True Alternative Dispute Resolution

According to the Tampa Tribune, U.S. District Judge Gregory Presnell, of Orlando, upset with litigation proceedings in a particular suit, signed an order earlier this month scolding two lawyers for their inability to agree on a location in Hillsborough County Florida where they can take the sworn statement of a witness in the litigation. To resolve the squabble between the petulant duo, judge Presnell issued the following order:


AVISTA MANAGEMENT, INC., d/b/a Avista Plex, Inc.,

Plaintiff,

-vs-

WAUSAU UNDERWRITERS INSURANCE COMPANY,

Defendant.

______________________________________

ORDER

This matter comes before the Court on Plaintiff's Motion to designate location of a Rule 30(b)(6) deposition (Doc. 105). Upon consideration of the Motion – the latest in a series of Gordian knots that the parties have been unable to untangle without enlisting the assistance of the federal courts – it is

ORDERED that said Motion is DENIED. Instead, the Court will fashion a new form of alternative dispute resolution, to wit: at 4:00 P.M. on Friday, June 30, 2006, counsel shall convene at a neutral site agreeable to both parties. If counsel cannot agree on a neutral site, they shall meet on the front steps of the Sam M. Gibbons U.S. Courthouse, 801 North Florida Ave., Tampa, Florida 33602. Each lawyer shall be entitled to be accompanied by one paralegal who shall act as an attendant and witness. At that time and location, counsel shall engage in one (1) game of "rock, paper, scissors." The winner of this engagement shall be entitled to select the location for the 30(b)(6) deposition to be held somewhere in Hillsborough County during the period July 11-12, 2006. If either party disputes the outcome of this engagement, an appeal may be filed and a hearing will be held at 8:30 A.M. on Friday, July 7, 2006 before the undersigned in Courtroom 3, George C. Young United States Courthouse and Federal Building, 80 North Hughey Avenue, Orlando, Florida 32801.

DONE and ORDERED in Chambers, Orlando, Florida on June 6, 2006.

You Are a Threat to Copyright Commons

The word "commons" engenders co-operation, communication, working with other's priorities in mind, and, most importantly an underlying understanding. The creative commons project started by Microsoft slayer Professor Lawrence Lessig is an ideal whereby everyone shares in a copyright. Anyone can build upon creative commons and use it, but you cannot try to remove it from the public domain. In the world of software, sharing and building software in "common" requires at least a basic level of technical know-how. It is obviously easier to buy a computer program or DVD off the shelf than learn how to use these technologies in a more altruistic manner.

To make software palpable to the masses, companies like Microsoft make the programs very easy to use and bundle them with hundreds of features. Although it might be more efficient for the user to tailor the software to only use the features the user needs, individually tailoring hundreds of features for millions of users is not more efficient for Microsoft. What would be efficient would be for the user to tailor the software. If the user were willing to take this initiative, the user would be able to use hundreds of free programs in the creative commons, and tailor these programs for their most efficient use.

Most importantly, the user could improve the program and add the improvements to the creative commons. If millions of users all joined forces, the software options would be virtually unlimited. Unfortunately, this would require the user to understand at least the most rudimentary basis of software. Most consumers would rather pay hundreds of dollars for software than spend a few hours learning how to adapt free software in the creative commons to do the same thing. Not only are these people hurting themselves, but they drain valuable traction from the creative commons by eliminating their input from the process.

In an effort to make it easier for people to add to the creative commons, unlikely bedmates, Microsoft and Lawrence Lessig have teamed up. The two are supporting a Microsoft software program you can use to add a creative commons license to your Microsoft Office documents. Do your part. Learn enough to contribute the creative commons. The world will be a better place.

Cheaper ain't always better . . . or even cheaper

The Times Union has posted a story on the hundreds of millions of dollars inventors lose to invention promotion companies every year. Individual inventors can lose tens of thousands of dollars to an invention promotion scheme. Lured by low initial cost and the potential of high rewards, inventors find out too late that the invention promotion company was in it for the nickels and dimes the whole time, and never had any plan to make the invention a success. How do you avoid such hucksters? Ask yourself these questions:

Is the company in a state like Iowa that strongly regulates these organizations?
What percentage of the clients working with this company make more than they paid in?
Will you be working with a registered patent attorney?

Be sure to get the answers in writing. If the answers are not satisfactory, you may be well advised to hire a patent attorney and do the promotion on your own.

Mapping a Growth Strategy for Your Industry

Jeff Bradford gave a terrific talk last night on determining how best to grow your business. The presentation began with entrepreneurs from the Greater Des Moines area each giving a brief presentation on their own businesses. Greater Des Moines Partnership affiliate Greater Des Moines Young Professionals Connection sponsored the event and Tom Steen of Transition Capital Management hosted. Resident Des Moines blog guru Mike Sansone of Converstations live blogged the event through Iowa Biz Events. You might want to add Iowa Biz Events to your RSS aggregator to stay abreast of upcoming professional resource events.

Plagiarism and Copyright Infringment

What is the difference between plagiarism and copyright infringment? Plagiarism is presenting someone else’s work as your own. Copyright is the author’s right to reproduce an original work of authorship. Plagiarism is enforced by schools and academics; Copyright is enforced by courts. While copying The Da Vinci Code and publishing the copy as your own, would be both plagiarism and Copyright infringement, the two do not always overlap.

For instance, if you copied the Bible and presented it as your own, that would be plagiarism, since it involves claiming credit for something you did not do. This might get you kicked out of school, but would not constitute illegal copyright infringement, since there is no copyright on the Bible. Conversely, incorporating large, properly cited, excerpts from The Da Vinci Code in your own novel, would likely not constitute plagiarism, since you are not claiming the work as your own, but could constitute copyright infringement, since you are reproducing the copyrighted work without permission.

Plagiarism and copyright infringement both, however, require proof of access. The similarity between the original and accused books often circumstantially proves the second author had access to the work of the first. If you could prove that you had been trapped in a cave for the last ten years, with no access to the outside world, and that you coincidentally came up with The Da Vinci Code word for word, you could, ostensibly get your own copyright on the book and sell copies. This would not constitute either plagiarism or copyright infringement.

What Constitutes Fair Use?

