Hey law students, it’s that time of year again. The Patent Arcade is seeking a summer intern to assist with news, research, and drafting content for the blog. A keen interest in video games is a must. The incumbent will research video game patents, analyze video game lawsuits, and help prepare content for the blog. If interested, please send a resume, writing sample, and law school transcripts to rdannenberg bannerwitcoff -dot- com. The position is unpaid.
OBAMA SIGNS LAW ALLOWING TRADE SECRET OWNERS TO SUE IN FEDERAL COURT
DTSA DOES NOT PREEMPT STATE LAW
MISAPPROPRIATION OF TRADE SECRETS
The DTSA definitions of “trade secret” and “misappropriation” generally mirror those of the UTSA. The DTSA defines “trade secret” as all forms and types of information that (1) the owner thereof has taken reasonable measures to keep such information secret; and (2) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by another person who can obtain economic value from the disclosure or use of the information.4 The in-depth definition of the term “misappropriation” in the DTSA includes, in part, (1) “acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means,” or (2) “disclosure or use of a trade secret of another without express or implied consent by a person who … used improper means to acquire knowledge of the trade secret.”5 The DTSA states that the term “improper” includes “theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means,” but excludes “reverse engineering, independent derivation, or any other lawful means of acquisition.”6
SEIZURE AS A REMEDY
Like most state trade secret law, remedies under DTSA include injunctive relief and monetary relief. However, seizure of property is a new remedy contemplated by the DTSA. A seizure request can be brought on an ex partebasis for the seizure of property necessary to prevent the dissemination of the trade secret that is the subject of the action.
A widely discussed and controversial provision of the DTSA, not present in state trade secret law, is whistleblower immunity and the consequential affirmative duties placed on employers. Specifically, the DTSA provides “immunity from liability for confidential disclosure of a trade secret to the government or in a court filing” if a disclosure of a trade secret disclosure is made “in confidence to a Federal, State, or local government official…or to an attorney; and…solely for the purpose of reporting or investigating a suspected violation of law,” or is made “in a complaint or other document filed in a lawsuit…if such filing is made under seal.”11 Additionally, an individual who files a lawsuit for retaliation by an employer for reporting a suspected violation of law may disclose the trade secret to the attorney of the individual and use the trade secret information in the court proceeding.12 However, the individual must file any document containing the trade secret under seal and otherwise cannot disclose the trade secret, except pursuant to court order.13
NO INEVITABLE DISCLOSURE DOCTRINE UNDER THE DTSA
The DTSA also protects former employees by restricting employers from preventing former employees from working at another company on the basis of the inevitable disclosure of trade secrets. Using the inevitable disclosure doctrine, employers in certain states can enjoin a former employee from taking a new job at another company that would inevitably result in the use of the company’s trade secrets. The DTSA does not allow for injunctive relief if doing so would “prevent a person from entering into an employment relationship,” thereby rejecting the inevitable disclosure doctrine.
Time will tell whether the DTSA brings conformity to trade secret litigation as the new act does not preclude circuit splits. That being said, the DTSA gives litigants more options in enforcing trade secrets at a juncture where many patent rights are being challenged at the U.S. Patent and Trademark Office. Whether to file a civil trade secret complaint in state or federal court will depend on a multitude of factors, such as the desired results of the plaintiff and whether the immunity provisions will apply. The broad definition of “employee” in the DTSA highlights the importance of non-disclosure agreements and the monitoring of relationships with contractors and vendors (both domestic and abroad) that may have access to confidential information. Moving forward, companies should review their policies and agreements to ensure that they are in compliance with the immunity provisions and have a proper notice in place.
The U.S. Copyright Office maintains an index of fair use lawsuits. They recently sent out a reminder about the index, reproduced below. Definitely worth checking out.
ago, the U.S. Register of Copyrights, in coordination with the U.S.
Intellectual Property Enforcement Coordinator, announced the launch of the U.S.
