One of the most common defenses to patent infringement is that the asserted patent is invalid. The reasons for invalidity regularly range from lack of utility, to incorrect inventorship, and even to fraud (as I’ve recently written about). Often, the defendant asserts that the patent is invalid for lack of novelty or non-obviousness–pointing to some piece of evidence that the defendant says conclusively shows that the invention was already in the public domain before the plaintiff even applied for the patent. That evidence is called invalidating “prior art.”

Prior art can spell the unexpected demise of an otherwise valid patent, and it comes in many forms. For several decades, published prior art (not to be confused with prior art in the form of prior uses or sales) consisted of already-existing patents (and applications), trade journals, drawings, articles, websites, standards, whitepapers, etc. But Congress expanded the scope of published prior art dramatically in passing the America Invents Act in 2012. Whereas before prior art consisted merely of “printed publications,” post-AIA, prior art also encompasses things that are “otherwise available to the public.”

The larger–and more modern–universe of possible published prior art is easy to imagine. For example, prior art references are no longer limited to traditional publications and documentary evidence. Instead, additional forms of multimedia come into play–which is fitting in today’s multimedia-packed times. Videos, movies, broadcasts, and recordings all now qualify as prior art, so long as they are available to the public.

But despite this expansion, litigants have not yet fully taken advantage of the change. There have been a few recent uses of video as prior art, such as the iconic iPhone keynote speech made by the late Steve Jobs demonstrating a technology described in an Apple patent. Ironically, in commenting on the “bounce-back” effect that was the subject of the patent, Steve Jobs stated, “boy have we patented it.” But Apple failed to patent it fast enough after the speech.

https://youtu.be/-3gw1XddJuc?t=29m7s

Samsung used clips from Stanley Kubrick’s 2001: A Space Odyssey to argue that Apple’s design patent for the shape of a tablet was invalidating prior art.

Apple really seems to be taking the brunt of video prior art challenges.

Just one week ago, a Federal district judge in the Northern District of Florida addressed–apparently for the first time–whether a YouTube video could constitute prior art. The court, in HVLPO2, LLC v. Oxygen Frog, LLC, 4:16-CV-336 (MW/CAS) (Dkt. No. 133), held that a YouTube video can constitute prior art and that YouTube videos are “sufficiently accessible to the public interested in the art.” Not exactly a groundbreaking finding to someone of my generation, who grew up with YouTube and the internet. Indeed, the USPTO’s own training guides (slide 15) specifically state that YouTube videos are a perfectly acceptable form of prior art. The USPTO has stated that videos qualified prior to the AIA, but there is conflicting authority.

The plaintiff in HVLPO2 had argued that the particular YouTube video in question was uploaded on a random account, so no one interested in the art would have found it. The court pushed back in eccentric fashion, stating:

It appears that Plaintiff is unfamiliar with how YouTube works. A familiar user would know that you don’t need to search for a particular channel to watch the videos uploaded on it. For example, if you want to watch a video of a cat skateboarding, you can search “cat skateboarding”; you don’t need to know that it might have been “CatLady83” who uploaded the video you end up watching.

The court held that the YouTube video in question appeared within the first 20 videos when using appropriate search terms on the site. “Surely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the ‘reasonable diligence’ that the law expects of a hypothetical prior art subject.” I couldn’t agree more, and I recommend this fun cat skateboarding video:

But even though most YouTube videos are generally accessible, not all are available to the public. For example, YouTube videos may be “private” or “unlisted,” potentially removing them from the “otherwise available to the public” category or at least undermining the argument for their accessibility. Thus, as even the court in HVLPO2 noted, the defendant still has to prove the existence of public access to the video prior to the applicable date. This can be accomplished by proffering screenshots of the video in the browser and evidence of that video’s publication date (which is disclosed on the YouTube website and many other video sharing platforms).

Besides the above, there are few other examples of videos (online or otherwise) being used as prior art. This is probably due in part to the current difficulty of searching the vast amount of video and audio–as opposed to text, for example–available on the internet. But as computer learning gets better and better, I expect audiovisual prior art will play a bigger role in both patent prosecution and litigation, so long as that prior art is “otherwise available to the public.”

Aren’t digital advertising billboards amazing? My iPhone captured this rolling series of images just yesterday, for a health care organization using the Google trademark in the Minneapolis skyway:

My questions, permission, co-branding, no permission, but classic or nominative fair use?

Is Google flattered? Free advertising? Do they care? Should they care?

Discuss, to quote John Welch, on another subject.

How much do I believe in federal registration of trademarks and brand names? Well, this much:

I’ve always been a big fan of practicing what you preach. Actually walking the talk. Not just talk.

That mindset helps explain why we stuck with the suggestive name of this blog, even after the experts recommended against it several times, for SEO and other reasons. They do agree now.

