Steve Nipper, Partner with Dykas, Shaver and Nipper LLP, specialists in IP protection, joined us recently to talk about intellectual property and its changing world with digital media, social media, bloggers and small business.
Steve Nipper's practice covers a broad spectrum of intellectual property work, of patent and trademark work, including counseling clients on means of protection, preparation and filing of applications, prosecution, licensing and enforcement.. His background includes the mechanical arts, agriculture and the biological and chemical sciences. He is the author of The Invent Blog®, technology blog covering news, technology tips, and other information relevant to attorneys (particularly patent and trademark attorneys), independent inventors and small businesses.
You can listen in streaming on-demand at this link.
Can we start with a comparison of the IP culture in agriculture, biological and chemical sciences and mechanical arts and the IP culture with digital media. I have the impression digital and social media may be a more free wheeling cowboy culture.One of the big differences is the age. A lot of the people that are in social media, that technology, tend to have more of a open source creative commons mentality and that has a pretty big impact how those arts are treated vs other arts. They tend to be more opposed to patent rights or trademark. There is constant head butting with reform and change with the new guys and technology and the older generation.
Social media allows anyone and everyone to be designers and publishers on the fly in real time. What is the perspective from an attorney of this new horde of designers and publishers? Is it chaos, disruption of the world or opportunity for business?
The whole free aspect of things works really well in most industries. Anti-virus software used to be all free, but things change and evolve. Things need to be monetized and not just throw an ad in the mix. They have to find some way to make money on social media.People are used to things being free.You write about independent inventors and entrepreneurs in your blog – you saw early on the power of blogging. When did you begin blogging as a business partner with your law firm? And why?
My blog has an interesting history. Five to six years ago, there wasn’t a great list of links or websites for IP attorneys and I created my bookmarks and saved it as an html file. I put it on the server for everyone in the office to use and then added news items. I soon realized this was really a blog. I then created a blogging account. There weren’t many others at this time and I aggregated any information on patents and related info on the blog.It sounds like you started your first blog as possibly a promotional resource for the public to promote your knowledge and connection in the IP field. Is that right?
That was the original intent.I was posting information hoping it would help others and eventually result in business. Blogging encourages you to read more, become more educated and also to grow your network and that network assists in potential business. It is a great tool to build your credibility, to get out there. It has changed over time from when I was the first or only blogging attorney and now there are 100 to 150 trademark and patent blogs out there.
Your audience or intent has changed as it relates to your blog from being a prospecting tool to one of networking with other attorneys and providing a resource.
That is true. Just because there are so many others out there, it really isn’t such a good tool for prospecting anymore.Some people have written that blogging is dead and you shared a story about fewer attorney blogs are being started. Your blog’s not dead. What are these people missing?
I think there are just so many of them or people are sold on them because so many people are pushing the blog. Just because you start a blog does not mean customers will be knocking down your door. Any form of social media is a long term investment. It is not a magic mill for new business. You have to use it as a tool to build confidence, credibility and networking.If a small business owner came to you and wanted to start a blog, what tips would you share with him/her?
I think it is useful but it depends on why they want to do it: self promotion and a sales tool – I would discourage them for doing that. It does make sense to generate content in terms of SEO rankings though. But to some extent, if you want people to engage with you, you must engage from the heart, talk about what you are passionate about. Use it as a tool to connect with people, not sell.22:42
Where is the most common IP pitfalls for newbie social media czars?
It is harder for a SM czar to violate some of these patents. Copyright can be a little tougher to infringe. You need to understand how copyright works and what you can and cannot post. The EFF, the Electronic Frontier Foundation, has a great guide for bloggers.
What are some of the worst repercussions or costs for a SM Czar to fall into one of these holes of copyright infringement?
Trademark is the easiest one to infringe. People were registering user names that weren’t really available for use but they were not Trademarked. From the Trademark owner standpoint, they would like it. You would really like to be in possession of that user name.
When facebook came out you couldn't pick your user URL. Twitter wasn’t really thinking about Trademarked names when people register their accounts. Even in their Terms, they're software guys, they hadn't worked through the ramifications...
In the case of domain vs trademark, are there any rough guidelines for determining which trumps the other?
I would have to look at the rules, but the Trademark owner would have to show intent for use to approach the domain owner if the domain owner registered it first.
Where does the creative commons license fit in this picture?
In CC, you have a sharing mentality and people reusing the material. Most of us love open source and the ability to do those things. The problem arises when you have something unique and distinctive, and someone shares or posts your content. Your opinion changes. Weren't you mister open-source yesterday? It's an interesting transition to see. Some people will add to their blog: “This blog is protected by my publication policy.”You spoke at a recent event hosted by AIGA and the title of your talk was Ten Things Every Designer Needs to Know about Copyrights and Trademarks. What are those ten things?
