Guest:  Prof. Bill McGeveran, Univ. of Minnesota Law School

Alas, fair use - a doctrine grounded in common sense, the Constitution and statute.  It shows up in the world of trademark and copyright as the noble defense to infringement - I was justified in using “x” because (fill in blank - I used the term descriptively; I used the term to analyze the brand; I used the song bit as a parody…).  But can you afford the defense?  Setting aside that troublesome question, let’s look at the doctrine itself.  Does it provide a clear, brightline rule to when you may and may not use another’s trademarks or copyrighted materials?  The answer is… sometimes.  In reality, content and brand owners tolerate a lot of use, fair and otherwise, simply because it’s not worth chasing down every over-the-line user.  That’s their decision to make.  But of the would-be fair user, how can you make common sense decisions on when to go forward on a fair use?  That’s the question for our experts. 

In this part 1 on Fair Use, we talk to Professor Bill McGeveran of the University of Minnesota.  McGeveran (aka McG - well, not that McG) is a former trademark litigator from Foley Hoag who now teaches and writes on trademark law.  We dig into the source of trademark fair use, its various species and some sensible ways to avoid conflicts on fair use issues.  Next  up: copyright fair use.

Guest:  Prof. Tom Cotter, Briggs & Morgan Professor of Law at the University of Minnesota

In an earlier podcast, we interviewed Profs. Tom Cotter (U of MN) and Carl Moy (William Mitchell) on the Federal Circuit’s landmark Bilski decision.  On June 28, 2010, the U.S. Supreme Court chimed in on Bilski and gave us new interview fodder (thanks to Prof. Cotter for the return visit).  In re Bilski related to the patentability of business methods (steps in accomplishing a business task) and has been a lightning rod in the intellectual property world (and elsewhere) during its long path to conclusion. These business method patents, typically directed to financial, Internet commerce, data analysis and business processes, are often written such that the particular machine or system used to perform the method is irrelevant. Bilski himself had tried to get a patent on various methods of managing hedge fund risk.

In one view, the patent system is simply evolving to protect modern methods of technology, which may be platform neutral. Think of the iPod, which can replace several other physical hardware tools. In another view, such methods may not seem to require the perspiration of genius of physical hardware and seem to some to be too easy to create and protect. Thus the questions posed to the Supreme Court: (a) do patentable methods require use of a particular machine or the transformation of physical matter; and (b) are business methods outside the bounds of patentability; and (c) what of Bilski’s methods of managing hedge funds.

If you’re Bilski, you now have certainty. The Supreme Court unanimously rejected his claims as being “abstract” and unpatentable math formulas. As to the other questions, we only know what’s not true. Per the Court, methods or processes, to be patentable, don’t necessarily require the use of a particular machine or the transformation of matter. That is simply one of the ways of evaluating whether a claimed method is too abstract to be protected. Finally, the Court ruled that business methods are not per se unpatentable. However, the converse is not true either – business methods are not always patentable. Rather, each inventor’s claims will have to be evaluated individually as to whether they are too abstract.

On this last point, if the Court had offered a definitive rule of unpatentability, thousands of patents across the country would have died a silent death. Depending on your perspective, this was a good or bad thing. For example, in the software community, there are many companies with valuable patent portfolios such as IBM who breathed a sigh of relief at the Court’s ruling. And there are others in that community who believe there should be no patents on software inventions who were equally dismayed.

For the inventor community as a whole, the upshot of Bilski is that there is no strict test for determining patentability of methods and processes. Flexibility and creativity in patent protection still reign. But the lack of a bright-line test means that more cases will fall within the zone of uncertainty, which may increase the cost of patent protection and litigation. While the Supreme Court may have been properly cautious in not issuing a ruling that stifled patent protection for future technologies, it did little to change the current realities faced by inventors and industry. They will keep working and keep inventing, and the Patent Office will continue to sift the wheat from the chaff.

Listen while we try to sort it all out.  Comments and diatribes welcome.

(Adapted from post on StarTribune.com as “Bilski, Business Methods and the Uncertainty Principle)

How many patents and file histories have you printed out this week?  Did you just make a trip to meet with a client that you could have easily handled with a videoconference?  How long did you sit in traffic today on your way to work?  How many boxes of papers did you take to your last deposition?  Maybe it’s time for your IP practice to Go Green.

