Yankee Inventor: Eli Whitney

The Huffington Post has a listing of “9 Innovative Museums Your Kids Will Love.”  This summer, inspire your kids with a love for invention, innovation, and industry by including one of these in your vacation plans.

One of the museums, in Connecticut, is dedicated to one of the great inventors of American history.  Eli Whitney’s life and story contain many lessons that need remembering today.  Rightfully considered a father of “American Technology,” his achievements and name are fading from our consciousness.  One wonders whether, on a Cash Cab “Red-Light Challenge,” he would be mentioned alongside Thomas Edison, Henry Ford, the Wright Brothers, and Steve Jobs (!).

Whitney had an innate aptitude – a genius — with anything mechanical.  By employing his creative gifts to solve a problem in local agriculture, he transformed cotton into a major cash crop.  He later advanced the value of interchangeable parts, especially in terms of military armaments. 

Whitney had trouble with the Patent Office and failed to capitalize fully on the value of his invention.  He was plagued with unauthorized copies of his cotton gin and mill machinery, which made fortunes for others.  Despite these problems, in his business affairs, he recognized the value of surrounding oneself with capable people.  An inventor needs protection for his or her ideas, but also needs a team to bring them into the real world.

Are you creative?  An inventor?  The world of intellectual property is complicated. Make competent, experienced patent attorneys an integral part of your team.  They may save you millions.

Posted in Patent Law |

Phoenix Hockey Team Trademark Flap

An Arizona man has registered a number of trade names with the state of Arizona, including Phx Suns, Phx Cardinals, AZ Diamondbacks, and … Arizona Coyotes.  The problem is that the Phoenix Coyotes hockey team (yes, there is ice hockey in Phoenix) recently announced their name change to Arizona Coyotes – a team name for which (it turns out) they do not hold the trademark. 

Original Article in AZCentral (with video)

This same man had registered the name “Phoenix Open” with the Arizona Secretary of State, but dropped it when sued by the sponsors of the tournament.  Sued?  It turns out that under the law, it’s not as simple as just beating someone to registration and then forcing them to negotiate.  The courts also look at your association with the trade name (in this case, apparently no association) and the likelihood that consumers would be confused.  These kinds of matters get litigated.

There can be legitimate conflicting claims on a trade name, and they are sometimes subtle and difficult to sort out.  The smaller party is not necessarily trying to exploit the larger – that’s not the only narrative that fits these facts.  But before you plan your business around trade names, get the advice of a good IP law firm.

Posted in Trademarks |

Arizona Participation in Electric Car Manufacturing?

Southwestern states are vying to become the location for the $5 billion Tesla “gigafactory,”  now that it has been reported that California has been eliminated as a potential site.  Nevada, New Mexico and Arizona are often cited as leading candidates, with the cities of Mesa and Tucson having already made formal proposals.

According to this article, a new Arizona company’s offer to supply domestically-sourced Manganese and other metals may help tip the scales in Arizona’s favor. The major cost driver for electric cars is the battery. which requires lithium and an array of other metals to manufacture.  As of 2011, 97% of these metals were sourced from China, mostly for cost reasons.  Obviously, that’s not a strong starting point for the future of clean American transportation.

The Arizona mining company, American Manganese Inc., has received a patent for its manganese refining process, and is reported to be able to deliver the metals at significantly lower cost than the imported alternative sources.  In addition, their process uses much less energy and has a greener footprint, overall.

Posted in Arizona Patent News |

Arizona Independent Inventor Chimes in on the Innovation Act

Arizona inventor Karren Moreland wrote an opinion piece in the Arizona Republic, explaining her opposition to the proposed “Innovation Act” that would change US Patent Law.  She expresses her concern that changes intended to cripple “patent trolls” would disadvantage the independent inventor in America.  New requirements would pose higher hurdles for those filing patent-infringement lawsuits.  Bigger corporate players would be able to clear the hurdles, but the small inventor would not have the resources or financial staying power to do so.  She says this would tilt the playing field to the advantage of bigger entities.

