by Mike Oliver | May 1, 2014 | Firm Matters, Uncategorized
All of life is an adventure. Our current adventure – which is celebrating its first birthday today – started off ominously. After Mike and Kim gave notice at our former firm, we needed to find office space. On the first day our tenant rep scheduled property visits, we first looked in our own building and literally, just as we got to the offices we were going to look at, the entire building’s power went out! Thinking that was a little odd, we trudged on. A few days later, on our second office visit, we noted that shortly before we walked in, that buildings entire power had also went out! (and that building had multiple redundant generators that somehow also had failed). At this point we had to wonder if someone was sending us a sign. But we trudged on . . . . Time was not on our side and we knew that we could not get into new offices by the date of our departure, so we rented two temporary offices for 3 months at 100 West Road.
The week we started our firm was tough – Mike was leaving an 18 year career and Kim was leaving even more time there, as she was a paralegal when that firm first started. We worked the first 2 days of that week at the old firm, woke up the next morning (Wednesday May 1, 2013) and came in to temporary space at 100 West Road. Unfamiliar surroundings – no support staff. A complete reboot of our lives. At least Mike was able to get in a few days earlier and set up the computers and phones. On our first day we had received wonderful welcome plants from our former firm’s receptionist Jean and from Tina and Lisa – the staff we had worked with closely. A good friend, Leslie Ries, also sent us some wonderful tea from New York, and to our amazement, a retainer check from one of our clients was delivered our first day. Many clients congratulated us by phone calls and email.
Consistent with the first 2 power outages, wouldn’t you know that as Kim arrived at the temporary office on Day 1, her iPhone was dead – literally dead as in would not power on! A sign? Heck no, we trudged on . . . ran over to Verizon, and got Kim a new phone. We also went to Staples and bought our first office supplies, and grabbed a quick lunch out.
Needless to say, the first few days and weeks (and really at least the first 90 days) were a blur. In the middle of trying to keep up with client work, we had to learn a new accounting system, phone system, organize documents, set up accounts at the USPTO, buy computers and furniture, rent new offices, upload trademark files into our new trademark system, obtain insurance – and do so many other things that it seemed like we just worked and worked. Kim and Mike regularly talked on the phone on calls that would start at 10pm or 11pm and go much later.
Mike did not want to have a lot of maintenance on computers so we elected, with Kim’s consent, to adopt Apple as the main computer system. Apple computers have their plusses and minuses – but the main issue for us was overall cost to own, when you add in the maintenance and support issue. Everyone here but Mike had not really used MACs before – but everyone smiled and learned a whole new way of working with computers, and never complained once – despite I am sure a number of frustrations – and Mike not being the best trainer (think Jimmy Fallon in his SNL role as computer guy Nick Burns 😉
We had expected to be less busy with client work – not knowing who would come with us. However, it very quickly became apparent that we needed help at least on the trademark side. We reached out to our good friend Ellen Feldman at Special Counsel and she filled our need with a short term paralegal, Delrose. In the first month we only had two offices, so we “office shared” – on some days Mike would work from home and Delrose and Kim would work in the office, and on others, Kim would work from home. We knew we needed to design the firm to be able to operate from anywhere, so we used laptops, VOIP, and cloud based services for accounting and documents.
Somehow we managed to stay awake, bill a little time, and start slowly working on client matters. We also knew we wanted a complete IP, corporate/business and technology based firm – so we decided to ask Pamela, Larry and Tina to come over. All of them were friends in addition to being professional colleagues – and a critical part of our IP practice. We knew that what we were asking them was a huge risk – they had great jobs with an established firm. Nevertheless, you have to ask – or you may regret it for the rest of time. The worst that could happen was they would say no – and then at least we would know we made an effort. Somewhat to our surprise they agreed to join us, and by June 1st, we had grown from 2 lawyers to 4 lawyers and an office manager / paralegal (though the only smart one of us, Pamela, took some time off before starting full time).