Our special guest, Daniel Eisenberg can help you do that.  An attorney in the Washington, DC office of Beveridge & Diamond, P.C., Eisenberg practices in the area of environmental law and litigation.  He also heads up the American Bar Association (ABA)-Environmental Protection Agency (EPA) Law Office Climate Challenge.  The ABA-EPA Law Office Climate Challenge is a program that encourages law offices to take simple, practical steps to become better environmental and energy stewards.  Your law office (including law firms, government offices, citizens groups, courts, law schools and other law-related entities) can participate by implementing best practices for office paper management or by joining at least one of three EPA partnership (voluntary) programs that encourage better office paper management, the use of renewable energy, and good energy management.  The ABA Law Practice Management Section (LPM) is co-sponsoring this initiative.

Law firms, and especially tech-oriented IP firms, need to be leaders on these issues.  Listen and learn from Daniel Eisenberg about the Climate Challenge, the Green Power Partnership, ENERGY STAR ratings and how going GREEN can benefit your law marketing efforts and client relations.   So take the challenge and Go Green!

Patents, or patent procedures, need to be reformed (like a bad child?). At least some people think so. The U.S. Congress is debating various proposals that would, among other things, modify reasonable royalty and willful infringement analyses and let the USPTO set its own fees.  Meanwhile USPTO Director David Kappos is working mightily to unblock the patent backlog.  So what’s going in Europe?  The European Patent Office (EPO) is working to “Raise the Bar” for patent quality and prosecution.  Specifically, the EPO has been acting to limit the number of patent claims prosecuted and divisional applications filed.  These seem procedural, but if process ultimately prevents you from getting full scope of patent protection, that’s substantive. 

We were fortunate to have Bjorn Andersson, Senior Patent Attorney of Swedish patent firm Strom & Gullikson in our offices for a brief chat.  Bjorn, with S&G CEO Lars Schonbeck in tow, helped us dig in on the EPO reform efforts and figure out the big changes - some of which are going into effect next month.  Along for the ride was fellow M&G lawyer, Dennis Daley with practical thoughts on impact on US patent filers.  Give a listen and see whether the EPO can win the race for patent reform.

Mary K. Engle, Associate Director, FTC Division of Advertising Practices

Phil Wilson, Principal, RemainComm; Director, Association of Downloadable Media

On December 1, 2009, the FTC’s updated Guides for the Use of Endorsements and Testimonials in Advertising went into effect.  The Guides, last updated in 1980, were subject to a general revision, with the primary substantive change relating to consumer testimonials and typicality of result disclosures.  However, the areas of greatest interest and controversy about the revised Guides have related to online advertising and whether the FTC’s focus on social media unduly interferes with the organic flow of commercial speech on the Internet.

There are certainly some issues to be fleshed out related to when a blogger becomes a paid (versus enthusiastic) endorser.  One would also hope for equal treatment of on- and off-line promotional and journalistic activities.  Regardless, the revised Guides do not (and cannot) change the law of endorsements and testimonials specific to online advertising; rather, the Guides simply provide the FTC’s view of how the existing law on endorsements and testimonials applies to the virtual world.   A little secret: the FTC is too busy to chase individual bloggers.  But don’t take our word for it.  Read the Guides and listen to Mary Engle of the FTC and Phil Wilson weigh the impact of the Guides on the wild world of digital marketing.  And Phil says: ban the word “rogue!”  FTC action to follow.

Doesn’t everyone want to know what the court reporter thinks? How many times have you seen outlandish or just foolish behavior in depositions, public proceedings and trials? And while the judge, attorneys, witnesses and others prate on, the court reporter quietly observes and records, interjecting only to clarify the record. Well, to pierce the black box and see what court reporters think, especially in complex matters like IP suits, we chatted with one - Brandi Bigalke of Depo International. She’s had experience with depositions, trials, arbitrations and even public hearings.

As with our chat with Magistrate Judge Boylan, this is a chance to hear from other players (besides lawyers) in the invigorating madness we call litigation. Hear what works and what doesn’t when you’re in the chair, whether testifying, deposing or defending.