There has always been tension between large and small inventors.  It is not easy to balance their interests.   Entrepreneur.com ran an article recently that surveys the issues, and citing Walt Disney Studios, Apple, and many other “garage inventor” startups.  The issues at stake are nothing less than “American Innovation” which is so central to our self-image.   This author sees the new effort to “harmonize” our patent laws with other patent systems around the world, as wrong-headed and dangerous.

More than ever before, the small inventor needs the guidance of experienced legal counsel, in order to protect his or her legitimate interest in his own creation and property.

Posted in Patent Law |

Application to Trademark “Candy” Removed by King Digital Entertainment

Certain circles within the video game market have been lit on fire in recent months, when it became known that King Digital Entertainment was attempting to trademark the words “Candy” and “Saga,” and already aggressively pursuing legal action against other developers.
King Digital, the developers of the massively-popular Candy Crush games, filed its initial trademark application a month ago, and as soon as the United States Patent and Trademark Office (USPTO) received their application, they began sending notices to any other developer who had a game that used either the word “candy” or “saga,” including popular new indie title “The Banner Saga.”
The backlash against King was almost immediate. Forums were filled with users crying “patent troll,” but King was quick to release a statement saying that they were merely attempting to protect their brand name in the future. One group of internet users even formed a website called The Candy Jam, which was specifically created to coerce other developers into creating new games using the words “Candy” as well as “Saga”.
King removed their application for trademark earlier this week, and released the following statement: “King has withdrawn its trademark application for Candy in the U.S., which we applied for in February 2013 before we acquired the early rights to Candy Crusher. Each market that King operates in is different with regard to IP. We feel that having the rights to Candy Crusher is the best option for protecting Candy Crush in the U.S. market. This does not affect our E.U. trademark for Candy and we continue to take all appropriate steps to protect our IP.”
It is unknown why exactly King has removed their application, but with their upcoming IPO, currently valued at $500 million, many people are suspecting that they did it as a form of damage control after seeing the internet backlash against them. Either way, this case helps to outline how murky and complicated matters of trademark can be.

Posted in Trademarks |

Former Employee Pleads Guilty to Stealing Trade Secrets

From the Rubber Industry comes this cautionary tale:  a former employee of Wacker Chemical Corp. (Adrian, Michigan) has pleaded guilty to passing formulas from his former employer to his new one, South Korea’s KCC Silicones.  He was sentenced to 24 months in prison.

This employee, a manager, had earlier been disciplined in 1994 for giving chemical samples to plant visitors, in violation of company policy.

13 years after leaving Wacker, the employee was a senior scientist at Laur Silicone.  He resigned, saying he was going to consult with KCC Silicones.  Laur found evidence of the stolen Wacker formulas in a search of his email, and alerted Wacker (and the FBI) in 2011.

In a statement, Wacker said of its intellectual property, “We will take the appropriate and necessary steps to vigorously defend it from being compromised, either through internal or external sources, and will do so in complete accordance with Wacker corporate policy within the letter and spirit of the law,” the firm said. “We are pleased there has been a just and lawful conclusion to this case.”

The FBI says that KCC Silicones received the first Wacker formula from this employee while he was negotiating for a job with them.  How smart is it to hire someone who is bringing stolen secrets, in violation of the law?  How much trust could one expect from his new employer, if one got the job based on the value of stolen processes?

Posted in Uncategorized |

What Exactly is a Patent Troll?

When people hear the word “troll,” they often think of either fantasy books/movies, or someone who goes out of their way to annoy others online. There is a far worse type of troll, however, and that is a patent troll.

A recently coined term, “patent troll” is most often used to refer to an entity that only exists to file patent lawsuits against other companies.

The unfortunate truth is that, while large companies are often the subject of much hatred and derision, whenever a smaller company files a valid patent claim against a larger one, the small company will usually be vilified in the media as a patent troll. This is regardless of whether the patent in question is frivolous, or if it is for groundbreaking technology.

The major problem is that large companies usually don’t have any problem paying out small claims, but they will often fight any way they can to avoid paying out large claims.

The history of patent trolls is often seen to have started 10 years ago, in the case of NTP v. RIM. In that case, a massive settlement was awarded towards NTP, which at the time was miniscule compared to RIM (famous for Blackberry devices), and NTP was classified a patent troll by the media.