How much of someone else’s copyright material can you legally use without getting permission? Notice the question is not whether or not you are going to get sued, which is likely the more important question. Unfortunately, no law or attorney can answer that question. Whether you are going to get sued depends much more on the motivations, as well as the relative strengths of the parties. Is the entity from whom you are taking the copyright work an 800lb gorilla run by the guy with an itchy suing finger you fired three years ago? If so, a detailed analysis of the esoteric legalities of fair use under United States Copyright Law is kind of a moot point. You are going to get sued. And since you likely do not have the $30K+ to fight the case, you are likely going to lose or settle for far less than what might otherwise be considered “fair.”

Now, once you have done the am-I-going-to-get-sued analysis, and are satisfied the copyright owner is passive or at least not overly litigious toward you, how do you determine what constitutes “fair use” of the copyright work? Can you use a quote from someone else in your own work? Maybe.

In some situations it is permissible to use limited portions of a copyright work, including quotes, for purposes such as commentary, news reporting, scholarly reports. This is particularly true for current news stories & historical analysis (to promote accuracy). The quoted material, however, must not be unreasonably large and must not destroy the market for the original work (quoting the salacious portions of Monica Lewinsky’s memoirs).

Be aware that courts rarely uphold a claim of “fair use” in a for-profit, commercial context unless the use is directly tied to parody, news or critical commentary. In determining whether your copying constitutes “fair use” the courts will look at:

1) The purpose and character of your work-Are you making money from the copies?
2) Nature of copyrighted work-Is it a form book meant to be copied?
3) Amount of work taken-Are you taking 90% of the work or 2%?
4) Economic impact of taking-Are you taking the 2% that makes people want to buy the original (Lewinsky passages)?

In determining whether a use is a fair use, courts weigh all of these factors, along with additional factors indicating why or why not your use might be allowable under copyright law. If you are copying 1% of the non-critical portions of a form book for your own personal use, you are okay. If you are selling 98% complete copies of the The DaVinci Code, you are in trouble. For anything in between, it is best to either consult your copyright attorney for advice or stick with copying works already in the public domain.

Blizzard, eBay and Strategy Guide Author Settle Their Differences

Public interest law firm, Public Citizen Litigation Group has just dropped its lawsuit on behalf of 24 year old Brian Kopp of Bronson, Florida. Kopp sued World of Warcraft maker Blizzard Entertainment to prevent Blizzard from blocking eBay sales of his book The Ultimate World of Warcraft Leveling & Gold Guide. Kopp had been selling his online book on eBay since August 18, 2005.

Blizzard leveraged provisions of the Digital Millenium Copyright Act (DMCA) to force eBay to remove Kopp’s listings. Under the DMCA, eBay would be sheltered from liability if it removed Kopp’s listing after receiving notice from Blizzard that Kopp’s material infringed Blizzard’s intellectual property rights. The way the DMCA is supposed to work is that the internet service provider (eBay) should allow the poster (Kopp) to respond to the allegation. If Kopp responds that the material is not infringing, eBay should repost the material unless the intellectual property infringer can prove that they have filed suit against the alleged infringer.

eBay works things a little differently. eBay has a program called Verified Rights Owner (VeRO). Under the VeRO program eBay pulls a listing upon receipt of a signed statement from a VeRO. Presented by eBay as a way to streamline protection of intellectual property, at least one online commentator views the VeRO program as eBay giving “a select group of business owners carte blanche control over who can sell on eBay and what they can sell. This special class of eBayers can shoot first and ask questions later.”

In Kopp’s case, Blizzard informed eBay that Kopp’s auctions for the The Ultimate World of Warcraft Leveling & Gold Guide were infringing Blizzard’s intellectual property rights. After several letters from Blizzard, and eBay shutting Kopp down under several different screen names, Kopp sued Blizzard with the backing of his own 800lb gorilla, Public Citizen Litigation Group. The lawsuit alleged Blizzard had misrepresented claims of intellectual infringement under the DMCA and committed unfair business practices. The lawsuit asked the court to make a declaratory judgment that Kopp’s book was not a violation of the DMCA.

Now that the parties have settled their differences and dismissed the lawsuit one can only speculate as to the parties’ motivations behind blocking the auctions, filing the suit and settling the case. Was Blizzard really concerned about copyright infringement, or were they more concerned about what some as viewed as a World of Warcraft gold farmer how-to guide? Although Kopp’s book does not appear to advocate third party gold farming in violation of World of Warcraft rules, the guide could obviously be used be a third party gold farmer in violation of WoW rules.

A more cynical analysis might be that the 800 pound gorilla tried to shut down the little guy on the off chance his text might be used for untoward purposes. The First Amendment advocate in me finds such an analysis disturbing. Unfortunately, in my own practice, I have seen more intellectual property cases settled on the basis of who has more money to fight than who has the legally justifiable position. My experience has been that once the 800lb gorilla decides you have the resources to see your case through to the end, a settlement dismissing the lawsuit is a foregone conclusion. With courts reticent to dismiss even the most frivolous intellectual property lawsuit, the take home lesson might be to make sure you have your own 800lb gorilla to present your case.

Other Related Topics:
World of Warcraft, WoW, Crime, Virtual Crime, Gaming

Sorry . . . I meant to call you a dumb "ASS"

In September 2001 John Vogel and Paul Grannis, both candidates for local public office, filed a defamation complaint Vogel et al. v. Felice, 127 Cal.App.4th 1006, 26 Cal.Rptr.3d 350, charging Joseph Felice with libel, false light invasion of privacy, intentional and negligent infliction of emotional distress, and negligent damage to reputation. The gist of the complaint was that Felice ran a website which contained defamatory statements about Vogel and Grannis, including a list entitled "Top Ten Dumb Asses," in which Felice listed Vogel and Grannis as the number 1 and number 2 dumb asses, respectively.

The court held that in order to support a defamation claim, the challenged statement had to convey a provably false factual assertion. In odering the lawsuit be striken under the anti-SLAPP (Strategic Lawsuit Against Public Participation) statute, Code of Civil Procedure section 425.16 (section 425.16 or the Act), the court found that a statement that either Vogel and Grannis was a "Dumb Ass," even first among "Dumb Asses," communicates no factual proposition susceptible of proof or refutation.

