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5/4/16 – Life Sciences Series Panel 1: Business and IP Strategy 04/21/2016

Posted by Morse, Barnes-Brown Pendleton in Events, Intellectual Property, Life Sciences, MBBP news.
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reg now buttonJoin us at MBBP‘s Waltham office on Wednesday, May 4th at 7:00am for a look at Building Your Product & Patent Strategy from the Ground Floor. This is the first of four events in the 2016 Life Science Panel Series.

This lively panel of experts will discuss how to structure a well-crafted intellectual property portfolio. They have all built and analyzed multiple portfolios and will share their experiences on the do’s and don’ts in both organically growing an IP portfolio and in-licensing key properties.

Panelists include:

  • William Edelman Social Entrepreneur and C-Level Executive, Paragonix Technologies, NewVert, VitaThreads, Flexicath, First Light Biosciences
  • Molly Hoult Vice President, Fletcher Spaght Ventures
  • Michael McDonald, Ph.D. Director of Intellectual Property, bluebird bio

Seating is limited. Register today!

Sequenom Petitions Supreme Court to Clarify Scope of Mayo in Sequenom v. Ariosa 04/05/2016

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, Life Sciences, Medical Devices.
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M0846516Late last month, Sequenom, Inc. filed a Petition for Writ of Certiorari requesting the United States Supreme Court to clarify the scope of its Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) decision, as applied to Sequenom’s claimed inventions.  The Mayo decision, which held that a method correlating a drug dosage regimen and levels of the drug in the blood was an unpatentable law of nature, has had the profound effect of narrowing the scope of patent-eligible subject matter in the United States and has cast doubt on the validity and enforceability of previously-issued United States patents.

Sequenom’s discovery related to the discovery of cell-free fetal DNA circulating in maternal plasma, which was used to invent a test for detecting fetal genetic conditions in early pregnancy, and thereby avoid subjecting the mother to dangerous, invasive techniques such as amniocentesis.  The Federal Circuit agreed that Sequenom’s invention combined and utilized man-made tools of biotechnology in a new way that revolutionized prenatal care; however, in view of Mayo, such inventions were deemed patent-ineligible as a matter of law, since their new combination involved only a “natural phenomenon” and techniques that were “routine” or “conventional” on their own.

Despite the Federal Circuit’s reluctant holding that Sequenom’s claimed inventions were not patent-ineligible, multiple judges wrote separately to explain that while this result was probably not intended by Mayo, that decision controlled and only the Supreme Court could clarify Mayo’s reach to prevent a “crisis of patent law and medical innovation.”  Sequenom’s petition now asks the Supreme Court to clarify the scope of its Mayo decision in view of Sequenom’s claimed inventions, and to determine whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon; (2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery.

If the Supreme Court grants certiorari it will have a compelling set of facts before it to clarify the scope of Mayo, and we patiently await its decision, which will have high stakes for the life sciences community.

For more information, contact Patent Attorney Stan Chalvire.

MBBP Attorneys Speaking at Upcoming swissnex Boston Seminar 03/09/2016

Posted by Morse, Barnes-Brown Pendleton in Corporate, Employment, Events, Intellectual Property.
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This Friday, March 11th MBBP Attorneys Scott Bleier, Stan Chalvire, Maura Malone, and Callie Pioli will present to Swiss MBA students at swissnex Boston, the consulate of Switzerland. The panel will discuss legal standpoints on conducting business in the U.S., focusing on topics including corporate, employment, and intellectual property law.

For more information regarding this seminar, please feel free to contact a member of our team.

Survey Says: Top NINE Intellectual Property Developments of 2015 03/04/2016

Posted by Morse, Barnes-Brown Pendleton in Computer Software & Hardware, Intellectual Property, Licensing & Strategic Alliances, Life Sciences, Privacy and Data Security, Publishing & Media.
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happy-birthdayBy: Callie L. Pioli

2015 was another busy year in terms of intellectual property law, but luckily, MBBP has been carefully monitoring all of the important developments. There were many contenders for spots in our list, but only a select few could make the cut.

