USPTO and Java v8 update 45

    According to the US Patent Electronic Business Center representative (agent 36), the US Patent & Trademark Office's PAIR and EFS-Web services are compatible with the latest available release of Java version 8 update 45.

- Henry Park

Pringles - What are they?

            I like Pringles as much as the next person, especially since they have been releasing new flavors.  However, here is some food for thought.

            In 2007-09, Proctor & Gamble (P&G), the manufacturer of Pringles, was in tax dispute with the U.K. government.  P&G contested the claim that Pringles were "made from the potato" and thus subject to a 17.5% VAT.  See VAT Act 1994, Schedule 8, Group 1, Excepted Item 5. 

Any of the following when packaged for human consumption without further preparation, namely, potato crisps, potato sticks, potato puffs, and similar products made from the potato, or from potato flour, or from potato starch, and savoury food products obtained by the swelling of cereals or cereal products; and salted or roasted nuts other than nuts in shell.

If P&G won the challenge, then Pringles would be treated like other food items and not subject to VAT. See VAT Act 1994, Schedule 8, Group 1, General Item 1.  Thus, P&G and its customers would save millions in taxes.

            On May 23, 2007, the VAT & Duties Tribunal determined that Pringles were "made from the potato" and thus subject to a 17.5% VAT rate.  See Proctor & Gamble (UK) v. The Commissioners For Her Majesty's Revenue & Customs, [2008] EWHC 1558 (Ch) at ¶ 1.

            P&G appealed to the High Court.  The High Court disagreed with the Tribunal and found that for a potato product to be "made from the potato" it must be "wholly, or substantially wholly, made from the potato".  See Proctor & Gamble (UK) v. The Commissioners For Her Majesty's Revenue & Customs, [2008] EWHC 1558 (Ch) at ¶¶ 58, 79.  Given this interpretation, the High Court found that "Regular Pringles are not made from the potato, potato flour or potato starch so as to fall within excepted item 5".  See id. at ¶ 86.

            Interestingly, P&G stated in support of a different argument that "[t]he percentage of potato varies [in a Pringle]: at the time of the hearing it was about 39.48%, today it is around 42.2% though it may drop again in 2008 to 35% to 38%." See id. at ¶ 106.  Additionally, , P&G stated that the fat content of a Pringle is approximately 33%.  See id. at Annex, ¶ 2.

            In May 2009, the Court of Appeals reversed the lower court.  See The Commissioners For Her Majesty's Revenue & Customs v. Proctor & Gamble (UK), [2009] EWCA Civ 407.  The Court of Appeals relied upon a finding of the Tribunal:

[17]            Here the potato flour content is over 40 per cent; it is the largest single ingredient by about 9 percentage points; and it is nearly three times larger than the other flours in the ingredients taken together. We have to give a yes or no answer to the question "are Regular Pringles [partly] made from the potato, from potato flour or from potato starch" and we are bound to say yes. There are other ingredients but it is made from potato flour in the sense that one cannot say that it is not made from potato flour, and the proportion of potato flour is significant being over 40 per cent. The fact that it is also made from other things does not affect this.

See id. at ¶ 33.  Given this finding, the Court of Appeals stated that "[t]here is more than enough potato content for it to be a reasonable view that [a Pringle] is made from potato." See id.  Thus, ending the question of whether Pringles are a food that is not subject to VAT or an excepted potato item subject to VAT.

- Henry Park

Garcia v. Google – Copyright overreach limited

            On May 18, 2015, the Court of Appeals for the Ninth Circuit sitting en banc reversed a ruling by an earlier Ninth Circuit panel concerning an actress's alleged  independent copyright claim to her performance in a copyrighted film (To prevent link rot, I am hosting both of these documents on Mega.co.nz).