Noting that it is true that "dumb" by itself can convey the relatively concrete meaning "lacking in intelligence," depending on context, it may convey a lack less of objectively assayable mental function than of such imponderable and debatable virtues as judgment or wisdom. The court held that to call a man "dumb" often means no more than to call him a "fool." One man's fool may be another's savant. Indeed, a corollary of Lincoln's famous aphorism is that every person is a fool some of the time.

As Felice did not use "dumb" in isolation, but as part of the idiomatic phrase, "dumb ass," the court found that when applied to a whole human being, the term "ass" is a general expression of contempt essentially devoid of factual content. Adding the word "dumb," the court held, merely converts "contemptible person" to "contemptible fool." Acknowledged that Vogel and Grannis were justifiably insulted by this epithet, the court noted Vogel and Grannis failed entirely to show how it could be found to convey a provable factual proposition. The dispositive question is whether a reasonable fact finder could conclude the published statement declares or implies a provably false assertion of fact. If the meaning conveyed cannot by its nature be proved false, it cannot support a libel claim.

Nothing in the record suggested that the context in which the challenged statements were made would have infused Vogel or Grannis with a provably false meaning. Judging from additional portions of the website offered by Vogel and Grannis, the website's overall tone was one of "puerile vituperation and wretchedly excessive tastelessness." The court found the main purpose of the page seems to be to employ the term "ass" as often as possible, preferably in conjunction with "dumb." In such a context, the court held, it is inconceivable that placement on the "Top Ten Dumb Asses" list could be understood to convey any imputation of provable defamatory fact. In odering the lawsuit striken, the court concluded that Felice's statement simply could not support a defamation claim.

Internet Laws Affecting Your Company

What company does not use the Internet to do business? Unfortunately, out of the millions of companies online, only a handful understands the hundreds of Internet laws that can bring their thriving business to a screeching halt. Whether it is a security issue or a problem with a website developer, Brett Trout’s new book Internet Laws Affecting Your Company gives you the tools to keep your business on firm legal footing and out of the courtroom.

From email to intellectual property, Internet Laws Affecting Your Company guides you and your company seamlessly through the expanding maze of Internet law and regulation. Each chapter highlights a specific legal issue using a simple, easy to read approach. Chapters highlight common problems facing your company, and provide quick and simple solutions to keep you out of harm’s way.

Written in clear, easy to understand language, Internet Laws Affecting Your Company serves as a handy desk reference on how various laws impact your everyday business activities on the Internet. In many cases, a quick glance at this invaluable reference will prevent your company from becoming another one of the thousands of Internet casualties.
What are people saying about Internet Laws Affecting Your Company?

“Thorough yet concise digest of existing internet laws”
“Explains rather complex technical computer issues in an understandable way”
“Trout obviously knows his subject very well”
“Clearly, precisely, and effectively illuminates the darker corners of a new continent”
“A tremendous resource for lawyers and business people alike”
“Written in plain English it is easy for all people to read and understand”
“Rich in content and practical advice”
“It will save you costly legal fees down the road”

Don’t delay, order your copy today.

This is our 100th Post! Thanks for the Support!!!

Lawyers Are Funny (Funny Strange, Not Funny Ha-Ha)

Ever thought your senior partner might not be making your life a living hell accidentally? The Anonymous Lawyer Blog may just give you the insight to stay one step ahead of the pain. If this does not do the trick, West Des Moines corporate and employment lawyer Rush Nigut has some thoughts on how to move from being a follower to a leader and change your law firm's management from the inside.

Iowa Case Garners National Attention

The Iowa litigation of Primos v. Hunter's Specialties (Fed. Cir. 2006, 05–1001) is garneringng a lot of buzz on intellectual property blogs around the country. A blog post at PatentlyO opines that the ruling by the Court of Appeals for the Federal Circuit in that case really means that the Festo presumption that a limitation surrenders all coverage between the original and new language is rebuttable. Citing Festo, the Federal Circuit held that a patentee may overcome the Festo presumption where the rationale underlying the amendment bears no more than a tangential relation to the equivalent in the allegedly infringing device.

For additional insight into this Iowa patent litigation, refer to Patent Hawk which has also provided blog coverage.

Is Fair Use Fair?

With the advent of new technologies making it easier to produce copyright material, copyright owners are much more aggressive about demanding payment for even incidental captures of their copyright work in your copyright work. These demands can turn your $400 documentary into a six figure copyright licensing nightmare. Keith Akoi, James Boyle and Jennifer Jenkins have written a comic book Bound By Law – Tales From the Public Domain to address this issue and guide you through the maze of copyright and fair use.

While the book makes some good points and gives some good advice, it does not hit hard enough on the primary copyright and fair use questions you need to consider:

How likely is it that what you are doing is going to get you sued for copyright infringement?
Do you have the resources to make it to the end of a federal copyright infringement lawsuit?

While I am all for fighting the good fight and not paying the bad guy money to use against the next innocent victim, a pyrrhic victory, or more likely complete immolation at trial, does not help anyone. You may think you are becoming a martyr for the cause, but getting wiped out in court may actually do more harm to future victims than paying money. Large corporations often use a track record of putting infringers out of business to extract settlements. The smartest move for you is to review your copyright material beforehand to check for any potential copyright problems. With copyright issues, an ounce of prevention is worth about seven figures of cure.

Brett Trout

I'll Show That Nose of Mine

Filed under today's cut-off-my-nose-to-spite-my-face section is Microsoft's official DMCA Take-Down notice sent out to Chris Pirillo, and Jake Ludington over their Vistatorrent website. As you recall Chris and Jake were offering their own bandwidth to shoulder some of the burden of getting Microsoft's next generation Windows Vista beta (2) out to more people, more quickly (see a copy of the Take Down Notice below). Now if Microsoft can just answer why Windows Vista even matters. (With apologies to Robert Scoble)


Demand for Immediate Take-Down: Notice of Infringing Activity

[URLs Deleted]

CASE #: 45618

14 June 2006

Dear Sir or Madam,

Microsoft has received information that the domain listed above, which appears to be on servers under your control, is offering unlicensed copies of, or is engaged in other unauthorized activities relating to copyrighted works published by Microsoft.

