Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In an interesting case, the Eleventh Circuit Court of Appeals ruled that Georgia cannot claim copyright in “annotations” to its Official Code of Georgia laws because the annotations are simply an extension of state law, and government documents such as legal codes cannot be copyrighted. The annotations, however, are additions to the mere statements of the laws of Georgia, and may add case citations, analysis, and other comments about the laws. These annotations are prepared by a third party, and in order for the public to access the “annotations,” payment is required. Georgia, which is now being joined by several other states in seeking Supreme Court review of the Eleventh Circuit’s decision, is arguing that the annotations are helpful, and if not protected by copyright, the third party companies that prepare them may simply cease doing so, depriving the public of helpful, detailed additions to the legal codes to be used for more in-depth research purposes. On the other hand, critics say that it makes access to basic legal materials more difficult for those who cannot afford the fee to access them.

2. The Eastern District of California granted a temporary restraining order against a former employee under both the Defend Trade Secrets Act and the California Uniform Trade Secrets Act for the likely misappropriation of trade secrets and use of other confidential information. The ruling is here. In a fairly common scenario, the former employee went to work for a competitor. A forensic analysis of the former employee’s computer and email revealed that, just before he left, he was copying a significant amount of confidential and/or proprietary information to a personal storage device. In addition, the former employee had signed agreements related to protection and non-use of confidential information and trade secrets, which he was found to have likely breached. The takeaway from this unfortunately fairly common situation is that companies should have employees sign confidentiality agreements, agreements to protect trade secrets, and also conduct a forensic computer analysis upon the employee’s departure.

3. In the U.S., when filing a use-based trademark application, or a statement of use in the case of an intent-to-use trademark application, the “specimen” is critically important to whether or not the mark will, in fact, be registered. A “specimen” is an exemplar of a label, tag, packaging, web page, or the like, showing the applied-for mark in association with the goods or services associated with the mark. In re Siny Corp., the Federal Circuit Court of Appeals affirmed the rejection of a web page specimen that was more informational, or more of an advertisement, rather than a specimen in the content of a point of sale display. One of the key issues in the case was that the specimen did not include any pricing information or ability to purchase the item. It merely had contact information if more information about the product was sought. This is a reminder to practitioners and lay people who file their own trademark applications that there are very specific requirements for proper specimens. Furthermore, in today’s digital world, merely printing a web page with the mark and some information about the product may not be enough to satisfy the specimen requirements of the Trademark Office.

4. A recent decision of the Patent Trial and Appeal Board applied the new, less stringent patent eligibility guidance of the U.S. Patent and Trademark Office to reverse an Examiner’s refusal to allow computer-based business method-type patent claims because they were determined to be abstract ideas under 35 U.S.C. Section 101. This is an encouraging sign to those seeking to patent protect their computer-based, method-type inventions. The real issue, however, is whether the courts will similarity apply the new guidance and loosen up the Section 101 straitjacket regarding patent eligible subject matter. So far, the Federal Circuit (here) is sticking to the Supreme Court’s 2014 Alice decision, which is more restrictive on patent eligibility than the recent patent eligibility guidance from the USPTO. This makes for a confusing and unpredictable landscape in terms of what is patent eligible AND enforceable at the same time.