Tag Archives: ip

Copyright Implications of 3D Printing

In the United States, the late nineteenth century brought a massive surge in industrial activity as companies developed novel ways to manufacture all kinds of products in massive factories employing large numbers of employees. As time passed, the development of technology focused on decreasing costs and man power. In the 1980s, one such innovative technology was born and developed. This technology, commonly known as 3D printing, was, and still is, protected by numerous patents. Generally, 3D printing is the creation of a three-dimensional object by successively adding layers of material (e.g., resin, powder), wherein the addition of material and formation of the object is controlled through a computer. As a result of the broad patent protection accorded early developers of 3D technology, entry into this new area of more cost efficient design and manufacturing was cost prohibitive for most small businesses and non-business consumers. However, a number of early patents in the field have begun to expire. For example in January of this year, one of the core patents protecting 3D technology, U.S. Patent No. 5,597,589, entitled “Apparatus for producing parts by selective sintering,” expired. The expiration of this patent, and others in the field, is credited, in part, for the emergence and growing popularity of 3D printers which can now be purchased for as little as three thousand dollars. As a result, 3D printing technology has now become more readily available to small businesses, and even the general consumer. Indeed, because of the proliferation of home 3D printers general consumers are now afforded the opportunity to manufacture an endless array of items on their own using a technology, that until recently, was only available to relatively large commercial enterprises. But with the broadening use of 3D printing has come a number of new legal issues, including the issue of copyright protection regarding the design of 3D printed items and the software that directs a 3D printer to manufacture of such materials.

 

3D printers “follow” instructions set forth in computer-aided design (CAD) files to make objects composed of plastic, metal or other materials. With the proliferation of the 3D printer and the desire to ‘make things’, consumers have begun to share CAD files, and indeed, numerous sites have already arisen wherein consumers can upload their files for others to use or enhance. However, much like music sharing, some of the CAD file sharing sites not only offer original user created CAD files, but offer other third party files that may be protected by copyright or that offer the blueprint for a design that is protected by copyright. Indeed, the CAD file itself may be proprietary software, and/or result in the creation of an object whose design is protected.

 

Akin to the era of rampant copyright infringement of music, most notably resulting from the music file sharing service “Napster” and similar concerns, the swift and vast availability of this technology is ushering in a similar era of CAD file sharing sites and correspondingly creating similar conflicts with intellectual property rights, most notably, copyrights. One such CAD file sharing site is Thingiverse.com. And it, not surprisingly, is already fielding numerous ‘take-down’ notices pursuant to the Digital Millennium Copyright Act (DMCA) asserting unauthorized exploitation of owners’ copyrights in the CAD files. Similarly, cease and desist letters, such as one issued by HBO demanding the cessation of attempted sales of an Iron Throne iPhone dock, which was based on still images of the throne in Game of Thrones, have already begun. As use of the home 3D printers increases by private consumers, as with the initial problems in the music file sharing era, enforcement of copyrights will prove difficult. Although use of the DMCA will assist in the removal of CAD files or objects created by 3D printing from a website via the issuance of a “takedown notice”, this only addresses the specific website and only addresses the identified copyright-protected material on that site. Further, as the DMCA offers insulation for many of these websites, the removal of the offending file or object is all that will be accomplished. Monetary damages will have to be sought from the party uploading the file or object. Thus, copyright owners may again be faced with having to sue individual consumers.

 

As website providers have no obligation to review their sites for potential infringement, the onus is on the copyright owner to enforce their copyright. Thus, the question remains. How can a copyright owner effectively enforce their copyrights? Perhaps sites akin to iTunes, which instead of music offer CAD files that one can purchase for a small fee, will be one solution to this potential problem for copyright owners. At the present, a solution is not readily apparent.

 

Regardless of the solution to resolve the tension between the desire to use the newly released technology and the protection of copyrights, one thing is clear, as 3D printers become more commonly used over the next few years, owners of valid copyrighted material will need to be vigilant in identifying illegal use of their copyrighted property. Similarly, users of 3D printers will need to exercise great care to ensure they are not replicating copyrighted objects if they hope to avoid exposure to liability for infringement. This emerging technology offers individuals or startups the ability to create, at a relatively low cost, a product of great value. But this opportunity also allows a party to unwittingly incur liability if they produce something, intentionally or otherwise, which infringes the copyright belonging to another.

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Attorney Anna M. Vradenburgh counsels and represents clients facing trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.

Ms. Vradenburgh can be contacted as follows:

The Eclipse Group

6345 Balboa Blvd, Suite 325,

Encino, California 91316

(818) 488-8146

www.EclipseGrp.com

Patent Protection in the Era of Accelerating Medical Advances

The completion of the Human Genome Project at the beginning of this century, which mapped all the genes in the human body, offered scientists and researchers the opportunity to determine the characteristics of many genes and their relationships to certain diseases. The vast investment of resources necessary to conduct this research prompts those undertaking such painstaking scientific inquiry to secure patent protection for their discoveries.  The Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc., et al., 133 S.CT. 2107 (2013)issued last year further defines the subject matter that is eligible for patent protection and that which is not.

