Sunday, January 31, 2016

Voting - If you are an expatriate, request your absentee ballot

     Voting has been called the cornerstone of democracy.  If you are eligible you should vote.

     If are overseas as an expatriate, you may think that obtaining an absentee ballot is a difficult process and not worth the effort. While this may be true on the state level, it is not true on the federal level.

     While you have to complete a Federal Post Card Application (FPCA) in January for each year you wish to vote, the process is available online. 

     First, head to the US Department of State website to read about absentee voting.

     Second, complete your FPCA online at the Federal Voting Assistance Program's website.

     Third, make sure you mail your completed ballot by the deadline.

- Henry Park

Thursday, January 21, 2016

USPTO and Java v8 update 71 build 15

    On my Macintosh, I received a notice that there is an updated version of Java v8 update 71 build 15 (released on January 19).

    I called the US Patent Electronic Business Center (EBC), and the representative I spoke to said that this version has NOT been tested with their systems, and that the representative suggested delaying the upgrade.

    Update:  On January 25, I called the EBC and the representative said that we can use the upgrade.  NOTE -- I had troubles accessing the USPTO website after the upgrade.  I was experiencing excruciatingly long load times for the Java applet.  However, once the applet ran successfully, subsequent loads have been fast.

- Henry Park

Wednesday, January 20, 2016

Fantasy Sports - Busted in Texas

    On January 19, 2016, the Attorney General of Texas issued an opinion that daily fantasy sports are illegal under Texas state laws (A copy of the opinion is hosted on

    Points of note:

1.  The determination of whether DFS is legal is not a federal question.  Rather, it depends on the laws of each state.

2.  The AG addressed the argument that DFS is skill based by pointing out that under Texas law a bet covers events that are partially determined by chance.  Opinion at 4.

3.  The AG also addressed the difference between the current fantasy sports operators, FanDuel and DraftKings, and traditional season long fantasy sports.  Unlike current fantasy sports operators, traditional season long fantasy sports leagues do not take a cut of the pot. Therefore, under Texas law participants in traditional season long fantasy sports leagues have a potential legal defense. Opinion at 7.

- Henry Park

Tuesday, January 19, 2016

Trademark - Google Adwords and Distinctiveness

      A colleague shared a Google AdWords trademark complaint story with me.  My colleague's client saw that a competitor was using their registered trademark in their Google advertisement.  My colleague followed Google's trademark complaint procedure, and received the following response:

"We're unable to process for your trademark ****** at this time because your trademark has been marked 2(f) by the U.S. Patent and Trademark Office. This designation means that there are potentially descriptive uses of this term or phrase, and therefore we cannot process or prevent all instances of this term." 

    This response is interesting because it pulls back the curtain, a little, on how Google processes Google AdWord trademark complaints.

    First, it reveals that Google is examining trademark registration certificates and looking for a "SEC. 2(F)." designation.  If Google finds such a designation, it probably will reject the complaint.

    Second, it reveals that Google's doesn't consider all registered trademark the same.  Rather, Google views registered marks granted with an acquired distinctiveness argument under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), as a "lesser" registered mark and, therefore, deserving of less protection.  This is an interesting position for two reasons.  First, the registrant successfully persuaded the trademark examiner that there was sufficient evidence that its mark had acquired distinctiveness with regard to its goods and services.  Second, under US trademark law, there is no distinction between a registered mark on the Principal Register with or without a Section 2(f) designation. 

    Given this knowledge, what should a trademark owner do when its registered trademark has a Section 2(f) designation?  In the Clarifications section of the trademark complaint form, you will want to argue affirmatively that your mark acquired distinctiveness as to the registered goods and services, and that the USPTO was persuaded by the evidence you had submitted.  Additionally, if your mark is incontestable, 15 U.S.C. § 1065, then you should state that you have the exclusive right to use the mark with the registered goods and services.

- Henry Park

Sunday, January 17, 2016

Trademark - Yosemite National Park name fiasco

    If you are heading to Yosemite National Park®, the names of certain historical locales will have changed.  For example, the The Ahwahnee® Hotel now will be known as the Majestic Yosemite Hotel, and Badger Pass® Ski Area will be Yosemite Ski & Snowboard Area.