Anyway, the registration issued in the nick of time, given my true fortune just two days earlier:

Seriously though, obtaining federal registration of a personal brand name can be a bit challenging.

A common refusal when personal names are involved is that they merely identify a person, and they fail to function as a mark, the very refusal the USPTO initially issued in my particular case:

“Registration is refused because the applied-for mark, as used on the specimen of record, is a personal name that identifies only the name of a specific individual; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.”

“In this case, the specimen shows the applied-for mark used only to identify the name of an individual and not as a service mark for applicant’s services because it is used to identify the author of blog posts, but does not separately indicate the source for any service. Applicant has applied for services including providing information in the field of law. The specimens shows the applied-for mark being used merely to name the author writing the posts, and to identify a particular individual and give information about him. The specimens include a short biography or “about the author” post with the name of the author or individual at the top, and several posts that show the applied-for mark included only as “By Steve Baird.” This shows the applied-for mark being used in a by-line, attributing authorship, but not identifying source. The applied-for mark is not used in association with the offering of any service in a way that would make it a service mark.”

Fortunately, I’m surrounded by really bright, passionate intellectual property and trademark attorneys, and in this case, our Tucker Chambers came to the rescue, with this winning response.

And, thankfully Tucker had some decent facts to work with, especially given kind commentary of some generous giants from both the legal and marketing fields, two of our core audiences.

Trust me, the irony has not escaped me, that one of these generous giants recently allowed the registration for his blog’s name to lapse, and the other giant likely prefers to Just TM It instead.

I’ve never professed to resemble a purple cow, but my mother and father did teach me to follow the beat of my own drum, after taking in a variety of different perspectives to settle on my beat.

So, if you have a personal brand name that truly functions beyond indentifcation to indicate the source of goods or services, my hope is that you will consider federal registration to help protect it.

Keep in mind, personal brands can go beyond an actual name to embody a non-verbal image too, where consent of the individual so identified is of record at the USPTO, hello Ralph Lauren:

Personal brands also may include nicknames, like Mr. Wonderful aka Kevin O’Leary from Shark Tank fame, who is seeking registration of Mr. Wonderful for roasted nuts, hello Wonderful:

 

So, I’m left thinking that Mr. Wonderful best get crackin’ on his anticipated response to the inevitable likelihood of confusion refusal that he’ll be experiencing in the not-to-distant future.

Many of us have been eagerly waiting to see whether the Supreme Court would consider Google’s potential genericness.

As Martha explained, the case began in 2012, after petitioners Chris Gillespie and David Elliot attempted to register hundreds of web domains that included the word “Google” together with a variety of different people, products, and brands (i.e., googlestarbucks.com).  Google objected to the registrations, and Elliot filed a complaint (joined by Gillespie) in federal district court.  Elliot and Gillespie argued that “google” had become a generic term due to its common use as a verb.  The district court ruled against Elliot and Gillespie on summary judgment.

On appeal, the Ninth Circuit affirmed the lower court’s opinion.  As Tucker discussed recently, the Ninth Circuit held that “verb use does not automatically constitute generic use.”  The court clarified that the mere act of using the term as a verb does not render the mark generic unless it is used to refer to a type of good or service (i.e. an internet search generally).

Without comment, the Supreme Court denied Elliot’s and Gillespie’s petition for review.  (Notably, of the 7,000-8,000 petitions filed each year, the Supreme Court grants and hears argument in only about 80 of them.)

While Google is surely celebrating the Supreme Court’s refusal to hear the case, Band-Aid, Xerox, and Rollerblade are cheering right along with them, while cellophane, aspirin, and thermos look on with envy.

Social media impacts every facet of life and is often discussed in DuetsBlog posts. Courts are now having to address social media issues in connection with jurors. A federal judge in California is considering banning the use of social media altogether in a copyright case before him brought by Oracle America, Inc. against Google, Inc. at case No. C 10-03561 (WHA).

The parties jointly proposed the use of a juror questionnaire, and a multiple-day procedure for a neutral vendor to collect the information for the parties. The judge suspected that this was designed to obtain information about the potential jurors so that the parties could perform extended internet investigations on them prior to the voir dire process. He did not like it.

The judge ruled that no juror questionnaire would be used in the case. Instead, the judge’s usual voir dire process would be used. In addition, the judge ruled that if a potential contradiction develops between a juror’s voir dire answers and investigative material the parties uncovered, then it needed to be brought to the judge’s attention immediately. If the party fails to do so, the judge stated that he might find that there was a waiver or estoppel from raising the issue to attack the verdict at a later date. In connection therewith, the judge ordered the parties to retain all of their investigative material acquired about the jurors.

Other problems with the parties’ proposal for the judge included that the questionnaire would: (1) lengthen, not shorten, voir dire; (2) reduce the invaluable air time with the potential jurors where they can be “sized up” (e.g., clarity of answers, tendency to dominate, mental disorders and possible bias); and (3) provide a basis for the loser to attempt to impeach the verdict by investigating the jury to find a lie or omission during voir dire.