Copyright Office’s Fair Use Index
(“Index”). The Index makes the principles and application of fair
use more accessible and understandable to the public by providing a basic explanation of
fair use as well as presenting a regularly updated searchable database
of summaries of major fair use decisions. So far, over 180 U.S. fair use
decisions have been summarized, spanning every appellate jurisdiction and many
categories of use, from music to digitization to parody.
past year, the Fair Use Index has received tens of thousands of page views and
has led to thousands of downloads of the Copyright Office’s case summaries.
These include more than 1,000 downloads for each of the following summaries:
eBay, Inc. (2015)Katz v.
Google Inc. (2015)Cambridge
Univ. Press v. Patton (2014)Fox News
Network, LLC v. TVEyes, Inc. (2015)Fox
Broad. Co. v. Dish Network, LLC (2015)Kienitz
v. Sconnie Nation, LLC (2014)
Use Index is not a substitute for legal advice, but is a helpful starting point
for those seeking to better understand how courts across the country have
applied the fair use doctrine to a variety of fact patterns. The Index is
Use Index may be accessed on the Copyright Office’s website at http://copyright.gov/fair-use/index.html.
Banner & Witcoff is also seeking current or prospective law students to work in its Washington, DC office as full time Law Clerks. The incumbent’s primary responsibilities will be preparation and prosecution of patent applications. The incumbent may also participate in various activities such as engaging with clients, assisting in ongoing litigation projects, performing legal research, and assisting with legal opinions and other IP-related projects. Full time law clerks may also be eligible to receive tuition assistance for law school. Candidates must have an electrical engineering, computer engineering or computer science background and must be eligible to sit for the patent bar (see www.bit.ly/uspto-oed for more info). To be considered, please submit a resume, cover letter, writing sample, and all post-secondary transcripts through this link.
We are happy to announce that the Patent Arcade Patent Search app is now available for iOS. This handy tool lets you search and review patents on the go, displaying patents in both text and PDF formats. BOTH formats include drawings, too!
Have you invented something? Do you have a great idea for a patent? Want to check to see if someone else has already come up with the same idea? Use Patent Arcade’s free Patent Search tool to search the records of the United States Patent & Trademark Office.
The Patent Arcade Patent Search app is an easy to use mobile searching resource. Just type in a patent number or a few keywords and see the results in seconds. Search results are provided by Google, so international patents are available as well.
Two ways to search: 1) type in a PATENT NUMBER or published application number, and review the patent in easily readable form on your iOS device; 2) search FULL TEXT by entering any search term you want and instantly see the results. PDFs of the original documents are also available.
As an added bonus, quick access to the Patent Arcade legal blog is also included within the app. No legal services are provided. App is for informational use only.
A student I work with developed this app for iOS, called Swamp Mess. It’s a simple memory game, but fun to play. My 2 year old son LOVES it. And the background “music” is bullfrogs, so its much less annoying than other games he plays… 🙂
I don’t normally post job openings, but this one looked cool. The Smithsonian Institution is looking for someone that researches, negotiates, obtains, and documents licenses from copyright holders to use images of NPG collection objects in exhibitions, programs, and publications, as well as public awareness and fund raising efforts. S/he also reviews internal and external requests for permission to reproduce NPG collection object images. S/he contributes significantly to the creation, management and distribution of the NPG’s digital image resources. As the NPG transitions toward an open access policy with regard to its collections, the Image Rights Specialist will help to implement this enhanced access and service to the public.
- Researches copyright restrictions and coordinates rights documentation and permissions clearance for museum collections; locates rights holders and negotiates usage and licensing agreements; provides guidance to staff regarding restrictions and copyright.
- Monitors evolving opinions and policies regarding copyright; liaises with SI offices regarding the Institution’s right’s policies; assists in developing a code of best practices for the museum.
- Coordinates the museum’s “fee and free” image dissemination policy; distributes images to a wide variety of requestors via digital hosting and transfer protocols.
- Prepares and uploads high-resolution images to the Digital Asset Management System (DAMS); ensures appropriate metadata is embedded and established naming conventions are applied; digitizes legacy files as needed.
1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; andapplying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.
We are proud to announce that the Patent Arcade has been included in this year’s ABA Blawg 100 list of notable legal blawgs. The Blawg 100 includes only continually updated law blogs.
The Patent Arcade has been in continuous operation for over 10 years, launching on April 5, 2005. Thanks ABA Journal! Much appreciated.
