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University of Maine School of Law
 Chilling Effects Clearinghouse > Patent > Notices > Cue Cat(astrophe) (NoticeID 9, http://chillingeffects.org/N/9) Printer-friendly version

Cue Cat(astrophe)

August 30, 2000

 

Sender Information:
Digital Convergence
Sent by: [Private]
Kenyon & Kenyon
New York, NY, 10004

Recipient Information:
[Private]
Flyingbuttmonkeys.com
Holly Springs, NC, 27540


Sent via: VIA FEDERAL EXPRE
Re: To Whom It May Concern:

Our firm is intellectual property counsel to Digital Convergence, a Delaware corporation with a place of business at 9101 N. Central Expressway, 6th Floor, Dallas, TX 75231.

It has recently come to Digital Convergence's attention that services/information being offered at such sites as www.flyingbuttmonkeys.com/cuecat and www.flyingbuttmonkeys.com/~rothwell are in conflict with intellectual property rights owned by Digital Convergence. Digital Convergence has expended vast resources to be able to bring the :Cat and :Cue:Cat services to the public. In order for Digital Convergence to continue these services and develop others, Digital Convergence must hold violators of its intellectual property rights fully liable for any harm it suffers. This includes both direct or indirect harm which results from any present and continued improper dissemination of its services/information. It further includes not only the direct infringement made by Flyingbuttmonkeys.com, but also any infringement which Flyingbuttmonkeys.com induces others to perform. The longer that flyingbuttmonkeys.com continues its improper activities, the longer damages will accrue.

If you have any questions or believe you have received this letter in error, please let us know. In the mean time, the above is not a full statement of Digital Convergence's rights and remedies, all of which are reserved, and both we and Digital Convergence intend to continue monitoring the activities of Flyingbuttmonkeys.com and will contact you again, if necessary.

Very truly yours,

KENYON & KENYON

[Attorney]

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FAQ: Questions and Answers

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Question: What is intellectual property?

Answer: Intellectual property consists of property created through human creativity. It includes, for example, literature, the visual arts, music, drama, compilations of useful information, computer programs, biotechnology, electronics, mechanics, chemistry, product design, and trade identity symbols. Intellectual property law is designed to promote human creativity without excessively restricting dissemination of the fruits of such creativity. Intellectual property rights are embodied in patents, trade secrets, copyrights, and trademarks.


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Question: What can be protected as a trademark?

Answer: You can protect

  • names (such as company names, product names)
  • domain names if they label a product or service
  • images
  • symbols
  • logos
  • slogans or phrases
  • colors
  • product design
  • product packaging (known as trade dress)


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Question: What are the limits of trademark rights?

Answer: There are many limits, including:

  • Fair Use
    There are two situations where the doctrine of fair use prevents infringement:
    1. The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.
    2. Nominative fair use
      This is when a potential infringer (or defendant) uses the registered trademark to identify the trademark holder's product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
      • the product or service cannot be readily identified without the mark
      • he/she only uses as much of the mark as is necessary to identify the goods or services
      • he/she does nothing with the mark to suggest that the trademark holder has given his approval to the defendant
  • Parody Use
    Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.
  • Non-commercial Use
    If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.
  • Product Comparison and News Reporting
    Even in a commercial use, you can refer to someone else?s goods by their trademarked name when comparing them to other products. News reporting is also exempt.
  • Geographic Limitations
    A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy's Bakery in Boston, there is not likely to be any infringement if Jane Roe uses Timothy's Bakery to describe a bakery in Los Angeles. They don't sell to the same customers, so those customers aren't confused.
  • Non-competing or Non-confusing Use
    Trademark rights only protect the particular type of goods and services that the mark owner is selling under the trademark. Some rights to expansion into related product lines have been recognized, but generally, if you are selling goods or services that do not remotely compete with those of the mark owner, this is generally strong evidence that consumers would not be confused and that no infringement exists. This defense may not exist if the mark is a famous one, however. In dilution cases, confusion is not the standard, so use on any type of good or service might cause infringement by dilution of a famous mark.


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Question: What is a patent?

Answer: A patent is a form of intellectual property. A U.S. patent is a right granted by the United States Patent and Trademark Office to an inventor to exclude others from making, using, selling, offering for sale, or importing an invention for a limited time. In the U.S., Patent law is driven by the language of the Patent Act, 35 U.S.C.


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Question: What are patent "claims"?

Answer: A patent consists of an abstract, a description of the invention, disclosures of prior art, drawings, and one or more claims. The claims are the only truly enforceable part of a utility patent, and they define the property right owned by the patent holder. They are written in technical language, and must embody subject matter that is within the scope of patent law, is novel and is not obvious. The more broadly written the claims, the less likely they are to avoid rejection or invalidation on the grounds of obviousness or anticipation by prior technology. The more narrowly written, the less likely a competing technology or device infringes the claims. To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim.


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Question: Can software technology be protected by patent law?

Answer: Yes. Software technology development is highly incremental in nature and, as a result, truly unique designs, methods or approaches are rare. In addition, prior art with respect to software technology is not centralized or even easily discovered. However, patents can and do often issue on software-based technology that is not, in fact, novel. Computer technologies can be patented as processes (software), machines, even articles of manufacture (the CD containing the software, for example).


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Question: What does it mean to "infringe" a patent?

Answer: If you are accused of patent infringement, you are accused of having made, sold or offered for sale an invention described in one of the claims of a valid patent, without the patent owner's authorization. To determine if infringement has occurred, a court will look at the patent's claims, interpret them, and compare them to your device, process, method etc. Infringement occurs if your accused item performs each of the elements of any of the claims. Note that you may be liable for inducing infringement or contributing to infringement, even if you did not directly infringe a patent, if you encourage or assist someone else to infringe a patent.


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Question: Does it matter if infringement is accidental or innocent?

Answer: It does not matter for liability purposes that a patented infringer was unaware of the patented technology when infringement occurred. However, willful or intentional infringement may carry a higher monetary penalty than innocent infringement.


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Question: What are the defenses to patent infringement?

Answer: There are two basic lines of defense: non-infringement and invalidity.

Non-infringement: To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim. This determination often rests on how a court interprets the language of the claims you are accused of infringing.

Invalidity: Only a valid patent can be enforced. Issued patents are presumed valid, but this presumption can be overcome if prior art exists that demonstrates an invention was not novel or that it was obvious at the time the patent application was filed. Especially in the case of software and Internet business method patents, articles disclosing or describing the patented inventions may exist in trade publications that would not have been found by the patent examiner and would not have been part of the prosecution file of an issued patent on file with the USPTO. The patent holder's failure to name all inventors may also invalidate a patent.


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Question: What are the consequences of being found to have committed patent infringement?

Answer: A patent owner may recover money damages in the form of a "reasonable royalty," which is the amount the patent holder could have earned in licensing the patented technology. Under certain circumstances, the patent owner may recover lost profits as an alternative measure of damages. The money damages amount may be tripled if the infringement is found to be "willful." The patent owner may also be entitled to enjoin further use and sale of the patented invention.


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