Seen and Unseen

Something about telephone conference certainly is, unreal.

Look, saving traveling cost is no wrong, saving human resource is no wrong. But point is, when you head into the wrong direction, you are going no where. And the consequence of that is, increasing a huge amount of time to negotiate, with someone is 11,000 km away from you.

What means the wrong direction? We think a frontline workforce can solve problems lingually and physically. Yes, but partially.

Why? Decision is made by Headquarter, policy is framed from Headquarter. As an Taiwan based company, it is hard to procastiate by saying, we have to wait the decision, or we don't know the policy, or we cannot make a call. We are in the Headquarter in which people expect to hear information, decision, policy from you.

It's no wrong, to pay 60,000 USD (1,800,000 NTD) to a frontline US attorney in California, or to pay 50,000 USD to a frontline sales representation. But a face to face, even doing it through a television conference will be much better than doing it through phone call which electronic snow accompanies.

Think about it, sedning your soliders on that battlefiled and see the real counter party.

Lawsuit Buzz: Asia-Pacific Legal Departments Size

Article cited from

http://www.lawdepartmentmanagementblog.com/law_department_management/structure/

A survey conducted by Asian-Counsel published findings about the size of the “legal/compliance teams.” Here are the size breakdowns, rounded off: 1 person (7%), 2-5 people (42%), 6-20 people (34%), 21-50 people (10%), and 51 or more (7%). This size pattern, from Asian-Counsel, e-edition, Vol. 7, July/Aug. at 24, matches the size pattern of US legal departments.

Since Asian legal departments also have a bit more than one lawyer for every non-lawyer, internal legal teams of 1-3 lawyers constitute almost 50 percent (5 or fewer lawyers to be deemed “small” and gives comparable distribution figures).

Lawsuit Buzz: Taiwanese Company Slaps Apple With Touchscreen Lawsuit

Article cited from
http://www.wired.com/gadgetlab/2009/04/taiwanese-compa

A Taiwanese company on Tuesday filed a lawsuit against Apple, alleging the corporation infringed its touchscreen patents.

Chip design company Elan filed the suit in U.S. District Court in San Francisco. The suit alleges that Apple’s MacBook, iPhone and iPod Touch feature technologies infringing on two of Elan’s patents.

"We couldn’t find a common viewpoint with Apple, so we decided we had to take action," Elan spokesman Dennis Liu told New York Times.

The patents describe a "multiple fingers contact sensing method for emulating mouse buttons and mouse operations on a touch sensor pad." The lawsuit alleges the multi-touch trackpads in the latest MacBooks violate the patents, as do the touchscreens seen on the iPod Touch and iPhone models.

Elan may indeed pose a challenge to Apple’s famously powerful legal team. Elan said in the past it won a preliminary court injunction against Synaptics, disputing over the same patents. Synaptics countersued, and ultimately both actions were dismissed when both companies reached a cross-licensing agreement.

The legal battle over touchscreen technology is beginning to heat up. In January, Apple hinted at taking legal action against smartphone manufacturer Palm, whose upcoming Palm Pre smartphone appears to closely mimic the touchscreen interface of the iPhone.

"We are ready to suit up and go against anyone," Apple chief operating officer (and acting CEO) Tim Cook said in response to a reporter’s question about the Palm Pre. "However, we will not stand for having our [intellectual property] ripped off and will use whatever weapons we have at our disposal."
Looks like Apple — and maybe Palm, too — will have to aim their "weapons" at Elan first.

In re Patent Infringement: Doctrine of Equivalants

Doctrine of Equivalants
= it is a legal rule in most of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention. U.S. judge Learned Hand has described its purpose as “being or temper unsparing logic and prevent an infringer from stealing the benefit of the invention.” A classical case in United State is, Graver Tank & Manufacturing Co. v. Linde Air Products Co., (1950)

There are two limitations suppress Doctrine of Equivalents: 1) all element test; and 2) prosecution history estoppel.

All element test is is a legal test used in US patent law to determine whether a given reference anticipates a patent claim. The rule is also applicable to an obviousness analysis. Under the rule, a single reference (for anticipation) or the combination of references relied upon (for obviousness) - plus the ordinary knowledge of persons skilled in the art-must explicitly or implicitly provide each and every claimed element.

Prosecution history estoppel is a term used in United States patent law to indicate that a person who has filed a patent application, and then makes amendments to the application to accommodate the patent law, has no cause of action for infringement to the pre-amendment patent claims that were amended.

In re Trademark Use Doctrine: Rescuecom Corp. v. Google Inc.

Trademark Use
= is using a mark, in a way that does identify the source of a product, then trademark infringement and false designation of origin laws do not apply.

Article cited from
Kenyon & Kenyon LLP, Rescuecom Corp. v. Google Inc. Trademarks as Keywords and the “Use in Commerce” Doctrine (2009), http://www.kenyon.com/files/tbl_s47Details%5CFileUpload265%5C1010%5CRescuecom.pdf.

In an April 3, 2009 decision that has the potential to significantly impact the multibillion-dollar keyword advertising business, the U.S. Court of Appeals for the Second Circuit vacated the dismissal of a trademark infringement lawsuit brought by a national computer service franchising company against Google.

In Rescuecom Corp. v. Google Inc. the court distinguished previous Second Circuit precedent, and held that search engines selling advertisements keyed to a registered trademark are using the mark “in commerce.” As a result, the court held that Rescuecom’s complaint properly alleged a claim for relief, and therefore remanded the case back to the United States District Court for the Northern District of New York, which, absent a settlement, will decide whether Google’s AdWords program renders it liable for trademark infringement. If it is liable, this would have a huge impact on the entire search engine industry.

