What Does It Mean to 'Induce' Patent Infringement?

Dear Rich: Thanks for explaining the Supreme Court's decision in the Roche v. Stanford patent case. Could you make that a regular feature? Wow, we're really torn. On the one hand we love to come up with new regular features, and on the other hand so many bloggers already discuss these big cases (in the case of  patent law, check out Patent Baristas and Patently-O). On the other, other hand (wait, is that three hands?) we have to write about something!
Right, you wanted to hear about a Supreme Court case. Last week, the Supreme Court decided Global-Tech Appliances v. SEB. SEB patented a deep-fryer whose exterior was cool to the touch. Global-Tech Appliances, operating outside the U.S. copied everything but the cosmetic aspects of the SEB deep fryer. Global-Tech then branded these deep fryers for sale by Sunbeam, Montgomery Ward, and others. SEB sued Global-Tech for inducing others to infringe its cool-touch patent. Global-Tech defended itself by arguing that it couldn't induce others to infringe because it had no actual knowledge it was infringing SEB's patent. (Global-Tech had vetted its device with a patent attorney but had failed to disclose to the attorney that their device was copied directly from the SEB deep-fryer.)
Justice is (Willfully) Blind. The Supreme Court ruled for SEB. Yes, said the court, inducing infringement required knowledge of the existing patent, but that knowledge could be inferred using a legal standard referred to as "willful blindness." As the Court stated:

Many criminal statutes require proof that a defendant acted knowingly or willfully, and courts applying the doctrine of willful blindness hold that defendants cannot escape the reach of these statutes by deliberately shielding themselves from clear evidence of critical facts that are strongly suggested by the circumstances.

The Court went on to distinguish willful blindness from a lower court's standard known as "deliberate indifference." As for the differences, we won't go into all the details, but practically, the bottom line is that when asking an attorney to render a legal opinion (Does my deep-fryer infringe?), don't hide information (like, 'I copied this from another deep-fryer').

Does Ruling Mean University Doesn't Own Rights?

Dear Rich: I read that the Supreme Court ruled that universities can't claim ownership of inventions? Is this ruling retroactive or does it only affect inventions that occur after the ruling? We think you may have misinterpreted things. If you're one of the thousands of scientists, professors, or instructors who have assigned rights to a university, we're sorry to have to break it to you but the Supreme Court's recent ruling doesn't change the landscape quite as much as the headlines seem to promise (BTW, the latter link is one of the better explanations of the case).
What Happened? In a case involving Stanford University and the Roche pharmaceutical company, the Court was faced with two agreements signed by a university scientist: one in which he promised to assign rights to the university; and another in which he actually assigned rights to a company that was later purchased by Roche. The Supreme Court ruled that the agreement in which rights were actually assigned took precedence over the agreement in which rights were promised.
The Bayh-Dole Act. Stanford's position was that the inventor's rights automatically vested in the university under the Bayh-Dole Act. The Bayh-Dole Act, enacted in 1980, permits universities to claim patent rights in inventions created with federal funding at a university. The university may then license these discoveries to private industry—a practice some critics have likened to corporate welfare. Curiously, one of the prerequisites for the university to claim these rights is that the university must have written agreements with its faculty and technical staff requiring disclosure and assignment of inventions. The ruling won't invalidate past assignments. But problems may occur in cases like this one, where two assignments appear to conflict. In addition, you can expect that universities will stop using language in which inventors promise to assign and instead automatically assign inventions. That seems like a silly distinction to the rest of the world but there has to be some justification for patent lawyer fees.

Facebook Group Copied My Photograph

Dear Rich: I recently uploaded a picture I designed for a Facebook group. Someone has taken this picture and used it in another group but slightly modified it. Would this be copyright infringement? Probably. Assuming your photo qualifies for copyright protection (most do) and assuming the copy doesn't qualify as a fair use (most don't), then the unauthorized taking of your photo is an infringement. What do you want to do about it? If you want it taken down,  a simple solution would be to use Facebook's DMCA Notice policy. Fill out this online form and unless the other party objects to the notice, the photo will be removed and that will be that. If the other Facebook group disagrees with you and files a counter notice, then the photo will stay up unless you file a copyright lawsuit. That's expensive, time-consuming and probably a financial loss for you, even if you win, (unless you can prove that you suffered serious financial damages). If you don't want to be confrontational, you can always try writing to the other Facebook group, explain that you have a copyright in the photo and ask them to remove the photo voluntarily.

