Management Forum Blog

This post was guest-authored by Kristin Whitman of Intellogist.com, a free web resource and online community for patent and prior art searching.

Finding patent documents that are owned by a given corporation of interest is often referred to as “assignment searching,” because the owner of a patent is formally called the “assignee” in the US patent system. There are several major obstacles that can prevent searchers from finding documents that are assigned to a given corporation of interest; performing a simple search on the corporation’s name in a given patent database will often yield only partial results.

One major obstacle to this kind of searching is that assignment data may not be printed on the document face at the time of publication, and thus may not be available in certain electronic databases. This scenario is extremely common for US published patent applications, as applicants do not have to include this assignment information when patents are filed. Finding these “hidden” documents can be critical to a search project. Strategies to combat this obstacle include:

•  Search the Agent/Correspondent field – Sometimes the name of the company will be in the “representative,” “agent,” or “correspondent” field of the patent.
• Search the assignment data which appears in various patent legal status databases – Sometimes this data will not appear on a published application’s face, but will be included in that country’s re-assignment records.ŠŠ
• Search a database organized by patent family - Even if the search is for US patent documents only, searchers should expand to other non-US collections rather than limiting the search to US results. This kind of search may find non-US family members held by the assignee of interest, allowing searchers to infer that the company may possibly hold the US family member as well.ŠŠ

 Search a database that predicts probable owners – Some patent databases use special logic to predict probable assignees for unassigned patents – for example, algorithms can check the representative/agent field to look for a corporate address, or may check the inventor field to see if a well-known corporate inventor suddenly has a patent application upon which his or her company name does not appear. Innography and IFI Claims are two examples of databases which can make this type of prediction.

Another obstacle that arises in assignment searching is that the company name may have multiple variant spellings, and/or may have been transliterated to or from a language that does not use Latin characters. This concern will affect almost every assignee and inventor name; the reality is that no company name can totally escape from misspellings when it is represented on patent documents, and that any patent which is filed internationally may have the company and inventor names transliterated into other languages. Strategies to combat this problem include using a search engine with a “browse index” or “expand” feature to show index entries with similar spellings, such as PatBase or STN, or using a search database that offers standardized assignee names, such as the DWPI fileHYPERLINK “” , or IFI Claims. Further, to ensure that an assignment search covers all of the corporate divisions that are of interest, a corporate tree database may be used to identify subsidiary names.

 Finally, it is possible that a search will miss documents that may have been re-assigned to the company of interest, due to the possibility that only original ownership data may be contained in the chosen database. To combat this possibility, searchers can extend their search by querying re-assignment databases and legal status registers for the countries of interest. In addition, the INPADOC legal status database is another source for re-assignment information for certain countries, although its coverage is dependent upon self-reporting from the national patent offices.

For more in-depth information on any of these options, please see the Best Practices article on Assignment Searching hosted on Intellogist, your source for expert answers to your patent search questions. If you are a newcomer to prior art searching, see the General Searching best practices wiki article to learn about basic search techniques which are broadly applicable to many types of searches.  In addition, Intellogist also offers specialized techniques which may be applied to validity or infringement searches.

In addition, if you’d like to learn more about being an effective prior art searcher, you might like to consider one of the upcoming Advanced Courses from Patent Resources Group, The Art and Science of Patent Searching.

Despite ongoing efforts to develop new technology solutions, legislative actions, or enforcement strategies to combat counterfeit drugs, it seems no one has yet found the weapon to finally bring down the $800 billion (and growing) counterfeit drugs industry. But pharmaceutical manufacturers, take note. The US Food & Drug Administration (FDA) recently released a document – “Guidance for Industry Incorporation of Physical-Chemical Identifiers into Solid Oral Dosage Form Drug Products for Anti-counterfeiting” – that states that incorporating physical chemical identifiers (PCIDs) into drug formulations could be a cost-effective way of differentiating the genuine from the counterfeit.

According to an article on the subject by Gareth Macdonald for in-pharmatechnologist.com, ideal PCID candidates are pharmacologically inactive and would be “food additives, colorants, or excipients with established safety profiles”. Macdonald said that just like other anti-fake labeling methods, PCIDs can easily be detected in the laboratory. But what’s different – and better – about them is that they can also be easily identified by patients, medical practitioners and pharmacies. The draft guidance also emphasized that the PCIDs should be tested for potential toxicity, and for any interaction they may have with the drug’s release technology.