Get a recap on 2015 (and prepare for success in 2016) by reading our list.

We cover:

  1. Happy Birthday to All! – Marya v. Warner/Chappell Music, Inc.
  2. Google Books (Authors Guild v. Google, Inc.)
  3. Disparagement versus Free Speech: In re Tam
  4. Issue Preclusion & The TTAB: B&B Hardware, Inc. v. Hargis Indus., Inc.
  5. Patient Infringement Liability: Akamai Techs., Inc. v. Limelight Networks, Inc.
  6. Biosimilarity: Amgen v. Sandoz
  7. ­Patentability of Natural Phenomena: Ariosa Diagnostics, Inc. v. Sequenom, Inc.
  8. Computer Fraud & Abuse Act
  9. Safe Harbor Down, EU-US Privacy Shield Up

 

Is Software Patentable? 03/03/2016

Posted by Morse, Barnes-Brown Pendleton in Computer Software & Hardware, Intellectual Property, Legal Developments.
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M0846496By: Brian J. Assessor

On June 19, 2014, the Supreme Court’s decision in Alice Corp. v. CLS Bank International sent shockwaves through many areas of patent law and, as a result of that decision, patent attorneys, inventors, and companies working in the computer and software space are wondering “is software patentable?” and, if so, “what type of software is patentable?”. The impact of this case should be a primary consideration for anyone filing a patent application related to software, even those who were not previously aware of the Alice Corp. decision.

Read the full article.

Learn more about our Patent Team.

MBBP Publishes February M&A Today Newsletter 03/01/2016

Posted by Morse, Barnes-Brown Pendleton in Corporate, Intellectual Property, Legal Developments, M&A, Taxation.
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MA Today Banner (M0620645)Hot off the press!

Articles include:

  • Tips for Enforcing Indemnification Provisions
  • Permanent Exclusion of Gain on Sales of Qualified Small Business Stock
  • IP Due Diligence: Patentability vs. Patent Infringement

Get more info on our M&A blog or read the full newsletter.

 

Clearing Away Cloud Confusion; MBBP Team to Illuminate Intricacies of Buying and Selling Cloud Services 02/01/2016

Posted by Morse, Barnes-Brown Pendleton in Computer Software & Hardware, Corporate, Events, Intellectual Property, Licensing & Strategic Alliances, Privacy and Data Security, Telecommunications & Networking.
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Lawyers for technology companies are increasingly asked to assess the risks of client companies shifting from standard sales and licenses to a cloud model, and lawyers for every company need to assess the pros and cons of receiving core technology as a service over the internet. On Wednesday February 3rd, at a NECCA (New England Corporate Counsel Association, Inc.) seminar  held at the Westin Waltham from 10:00 to noon, MBBP attorneys Howard Zaharoff, John Hession, Mark Tarallo and Faith Kasparian will address the complexities of cloud computing and offer guidance to in-house counsel and other professionals advising their clients on these critical issues.

Among the topics to be covered are understanding the legally relevant features of cloud computing, identifying the key contract issues, recognizing the terms a standard vendor contract should contain, and discovering the implications of  recent developments in data privacy, particularly in the EU, for companies that are purchasing or selling cloud services.

To explore these and many other aspects of this complex and rapidly -evolving subject, reserve your space for this important and edifying NECCA seminar. Lunch will be served at 12:30 p.m.

The Contours of Copyright #3: Too Short for Copyright? 01/04/2016

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Intellectual Property, Licensing & Strategic Alliances, New Resources, Publishing & Media.
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M0846618It is axiomatic that copyrights do not protect words or short phrases. But how short is too short for copyright? 10 words? 5 words? 3 words? Consider Henny Youngman’s classic 4-word joke, “Take my wife … please.” Is that a copyrightable jocular expression, or an uncopyrightable short phrase (or, for you copyright pros, a merged idea)? The answer is important, not only to comedians, but also to epigrammatists, songwriters, poets … and anyone who wishes to include, in a work they are creating, word sequences they’ve seen used by another.

