Protect Your Intellectual Property: Use Care With Consultants

Unless your consulting agreements explicitly require your consultants to assign their inventions to you, they have no obligation to do so, and your competitors could end up owning your intellectual property. Read the article (PDF) for details. For more information, please contact the Intellectual Property and Technology Practice Group at Lane Powell: 206.223.7000 Seattle 503.778.2100 [...]

Ten Things You Should Know About Patent Reform

The America Invents Act H.R.1249, passed the Senate on September 8, 2011, by an overwhelming vote of 89-9. It is long and complex, and will create significant changes to the U.S. patent system, which will have a wide ranging impact on both U.S. and foreign businesses. President Obama is expected to sign the bill into law as part of his recently announced job-creation initiative.

.Brand: New TLDs Are Coming — Are You Ready?

The Board of the Internet Corporation for Assigned Names and Numbers (“ICANN”) recently approved a plan to expand the availability of top-level domains (“TLDs”), enabling creative new TLDs, including private brands (e.g., .canon), communities (e.g., .catholic) and locations (e.g., .chicago). The TLD is the portion of a domain name to the right of the dot.

.Brand: New TLDs Are Coming — Are You Ready?

You have probably heard the buzz, but it is now official. The Internet is growing and brand owners should be aware of the coming changes.

On June 20, 2011, the Board of the Internet Corporation for Assigned Names and Numbers (“ICANN”) approved a recommendation to expand the number of top-level domains (“TLDs”). The TLD is the portion of a domain name to the right of the dot. The new program will enable an unlimited number of TLDs, including private brands (e.g., .canon) and those that serve specific communities (e.g., .catholic) or geographies (e.g., .chicago). This new program will open up the Internet to allow creative new uses by industries, communities and brand owners.

How to Protect Your Brand From Incursion by Adult Entertainment Sites

While it may seem that your business is at capacity dealing with .com, .net, .org, and all the other Web suffixes (also known as “top-level domains”) that are already out there, this year a new Web suffix will be introduced — .xxx, which will be targeted at the adult entertainment industry. In addition to other general concerns about content on the Internet, .xxx brings with it more concerns for brand owners protecting their intellectual property online.

Winters and Kohl Author Article in Advertising Age About Sweepstakes, Contests and the Law

Lane Powell Attorneys Steve Winters and JoAnn Kohl authored an article in the March 7 issue of Advertising Age titled “Keep Your Online Sweepstakes and Contests on the Right Side of the Law: From ‘No Purchase Necessary’ to Age-Eligibility Issues, Here’s a Primer to Two Key Trends Many Are Overlooking.” In the article, Winters and Kohl discuss trends they have seen amid the significant increase in the use of Internet contests and sweepstakes to promote business.

Perchance to Dream … Or Not — How Pharmaceutical Companies Market Sleep Through Branding

Back in the 1960s, counting sheep gave way to a lilting commercial ditty as a means for solving the age-old problem of falling asleep: “Take Sominex tonight and sleep, safe and restful sleep, sleep, sleep.” If you took two Sominex, you were guaranteed “100% safe sleep.”

The Taste of Patentable Innovations — What Happens When Scientific Research Enters the Kitchen?

Most chefs would never think of downloading recipes from the United States Patent and Trademark Office patent database. To quote a Martha Stewart catchphrase, that’s probably “a good thing.” Patentese can collide mightily with the common sense of cooking, as the Chef America v. Lamb-Wesson case demonstrated. That 2004 case involved a dough-producing process, which included a step of “heating the resulting batter-coated dough to a temperature in the range of 400° F to 850° F for a period of time ranging from 10 seconds to 5 minutes” to first set the batter and melt the shortening flakes.

Legal Considerations for Internet Advertising Targeting U.S. Customers

The Internet is connecting workers, markets, advertisers and contractors from all around the world. We are on Skype, Twitter, LinkedIn and Facebook nearly every day visiting with clients and friends worldwide. One of the most recent trends is the increase in microtargeted electronic advertising by both domestic and international organizations. For example, one can microtarget a particular demographic in a specific geographic region using ads through Google and Facebook. With this new form of electronic globalization comes a fresh set of legal issues to be considered.

Twin Challenges in Drafting a Viable Patent Legal Malpractice Complaint

Drafting a short and plain statement of a patent legal malpractice claim used to be a relatively straightforward matter under the now discredited Conley v. Gibson “no set of facts” standard. That pleading landscape dramatically changed in 2007.

