Thursday, December 15, 2016

SCOTUS will hear case on forum shopping in patent litigation

The Supreme Court has agreed to take a case that will determine whether plaintiffs in patent cases may continue the practice of “forum shopping”, choosing any federal circuit in the country (which is often in East Texas, which has a climate more favorable to plaintiffs).  Defendants want the cases to be held in larger courts more favorable to most businesses.

The Washington Post carried the Dec. 14 AP story today on p A14.   The case will be Kraft v. RC Heartland.

Friday, November 18, 2016

Can a story about the Amish and the election itself be a "trademark violation"?

Vox technology writer Timothy B Lee tweeted this story about the American Amish Brotherhood and its alleged role in helping throw the election to Trump in swing states, on ABC here. The title is “The Amish in America commit their vote to Donald Trump, mathematically guaranteeing him a victory”, dated Nov. 8.

But Lee asks, how is the story still online, and says “it’s a blatant trademark violation, for starters”.  I don’t get that.  How can a news story by itself be a trademark violation?  A domain name, yes.  A book or movie title that copies an existing franchise, yes.  But a news article?

The story sounds credible.  I often drive in this area, at least in Pennsylvania.

Tuesday, October 04, 2016

Asian band's trademark claim, to be reviewed by SCOTUS, could vindicate Washington Redskins

The case Michelle K. Lee v. Simon Shiao Tam seems to mirror the case of the Washington Redskins trademark application.  The Supreme Court said Sept. 29 that it would review a Federal Circuit finding that the Lanham Act, which would deny the Asian rock band the name “the Slants”, is unconstitutional. The Quartz story is here.

I do remember the phrase during the Vietnam war, as applied to the Viet Cong, especially by people who didn’t want to be drafted.

Monday, October 03, 2016

Intellectual Ventures v. Symantec: can a patent troll's monopoly affect free speech?

There has been a longstanding controversy over a supposed “patent troll” Intellectual Ventures in its battle with Symantec, anti-virus company, with a partial victory for IV in 2015 as explained here by the BBC.

Eugene Volokh has excerpted part of the Federal Circuit’s opinion, which denies some of IV’s claims. Article here.  and opinion here.

One of the settlement terms had forbidden Symantec from using the term "patent troll" to characterize the plaintiff.  That sounds like calling a particular church a cult.

The danger is that a patent holder (especially one who had bought the patent as a “troll”) could use the patent to control speech on the Internet.  There is an informal “fair use” idea even in trademarks and patents, if monopolization (which government patent law effectively creates) could interfere substantially with free speech.  Another account is here, by upping the barriers to entry.

It sounds logical that the same idea could happen with trademarking common phrases.

Thursday, September 29, 2016

Instagram seems ready to stop other wordmarks from including the word "gram"

Instagram seems to be quite aggressive in both the trademark and patent areas.  It blocks apps using the word “gram” or “Insta”.   It is acquiring patents for all its specialized filters. There’s a story in The Next Web by Bryan Clakr here.

It's also trying to stop other companies from using the word “gram” anywhere in a wordmark all around the world, at least in Europe.  It has run into contact with Flipagram.

Wednesday, September 07, 2016

"Trump" used trademark law very much to his advantage

CNN’s biography of Donald Trump (Sept. 4) mentioned how Trump had licensed his “brand” to other companies to build hotels, condo buildings, financial education schools, and other services and produts in his name (I think there was an airline).

Trump bore none of the risk of these businesses but benefited from licensing the brand name, across what USPTO normally views as different lines of business.

Is this good for the economy?  It wouldn’t be good for another author whose last name happened to be “Trump”.

Monday, August 08, 2016

Music notation patent, especially value to African-American music: a disturbing history

Here’s a case where maybe a patent is actually good, and should be extended – and the patent holder can’t afford it.

Justin William Moyer has a Washington Post story Monday morning , “Chasing a dream: A Maryland church keyboardist struggling to make ends meet says he has invented a method of notation that can help reclaim black music.”
The artist is Tim Kimbrough, a music teacher in suburban Maryland, who invented a “scroll’ (read top to bottom) system of notation that makes it easier to notate some popular (especially “African”) music, and would even allow quarter tones or micro tones.  One would expect modern classical composers of “practical music” would find this useful.

The Post story has a detailed illustration of how the notation works.  The US Patent 6977334 has expired, so the system is apparently in “public domain” (“It’s free”) not earning any income.
So some patents are good and necessary, even for artists.

Monday, July 04, 2016

Reviewing trademark concepts for media series, and for "classes" (U.S.)

It’s a good time to do a checkup on our understanding of trademark law concepts.

