Florida Intellectual Property Law Blog

As a Florida patent attorney with 3 kids dragging me to Orlando regularly to visit Mickey, I found this AP News Alert of special interest.  The Shijingshan Amusement Park in Beijing, China, is having to explain why their round-eared mouse dancing with kids is not a knock off of Disney's Mickey Mouse according to an AP News Alert issued Wednesday, May 9, 2007.  According to the article, they also happen to have a "raven-haired" woman with seven men in elf suits.

Many see the Beijing theme park as evidence of rampant Chinese copying of U.S. intellectual property.  According to the article, the industry group - International Intellectual Property Alliance - estimated losses to Chinese piracy of books, films, music and software last year at $2.2 billion.  Beijing has penalties for violators of patents, trademarks, copyrights, and other intellectual property but infringement is allegedly growiing faster than enforcement.

Hats off to Mark Reichel of The Daily Dose of IP Blog for his post regarding the U.S. Patent Office discontinuing its annual top ten patent holder list.

In the Patent Office press release, the PTO announced that it will no longer be publishing its annual ranking of the top 10 organizations obtaining the most U.S. patents in the preceeding year.  According to the press release, it is abandoning the list of top ten patent holders and "emphasizing quality over qualtity by discouraging any perception that we believe more is better." 

 About time.  I always wondered why the patent office focused so much attention on their "top ten list" as all it really did was provide those few "repeat customers" lucky enough to be in the "top ten" with bragging rights on their level of innovation.  

I wonder if the patent office's departure from this "strictly by the numbers" approach is the beginning of a new trend in the intellectual property field.  Are we finally able to look beyond the total number of patents in any defined segment before making broad generalizations based upon that number.

For example, as long as I can remember, the well known publication, Intellectual Property Today has tabulate its "Top Patent Law Firm" and "Top Trademark Law Firm" listings based EXCLUSIVELY on the number of patents and trademarks these firms obtained for their clients in any given year. 

The law firms near the top of this list invariably (like their corporate counterparts in the PTO's top ten listings) used their ranking in IP Today's top ten lists in their marketing materials. 

Perhaps such marketing efforts are persuasive--I don't know--but I welcome comments from in-house patent counsel as to what weight, if any, the IP Today annual top firm survey has on their choice of private patent or trademark counsel.

(As an aside: I am currently considering corrective laser eye surgery to eliminate my having to wear glasses and have narrowed my choice of surgeons down to a handful in the Fort Lauderdale / Miami Florida area---let me tell you...the number of eyes ZAPPED per year per doctor is not on my list of criteria!)

I am sure that rankings that go "strictly by the numbers" is the easiest and least controversial method of publishing listings of law firms and the PTO's top ten list.  But just because something is the "easiest and least controversial" does not mean that it is faultless.  From the perspective of a Florida patent attorney, I fail to see how a ranking by the numbers provides any indication of quality (as in the listings of patent law firms) or of innovation (as in the PTO's top ten listings).  

MSN Money reports just days after Google owned YouTube announced that media companies will have no choice but to work with online sites such as theirs, Viacom has responded with a $1 billion lawsuit, alleging that the video-sharing site has shown 160,000 of its videos without permission.

Previously, after talks about a licensing deal failed, YouTube said it would remove 100,000 Viacom clips, including a number from Comedy Central shows.  Viacom and other big media players say that the problem with YouTube is that it will pull copyright clips only after its been asked to do so, putting the burden of policing content on the copyright holders and allowing users to re-post illegal copies as soon as they are removed.

As a Florida patent attorney, I try to keep an ear to the ground on new developments in Florida that are relevant to my practice of intellectual property in the state.  The potential increase in Florida's biotech patenting activity is one such development.

In a recent post in the BioHealth Investor, Florida is touted as one of the country’s next biotech hubs. According to the article, it all began when the Scripps Research Institute accepted a proposal for $500 million in financing to establish a biotech research hub in the state on the western fringes of Palm Beach County.