    Why the name changes?

    Surprisingly, the National Park Service (NPS) doesn't own the trade or service marks associated with those locales.  Rather, DNC Parks & Resorts at Yosemite, Inc. ("DNC"), the outgoing concessionaire, owns them.

    And why would a concessionaire own such marks?

    In a breathtakingly inane decision, NPS decided that the concessionaires should maintain, create and own such assets.  When the outgoing concessionaire Yosemite Park & Curry Co. ("Curry") was replaced in 1993, DNC was forced to acquire all the tangible and intangible assets and liabilities of Curry.  Among the intangible assets acquired were the trade and service marks related to Yosemite National Park.

    When DNC lost the concessions contract for Yosemite National Park, DNC was required to sell its assets and liabilities related to Yosemite National Park to the next concessionaire, an Aramark subsidiary.  DNC requested $51 million dollars to turn over the trademarks and other intangible property.  The NPS rejected the demand as too high, and after failed negotiations, the NPS told the new concessionaire to rename the locales (DNC v. NPS Complaint, hosted on

     This whole debacle could have been avoided if the NPS evaluated properly the assets being transferred.  Given the historical significance of the trademarked names, it doesn't make sense that a concessionaire, who is providing hospitality services for only a limited period of time, should own them.  The NPS should have acquired those assets and then licensed them to the concessionaire.  Additionally, the NPS should require that if a concessionaire creates any new intangible assets, that they are assigned to the NPS to be licensed back to the concessionaire.

- Henry Park

Wednesday, January 6, 2016

Privacy - Delaware Online Privacy Protection Act

     On January 1, 2016, the Delaware Online Privacy Protection Act (DelOPPA), 6 Del. C. 1201C-06C, came into force.  The Delaware law was modeled after two California laws, the California Online Privacy Protection Act (CalOPPA), Cal. Bus. & Prof. Code §§ 22575-79, and a portion of the Privacy Rights for California Minors in the Digital World, Cal. Bus. & Prof. Code §§ 22580-82. The Delaware law also contains a section to protect e-book users privacy.

     This post only examines the section related to the privacy policy requirement.

     Privacy Policy.

     DelOPPA is similar to CalOPPA.  It requires operators of "commercial Internet services that collect personally identifiable information (PII) about users residing in Delaware who use or visit the operator's commercial Internet service" to "conspicuously" post a "privacy policy".  6 Del. C. 1205C(a).

     The privacy policy must (1) identify the types of PII collected and the types of third-party persons with whom the operator may share the PII; (2) if the operator has a process for a user to review and request changes to the user's PII, describe that process; (3) describe how the operator will notify users of changes to the privacy policy; (4) identify the effective date of the privacy policy; (5) disclose how the operator responds to "do not track" signals or similar mechanisms; and (6) disclose whether use of the operator's service may permit other parties to collect a user's PII across different services.  6 Del. C. 1205C(b).

     Building on CalOPPA, DelOPPA expands the list of identified types of information that qualifies as PII.  6 Del. C. 1202C(18).  And like CalOPPA, this is not an exclusive list of PII.

means any information about an individual that, individually or in combination with other information, can be used to distinguish or trace the identity of the individual, including the individual’s name (in whole or in part), signature, physical characteristics or description, residential, school, or other physical address, telephone number, online contact information, social security number, passport number, driver’s license number, state identification card number, alien registration number, insurance policy number, education history, employment history, bank account number, credit card number, debit card number, or any other financial information, geolocation data, DNA or other genetic material, medical information, or health insurance information, except that it does not include information that is publicly available that is lawfully made available to the general public from federal, state, or local government records.
     The law additionally describes several methods to meet the conspicuous posting requirement.  6 Del. C. 1202C(7).  The methods could be summed up as: (1) having an icon, on the homepage or first significant page after entering the website, containing the word "privacy" that is distinguishable from the webpage's background that hyperlinks to a webpage on which the privacy policy is posted, (2) having a text link, on the homepage or first significant page after entering the website, containing the word "privacy" that is distinguishable from the webpage's background that hyperlinks to a webpage on which the privacy policy is posted, or (3) using any other functional hyperlink that is displayed that a reasonable person would notice it.

