marker-doodle.jpgOrange County – In 1998, to mark their attendance at the Burning Man festival, Google founders Larry Page and Sergey Brin decided to include a stick figure drawing of the Burning Man behind the Google logo on the front page of their website.  This was the first of what would be many modified Google logos, called Google Doodles.  Clicking on these Doodles will bring up a search page for terms associated with the theme of the Doodle, such as a search for Sir Isaac Newton from clicking on a Doodle commemorating the birthday of the famous physicist.

While visual art normally falls outside the area of patentable subject matter, Google saw fit to attempt to patent its Doodles, framing its invention as “Systems and Methods for Enticing Users to Access a Web Site,” and filing a provisional application in May 2000, followed by the non-provisional application in April 2001. 

Eleven years later, after going through multiple rejections and appeals, a patent was finally granted on March 22, 2011.   

In addition to claiming a system with instructions to create a “special event logo” by modifying the standard logo and associating it with a search page that would display upon user input, the patent also discloses an embodiment where a series of modified logos are displayed over a specified period of time to show a story line.  The figures in the patent show an example of such a story line, one of aliens examining and then abducting the Google logo.

The patent does come with some interesting limitations, and the claims are narrow enough that it would appear that many Google Doodles actually fall outside the scope of the invention.  No doubt Google has had to modify and adjust its claims numerous times over the decade that the patent has been at the Patent Office, with these limitations as the result.  For example, the patent only claims systems where the “special event logo” has been modified from the standard logo with “one or more animated images.”  Since the first Google Doodle appeared to the public in 1998, and Google did not file a provisional application until 2000, the statutory bar would have prevented the issuing of a patent.  The limitation that the logos be modified with animated images would therefore take those early Doodles, as well as the many non-animated Doodles that appeared after 2000, outside the scope of the invention, allowing the invention to get around the statutory bar.

Considering that the patent has received an extension of over seven years (2,618 days, to be exact) for Patent Office delay, it will be around for a long time.  With the narrow claims and limitations in mind, it will be interesting to see if and how Google will attempt to enforce this patent over the coming years. 

bird-twitter.jpgLos Angeles – If there is one thing that Twitter does not seem to do well, it would be protecting its intellectual property rights.  Just recently, the United States Patent and Trademark Office (USPTO) rejected Twitter’s “Tweet” trademark application for a second time. 

Apparently, the word “Tweet” has already been registered by Twittad, a third party advertising service that utilizes the Twitter API (Application Programming Interface).  “Let Your Ad Meet Tweets” was registered by Twittad in 2008, two years after Twitter posted its first tweet.  The USPTO based its decision on Section 2d of the Lanham Act which states that a  trademark that “ so resembles a trademark registered in the Patent and Trademark Office which is likely to cause confusion, or to cause mistake, or to deceive” cannot become a registered trademark.  After its initial registration for “Tweet” was denied in December, 2010, Twitter re-filed its application which was denied yet again.

Twitter has over 175 million registered users who average 95 million tweets per day.  With that being said, it is a little confusing as to why Twitter has taken such a laid-back approach to protecting its intellectual property rights .  Not only did Twitter wait three years after its inception to register “Tweet” as a trademark, but it has been notoriously lenient with companies that have tried to use the word twitter or variations of it. 

Twitter’s own trademark guidelines say not to apply for a trademark which includes the words Twitter or Tweet (or similar variations thereof).  Maybe Twitter’s  guidelines should have been posted long ago with the first tweet.  Filing a trademark application back then wouldn’t have hurt either.

There may be hope yet for the social media site.  Twitter can always try to challenge the Twittad’s registration by claiming priority of use.  This would require that Twitter file a Petition to Cancel the the prior registration.  It is more likely that Twitter will request that Twittad abandon its registration or become a licensee of Twitter which would allow Twittad to continue using its trademark. 

With Twittad now in the catbird seat, Twitter may finally realize its need to be more aggressive with its trademarks.

white_house.jpgLos Angeles – The U.S. Senate has passed the America Invents Act, a new law that is aimed to create synergy between U.S. patent law and foreign patent laws.  Most importantly, the law will move the United States one step closer to the well-embraced first-to-file system used by most other countries.   With the first-to-file system, the right to a patent for a given invention lies with the first inventor(s) to file a patent application for protection of that invention, regardless of the date of actual invention.