In the wake of the Supreme Court’s Twombly and Iqbal decisions, federal court judges are now routinely called upon to apply their judicial experience and common sense in determining whether patent infringement complaint allegations cross a line separating merely “conceivable” claims from actually “plausible” ones.

Rules of the Road for Advertising and Marketing on the Internet

The Internet is connecting workers, markets, advertisers and contractors from all around the world. People are on Skype, Twitter, LinkedIn or Facebook nearly every day visiting with clients and friends worldwide. As you might imagine, a fresh set of legal issues comes with this electronic globalization. With respect to advertising and marketing on the Internet, keep in mind that many of the same rules that apply to non-Internet advertising apply also to Internet marketing. So, the Federal Trade Commission (“FTC”) Act’s prohibition on “unfair or deceptive acts or practices” encompasses Internet advertising, marketing and sales.

Rules for Internet Advertising, Marketing

The Internet is connecting workers, markets, advertisers and contractors from all around the world. Personally, I am on Skype, Twitter, LinkedIn and Facebook nearly every day visiting with clients and friends worldwide. What I find most interesting is the increase in microtargeted electronic advertising by both domestic and international organizations. As you can imagine, a fresh set of legal issues comes with this electronic globalization.

View full article (PDF).

This article appeared in the September 2009 issue of Oregon Business magazine.

The Peach and the Fuzz — Navigating the Tortuous Path of Intellectual Property Rights

Even the smartest business people can be confounded by the ownership rules governing intellectual property, IP, in the United States.  And with good reason: the controlling statutes give courts wide discretion to interpret the legal principles at play.  To begin to understand how these principles might apply to you and your company, here are a few fundamental tenets and rules of thumb to kick-start your thinking. View full article (PDF).

This article appeared in Seattle Business magazine.

Act Now to Protect Your Brand Name on Facebook.com

Facebook, Inc., the social networking website company responsible for Facebook.com, announced this week that beginning Saturday, June 13, at 12:01 a.m. U.S. EDT, Facebook users will be allowed to created personalized usernames for use on Facebook.

Without immediate action by brand owners, Facebook users can choose any term, including a third party’s brand name, as their Facebook username.

View full article (PDF).

Beware of liability tripwires when designing a Web site

Many businesses operate under the mistaken assumption of a wide-open Internet, in which they can copy and link on Web sites without repercussion. View full article (PDF).

This article first appeared in the Portland Business Journal.

Copyright Case Law Update: 2007

A summary of eight copyright law cases. View full article (PDF).

Culture Clash – (Legal Intersections Between Proprietary and Open Source Software)

From the early 1980s a cultural divide developed in the software community between proponents of proprietary software and advocates of free or open source software. The reasons for this separation of views are many. They include political, philosophical, economic, technical and many other factors. Over time the various camps have learned to co-exist on a number of levels. The actual number of legal disputes centred on these very different approaches to software development and use has been far less than one might have expected. Still the functional aspects of these two distinct approaches to software development have and will continue to result in differences likely to be addressed through developments in intellectual property law. To discuss some of these developments past and future we need a common context. View full article (PDF).

A Commitment to Diversity

For many years, Lane Powell has had policies to further diversity within the firm and in the profession. In early 2003, the firm re-invigorated its Diversity Committee, which designs and implements programs and strategies that promote an inclusive work environment and encourage the success of all employees by focusing on promoting diversity in our communities and in the legal profession. View full article (PDF).

This article first appeared in the Multnomah Lawyer.

Knowing IP ground rules: Unlocking a portfolio’s value

No business survives long without close attention to operations, revenue and expense, but another sound way to make a good business great is to create real value in its intellectual property and minimize IP risk. View full article (PDF).

This article first appeared in the Portland Business Journal.

Advertising Brand Names Used in Your Building Project: How to Avoid Trademark Infringement

Every building project has several components: the land, the labor, and perhaps most importantly, the products used. Purchasers may be drawn to your project because of the quality of the products used to build and furbish it.  Every product used in a building project likely has an associated brand name, slogan, or logo that is trademarked by its manufacturer.  It is common to want to use these trademarked products to advertise the quality of your project as a whole.  Could advertising for your building project raise trademark infringement issues?  View full article (PDF).

This article first appeared in BUILDERnews Magazine.