One is a reminder that a book or movie title alone cannot be trademarked, but a series of books with the same title component can.  That component need not be at the beginning (“… for Dummies” is a legitimate wordmark).  My “Do Ask Do Tell” series (three books) would probably enjoy a common law mark, but it would not be exclusive.  That follows from the fact that the books have been in commerce since 1997 (with the first one).  It is not necessarily clear that company or business names or Internet domain names have to match.  It appears that both authors and publishers can claim such a brand concept.  I don’t find anything in the literature so far that claims that the “business” has to be financially self-sustaining on its own, or that it can’t be a closely held proprietorship.  However, most book and movie series trademarks are owned in part by large publishers, or movie studios or even comic book companies, with most of them publicly traded.  In practice, it is usually possible for a trademark attorney to find out how effective a mark really is as a brand from financial records of publicly traded companies.  But that would seem to have a political motive (how many people’s jobs are affected) than one having to do with consumer confusion over brands, which is what trademark is supposed to be about.

A good reference on trademarks and series is here.

It's also accepted trademark law that businesses in different industries or “classes” can have the same mark.  However, the USPTO tends to deny duplicate marks in “other” classes if USPTO thinks consumers are likely to be misled anyway.  The way media gets distributed and branded online today (as well as diverse financial models, from “it’s free” to ad-supported to subscription) complicates what used to be straightforward branding concepts, and makes consumer of public reactions much
harder to predict.
Here is a reference on Quora and on Legalzoom.

Tuesday, May 24, 2016

Now "zen" becomes the object of trademark trollling

Electronic Frontier Foundation tells the story of “Zendesk”, which sells help desk software, which has also been going after other businesses incorporating the name “zen” and not conceivably competitors or in the same business line, story here.   EFF calls this “the art of trademark trolling.”

Curiously the company says it is under “no illusion” that it owns an exclusive monopoly on the word in business.

Tuesday, May 10, 2016

Don't pay third parties unintentionally for "Facebook support"

Several media outlets report people paying outside companies to provide what purports to be customer service for Facebook.  Companies like Facebook and Google generally don’t provide telephone support because of the enormous volumes of members with accounts, as Facebook explains here.  

Arguably, such a practice from an outside company could constitute actionable trademark infringement, if a company like Facebook chose to pursue it.

The lack of telephone support from Google has been mentioned as an argument for doing blogging on shared or even dedicated hosting platforms from companies like BlueHost for Wordpress, where consumers have a contract was well as merely courtesy agreement (and terms of service). On the other hand, the online help on these companies (and provided free also by outside  publishers) is usually sufficient.

Tuesday, April 05, 2016

Another "stupid patent of the month" with its own screenplay

Electronic Frontier Foundation has a funny story (not funny for the defendant) by Daniel Nazer on the “Stupid Patent of the Month”, filed by “mega-troll” named “Intellectual Ventures” in Washington State. What’s “funny” is that the “patent” even includes a little “screenplay”, quite importable into Final Draft, that won’t win any Oscars or get into Sundance or Tribeca.

The company has been forum shopping in the Eastern District of Texas (to the pleasure of Ted Cruz, maybe) – a setting for some of the scenes in “Midnight Special”.
It’s interesting that lobbyists have been running television ads opposing patent reform legislation, claiming reform will hurt real “inventors”.  No, I don’t think people like Taylor Wilson or Jack Andraka (the latter a read proponent of “open access”) would be affected by legitimate patent reform, including venue reform.

Tuesday, March 15, 2016

A primer on domain names based on me (with my real and nicknames)

Recently, I discussed the issue of website safety ratings for my own sites and blogs (on the Internet Safety blog Saturday March 12).

Although I don’t think there is a direct relation to safety, my practices of naming my domains could create some confusion among algorithms that do the rating, so I wanted to make a note today about how I have done things.

First, my legal name is “John William Boushka” or “John W. Boushka”. My parents gave me the common nickname “Bill” based on my (English origin) middle name.  That was to distinguish me from my father John Joseph Boushka.  So I have used “Bill Boushka” as my “pen name” (pseudonym, so to speak) on my three “Do Ask, Do Tell” books.

My main legacy site is “” set up in 1999, based on the book series title (domain name paid for through 2021).

There is an experimental site “” with an old Wordpress blog.  It was set up in 2006. It is no longer updated.

Most of my blog titles have the nickname “Bill” as part of the blog title. Three of the Google blogs have been equated to domain names.  One of these is “BillBoushka”, and since the “.com” was already taken, had to let Google Domains assign me another one, which has the TLD suffix “me” (Montenegro).

I also have a site which was set up in 2006 as a resume site, when I still had some hopes of continuing the old track IT career.