A security printing and imaging blogger has some worries, though. According to a post by Steven Simske for communities.hp.com, the FDA advice:

Goes against a trend to include less, rather than more, exogenous chemicals — dyes, expedients, etc. — in food and drugs

Does not clarify if the list of PCIDs to add is public knowledge (“with established safety profiles”) – and therefore easier for the would-be counterfeiter to obtain – or that PCIDs used should only be sold by authorized suppliers to authorized buyers to prevent insidious insiders who order PCIDs and sell them for profit to counterfeiters

Does not consider that incorporating PCIDs may complicate the authentication process –requiring the deployment of specialized analysis equipment and personnel – while track and trace and authentication through the appropriate combination of security printing may be easier, and more cost-effective, scalable, and effective

Meanwhile, should pharmaceutical manufacturers heed FDA’s advice, Colorcon is ready to offer exclusive tablet identification and authentication systems. A world leader in film coatings, modified release technologies, functional excipients, and tablet branding services, Colorcon provides a complete line of customized film coating and ink formulations that can be used to give a unique appearance to solid oral dosage forms (SODFs) — making it easier for a patient or pharmacists to identify the product at a glance. According to the company, these excipients offer established safety profiles, do not interact with core components, and have no potential effect on the quality, performance, and stability of the SODF — all of the important pharmacological and toxicological considerations covered in the FDA guidance document.

Incorporating PCIDs into pharmaceuticals may have its pros and cons – but with the FDA behind it, it’s surely an idea worth examining. As recently appointed FDA commissioner Margaret Hamburg said, “Drug counterfeiting is a serious public health concern,” and the agency is committed to ensuring that fake products are stamped out.

There is no question that innovation and creativity – powered by intellectual property concepts – have provided the engine behind the success of the American enterprise. To underscore this point, the US Chamber of Commerce recently released a comprehensive study on the importance of IP in all 50 states.

Did you know?

Texas ranks 2nd in the nation in terms of number of patents granted
Virginia has the highest concentration of technology workers in the nation
Washington State has the 2nd highest innovation capacity in the nation*
New York accounted for more than 10% of all trademarks applications filed by US residents

Intellectual property works – from sea to shining sea. And this fact is borne out by the comprehensive study on the importance of intellectual property (IP) and innovation in America – recently released by the US Chamber of Commerce’s Global Intellectual Property Center (GIPC). GIPC’s Fact Sheets provide a look at the roles innovation and creativity play in each of the 50 states, highlighting local companies along with interesting IP facts and figures.

Looking at the Fact Sheets, it becomes obvious that all across America, intellectual property plays a vital role in creating jobs, saving lives, advancing global economic growth, and generating best-in-class solutions to global challenges. For example, before looking at the list, try to match which state made which innovation:
Utah                                                            Xerox technology
Idaho                                                           the assembly line
Kansas                                                        modern GPS products
Oklahoma                                                    world’s first airplane
Michigan                                                      the first artificial heart
Wyoming                                                     shopping carts
Iowa                                                            frozen French fries
Tennessee                                                   slicing machine for sliced bread
North Carolina                                              cotton candy
Washington State                                         the turbojet engine

From life-saving drugs to cell phone technology, IP is part of Americans’ everyday lives, supporting industries that employ nearly 18 million workers, account for more than $5 trillion of the US gross domestic product, and represent 40 percent of US economic growth. That’s why, besides revealing eye-opening information, the GIPC’s State Fact Sheets project is significant for putting the spotlight on the importance of IP to economic growth and human advancement in each and every state across the country. Part of an interactive, easy-to-use map available online and in print format, the project serves as a resource for legislators, policymakers, and the public to identify and promote successful companies, inventors, creative artists, and innovative enterprises in all fifty states, and better understand the role they play in the American economy and society.

According to Mark Esper, executive vice president of the Chamber’s GIPC, “America has a story to tell, and each story is unique…The value of innovation can be found in every corner of the country, and every state and community plays a role in helping us all achieve the American dream. The State Fact Sheet project captures this spirit of innovation and entrepreneur[ship] and will prove to be a useful resource in highlighting the role IP plays in our lives.”