Intellectual property cases are (almost) exclusively the province of federal courts in the U.S. And, in keeping with the complexities of federal court, these cases (especially patent and trade secret) are often a firestorm of obscure technology, massive e-discovery fights and ever-shifting law. IP cases cry out for sensible governance and disposition. Enter the Honorable Arthur J. Boylan, a U.S. Magistrate Judge for the District of Minnesota who likes patent cases. His story is one of transformation – from small-town Minnesota to the big city, from lawyer to judge and from the high-volume of state court to the intricate remedies and practice of federal court. Judge Boylan has an ideal background to bring order and intellect to the wild west of IP litigation.

We were happy to get 30 minutes with Judge Boylan to chat about his personal journey, the differing challenges of state and federal court, the effect of big IP cases on federal courts, how to speak to judges (like they’re human beings), the virtue of patent-specific pretrial schedules, the value of technology tutorials and simpler ways to resolve discovery fights (a phone call).

Watch it at:  http://ernestgrumbles.posterous.com

Sometimes we get guests by chance - and usually we have great luck.  This happened again when Robert Cumming, a UK trademark solicitor from the Walker Morris firm (Leeds, UK), was bouncing his way around the U.S. a short while ago.  We sat him down for a friendly chat in Minneapolis and drilled him on law practice in Leeds (home of great lawyers and site of a famous Who concert - http://en.wikipedia.org/wiki/Live_at_Leeds).  Robert talked about UK vs. US vs. Euro. Community trademark practice and the ridiculously speedy trademark examination process in the UK (did he say same day examination? - hear it yourself).  And he discussed the recent drop in European Community trademark filing fees.  Yes - correct.  A governmental agency actually reduced fees (because they were so efficient they were making money!).  We (in the US TM practice) could learn from a few of these practices. 

Keep an eye here for a bonus 1-minute video of Robert Cumming on Why You Should File a Trademark in the UK.

We like SEO (search engine optimization) on BP/G Radio because it raises a number of IP issues – trademarks as key words, corporate and personal “brand,” false advertising and internet search engine patents (see previous discussion with Peter Quale). To keep the conversation going, we called up Bill Slawski, a nationally-recognized SEO consultant/blogger and principal at SEO by the Sea – see: http://www.seobythesea.com/ (this is a great blog).

Bill is a lawyer and former Delaware court administrator who helped move trial court records onto the web. In digging deep on internet search for the court system, he developed a facility with SEO and a fascination with the patented technology that drives search engine function. Search engine patents are often a roadmap of where the technology is going – not just where it has been. And Bill is one of the few SEO (or other) commentators who digs in on search engine patents and finds useful business information. We chatted with Bill about SEO and search engine IP, learning some of the secrets of the giants (Google, Yahoo, MS). While we had Bill on the phone, we also talked public access to court records (always a thorny issue).

We loved this interview.  Katie is a good friend and former colleague of G, has done IP litigation in the past, worked at Travelers Insurance as a claims attorney (in their IP division!) and now focuses on insurance coverage counseling and litigation.  She loves insurance!  So who better to chat with on the strange intersection of intellectual property and insurance.  A myth she busted - there is no insurance coverage for IP litigation.  Wrong - there can be.  You gotta read your policy.  And you have to be creative and persistent.

We talk about the types of insurance that might cover IP, what to do when you have a possible claim, and strategies for working with insurers.  We also briefly discuss a recent case from the Minnesota Supreme Court (General Casualty Co. of WI v. Hobbit Travel)  that held that trademark infringement claims trigger ”advertising injury” provisions of insurance policies (good news for those sued for trademark infringement).  Give a listen.  All comments/questions are welcome.

The headlines tell it all: Pfizer Buys Wyeth for $68B; Roche Acquires Genentech for $46.8B. Big Pharma companies are buying each other and consolidating. What will be the future of smaller pharma and biotech companies? How will innovative start-up ventures survive? Where will new research and development come from? BP-G Radio explores the answers to these questions and more with our guest, Abel De La Rosa, Ph.D. In this episode, Dr. De La Rosa brings his vast experience and knowledge of business, science and intellectual property to discuss some of the Big Pharma deals and how they will affect the future of the industry. He also discusses the plight of the small innovator companies and how they will fare in these difficult economic times.