Before however, had been an experimental java site, to set up an “Opposing Viewpoints” chart.  It was abandoned when the company doing the java starter hosting failed in the summer of 2006.  That idea was then envisioned for “” which has a small mysql databae on the topic.

I am somewhat fortunate to have an unusual Eastern European last name.  Otherwise, using domain names with more than one first name would have been more likely to cause potential conflicts among distant relatives or namesakes.  However, the practice might in time not sit well with industry.
One reason, too, in the past, for having a proliferation of domains was not to have all eggs in one basket.  Providers have failed in the past.

Further confusing the setup is the idea that Facebook requires use of real names.  So my Facebook ID is "john.boushka" which I've also used for gmail.  For Twitter and AOL I've used "jboushka".
However, this spring, I will look at consolidating the sites into fewer of them, with elimination of obsolete material.  One possibility would be to eliminate the current, use the name for the blog, and save or archive the database and old WP content elsewhere.

Tuesday, March 01, 2016

Little forum about "free fish" (so to speak) prevails in trademark fight with big company

Drew Harwell writes on p. A15 of the Washington Post on Wednesday March 1, 2016, “A monster win for student lawyers: Pro bono clinic helps Md. Small-business owner take on major trademark bully”, Online, the title is “The college student took on one of America’s top trademark bullies –and won” 

The underdog of the story was Monster Fish Keepers which sells T-shirts and maintains forums about aquariums (how about “Free Fish”?)  The villain was Monster Beverage in Redondo Beach CA, a company (partly owned by Coca-Cola) that sells high energy beverages.

It sounds like a no-brainer.  The two companies are in unrelated businesses, so there should be no confusion.  (There is a gay bar called “The Monster” in Greemwich Village in NYC).  There can be a problem though with “famous marks”.

But the battle started when MFK filed for a trademark through the normal process with USPTO.  It does not appear to be based on the domain name alone in this case.

The Trademark Trial and Appeal Board did not allow the MSF’s trade dress, which it saw as too similar to the beverage company’s, but did allow the wordmark. And, by the way, "Free Fish" is the name of a short comedy mockumentary film in 2012 by Reid Ewing shot on location at the Monterrey Aquarium south of San Francisco. 

Monday, February 08, 2016

Time to review trademark basics again, and some questions still remain murky

Every once in a while, it’s a good idea to revisit trademark rules.

There are two sites I’ll point to.  One is on Slate, “Can you trademark the phrase 'Let’s Roll'?”, article by Chris Suelentrop.  The short answer to the question is, “Yes you can” (Obama!) if you use it to brand a service or product in actual commerce.  But normally you can’t stop others from using the phrase in unrelated businesses or contexts.  Congress has carved out an exception to the “unrelated” provision for “famous brands” like Kodak or Kleenex.

Another nice site is “Secure your Trademark” by Xavier Morales, who asks, “What can be trademarked”.  The answer is, almost anything in real commerce.

It gets interesting in a few areas. One is that a “series” of movies or books using a common set of words as part of a title (like “Star Wars”, or “Harry Potter” or “…for Dummies” {or “Idiots”}) can be trademarked as a “franchise”.   I can make that case for my own “Do Ask Do Tell” series, partly because (in addition to using the phrase to begin each title) the second and third books contain new content about subject matter not covered in the previous books.   What about remakes of the same movie or rewrites of the same book?  While the content of movies and books is emphatically protected by copyright, titles alone are not.

It gets murky because some movie production companies have claimed, with some success, that the titles identify them as movie-making businesses, as explained here.  This is more likely with comic book or children’s or game-related entertainment than with more mainstream stuff.

Still, if you simply republish new versions of the same book, or remake the same movie, the concept as a “brand” is likely to be regarded as insufficient.  If the books have new subtitles, or cover new content because of intervening history (like 9/11, the 2008 financial crisis, Katrina, gay marriage, etc.) the claim could be stronger.

You can wonder about whether a TV miniseries (like “Madoff”) title can be trademarked.  A four-hour film in two  parts seems like a single movie.  A film in two parts (like the way Lionsgate has released the last “Hunger Games” piece) itself might find its own title isn’t trademarkable even though the entire series is.  You would wonder if “Shoah” is a single film (ten hours) or a series.  A miniseries that runs into a second season would sound like it has a stronger case (“Law and Order” or now, “The Leftovers”), to me at least.  A YouTube channel that sells advertising space could trademark itself as long as it offers multiple separate works.