Bottom line: GIPC’s State Fact Sheets project makes the case – and a strong one – for IP.

* Noted by the Information Technology & Innovation Foundation’s 2008 Index

About the GIPC
The U.S. Chamber is the world’s largest business federation representing more than 3 million businesses and organizations of every size, sector, and region. The Chamber’s Global Intellectual Property Center is working around the world to champion IP as vital to creating jobs, saving lives, advancing global economic growth, and generating breakthrough solutions to global challenges.

This article was provided by the BPCouncil.

We are trying to find new ideas of seminars,  and we think that the best way to suit your needs is to ask you directly!

What IP subject would you like to be developed during a conference?

Suggestions are very welcomed, so do not hesitate to leave a comment or to contact sarah.packham@management-forum.co.uk with new ideas!

Thank you for your help!

The International Authentication Association (IAA), an international trade organization, urges businesses not be distracted from brand protection efforts in spite of the economic downturn.

* Many companies are cutting down on time and resources invested on brand protection.
* Economic uncertainty makes it even more critical to have a comprehensive and ongoing anti-counterfeiting strategy in place.
* Authentication technologies provided by IAA member-companies protects global products valued in the hundreds of billions.

The economic slowdown and poor business climate may have caused companies to cut down on efforts that must continue precisely because of today’s uncertainties.  According to a recent survey by the intellectual property firm Marks & Clerk*, as much as 80 percent of managers said that they were ‘too busy’ to spend more time on brand protection or get involved only when a counterfeiting or competitive threat has emerged. Just a fifth of the respondents are spending more time on brand protection.

Against this backdrop, the International Authentication Association (IAA), a global organization that fights counterfeiting, has stressed the need for brand and product owners to have a comprehensive and ongoing anti-counterfeiting strategy in place, warning them against reducing the time and resources invested in brand protection.

It’s easy to see why. The survey results come at a time when the threats of counterfeiting and piracy are spiraling and brand protection has never been more urgent. The latest report by the Organisation of Economic Development (OECD) estimates that the global counterfeiting market has now topped $200 billion, while the Counterfeiting and Intelligence Bureau (CIB) predicts fake goods will make up to seven percent of world trade.

David Howard, IAA Chair, explains: “There’s no doubt that budgets are under threat in the current climate but not protecting your brand correctly is not an option…Counterfeiters need little excuse [during] the best of times and economic hardship is likely to be a recipe for increased criminality. If companies are cutting back on their anti-counterfeiting efforts, the market will be more attractive for fakes.”

While companies must inevitably take a hard look at their costs, combating counterfeits has proven to be an effective way to maintain revenues and market share. Howard added: “The costs of protecting your products are low compared to the problems and financial headaches that counterfeiting and infringement [bring to] a business …”

IAA – A Leading Voice for Brand Protection
The IAA comprises 20 of the world’s leading brand owners and suppliers of authentication technologies, including flagship brands Johnson & Johnson, Honeywell, 3M Brand and Asset Protection, Authentix, Dupont Authentication and Hologram Industries, to name a few.

The organization’s raison d’etre is to promote the use of authentication technologies as an integral part of an effective anti-counterfeiting strategy. Education is a key element of this agenda, with the IAA playing a prominent role in educating government agencies, inter-government organizations and brand owners about the roles and uses of authentication.

Howard, who is also director of product protection at Johnson & Johnson, explains: “While counterfeiting and piracy are age-old problems, the globalization of world trade has seen an exponential increase in the [problems'] scale and [impact] …Increased trade, new technologies and ‘grey’ markets, particularly the internet, have intensified [an] already acute [situation].
“The International Authentication Association is an important voice for the authentication community. It will promote and explain the uses of authentication in a climate when the potential to benefit from these technologies has never been greater,” Howard concluded.

A Range of Authentication Technologies from IAA Member Companies
To combat threat of counterfeiting worldwide, brand owners use an array of authentication technologies to protect their products as part of anti-counterfeiting strategies. Today, technology provided by members of the IAA protects global products valued in the hundreds of billions, including the majority of the world’s currencies, numerous passports, ID cards and other vital documents as well as everyday items such as jewelry, mobile phones, computers and clothing. Authentication solutions include:

* Overt devices visible to the naked eye such as a hologram or color-changing ink
* Hidden devices such as ultraviolet inks or scrambled images, often revealed to the human eye through handheld inspection devices to increase the level of security
* More sophisticated covert devices such as chemical tags in packaging or electronic and embedded codes
*  Forensic devices requiring laboratory analysis

A combination of these components is often incorporated into a single device for greater efficacy.

