For corporate counsel in any industry, some knowledge of intellectual property law could assist in preventing expensive and time-consuming litigation. This brief overview provides a background to just some of the IP issues that confront corporations that do not often work in matters governed by IP law.
Some corporate attorneys with little experience in IP matters may have certain misconceptions that seem to pervade many industries. One such myth is that once a patent is granted, its validity cannot be challenged through the U.S. Patent and Trademark Office. Some believe a company needs to register a trademark to use it in commerce or needs to file a registration application with the U.S. Copyright Office for a work to be copyrighted. To debunk such myths, it is important for corporate counsel to have up-to-date information concerning changes in IP law.
(1) New procedures and standards are available for thwarting patent infringement suits, including a new means for challenging a patent's validity. Most attorneys know that the U.S. Supreme Court has reviewed many more patent cases in recent months than the justices have in years before. After only marginal attention to the IP world, the high court is finally taking notice of patent law and the impact of patents on innovation and industry. Recent holdings have established new benchmarks for patent litigation, often making defenses easier. In addition, there have been numerous changes made to the U.S. Patent Act, through the Leahy-Smith America Invents Act. These changes were primarily initiated to curb frivolous litigation and enable defendants, many times represented by corporate counsel, to more easily resolve suits.
Rather than claiming non-infringement, a company can challenge a patent. A new process called inter partes review became available in September 2012. While re-examination procedures have almost always been available, inter partes review proceedings offer a speedier means for an accused infringer or a third party to have a patent re-evaluated by the USPTO. For this new procedure, expert declarations are permitted for a petitioner, but not for a patent owner until the USPTO decides to institute a review. It might be proper for corporate counsel to file for an inter partes review immediately following any accusation of infringement.
(2) A trademark is protectable against others who use a mark that is likely to confuse consumers as to the owner of that mark. While registration provides prima facie evidence of ownership and priority, a trademark can still be used in commerce without registration until that mark is challenged. While most know to protect a company's trademarks by filing suit against alleged infringers, little attention is given to deflecting infringement suits brought against a company. While registration with the USPTO is not required, it is a good defense to have a mark registered in the classes of goods or services that the mark covers. There are both state and federal registrations, as trademarks, like most IP, are regional in nature.
An important aspect of trademark law is the area governing domain names. As the Internet does not recognize international borders in the same way as non-online communications, domain names are subject to international law, more thoroughly described below. One should keep in mind the distinction between a domain name and the website operating at a given domain. The domain name is the "name" that resolves to a website, if one is active. A trademark owner, whether registered in a particular country, internationally or obtained through common law, has rights to a specific domain. However, anyone can register any unregistered domain, even if that person or company does not own the trademark encompassed in that domain name. In the case of a "gripe site," a website devoted to criticism of a company or institution, e.g. acmesucks.com, the criticizer may have rights in the content of the website, but might not have rights to register a descriptive domain name incorporating a trademark. Attorneys without a trademark focus sometimes confuse this distinction between the domain name and the underlying website; each is accorded different treatment in the trademark protection regime.
(3) Copyright infringement accusations often occur in the entertainment industries, but copyright violations can happen in virtually any industry involving creative expressions. Even machinery can contain creative expressions, as toner cartridge-supplier Lexmark professed in its copyright suit before the Sixth Circuit a decade ago and a maker of garage door openers argued before the U.S. Court of Appeals for the Federal Circuit. Every corporate counsel should know that any original creative expression in a tangible medium is protectable at the moment of creation. For those copyrightable items owned by the company, registration through the Copyright Office is easy to obtain. Rights to copyrighted materials that do not originate with the company often can be acquired by written agreement. The scope of rights in such an agreement is established with the language of that contract. So, these contracts should be explicit with regard to what copyrighted information is covered, or disputes could arise. Knowing what is copyrighted and copyrightable is perhaps the most important information that corporate counsel should obtain to prepare for any future legal disputes over such materials.
Years ago, IP rights were only protectable beyond U.S. borders if the United States had a bilateral agreement with an individual country. Today there are numerous multilateral treaties, including the Berne Convention for the Protection of Literary and Artistic Works and the Agreement on Trade-Related Aspects of Intellectual Property Rights, that are administered by the World Intellectual Property Organization. Among its many programs, WIPO offers online educational initiatives for corporate counsel and in-person training from its headquarters in Geneva.
Given that nearly all multinational companies have some online presence, which is usually global in nature, those companies need to be aware of the Internet Corporation for Assigned Names and Numbers and its Uniform Domain Name Dispute Resolution Policy. The policy, commonly called the UDRP, gives trademark holders a dispute resolution procedure for attempting to cancel or transfer domain names that infringe their marks. ICANN, located in Los Angeles, provides a platform for establishing policies for governing the domain name system. The two primary entities adjudicating UDRP disputes are WIPO's Arbitration and Mediation Center and the U.S. National Arbitration Forum. To enforce their rights to a domain name registered by another, trademark holders must prove that the domain name is identical or confusingly similar to their mark, that the registrant had no rights or legitimate interests to the domain name and that the name was registered in bad faith. Registrants often do not contest the proceeding and trademark holders have a high frequency of success. In light of the hundreds of recently-added generic top-level domains — such as .company, .finance and .healthcare, as opposed to the well-known .com, .net and .org — awareness and utilization of the UDRP is even more important. In the UDRP, trademark holders have a reliable, inexpensive and expeditious method to prevent cybersquatters and others from infringing marks in domain names.
For basic information, WIPO has a plethora of educational resources for non-lawyers and lawyers without IP backgrounds. The USPTO also provides comprehensive online resources, as does the Copyright Office. All U.S. patents, patent applications and trademarks are available on WestlawNext. Inventors wishing to have patents protectable in a wide range of countries can file applications with WIPO under its Patent Cooperation Treaty. This establishes a date of priority for American inventors, even if they have not yet filed a patent application in the United States. These applications are also available on WestlawNext, as are patents and applications filed in numerous countries.
As mentioned above, virtually all corporations have an online presence. Many of these corporations have considered adopting one of the new generic top-level domains. One of the features of the recent expansion of generic top-level domains is a new Trademark Clearinghouse, established to protect the rights of trademark holders and avoid consumer confusion. When a registrant attempts to register a domain name that matches a trademark term registered in the Clearinghouse, both the registrant and the trademark holder are warned of possible infringement. Not only does this notify the trademark holder, allowing the entity to take action if desired, but it also increases the likelihood of a favorable UDRP ruling, as UDRP panels have found a registrant's registration after a warning to be indicative of bad faith registration. Counsel who are not IP specialists should be aware of the Trademark Clearinghouse before registering a new domain and for protecting their trademark rights from cybersquatters and others.
Patrick H.J. Hughes is the Managing Editor of Practitioner Insights for Intellectual Property on WestlawNext. After a stint at Honeywell, Patrick entered the arts and entertainment world, working at such institutions as New York's Lincoln Center and the National Endowment for the Arts. He has authored IP-related articles for academic journals and taught copyright and trademark law at the University at Buffalo, State University of New York. He earned his J.D. from George Washington University Law School and studied IP law at Columbia University, Munich's Max Planck Institute and Beijing's Tsinghua University.
Jason Seashore is the Senior Content Writer of trademark issues for Practitioner Insights on WestlawNext. He has been with Thomson Reuters for eight years. During law school he interned in Legal Editorial Operations processing trial court orders, then spent five years with New Product Development working on the development of WestlawNext. Jason earned awards for international negotiations while at Hamline University School of Law, where he earned a J.D. Jason also writes and edits a blog covering international domain disputes at trademark-cybersquatting.blogspot.com.