Technology Law Practice

Lane Powell’s Technology Law team provides a broad range of services to our international and domestic clients on matters relating to technology. Our experienced technology lawyers are able to assist with technology-related transactions, as well as disputes involving intellectual property ownership or licensing arrangements. Lane Powell represents clients in a wide range of technology sectors, including software, entertainment, media, hardware, computers and components, Internet and e-commerce, and life sciences. We work with companies at all phases of development, from seed stage businesses to Fortune 500 corporations. We also represent inventors, research facilities and universities, lenders, and investors in the technology sector. View full article (PDF).

GPL Version 3 — Overview of Proposed Changes

On January 16, 2006, the Free Software Foundation (“FSF”) released Discussion Draft 1 of Version 3 of the GNU General Public License (“GPL”), the first proposed changes to the main open source license in 15 years. Once adopted, the changes to the GPL will impact both developers and users of open source software. View full article (PDF).

Procedure to Address Changes to Main Open Source License Announced

On November 30, 2005, the Free Software Foundation released the GPL3 Process Definition, which outlines procedures for public comment on the proposed revisions to the GNU General Public License (“GPL”). The GPL is the governing license for the vast majority of open source software projects, including the Linux operating system and thousands of software programs that include database and Web site content management and super computing programs. The GPL also governs a large amount of embedded software that runs everything from cell phones to PDAs. View full article (PDF).

Proposed Legislation Would Radically Change Current Patent Law

The newly introduced Patent Reform Act of 2005 proposes many changes on the horizon in patent law. The Act has many major provisions that will tighten the law, and this article will address a few of those changes. View full article (PDF).

Court of Appeals Rejects Reporters’ Bid to Keep Sources Confidential

Efforts to gain federal recognition for a reporter’s privilege against disclosing confidential sources were dealt a serious blow last week when an influential federal appeals court rejected any basis for one. The District of Columbia Circuit Court of Appeals decision in In re Grand Jury Subpoena upheld a trial court judge’s rulings finding two reporters in contempt for their refusal to appear before a grand jury. View full article (PDF).

New California Law Requires Websites to Post Privacy Policies

Beginning July 1, 2004, all operators of commercial websites and providers of online services which collect personally identifiable information from California consumers must post a privacy policy. The new California Online Privacy Protection Act of 2003 (“OPPA”) applies to any person or company that operates a website, even if that company is not located in California. Thus, the law applies throughout the United States, and perhaps the world. View full article (PDF).

Internet Trademark Disputes Shift to Keyword Advertising

Commercial use of the Internet has spawned a plethora of lawsuits over protection and enforcement of intellectual property – particularly trademark and copyright disputes. In the early 1990s, trademark disputes centered on the use of trademarks in metatags, linking and framing. While the results of cases were mixed, courts followed traditional trademark principles and allowed the use of a trademark for comparison purposes or as a descriptive term, but did not permit use of another ‘s mark where the intent was to profit from the goodwill in another’s mark. View full article (PDF).

Supreme Court Issues Long Awaited Festo Decision

On May 28, 2002, the U.S. Supreme Court issued its long awaited decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushih Co., Ltd. This decision has broad practical implications for the interpretation of patent claims and determination of the scope of patent protection in both litigation and non-litigation contexts. For potential infringers the Court was, like Rinaldi, a “disappointing audience.” View full article (PDF).

On Your Mark: Common Myths About Trademarks and Business Names – Trademark Basics and Federal Registration

This article defines a trademark, explains what trademark rights are and how they are acquired, and outlines the benefits of federal trademark registration. It discusses standards for determining whether a mark is protectible and enforceable or whether the mark conflicts with another mark. This article was presented as part of a Lane Powell seminar on June 12, 2002. View full article (PDF).

Internet Copyright Case Finds

In a further application of copyright law to the Internet, a federal court of appeals recently ruled in Kelly v. Arriba Soft Corp. that the “visual” Internet search engine Ditto.com infringed a photographer’s copyrights by linking to and framing full-sized copies of his images. Nevertheless, applying the “fair use” exception to copyright infringement, the court ruled that the display of small “thumbnail” size copies of the images without permission was not infringing. View full article (PDF).

Registration for New Dot-Info Domains Begins – Dot-Biz Trademark Claims Period Ends August 6th

Businesses, especially those with trademarks or service marks, should note the coming deadlines related to the new dot-info (.info) and dot-biz (.biz) top-level Internet domains (TLDs). Trademark owners should take immediate action to protect their rights in these new TLDs. Both new TLDs may enable companies to expand their Internet presence and obtain names that may be unavailable as “dot-coms.” View full article (PDF).