1. Identification of copyrighted works:

Copyrighted work(s):
Windows Vista Beta Build 5384

Copyright owner:
Microsoft Corporation

2. Copyright infringing material or activity found at the following location(s):

[URLs Deleted]

The above computer program(s) is being made available for copying, through downloading, at the above location without authorization of the copyright owner.

3. Statement of authority:

The information in this notice is accurate, and I hereby certify under penalty of perjury that I am authorized to act on behalf of Microsoft, the owner of the copyright(s) in the work(s) identified above. I have a good faith belief that none of the materials or activities listed above have been authorized by Microsoft, its agents, or the law.

We hereby give notice of these activities to you and request that you take expeditious action to remove or disable access to the material described above, and thereby prevent the illegal reproduction and distribution of this software via your company's network.

We appreciate your cooperation in this matter. Please advise us regarding what actions you take.

Yours sincerely,

Peter Anaman

Internet Investigator

on behalf of Microsoft Corporation
One Microsoft Way
Redmond, WA 98052
United States of America
E-mail: Internet1@microsoft-antipiracy.com

Federal Circuit Rules Against Iowa Company.

Concluding one of the largest patent cases to pass through Iowa in nearly a decade, the Court of Appeals for the Federal Circuit today in Primos, Inc. v. Hunter's Specialties et al. handed The Intellectual Property Group at Holland & Hart and their client Primos, Inc. a decisive victory over Iowa-based Hunter's Specialties. Ed Sease and Jeffrey Harty of Des Moines law firm McKee, Voorhees & Sease P.L.C. represented Hunter's specialties on the appeal.

Kudos are due trial court magistrate Judge John A. Jarvey whom the Federal Circuit affirmed in full today. Cedar Rapid's law firm Moyer & Bergman, P.L.C. also deserves recognition for the affirmation, having served as Primos' co-counsel at trial with Holland & Hart, and having earned Primos a seven figure damage award. Simmons, Perrine, Albright & Ellwood P.L.C of Cedar Rapids represented Hunter's Specialties at trial.

Primos, Inc. v. Hunter's Specialties et al. (U.S. Dist. Ct., D. Iowa.) was a three and one half week patent infringement jury trial involving infringement of a particular type of patented game call. At trial, Primos received a preliminary injunction, a permanent injunction and a judgment against individual defendants including the inventor. Primos also received treble damages based upon the wilfulness of Hunter's Specialties' actions.

Did I Just Put My Podcast Into the Public Domain?

Perhaps. Copyright law requires that to be protected by copyright, any "work" must be "fixed in a tangible medium." This could be writing something down on paper, recording it on a wax cylinder or copying it to your hard drive. Most podcasts receive copyright protection immediately, once they are saved to a disk or a hard drive. The only time there might be a problem is if there is a live streaming podcast that the author does not somehow record. Even if one of the listeners records it, if they do not record it (save it to disk) at the prior behest of the author, the podcast would not qualify for copyright protection.

Patent Lawyerpult

For those who have not seen it

Brett Trout

Are Internet Patents Dead?

According to the Patently-O Blog, the Patent Office provided the law firm of Sughrue Mion notice that a recently filed application will receive examination within 165 months (13.75 years). The notice associated the delay with a backlog in this particular area of the Patent Office; most likely, the area of business method patents.

How much do you estimate 2004 internet technology is going to be worth in 2020? If it were a truly pioneering invention everyone was using it could be worth trillions. Most likely, however, 99% or more of the internet-related patents filed today relate to technology which will be obsolete in less than a decade. Born in 1997 with the State Street decision by the Court of Appeals for the Federal Circuit, the recent judicial backlash against internet patent holders seeking injunctions, combined with the Patent Office allowing internet patents to die a slow bureaucratic death, could kill internet patents before they can reach their tenth birthday.

Morality and Legality in the Online World

Just because plagiarism is legal, it does not make it right. By the same token, are some forms of copyright infringement right, even though they are illegal? In today's online world, as tough as it is to determine what is and is not legal, it is still easy to determine right from wrong.

Two friends of mine, Chris Pirillo, and Jake Ludington are pushing this concept to the limit with their Microsoft Windows Vista torrent stream. Anticipating the trouble Microsoft is having providing enough bandwidth to allow everyone to download the new Microsoft beta 2 of Vista, Chris and Jake created Vistatorrent seeding a torrent stream of the Vista beta 2 software, complete with its own MD5 hash. The MD5 hash allows you to check your version of the download for accuracy even if you downloaded it elsewhere.

Will Microsoft shut down this unofficial mirror? Although it is not a hack, or a crack, it may technically still infringe Microsoft’s intellectual property. Far from damaging Microsoft, however, Vistatorrent benefits Microsoft by shouldering much of the bandwidth burden associated with the Vista downloads. Most intellectual property powerhouses ignore this helping-rather-than-hurting argument as being far outweighed by the potential damage associated with unfettered distribution of their intellectual property. In this case, however, the impeccable reputation of Messrs. Pirillo and Ludington, combined with the MD5 hash check makes this a bird of quite a different feather.

Right or wrong, Microsoft could throw enough lawyers, guns and money at this issue to make it go away instantly. Anticipating this, Chris Pirillo has noted that he would take down the mirror upon request. Hopefully, however, Microsoft sees the long term advantage of facilitating such activities, of helping people help Microsoft. Hopefully this it the beginning of a new online era—one in which morality and common sense trumps the aging laws of copyright.

Protecting Your Blog and Podcast Intellectual Property

Special thanks to Ted Demopoulos of Demopoulos Associates for encouraging me to prepare today's blog.

You have a blog and/or a podcast, but what do you actually own? More importantly, how do you keep people from stealing that thing you are not really sure you own in the first place? Well, if you have a blog or a podcast, you most likely own intellectual property. Intellectual property includes patents, trademarks, copyright, domain names, trade secrets as well as other intangible items. While few blogs or podcasts contain all of these types of intellectual property, nearly every blog and podcast contains some intellectual property. The problem is that some types of intellectual property protection attach instantly, while others require steps be taken to prevent the intellectual property from being lost into the public domain. So how do you determine what type of intellectual property you own and how you protect it?