After encountering some problems with environmental groups, Scripps made a decision to move their research center to Jupiter, Florida just north of West Palm Beach, Florida, one of Florida Atlantic University’s campuses. 

In an article reprinted in the Orlando Sentinel, Phil Milford of Bloomberg News reports a patent infringement suit has been filed against  Walt Disney, Universal Studios, Busch Gardens, and other theme-park operators for allegedly infringing patents on magnetic brakes used on roller coasters.  Florida patent attorneys should find the complete article of interest:

Disney, GE, others face patent suit

General Electric Co.'s NBC Universal Inc., Walt Disney Co. and three other U.S. theme-park operators were accused of infringing patents on magnetic brakes used on roller coasters.

Safety Braking Corp., based in Newport Beach, Calif., claims the companies infringed patents won in 1994 and 2003. The defendants also include Busch Entertainment Corp., Six Flags Inc. and Cedar Fair LP.

Safety Braking holds exclusive licenses to the patents, one from Magnetar Technologies Corp., based in Seal Beach, California, and the other from G&T Conveyor Co., based in Tavares.

As a Florida patent attorney and the author of the Florida Intellectual Property Law Blog, I often receive press releases and news submissions relating to Florida intellectual property matters.  I received the following press release today regarding another case by Florida intellectual property attorneys Silverman Santucci, LLP concerning alleged violations of Florida trade secret law:

For immediate release by PRceptions:

Tim Allen and Touchtone Pictures Sued Over Wild Hogs Rip-Off

One week before the national release of the much publicized John Travolta road comedy, Wild Hog's, Travolta's co-star, and Hollywood funny man, Tim Allen, and Disney's Touchtone Pictures, are being sued for theft of trade secrets under Florida law. The suit is still pending.

 If South Florida screen writers Steven Battaglia and Paul Danner get their way, and the Florida courts aprove, all money generated by the movie will be deposited in a trust fund pending the outcome of the lawsuit.

 The lawsuit claims that on two occasions, first in 2000 on the set of the Touchstone movie The Crew, and then again in 2002 on the set of another Touchstone release Big Trouble starring Tim Allen, Battaglia handed copies of his work to agents and representatives of Touchtone Pictures and to one of Tim Allen's personal assistants. Writer Steven Battaglia is a well known South Florida based hair dresser who works on movie sets in the area. Paul Danner is a author/screen writer with extensive credentials as well as being a police detective in South Florida.

The United States Patent and Trademark Office has launched a community review project according to an article in the Washington Post.  The peer review project will post patent applications to the internet and invite comments on prior art submissions from the internet community.

The complete article can be found here and is reproduced below for your convenience:

 By Alan Sipres

Washington Post Staff Writer
Monday, March 5, 2007; 3:34 PM

 The government is about to start opening up the process of reviewing patents to the modern font of wisdom: the Internet.

As a Fort Lauderdale patent attorney, I closely follow patenting news relating to the medical device industry as we have several clients in this technology group.  Of particular interest is new patent infringment cases filed and their successful resolutions.  In this regard, I recently came across a press release by Ft. Lauderdale diabetes testing equipment and supply manufacturer, Home Diagnostics, Inc. regarding a summary judgment in their favor for non-infringement of patents held by Roche Diagnostics Corporation.

The case was filed in the United States District Court, Southern District of Indiana and a link to the full press release by the Ft. Lauderdale, Florida company's website can be accessed by clicking here.

A number of technology and manufacturing companies, suppliers, and service industries in Florida have formed associations to benefit from the shared knowledge, networking, leglislative initiatives, and idea exchange that results from collective action.  Some of the ones of which I am aware are listed below (in no particular order) and I welcome suggestions for any additions to this list:

Brevard Manufacturing & Technology Association

Enterprise Florida

Economic Development Commission of Florida's Space Coast

South Florida Manufacturers Association

First Coast Manufacturers Association

Florida High Tech Corridor Council

Bay Area Manufacturers Association - "The Voice of Manufacturing in the Tampa Bay Area"

Marine Industries of South Florida

Marion Regional Manufacturers Association

Florida Minerals and Chemistry Council

Manufacturers Association of Florida

Florida Medical Manufacturers' Consortium, Inc.

