than flicking a screen).
Now, in this case, an Australian judge allowed the plaintiff to serve Flo Rida by Facebook. Apparently, this is not an uncommon occurrence in Australia. I am unaware of service by Facebook in the United States, but who knows, maybe it is on its way. So, the next time you check your Facebook account, be careful because you just may get served.
Now, in this case, an Australian judge allowed the plaintiff to serve Flo Rida by Facebook. Apparently, this is not an uncommon occurrence in Australia. I am unaware of service by Facebook in the United States, but who knows, maybe it is on its way. So, the next time you check your Facebook account, be careful because you just may get served.
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