The new law, a major overhaul of existing patent law, will shift focus from invention date to filing date, thus limiting the controversy between inventors as to who invented something first.  This will essentially become a race to file your patent first, with the issuance of the patent being awarded based on file date and not invention date.

The America Invents Act is just another facet to aid The Intellectual Property Enforcement Committee.  The Committee was established by the Obama administration in early 2011 to improve the Federal Government’s efforts to enforce intellectual property.  President Obama has also been a proponent of the fast-track patent process which will speed up the patent review time and help businesses get their inventions to market faster.

Opponents to the new law argue that the first-to-file system would make it more difficult for smaller businesses to compete with large businesses that have more resources to file patent applications first.  The bill has proactively addressed this concern by mandating studies be conducted to determine the effects it would have on small businesses.  Furthermore, these studies would specifically focus on “how the change would affect the ability of small business[es] to obtain patents and the costs of obtaining patents; whether the change would create, mitigate, or exacerbate any disadvantage for applicants for patents that are small business[es], and whether the change would create any disadvantages for [small business] applicants.”  We don’t believe that the new laws will put small businesses at a disadvantage.

Many large corporations such as Microsoft, GE, IBM, and Exxon strongly support the bill.  Regardless of the opposition from heavy-hitters like Apple, Verizon, Dell, and Cisco, the bill is likely to pass.  David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO)  thinks the bill has promise and stated that the USPTO “looks forward to further action in the House, which will help deliver a 21st Century patent system that better equips the USPTO to move innovative ideas with sound patent protection to the marketplace.  We urge the House of Representatives to act on this legislation quickly, so that America’s innovators can benefit from these reforms as they work to turn their ideas into new businesses and new jobs.”

weight_scale.jpgSan Diego – The United States District Court in New York recently ruled in Favor of NBC and Reveille Productions, an affiliate of NBC, in a copyright infringement complaint.  The complaint, filed by Sonya Latimore, alleged that the idea behind the hit reality show “The Biggest Loser” was taken from her four-page synopsis entitled “Phat Farm/Fat Farm – A Weight Loss Adventure” without her authorization.

Judge Alvin Hellerstein dismissed the case on the basis that there was a lack of substantial similarity between “The Biggest Loser” and “Phat Farm.”  Latimore was unable to provide evidence of copyright ownership, actual copying by the Defendants, and unlawful appropriation of copyrighted materials.  In order to establish actual copying, the Court of Appeals must apply the “Ordinary Observer” test to decide “whether the accused work is so similar to the plaintiff’s work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff’s protectable expression by taking material of substance or value.”  Elements of protectable expression would include total concept and feel, characters, theme, plot, place, setting, and sequence.

The general concept behind “Loser” and “Phat Farm” involves emotional and physical challenges for overweight individuals who compete with each other to get fit and healthy in order to be the last remaining contestant on the show.  NBC stated that the Copyright Act does not protect those elements of the concept since they would be key to any weight loss reality television show.

Even if Latimore had proven there were strong similarities between the two shows, she could not prove that NBC had access to her synopsis, though she argued that her agent had given the network a copy.  NBC was able to provide evidence that in 2003, Reveille Productions’ executive Ben Silverman was actively seeking ideas for a weight-loss reality show.  Around the same time, a friend of Silverman’s who worked for 25/7 Productions, had registered a treatment for “The Biggest Loser” with the Writer’s Guild after getting an idea from a “Trainer Wanted “ advertisement at his gym.  The two friends pitched their ideas jointly to NBC which liked the general concept and thus created the hit show.

Besides substantial similarity, proving clear access to the work by the alleged infringer can be crucial in these types of cases.

lime.jpgOrange County – It seems that there is still some fight in the recording industry. 

In an October 2010 court injunction, LimeWire was ordered to stop distributing its downloading software.  LimeWire is a free peer-to-peer file sharing (P2P) client program.  The ruling was a major victory for the RIAA (Recording Industry Association of America), which has been grappling for years with illegal file-sharing sites and downloads.  The ruling states that LimeWire “intended to encourage” copyright infringement through its efforts to attract infringing file-sharers, its efforts to enable and assist such infringement, and its failure to mitigate such activity.  LimeWire offered a filter on its site that blocked the download of copyrighted materials however, users were responsible for turning on the filter themselves. 

