Applications for the National Medal of Technology and Innovation open until April 1st

Re-posted from the USPTO website by Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law

*National Medal of Technology and Innovation (NMTI)

 

Medal image reads "National Medal of Technology and Innovation"Are you an innovator?  You can apply for this prestigious award, but make sure you get your application in by
April 1st!

The National Medal of Technology and Innovation (NMTI) is the nation’s highest honor for technological achievement, bestowed by the president of the United States on America's leading innovators. 

The medal is awarded annually to individuals, teams (up to four individuals), companies or divisions of companies for their outstanding contributions to America’s economic, environmental and social well-being. The purpose of the National Medal of Technology and Innovation is to recognize those who have made lasting contributions to America's competitiveness, standard of living, and quality of life through technological innovation, and to recognize those who have made substantial contributions to strengthening the nation's technological workforce.

By highlighting the national importance of technological innovation, the medal is also meant to inspire future generations of Americans to prepare for and pursue technical careers to keep America at the forefront of global technology and economic leadership.

Established by the Stevenson-Wydler Technology Innovation Act of 1980, the medal was first awarded in 1985. On Aug. 9, 2007, the president signed the America COMPETES (Creating Opportunities to Meaningfully Promote Excellence in Technology, Education, and Science) Act of 2007, amending Section 16 of the Stevenson-Wydler Technology Innovation Act of 1980.

Selection Process

The National Medal of Technology and Innovation Nomination Evaluation Committee, a distinguished, independent committee appointed by the secretary of commerce, reviews and evaluates the merit of all candidates nominated through an open, competitive solicitation process. The committee makes its recommendations for medal candidates to the secretary of commerce, who in turn makes recommendations to the president for final selection. The National Medal of Technology and Innovation Laureates are announced by the White House and the Department of Commerce once the medalists are notified of their selection.

*Re-posted from the USPTO website:

http://www.uspto.gov/learning-and-resources/ip-programs-and-awards/national-medal-technology-and-innovation/national.html 

David Postolski, IP Attorney, to present at APAP NYC

 

Written by Elizabeth Gearhart, Ph.D., Patent Agent at Gearhart Law

 

David Postolski, Esq. , Intellectual Property Attorney at Gearhart Law, to present at APAP NYC on January 15, 2016 at the Midtown Hilton

APAP, the Association of Performing Arts Presenters, is holding its annual conference in NYC January 15-19 at the New York Hilton in Midtown as part of January in NYC.  “More than 3,600 presenters, artists, managers, agents and emerging arts leaders from all 50 U.S. states and more than 30 countries convene in the city for five days of professional development, business deals and exciting performances.” (from the APAP website).

Gearhart Law’s David Postolski will be giving two panel presentations on January 15th, one at 1pm and the second at 2pm in the Hilton Room on Concourse C.  The topic is “Intellectual Property Considerations in Representing Talent.”  David is an engaging speaker and is very knowledgeable on IP law and how it relates to the Performing Arts.  If you are an artist, actor, performing arts professional, or involved with the creative arts in any way, this is information you can’t miss!

You can find out more about the conference at APAP 2016 Conference and more about David’s presentation at IP Panel or by emailing David at David@GearhartLaw.com or calling him at 908-273-0700 (office) or 646-644-2959 (cell).

 

Spotify - in hot water?

Is Spotify® in Hot Water?

Written by Matt Miller, Esq., Patent Attorney at Gearhart Law

Remember Entrepreneurs, sloppy logging of agreements or failing to honor existing agreements can land you in hot water, which is a lesson that Spotify is learning the hard way.

Spotify, the popular music-streaming service that has, in the minds of some, revolutionized the music industry’s business plans, may be in hot water for failing to pay artists proper royalties. David Lowery, a member of the groups Cracker and Camper Van Beethoven has filed suit in Federal District Court accusing Spotify of foul play. Before those allegations are addressed, it is helpful to look at how Spotify claims their artist-compensation program works.