The pharmaceutical company, Myriad Genetics, Inc., through considerable effort, discovered the precise location and sequence of two human genes, BRCA1 and BRCA2, mutations of which can substantially increase the risks of breast and ovarian cancer.   Myriad filed, and received, various patents for its discovery.   The patents were directed, in part, to naturally occurring segments of deoxyribonucleic acid (DNA) obtained merely through the isolation of the DNA segments, wherein the segments contained genetic code identical to genetic code residing in the DNA segments prior to their isolation.

The patents were also directed to the isolation of synthetic DNA, known as complementary DNA (cDNA), which was created by removing certain nucleotides from a segment of DNA.  As the owner of these patents, Myriad could prevent others from conducting diagnostic tests to determine the risk of breast and ovarian cancer in an individual.  Myriad refused to license these patents, and thus, controlled this type of diagnostic testing, that is, until the Supreme Court decision.

Section 101 of the Patent Act provides that “whoever invents or discovers any new and useful….composition of matter, or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.”  35 U.S.C. §101.  With respect to Section 101 the Supreme Court noted that “[w]e have ‘long held  this provision contains an important implicit exception[:] Laws of nature, natural phenomena, and abstract ideas are not patentable.'”  Natural phenomena are the tools of
scientific investigation not the products of creative development which patents are intended to protect.

The issue presented was whether Myriad’s discoveries were ‘new and useful …composition of matter’ or simply a naturally occurring phenomena, and thus, simply an attempt to patent life.  The Supreme Court ruled that the discoveries of genes
identified by merely segmenting a tiny portion of the naturally occurring DNA strands does not constitute a patentable invention; however, the creation of complementary DNA is
entitled to patent protection because it is not a “product of nature”, but rather, constitutes a composite containing sequences of nucleotides that are not naturally
occurring, and thus, is subject matter which is eligible for patent protection.   It will be interesting to see how this ruling will be applied in other biotechnology inventions.

Patent Protection for Medical Advances

Attorney Anna M. Vradenburgh counsels and represents clients regarding trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website or her profile on LinkedIn.

This article is not intended to be, nor should it be considered to be, legal advice.

How to Resolve Domain Name Disputes Outside of Court

During the 1990’s, the Internet emerged as a common platform upon which individuals and businesses, for both commercial and other purposes, could interact and conduct business via websites.  As is commonly understood, websites are identified by a domain name, such as yahoo.com.  As the Internet grew, a need evolved for the administration of domain names and for a method to resolve disputes between parties claiming rights to use a particular domain name.    The Internet Corporation for Assigned Names and Numbers (ICANN) was formed to establish a governing policy by which domain names could be registered and further, established a dispute resolution process, the Uniform Domain Name Dispute Resolution Policy (“UDRP”), by which parties could adjudicate claims over domain names in a stream-lined administrative, non-judicial context.

In simple terms, a domain name identifies the Internet location of a particular website.  The ownership of a domain name is governed, in part, by contract rights.  The mere
registration of a domain name does not establish trademark rights, but the use of a domain name could, in some instances, be challenged by the owner of a trademark that is
similar or identical to the domain name.  During the early days of the Internet, the registration of domain names that were identical to, or substantially similar to, another

party’s trademark became a paramount problem.   Some of these ‘identical’ or ‘similar’ domain names were registered to confuse the public into visiting the domain name owner’s website, and in other instances, the domain names were held hostage to demands of a high purchase price.  The cost to recover these domain names was extremely high as the only recourse was the courts.  It is, in large part, these instances for which the dispute resolution procedure has been developed; specifically, to combat these abuses and provide a cost and time efficient manner for trademark owners to recover domain names that are similar or identical to their trademark.  If a trademark owner believes that the domain name owner (“Registrant”) has, in some manner, infringed upon their legal rights by using a particular domain name or set of names in violation of trademark law, that party (“Complainant”) can elect to present their claim through an administrative proceeding administered by an ICANN-accredited Provider. Providers do not decide these claims; rather, they oversee and manage the dispute process. Instead, the dispute is resolved by a panel consisting either of a single panelist or a group of three panelists.

To initiate the process, the Complainant must file a Complaint.  To prevail in the Complaint, the Complainant must prove the following:

1.    the manner in which the disputed domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2.    why the Registrant or Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the
subject of the complaint; and

3.    why the domain name(s) should be considered as having been registered and being used in bad faith.