Patents on blogs or podcasts are rare, typically requiring a novel method of doing business. Additionally, the cost ($10K or more), the time involved in getting the patent (3 years or more) and the cost of a patent lawsuit ($1.5 million in attorney fees alone) put patent protection out of reach for most bloggers and podcasters. On the opposite end of the spectrum are trade secrets. Trade secrets include information that provides value by virtue of the fact that it is not generally known and competitors cannot readily reverse engineer the information. Blog and podcast content typically does not contain trade secrets if the content is freely distributed. Customer lists, email lists, behind the scenes algorithms, however, can all be trade secrets if you take the proper steps to protect them. The level of protection required varies with the type of trade secret. For customer lists and email lists, proper protection typically involves preventing any unauthorized access to the information and requiring confidentiality agreements be signed by any vendor requiring access to the information. For other types of trade secrets, you may have to implement more or less security.

While patents are expensive and trade secrets merely involve keeping the information confidential, nearly every blog and podcast has the potential for domain name, copyright and trademark protection. Domain names are given on a first come, first served. If you have a bretttrout.blogspot.com, blog through blogger.com or similar service, you may wish to grab the www.bretttrout.com domain name sooner, rather than later. For a few dollars, you can grab your domain name which a cybersquatter may hold hostage for tens of thousands of dollars a year from now.

If your blog or podcast has a unique name, you may want to obtain a federal trademark registration on it. As soon as you use the trademark in commerce (use it to identify your posts) you have “common law” rights in the trademark. While common law rights are important, a federal trademark registration provides for triple damages and recovery of your attorney fees if someone willfully infringes your trademark. The great thing about these increased penalties is that defendants run scared, rather than fight; something that turns out to be very valuable when you are paying your intellectual property attorney $500/hr to defend your rights. You can check out the Trademark Office for free online at www.uspto.gov to see if anyone has beaten you to your registration. While you can register your own federal trademark for a little over $300, paying $1200 for a trademark attorney to do it right will pay large dividends if you ever have to sue someone for infringement.

Like trademark protection, you have copyright protection as soon as you post a blog. Strangely, the same protection does not automatically apply to podcasts. You have to make sure you record a copy of the podcast to have copyright automatically attach. In either case, you need to register the copyright if you ever want to sue anyone for infringing your copyright. Since the Copyright Office does not compare your registration against previous registrations like the Patent and Trademark Office, Copyright registration is much cheaper. Registering your copyright yourself runs about $30, while enlisting the help of a qualified Copyright attorney runs about $200.

Once you have your copyright registered will a court order an infringer to stop stealing your content? Maybe. It depends on whether the infringer is legally plagiarizing your ideas or illegally infringing your copyright. Plagiarism is presenting someone else’s work as your own. Copyright is the author’s right to reproduce an original work of authorship. Schools and academics enforce Plagiarism standards, while courts enforced Copyright infringement. Copying The Da Vinci Code and publishing the copy as your own, would be both plagiarism and Copyright infringement. The two, however, do not always overlap.

For instance, if you copied the Magna Carta and presented it as your own, that would be plagiarism, since it involves claiming credit for something you did not write. This might get you kicked out of school, but would not constitute illegal copyright infringement, since there is no longer an enforceable copyright in the Magna Carta. Conversely, incorporating large, properly cited, excerpts from The Da Vinci Code in your own novel, would likely not constitute plagiarism, since you are not claiming the work as your own, but might constitute copyright infringement, if you were reproducing the copyrighted work without permission.

While in theory plagiarism and copyright infringement both require proof of access to the original underlying work, the similarity between the original and accused books often circumstantially proves access. If you could definitively prove that you had been trapped in a cave for the last ten years, however, with no access to the outside world, and that you coincidentally came up with The Da Vinci Code word for word, you could, ostensibly get your own copyright on the book and sell your own copies. While this would not constitute either plagiarism or copyright infringement, it would obviously be extremely difficult to prove.

Whether your blog or podcast is associated with copyrightable material, valuable trademarks, trade secrets, domain names or even patentable subject matter you should at least know what you own. Meet with an intellectual property attorney experienced in working with bloggers and podcasters. Have the attorney tell you what you have and what your options are for protecting it. Often, your initial meeting with an intellectual property attorney is free and you do not incur any charges until you actually pursue a formal protection strategy. Even if you decide not to go any further, you at least find out what you have and what your options are for protecting your blog’s and podcast’s most valuable asset.

Shrink Wrap Agreements

Shrink wrap agreements, the agreements on the plastic covering you tear off your new video game or accounting software, have long been limited to preventing copying, redistribution and modification of software. Well, not any longer. On October 6, 2005, the 9th Circuit Court of Appeals upheld a lower court ruling that as long as the items are patented, it is okay for companies to shrink-wrap items other than software. The case involved refilling Lexmark printer cartridges under Lexmark's 'prebate' program. The prebate program gives consumers a discount off the retail price of the cartridges if they agree not to refill the cartridge through anyone other than a licensed Lexmark refiller. Although at first blush that may sound like a fair deal, looking down the road a little reveals the potential downside for consumers.

Say you buy a patented 'prebate' hybrid car with a replaceable fuel cell. Third party fuel cell dealers sell a replacement $500 less than the original. You figure replacement costs are a little more, but if you get a $1000 discount on the price of the car if you agree not to use an aftermarket fuel cell, you might take the discount. The problem is that once all the after market suppliers are out of the market, the price of the manufacturer's fuel cell might triple in price. You are stuck.

This poses huge problems for technophiles. What can you modify? If part of your hardware goes bad, will it cost close to the price of a new machine to replace a single part? What if you are working on a customer's hardware? Is it shrink-wrapped or not? Do you always have to use the manufacturer's replacement parts just to be safe? Are you liable if you violate the shrink-wrap agreement?

Right now this decision is limited to those states governed by the 9th Circuit. If additional courts adopt this line of thinking however, hardware shrink-wraps could quickly become the law of the land. If this happens, consumers will have to decide whether they are going to accept these types of agreements. If they do, will they inevitably be fostering the use of more such agreements for more kinds of products? What does a manufacturer of a patented product do? Jump on the bandwagon and start shrink-wrapping everything? Hardware shrink-wrap strategy is still in its infancy. This ruling gives us a mere glimpse of what is to come. Unless this new ruling is overturned, or at least limited to the 9th Circuit, the fallout over the next decade will be devastating.