Spotify generates money for the music industry by either (1) charging users a premium for an ad-free service, or (2) offering users a free service, which contains paid advertisements. Through these two revenue streams, according to Spotify, artists and record labels received “nearly 70% of all revenues.” Digging a little deeper, we see that Spotify follows the below equation to determine how much a given artist gets paid.

http://www.spotifyartists.com/site/wp-content/uploads/2013/09/Spotify-Royalty-Formula.png

© Spotify Ltd 2016

 

As a guide to the above equation, Spotify provides the following information:

“1. Spotify Monthly Revenue

The total revenue Spotify makes in a given month from advertising and subscriptions as explained above. This varies from country to country depending on a range of factors including how many users we have in that country, how many of them are premium subscribers and how much advertising we sell in that country.

2. Artist’s Spotify streams divided by total Spotify streams

This calculates an artist’s popularity on the service, their “market share.” Dividing an artist’s streams by the total streams on Spotify determines the percentage of our total pay-outs that should be paid for that artist’s rights.

3. Royalties paid to master and publishing owners

Spotify negotiates our royalty economics with labels and publishers in each territory where we operate. Our current payment agreements lead us to distribute (~)approximately 70% of our gross revenues to master recording and publishing rights (both mechanical reproduction and performance) holders. The precise division between these types of rights holders varies by territory in accordance with local laws and negotiated agreements. In the United States, for example, statutes dictate that publishers receive ~21% the amount that master recording owners receive.

4. Artist’s royalty rate

Once Spotify has paid a rights owner the total royalties due for their accumulated streams, that label or publisher pays each artist according to that artist’s contractual royalty rates. This will likely also take into account other factors including recoupment status, which is one reason that different artists in different deals might ultimately receive different royalties from their respective labels and publishers.

Independent artists can retain up to 100% of their royalty payouts from Spotify by using one of our aggregator partners (a small fee may apply). Click here for a list of these partners.

5. Artist Pay Out

The end royalty paid out to the artist after the rights holder royalty split and any other deductions have been applied.”

 

While this all seems well and good, Spotify has recently been accused of having incorrect royalty information for a given artist, and for not taking affirmative steps to pair a song’s royalty information to a given song, allowing for Spotify users to stream the track, but without the owners of the songs being compensated for this stream.

As noted above, leading this charge is David Lowery, who has filed suit in the United States District Court for the Central District of California. Lowery is seeking class-action status which would allow him to sue on behalf of all of the allegedly jilted rights holders. If Lowery is able to get this case certified as a class-action, Spotify could be liable for damages totaling $150 million.

If what Lowery alleges is true, Spotify could find themselves liable for breach of contract and copyright infringement among other things. That said, if Spotify shows evidence of them honoring the existing agreements, or that there are not errors in their database, they could escape liability. Another confounding factor is whether or not the improper linking information was incomplete purposefully. If so, Spotify could find itself on the hook for triple the amount of damages for accidental infringement.

Since this lawsuit was only filed recently, it is too soon to evaluate the merits of Lowry’s claims. That said, if you’re looking for how you can avoid this type of situations you can (1) keep complete, thorough records, (2) honor your agreements, and (3) make sure that any electronic database you keep is periodically monitored for errors.

 

Redskins' Trademark Fight Goes to Appeals Court

written by James Klobucar, Esq., Patent Attorney at Gearhart Law

 

                                                 

                                                 Pretty Intimidating…no?

 

 

We previously examined the never-ending saga of the National Football League’s Washington Redskins and the cancellation of some of their trademarks, namely those featuring the word “Redskins,” back in mid-2014.

However, as previously alluded, this matter is far from over and counsel for the Redskins recently filed their opening brief in the United States Court of Appeals for the Fourth Circuit. Briefs from all parties are to be due by December 22, 2015.

The Redskins’ brief examines 5 main issues:

1.       Whether the disparagement clause of the Lanham (trademark) Act violates the 1st Amendment of the US Constitution.

2.       Whether the disparagement clause is impermissibly vague violating the 1st and 5th Amendments of the US Constitution.

3.       Whether the delay (over 40 years) between registering the trademarks and cancelling the trademarks violates due process.

4.       Whether the “Redskins” mark was disparaging when initially registered in 1967.

5.       Whether laches, or a delay in filing the lawsuit, bars cancellation of the trademarks.

To each point the Redskins argue….