Increasing Awareness and Appreciation of the Value of Authentication
According to David Howard, “Authentication technologies are on the front line of the war against counterfeiting every day …Unfortunately the role that they play and the impact that they have are not fully appreciated. One of the key aims of the IAA will be to change this and build a better appreciation of the value of authentication in an anti-counterfeiting and brand protection strategy.”
With this goal in mind, the IAA is developing a new Authentication Framework – expected to be completed in late 2009 – that will help to develop a common understanding of authentication, its value and, most significantly, assist brand owners in making the case for authentication and how they should go about it.

For more information about the IAA, visit its website at: www.internationalauthenticationassociation.org

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The human gene patentability controversy is back. ACLU’s lawsuit against Myriad Genetics, charging that the latter’s patents on the BRCA genes are unconstitutional and invalid, has brought out various legal, medical, and ethical implications. Will the litigation’s outcome finally settle the issue?

* The implications of Myriad’s exclusive right to the BRCA1 and BRCA2 genes
* Arguments for patenting human genes
* Is the price of innovation well worth its benefits to mankind?

The American Civil Liberties Union, together with the Benjamin N. Cardozo School of Law-affiliated Public Patent Foundation (PUBPAT), recently filed a lawsuit against the US Patent and Trademark Office (USPTO), Myriad Genetics, and the University of Utah Research Foundation. The latter two hold the patents on the BRCA genes, the mutations (BRCA 1 and BRCA2) of which are responsible for most cases of hereditary breast and ovarian cancers.

According to an ACLU press statement, the patents give Myriad the exclusive right to perform diagnostic tests on the BRCA1 and BRCA2 genes (at a cost of $3000) and to prevent any researcher from even looking at the genes without Myriad’s permission. ACLU officials stated that this would hamper clinical diagnosis; discourage research on possible future mutations of the BRCA2 genes; and have negative consequences on women who need medical screening but can’t afford Myriad’s test, want a second opinion on test results, or seek other options for inconclusive results.

The lawsuit – filed on behalf of breast cancer and women’s health groups, scientific researchers’ associations, pathologists and laboratory professionals – charges that granting the patent to Myriad is illegal because genes are “products of nature” and unconstitutional because limiting the free flow of information violates the First Amendment.

But other experts disagree. An article by Rosalie Westlenskow for The New York Times quoted genome science and ethics expert Robert Cook-Deegan, who said that the granting of patents for human genes encourage invention by rewarding researchers, leads to investments in businesses that own patents, and prevents “free riders” who pay nothing to sell a product that cost the original developers millions. “The system of innovation will not work…if, as soon as you put something on the market, someone else can make your product and they don’t have to pay you anything,” he added.

To those who would argue that gene patents negatively impact research, other evidence contradicts it. Westlenskow’s article also quoted Scott Kieff, law professor and research fellow at Stanford University, who said that other  countries that have stricter rules about gene patents have not seen as much innovation as the United States, where an increase in new drugs and devices in the market was seen after 1980, correlating with the increase in gene patents.

To those who would say that this case can be won based on Section 101 of the Patent Law (that defines patentable subject matter), other experts contend that while a naturally occurring biomolecule is not patent-eligible by itself, one that is isolated and purified with sufficient human intervention that it acquires “markedly different characteristics” from their naturally occurring counterparts is patent-eligible – an interpretation, says law professor and blogger Chris Holman says has not been challenged for 25 years..

What about moral and ethical implications? Genes are the basic unit of heredity and, with modern technology, researchers have been able to isolate specific genes that carry an associated risk of illness. According to an article on the lawsuit by Elizabeth Landau for cnn.com, some experts say that while a moral argument could be made that human genetic material belongs to all or that human genome is sacred, what can be said, states molecular biology professor Lee Silver, when one considers that about 25 percent of human genes are shared by chimpanzees.
Indeed, the patent law says nothing about ethics. And of course, companies should not use patents to profit unreasonable and exploit people at risk. On the other hand, patents do serve these very same people. Silver said that the patentability of such tests (such as Myriad’s diagnostic test) is what gives companies the incentive to create them in the first place. In the same article, M. Sara Rosenthal, a bioethics expert, cited another example of a good use of a gene patent -. the insulin gene, which eventually led to essential treatments for diabetes.