Will Online Copying Land You in Prison?

Possibly. Federal law and many state laws make it a crime to copy intellectual property without permission. Luckily, while you may be liable for civil damages even if you had no idea you were infringing someone else's intellectual property, the prosecutor typically has to prove some type of intent before you can be sent to prison.

Iowa law is very vague as to what constitutes criminal intellectual property infringement:

714.26 INTELLECTUAL PROPERTY COUNTERFEITING.
1. Definitions. As used in this section unless the context
otherwise requires:
a. "Counterfeit mark" means any unauthorized reproduction or copy
of intellectual property, or intellectual property affixed to any
item knowingly sold, offered for sale, manufactured, or distributed,
or identifying services offered or rendered, without authority of the
owner of the intellectual property.
b. "Intellectual property" means any trademark, service mark,
trade name, label, term, device, design, or word adopted or used by a
person to identify the items or services of the person.
c. "Retail value" means the highest value of an item determined
by any reasonable standard at the time the item bearing or identified
by a counterfeit mark is seized. If a seized item bearing or
identified by a counterfeit mark is a component of a finished
product, "retail value" also means the highest value, determined by
any reasonable standard, of the finished product on which the
component would have been utilized. The retail value shall be the
retail value of the aggregate quantity of all items seized which bear
or are identified by a counterfeit mark. For purposes of this
paragraph, reasonable standard includes but is not limited to the
market value within the community, actual value, replacement value,
or the counterfeiter's regular selling price for the item bearing or
identified by a counterfeit mark, or the intellectual property
owner's regular selling price for an item similar to the item bearing
or identified by a counterfeit mark.
2. Criminal offense. A person who knowingly manufactures,
produces, displays, advertises, distributes, offers for sale, sells,
possesses with intent to sell or distributes any item or knowingly
provides service bearing or identified by a counterfeit mark commits
intellectual property counterfeiting.
a. A person commits intellectual property counterfeiting in the
first degree if any of the following apply:
(1) The person is manufacturing or producing an item bearing or
identified by a counterfeit mark.
(2) The offense involves more than one thousand items bearing or
identified by a counterfeit mark or the total retail value of such
items is equal to or greater than ten thousand dollars.
(3) The offense is a third or subsequent violation of this
section.
Intellectual property counterfeiting in the first degree is a
class "C" felony.
b. A person commits intellectual property counterfeiting in the
second degree if any of the following apply:
(1) The offense involves more than one hundred items but does not
involve more than one thousand items bearing or identified by a
counterfeit mark or the total retail value of such items is equal to
or greater than one thousand dollars but less than ten thousand
dollars.
(2) The offense is a second violation of this section.
Intellectual property counterfeiting in the second degree is a
class "D" felony.
c. All intellectual property counterfeiting which is not
intellectual property counterfeiting in the first degree or second
degree is intellectual property counterfeiting in the third degree.
Intellectual property counterfeiting in the third degree is an
aggravated misdemeanor.
3. Evidence. Any state or federal certificate of registration of
any intellectual property shall be prima facie evidence of ownership
of the intellectual property in dispute.
4. Seizure and disposition. Any items bearing or identified by a
counterfeit mark, and all personal property, including but not
limited to any items, objects, tools, machines, equipment,
instrumentalities, or vehicles used in connection with a violation of
this section, shall be seized by any law enforcement agency.
a. All seized personal property shall be disposed of in
accordance with section 809.5 or as provided in paragraph "b".
b. Upon request of the intellectual property owner, all seized
items bearing or identified by a counterfeit mark shall be released
by the seizing agency to the intellectual property owner for
destruction or disposition. If the intellectual property owner does
not request release of the seized items, the items shall be destroyed
unless the intellectual property owner consents to another
disposition.

Even if you are breaking a law against copying intellectual property infringement, you still have to run into a prosecutor with the knowledge, skill and motivation to pursue the case. Typically, prosecutors steer clear of intellectual property cases. Some find them too difficult, some find them dull, but most just find their days so packed with run-of-the-mill criminal cases, they find no need to go looking for unusual cases.

Be aware though, when prosecutors do take on these cases, they pursue them aggressively. In Iowa, the penalty for being found guilty of counterfeiting intellectual property can be up to ten years in prison. While the courts typically reserve long prison sentences for those who infringe multiple times, infringing activities online can easily constitute the requisite damage amount and quantity of infringements zealous prosecutors seek to pursue. If you have any questions regarding intellectual property infringement online, contact a knowledgeable intellectual property attorney BEFORE taking any action that could land you in prison for a very long time.

Does Your Band Have a Booking Agreement?

Special thanks to Maria La France of PowerGig for her invaluable assistance is putting together today's bolg.

A Booking Agreement, or Engagement Contract as it is sometimes known, is a written record of what both the band and the venue agree the “gig” will be. Even if the contract never comes up later it is still important to have. Most people think contracts are only good for suing other people. That cannot be further from the truth. While it is always better to go into a lawsuit with a good contract backing you up, the primary benefit of a good contract is keeping you out of court in the first place. My experience with entertainment law convinces me that parties do not end up in court because one party is trying to take advantage of the other. The parties end up in court because they both had a different idea of what the other party was supposed to do. It is much more often a case of miscommunication than fraud. Having a written contract puts both parties on the same “page” going a long way toward avoiding a subsequent disagreement or lawsuit.

Obviously the fairer a contract is, the more likely everyone will agree to sign it. Sometimes, however, especially when one party has a much better bargaining position, a fair agreement is not always in the cards. In such situations, bands often opt for a "handshake" or verbal agreement, choosing not to negotiate the details and simply crossing their fingers that everything works out. While such a situation may be acceptable in some circumstances, more often than not, if a disagreement arises, the venue pays a lot of money to their high priced entertainment lawyer and the band gets the shaft. Not a very appealing result for either party.