1.       The disparagement clause violates the First Amendment of the US Constitution because it facially discriminates based on content and viewpoint. Trademarks are expressive, and the purpose of registration is to protect trademark owners from interference by private parties who could otherwise infringe or dilute the communicative value of the marks. Further, this clause substantially burdens protected speech by withdrawing registration of trademarks that convey messages the government disfavors.

2.       The disparagement clause is unconstitutionally vague. Whether a trademark “disparages” a “substantial composite” of a group (e.g. Native Americans) is wholly subjective. Enforcement of the statute is entirely arbitrary, as illustrated by the unprecedented cancellation in this case. The USPTO’s invitation to 300 million Americans to challenge any mark they disfavor or feel disparages them guarantees chaos and unpredictability.

3.       The government “initially recognized and protected” the Redskins marks in 1967, giving the team a “legitimate claim of entitlement” and a “clear expectation of continued enjoyment.” The massive delay between registration and cancellation deprived the Redskins of the fundamental requirement of due process and the opportunity to be heard “at a meaningful time and in a meaningful manner.’” Indeed, by 2006, the best evidence of what Native Americans thought in 1967 was long gone.

4.       The Redskins cite dictionaries, scholarly/literary/media references, and statement of individuals or group leaders to affirm that it was not disparaging when originally registered.

5.       It is undisputed that (1) all petitioners were “aware of the Redskins marks for many years before their eighteenth birthday,” and that (2) “nothing prevented them from filing the petition immediately after turning eighteen.” The oldest petitioner waited six years, the youngest petitioner, 11 months, 20 days. That was unreasonable, given that the current petitioners are represented by counsel who previously lodged these same complaints against the Redskins.

 

The Redskins at times make some valid points and at times also seem to be at odds with their own arguments. In one instance, the brief makes light of several registered trademarks that are either the same or very nearly identical to a separate trademark that was rejected as being disparaging.  At times, very little time had passed between the registration of one mark and the rejection of the others. Thus, it stands to reason, that both marks should either be deemed registerable or disparaging. The USPTO has shown themselves to be subjective and somewhat arbitrary in what they deem to be allowable.

Furthermore, the team highlights a number of trademarks that are presently registered including “Dumb Blonde” beer, “Boys Are Stupid” wallets, “Murder 4 Hire,” and a number of other much more questionable marks, relating to sex, orientation, and race, which unfortunately cannot be reproduced in this blog.

Thus, the brief, in a sense, points outs that there are registered marks that could be deemed disparaging and if those marks can be registered, then so can the Redskins’ mark. You can see where this is going….

It will be an interesting case to follow given the potential constitutional implications. It is likely only a matter of time before this ends up before the Supreme Court.  The outcome may fundamentally change not only the practice of law, but the manner in which the US Constitution is construed.

 

 

Gearhart Law Client Loliware® Wins Big on Shark Tank

written by Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law

Summit, New JerseyGearhart Law, a New York area-based IP firm specializing in patent, trademark and copyright law, is pleased to announce that its client, Manhattan based Loliware®, won funding on the October 2, 2015 episode of Shark Tank.   Chelsea Briganti and Leigh Ann Tucker were in the midst of a one million dollar raise, having raised four hundred thousand already.  Gearhart Law helped them file their patent application before going on Shark Tank. 

 

They asked the sharks for $100,000 for 10% of their company, but Mark Cuban had other ideas.  He offered the entire rest of the raise, 600K, for 25% of Loliware®.   Three of the other four sharks wanted in.  Deals were flying!  Barbara Corcoran gave the most convincing argument of why she and Mark would make the best investors.  Mr. Wonderful and Robert lost out, but they’ll recover.

 

What is Loliware® and why were the Sharks so excited?                                     

Loliware® is a new breed of cup, one that’s both edible and biodegradable.  You can have your cup and eat it too!  The Sharks loved the taste of the cups, which was a big plus.  A part of the motivation to develop these cups came from a desire to keep paper products out of landfills.  Imagine a party where you don't need trash bags!  It also helped them that they had a lot of interest from and contracts with distributors, including the party planning company “Save the Date” and another company, a large food distributor, who saw them at a tradeshow and make a deal with them.