By the time I ended up preparing I had 10 things for trademarks and 10 things for copyrights and I thought I'd be the guy in the old Fed-Ex commercial. Some of the important things to remember are:
1.Incorporation with your state is not a Trademark use. It doesn't give you any incorporation protection. Talk to an attorney about what you need to do. If you have Trademark rights, you want to do the best to protect those rights on a Federal or State level. Sometimes the state registration is all you're going to need. If you're a restaurant in Iowa, you don't care about a restaurant in Maine with the same name.
2. The use of the TM symbol vs the Circle R symbol. If you have a Trademark, use the TM. TM means you consider it to be your trademark. Let your competitors know this is your trademark. The Circle R means you have filed a federal registration and received a preliminary registration
3. The Trademark office presumes the first person to file an application is the first or senior user. If you have been using it for 20 yrs and someone files a TM application yesterday, the junior users application will be processed first. Can sometimes trump, or fence in, the original user.
4. Copyright is one of those things that changed in the 70’s, when a work is fixed in a tangible medium, copyright applies to it. If someone infringed that at that point, the copyright owner is entitled to their loss or the other person’s gain. If you file a Copyright before that first infringement takes place, then you have the ability to incur statutory penalties (attorney's fees, minimum amount of infringement per infringement, penalties). The game changes with respect to going after that person for infringement. You want to set up a policy on your works that are most important to you. Protect what is most valuable. So if someone does infringe it makes sense to go after them.42:42
Which one is most frequently ignored?
That's kind of hard to say. The main thing was to help the designers spot the issue before it comes up.
People need to understand the basics of intellectual property and how to protect themselves, the better off they'll be.
What are three things a company can do to best protect their IP?
1.Learning. Issue-spotting. Understand what rights you have. Pick up the right book. Know the difference between CT, TM and patents.2. Know your rights and defend them. If you have Trademarks, get out there and protect them. You have to.
3. Copyrights: recognize where you have works that need to be protected. if you have core works, get those applications filed. And then you can get them, infringers, on the hook for statutory damages.
What do you see is the biggest change likely to take place in IP protection over the next year?
There is a case pending in the Supreme Court called the Bilsky case. Ray Bilsky- Bilsky was an interesting case that had to deal with software patents in general. But the reality was Bilsky dealt with a narrow subset of software patents. It will be interesting in what the Supreme Court does with the types of protection out there on terms of Federal and State levels.
It had to do with physical change and process.
Physical change is the first one.
The change has to be tied to a particular machine is the next one. And Bilsky's process was one you could do in your head.
It will be interesting to see how the Supreme Court defines what is a patentable process business method. The magical words were missing. Overnight a lot of businesses and the IT realm re-examining their processes and policies to learn if they needed to re-file...and boom here we are a year later and the Supreme Court is stirring the pot again.
What about Cloud Computing and a patent application is effected by the use of a particular machine and all these applications hosted on shared servers?
Apparatus, claims, and process.
Apparatus is like the arm, shoulder on our body. Apparatus is so easy. When you move towards claiming a method, it all changes.
When you move towards claiming a method you move into the realm of 'ings. You're selecting a group of users and ing words that define that claim.
You don't have that hard hardware that ties a claim to a particular machine.
Part of that is how you look at the claims and how they are worded. When you have patents, you have apparatus claims and method claims.Bilsky is in that process. There isn’t necessarily the hard hardware that ties you into a machine. Today people are looking at ways to add something more tangible. In cloud computing context, you are storing that on a could, but you're storing it on a server which is the physical structure, this may act as the machine.
You work in a fascinating field; I would be willing to offer that your day is one of intellectual surprises on an hourly basis. Is that accurate?
If you were on Gilligan’s Island, the person you would want on there with you is the patent attorney that has been in practice for 50 years. He has dabbled in about every technology that's out there. It's great. We get to work with absolutely brilliant people who have worked in so many applications. We get a great feel for technology...We get to work with the brilliant and scary smart people and people that are scary as well. It is exciting. With IP law, you can work with people across the board. We are not limited geographically either. We are different. When we have a license to practice, we can practice anywhere in the US or internationally. You have no idea what the day is going to bring.
You can follow Steve Nipper online at these resources:
- Blog:http://www.inventblog.com
- Twitter: http://twitter.com/nipper
- LinkedIn: http://www.linkedin.com/in/
nipper - FaceBook: http://facebook.com/nipper/
- Work contact info:http://www.iMetNipper.com
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