It is much better to sit down with a skilled entertainment lawyer and work out a booking agreement you can use for multiple gigs. Whether you are the band or the talent buyer a contract protects both parties. Of course, as you become well known, attracting better talent and better venues, a contract is all the more important. If you handle performances like a hobby, then you may not need a contract. If you want to treat them like a business, you need one. If you are unused to negotiating contracts, having one prepared and signed may seem intimidating. Many people fear that presenting a contract is a sign of distrust and leads the other party to believe you are trying to take advantage of them. Relax, having a contract in hand and getting the other party to agree to the terms is a sign that you handle your business like a business. The contract is there to protect both parties. Making the contract fair will not only put the other party at ease, it will cut down on expensive and time consuming rewrites. Most importantly a fair contract will avoid having a lawsuit over unfair language a judge will likely refuse to enforce anyway.

While it is impossible to condense volumes of entertainment contract law into a few paragraphs, here are some of the important issues to discuss with your entertainment lawyer when drafting a booking agreement:

Date, time, compensation, and signature by BOTH parties. In some cases, this is all you need!

Definition of performance. Both parties should know what is expected for a "performance." Provide a clear and concise description of the performance: your type of music, the number of musicians, minimum set length, number, length and general timing of set breaks, and anything else unique to the performance.

Location, date and time. This seems like a no-brainer, but we have all heard horror stories about performers showing up on the wrong day, two performers booked for the same time, etc.

Compensation. Be very clear whether the venue pays the band a fixed amount (guarantee), a percentage of door or revenue, or both. Detail specifically when payment will be made, to whom, how, as well as the requirement of any deposits. Go overboard on payment method and exactly whom the venue is to pay. If the venue is supposed to pay the the deposit to the agent and the balance to the lead guitarist, put it inthe contract. If the venue pays the band a percentage of door, both the venue and the band (or their agent) should have access to the door as well as the gross receipts.

Recording, reproduction, transmission, photography. The band usually has say over these items, but it is not always wise to forbid everything. For a band, press is usually a good thing. Flexibility is key. The band should generously allow the Buyer to use the band's name and likeness in advertisements and promotion. The band should provide the venue appropriate promotional material to avoid any problems with mispromotion.

Right to sell merchandise on premises. For smaller venues merchandise usually makes up a large chunk of the band's compensation. Accordingly, in smaller venues the band typically has complete control over the sales and profits from merchandising. Larger clubs may have their own requirements for merchandising and may demand a significant percentage of the merchandising profit. In return, larger venues often provide their own sales staff to assist in generating more sales.

Meals, transportation, lodging. These terms vary greatly from band to band and gig to gig. This is the clause where you demand the green M&Ms to see if anyone is reading the contract your entertaiment attorney worked so hard to produce. Corporations and Colleges usually cover most of these expenses, while non-profit and public gigs usually leave the band footing most of the bill. Allowances for guest lists, free passes, dressing rooms, deli trays and other amenities vary from venue to venue.

Sound and production. Be very specific as to who provides the sound and how. All too often improper sound production can ruin an entire set. It is in the interest of both the venue and the band to allow a band representative to control sound equipment.

Permits, licenses, and taxes. The venue typically covers these expenses.

Acts of God. This clause protects both parties in the event of unforeseen circumstances.

Cancellation. There are a number of ways to handle cancellations. Usually, if there is enough notice, neither party gets penalized for a cancellation, but do not leave anything to chance. Clarify in the contract; how long do the parties have to cancel without penalty?

Royalties and licensing. If the band plays other people's music there must be a license in place to allow the band to play that music. Although it is the band violating the copyright, the record companies usually sue the venue, opting for deeper pockets, rather than direct liability. The record company is probably not going to sue a very small band with no money (although they could), but the record company will sue a band with six or seven CDs and healthy merchandise sales. A venue or large promoter is always an easy target for a lawsuit. Do not leave the venue and the band thinking each other has this covered. Clarify in the contract which party is in charge of obtaining the appropriate licenses. Usually an ASCAP or BMI license with cover the venue for most anything the band might play.

Specific requirements/restrictions for performer. Eating, attire, language. If these things are important, clarify them in the agreement. Depending on the venue, the venue may want the band to thank a sponsor, thank the corporate host, announce the next act, wear specific clothing or avoid using certian language.

Agent terms. Often the agent is the Seller, having a separate contract with the band. If there is no such contract, the contract between the venue and the band should spell out any compensation and obligations of the agent.

Insurance & Security. The venue usually handles personal liability insurance and property insurance. Spell this out in the contract. The band usually insures its own equipment.

There are numerous other clauses, but the above are the most common. Look at a variety of contracts and decide which clauses apply to your situations. Look at contracts posted online, but do not simple print one off and have it signed. Some contracts are slanted way in favo of one party or the other. Many may relate to special circumstances that do not apply to you. Most often, no contract is better than a bad contract. The more contracts you read, however, the more ideas you will get as to what you might like to cover in your agreement. Select the most applicable clauses and avoid clauses that do not relate to your situation. Covering everything you need to cover is important, but you may have trouble getting the other party to read and sign a ten page contract over a $500 gig.

Feel free to take a look at example contracts I wrote and posted on PowerGig:

Short Form
Long Form

Remember, these Agreements merely provide information about legal issues related to a Performance for Hire. Information, however, is not the same as legal advice. While these Agreements may indeed be applicable to your circumstance, no Agreement is universal. The author, therefore, expressly disclaims any warranty or representation that they are appropriate for your situation. Please consult a knowledgeable entertainment lawyer regarding the applicability of these Agreements to your particular needs.

No Phoshing

Phishing is when scammers spoof a trusted email address, such as eBay or your bank. The scammers typically state that someone has possibly gotten into your secure account. To confirm that your account is still safe, the scammer, posing as a trusted source, demands that you check your account. For your convenience, the scammer provides you with a link to the trusted website. The website associated with the link, however, is a link to a website the scammer mocked up to look like the trusted website. When you type your login information, the information goes right to the scammer who then uses the information to wreak havoc on your account.

Phoshing is similar, but it involves your phone. Standard Phoshing involves an email directing you to call a phone number to discuss fraudulent activity on your account. Sometimes the scam initiates with a phone call, but people are generally more wary of someone who calls them, as opposed to someone they call themselves. In either case, the caller gives you a little publicly available information about your account and then requests that you provide some confidential information in return to confirm you are the owner of the account. Once the scammer has your private information, they can use it to make purchases on your credit card, drain your bank account or steal your identity.