                                  


To find out more about Chelsea and Leigh Ann and to order Loliware®, you can visit their website at
http://www.loliware.com/.   

 

 

 

# # #

 

About Gearhart Law   

Gearhart Law is an intellectual property firm headquartered in Summit, New Jersey, with offices in Manhattan and Philadelphia, specializing in patent, trademark and copyright services.  The firm’s expertise lies in drafting and prosecuting patents, trademark filings and prosecution, drafting and reviewing licenses and agreements, conducting due diligence for both investors and entrepreneurs, drafting legal opinions, patent, trademark and copyright enforcement, and other legal matters related to IP.  Gearhart files both domestically and internationally and has attorneys who speak multiple languages.

 

Gearhart Law has over 20 years of expertise in the area of consumer/industrial products and life sciences, as well as software and chemical arts.  The firm’s clients range from individual entrepreneurs to global businesses.  

 

Gearhart Law’s headquarters is located at 41 River Road, Summit, NJ 07901.  For more information, call 908-273-0700, email hello@gearhartlaw.com or visit the website at www.gearhartlaw.com and the blog at www.patentpuzzle.com.

 

 

Women Entrepreneurs Week Panel

                                          Women Entrepreneurs Panel                                                                                     

                            

     Elizabeth                                       Joan                                       Michele

FDU is hosting a 3-person panel discussion of the challenges and successes of life in the entrepreneurial world.  Join Elizabeth Gearhart, patent agent at Gearhart Law, and social entrepreneurs Joan Desilets and Michele Joseph.  

Elizabeth helped start Gearhart Law in 2006 and has been heavily involved since then as it has grown to include 10 employees and over 1000 clients; hear what worked and the lessons learned.

Joan has her own business making jewelry, but not for her own profit.  She sends the proceeds of her sales to Africaid to help young women in Africa through educational programs.

Michele founded SGAP, or “Student Global Ambassador Project”, where she organizes leadership conferences and visits to the United Nations for students.

To hear more of these women’s stories, join them at Fairleigh Dickinson University, Florham Campus, in the Hartman Lounge in the Mansion on Thursday October 22nd from 6-8pm.  The address is 285 Madison Avenue, Madison NJ; ask the guard at the gate for directions to the Mansion.

For details and to register contact Timur Pakay at the Rothman Institute of Innovation and Entrepreneurship, Silberman College of Business, at tpakay@fdu.edu or 973-443-8887.

 

Is your server ready for hurricane season?

written by Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law

Is your server ready for hurricane season?

If you’re starting a new business, there are many ‘infrastructure’ types of things that need to be addressed.  One of these is data storage and access.  As businesses grow they may add servers to handle the data files.  A few common questions about file server storage and maintenance are:

  • When does your small business need a server? 
  • Where should you store your server and who should maintain it? 
  • What happens to your business if the server goes down due to a malfunction or power outage?

I recently attended a tech conference and met a couple of people from NYI (www.NYI.net), a company that helps small businesses with data handling solutions.  We had an interesting discussion about servers; I found the person I was speaking with very easy to understand and relate to, and as a non-tech person (I'm an analytical chemist) I learned a lot from our conversation. 

Some of the points that came out of our discussion, and from my own experience working at a small firm:

  • Your business needs a file server when more than one person needs access to the same data files. 
  • You can buy your own server and maintain it yourself, but there are many issues with this and at some point you will most likely need a ‘tech person’ to help you with it. 
  • Your server going down is one of your worst tech nightmares.  If your server goes down you can’t access your data!  For us at Gearhart Law, that means not being able to work with our client files.  But we have our ‘tech person’, more than one, actually.  And we have secure, redundant storage for all of our files. 

So what happens when the power goes out?  Ideally you have a backup generator so your system won’t go down.  If you don’t have a backup power source, then you may want to consider off-site storage at a place like NYI.  They have storage in multiple sites around the country, including NJ and NYC.  You can have them supply and maintain your server, or you can store your own server there and visit it whenever you want to. 