A recent case, William L. Roberts v. Stefan Kendal Gordy (U.S D.C., S.D. Florida 2015), provides helpful guidance, though not a definitive answer.

Discussion: The plaintiffs, Roberts et al., owned the musical composition Hustlin’, whose chorus consists of the repeated refrain “everyday I’m hustling.” The defendants, Gordy et al., had a hit song, Party Rock Anthem, which included the phrase “everyday I’m shuffling.” When the defendants began marketing their “shuffling” phrase on T-shirts and other merchandise, the plaintiffs sued, arguing that their copyright in the song included a copyright in the “hustlin’” refrain, and therefore they could prevent anyone from copying that refrain, whether in a similar song or standing alone on a garment.

The defendants disagreed, and the court sided with them. Yes, said the court, the plaintiff’s song was entitled to copyright protection. However, “copyright protection does not automatically extend to every component of a copyrighted work.” Rather, because “originality” is the sine qua non of copyright, and short phrases are common and unoriginal, the copyright in a work does not extend to individual short phrases (or, of course, single words) in the work. This doesn’t mean, the court explained, that the presence of “ordinary” phrases deprives a work of copyright protection; but it also doesn’t mean that the copyright umbrella shelters every word or phrase contained in a copyrighted work.

Or, as the court puts it: “The question presented … is not whether the lyrics of Hustlin’, as arranged in their entirety, are subject to copyright protection. The question is whether the use of a three-word phrase appearing in the musical composition, divorced from the accompanying music, modified, and subsequently printed on merchandise, constitutes an infringement of the musical composition Hustlin’. The answer, quite simply, is that it does not.”

To add insult to injury, the court also notes that the terms “hustling” and “hustlin’” were used in many earlier songs, and that the plaintiffs never asserted that the phrase “everyday I’m hustlin’” originated with them – which in itself could have killed their copyright claim (to be copyrightable, a work needn’t be novel, as in the patent sense of never before appearing anywhere, but does need to be original, in the copyright sense of having composed it oneself without copying from another). Finally, says the court, there is no substantial similarity between the original musical composition, containing the (uncopyrightable) phrase “everyday I’m hustlin’,” and the defendant’s T-shirts, containing the (uncopyrightable) phrase “everyday I’m shuffling.”  In short, none of the plaintiff’s original expression was infringed by the defendant’s apparel.

An Interlude for Copyright Aficionados: There was nothing earthshaking about this decision, though it is interesting to read the court’s sampling of many short phrases that failed to win copyright protection, including: “so high” (2 words), “get it poppin’” (3 words), “fire in the hole” (4 words – uh-oh, Henny), “most personal sort of deodorant” (5 words), and “You Got the Right One, Uh-Huh” (5 words, plus an “Uh-Huh”). So, one might conclude, a half dozen words or more are probably the minimum required for copyrightability.

Perhaps the reason this court – and no court I’m aware of – has stated a bottom line number below which copyright cannot apply is that no one can be absolutely certain that a creative author couldn’t be original in even a handful of words. Let’s cheat, make up a word, and stick it in a short phrase: “She’s my joyzilla mama.” Four words – really 3 plus a mashup – which have never appeared before (a Google search more or less confirmed this).  Can I use copyright law to prevent another person from using my original phrase in a song or on a T-shirt?

My answer is a definite “maybe.” The epigrammatist Ashley Brilliant has successfully registered – and once successfully asserted – copyrights in his epigrams, many of which are quite short (such as, “When all else fails … Eat” = 5 words). Poets and songwriters often feel that their short but creative phrasings are worthy of protection. So maybe we can’t state an absolute bottom line because we can’t guaranty that a brilliant writer or composer won’t dash our assumptions.