An interesting story came across my email recently, and I wanted to share it with our readers, especially the attorneys who follow our blog. For those who don’t know, the Federal Circuit Court of Appeals hears all appellate patent cases. The Federal Circuit was formed Friday, October 1, 1982. Before that all patent cases were heard by the Court of Customs and Patent Appeals (CCPA). Many people don’t realize this, but the very first appeal ever filed in the newly formed Federal Circuit was a VIDEO GAME case! Yes, it was appeal no. 83-500, The Magnavox Co. v. Mattel, Inc. Some of the attorneys for the appellants include Dennis Allegretti and Mark T. Banner, both of our firm. The article I read is more of a historical account as opposed to a legal analysis, but an interesting read nonetheless. Here is the first two paragraphs to whet your appetite:
For many years, George E. Hutchinson, the first clerk of the Federal Circuit, told the story that on the first day of the court’s existence, Friday, October 1, 1982, a young lawyer from Chicago showed up bright and early at his office and filed an emergency motion for a stay pending appeal—even before the judges of the court had been sworn in.
Just over thirty-two years after the oral argument in that first appeal, I became the last counsel of record who can give a first-person account of the oral argument and the case, and therefore I take this opportunity to tell the story. This was appeal no. 83-500, The Magnavox Co. v. Mattel, Inc., the first appeal from the district court filed in the Federal Circuit. The public knows nothing about it because no opinion was released—the parties reached a settlement literally on the eve of an opinion being published.
The article is by Edward D. Manzo, and you can look it up in The Federal Circuit Bar Journal, Vol. 25, No. 1.
Good Morning to You Productions Corp., a production company working on a documentary about the song, sued Warner Chappel Music in New York federal court in June 2013, claiming that “Happy Birthday to You” was first copyrighted in 1893 and thus is long past expiration. The suit alleges Warner/Chappell had unlawfully collected millions of dollars in licensing fees for the tune by claiming it holds the exclusive right to control distribution, performances and reproductions of it. Good Morning to You said it had filed suit in response to Warner/Chappell’s demand that it pay a $1,500 licensing fee to use the song in a documentary about the history of the song.
Well yesterday, September 22, 2015, a California Federal judge agreed, and ruled that Warner Chappel’s copyright is invalid, except with respect to a narrow piano arrangement of music to accompany the song. U.S. District Judge George H. King found that Warner had never acquired the rights to the song’s lyrics, according to Tuesday’s decision. In copyright records, court records and several agreements over the use of the song, nowhere was there discussion of the lyrics to “Happy Birthday,” according to the decision. Some records mention the melody or piano arrangement, but not the words to the song, the judge said.
This means that video game developers can use the song “Happy Birthday to You” without fear of the Warner Chappel Music Police sending you a nasty-gram, demanding a royalty. The case is Good Morning to You Productions Corp. et al v. Warner Chappell Music Inc. et al., case number 2:13-cv-04460, in the U.S. District Court for the Central District of California.
I sometimes meet with indie/startup game developers and provide guidance and advice based on my own experiences in the industry and having worked with lots of young companies. I recently met two of the developers of Beard: Life Grows On, and wanted to share their story.
- Tight Platforming Controls
- Unique enemy behavior and bosses
- Permanent death
- Fine-tuned random level generation
- Dozens of unique and fun items
- 3+ regions with their own environments and terrain generation
- Painted 2D art, with sweeping parallaxed backgrounds
- Interesting world with a cryptic history
- Originally composed soundtrack
- Self-trimmed beard appearance (bows, braids, colors, etc.)
- Dynamic quests featuring NPCs and their landmarks
- Secrets, so many secrets…
For the first time since 2009, new patent lawsuit filings declined in 2014 from the previous year. Lawsuits dropped by 13 percent, a significant shift from the numbers of cases over the previous five years, caused in part by the U.S. Supreme Court’s landmark Alice ruling, according to a new study released Wednesday by PricewaterhouseCoopers.