Manufacturers Association of Central Florida

Marine Industries Association of Florida

Made in Florida

Florida Advanced Technological Education Center for Manufacturing

Florida Smart Manufacturing Industries Directory

The Florida Litigation Center reports that Stephen Michael Smith, 34, of Middleburg, Florida was recently sentenced to 18 months imprisonment by the Honorable Henry Lee Adams, Jr., United States District Judge in the Jacksonville Division of the Middle District of Florida, for distribution of pirated software over the internet, in violation of federal criminal copyright infringement laws.

Smith previously entered a guilty plea to a single count information on December 7, 2004, which charged him with infringement of a copyright.  In addition to the prison term, Smith was ordered to forfeit all computer equipment used in commission of the offense, and during his two years of supervised release, is to have no access to computers connected to the internet, absent his probation officer's permission.

The Palm Beach Post reports that the Florida Venture Forum invited 27 start-up companies to present their business plans at the Florida Venture Capital Conference at the Boca Raton Resort and Club.

Two South Florida companies that were schedule to appear where (1) DayJet Corp. of Delray Beach, a company developing on-demand short-haul jet service and founded by Ed Iacobucci, who also created Fort Lauderdale-based software maker Citrix Systems, and (2) Multiply Inc. of Boca Raton, a social networking website aimed at adults who are looking for ways to share photographs and communicate with family and friends.  This company was founded by former CBS sportsline.com executive Pete Pezaris.

Dan Rua, an experienced early-stage venture capital investor with a technology foundation and product design, development, and management experience, is the author of Florida Venture Blog.  The blog, described as "a running perspective on Florida's growing tech and venture community," provides valuable information for those individuals seeking to build companies by innovative means.

Currently a manager at Inflexion Fund, Mr, Rua's experience includes a partnership with Draper Atlantic, participation in finding and building thirty-two companies and managing funds totaling over $140 million, as well as teaching entrepreneruship and venture capital seminars at various educational institutions.

The Florida Venture Blog is considered one of, in not the, leading blogs on tech, entrepreneurship, and venture capital around Florida.

In addition to consulting a Florida Patent Attorney to assist with intellectual property issues, exploring ways in which to start up or enhance a business is definitely advisable.

An excellent resource for Miami and Florida intellectual property issues is the Counterfeit Blog, concentrating on anti-counterfeiting law and policing.  The blog is published by Miami, Florida Attorney Leora Herrman, who has been fighting counterfeiters for more than a decade.

Ms. Herrmann's legal expertise includes anti-counterfeiting, copyrights, licensing of trademarks,  patents and celebrity rights of publicity, U.S. and international trademark protection, and copyright law.  For interesting, informative, and insightful articles, this is definitely a site to check out at www.counterfeitblog.com.

 William Patry has authored a new 7 volume (no appendices), 5,830 page    treatise on copyright  that West just published. The treatise is unusual in a lot respects. It is an extremely comprehensive treatise on copyright and Mr. Patry believes it is one of  the largest legal treatises ever written by a single individual.

Mr. Patry has a diverse background, which is reflected in the treatise. He is presently Senior Copyright Counsel to Google Inc., but was also a full-time law professor at Cardozo Law School for 5 years, copyright counsel to the U.S. House of Representatives (3 and a half years), a Policy Planning Advisor to the Register of Copyrights (4 and a half years), and he spent 12 years in private practice litigating copyright cases. The treatise reflects all these experiences and has a foreword by Justice O'Connor and an endorsement by former Solictor General of the United States Walter Dellinger.

In his Intellectual Property Counsel Blog post entitled " A Litmus Test to Identify Exceptional Patent Attorneys ", in-house Florida intellectual property attorney Todd Mayover provides a good overview of things that distinguish a " good patent attorney "from an "exceptional patent attorney ". 

In particular, he writes:

Adding value to patents requires a complete understanding of an invention, knowledge of the current state of the field of art, the ability to identify how an invention fits in to the industry or market, and the ability to identify and distinguish the closest competitors.