Conclusion. Still, it’s hard to imagine anyone successfully claiming copyright in any 2- or even 3-word (real words, not coined) phrase – if for no other reason than given the relatively small number of meaningful 2- and 3-word phrases, and the exhaustive output of English speakers, each of those short phrases would have already appeared so frequently that no one using such a phrase could convincingly assert it originated with them, or that they should have the right to keep anyone else from using it.

So, unlike Roger Bannister running a mile under 4 minutes, the possibility of someone writing a copyrightable phrase of under 4 words (probably 5, possibly 6) should stand the test of time.

For more information on this topic, please contact Howard Zaharoff.

Star Wars And Technology: May The Patent Office Be With You… 12/18/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Licensing & Strategic Alliances, New Resources.
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Today, December 18, 2015, is the official release in the U.S. of Star Wars: The Force Awakens, which is the seventh installment in the film series. The original trilogy began in 1977, and 38 years later is still going strong; a highly regarded film franchise to say the least. In part, the film series owes some of its success to the technology that “surrounds and penetrates” the movies.

Since the original trilogy, inventors have focused on creating or improving upon such Star Wars technologies as human prosthetics, solar power, robotics, lasers, rocket and missile technology, force fields, clones and genetic engineering, cybernetics, forms of levitation, and holography.

If you are thinking about trying to make something from the Star Wars universe a reality, “do…or do not. There is no try.” “You can’t stop change any more than you can stop the suns from setting.” And if you invent something, remember that it is “unwise to lower your defenses.”

Read the full article here!

Changes to Canadian Trademark Law 11/17/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, New Resources.
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On June 19, 2014, Bill C-31, Canada’s Economic Action Plan 2014 Act, No. 1, received Royal Assent. The Bill contains a large series of amendments to Canada’s Trade-marks Act and will allow Canada to (among other things) accede to three key international treaties: (1) the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol); (2) the Singapore Treaty on the Law of Trademarks (the Singapore Treaty); and (3) the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the Nice Agreement).

The new regime is expected to come into force by late 2016 or early 2017. Those already owning or considering registration of a Canadian trademark should be aware of these new changes to Canadian trademark law. Read the full article here.

For more information on trademark matters, please contact Callie Pioli, Thomas Dunn or Sean Detweiler.

Happy Birthday Coca-Cola® Bottle! 11/16/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property.
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Coke Bottle100 years ago today, inventor Alexander Samuelson was granted the design patent for the bottle that would come to be known as the iconic Coca-Cola® bottle. The design patent lasted 14 years and then expired, but obviously the design has lived on, and is now considered protected under trade dress laws. The term of design patents filed on or after Dec. 18, 2013 is now 15 years from the date of grant. However, if the ornamental features covered by the design patent are sufficiently distinctive, such as the Coca-Cola® bottle, then over time the design may be protected by common law trade dress, and may even be registered at the Patent and Trademark Office, both of which can provide intellectual property protection for years beyond the design patent term.

For questions about design patents – or to Share a Coke® – please contact Sean D. Detweiler.

The Contours of Copyright #2: Can You Copyright Yoga Poses? 11/06/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, New Resources.
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Attorney Howard ZaharoffBy Howard Zaharoff

Section 102 of the Copyright Act tells us that “choreographic works” – i.e., dances – are protected by copyright. So if you’re Alvin Ailey or Saroj Khan, the copyright police will protect you if someone copies or publicly performs your original choreography.

But what if you’re Beto Perez, who created Zumba; or Arnold Schwarzenegger (governor, actor, bodybuilder), who developed his own workout routines; or Bikram Choudhury (yoga guru and plaintiff), who in 1979 published a book describing his “Sequence,” 26 asanas and two breathing exercises performed for 90 minutes in a room heated to 105 °F? Does copyright protect original workouts or yoga sequences?

Probably not. At least according to the 9th Circuit in the recent case, Bikram’s Yoga College v. Evolation Yoga.

