Intellectual Property

ELIZABETH THE SECOND, by the Grace of God Queen of New Zealand and Her Other Realms and Territories, Head of the Commonwealth, Defender of the Faith; To all to whom these presents shall come, Greeting:

Opening paragraph of a New Zealand Letters Patent. 

In contrast, a U.S. patent begins:

The Commissioner of Patents and Trademarks Has received an application for a patent for a new and useful invention.

If you’re a sports merchandise vendor and you’re sidling up to that line where you might be using a celebrity’s likeness without his permission, DO NOT send him a letter claiming that he is creating  “likelihood of confusion” with your products.

After O’Neal was traded to the Phoenix Suns in February 2008, he was dubbed by fans as “The Big Shaqtus.”

Soon thereafter, Mine O’Mine says defendant Michael Calmese with True Fan Logo Inc. registered and began operating an online store selling items featuring “an animated character in the form of a cactus with the facial features of O’Neal wearing an orange basketball jersey bearing the name Phoenix Shaqtus and the number 32.”

In 2008 and 2009, ESPN ran a commercial that featured O’Neal running into a cactus “bearing O’Neal’s face in the Arizona desert.”

Calmese sent a letter to ESPN, claiming that the ads created a “likelihood of confusion” with his products, and offered to jointly develop an animated “Shaqtusclaus” clip for Christmas.

. . .

In December 2009, Mine O’Mine sent a letter to Calmese demanding that he stop using the Shaqtus mark to sell merchandise on his Web site, and to transfer the and domain names over to it.

Offering to team up for a Christmas special won’t help.

But, my favorite part is . . .

Calmese responded Jan. 4, 2010, claiming that O’Neal consented to his use of the Shaqtus mark when O’Neal agreed to take a picture with Calmese and autograph a T-shirt.

I am reminded of Monty Python’s brilliant How Not To Be Seen.

Hilarious Daily Legal Cartoons by David Mills.

A few of my favorites:


Discovery Requests

Go read the rest. They’re brilliant.  (Some are probably even funny to non-lawyers, though we have such a hard time relating to normal people that we really can’t tell.)

We do what we can.


Working in patent law, I somehow got on the mailing list for Intellectual Property Today.  In the back of the magazine each month is a Classified Services section.  This section contains, among other things, classified ads for Positions Available and Situations Wanted.  Typically, the Situations Wanted section includes ads from practitioners looking for overflow/contract work or patent search work, but the December issue had an ad that caught my eye.

US/China Position

Attorney with 12+ years experience as Corporate Legal/IP (primarily biotech & pharma) Counsel, seeking position with U.S. company having operations in China (or vice-versa).  Initially relocate to China to intensively learn Chinese language, business customs and operations; and then travel to China on as needed basis.  Email: (removed)

I guess there is something to be said for knowing what you want and going after it, and he plans not just to learn Chinese but to learn it intensively.

Google recently released a free patent search tool.  Having used it briefly, I think it is fantastic.  It is far faster and more user friendly than the Patent Office’s online search.  The BNA Electronic Commerce & Law Report had a brief article about the reaction from patent practitioners and academics.  (Vol. 12 No. 1, Jan. 3, 2007, pg. 8, sorry no link).

I thought that one of the more unfortunate, though not surprising, responses was that of American University law professor Joshua Sarnoff.

Joshua Sarnoff of American University agreed with Mtima and Oman that the Google system “raises very interesting questions about public and private production and ownership of ‘public goods.'” According to Sarnoff, the PTO could have developed something similar and run it from its own Web site, rather than allowing Google to use public information to generate advertising revenue that accrues only to Google.

“Perhaps we would all be better off if Google donated its tool to the Patent Office,” Sarnoff suggested, adding “I might prefer government ownership of such a socially valuable resource.”

I don’t think Google uses public information to generate advertising revenue.  I think it’s more acturate to say that Google uses its expertise in searching through public information to generate revenue.

Thankfully, in a rare turn of events, the folks at the Patent Office get it.

In any case, Dickinson [former director of the Patent Office] said, it is not really fair to compare the Google and PTO patent search systems. First, he said, the state of search technology has vastly improved since the PTO system was developed. Moreover, he added, “while the IT folks at the USPTO are a dedicated and talented group, the talent that Google is able to assemble, and pay for, is probably the best in the world.”

So, it turns out that private organizations might be better at identifying and assembling talent.  It also turns out that the government doesn’t always have your best interest in mind when it decides what to do with a “socially valuable resource.”

Although the PTO’s online patent search system was “one of the things I’m proudest of,” Dickinson said, there was active opposition to it from outside search companies who had long benefited from selling hard copies of patents. “They went so far as to sue us under the Paperwork Reduction Act,” Dickinson said.

The “upshot” was a compromise system that was not as “customer friendly” as it might have been, according to Dickinson. Users could print only one page at a time, for example, he said.

Now how did those pesky special interests get their nose in there?