We had signed a lease for what would become our permanent offices in mid-May, but we had not yet selected the carpet, paint, finishes etc. So, this was the first test of how we would work together on simple decisions (you know, its always the small things that cause the biggest problems). The landlord gave us the paint chips and samples – but the carpet did not thrill us so we scheduled a meeting at the flooring place. The day we went it was pouring rain. We got down there and as better omen than the rain, we rather quickly picked a carpet and hardwood laminate for the outer offices. The rain was a signal though, as you will see later in the story. We then did what we do a lot together as a firm – went to have sushi! Later we had to pick the paint color – we are not traditional in the least, so the consensus was (with Mike abdicating ;-)) we picked a yellow color – something to brighten up the offices. (After the offices were done, Mike did get to pick the gunmetal titanium grey refrigerator color – at least one item here had to be more masculine in color)
As the build out was being done Mike would periodically review the progress, because we have learned from past cases that you really have to bird dog that to make sure it is right. Our landlord’s staff were great though, really almost no issues at all. However, the first day Mike got over after they had done the paint . . . well that was quite a surprise – that yellow really grabs you, especially with nothing else on the walls!
As luck would have it (remember the rain omen…) the flooring people installed the wrong floor – and thanks to the actual floor style being on the order form, our first big break was we got the hardwood part of the floor for no cost – though there was some debate about whether to replace it with a closer color than we had picked. Turns out the color worked well.
With the leased space coming together we were getting busier. It seemed unfair to ask Tina to support all of us lawyers, so we decided to advertise for an administrator. At this point we had several applicants, including Lisa, the admin we had worked with at our prior firm. After several interviews we hired Lisa and she started in August. By this time we were in our current offices and things started to settle in. Though worried we would not have enough work for her, Lisa is always busy – and she is a critical part of our team now.
We decided to have an office warming party, which we scheduled for November 14, 2013 – we love a party and everyone enjoyed planning it (though Mike claims it was really Kim, Pamela, Tina and Lisa that did everything that made it a success). One rush – the walls were bare, so we engaged in a brief art buying spree – not being able to afford a real interior decorator. ETSY is your friend. But even with that – we were still missing art, so Mike asked his Philosopher and co-professor friend, Richard Wilson – an avid art collector, for help. Richard delivered – literally – he came over and loaned us some beautiful artwork from his vast collection. He was hanging much of it just a few hours before the party started! Many of our clients helped us – several of us visited our client Bloomery Plantation Distillery in West Virginia where we bought their wonderful aperitifs for the party – we also had food from our client Birroteca, and drinks from clients Sandy Bottom, Evolution Craft Brewing Company and IndiBlue. The party was a lot of work, but we had a lot of fun, and our clients and friends seemed to enjoy it.
We survived end of year, and made it through tax season with the help of our accountant and our clients, and funded our first retirement contributions.
We have so many people we are grateful to and need to thank for making it this far – our clients – for trusting us with their legal issues and paying our bills, our families – for putting up with some odd work schedules, and our friends that we leaned on for help, advice and assistance. If given the opportunity to help someone – even in some small way – we will, because we will not forget the help we received.
All of us are looking forward to our second year!
Best regards to everyone,
Mike, Kim, Pamela, Larry, Tina and Lisa.
by Mike Oliver | Feb 25, 2014 | Copyrights, Media law, Uncategorized
We all know that guy or lady – the one who does impressions, or makes up a character and has us laughing all nite. Well, it was no laughing matter to Hank Azaria when he was threatened with infringement of a character he created that went viral. Azaria v. Bierko, C.D. Ca CV 12-9732 GAF (2/21/2014).
Azaria is an actor and voice performer (among many other voices, he voices several characters on the Simpsons). Since about 1986 Azaria kept his guests in stitches at parties with a fictional baseball announcer voice. In 1990 he was introduced by a mutual actor friend (Matthew Perry) to Craig Bierko – another comedian, who also did a fictional baseball announcer voice and character. They interacted with their characters and often “riffed” on their characters. Azaria wanted to use the voicing of Bierko’s announcer but Bierko refused.
Fast forward to 2010 (about 10 years later) when Azaria publishes a video on Funny or Die (note: has mature content) with a Baseball announcer character “Jim Brockmire”, and it goes viral. Azaria is considering expanding the “character” into more short stories or videos, but Bierko threatens Azaria for violation of his Baseball announcer voice and character – and Azaria sues for a declaratory judgment of non infringement/non violation of rights.