Obviously, gene patenting is not a question of absolutely right or absolutely wrong. Remember, too, that such patents expire 20 years after application. The bottom line though is, with all the pros and cons, does the potential harm to patients outweigh (or not) the benefit to mankind that comes from encouraging innovation?

The outcome of ACLU vs. Myriad may provide the answer.

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IP Europe-Switzerland: Solutions to Combat Counterfeit Medicines Worldwide

Genuine or fake? This white paper from BPCouncil Member AlpVision – a leading supplier of machine-readable digital covert security solutions for combating counterfeiting of branded products worldwide – may help you find the answers.

Authored by Roland Meylan, company co-founder and Corporate Communications Manager, Solutions to Combat Counterfeit Medicines Worldwide makes this case: Protecting pharmaceutical products against counterfeiting – or fighting fraudulent importation of donated or discounted medicines – can now be done using standard packaging and labeling without extra production cost.

Meylan states that in differentiating authentic products from fakes or illegally imported ones, covert security elements – invisible to the naked eye and requiring dedicated detection means – have proven more successful than visible or overt solutions. But, although efficient and effective, implementation and deployment come with a cost – and a big one.

AlpVision’s Cryptoglyph® is the only security process in the world that provides invisible security marking with nothing more than regular visible ink and standard printing processes and therefore  can be easily integrated into any existing packaging or labeling line without changing the printing speed and production workflow, that is, without incurring extra production cost.

Check out the white paper: Solutions to Combat Counterfeit Medicines Worldwide.

About Alpvision
AlpVision, headquartered in Switzerland, is a leading supplier of machine-readable digital covert security solutions used to combat counterfeiting of branded products worldwide. AlpVision is the only supplier in the world offering covert anti-counterfeiting and brand protection solutions which can be used with standard image capture devices purchased on the consumer micro-electronics market. An instant and automated “Genuine-or-Fake” verdict can be obtained with off-the-shelf office flatbed scanners, normal digital cameras or with mobile phones equipped with a camera.

Alpvision is a member of the

DO PATENT ATTORNEYS MAKE GOOD ADVOCATES?

• Do you or your company normally use a lawyer or barrister in litigation proceedings?
• Have you acted as an advocate yourself?
• What kind of proceedings have you been involved in?
• Which courts have you appeared before?

Working in the IP sector? Stay up-to-date!

Today I am going to discuss Trademark Dilution.  I will explain what it means and how Dilution may or may not affect you as a trademark owner.

Dilution is when another company or individual uses your famous trademark or brand name on a totally unrelated product or service and their use of your trademark “dilutes” the distinctiveness of your product or service.  Dilution can occur even if the unrelated product or services is not competitive or may not cause a likelihood of confusion, i.e., consumers would confuse the two companies’ product or services.  I will explain this concept in the example below:
Your company name is XYZ, Inc. You own a trademark for distributing tech gadgets. You have built a brand name and reputation as a leader in distributing tech gadgets.  However, another company comes along and names their company XYZ, Inc. but they do not sell tech gadgets, they sell street clothing. Although, the products sold are totally unrelated, the consuming public can assume that company XYZ, Inc., which sells tech gadgets, has ventured into the business of selling street clothing.  XYZ, Inc., the tech company, does not want to be known for selling street clothing.  They want to be known as the leader in selling tech gadgets. And of course, XYZ, Inc., the street clothing company, wants to use the XYZ name because they can gain recognition off of the brand name and reputation of XYZ, Inc., the tech company.
The above scenario is how dilution of a brand occurs and why well-known or famous trademarks want to avoid it.

So how does Dilution affect you as a trademark owner or potential trademark owner?