Discussion: Bikram Choudhury, self-proclaimed “Yogi to the stars,” was important in popularizing yoga in the U.S. He claimed he developed his Sequence after many years of research and verification, and he touted its many health and fitness benefits. But when two students who attended his 3-month teacher training started their own studio, offering a “hot yoga” class very similar to his Sequence, he sued for infringement.

The district court ruled that the Sequence was a “collection of facts and ideas” not entitled to copyright protection. Choudhury appealed and the Circuit Court upheld the lower court’s finding.

The Court first reasoned that the Sequence is “an idea, process or system designed to improve health” (Choudhury himself described his Sequence as a “system” or “method” designed to “systematically work every part of the body”). Since Section 102 of the Copyright Act is clear that copyright does not protect any idea, process or system, the Court easily concluded that the Sequence was an unprotectable idea or system. Put differently: “Choudhury thus attempts to secure copyright protection for a healing art,” an obvious no-no.

Nor does the grace and beauty embodied in the Sequence matter, since many processes can be beautiful –a surgeon’s movements, a baker’s kneading – without being copyrightable. In other words, “beauty is not a basis for copyright protection.”

The Court similarly dispensed with Choudhury’s argument that, even if individual yoga poses cannot be copyrighted, the original sequence of poses he developed is copyrightable as a “compilation,” that is, a work formed by “the collection and assembling of preexisting materials.” Not so, said the Court: because Choudhury himself claimed that “the medical and functional considerations at the heart of the Sequence compel the very selection and arrangement of poses and breathing exercises,” the entire Sequence, no less than the individual poses, is itself a process and “therefore ineligible for copyright protection.”

The final – and, as discussed below, least satisfying – part of the Court’s holding is that the Sequence cannot be protected as a “choreographic work.” The Court acknowledged that this term isn’t defined in the Copyright Act (though the legislative history makes clear that the term excludes “social dance steps and simple routines”). But that doesn’t matter, says the Court: “The Sequence is not copyrightable as a choreographic work for the same reason that it is not copyrightable as a compilation: it is an idea, process, or system to which copyright protection” may not extend.

The Court also noted that daily life consists of “many routinized physical movements, from brushing one’s teeth to pushing a lawnmower,” which could be characterized as forms of dance (by whom, the Court does not say). Only the idea/expression dichotomy prevents people from obtaining “monopoly rights over these functional physical sequences.” So at least in the 9thCircuit, arrangements of physical movements with a functional purpose, such as improving one’s health or fitness, no matter how aesthetic or beautiful, are merely unprotectable ideas or processes and therefore cannot be claimed as anyone’s copyright.

An Interlude for Copyright Aficionados: The Court’s final argument – that compilations of physical movements that “serve basic functional purposes” are unprotectable ideas/processes and not protectable choreography – begs the question. It’s cheating for a court to simply declare that a sequence of physical movements that functions as a means to health and fitness is thereby an uncopyrightable process without explaining why other sequenced movements that have similar fitness benefits are copyrightable choreography (which is surely true of the athletic choreographic routines of Alvin Ailey and Pilobulus).

Is it the functional purpose (or effect) of Choudhury’s sequence of poses – i.e., that despite their grace and beauty, they are particularly conducive to fitness – which makes the Sequence an uncopyrightable process? Why? Rarely does the functionality of a work completely deprive it of copyright. Even the designers of “useful articles” can claim copyright in any “pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects.” If functionality were a copyright killer, architecture and software would have no protection.

Indeed, why not treat physical movements like architecture and software? Just as copyright law provides no protection for “individual standard features” of architectural works, or for standard routines and features of software applications, can’t we conclude that, although individual poses (or short sequences of poses) that are included in the Sequence and that are unoriginal, standard, or highly effective for fitness cannot be monopolized by copyright, the original overall selection and order of the poses can be deemed sufficiently original and aesthetic to qualify as copyrightable choreography?

In short, nothing in the Court’s opinion explains why the entire 28-step Sequence was ruled an unprotectable idea and no aspect or feature of these graceful movements could be deemed choreographic and copyrightable. This is not to say the Court is wrong. Rather, right or wrong, the Court failed to articulate any principles that distinguish movements constituting “a healing art” from movements constituting athletic dance.