What’s so special about NYI?  I thought they were easy to talk to and understand, and they have full power back up for their sites – battery backup for the first few hours, then diesel generators until the power is restored.  You can bet they got a lot of new clients after Hurricane Sandy!

Hurricane season is right around the corner but having the right infrastructure and protections in place for any disaster is a key to a successful business.

 

Global business - focus on China

                                                      

written by Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law

Join us for an engaging discussion on the best way to do business in China - how to get your product manufactured there, and how to protect it from patent infringement.  Our panelists include a product developer from Short Hills, New Jersey, who routinely has items manufactured in China, and a Chinese Intellectual Property Attorney.  The event is Thursday, June 25th from 6-9pm in Manhattan at Adelante Studios on 31st St. by 6th Ave.  Register at:

http://www.meetup.com/Global-Business-Strategies-and-Intellectual-Property/events/223043897/

The event is free and Gearhart Law will provide refreshments.  We're looking forward to an enlightening discussion and a whole new roster of business tactics!

Conducting Business in China panel discussion and networking

 

On Thursday June 25th, 6-9pm, Gearhart Law will be hosting a panel discussion in Manhattan on conducting business in China and Intellectual Property protection.

To sign up, go to:

http://www.meetup.com/Global-Business-Strategies-and-Intellectual-Property/events/223043897/

Our panel will include Josh Scharf, an industrial designer who routinely manufactures products in China, and Chenyan Wu, an IP attorney licensed in both China and the US .  The topic will be "Intellectual Property Protection and Manufacturing in China".

Agenda:

6:00 - 6:30 pm  Networking

6:30 - 6:45 pm  Introductory remarks

6:45 - 8:15 pm   Panel discussion - IP Protection and Manufacturing in China

8:15 - 8:30 pm   Questions

8:30 - 8:45 pm  Networking

 

              Josh Scharf
    President, Archetype Ltd.

Josh Scharf is President of Archetype Ltd, a new product development, manufacturing, and distribution firm located in Short Hills, NJ.  Mr. Scharf has been working in the field of Industrial Design for four decades.  He has been involved in the development of hundreds of products for a broad range of industries.  He has been manufacturing in Asia for nearly 30 years working with dozens of factories internationally overseeing the production of everything from hand-blown glassware to cast metal furniture and to complex power tools.  He has taught Industrial Design at the university level and regularly lectures about creativity, manufacturing, marketing, and product development. 

       Chenyan Wu
  Partner, China PAT Intellectual Property Office 

Chenyan WU is a partner at China PAT Intellectual Property Office in Beijing.  She is licensed to practice patent work in China and also passed the US Patent Bar Exam.  She has more than eleven years of work experience in the field of intellectual property including one and a half years working at a patent firm in the US and a two-month internship at a multinational corporation based in the US.  She has a bachelor’s degree in Electrical Engineering and received her master’s degree in intellectual property at University of New Hampshire School of Law (formerly Franklin Pierce Law Center). 

She has extensive experience in patent matters, covering prosecution, invalidation and opinion works.  She helps multinational corporations protect their intellectual property worldwide, including IP strategy, patent portfolio management, and enforcement.  Her firm ranks first worldwide as top PCT filing firm in 2012 and 2013.

 

Apple v. Samsung - the IP fight goes on

          APPLE V. SAMSUNG

written by James Klobucar, Esq., patent attorney at Gearhart Law

A long time ago in a galaxy far, far away…there was no such thing as the “smart phone wars.”

The Court of Appeals for the Federal Circuit (CAFC) recently handed down their most recent decision in the highly publicized clashing between the two tech titans. Samsung had appealed the district court’s approximately $930 million judgment in favor of Apple. The appeal before the CAFC focused on three mains areas of intellectual property law: trade dress, design patents, and utility patents.

Trade Dress

Trade dress protects characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers.  Trade dress must have secondary meaning as well as be non-functional.  Here, the appeal before the CAFC dealt with both federally registered trade dress, as well as unregistered trade dress as it relates to Apple’s products.