            The plaintiff, Cindy Lee Garcia, is an actress who "was bamboozled when a movie producer transformed her five-second acting performance into part of a blasphemous video proclamation against the Prophet Mohammed".  See en banc ruling at 7.  After receiving death threats, Garcia filed numerous takedown notices with Google under the Digital Millennium Copyright Act.  See Panel Order at 5.  Google refused to takedown the film.  See id. at 6.  Garcia then sued Google to remove the movie by claiming, in part, that she had "a copyright interest in her fleeting performance".  See en banc at 8.  The district court denied the injunction and found that Garcia did not establish that she was likely to succeed on the merits of her copyright claim. See id. at 8.

            A divided Ninth Circuit panel reversed the district court stating that Garcia's copyright claim was "fairly debatably" and ordered the removal of the motion picture with her performance.  See Panel Order at 10.  In doing so, the panel found that Garcia could make a copyrightable contribution to a production and yet not be a joint author of the whole work.  See id. at 8.  The panel expressly avoided the issue of whether Garcia had to personally fix her work in a tangible medium.  See id. at 7, fn 4.  Because of the panel decision, the Ninth Circuit granted an en banc hearing to reconsider that decision.

             First, the en banc Court found that Garcia was not an author of the motion picture.  See en banc ruling at 16.  An author is the person or persons who fixes the original work in a tangible medium of expression.  17 U.S.C. § 101. Garcia was neither an author of the script nor the motion picture, which is a derivative work of the script.

            Second, the Court found that a motion picture is a single unitary work.  See en banc ruling at 17-18.  The Court relied upon the Copyright Office's expert opinion that an individual actor or actress cannot register their performance separate from the motion picture.  See id.  The court held, that to find otherwise would shatter copyright protection for a motion picture, or any large production, into many little pieces making the logistics of protecting such a production a nearly impossible. See id. at 20.

             Third, Garcia never "fixed" her acting performance in a tangible medium.  See id. at 22.  Copyright law requires that a work be fixed "by or under the authority of the author".  17 U.S.C. § 101.  However, in this case, any fixation occurred by the movie producer or the producer's crew.

             Thus, the en banc Court held that Garcia did not have an independent copyright claim to her performance in the motion picture.  

             This en banc ruling restores the balance between actors and producers.  It clearly states that copyright ownership in a motion picture, or any large production, will reside with the producers and that individual actors will not be able to interject copyright claims to muddy the ownership of the motion picture.

- Henry Park

updated on 5/26, 10/17 (to identify location documents are being hosted)

Trademark King – Update 2

     Since the last blog post, Mr. Lehocky has responded to a number of first Office Actions.  Mr. Lehocky's responses demonstrate that he does not understand trademark law, or does not believe that he needs to follow it.

     In his HYUNDAIUSA.COM application (application serial no. 86465557), he described the "evidence" he submitted in response to the first Office Action as:

The evidence consists of a trademark company requesting an automobile domain name HYUNDIUSA.COM [sic] that is not trademarked. The domain name involves advertising, promoting, buying, selling, and leasing automobiles to anyone in the United States for a legal business activity. A professional company should be 1a because it is available for sale right now. Any legal advertising cannot be done until approval is done.

And, he revised his description of services as follows:

Brand development and evaluation services in the field of trademarks, trade names, and domain names.; Creating trademarks for others; Creating trademarks for others. Selling or leasing the automobile domain name HYUNDIUSA.COM [sic] to anyone in the United States for a legal business activity.

And yes, he spelled his mark incorrectly.

     In the second Office Action, the trademark examiner, Nelson B. Snyder III, provides a short course in prosecuting a trademark to Mr. Lehocky.

     First, the examiner discusses the differences between a use based application (section 1(a)) versus intent to use application (section 1(b)).  As a hint, the difference is whether the mark already has been "use[d] in commerce".  Later, the examiner points out that the application probably should be an intent-to-use application because there has been no use of the trademark.

     Second, the examiner discusses the differences between a trademark, service mark and a domain name.  A trademark and service mark identify the source of goods or services while a domain name is part of an internet protocol address and registering a domain name does not give you any trademark rights.