Bierko’s “character” was not well defined – and it was only twice fixed in a tangible medium – both times only in audio and in both cases, only the voice provided character definition. Azaria’s character was only fixed in a tangible medium once – however, the video has other announcers who “define” the character traits by describing Jim Brockmire, and Azaria’s portrayal of the fictional Jim Brockmire in the short video gave the character additional identifiable traits (type of clothing, style of announcing, over the top movie references etc) – many more attributes than those of Bierko’s 1 dimensional voice character. Ultimately the court ruled in Azaria’s favor. The court also held Bierko’s character was not protectable.
There is no legal question that fictional characters can be copyrighted, and hence, achieve protection from infringement. However, the character must be rather well developed – either textually or via audio or video means.
This case demonstrates a number of issues we see regularly in our media practice – a confluence of ideas (which are generally not protectable absent a contract), and multiple people building one thought or idea on top of another until something actually creative and protectable is born. When that happens – what are the rights of the parties? Who owns the character that is born?
Likewise, we often encounter the reverse issue – a creative person sees a short video or skit, or reads some story (whether about a real or made up person) and then their ideas start to form and they develop a story or character from that interaction with existing content. If they write that story or make the video, will they infringe the person/content they referenced or built upon? Was it fair use? Was the content even protectable?
The court avoided the 1st Amendment issue – but there is a also a strong question here whether the video – which is a classic parody of baseball announcers in general, would be actionable. Recall the numerous funny skits of Will Ferrell as Harry Caray – all protectable as fair use paraodies.
We enjoyed the Azaria case because it describes a rather typical scenario . . . where the creative thought process takes a long time to develop and sources from interactions with third parties (sometimes at parties) who at least provided a germ of an idea. If the facts had been changed only slightly (say that Azaria had never done a baseball announcer until he met Bierko) would the result have been different?
Determining whether a creative character is infringed, or can be protected, and to what extent, can be complex. If the media presentation is a classic parody you can fall back on the 1st Amendment in many cases – but if the character is going to be used in a more mainstream manner, it is important to consider both possible infringement issues, as well as protection issues. In terms of protection issues, as the Azaria case demonstrates, it is important that the fixation of the character (e.g. in audio, audio-visual, or textual mediums) describe a multidimensional and complete character.
For media clearance and protection issues please feel free to contact Mike Oliver or Kim Grimsley at Oliver & Grimsley.
by Mike Oliver | Nov 26, 2013 | Intellectual Property, Patents, Uncategorized
Article by: Larry J. Guffey, Esq. and Pamela K. Riewerts, Esq.
A patent applicant who seeks the benefit of marking an article as “Patent Pending” must make a good faith effort to ensure that the articles are properly and consistently marked. An effective way to do this is to mark the article as “Patent Pending”. Use of this notice alerts the public that your article may soon be patent protected and that once a patent is issued, you have the right to initiate a patent infringement lawsuit against someone who is potentially infringing on that patent and wherein you seek monetary damages or other remedies for the copying, etc. of your patented article.
An applicant may only mark an article with “Patent Pending” once a patent application is filed with the Patent Office. It is also pertinent to note that it is a criminal offense to mark or offer to sell an article as “Patent Pending,” when an application for the invention has not yet been filed.
In deciding how and where to mark articles as “Patent Pending”, a patent applicant should be mindful of the purpose of giving public notice and also use common sense. For example, patent markings may be formed directly on the “Patent Pending” article by etching, molding, or printing, or if you are unable to place the marking on the article itself due to “the character of the article”, the notice may be provided on any packaging of the article, including the box and enclosed packaging papers, or marketing and promotional materials. In addition, there may be particular challenges that a patent applicant or patentee endures to properly mark an article. For example, often times, labels may fall off of the articles in transit, etc. The courts generally follow the “rule of reason” approach to hold that constructive notice is achieved when the patent applicant or patentee consistently marks substantially all of the articles.