Unregistered Trade Dress

Apple claims certain elements of its iPhone 3G and 3GS to define an unregistered trade dress: 1) a rectangular product with four evenly rounded corners 2) a flat, clear surface covering the front of the product 3) a display screen under the clear surface 4)substantial black borders above and below the display screen and narrower black borders on either side of the screen 5) when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons.

Apple’s main argument was that this trade dress was non-functional whereas Samsung alleged the functionality of the trade dress. The court, in making its determination looks to four factors: 1) whether the design yields a utilitarian advantage 2) whether alternative designs are available 3) whether advertising touts the advantages of the design 4) whether the design results from a simple or expensive method of manufacture

When examining these factors, the court found that Apple failed to show evidence favoring non-functionality stating that Apple pursued both “beauty” and “functionality” in its design of the iPhone. The court then reversed the district court’s finding on this matter in ruling against Apple.

Registered Trade Dress

In contrast to the unregistered trade dress described above, the registered trade dress is also subject to a federally registered trademark.  This comes with a presumption of validity that Samsung must rebuff rather than putting the burden on Apple as with the unregistered trade dress issue. The trade dress here was drawn to “the design details in each of the sixteen icons on the iPhone’s home screen framed by the iPhone’s rounded-rectangular shape with silver edges and a black background.” 

However, Samsung was able to put forth such evidence, which Apple again failed to refute. Thus, the court found that the trade dress was functional and thereby not protectable. The court then reversed the district court with regard to his matter in ruling against Apple.

Design Patents

Design patents generally cover an ornamental appearance of an object. Here, Samsung focused less on the patents themselves, but rather technical arguments concerning jury instructions and monetary damages to be paid to Apple.

Samsung put forth two main arguments concerning design patents before the court: 1) Did the court fail to instruct the jury to disregard the functional aspects of Apple’s design patents? 2) Was the award of “total profits” given to Apple improper?

Jury Instructions

With regard to the alleged functionality of Apple’s design patents, Samsung argued in either the claim construction or jury instruction “functional” aspects should have been filtered out in the infringement analysis. This argument hinged on a previous CAFC case, Richardson v. Stanley Works. However, the justices noted that the case does not support Samsung’s position. Notably that, the language of focus “dictated by their functional purpose” was only a description of facts and in no way established a rule to eliminate entire elements from the claim scope as so alleged by Samsung. Thus, the district court was affirmed on this matter and the CAFC ruled in Apple’s favor.

Total Profits

With regard to the total profits, the provision governing damages (35 U.S.C. §289) states that: “Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.”  With that, the justices note that the statute explicitly provides for such damages and affirmed the total profits awarded to Apple.

Utility Patents

Utility patents protect a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Here, Samsung challenged the validity of Apple’s patents as well as monetary damages to be paid to Apple.

Validity

Finally, Samsung challenged the validity of one claim in each of two separate patents, as well as the damages awarded to Apple for utility patent infringement. Samsung argued that in one claim the term “substantially centered” was not defined and therefore indefinite, and argued the other claim was previously described by a patent application to Nomura and therefore not patentable.

The court after listening to highly technical arguments ruled with the district court in that Apple’s claims were valid as written.

Damages

Apple previously brought forth both damages for lost profits and reasonable royalties. To recover lost profits the patent owner must show causation in fact, that but for the infringement, he would have made additional profits. Market sales of a non-infringing substitute is often enough to defeat a case for lost profits. Samsung attempted to show that it indeed had non-infringing substitutes. However, the one of the phones asserted by Samsung to have not infringed was deemed to be too dissimilar to the iPhone. Further, one of the other asserted phone models was not even sold in the U.S.  Thus, the court upheld the lost profits ruling and ruled against Samsung.

With respect to reasonable royalties, Samsung argued that Apple’s expert offered only a cursory explanation of how she arrived at the royalty rates she calculated. Samsung also argued that a previous expert for Apple had similar flaws in their argument and did not present the analysis for reasonable royalty in light of the proper precedential test. The court chastised Samsung saying that they “complained” about the expert in question and found Samsung’s fault-finding “merit-less.”  Thus, the court upheld the damages and ruled in favor of Apple.

The End? Not likely….