The Complainant should include all supporting documentation and other evidence to the Complaint as there is no hearing, or other opportunity to submit evidence, other than the
opportunity to file a reply to Respondent’s answer, assuming the Respondent answers.  Further, the only remedies allowed are the transfer or the cancellation of the domain
name registration.  Typically, a Complainant requests the transfer of the domain name since the cancellation of the domain name only takes it from the Respondent, but leaves
it available for another third party to register.  Once filed in accordance with the rules, the Complaint is transmitted to the Respondent – the holder of the domain name registration.

Once the Respondent receives the Complaint, the Respondent must, within twenty days of receipt of the Complaint, prepare and file a response addressing the statements and
allegations contained in the complaint and further, include any and all bases supporting the contention that the Respondent (domain-name holder) is entitled to retain the
disputed domain name. As with the Complaint, the Response should include supporting evidence or documentation. While the Complainant has the right to submit a reply to the Respondent’s submission, if the Complainant does not do so, the case will be forwarded to the panel which renders a decision in a relatively expeditious manner.   The decision will be rendered based upon the allegations contained in the Complaint, the evidence in support thereof, the rebuttal arguments in the Response and any evidence submitted in support of the arguments in the Response, as well as any additional information submitted in a reply by either party.

It is to be noted that if no Response is filed, the panel will review the Complaint and accept the allegations set forth therein as true.  If the Complaint fails to adequately prove one of the three required legal grounds, the decision will be adverse to the Complainant.  Thus, it is important that the Complaint clearly prove each and every listed legal ground noted above, or the Complainant risks an adverse decision, even without a Response being filed.   If the decision is adverse to the Respondent, the Panel will either order the cancellation of the domain name registration or order it transferred to the Complainant, depending upon the Complainant’s election in the Complaint.  The entire process typically takes less than four or five months from the filing of the Complaint to the rendering of a decision.  If either party is unhappy with the decision, that party has 10 (ten) days to file a federal action contesting the decision.  Assuming a decision against the Respondent, if no federal action is filed, the domain name will transfer to the Complainant or be cancelled.

As can be seen, these tribunals offer an efficient, stream-lined process to resolve these types of disputes.  If the losing party files an action in federal court, well, that process is likely to be much longer.

Attorney Anna M. Vradenburgh counsels and represents clients regarding trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website or her profile on LinkedIn.

Domain Name Dispute Advice-052714
This article is not intended to be, nor should it be considered to be, legal advice.

Getty Images Going Gangbusters Against Who They Term As “Unauthorized Users”

Scrolling down a page on the internet, you find a photograph of a beautiful resort in Bora Bora, which incidentally happens to be your next vacation destination.  Since you are leaving in two weeks for the overdue trip, you post the photograph on your Facebook page with a caption that reads “Where I will be in 14 days.”

Innocent enough?  Below the image there are two words: “Getty Images”.  Who is “Getty Images” and what does it matter?   It matters.  Getty Images is one of the biggest stock photo agencies in the world.  They license users who can, for the time period of the agreement, use the licensed photograph(s) on their social, news or business websites upon the payment of an agreed-upon fee. What, though, if the image does not have any indication of ownership?  It must be free to use, right?  In all instances, the simple answer is no.

Use of an image found on the Internet is likely to expose you to a claim of copyright infringement.  Indeed, Getty Images aggressively polices the images they are authorized to license by sending out letters demanding that the unauthorized user of the image immediately stop using the image and remove it from their site.  Included in this demand to cease use of the image is a demand for what could amount to an exorbitant sum of money for damages that Getty Images claims that the recipient of the letter owes.
So does the soon-to-be vacationer have to worry about getting one of these stark cease and desist letters?  The pattern of enforcement by Getty Images appears to be directed to those who may profit financially from the use of the photograph on a news or business website.  Thus, if the person in this hypothetical operates a travel agency and utilizes the image on the agency’s website, then the answer would be “Yes”, provided the agency, or user, has no licensing agreement with Getty Images.  However, Getty Images specifically licenses use of images for social networking sites.  Thus, it appears that any unauthorized user is a target for one of these letters.

Would that travel agency, or unauthorized user, have to pay damages to Getty Images for the unauthorized use of the photograph?   Under copyright laws, the unauthorized use of a photograph is copyright infringement.  Thus, an unauthorized user could be liable for damages, especially if Getty Images can show how long the photograph was used and if that use generated a profit for the unauthorized user.  Many companies or individuals, who have intentionally or unintentionally, used images within the control of Getty Images without a license, have found that mere removal of the photograph is not enough to resolve the matter.  This also applies to actual licensees who continued to use a licensed photograph after their license agreement with Getty expired.

If you received such a letter, the best thing to do is immediately contact an Intellectual Property attorney who handles copyright infringement matters.  Attorney Anna M. Vradenburgh counsels and represents clients facing trademark, copyright, patent and other intellectual property issues.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website. She can provide expert advice to you about your case and represent you in a copyright action, or other intellectual property actions that you may be facing.