In a statement from the ruling, the judge said, “This selective filtering further demonstrates LW’s knowledge of infringement-mitigating technologies and the companies intentional decision not to employ any such technologies in a way that meaningfully deters LimeWire users’ infringing activities…is a strong indicator of intent to foster infringement.”

The damages trial is slated to begin on May 2, with the recording companies expected to demand up to $150,000 per infringed work.  Considering the number of infringing files that were downloaded, that adds up to a mere $75 Trillion.  So LimeWire goes bye bye and the beat goes on.

No further details of the settlement terms were available.

solar panel.jpgLos Angeles – In the world of mobile media devices, it seems as though each new product release offers endlessly increasing processing power and yet also consumes less power.  Apple Inc., the leader of mobile iOS devices, is attempting to tap solar power in a new patent.

The United States Patent and Trademark Office (USPTO) granted Apple a patent for a “voltage regulator” and a “ smart controller” which will be used to charge devices in spurts with varying currents and voltages, depending on the batteries’ needs.  Using solar cells, the patent will utilize a process to charge the batteries without damaging them or the devices themselves.  The products that will reap the benefits of this new technology include Apple’s  iPhone, iPad, iPod, iTouch and its Mac PC line.

More details on Apple’s new solar patent can be found here.  With the next wave of iPhone5’s and iPad2’s to be released soon, it is unlikely that this technology will be available for the new lines.  However, don’t be surprised if the technology shows up in Apple’s products as early as late 2012. 

toiletpaper roll.jpgLos Angeles – With the thousands of patent applications submitted to the United States Patent and Trademark Office (USPTO) for various technological innovations each year, personal care product manufacturer Kimberly-Clark (KMB) has jumped on the bandwagon with its very own patent pending rolling system tubeless technology.  Back in 2010, Clark subsidiary Scott Naturals launched Tube-Free Toilet Paper, a roll of toilet paper sans the cardboard tube in the middle.

The company estimates that with 17 billion tubes used annually, approximately 160 million pounds of waste is not recycled.  Although the tubes are 100% recyclable, most are thrown away.  Environmentalists cringe at the thought of all those cardboard tubes needlessly filling up landfills.  The amount of rolls discarded is the approximate weight of more than 250 747 airliners.  One can agree that Kimberly-Clark is headed in the right direction with its new eco-friendly invention but was saving the planet its only motive?

As commodities prices continue to skyrocket, it’s no wonder that Clark is doing whatever it can to cover its bottom-line.  Analysts for Kimberly-Clark have predicted that profits for 2010 won’t meet their expectations and third quarter net income for 2010 fell by nearly 20%.  Even with consumer usage and prices at an all time high, Clark and other large corporations are finding themselves spending more and more to manufacturer products.  With the price of crude-oil increasing and in this case the cost of paper, tube-free toilet paper is a win-win.

The toilet paper giant wouldn’t comment on how much money the absent cardboard roll will save, but agreed that it will make a difference. 

flag.jpgOrange County – The number of patents granted by the United States Patent and Trademark Office (USPTO) in 2010 increased by 31 percent over the previous year.  With 219,614 patents granted in 2010, it was the most substantial increase on record.  It appears that our economic slump hasn’t affected the country’s innovators and inventors.

Not surprisingly, IBM held its title as Numero-Uno Patent-Holder, a title it has managed to hold for 18 consecutive years.  The 2010 patent tally for the technology giant headquartered in New York was 5,896, a 20 percent increase from 2009.  In its 100th year of business, IBM’s patents cover a wide array of technologies including hardware and software, smart utility, traffic, and healthcare systems.  The company currently employs more than 7,000 inventors globally.

IBM is not alone with its impressive increase in patents.  Both Samsung Electronics and Microsoft were among U.S. companies listed in the top eight to retain their same positions from the year before.  Samsung was granted 4,551 patents in 2010, up 26 percent from 2009.  Microsoft again landed third place with an smaller increase of 6.5 percent but still impressive considering the soft economy.