Dr. De La Rosa is currently Senior Vice President, Business Development & Scientific Affairs at Pharmasset, Inc. (NASDAQ: VRUS) and has been with them since 2002. Our guest has held both scientific and business positions at several pharma and biotech companies. Most notably, while at Visible Genetics Inc. he was responsible for the development, transfer and improvement of products, including TRUGENE HIV-1 v1.0 Genotyping Test(r) and other sequencing-based assays for HCV and HBV. He is an inventor and author on several U.S. patents and publications relating to molecular diagnostic methods and techniques for infectious diseases and cancer.

And he loves what he does (give a listen - we need this kind of enthusiasm).

Of course, agents are like publishing deals – there are good ones and bad ones. Some who will pound the pavement and work the phone to get you a deal. And others who will sign you up – and do nothing. Or, even worse, charge you to read your book and still do nothing (David says: never pay anyone to read your book). You need an agent who is ethical, industrious and focused on your subject matter (children’s, mysteries, travel, etc.) if you want results. So get personal referrals, do meticulous research and interview anyone you are thinking about working with in depth. Oh yeah, the agent should be connected. As in they go to the same bars and cafes the editors go to. Do you know where they go? Better get an agent.

When is a method of doing something patentable? Specifically, assuming a process is new, useful and non-obvious, what substantive test controls whether the patent law should protect a given process under 35 U.S.C. §101? Courts have struggled to formulate an all purpose test – one that would accommodate the range of technical innovation. Perhaps the inquiry was simpler in times when basic mechanical, electrical and chemical engineering questions were being resolved (such as the vulcanization of rubber – see Goodyear’s method patent #3633). There are few, if any, philosophical disputes that the patent system was intended to, and does, cover such inventive processes. The U.S. economy move from a manufacturing base to an information base posed new challenges. Would the system evolve to protect new information and business method innovations - such as a tax refund system?? Sometimes, yes – see H & R Block’s U.S. Pat. No. 7,177,829.

In determining whether a given process is patentable, courts have applied various tests, including: (a) “useful, concrete and tangible result” test of State Street Bank (Fed. Cir.’s original effort to resolve business method problem child); (b) Freeman-Walter-Abele test (CCPA jurisprudence); (c) machine-or-transformation (S. Ct. in Benson); and (d) technological arts test (proposed by some Bilski amici). In its en banc Bilski decision, the Federal Circuit has now provided its official position on the matter: the Benson machine-or-transformation test governs exclusively and all the other tests are thrown under the bus (Prof. Moy’s phraseology – see below). While the Court was careful to state that there are no bright-line exclusions of business method and software subject matter, the Court also noted that these arts must meet the machine-or-transformation test. Most agree that business method patent practice will be a little trickier going forward (perhaps the Court’s intent?).

So now what? Of all the tests, why this one? Further, why use the cleaver of §101 to tighten patent eligibility when the scalpels of §§102, 103 and 112 do just fine? Is this the death of business method and software patents (as some have suggested)? Have we now in fact closed the debate on the patentability of business methods!?! (slight chuckle). Or will it all be resolved with careful claim drafting?

To help part the waters and clear the clouds on this evolving law, we turned to the academy - Prof. Tom Cotter of the University of Minnesota and Prof. Carl Moy of William Mitchell College of Law (each with some pointedly distinct views). We do a quick-fire dissection of the decision, take a quick romp of significant caselaw back to 1850 (when Goodyear was working on rubber), and ponder impact going forward. Joining us as well for a bit of pontification are a few colleagues with particular interest in Bilski (Denise Kettelberger; Rob Kalinsky; Ben Tramm; Al Vredeveld; Eric Chad). Stay tuned for more developments (review by the Supremes?).

Hope springs eternal in the minds and hearts of budding novelists everywhere that one day . . . they will be published.  And finally the world will know who they are and read their work.  The point at which the product of creativity (and years of toil) intersects with the pushy business of book publishing is a moment of peril.  Many novelists (or musicians) get dazzled by the first deal put before them.  Frankly, getting to the point where someone is offering you any kind of real publishing deal (as opposed to self-publishing contract) is winning a lottery.  But – as David Fulmer, popular author of Chasing the Devil’s Tail and other literary mysteries (www.davidfulmer.com), warns, this is a game, and authors (especially first-time) can lose if they don’t know the business realities of publishing.  The publisher needs to sell books and make money and is not going to look out for the best interests of the author.  By the time you (the author) learn what digital rights or Chinese sub-rights are, it may be too late. 