Conclusion: Despite its unfortunate failure to provide a principled distinction between copyrightable choreography and uncopyrightable workouts, it remains undeniable that, in the 9th Circuit at least, there is no copyright protection for sequences of yoga poses intended to improve health and fitness, no matter how graceful or beautiful they may be.

Still, given the gaping hole left by this decision, and the popularity of fitness and yoga, it’s hard to imagine that the issue of copyrightable choreography won’t reappear soon. Or, as Arnold Schwarzenegger (as actor, not bodybuilder) might say: “I’ll be back.”

For more information on this topic, please contact Howard Zaharoff.

The Contours of Copyright #1: Can You Copyright Fast Foods? 10/19/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, New Resources.
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Attorney Howard ZaharoffBy Howard Zaharoff

As broad and creator-centric as copyright is, it doesn’t protect every creative output. For example, as a recent case confirmed – to no one’s surprise (probably not even the plaintiff’s) – copyright does not protect chicken sandwiches, nor even chicken sandwich recipes, nor even chicken sandwich names, no matter how original.

The conflict began after Noberto Colón Lorenzana, while employed by a Puerto Rican fried chicken chain, invented the “Pechu” chicken sandwich. Ultimately his employer greatly benefited from sales of the sandwich and various derivative items, but never compensated Mr. Colon for these remunerative products. Feeling he’d been cheated, Mr. Colón filed an amorphous set of trademark, fraud and (the district court generously found) copyright claims.

After ruling against Mr. Colón’s trademark claim – having never used the mark, he had no trademark rights to infringe – the court considered his assertion of copyrights in his sandwich. After quoting Section 102(a) of the Copyright Act, to the effect that copyright does not protect ideas or inventions, but only works of authorship, and remarking that the Register of Copyright specifically denies copyright to “mere listings of ingredients,” the court stated: “Neither plaintiff’s idea for the chicken sandwich recipe or the name ‘Pechu Sandwich’ is subject to copyright protection.”

To drive home its message, the court proceeded to note that neither the idea for the sandwich, nor its recipe, nor the concept of serving a chicken sandwich at a fast food restaurant, nor even the term “Pechu Sandwich,” were subject to protection by copyright (regarding the last, the court quotes several cases to the effect that copyright does not protect fragmentary words or short phrases).  In short, to the extent the plaintiff was raising a copyright claim – not clear from the proceedings – it was “dismissed with prejudice.”

The case was appealed to the First Circuit, which upheld the district court’s holdings. Regarding the copyright claim, the appeals court noted that neither the recipe nor the name fits any of the categories of eligible works and endorsed the district court’s finding that “a chicken sandwich is not eligible for copyright protection.”

So eat your hearts out, designers of designer-sandwiches and other food products … and be happy that, if you do, you’re not infringing anyone’s copyrights.

Stay tuned for more examples of what copyright does not – and does – protect.

For more information on this topic, please contact Howard Zaharoff.

MBBP Attorney to Host Office Hours at TechSandBox on October 20, 2015 10/08/2015

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property.
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IP and Technology Licensing Attorney Howard ZaharoffOn Tuesday, October 20th MBBP Attorney Howard Zharoff will host Office Hours at TechSandBox, providing legal guidance on topics that include licensing, partnering, and copyright, as well as on general business matters. These pro bono sessions give you access to experts in topics such as intellectual property, business formation, benefits, taxes, marketing, sales funding, IT and technology commercialization. Access is offered to Members and Non-members as space allows.

Sign up today to reserve your time slot by visiting TechSandBox!