In that case, however, things were nowhere close to black-and-white. The lawsuit was filed against RIM, which was so sure that they would win the case that they refused to stop utilizing the patent in question. RIM believed that they weren’t liable under US patent law because their process, which included the patent owned by NTP, partially occurred outside United States borders.

The courts disagreed, and as a result of RIM’s continued use up until the last minute, NTP was awarded an unprecedentedly massive settlement. NTP was vilified in the media as a patent troll, and the rest is history.

The patent system was originally instituted in order to protect individuals and foster invention. While it is always possible that the system will be abused, there is always more to the story than first meets the eye, and it is always worth investigating.

Posted in Patent Law |

Thieves in the Night Are Out to Steal Your Patent Rights and the getaway car will be driven by your Representative!

The House quickly and with little debate or discussion passed the (Anti)Innovation Act (H.R. 3309) by a vote of 325-91. The legislation will be considered by the Senate in January.

The legislation is touted as “Anti-Troll” but will only shift risks and costs to small businesses and independent inventors, which are already at a significant disadvantage against multinational corporations who either refuse to take licenses from legitimate patents or who themselves are engaging in troll-behavior. As said by Congressman Dana Rohrabacher (R-CA) prior to passage;

    The clear message to little inventors: give thanks for your intellectual property rights, because you may not have them by this time next year.”

You can find out if your representative sold you out here: https://www.govtrack.us/congress/votes/113-2013/h629. And, you can contact your senator to try and derail this legislation here: http://www.senate.gov/general/contact_information/senators_cfm.cfm

Posted in Uncategorized |

New IP Awareness Assessment Tool from the U.S. Patent Office

The U.S. Patent Office has released a Beta IP Awareness Assessment Tool. The tool asks questions and determines potential intellectual property needs based on responses. See: http://www.uspto.gov/inventors/assessment/index.html.

Posted in Copyright, Entrepreneur, Patent Law, Trademarks, Uncategorized |

Lawsuit Filed to Cancel Copyright for “Happy Birthday to You”

For many, many years – over a hundred years, perhaps – a song sung millions of times on birthdays around this country is “Happy Birthday to You”. Just last week, the copyright for this song came under fire in federal court.

Filmmaker Jennifer Nelson filed a lawsuit to cancel the copyright of the noted birthday song in a Manhattan federal court last week seeking to place the song in the public domain and also seeking to force the company that holds the copyright, Warner/Chappell Music, to pay back licensing fees for the past four years.

Nelson was working on a documentary of the origins of the birthday song, when she was charged a $1,500 licensing fee by Warner/Chappell for including the song in her documentary.

Happy Birthday

Surprised not only by the fee, but that the song was actually copyrighted, Nelson began researching the origins of the song. In her research, Nelson discovered the song was actually written by a pair of sisters, Mildred and Patty Hill, in 1893 for kindergarteners, although it was then entitled, “Good Morning to You”. According to Nelson, the song slowly changed over time into the song we all know today – “Happy Birthday to You”.

“Happy Birthday to You” was sung throughout the 1920’s and 1930’s, but the piano version used today was not copyrighted until 1935. Birchtree Ltd. previously held the copyright to the song, but Warner/Chappell purchased the company in 1988 and, thus, obtained the copyright to the song. Warner/Chappell is a subsidiary of Warner Music Group.

Warner/Chappell does agree the song has been in use for over one hundred years, but claims the current copyright is just for the piano arrangement composed in 1935, and also claims its copyright on the song is valid until 2030 since, according to copyright laws in the 1930’s, copyrights were valid for ninety-five years.

Nelson, however, disagrees with Warner/Chappell alleging their version of the birthday song is no different from the earlier version and therefore the copyright would have expired by now.

Nelson is seeking a class-action status for her lawsuit and estimates that Warner/Chappell has collected up to $2 million per year in licensing fees for “Happy Birthday to You”. The plaintiff also wants the return of the licensing rights Warner/Chappell has collected, rights that could be worth a potential $50 million.

Posted in Uncategorized |