The Patent Intelligence and Technology Report, released by IFI Claims Patent Services, has been used to report patent count data on individual companies since 2006, after the USPTO stopped publishing the information.  Every year IFI collects data to determine its annual ranking of U.S. utility patent recipients.  The majority of patents being granted are utility patents.  The annual ranking can be found at www.ificlaims.com.

According to IFI Claims Patent Services, the 2010 patent increase could be due to the USPTO’s new patent examination initiative that would speed up the patent examination process.  Under the new “Three Track” proposal, applicants would be able to pay an additional fee to request an expedited examination process.  The USPTO has also opened its first regional office in Detroit in hopes of relieving its patent examination backlog.

The USPTO’s patent initiative is part of President Obama’s plan to stimulate the economy by getting inventions to market faster.

panda.jpgSan Diego – The cuddly kung fu-fighting bear which drew millions to the theatres to see “Kung Fu Panda” is now the subject of a copyright infringement lawsuit.

Jayme Gordon, a Massachusetts animation illustrator, filed a complaint in federal district court in Boston claiming that DreamWorks Animation stole his idea for the panda bear.  Gordon is alleging that “Po”, the panda depicted in “Kung Fu Panda” is strikingly similar to “Kidd”, a panda character that he began drawing in the 1990’s.

Gordon’s complaint also alleges infringement on other animated characters and plot components.  For example, Gordon developed a small red panda character to act as “Kidd’s” sidekick, as well as three other animated characters which made up a kung fu fighting group called the “Five Fists of Fury.”  The setting for Gordon’s characters is called “The Valley of Peace.”  Interestingly enough, there is a team of very similar characters to assist “Po” in “Kung Fu Panda” called the “Furious Five” and they live in the nearly identical “Valley of Peace.”  The L.A. Times posted a side-by-side comparison of Gordon’s characters and DreamWorks’ characters. 

The animated movie, which grossed more than $630 million, was so popular that DreamWorks has scheduled “Kung Fu Panda 2” to be released to theatres this June.

Gordon registered his characters with the United States Copyright Office in 2000 and alleges that the DreamWorks had access to his ideas due to the fact that he sent his works to animators and film studios.  In addition to damages and movie profits pursuant to copyright law, Gordon is seeking attorney’s fees, authorship rights, and statutory damages.

Overall this doesn’t look so good for DreamWorks. 

kangaroo_sign.jpgOrange County – After months of mediation to resolve a dispute over the Groupon trademark and Groupon.com.au domain name, it appears that the Chicago-based online group-buying site will be forced to market itself to Australians as Stardeals.com.au.  Groupon invites consumers to register on its website to receive daily emails from local businesses offering discounts and the discounts are activated once the retailers reach a pre-set minimum of customers willing to accept the deals.  In return, Groupon receives a cut of the offer value.

Groupon is scheduled in August to appear in Federal Court as plaintiffs in a cyber-squatting and trademark infringement lawsuit against Groupon Pty Limited.   Brothers Gabby and Hezi Leibovich, owners of Scoopon, an Australian website allegedly cloned from Groupon, went a step further by purchasing the Groupon.com.au domain name, took the company name Groupon Pty Limited, and are attempting to register the Groupon trademark (apparently filing for it just days before Groupon did).  Not surprisingly, Groupon is a tad bit upset over the alleged infringement and domain squatting.  After all, revenues for local group buying deals are expected to surpass $240 million this year. 

In the two years since Groupon has become internationally known, more than 20 sites similar sites have launched in Australia alone.  As for the cyber-squatting issue, this problem is well-known to Groupon.  To capitalize on its popularity, opportunists around the world began buying up local Groupon domain names, with the hopes of forcing Groupon to buy the domains at insane prices.  In fact, Groupon reluctantly offered to purchase the Groupon.com.au domain name and trademark from the Leibovich brothers for $286,000, which they initially accepted and then eventually turned down.  It is Groupon’s belief that the Leibovichs’ will only sell the domain name and trademark if it is willing to purchase the entire Scoopon business from them.  Scoopon is the second largest local group-buying website, with 25 percent of the market. 

Groupon’s lawsuit, which sites domain squatting, trademark infringement and unfair business practices, seeks unspecified damages.  In the meantime, Australians will be able to find local Groupon deals at Stardeals.com.au.