Once a patent has been issued for the invention and you are a patentee rather than a patent applicant, the marking on the article should be changed from “Patent Pending” and instead be marked with the patent number and marked in the following manner: e.g., “U.S. Pat. No. X,XXX,XXX”, where your patent number is inserted therein. Examples of the proper use of this patent number marking can be found on the products and packaging of many reputable manufacturers.
More recently, the America Invents Act (AIA) allows patented articles to be marked “virtually” by using the internet. In order to comply with virtual marking requirements, the owner must mark the article itself, or the article packaging if it is not possible to mark the article, with the word “patent” or “pat.” along with a freely-accessible, internet address where one can find the patent numbers applicable to the patented article. Virtual marking provides certain advantages including aesthetic appeal as well as being able to easily update and identify later issued patents relating to the article without having to remark the articles individually. Instead, only a revision to the website page is needed. Examples of virtual marking via internet webpages may be found here: Examples of Virtual Marking
Please note that we recommend consulting with a patent attorney before moving forward with any marking or notice provisions.
Copyright 2013 Oliver & Grimsley, LLC
Disclaimer: The information provided in this article is not legal advice. It cannot be such since legal advice must be tailored to the specific circumstances of each case, including the consideration of federal law and jurisdictional law that can vary greatly from state to state. However, it is hoped that the information provided above will be helpful in familiarizing its readers with issues that may affect them.
by Mike Oliver | Oct 28, 2013 | Intellectual Property, Patents, Uncategorized
Earlier this year, the United States Patent Office (USPTO) implemented a “Micro Entity” applicant status pursuant to the 2011 America Invents Act (AIA). This rule allows qualifying applicants to receive a 75% fee reduction of certain fees—including fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and issued patents. See the USPTO Fee Schedule for a complete listing of fees.
An applicant may qualify for “Micro Entity Status” based on: (1) experience and gross income; or (2) status as an Institution of Higher Education.
(1) Micro Entity Qualification Based on Experience and Gross Income:
An applicant must certify to the following four criteria:
- Small Entity Status: The applicant qualifies as a small entity under 37 C.F.R 1.27 (generally, an entity that has less than 500 employees, see 13 CFR 121.802); and
- No More than Four Previous Applications: The applicant or any joint inventor has not filed more than four previously filed US non-provisional patent applications (exceptions: applications filed in another country; international applications for which the National Stage fee 35 U.S.C. 41(a) was not paid – PCT applications which did not go past the International Stage; applications from a prior employment or assigned to the prior employer); and
- Gross Income Limitation: The applicant or any listed inventor did not have a gross income for the previous year that was greater than $184,116. The “Maximum Qualifying Gross Income” will change annually based upon median US household income. Check the current USPTO Qualifying Gross Income eligibility fee; and
- Grant of Rights (if any) must be to another Micro Entity: The applicant or any listed inventor has not promised, assigned, granted, or conveyed a license or other ownership interest (and is not obligated to do so) to a non-micro entity.
(2) Micro Entity Qualification for Institution of Higher Education Status:
An applicant must certify to one of the following criteria:
- Employee of Institution: The applicant is an employee of an Institution of Higher Education from which the applicant obtains the majority of the applicant’s income—(Institution of Higher Education as defined in Section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)) (not the same as a “not for profit” or school); or
- Grant of Rights to Institution: The applicant has assigned, granted, or conveyed a license or other ownership interest (or is obligated to do so) directly to the Institution of Higher Education itself (not a research institute, foundation or technology transfer office). ** Under the current USPTO rules, an assignee can be listed as the named application, however, in order to qualify for reduced micro entity fees, an Institution of Higher Education (with current or promised ownership interest) should list the inventors as the named as applicants until discrepancies in the law are resolved.
Moving forward, applicants can secure (or lose) reduced fees at anytime throughout the life of a filed application or issued patent. Keep in mind that each time fees are paid the applicant must certify that it has “Micro Entity” status. Therefore, it’s best to conduct to review of these requirements prior to each fee filing.
For more information on this topic, please contact Pamela K. Riewerts, Esq. (U.S. Registered Patent Attorney) at pamela@olivergrimsley.com