A new phoshing scam is sweeping the country. Companies like telespoof offer the ability to spoof your phone number. Salesmen, debt collectors and private investigators all use this technique to speak to people who would not otherwise pick up the phone. More evil-minded individuals have, in some cases, used this technique to access the phone mail of others or redirect their calls. Most commonly, scammers use phone spoofing to extract confidential information from people. While very few people will give confidential information to someone who comes up on the caller ID as “Caller Unknown” many more would be inclined to give bank information to a call that came up on the caller ID as the name of the person’s bank.

To aid in the ruse, the scammer typically again offers you some commonly available information about your account. The scammer then mentions there is possibly a problem with your account, but states that before he/she can discuss the matter further, he/she needs you to provide a password, social security number, or other confidential information. Relying on the caller ID, you give the information to the scammer who then uses the information to convert your life savings to his/her ends.

Voice over IP (VOIP) systems are even more vulnerable to security intrusions and the types of viruses that affect email and internet browsers. VOIP is also more susceptible to interception and manipulation than standard “land line” calls. Scammers can also use VOIP directly. SPIT, or spam over internet telephony is just around the corner. SPIT involves transmitting millions of phone calls over the internet for little or no money. Security measures are being implemented to prevent these abuses, but the scammers have to stay one step ahead of the controls to survive.

Although there are no federal laws specifically addressing these activities, they generally constitute fraudulent practices under most state laws. While some state laws may provide a private cause of action, your best bet is to avoid the problem altogether. How do you protect yourself? Here are some simple steps to avoid falling prey to any type of phishing/phoshing scams:

1) Never give any confidential information to anyone initiating the call. If you must provide them with confidential information, you initiate the call to a number you verified yourself, not the number they gave you.
2) Never visit a website identified in an email. If you must visit the website, type the uniform resource locator in yourself, do not rely on the website information they provide you. Scammers can make their website look like anything.
3) Never respond to unsolicited phone calls or emails. The more you speak to them, the more likely they are to call you again or sell your name to another scammer.

If you have been involved in a phishing/phoshing scam, contact an experienced internet attorney to discuss your options. While it is unlikely you will be able to recover your money, you may be able to reduce the likelihood of a recurrencerence.

Patent F.A.Q.

What is a patent?

A patent is a legal document defining an invention. The document allows you to prevent others from making, using or selling the invention without paying you.

Is everything patentable?

No. Patent protection is not available for all types of inventions. Patent law does not protect any ideas, any obvious combinations of pre-existing devices, illegal or immoral matter, pure research, or anything that is simply a novelty or curiosity. Patentable inventions include new and useful processes, machines, manufactures or compositions of matter, as well as any new and useful improvement thereof.

Are all patents valuable?

Some are. Some are not. A patent is like a safe, in which you keep your valuables. A patent does not make an invention better. A patent does not even mean that an idea has any value at all. The real question is will the invention sell. If it will, a patent can be very valuable. By keeping others out of the market, you can use a patent to make large profits on the sale of your invention or negotiate with a third party to pay you royalties on every sale.

How long does a patent last?

While patents formerly remained in force for 17 years from the date of their issuance, patents now expire 20 years from the date of their filing. Bear in mind that a patent does not allow its holder to do anything, only to prevent others from utilizing the invention.

What does a patent look like?

Examples of patents can be found at the Patent Office website. Patents typically consist of a brief description of the background and pre-existing technology, a detailed description of the preferred embodiment of the invention, drawings and/or flowcharts associated with the invention, an abstract of the invention, and one or more claims. The claims are each a one-sentence description of the invention which, preferably, are broad enough to differentiate the invention over any pre-existing devices or obvious combination thereof. The claims, however, must be narrow enough so as not to include any extraneous matter, which would serve as a limitation to the enforceable scope of the patent.

Are all patents created equally?

No. In fact, it would be very unusual for two different patent attorneys to draft identical patents on an invention. The value of a patent is often closely correlated with the skill and knowledge of the patent attorney drafting it. Drafting a narrow patent is easy and relatively inexpensive. Maximizing the protection available in a patent is a skill which, not surprisingly, translates into more time and more money to get the patent issued. The novelty of the invention also plays a hand in the breadth of the patent. It is not difficult to gain broad patent protection on a truly pioneering invention. By the same token, it is hard to gain more than minimal patent protection on an incremental improvement over the way things were done before.

Will the Patent Office grant me a patent on an invention they know infringes someone else's patent?

Maybe. Strangely, a patent does not give you the right to DO anything, only the right to prevent others from doing something. The Patent Office does not care if your invention infringes an existing patent as long as your invention is an improvement over the other invention. Why would you want a patent on an invention which infringed someone else's patent? Well, if an inventor were to invent a chair and receive a patent thereon, a subsequent inventor could file and obtain a patent on a chair with arms. Neither the first patent owner nor the second patent owner could make the chair with arms without infringing the other's patent. However, the parties could negotiate a cross-license where both parties pay each other a royalty in exchange for being allowed to manufacture the improved device.

What damages may a court award me if someone is found to have infringed my patent?

Available remedies include an injunction (getting them to stop infringing), as well as the patent holder's damages. Treble damages and attorney fees (which may be $1 Million or more) are also available in the case of willful infringers.

Where do I start if I want to patent my idea?

You may wish to start with the Patent Office to check if there is already a patent on your idea. Although it is difficult to determine definitively from the Patent Office database if your idea is patented, you may get lucky, or unlucky as the case may be, and stumble upon your idea in another patent. If the Patent Office search turns up nothing, you can have a patent attorney do a search for you. While such a search is much more comprehensive, it is not exhaustive. Even a search by a patent attorney is likely to miss a relevant patent or two. If the patent search goes well, you may wish to have the patent attorney prepare and file a patent application on your behalf. Although the process is long and costly, if the invention is a winner, a patent can mean the difference between millions in profits and having the invention stolen out from under you.

Feel free to forward any additional questions to me at trout@bretttrout.com


Brett Trout

Other Related Topics:
Patent, Patent FAQ, Brett Trout, Patent Lawyer, Patent Attorney

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