Finally, the judge noted that he would be instructing the jurors that they could not conduct internet searches about the case or the lawyers while the case was pending. He was concerned that, if and when the jurors found out that the lawyers conduced internet searches on them, they would not understand why they had not been allowed to do the same thing. Accordingly, the judge ordered the parties to show cause in a ten-page submission as to why he should not impose a ban on any and all internet research related to the jury. The parties were required to include detailed specifics about how far they may go under the law and/or rules of professional conduct in accessing Facebook, LinkedIn, Twitter and other social media accounts to obtain information about the jurors.

What role do you think social media should play in our jury system?

-Wes Anderson, Attorney

It bears mentioning when one of the world’s most famous brands releases one of the world’s most prominent and readable privacy policies. That’s just what Apple did this week, and the message to other brands is clear – privacy policies can be a massive marketing opportunity, not just an obscure legal nuisance.

Every business that interacts with its customers and obtains customer data needs a privacy policy. It informs customers about how it will collect, use, share, and protect the consumer data it collects from them. Many sweep their policies under the rug, and we’re all familiar with the fine print links at the bottom of most websites. Like many clickwrap agreements or other terms and conditions, virtually no consumers read privacy policies, and few are aware of what they agree to when they provide their data to these businesses.

Apple unveiled a new privacy policy this week that turns that concept on its head. Starting with a letter from CEO Tim Cook, the new policy covers all of Apple’s activities and interactions with customers. It is clear, informative, and — most importantly — readable to the average consumer. In fact, as many commentators have noted, Apple actually wants consumers to read the policy. (I should note that Apple’s website — as opposed to its activities more generally — still uses a more traditional, verbose privacy policy.)

Screen Shot 2015-10-02 at 7.44.59 AM

This is a bold step in getting consumers’ attention. And not surprisingly, the tech press has warmly welcomed Apple’s new policy. It’s also a shot across the bow at companies like Google that rely on consumer data as a facet of their monetization strategy (very broadly speaking, Google uses targeted advertisements for much of its revenue, while Apple relies chiefly on its physical products)

As web services continue to broaden their reach, just about every brand owner can take a page out of Apple’s book. This new policy speaks to the importance of a thorough and well-thought out privacy policy, not just for legal compliance reasons but also to support your brand. A privacy policy is not only a legal document — it’s also a marketing strategy.

Successful brands build trust with consumers and encourage transparency, and a readable, forthright privacy policy is a great way to do that. As more and more data breaches occur in the marketplace (most recently, for example, the T-Mobile / Experian breach), it is critically important to inform consumers of what you do to protect their data, not just for legal reasons, but to inspire trust in your brand. This is particularly important in industries where consumers may not be familiar with the businesses’ inner workings (ask someone on the street where “the cloud” is located).

Now may be a good time to ask: is your policy mere boilerplate, or, like Apple, does it work to shape your brand?

Google changed its logo this week, and the Internet is not happy about it. In the new design, the name appears in thicker, cleaner letters. Specifically, the new design eliminates serifs—the little tails at the bottom of each letter in many fonts, like Times New Roman.

Google’s new logo and small icon image feature wider text, without serifs, and more rounded, geometric letters. Compare to the old logo and lowercase ‘g’ icon.

The announcement Tuesday, featuring a short animation sequence, revealed changes to both the primary “Google” name, as well as the small icon symbol. Google stated that the change would allow for better transitioning among various platforms and interfaces. The new font may shrink easier and translate on different screens better than the old font.

It’s the first time the company has made a major change to its logo in several years. For the most part, it seems design and branding experts are hailing it as a sleek, modern, and much needed redesign. Graphic designers have noted that the new logo, with its emphasized circles, has a friendlier vibe. The lack of serifs suggests a more modern feel, but the new logo retains pieces of its predecessor with the crooked ‘e’ and iconic color scheme.

The social media public, however, feels a bit differently about the change.

 

 

I’ll be honest. The new design does remind me a little too much of refrigerator magnets. What do you think? Sleek new design, or did Google miss the mark on this one?

 

Everyone has a brand.  Through every interaction and impression we leave in the minds of others, each of us builds on our own personal brand.  In the Internet age, and particularly with the advent of social media, our personal brands are more definable than ever.  Googling anyone but the most stalwart off-the-grid enthusiast will usually provide at least a small window into the individual’s life.  For this very reason, countless articles have been written about how to protect or modify one’s personal brand online.  However, we can’t always control what others write about us, and online content has an unfortunate tendency to linger.

