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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jrosenblatt@cfl.rr.com
Some Chilling Thoughts About Licenses
Not to alarm anyone, as the layperson so often accuses we attorneys, but it is important to remember those restrictive software license provisions designed to restrict use of a “box top” software program, to the licensee’s (you may read “licensee” as “purchaser”), owned or leased computer and only when used in the internal business of licensee and for the intended purpose of the program and not to be copied or transferred, and so on and so on, with the licensor’s (you may read “licensor” as “seller”), sole intention to permanently lock each program copy to a separate respective computer. That’s called the one copy-one computer rule not to be confused with the more famous Supreme Court “One Man-One Vote” rule. Masquerading as a legal and binding agreement, these licenses were an early attempt to prevent access by multiple users to a single copy, not withstanding the Copyright Law provision that the copy itself, a book or CD containing a copyrighted work for example, but not the copyrighted work, may be transferred without violating the author’s rights.
Now enter the “one copy-one computer” license agreement in which the licensee (that’s you) willingly agrees to give up that transfer right in exchange for the right to use the program. These licenses did work for a time until a judge in California (it always seems to be the California judges doing these things), decided the licenses were unenforceable (that’s the California judge’s way of saying to the licensor, “go fly a kite”), because the act of opening or loading the program asserted by the licensor as “an act of acceptance of the license by the licensee,” occurred after the fact of the sale and there was no mention of any license at the time of sale. Remember, all the purchaser received at the time of sale was a sales receipt. The words on the box did not count as the sales receipt had no indication the buyer did anything but purchase a box with a program in the box. In the law, the purchase, while subject to the “Supreme Law of the Land,” (that’s the U.S. Constitution and the Copyright L:aw thereunder), was not subject to any of the provisions of the restrictive provisions and draconian provisions of the “license agreement,”
because there was no act of acceptance of these terms at the time of sale.
Undeterred, smart attorney’s (all attorneys are smart except for the ones who manage to get themselves disbarred and then they are no longer attorneys and so don’t count), reading the California judge’s opinion, decided all that was needed to put the license agreement right was to assure an act by the licensee signifying a legal act of acceptance of these or another unconscionable terms, was concurrent with or immediately prior to the acquisition of the physical program. That was easy especially using the Internet. Did you ever sign up to a web site that required the physical act of selecting the “I accept” switch at the bottom of the written agreement or attempt to load a box top program that has the same requirement? In the case of my anti-virus program, registration and acceptance of revisions, or as Bill Gates would say, “updates,” is a record of my unequivocal and faithful promise to render unto Caesar. It all sounds a little Orwellian (remember “1984 which may be upon us), but fortunately for every smart attorney, there is always one that comes along that is a little bit smarter and provides the proverbial “second opinion.”.
And so it happened that there was an attorney who was “a little bit smarter,” who asked why should any license terms be enforceable, even where voluntarily made by the “I Accept” browser switch? Instead this attorney said all of the Supreme Laws of the Land should apply, and under that Law, a voluntary act does not strip a citizen of rights under the First Amendment or statutory law prohibiting deceptive and unfair trade practices or the common law of unconscionability, deception, fraud, and misrepresentation. While the First Amendment case is easy, as where the restriction is about criticism of the software, facts supporting any of the other legal theories may be harder to assemble. However, a few hypotheticals may be in order. One set of facts that immediately comes to mind is the license term that prohibits all modifications of the program even where the modification is for the restrictive and essential purpose of using the program in a computer for its intended purpose or for the purpose making an archival copy. While the right may be surrendered voluntarily, it must be surrendered knowingly. Another case may be when significant and material rights in the program are restricted or removed by the license agreement without the licensee given an opportunity to understand the consequences or bargain for different terms. As a final example, would be the time bombed program set to self destruct or the program with hidden files especially designed to disrupt the operation of competitors’ applications or systems.
The lesson, of course, is to be careful as a less restrictive license agreement may be just as good and a lot better than a more restrictive license agreement, especially when customer relationships are important and that your license agreement may next be on the reading list of that “smart attorney.”