Background

Rescuecom Corp. of Syracuse, NY fi led an action against Google for trademark infringement, false designation of origin, and dilution under § 45 of the Lanham Act in the Northern District of New York. It claimed that Google engaged in a coordinated practice of recommending and selling the keyword ‘Rescuecom’ (plaintiff’s registered trademark) to its competitors, so that when users type “Rescuecom” into Google’s search box, the results include paid advertisements from competitors. It alleged that these advertisements diverted users from its site. As a national franchising company that receives between 17,000 and 30,000 visitors to its website per month, Rescuecom’s online presence is very important to its success.

Google uses two popular programs to offer contextbased links that serve advertisements (typically a few lines of text and a link to a website) for products and services that are related to a search a user is making: AdWords and Keyword Suggestion Tool. Through AdWords, an advertiser can purchase selected keywords and its ad will run in a rotation when a search is executed for that keyword. Google is paid each time a user clicks on the ad. With Keyword Suggestion Tool, Google will actually help a customer identify keywords that are likely to drive more traffi c to its website. Those suggested keywords could include the trademarks of competitors, e.g., “Rescuecom.” Rescuecom alleged that this practice of selling and recommending its registered trademark as a keyword for advertisements is likely to confuse consumers and, therefore, constitutes an infringement of its trademark rights.

Specifically, the company claimed that a Google user who types in “Rescuecom” and receives search results is likely to believe that the surrounding website links and advertisements are affiliated, licensed, or approved by Rescuecom, when in fact they are paid placements by competitors. According to Rescuecom, this occurs, in part because of an alleged failure by Google to label the list of links appropriately. Further, occasionally sponsored links appear in a horizontal bar at the top of the search results, in which case the user may believe the advertisements to be the first, and therefore the most relevant, responses to the search query.

District Court Analysis

On September 28, 2006, the district court granted Google Inc.’s motion to dismiss all causes of action. The court held that based on the Second Circuit’s 2005 decision in 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005), Rescuecom had not stated a claim for relief because it had not alleged a “use in commerce” by Google of its trademark. It concluded that even if Google’s practices cause confusion or possibly deceive those accessing the search engine, its use of the plaintiff’s trademark is not visible to the public and the advertisements by its competitors do not use Rescuecom’s trademark. Accordingly, there is no “use in commerce” and therefore, no infringement.

Second Circuit Analysis

The Second Circuit began its analysis by distinguishing 1-800 Contacts from Rescuecom. In 1-800 Contacts, the defendant had incorporated the plaintiff’s trademark into software that was used to deliver pop-up advertisements to individuals based on the website they visited or search term they used. The advertisements appeared in different windows and were associated with the defendant’s brand. There was no confusion that the pop-up was an advertisement associated with the defendant, rather than the plaintiff’s trademark. The 1-800 Contacts court held that since “use in commerce” requires use or display of the mark in the sale or advertising of services, the internal use of the mark by the 1-800 Contacts defendant did not constitute such a use.

The Second Circuit highlighted two main distinctions between 1-800-Contacts and Rescuecom’s claims. First, the plaintiff’s software in 1-800 Contacts did not respond to trademarks entered into the search boxes. Rather, it responded to website addresses. Second, the advertisers in 1-800-Contacts could not purchase trademarks as keywords directly, and the defendant did not even disclose its proprietary directory of keywords to its customers. Instead, the system was based on specifi c categories for which advertisers could purchase ad space. The system then delivered ads according to the keywords that were connected – through an internal database not revealed to customers – with each category.

Unlike the defendant in 1-800 Contacts, the court noted that Google is: (1) recommending and selling Rescuecom’s trademark; (2) displaying, offering and selling Rescuecom’s trademark to customers when creating ads; and, (3) encouraging clients to buy the trademark in its Keyword Suggestion Tool. The court held that those are not internal uses.

Finally, the court stated that the mere use of a trademark in internal software does not grant immunity to a potential infringer. It stated that such a rule would allow search engines to use trademarks that are likely to deceive consumers and cause confusion.

Thus, the Second Circuit held that the Northern District erred in dismissing the case based on 1-800-Contacts, and remanded the case back to the Northern District for further proceedings.

Evaluation & Planning

This ruling could impact both the manner and frequency in which keyword-related trademark infringement cases are brought in the Second Circuit, as well as other circuits around the country. While most decisions outside of the Second Circuit that had considered the issue had held that utilizing a competitor’s keyword to trigger ads states a claim for infringement, this was the fi rst time that the Second Circuit had reached such a conclusion. Based on the 1-800 Contacts case, the Second Circuit had been perceived by many as being hostile to such claims, on the grounds that this was not a use of a plaintiff’s mark in commerce. The Rescuecom decision will likely bring more uniformity to the manner in which federal courts approach these cases.

Despite the court’s extensive discussion of the history and evolution of the term “use in commerce,” Rescuecom still has a ways to go before it can succeed on its causes of action. It will have to prove the merits of its allegations of trademark infringement, false designation of origin, and dilution. The Second Circuit’s holding did not touch on any of those issues.

As a result of this opinion, organizations offering and utilizing search engine services should evaluate their use of trademarks in keyword search-related activities. The case’s outcome impacts certain defenses in keyword-related cases and may prompt search engines to modify their operations, in particular the manner in which they display advertisements which contain links to third party websites.