Infringement v. Homage: Pharrell Williams, et al. v. Bridgeport Music Inc., et. al. 03/30/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, Licensing & Strategic Alliances, Publishing & Media.
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By: Callie L. Pioli

Callie L. PioliThe music industry did not get far into 2015 before delivering a blockbuster copyright case. Pharrell Williams’ and Robin Thicke’s 2013 hit Blurred Lines was in fact only 50% their hit, according to a jury verdict in mid-March that found in favor of Marvin Gaye’s children.  As co-owners of his original 1977 hit, Got to Give it Up, Gaye’s children successfully argued that Williams and Thicke had copied numerous aspects of their father’s song and had infringed the copyright in the 1977 hit. The jury accepted the Gaye family’s contention that if Got to Give It Up had been properly licensed, the family would have received royalties of 50% of the $8 million in Blurred Lines revenue. Additionally, Williams and Thicke were forced to surrender $3.4 million of their earned profits from Blurred Lines sales.

Ironically, the lawsuit was commenced by Williams and Thicke themselves, who originally sought a preemptive ruling that Blurred Lines “shared no similarities”[1] with Got to Give It Up after receiving complaints from members of the Gaye family. The Gayes, as defendants, successfully litigated a counter-claim, arguing that the songs were substantially similar and that they were owed $25 million in royalties, profits, and statutory damages. Williams and Thicke lived up to their reputations as performers while on the stand, doing their best to persuade the jury to re-interpret copyright law as excluding the “feel” or “sound”[2] of music, and taking the opportunity to sing to the jury.

While much has been made of the spotlight on Thicke’s admitted drug use in the studio, the blatantly inconsistent statements regarding exactly how much influence Gaye had on Williams and Thicke during the writing process, and the whopping total award of $7.3 million to the Gaye family, the suit also illustrated the importance of both copyright compliance and honoring fiduciary duties. Continue reading…

Any interested “ordinary observers” can listen to a direct comparison of Blurred Lines and Got to Give it Up online.

For more information on copyright law and intellectual property licensing, please contact Callie Pioli or any member of our copyright group.

[1] Complaint for Declaratory Relief at ¶ 1, Pharrell Williams, et al. v. Bridgeport Music Inc., et. al., No. 13-06004 (N.D. Cal. Aug. 15, 2013).

[2] Id. at ¶ 2.

MBBP Client OtoSense Earns Top Award at GSMA Global Mobile Awards 03/12/2015

Posted by Morse, Barnes-Brown Pendleton in Clean Tech, Client News, Computer Software & Hardware, Intellectual Property, Manufacturing, Retail & Service, New Resources, Public Companies.
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2015-03-12_9-40-31MBBP client OtoSense, a Cambridge-based start-up, has recently been recognized for its sound recognition technology. The company has developed an app that enables hearing impaired end users to select various traditional sounds such as bells, alarms, timers, etc. that occur within an everyday environment and then identify such sounds as they occur and alert the end user via non-acoustic means such as flashes, vibrations or text messages. Selected out of more than 800 entries and judged by a panel of international experts, the start-up won the “Best Mobile App of the Year” Global Mobile Award, in the category of Accessibility & Inclusion, at the 20th annual GSMA Global Mobile Awards.

Well done, OtoSense!

You can view a full list of 2015 Global Mobile Award winners here.

United States Completes Hague Agreement Deposit For Industrial Designs   03/10/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, New Resources, Public Companies.
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chalvireBy: Stan Chalvire 

Currently, design patent applicants that wish to pursue international protection for their industrial designs must file a design patent application in each country, and such applications must generally be filed within six months of the date of the earliest filed design patent application.  That is about to change with the United States having recently deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”), marking the final step in the process of the United States becoming a member of the Hague Union.  The Hague Agreement establishes an international registration system which facilitates the protection of industrial designs in member countries by way of a single international design patent application that can be filed either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly though the applicant’s member country.

When the Hague Agreement enters into effect for the United States on May 13, 2015, applicants will have the opportunity to register up to 100 industrial designs in over 64 territories with the filing of a single standardized international design patent application, thus providing applicants the opportunity for increased filing efficiencies and potential costs savings as they pursue international protecting of their industrial designs.

 

Additional information on this topic can be found on our blog, or feel free contact Stan Chalvire directly.