The “Right to be Forgotten” refers to a right that emerged in Europe after a European Court of Justice ruling.  The court held that individuals have a right to have certain information about them removed from Google’s (or another search engine’s) search results.  In Europe, a private person can fill out a form to request information that “appear[s] to be inadequate, irrelevant or no longer relevant or excessive . . . in the light of the time . . . elapsed” be removed from search results.  As it currently exists in the European Union, the Right to be Forgotten does not provide for removal of the original content.  It merely creates a pathway for removing the content from online search results, rendering it virtually inaccessible.  To date, Google has received close to one million requests.

Recently, a ruling from a French court required Google to remove search results not only from its European search sites, such as google.fr, but from all of its sites worldwide, including the American site, google.com.  The particular case related to a European citizen’s request to remove online content related to an old criminal conviction.  Citing censorship concerns, Google stated that it would not comply with the ruling.  (Interestingly, in a meta-gaming twist, Google has now also been ordered to remove links to news articles discussing Google’s refusal to remove the original links from its worldwide sites.)

Censorship and privacy aside for the moment, the Right to be Forgotten has major implications for personal branding.  The core concept allows an individual to choose which events, posts, and opinions from the past will follow her.  Consider the Oklahoma University students who were expelled after a video of their racist chant was posted online.  As those students grow into adulthood and perhaps begin families and careers, articles about their misguided act will still be floating around the Web.  No matter how they may grow and change, their personal brands will be tarnished for life if those articles continue to surface in a Google search.  Providing those students the right to someday, as adults when the story is no longer “relevant,” remove such articles from search results, would give back a substantial power of personal branding.

Individuals born today will have their entire lives documented online—their newborn photos, their embarrassing toddler moments, their unbridled teenage angst—and without the Right to be Forgotten or something similar, that documentation will forever affect the individuals’ personal brands.

The Right to be Forgotten does not currently exist in the United States, but as we can see, European courts or other entities may seek to expand its reach to the U.S.  While we watch Google struggle with the law abroad and debate potential privacy versus censorship concerns here in the States, perhaps we should also consider the right to control one’s personal brand.

Laurel Sutton, Senior Strategist at Catchword Brand Name Development

Of all the marketing people in the biz, you’d think a PR firm would have the best instincts for names that appeal, rather than repel, the public at large. A firm in Austin, Texas that specializes in food and drink recently chose the name Perennial PR, which is pretty good, by naming standards: it’s alliterative, has nice associations with longevity and beautiful flowers, and would likely offend no one. It’s a safe choice, in contrast with the firms previous name: Strange Fruit PR.

Does that name make you stop reread the sentence? Or does it just seem like a fun way to reference their unique take on hospitality and food & drink?

Perhaps it’s a generational thing. The song “Strange Fruit”, recorded by Billie Holiday in 1939, was explicitly about the lynchings of young black men in the American South. It was named the song of the century by TIME magazine in 1999 and added to the National Recording Registry by the Library of Congress in 2002. It continues to be covered by various artists and has inspired other creative works. It’s a song and a metaphor that has never really departed from society’s stage.

But it would be a mistake to assume that everyone in the U.S. shares that knowledge – especially those under the age of 40. Perennial’s co-founder, Mary Mickel, explained in a statement to the American Statesman, “We of course Googled to ensure that it was not taken elsewhere and found the Billie Holiday song online. Thinking it would have nothing to do with our firm, and since it was written in 1939 it wouldn’t be top of mind in the public consciousness. We now know we were naïve to think that, and should have known better.”

It’s a good apology; too bad it had to come after they were called out on Twitter by writers like Audra Williams and Mikki Kendall. It’s interesting that they started using the name Strange Fruit PR back in 2012, but got real heat for it only in the righteously angry days of late 2014. Up until the change, they’d even defended the name as encompassing “the uniqueness and creative individuality that our clients reflect”. (That’s some good PR-speak!)

Lesson #1? Google can only provide you with data; it can’t tell you which decision is correct. Evaluating Google results when researching, say, your new company name, is a skill in and of itself; as we in the naming business like to say, “Don’t believe everything you read on Urban Dictionary.”

And Lesson #2: When people tell you that your brand name is problematic, you should listen to them. If you’re privileged, you may have lived a life in which a song like “Strange Fruit” isn’t relevant; but you must acknowledge that, for a significant percentage of your audience, the sentiments of the song are all too real.

About the generational thing: I have noticed that many of my naming clients, especially the younger ones, are not very sensitive to (what seem to me) overtly negative WWII references. “You might not want to use Axis as a name, or SS as a product model prefix,” I will point out gently. Blank stares.

Also noted: there’s a performing arts company in Melbourne, Australia called Strange Fruit, but one suspects the phrase doesn’t have the resonance there as it does here. This is not to deny the long history of racism against Australian Aboriginal people; but Australia does not have the experience with slavery and its horrific aftereffects as does the U.S. I wonder if they have ever gotten complaints about their name.