Assigned RIghts to Employer; Now Wants Them Back

Dear Rich: I did contractor work for a software company and assigned them rights to a program I created back in 2004. In return I got royalty payments for a while and now the company has stopped marketing the software. Is there a way for me to get the rights back to the software without causing a big problem? Okay, we're imagining the two guys shaking hands in the photo are you and your employer after reaching some kind of solution (the guy in the blue shirt is from the Dear Rich Staff). We hope this isn't just wishful thinking on our part because assignments are permanent transfers of ownership and few companies are inclined to return rights after they've paid for them (Just ask Simon & Schuster). We're also not clear what type of assignment you made (you can review the various types here). Three possible ways of getting the rights back include:

• The company gives the rights back voluntarily. If you are still on good terms with the company, it's possible they may work something out with you. They may even allow you to exploit the software in return for a cut of your profits. Or perhaps they'll simply sell it back at a reduced price. You won't know until you ask. And whatever you agree upon, get it in writing, of course.
• The agreement you signed provides for some method of reversion.  Occasionally, an assignment provides for reversion of rights. This is rare because assignments, by their nature, are permanent transfers. But occasionally, a patent or a copyright assignment permits the assignor to re-acquire rights if certain conditions are met -- for example, the assignee stops exploiting the work, or the assignor buys it back for an agreed-upon fee. In any case, you should review the agreement in case it does include a reversion provision. (By the way, there may be confusing tax implications if an assignor reclaims rights after categorizing the assignment payment as capital gains and not as ordinary income.)
• The employer breached the assignment agreement and you can use that breach as the basis for terminating the assignment. We're not sure if you're ready for this approach as it usually involves litigation, but if you can prove a material breach of the assignment agreement,  the rights may be re-assigned to you. You're most likely to achieve this outcome if you can demonstrate that the company induced you to enter the agreement based on fraud. You may also be able to argue that the company materially breached the agreement and failed to cure the breach -- for example, never paid royalties or provided accountings. But this is a tough strategy to implement because a court faced with a failure to pay royalties may allow the company to retain the ownership, provided that damages are paid to the assignor (you).

Keep in mind that if you do get the rights back, you'll also need the cooperation of the company in registering the assignment (whether it is copyright or patent rights) and in transferring rights back to you. 

Software Beta Tester NDA Needed

Dear Rich: What do I do about people who are beta testing my mobile app. Do we need to have them sign NDAs? If you're trying to maintain secrecy about the software and you want to place some limitations on copying and other activities, you should use a beta tester nondisclosure agreement (NDA). We have one posted here. (Click on the links for explanations regarding each provision.) You may find that some of the language is overkill, for example, the security provisions in Section 4. Modify to match your needs.

Can I Use TV Quote as Blog Title?

Dear Rich: I am trying to find out if I could use a specific quote from the show, Strangers with Candy, for a potential blog title? If it helps, the potential title is "Stupid Junky Whore" which is a recurring insult on the aforesaid series. Oops, we didn't have time to post a warning that portions of the clip shown above may be offensive to some readers. So much for our bounce rate (or is it exit rate?).
Right, you had a question. If you're in a hurry to get started with your blog, the short answer is that there's no problems with naming it, 'Stupid Junky Whore.' We'll pass on providing the long answer but if we did provide one, we'd probably say things about copyright not protecting short phrases and how your choice of phrase hasn't achieved trademark status, and how free speech gives you the right, etc. But why get into that. As Jeri would say, 'Dreams can happen!'

Can County Hassle TV Show Over Use of Seal?

click to see gruesome details

Dear Rich: A local government watchdog group put on a cable-access TV program where they used as their logo a spotlight shining on the seal of that government (Union County, NJ). On July 1, 2010 Union County submitted an application for a trademark on their seal and soon thereafter (9/17/10) the county counsel for Union County wrote a letter to the local cable channel telling them to stop using the Union County seal on the program since a trademark was pending. The letter is here. This is now the subject of a lawsuit described here. The question: can a government even trademark their seal? First of all, you failed to mention that the Union County seal is the only government seal in the U.S. that depicts a woman being shot. We thought it was some kind of misogynistic take on the Revolutionary War but it turns out that it's based on a real event -- the killing of Hannah Caldwell, a mother and homemaker from Union. We like the native-art illustration and wonder why the County isn't pursuing copyright infringement claims as well!
Right, you had a question. As much as the Dear Rich Staff supports the right of New Jersey county officials to hassle public access TV shows, we think the matter is moot (as the lawyers like to say) because the USPTO killed the county's trademark application last week. We have to agree with the trademark examiner who rejected the trademark application on October 18, 2010. She wrote:

Registration is refused because the applied-for mark consists of an insignia of a U.S. municipality. Trademark Act Section 2(b), 15 U.S.C. §1052(b); see TMEP §1204. Trademark Act Section 2(b) bars registration of marks that include the flag, coat of arms, or other insignia of the United States, any state or municipality, or any foreign nation. TMEP §1204.

You can read the complete rejection here. The County had six months to respond. We guess their tickler system malfunctioned because last week the trademark application was officially pronounced as abandoned. Here's the notice of abandonment. That's $325  in taxpayer money (not to mention county counsel expenses) down the drain! And in any case, even if the County has a protectible but unregistrable trademark, the TV show use is permitted under First Amendment principles.