Tips for Caring for Your Patent Garden During Economic Winter 02/20/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, New Resources.
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Illustration - SLV058H (M0003309)There’s snow on the ground, snow on the MBTA tracks, snow on the roofs….it feels like winter will never end!  But inevitably it will, and we’ll once again have warm spring breezes, singing birds and blooming tulips to refresh our spirits.  In the meantime, while your real garden sleeps beneath the snow, this is the perfect opportunity to consider tending your patent garden to ensure that it flourishes for years to come.

Here are 5 tips from Patent Attorney Lisa Warren. Feel free to contact Lisa with questions about your patent portfolio.

MBBP Client Demiurge Studios Acquired by SEGA Networks 02/20/2015

Posted by Morse, Barnes-Brown Pendleton in Client News, Computer Software & Hardware, Games & Interactive Entertainment, Intellectual Property, Legal Developments, Licensing & Strategic Alliances, New Resources, Public Companies, Publishing & Media.
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2015-02-19_10-29-40MBBP Client Demiurge Studios, an independent game developer out of Cambridge, Massachusetts, has been acquired by SEGA Networks, a multinational video game developer, publisher, and hardware development company. Founded in 2002, Demiurge Studios made the transition into mobile gaming in 2008 and found success with Marvel® Puzzle Quest™, a top 100 grossing app on the App Store and top 50 grossing apps on Google Play. Previously, they worked with world-class developers like BioWare™ and Irrational Games™ on AAA console and PC games, contributing to titles such as BioshockBorderlands, and Mass Effect. Demiurge Studios will continue to make games under the Demiurge Studios name.

Morse, Barnes-Brown & Pendleton serves as counsel to Demiurge Studios, and advised it in connection with the structuring, negotiation and documentation of this transaction.

Joe Martinez was the lead corporate attorney on MBBP’s team, which also included attorneys Mike Cavaretta, Diana Española and Hillary Peterson.

To learn more, read the full press release.

USPTO Reduces Certain Trademark Filing Fees 01/29/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments.
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By: Tom Dunn

Trademark Attorney Thomas DunnOn January 17, 2015, the USPTO reduced certain trademark filing fees and introduced a new electronic application filing option.

The fee for both the TEAS Plus application and the TEAS Regular application are reduced by $50. The TEAS Reduced Fee (TEAS RF) application is a new filing option, and one may still submit a paper filing, as well:

Application for registration, per international class
(paper filing)
$375
Application for registration, per international class
(electronic filing, TEAS application)
$325
Application for registration, per international class
(electronic filing, TEAS RF application)
$275
Application for registration, per international class
(electronic filing, TEAS Plus application)
$225

Each of the three TEAS options comes with a set of requirements; the lower the fee, the higher the number of requirements. (TEAS is an acronym for Trademark Electronic Application System.)

For example, to take advantage of the $225 fee per class of goods/services in the TEAS Plus application, one must meet the following requirements: include an e-mail address and authorization for the USPTO to send application-related e-mail correspondence; agree to file related submissions, such as responses to Office actions, electronically via TEAS; select an identification of goods/services from the USPTO Trademark ID Manual; pay all fees at the time of filing; and provide certain statements regarding the mark in the application as-filed, if applicable (e.g., translation statement, claim of ownership, color claim and description).

Only a subset of the foregoing requirements pertains to the TEAS RF application, while none pertain to the TEAS application.

If one files a TEAS Plus or TEAS RF application but does not satisfy the relevant requirements the applicant will be required to submit an additional processing fee of $50 per class of goods or services, and the application will then be handled as a TEAS application.

The fee to electronically renew a trademark registration has been reduced by $100, to $300 per class of goods/services, as well.

Please see the Reduced Fee FAQs page for more information about the new filing fees and the Trademark Fee Information page for information on payment options and a listing of other trademark fees.

To discuss trademark filing options and related matters, please contact Tom Dunn by email at tdunn@mbbp.com or by phone at (781) 697-2248.

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