Washington Supreme Court Holds That Washington’s Anti-Spam Laws Pass Constitutional Muster

On June 7, 2001, the Supreme Court of the State of Washington held that Washington’s Commercial Electronic Mail Act (the “Act”), which prohibits misrepresentations in the subject line or transmission path of commercial e-mail messages, did not violate the dormant commerce clause of the United States Constitution. View full article (PDF).

Trademark Claims for New Dot-Biz Domains Now Being Accepted

Trademark owners should take note of an urgent and important action item. The much-anticipated dot-biz (.biz) top-level Internet domain (TLD) is rolling out now. Dot-biz will be restricted to commercial and business users. The dot-biz TLD should enable companies to expand their Internet presence and to obtain names that are unavailable as “dot-coms.” It also promises to give rise to new trademark conflicts. View full article (PDF).

Developments in Trademark Law 2000-2001

Trademark law has evolved dramatically in recent years. Courts continue to struggle to define the proper boundaries of trademark protection; i.e., what is a trademark? There have been significant developments in the protection of product and package designs; i.e., trade dress. View full article (PDF).

Federal District Court Bars Publication of Sequel to Gone With The Wind

A federal district court in Atlanta recently barred the publication and distribution of a book called The Wind Done Gone, on the ground that it was an unauthorized sequel to Gone With The Wind, and not a legitimate parody. Suntrust Bank v. Houghton Mifflin Co. (N.D. Ga., April 20, 2001). While the opinion itself does not create new copyright law, the dispute raises interesting questions about how to draw the line between parody and piracy. View full article (PDF).

Avoiding Privacy Litigation

This material was presented as part of “Breakfast with Insights,” a seminar series produced by Lane Powell. View full article (PDF).

Business Method Patents and Their Impacts

This material was presented as part of “Intellectual Property, Internet and E-Commerce Law Seminar,” an event sponsored by Lane Powell. View full article (PDF).

Trade Secrets

This material was presented as part of “Intellectual Property, Internet and E-Commerce Law Seminar,” an event sponsored by Lane Powell. View full article (PDF).

Liability for Breach of E-Commerce Security Standards

This material was presented as part of “Intellectual Property, Internet and E-Commerce Law Seminar,” an event sponsored by Lane Powell. View full article (PDF). View full article (PDF).

The New Wave of Internet Privacy Litigation

This material was presented as part of “Intellectual Property, Internet and E-Commerce Law Seminar,” an event sponsored by Lane Powell. View full article (PDF).

Supreme Court Clarifies Effect of Utility Patent on Trade Dress Claim

On Tuesday, March 20, 2001, the United States Supreme Court issued a decision on the impact of a utility patent on trade dress protection for a product design. The Supreme Court reviewed TrafFix Devices, Inc. v. Marketing Displays, Inc., to resolve whether an expired utility patent for a product bars trade dress protection for the product’s design. While not establishing a clear rule, the Supreme Court raised the bar to trade dress protection for any product feature ever covered by a utility patent. View full article (PDF).

Appeals Court Says First Ruling Against Napster Was Too Broad

Last Monday, the Ninth Circuit Court of Appeals held that the record industry is likely to succeed in its copyright claims against Napster, Inc. In light of unclear and sometimes inaccurate news reports about the decision, we would like to clarify it for our friends. View full article (PDF).

How to Protect Your Great Ideas During Business Negotiations

This material was presented as part of “Breakfast with Insights (Seattle): Copyrights and Copywrongs,” a seminar produced by Lane Powell. View full article (PDF).

Competing For Talent And Protecting Business Value: Non-Compete Agreements And Trade Secret Law In Washington

Non-compete agreements are well established and enforceable under Washington law. Some states, like California, enforce non-competition covenants involving the sale of a business or segment but not similar covenants between an employer and employee, because the employee’s “right to work” eclipses the employer’s interest in protecting its business value. View full article (PDF).

Trade Secrecy and Non-Competition Covenants in Washington

American businesses have witnessed an explosion in non-competition and trade secret disputes in the employment arena. View full article (PDF).

Trade Dress Litigation presented to the Oregon Law Institute

The authors discuss current trends in the law relating to trade dress rights including issues such as inherent distinctiveness, secondary meaning, and likelihood of confusion. Particular focus is on issues of functionality, aesthetic functionality and the interplay between patents and tradedress rights. View full article (PDF).