     Going forward, all Internet based services would be wise to ensure compliance with both CalOPPA and DelOPPA because these laws apply to any service, regardless of where they are based, that collects PII from a California or Delaware based user.  In particular, all such service should pay attention to the types of PII identified by DelOPPA.

- Henry Park

Tuesday, January 5, 2016

Internet - No free lunch

     As the Internet becomes more deeply embedded into our lives, it is important to reach the old adage "there is no such thing as a free lunch".  Although many websites are provided for free (i.e., they don't charge you money for access to their content), it doesn't mean that they are not collecting something of value from their users.  Generally, they are collecting data about their user's and selling that data to advertisers on their sites.

     As people become more concerned about their privacy, it is essential to recall that this grand bargain underlies much of the free Internet.  Without this grand bargain, the Internet probably would not have evolved as it has.

- Henry Park

Litigation - Pleading patent infringement

     On December 1, 2015, revised Federal Rules of Civil Procedure took effect.  A key element of the changes were the elimination of Form 18, which had met the minimal notice pleading requirement in place before Ashcroft v. Iqbal., 556 U.S. 662 (2009) and Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007).

     The question is now, what level of particularity is required to meet the stricter pleading standards?

     Let's review the December 18, 2015 patent infringement complaint in Microsoft Corp. v. Corel Corp. & Corel Inc., N.D. Cal, 5:2015cv05836 (I am hosting a copy of the Complaint on to examine how the Plaintiff pled patent infringement.

1.    Identified the asserted patent numbers.
2.    Identified one claim from each asserted patent that they claim has been infringed.
3.    Described what the identified claim covers.
4.    Identified the specific products accused of infringing each patent.
5.    Demonstrate how the accused products alleged infringe each identified claim by using screenshots.

     Is this sufficient to meet the heightened standards?  We shall see.

     However, if additional particularity is required, then perhaps the Plaintiff will have:

a.   to identify all potentially infringed claims, instead of identifying one claim and stating that the Defendants infringe "at least" that one claim?

b.   to construe the allegedly infringed claim, instead of relying on a description of what the identified claim covers.

- Henry Park

Sunday, January 3, 2016

Trademark - Updated Nice Classification (10-2016)

    For all trademark practitioners, the USPTO is now using the Nice Classification, Tenth Edition, as updated for 2016 (NCL 10-2016) (see USPTO webpage).  Some of the highlighted changes can be examined at the following link, provided by the USPTO.

- Henry Park

Copyright - Google's Android to be based on open source Java APIs

    Google recently confirmed that the next version of its Android operating system, Android N, will no longer use any of Oracle's proprietary Java application programming interfaces (APIs).  Instead, Android will now be based on OpenJDK - an open source version of Oracle's Java Development Kit (see VentureBeat).

    Why the switch?

     In VentureBeat, Google explains that the switch as being part of the open-source nature of Android.

    The real reason for the switch probably originates from the Oracle v. Google copyright lawsuit that found Oracle had a copyright over Java APIs.  That decision meant the Google created versions of Java libraries underpinning its Android operating system infringed the Oracle Java APIs.  Even though Google could continue with the legal proceedings, by switching to the OpenJDK libraries Google can cap its legal liability to older versions of Android.  For context, in 2014, more than 1 billion Android-based devices -- smartphones, tablets, and PCs -- shipped (see Gartner, Table 2), and that number is projected to reach almost 1.5 billion Android devices in 2015 (see Gartner, Table 2).

    As an aside, the restructuring of Google, Inc. under the parent company Alphabet also makes sense (see Aug 10, 2015 Google press release).  By splitting the old Google into a number of smaller companies under Alphabet, they are limiting any potential negative exposure to the individual subsidiaries.

- Henry Park