Be Careful
While I said that before, in the context of the Copyright Law, I repeat it doubly so in the context of the Patent Law. “Be careful” is what my father always said when he thought he owed me some guidance but was not sure of the particular advice to give. This happened increasingly more often as I steered myself deeper into math, science and engineering and beyond my father’s limited education ending in high school physics, chemistry, and advance algebra. However, he was a member in good standing of the New York State Bar for 37 years until his death and did manage to instill in me a wariness of improbable and unexpected outcomes, principally from stories about his “famous cases.” These stories usually came when riding around New York City in the family sedan, in the winter with the windows up, so I was held an isolated, captive and submissive audience to these morality tales. And they were good stories of troubled people, in business or family distress or even in trouble with the law and facing the loss of their personal freedom. The theme of the stories was inevitably the unintended or unexpected consequences of impulsive or impetuous acts or from acts whose possible consequences were not carefully studied or considered or even given any care or consideration at all, as summed up in the one phrase consistently used by my father, “they were not careful.” Even though he had no knowledge of Laplace or Fourier Transforms, Eigen Functions, Maxwell’s Equations or Integral Calculus, my father knew the nature of the human animal and how neglect and carelessness led to personal disaster. In the way of all fathers, he always rendered the stories as a personal object lesson for me to “be careful.”
As you may guess, this introduction is not without purpose. Patent Attorneys are always telling clients to be careful about impulsively rushing out to tell the world about their invention or prematurely advertising or using their invention, to avoid irreparable loss of patent right, even before there has been a patent application filed and in fact, just because there has not been a patent application filed, as I will explain.
While most inventors think their patent can only be denied by someone else inventing before they did, the perils of the Patent Law include the inventors’ own acts precluding the patent award. Consider 35 U.S.C. 102(b), removing as an eligible invention for patenting any invention described in a printed publication anywhere in world, or in public use or on sale in this country, more than one year prior to the filing date of the patent application. In summary, and putting the words in reverse order, the invention must be described in a patent application filed in the U.S. Patent Office or an international patent office under a treaty giving the international filing date the same effect as a first filed U.S. application, no less than one (1) year from the date the invention is described in a printed publication or placed in public use or on sale.
Sounds simple, doesn’t it. Actually its quite complicated and you knew that I wouldn’t write about it if it wasn’t. The questions virtually leap from the page. When is a publication printed? When does a use become a public use? Does “use” include an indirect use or only direct uses? What is meant by “sale?” Does it include offers for sale or only actual sales? These questions never or hardly ever arise in the patent examination process because the examiner usually has no knowledge of public use or on sale activities. However the examiner may become aware of a printed publication from the official search files, such as a foreign patent publication. If there was a prior public use or sale or printed publication which was not before the examiner, but asserted as a defense in a patent infringement suite, then the burden of the greater weight of evidence is on the party seeking to invalidate the patent. This burden is more than a preponderance but less than the burden of clear and convincing evidence.
Let’s assume the patent issues and the defendant in a patent infringement suit is trying to invalidate the patent based on printed publication using something not printed in the orthodox manner but done on a laser printer in a limited number of copies or typewritten in a single copy. Each of these examples may be a printed publication depending on the level of public accessibility, The single printed copy placed in a library freely accessible to the public would be a printed publication. However, the laser printing in limited copies and intended for limited distribution might not be a printed publication. The case made for a public use or a sale would have to be a little closer to the facts showing there was an actual commercial exploitation. Absent the commercial exploitation, as in an experimental use or where the device used or sold was different from the claimed invention, the bar to patenting in 102(b) would not apply. That rule would apply equally to the printed publication.
So my last words for this month are “be careful.”
Next month I’ll talk about the real way trademark applications are examined and the futility of arguing against the plain wording used in the description of goods/services. Continuing on the subject of trademarks, the required trademark use of a trade name to merit protection under the laws of unfair competition.
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jrosenblatt@cfl.rr.com . |
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