Online rights hot area for intellectual property lawyers
Understanding Intellectual Property
• Intellectual property is the same as any other piece of personal property in that it can be sold, traded and protected by the owner.
• The four types of intellectual property are trade secrets, patents, copyrights and trademarks.
• The most dramatic change to the U.S. patent system in nearly six decades took place in 2011 with the passage of the Leahy-Smith America Invents Act (AIA), which converted the patent system from a “first to invent” to a “first inventor to file” system.
• 70 percent of patent infringement cases reach trial within 3 years, with the average since 2005 of 2.5 years.
• Certain federal district courts (particularly Virginia Eastern, Delaware, and Texas Eastern) continue to be more favorable to patent holders, with shorter time-to-trial durations, higher success rates, and larger median damages awards.
• The median patent damages award from 2006 to 2011 was approximately $4.0 million.
• The median damages between 2005 and 2011 were largest in the telecommunications sector.
Source: 2012 Patent Litigation Study, PwC
By Cindy Krischer Goodman, Miami Herald – December 10, 2012
The explosion of online content has heated up business for South Florida’s intellectual property lawyers.
They’re involved in a range of issues from protecting clients’ online rights to resolving domain name disputes to determining who is responsible for digital copyright infringement. All these new intellectual property law challenges are aside from the traditional trademark and patent registration and litigation matters.
“Do you own what you put on the Internet? That’s the question everyone wants to know,’ says Jorge Espinosa of Espinosa Trueba in Miami, an intellectual property law firm that focuses on the litigation and prosecution of trademarks and patents. “We’re helping our clients navigate the interface of traditional IP law and the digital realm.”
Espinosa says he helps clients protect their copyright works online, particularly as ecommerce continues to evolve. The advice he most often gives clients: “For anything put online or visible to the public that may be copied, the best investment is a copyright application. It is relatively inexpensive and offers enormous protection.”
The boom in digital content has also brought new business for Bill Davis, of Foley & Lardner in Miami, who has been advising clients on copyright and trademark issues concerning Internet advertising. “Our patent and trademark law is over 100 years, and it applied in a time when there was a different method of doing business,” Davis says.
Today when companies advertise on the Internet, the opportunities are greater to infringe on trademark or copyright rights. “That really broadens our base of work,” he says.
At Richman Greer, intellectual property attorney Ethan Wall has created a niche focusing on the impact of social media and the Internet on businesses. In the past, Wall has litigated complex cases involving trademark infringement, unfair competition, Internet jurisdiction, website disputes, and disputes over domain names in state and federal court. Now, Wall increasingly counsels clients on legal issues connected with social media.
“Because it’s a difficult task to protect intellectual property on the Internet, I tell clients they can’t be reactive, they have to be proactive,” Wall says. “Information is easy to share on social media sites and if someone infringes on your intellectual property, it can go viral immediately.”
This development has led to a niche for attorneys — helping clients create policies that protect company trade secrets, trademarks or confidential business information before it becomes public. Wall tells his clients the best way to protect its online intellectual property is a three-step process: First, create and register a policy that addresses infringement. “It must be clear who is authorized to speak on behalf of company.” Next, have a process in place to monitor what’s being put on social media sites. And lastly, be prepared to enforce the policy. Wall says social media sites such as Facebook and Linked In offer take-down procedures. “You can submit violations of your IP policy and they do a good job of responding on an expedited basis,” he says.
The development of apps for smartphones is another hot IP area for lawyers. “We help negotiate contracts between investors and developers and then show them how to get their apps on the online stores to be sold to the consumer,” says Gregory Mayback of Mayback & Hoffman in Fort Lauderdale.
Legal issues involving domain names also create business for IP lawyers. “People register a name and then hold it hostage.” Mayback says. Or, they chose a domain name that’s close to one that already exists, which he often addresses with a cease and desist letter. “If they are close but not exact, you may still want to stop them,” he says. Sometimes, the resemblance is intentional and opens the door for what IP attorneys call “cyber squatting.”
At Morgan Lewis & Bockius in Miami, Derek Leon says he has represented businesses in their efforts to shut down these cyber squatters or operators of online sites that use tricky domain names to draw customers into buying counterfeit goods. “Luxury retailers like Coach or Gucci are getting aggressive about prosecuting these cases,” Leon says.
Beyond Internet-related legal issues, intellectual property law firms are hiring new attorneys and report a high demand from clients pursuing applications with the U.S. Patent and Trademark Office, a trend that extends to Florida attorneys. “Our clients have trademark and patent applications in process in 60 countries including Cuba,” says Espinosa.
Mayback says South Florida’s large medical community opens the door for patent work for his firm. He represents physicians seeking patents for medical devices or medical procedures. “They are hoping to patent their product and sell it to big companies.” One example involves a client who is trying to obtain patents to detect counterfeit disposable parts that could be used with medical devices. At the same time, Mayback helps companies protect their patents, most recently prevailing in a lawsuit against a counterfeit manufacturer of tote bags for which his client has a design patent.
Along with new applications, patent litigation has surged to an all-time high. The number of patent infringement filings shot up by 22 percent during 2011, compared with the year before, reaching the highest level yet recorded, according to a study released in September by PricewaterhouseCoopers. The study found suits were widespread and related to technology-based patent as well as infringement of pharmaceutical and other life sciences patents.
Leon says South Florida has seen an uptick in patent litigation in 2012 because of aggressive trial date scheduling by federal judges. Companies prefer to file here, he says, because the perceived “rocket docket” puts pressure on defendants to begin settlement talks.
South Florida IP lawyers say they’re also busy fighting off patent infringement lawsuits from non-practicing entities, commonly called “patent trolls.” These entities usually don’t actually buy or sell goods, but rather own portfolios of licenses and patents and sue companies for using their idea without paying royalties or licensing fees.
Boutique IP South Florida firm Assouline & Berlowe defends clients who have been sued by non-practicing entities. “With these lawsuits, it’s more about negotiating licensing rights than the classic injunction to shut down operations in a big patent dispute like we saw with Apple and Samsung,” says Eric Assouline.
Assouline says the digital explosion has affected traditional patent litigation by encouraging venue shopping. Because most companies now maintain a national online presence, they can be sued for patent infringement in any federal court in the country. “Companies are deciding where to bring suit by identifying the courts that have had more favorable plaintiff rulings and awards.”
Going forward, Assouline raises concerns about the future expense of litigating a patent dispute because of the reams of electronic evidence that now accrues: voicemails, emails and digital photos. Managing the costs of sifting through the electronic evidence can be time-consuming and expensive. “My concern is how is anyone but a big company going to be able to afford litigation in a complex intellectual property case in the future?”
If your company needs assistance with any Intellectual Property matters, including Copyrights, Trademarks, or Patents, call and let us try to help you.
ERIC N. ASSOULINE, ESQ.
ASSOULINE & BERLOWE, P.A.
Ft. Lauderdale: 954-929-1899
Boca Raton: 561-361-6566
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