     Third, the examiner highlights an ownership issue. To be entitled to file a trademark application, the registrant either must have used the mark (section 1(a)), or be entitled to use the mark (section 1(b)).  In this case, Mr. Lehocky's statements show that he has not used the mark and that he may not be entitled to use the mark.

     Fourth, the examiner points out that an application's description of goods or services may be clarified or narrowed, but cannot be broadened.  In this case, Mr. Lehocky's amendment – selling or leasing the mark – would broaden the description of services beyond brand development services (i.e., International Class 35).

     Fifth, the examiner points out that specimens submitted must show the "applied-for mark in use in commerce with the services for each international class".  The submitted specimen was "merely a photocopy of the drawing or a picture or rendering of the applied-for mark".

     Sixth, the examiner suggests that Mr. Lehocky retain trademark counsel and provides some suggestions on how to locate such a counsel.

     As I originally mentioned, the legal bases for these trademark application was sorely lacking.  As aptly demonstrated by the trademark examiner, Mr. Lehocky has no chance of saving his applications, even if he retains trademark counsel.



- Henry Park


updated on February 6, 2016

Becoming an attorney around the world – Part II

            And here is some information comparing the U.S. and U.K.

        

U.S.	U.K.
High School (18 years old)	High School (18 years old)
University for Bachelor's degree in any subject (4 years)	University for undergraduate law course - LLB (3-4 years)
Law School for a JD (3 years)	Postgraduate study – Legal Practice Course (1 year)	Postgraduate study – Bar Professional Training Course (1 year)
	Apprenticeship – training contract (2 years)	Apprenticeship (1 – 1.5 years)
Bar Exam
Attorney	Solicitor path	Barrister path

- Henry Park

Becoming an attorney around the world

            Lately, I have met many international attorneys.  Each of them had a great tale to tell about why they chose to become an attorney.

             One of the more takeaways from our discussions is that our educational paths to becoming attorneys are often quite different.  The following table compares the U.S. with Italy and Switzerland.

U.S.	Italy	Switzerland
High School (18 years old)	High school (19 years old)	Gymnasium / High School  (18 years old)
University for Bachelor's degree in any subject (4 years)	University for Bachelor's degree in law (4 years)	University for a combined BA / MA in law (total of 4.5 years)
Law School for a JD (3 years)	Practical experience (2 years)	Practical experience (1 year, of which a minimum of 3 months is court experience)
		Jurist is an unlicensed graduate
Bar Exam	Bar Exam	Bar Exam
Attorney	Attorney	Rechtsanwalt is a person who has passed the bar exam
	** In Italy, if you wish to be a Judge or work for the public, then you must take an additional examination

- Henry Park

Patent - US Prosecution Timeline

            A common question that our potential clients and clients ask us is how long will it take to prosecute a U.S. patent application.  The answer to this question depends on a number of factors, such as the technology to be patented, and the art unit to which the application is assigned.  According to the USPTO's Performance and Accountability Report for Fiscal Year 2014, the average pending time to the first Office Action is 18.4 months and the average total pending time is 27.4 months.

            Additionally, our clients often ask us when an event will occur during the prosecution of their U.S. patent application.  The following chart is a rough guide hitting on some of the major events in a patent prosecution, and starts from either the filing of a provisional patent application or a non-provisional patent application.

Event	Relative Date based filing of provisional patent application	Relative Date based on filing of non-provisional patent application
File US provisional patent application .	start
File US non-provisional utility patent application, or File PCT application .	1 year after prov. app. is filed	start
US non-provisional utility patent application, and PCT application are published .	18 months after prov. app. is filed	18 months after non-prov. app. is filed
First US Office Action .	30.4 months after prov. app. is filed	18.4 months after non-prov. app. is filed
File PCT national applications in foreign countries	30 or 31 months  after prov. app. is filed – depending on the country	30 or 31 months  after non-prov. app. is filed – depending on the country

- Henry Park

updated first and second paragraphs on 4/25/15