By Audrey A. Millemann

A patent must sat­­isfy several requirements in order to be valid. One of these is the written description requirement, as set forth in 35 U.S.C. §112, ¶1. That subsection requires that a patent:

”contain a written description if the invention…in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains… to make and use the same…”

The purpose of the written description requirement is to demonstrate that the inventor is in possession of the invention (i.e., actually invented the claimed invention) as of the date the patent application was filed. In Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336 (Fed. Cir. 2013), the Federal Circuit Court of Appeals held that a specification that is a “mere wish or plan” does not satisfy the written description requirement. The case is a strong reminder to patent applicants and practitioners that the written description requirement is critical.

Continue Reading You Must Describe What You Actually Invented

Very often one of a business’ most valuable assets is its internet domain name. Even in large, well-established companies, a portfolio of well-chosen domains amount to a significant set of assets, often driving sales and advertising. Yet many businesses often make poor choices in connection with these assets.

As the World Wide Web began to mature into a viable business method in the mid-1990’s, businesses began snapping up domain names. A significant number of startup companies began attempting to reinvent various categories of business by running them in an online or “virtual” presence. Most readers will recall failed businesses such as WebVan, pets.com and e-toys.com. Yet these businesses failed largely because of overly ambitious business plans which devoured enormous amounts of startup capital with elaborate advertising campaigns or, in WebVans’s case, an insanely ambitious attempt to build a nationwide grocery delivery logistics system from scratch with seed money.

Continue Reading Bad Domain Names

By Lisa Y. Wang

As New York Fashion Week carries on, so does fashion litigation. One brand that is constantly “copied” is Herve Leger, famous for their bandage dress. While a Herve Leger bandage dress can cost you thousands, stores and brands all over have copied the style and sold their own versions of the bandage dress for much less. However, fashion protection for clothing is limited, which is why fast fashion stores are able to copy your favorite runway designs, most of the time without getting sued.

Fast Fashion retailers, Forever 21 in particular, are often successful at trial partly due to the higher standard of creativity required to qualify for copyright protection for fashion items, which courts consider “useful articles,” which is “an object that has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Courts use a higher standard to prevent stifling innovation in the industry – after all, there’s only so many ways you can vary a plaid pattern and a shirt still has to have holes for your arms and head. For example, Express lost a case against Forever 21 – and had to pay Forever 21’s $700,000 in legal fees – because it couldn’t prove that its plaid designs were original enough to be protected.  If Express had won, where would courts draw the line? Next could be polka dots, stripes, etc.  Fashion could come to a screeching halt if one brand had copyright protection over every incarnation of polka dots.

Continue Reading A Dress’ Trade Dress

By Scott Hervey

Craigslist operates one of the most well known and widely-used online classified ad services.  Craigslist claims that more than 60 million Americans visit and use Craigslist each month, and they collectively post several hundred million classified ads each year.  3Taps is a technology company that aggregates and republishes real time ads from Craigslist and other services and allows web developers to access such aggregated information.  One developer who used the 3Taps data services for its service offering was PadMapper, a location-based apartment rental search engine with real-time filtering. PadMapper takes aggregated Craigslist home and apartment rental information and pots the various individual postings on a searchable map.

Upon becoming aware of 3Taps and PadMapper’s activities, Craigslist sent them a cease and desist letter, advising 3Taps and PadMapper that they committed various violations of the Craigslist’s Terms of Use and demanding that they “cease and desist your abuse of Craigslist, all violations of Craigslist’s legal rights and all access to and use of craigslist.” In closing, Craigslist informed 3Taps and PadMapper that they were no longer authorized to access or use the craigslist services for any reason and that “any prior license or authorization to use the [Craigslist website or service] is revoked and any access to or use of the [Craigslist website or service] by you or on your behalf is unauthorized.”   Additionally, Craigslist blocked certain IP addresses associated with 3Taps and instituted various technical measures designed to block those IP addresses from accessing Craigslist’s servers. However, it appears that 3Taps used proxy servers and other anonymous proxies to circumvent Craigslist’s efforts to prevent 3Taps from accessing Craigslist’s servers.

When 3Taps and PadMapper failed to comply, Craigslist filed a complaint in the US District Court for the Northern District of California. The complaint alleged numerous causes of action, including claims for copyright infringement, contributory copyright infringement, violations of the Computer Fraud and Abuse Act (CFAA) and violations of the California corollary to the CFAA, the California Comprehensive Computer Data Access and Fraud Act (Cal. Penal Code § 502).

In support of its copyright infringement claims, Craigslist alleged copyright ownership of all user postings. In its complaint, Craigslist alleged:
[E]ach user-generated posting on the craigslist website is itself an original work of creative expression, as it includes unique written descriptions of the goods or services offered for sale, for example, and often include photographs or other creative works. …craigslist either owns or has exclusive rights in its website and all portions thereof, including, but not limited to, the database underlying the website and the user-generated postings on its website

Continue Reading Craigslist Content Aggregator Continues To Face Copyright Infringement and CFAA Claims