Well the law has recently changed. Now the law heavily favors owners of nationally known or recognized trademarks. Previously, an owner of a famous trademark had to show that a company that adopted their trademark, but sold a totally unrelated product or service, was ACTUALLY diluting their brand. Actual dilution could be shown by economic injury (loss profit or sales) via blurring (consumers began to confuse the two products) or tarnishment (the use of the famous mark by the subsequent company tarnishes the reputation of the famous mark). But actual dilution was hard to prove. Currently under the new law, Trademark Dilution Revision Act (TDRA), the owner of a famous trademark only has to prove is that there is a likelihood of confusion rather than actual economic injury. Trademark Dilution Revision Act (TDRA) This standard is much easier to prove. One way a company can prove a likelihood of confusion is by simply doing customer surveys.

Second, a mark has to be recognized nationally by the general consuming public. TDRA. Previously, a highly distinctive or niche mark was considered famous even if it was only used in a specific geographic region. Now if your mark is famous or well known in the Southeast but not nationally, then you cannot claim dilution by a subsequent mark.

Third, protection from Dilution is still afforded to trademarks that are satires, parodies, or criticisms of a famous mark. TDRA. This is called the fair use doctrine. So the website Perez Hilton, which is a satire or parody of the name, Paris Hilton, is protected from any dilution claim from Paris Hilton.

I want to close out this article with three key points:

1. If your mark is nationally known or recognized, be vigilant in protecting your brand and trademark. The current law is on your side.

2. If you are a potential trademark owner, make sure you do not choose a trademark that is too similar to a nationally recognized trademark. Although you may not offer the same product or service, a company that owns a more famous mark can easily prevent you from using the mark.

3. Parodies or satires are protected. So if you have a website or an idea for a mark that parodies a famous mark, feel free to embark on that journey. Fair use is king!

Latoicha is the founding partner of the firm, Phillips Givens LLC. Her practice includes represention of start-ups, small, and mid-sized businesses in intellectual property matters. Specficially, she provides legal services in the following areas:  trademarks, copyrights, legal issues in new media, and IP licensing. She also writes a law blog entitled IPLAW101 located at www.phillipsgivenslaw.blogspot.com There she provides practical tips for individuals and small businesses in solving basic intellectual property issues.  Latoicha is a frequent speaker on intellectual property issues and has been featured in the Atlanta Tribune Magazine and the Atlanta Journal-Constitution. You can contact Latoicha at lgivens@phillipsgivenslaw.com. Latoicha is also a member of the BPCouncil.

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When intellectual property intersects with the Internet – as often happens in the digital age – legal sparks are bound to fly. How does one identify potential problem areas – or avoid potentially costly mistakes? There’s no better person to ask than Brett J. Trout, author of “Cyber Law: A Legal Arsenal For Online Businesses“.

What are the top 5 intellectual property violations that online businesses have to be aware of?

- Copywright infringement: few companies know enough about copyright law to determine if they have the rights they need to post third-party text, code and / or pictures online.

- Fair use: this goes hand-in-hand with copyright infringement. Fair use is limited to very specific cases. Mere attribution is insufficient to qualify as fair use.

- Failure to register trademarks: if you fail to register your trademark, someone else just might, severely limiting your ability to expand that trademark into new markets.

- Trade secrets: trade secrets are only protected as long as they remain a secret. One poorly drafted contract or digruntled employee may irreparably thrust a trade secret into the public domain.

And what are the top five things they need to know about Internet law?

1. Intellectual property requires proactive steps to maintain its value - perform an intellectual property audit to determine what intellectual property you have and what needs to be done to protect it. Failure to take appropriate action may lead to the intellectual property falling into the public domain.

2. A development agreement does not necessarily transfer ownership – companies pay their developers large sums of money to produce material, but often only receive a limited license to use the material, rather than an assignment of ownership in the material.

3. If you register your trademark after someone else obtains your domain name, there is a little you can do to retrieve that domain name other than paying the owner large sums of money.

4. Developing a solid online reputation is easier than scouring the Internet attracting everyone posting unflattering commentary about your company – develop your online reputation BEFORE a problem arises. By the time an online public relations problem arises, it is too late to try and build a protective online network of good press. Leverage social media and online content to identify problems early on and resolve them before they spiral out of control.

5. Internet laws are constantly changing. If you have not had your online policies and procedures reviewed in the last couple of years, it is time for a review.

Internet technology is continuously evolving. Has legislation kept apace? For example, cybersquatting and other Internet scams continue to plague those doing business online. Do you think that legislation has caught up with the scammers – or is it a matter of poor enforcement?