I could not agree more with this statement but feel the need to question sometimes the way that in-house attorneys make their hiring decisions for patent prosecution work.  Many times, outside counsel are chosen on the basis of firm and name partner reputations without any inquiry at all on who will actually be doing the work. 

There is nothing wrong with this, of course, as long as the attorney and partners that were responsible for building a law firms reputation are the same ones that will work on your matter.  If they are not the ones actually doing the work on a company's application, however, in-house intellectual property lawyers should question why they are paying for a senior partner's billing rates when a "wet behind the ears" new associate is actually the one doing the "heavy lifting" on the patent application draft.

The Florida Trend Editor's Page had an article of interest for any Florida patent attorney following the state's biotechnology scene.  Entitled "Rules of the Game", the article discusses a number of reasons for optimism for Florida's biotech research and cites an Ernst & Young Global Biotechnology Report for support.

The report ranks Florida's biotechnology scene as one of the top 10 centers in the United States.  Also, according to the article, the number of Florida invention disclosures rose 84% at 12 Florida schools between 2000 and 2005 and the number of licensing agreements executed to start-up companies went from 13 in 2000 to 31 in 2004 and 22 in 2005.

A U.S. District Court Judge's ruling against restaurant chain, HOOTERS, has been affirmed in a decision by the U.S. Court of Appeals for the Eleventh Circuit.

Florida District Court Judge Anne C. Conway in Orlando, Florida, ruled that the "Hooters Girl" persona is "primarily functional" and therefore not entitled to trademark protection. HI Ltd. Partnership v. Winghouse of Florida, Inc. No. 6:03-cv-116 (M.D. Fla. 2004).

Trademark attorneys for Hooters claimed that the Florida based sports bar WingHouse copied too many elements from Hooters restaurant and violated the Florida Deceptive and Unfair Trade Practices Act.

Relying on the classic elements of trademark infringement, Hooter's argued that Winghouse copied so many features unique to Hooters that customers would be confused into thinking the two companies were affiliated.

Todd Mayover, in-house intellectual property counsel for a medical device company in Florida, has an interesting post at the IPCounsel Blog entitled Intellectual Property Mediation:

"Regardless of the situation, without suggesting mediation, it will never happen. The obvious risk is that other party(s) may say no, but this would have no effect on the actual case at hand. At least the parties would know where they stand."

That being said, it is important to note that the risks of not mediating vary greatly depending upon which milestones have already passed in the litigation.

In Breckenridge Pharmaceutical, Inc. v. Metabolite Laboratories, Inc. et al. (Fed. Cir. 2006), the Federal Circuit held that a patent owner's dealings with a Florida licensee was sufficient to give the court jurisdiction over the patent owner.

Beckenridge filed suit against Metabolite and PamLab in the United Stated District Court for the Southern District of Florida for a declaratory judgment of non-infringement of the patent and alleging state law claims of tortious interference with contract and unfair competition.

The Federal Circuit held that Florida's long-arm statute authorized personal jurisdiction over Metabolite and that such jurisdiction would comport with due process:

In sum, our case law has held as follows: where a defendant has sent cease and desist letters into a forum state that primarily involve a legal dispute unrelated to the patent at issue, such as an injunction obtained for misappropriation of trade secrets, the exercise of personal jurisdiction is improper. Silent Drive, 326 F.3d at 1202.

According to an article in Business Wire, publishing statistics compiled by Bowker list Florida as third, behind California and Texas as the most popular fictional state setting in the United States released in novels today.

Sometimes the nature of a new method of doing business or a new idea does not lend itself to effective trademark, copyright or patent protection. It may still be possible to provide some protection for these ideas through contract or trade secret law.

The formula used for the Coca Cola brand soft drink is a classic example of a successful trade secret with a long life. Unlike patent, trademark, and copyright law, the law relating to contracts and trade secrets is based on state law and may differ from state to state.