I suppose music could run into the same idea.  A series of piano sonatas is not itself trademarkable, because Sonata is a public, generic word describing a particular kind of musical composition (being broken into movements doesn’t change the fact that it is sold as one “piece”).   But what happens if the series has a unique name?  What happens if a pianist commissions a series of relatable works from different composers (and this is becoming more common today)?  The entire series could have a name, and be trademarked because it would become a brand that helps the pianist get booked for professional tours of concerts (and make a living).  But the individual compositions, whose copyright belongs to the composers, would not be trademarked.  (I suspect the “Dances of David” can be trademarked, but I don’t know if it is.)

Does the business format matter?  It doesn’t seem to.  Non-profits can trademark products that are in commerce (PBS can trademark series of related DVD’s like “Frontline”; Blue Cross can trademark its health insurance service).  I do wonder about some questions.  You don’t have to do an IPO to have a trademark (Mark Cuban might object), but maybe your case is stronger if your work is legally separate from you (an LLC instead of a proprietorship).  At least I wonder.  Having books in commerce (on Amazon) would seem to meet the commercial requirement.  Does it undermine your case if you allow the content to be viewed for free online? Does it help if you take credit cards yourself rather than let third parties (Amazon) do all that for you?  I’ve wondered.  I get a lot of questions about selling books as a commodities rather than as “instances” of content.  I think there could be underlying political issues (or social responsibility problems) about giving people jobs, for example.  Profitable retail sales can do that sometimes.  I also notice that some book series that might appear similar in concept to mine provide a lot more “tutorial” information to guide readers, as if they were “how to” guides (or “self-improvement”) intended “for” consumers rather than built as abstract (autobiographical or political) academic narratives like mine.  But most of this “probably” does not matter to trademark law itself.  The key concept is how closely a question like this relates to “branding”.  And “brand” is all about selling (even “pimping”)  and commerce, not about the content itself (which is what copyright is about).

Wednesday, February 03, 2016

Lobbyists appear to oppose patent reform

There is a website “Save the Inventor” that seems to be a lobbying group possibly opposing some patent reform, to stop trolls.  It has recently advertised on major news channels.  The basic link is here.  The site tries to recruit supporters to "take action now".

The site offers videos that can be viewed only when one is signed on to one’s Google and YouTube account.  The YouTube channel is here.  One of them depicts a small business owner who says she lost her invention to a large corporation.   Of course, the question is, when is an innovation really legitimate, or when is it just an abstract idea.

Thursday, January 28, 2016

A new booklet "Hacking the Patent System" makes recommendations for innovators

Electronic Frontier Foundation has published an electronic booklet “Hacking the Patent System: A Guide to Alternative Patent Licensing for Innovators”, 2016, by Marta Belcher and John Casey, from the Juelsgaard Intellectual Property and Innovation Clinic at Stanford Law School.  Elliot Harmon contributed the summary.
The strategies include the use of a Defensive Patent License Agreement (DPL), of which Twitter’s Innovation Patent Agreement is an example.  Another idea is patent litigation insurance, and still another is making patent portolios public.

See a related post about University research and patents on my main "BillBoushka" blog Jan. 29, 2016. 

Thursday, January 07, 2016

I start assigning regular domain names for my blogs

Tonight, I followed more recently advocated “best practices” and bought domains names from Google domains for three of my larger Blogger domains.  For “Bills movie reviews and news” and “Bills book reviews and news” the name is straightforward, with a .com.   When you key in the old name with blogspot, the DNS will automatically redirect to the new names. Specific url’s for posts or archives are as before, but with the new name as prefix.

For the “Bill Boushka” domain, I did the same, except that the TLD is “.me” because “.com” is already taken by another of my old domains, and apparently the others (like .org) are parked by the other registrar (Verio).

I considered taking “” but I have a distant relative whose Twitter handle is that, and another distant relative, a physician in Texas, whose first initial is W (for William).  So “Bill” still always refers to me.

The process took about 10 minutes for each domain (before the new name would resolved).  When Chrome gets a DNS error while waiting for the new name to propagate, it may cache that error for a while.
Redirection does not mean that the user has his own licensed copy with blogger.  The actual content is still on "free service space".  With Bluehost and Wordpress, there is a copy of Wordpress on the domain, and the actual hosted space is rented. 

Monday, January 04, 2016

Notes from EFF's "patent busting project", this one about subdomains

To start out the New Year in the trademark and patent area, I thought I would mention an old 1999 patent that Electronic Frontier Foundation says was busted, claimed by “Ideaflood”, story link here  characterized as a “crime against the public domain”.  The patent purportedly enabled the generation of subdomain lists with a wildcard character.  Characterized as a “crime against the public domain”

EFF says that the patent threatened smaller webhosts, like Free Home Page and T35.    This case may not seem so important to speakers who need the specialized services of higher-end or more expensive programs (like Bluehost for Wordpress).

EFF also says that the patent  could threaten group speech, as with Livejournal.