In addition, the U.S. Supreme Court has quietly adopted a rule that will increase pleading standards for filing patent lawsuits. In an order in late April, the high court without comment adopted changes to the Federal Rules of Civil Procedure that were approved in September by the Judicial Conference of the U.S. and will take effect Dec. 1. unless they are modified by Congress, which is considering bills that would raise patent pleading standards even beyond what the new rule requires.
May 18, 2015: Today the Federal Circuit decided the appeal in the first Apple v. Samsung case, upholding a majority of Apple’s damages award, namely, damages attributable to patent infringement. However, the court reversed the damages attributable to trade dress protection, ultimately finding that Apple’s uregistered trade dress in its older iPhones was functional and therefore not protectable under trade dress law:
Apple has failed to show that there was substantial evidence in the record to support a jury finding in favor of non-functionality for the unregistered trade dress on any of the [required] factors. Apple fails to rebut the evidence that the elements in the unregistered trade dress serve the functional purpose of improving usability. Rather, Apple focuses on the “beauty” of its design, even though Apple pursued both “beauty” and functionality in the design of the iPhone. We therefore reverse the district court’s denial of Samsung’s motion for judgment as a matter of law that the unregistered trade dress is functional and therefore not protectable.
We get asked… often… what sorts of names are best for your video game. This post isn’t a treatise on how to name your video game. This post is a poster child for what NOT to name a product. Never go with a generic or descriptive name. Despite use of the word “brand” on the box, these guys chose a very BAD name:
Today Google announced a new initiative to try and keep patents out of the hands of patent trolls, entities whose only business is amassing intellectual property and filing lawsuits. Google is calling this new effort the Patent Purchase Promotion. Google is basically asking patent owners to trust them. The company has pledged in the past to only use its patents defensively, suing only if someone sues it first. Of course, a company’s stance on patents can shift over time as it moves from young disrupters to entrenched incumbents. 2015 could also be the year Congress takes action. Or not, knowing Congress.
Like many things Google does, this project is a sort of open beta. “We view this as an experiment,” Google wrote in the program’s FAQ. “We are looking for ways to help improve the patent landscape, and we hope that by removing some of the friction that exists in the secondary market for patents, this program might yield better, more immediate results for patent owners versus partnering with non-practicing entities.”
An experiment indeed. More info over at The Verge. Needless to say, if you are a small entity that has one or two patents and you’re looking for some quick revenue, this may be a good way to go. This is especially true if you want to ensure that your patents don’t end up in the hands of
patent trolls non-practicing entities. However, only time will tell how Google uses the patents in the future.
Here is the Announcement.
Each year we take on a Research Intern to help with ongoing case research, updating our patent database, refreshing content, and anything else that comes along. If you’re interested, please send a cover letter, resume, transcripts, and writing sample to me at my work email address. Qualified candidates possess the following qualities:
- Enrolled in an ABA accredited law school
- Keen interest in video games
- Interested to learn more about Intellectual Property law (patents, copyrights, trademarks…)
- Does NOT have a technical background. For reasons I won’t go into here, I am unable to consider candidates who are eligible to take the patent bar. This is a bright line rule. No exceptions. If you are patent eligible and are interested in a Summer Associate position, however, send your materials to dcjobs at my work’s email domain. We are still considering candidates in DC.
- Preference will be given to candidates in the DC area. However, we have taken on remote interns in the past.
Queen Mary University Law School is hosting an event on 24 April 2015. Some details:
Venue: Lecture Theatre, Centre for Commercial Law Studies, Queen Mary University of London, 67-69 Lincoln’s Inn Fields, London WC2A 3JB
Interactive Entertainment is bursting with Intellectual Property. In this environment, creativity meets the latest technologies, thereby spawning cutting-edge law issues. This seminar will address some of the fundamental questions related to the legal nature of video games, the boundaries of protectability, and the relationship between Interactive Entertainment and Intellectual Property law, including digital exhaustion and key selling, and the issues surrounding interactivity as a form of creativity.
This seminar will provide a platform for academics, practitioners, developers and publishers to share views, exchange ideas, discuss challenges and explore solutions; in order to map the Intellectual Property issues that must to be addressed for a more appropriate promotion and protection of interactive entertainment works.
I will be one of the speakers at the event. Hope to see you there.