As any successful entrepreneur will tell you, there are a multitude of competitive risks faced by companies that, although unfair, are perfectly legal. As such, the term "unfair competition law" is actually an illusory term and one of the most difficult areas of intellectual property to define.

Before looking into franchising a new idea for a successful business, it is important for an entrepreneur to understand the conceptual dynamics of franchises and the franchise arrangement. Franchising can be an excellent way to expand a business. By cloning proven business and marketing techniques and finding others willing to invest their time and money to help grow a business concept, a proprietor can use franchising to obtain growth rates much higher than if he or she were restricted to opening more units on their own.

When most people think of creative expression, they naturally envision the work of individual authors, artists, poets, singers, and musicians. In fact, these works only comprise the classic examples of copyrightable subject matter. Less obvious, however, is the multitude of everyday business components that lend themselves to copyright protection.

In today's competitive business environment, the potential valuation of a company lies not just in its physical assets but is based to a great extent on its ability to develop and capitalize upon a steady stream of new ideas and creativity. In this regard, important creative components of a business including sales brochures, advertising, solicitation letters and emails, instruction manuals, architectural and engineering drawings, pictures, photographs, paintings, graphical images, web-site designs, computer software, music, and sound recordings can all be protected under copyright law.

With reduced barriers to entry, key employees are more capable than ever before of forming split-off start-up companies and competing with their former employers. Furthermore, job mobility is at an all-time high with senior management and even principals moving regularly as a way to take advantage of new opportunities and to advance their careers.

In this contextual setting, it certainly is not difficult for confidential and proprietary information to reach an established competitor through a trusted former employee, partner, vendor, or sub-contractor. Companies simply cannot afford to risk stockpiling valuable ideas and proprietary knowledge in the minds of a mobile, independent, and sometimes disloyal workforce.

When asked to identify company assets, many business people will rattle off a listing of real estate, equipment, supplies, inventory, and other tangible property.

In today's economic climate, however, it is more important than ever to be vigilant in securing and protecting valuable intellectual property assets such as patents, trademarks, copyrights, and trade secrets.

When most people think of creative expression, they naturally envision the work of individual authors, artists, poets, singers, and musicians. In fact, these works only comprise the classic examples of copyrightable subject matter. Less obvious, however, is the multitude of everyday business components that lend themselves to copyright protection.

In today's competitive business environment, the potential valuation of a company lies not just in its physical assets but is based to a great extent on its ability to develop and capitalize upon a steady stream of new ideas and creativity. In this regard, important creative components of a business including sales brochures, advertising, solicitation letters and emails, instruction manuals, architectural and engineering drawings, pictures, photographs, paintings, graphical images, web-site designs, computer software, music, and sound recordings can all be protected under copyright law.

A Non-Disclosure Agreement (sometimes called a confidentiality agreement) is used by an inventor to reveal an unpatented idea to a party. The inventor has the other party sign a document that says they will not disclose any of the information to anyone else, and will not compete with the inventor.

I strongly discourage revealing your invention until you have filed a patent application even if you have a Non-Disclosure Agreement. Non-Disclosure Agreements should be used sparingly and only when disclosure of your idea to another party is required.

All blog postings to this category are related to Miscellaneous IP topics as they appear in the law. These may include, but are not limited to, Copyright Law, Franchise Law, Trade Secrets, and Unfair Competition.

A patent has been awarded to Florida Atlantic University Professor Stuart Galup for a new software-based system for assisting local government departments in overseeing guardianship cases according to an article in the Boca Raton News.

According to the article, this was the first patent associated with Florida Atlantic University to originate with the College of Business. The fact that the article points this out as being significant shows that patents are still seen by many as being in the exclusive realm of engineering colleges not business schools. A number of patents for software-based innovations and business methods have been granted to Florida patent holders recently.

I am frequently asked by inventors to explain how patents differ from trademarks and from copyrights. They are fundamentally different. Lets take a quick look at trademarks and copyrights now.

First, lets look briefly at trademarks. A trademark can be a word, logo, design, or even a combination of these. A service mark is similar to a trademark except that it is used to express the origin of services.