Online problems arise, people identify the problem, they complain to their Congressional representatives, bills are introduced, laws are passed, enforcement irons out the bugs and courts review the violations. This process means that enforcement will always lag several years behind the scams. By the time the law adequately addresses a particular scam, the scammers have moved on to a bigger and better scam. The best defense is to inform oneself  about the latest online scams. You do not have to know everything. Scammers prey on the least knowledgeable. Knowing at least a little about the latest tactics is often enough to avoid serious problems.

What does cyber law say regarding the recent Facebook fracas on retaining user information?

Online communities are some of the most vehement opponents of online companies co-opting  personal information. Often attorneys for these companies try to apply in person restrictions to online communities. Online communities are quick to join forces and respond in a sometimes aggressive manner. It is perfectly legal for companies to contract to use personal information in a variety of ways. As the recent Facebook issue highlights, however, an open line of communication with your online community may prevent a potentially embarrassing situation.

What would you say are the top 3 or 5 mistakes or oversights for which  brand or trademark owners have paid the price?

1. Failing to properly vet a new trademark. Companies sometime spend hundreds of thousands of dollars developing a new brand before conducting a trademark search.

2. Failing to protect trademarks. By the time someone infringes your trademark it is often too late to think about protection. Having a trademark registration in hands provides many options for resolving potential conflicts quickly, cheaply and easily.

3. Failing to grab the domain name early. Domain names are so inexpensive, it simply makes sense to register the domain names of all of the trademarks you are serioulsy considering. This may prevent you having to purchase the domain name back from a squatter for tens of thousands of dollars.

Some have commented on the irony of all the many laws governing (or restricting) the platform for the freest form of expression. How do cyber laws balance freedom of speech and fair use concerns with IP rights?

To a large extent the Internet is self-policing. The online community has developed its own rules as to what is right and wrong. Bloggers, for instance, are much more concerned about attribution than copyright infringement. It is important to familiarize oneself not only with the law of the Internet, but with the etiquette of your particular online community. Even the foremost authority on Internet Fair Use recently received a Take Down notice alleging he infringed a third party’s copyright. The balancing between fair use and IP rights appears to be a merging of those ideas. The laws regarding copyright infringement and fair use in place in the year 2020 will be far different from the laws we have today.

We [BPCouncil] recently did a couple of articles: one dealing with an online news site which copied a New York Times headline; the other dealing with an online film review, posted on and then removed from YouTube, that used copyrighted clips from the original film. Is the law clear on these situations?

Fair use is a balancing of First Amendment rights with the rights of the IP holder. Often both parties feel the law is very clear, despite having diametrically opposed interpretations. Even uses which clearly fall within the definition of fair use may prompt a lawsuit. The complexity of the issue often prevents a summary decision, leveraging the outcome toward the litigant with the deepest pockets. In the past I have counseled clients that although we would likely win on the issue of fair use, we would probably  not recover the fifty thousand dollars it would take to prove the point. The only thing “clear” about the low of intellectual property is that it is nearly always  a costly endeavor to take in court.

Not everyone who does the Intenet socializing is up to snuff on intellectual property. What are the most critical IP issues for these users? What laws and restrictions could they potentially be skirting or breaking?

Using text, pictures or trademarks of third parties without permission is an invitation for a lawsuit. While the law allows certain fair uses and truthful editorial, it is best to be up to speed on the latest trends and / or consult an attorney before you do something that may put your entire company at risk.

You wrote in one of your blogs that online auction fraud is the most prevalent form of Internet fraud. Big brands can sue eBay, but do regular buyers have legal protection?

Although eBay has several proections in place for buyers, money is made off of sellers. Although I have not performed a statistical analysis, empirically it appears ebay is making strides toward preventing widespread fraud that has gone on in the past. That being said, I actually ended up suing a seller in federal court over a vehicle I purchased on eBay several years ago. It eventually turned out very well for me, but I doubt the outcome would have been nearly as rosy had I not been an attorney with a background in this area of the law.

What would you say is the most effective weapon in the “legal arsenal for online business”… and why?

Information. The more you know, the better prepared you will be to steer clear of problems and spot small, manageable issues before they become large, intractable ones. That is the main reason I wrote CyberLaw. I wrote it as a desk reference to help the average business owner  spot issues and avoid online problems that might otherwise bring their business to a grinding halt.

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