So why not skip the exercise and just self-publish?  No agents, no publishing contracts.  What could be simpler?  Just print the books or put the book on the internet and let the world read.  David says no way – avoid the “empire of the amateurs.”  Readers look to publishers to get to quality writing and that’s the group you want to be in.  So, develop your craft, be patient, work your tail off and if you get a chance at a deal, fight for the best deal you can get.  Oh yeah, and get a good agent or attorney (better listen to the next episode of bp/g radio).     

Digging up dirt on patents, trademarks and copyrights requires creativity, persistence, and intellect.  All the regular investigation practices (and skullduggery) come into play; but add complex technical subject matter, cagey marketing personnel and shady importers.  Who better to speak with on the subject than Ken Taylor, CEO of Marksmen, a leading worldwide IP investigative firm (www.marksmen.com).  Taylor, a former private investigator (and English major) leads us on a quick blast on the why’s and how’s of IP investigations, best investigative practices, and ethical problems (to avoid). 

It’s interesting how different countries define legal acts in different ways.  Or maybe it’s just annoying.  For example, how does it serve justice, common sense or clarity in the law to have a particular human act be a felony in one state, a misdemeanor in another, and totally legal in a third (think of the evolving law on medical uses of hemp).  That could be explained by varying acceptance of social conduct between population groups.  But what about more esoteric topics such as the definition of “contract?”  After a few hundred years of jurisprudence, we may have finally gotten to a point where the basic elements of contract formation do not vary wildly between US states.  But step outside the US or put goods into international commerce and now your US-executed contract may not be valid under the CISG (UN Convention on Contracts for the International Sale of Goods).  Better race to the courthouse.

Thankfully, mercifully, decades of effort by international study groups, negotiators, ambassadors and legislatures have resolved all international variances in intellectual property law.  Yes, in the early years of the 21^st century, we can look with pride across a global expanse of harmonious and uniform application of patent, trademark and copyright laws. 

And if you’re not laughing out loud, you should be.  Why, take patent law.  We can’t even get international accord on the definition of a patentable invention.  For example, a good incorporating new technology sold once publicly in the US without the benefit of a pending patent application works a worldwide forfeiture of patent rights (for the vast majority of countries requiring absolute novelty).  Maybe there’s a valid policy in pushing inventors to seek protection before commercialization.   But go deeper on what an invention is. 

To be patentable, an invention must be novel and non-obvious.  Or, on the latter point, in different parlance, show an “inventive step.”  On the issue of obviousness in the US, there are widely varying opinions on how different an invention must be from prior art to be a patentable invention (all employing multi-factor tests).  KSR hardly settled the matter.  More inventions are being attacked in the US on obviousness grounds than ever, suggesting greater uncertainty for all concerned.

So in an effort to get some distance from the maelstrom at home, we spoke with Neil Ireland, a patent attorney at the Phillips Ormonde & Fitzpatrick firm in Melbourne, Australia (www.pof.com.au).  Maybe it’s having summer in December that keeps the Australians a little more flexible.  But as Neil shares, their High Court is going in the opposite direction of the US Supreme Court and making it easier to show “inventive step” (non-obviousness).  The High Court, in a widely discussed case, recently reaffirmed that an “inventive step” can be shown with a mere “scintilla” of invention.  See Lockwood Security Products Pty Ltd. v. Doric Products Pty Ltd. (High Court 2007), opinion at http://www.austlii.edu.au/au/cases/cth/high_ct/2007/21.html.  Before you rush to file patent lawsuits in Australia, there is no presumption of patent validity.  Once a patent goes into the Australian federal courts, it’s de novo review.  So your patent will get a hard look no matter what.  Listen carefully as Neil tells all.  Then, we’ll be back shortly with the rest of the answer on international IP harmonization….

Rather than try to solve these issues en masse, we settled for a good conversation with a friend from across the Atlantic, Paul Cole, a chartered patent agent, patent litigator, and law professor from the UK who has written and spoken widely on issues of software patents.  Software patent issues are hot in the UK and EPO right now (see www.bailii.org/ew/cases/EWHC/Patents/2008/518.html), and Paul shares some candid thoughts.  Maybe there’s a middle path?  Fellow M&G colleagues Denise Kettelberger and Rob Kalinsky join the conversation.  Listen in (ignore my efforts to pronounce “cryptanalytic”).