Barbie, Bratz, and a lesson about works made for hire

When this patent librarian was a kid, Barbie dolls pretty much ruled the roost when it came to fashion dolls. While HotWheels had to compete with Matchbox, and Gobots wooed a loyal following away from Transformers, there was really no substitute for Barbie dolls in the imaginations and toy boxes of children.

More recently, though, Barbie has had to deal with some pretty fierce competition from a line of dolls known as Bratz. Launched in 2001, the Bratz line of dolls, with their fashion-forward outfits and grotesquely large heads, wowed their target audience and proved a major success for their manufacturer, a company called MGA Entertainment.

Bratz and Barbie have recently made headlines because of a lawsuit alleging that the original drawings from which Bratz came and the Bratz name itself actually belonged to Mattel, the company that makes Barbie. (And you were wondering what all of this had to do with intellectual property.) In July, a jury ruled that the creator of Bratz, Carter Bryant, had come up with the concept while working for Mattel and that MGA was infringing on their copyright by producing the dolls. A few days ago, Mattel was awarded $100 million in damages; as of yet, it is still unclear whether MGA will be able to continue to produce the Bratz line.

Determining authorship can be difficult in the realm of copyright, and cases like this one illustrate an important concept in figuring out who owns what. In regards to copyright, authorship refers to the creator of a given work. At its simplest, the "author" of a work is a person who put pen to paper, fingers to guitar, eye to lens, etc.

Once we get into the world of businesses, however, things get a little trickier. Intuition would tell us that Carter Bryant, the person who drew and named the dolls, would be the author and, thus, the owner of the copyright. The problem is that at the time that Bryant created the drawings and name, he was working for Mattel as a designer. Because he was under contract to design dolls for Mattel, the designs that he came up with during his employment with Mattel would be considered the property of Mattel.

This aspect of authorship is known (here comes the jargon) as a work made for hire. The idea is that if you create something during the course of employment or are contracted by an employer to do a certain type of work, the work that you create during that employment becomes the property of the employer. This blog, for instance, is part of my work as a librarian. Because I create the blog while I'm on the clock, the copyright belongs not to me but to my employer, the San Francisco Public Library. In the case of a blog made for education use by a non-profit library, the copyright isn't really valuable. But for Mattel, the Bratz copyright has proven valuable both because of the loss of revenue caused by the competition with Bratz and because of the potential revenue that the dolls could have made for Mattel had they been the firm to market them.

As a product designer under contract, Carter Bryant most likely didn't punch in and punch out like people performing other types of work would do, so Mattel probably included in his contract a statement of ownership of his doll designs during the course of his employment. Indeed, only $10 million of the $100 million award was for copyright infringement; the rest was for breach of contract.

Like just about every legal issue related to intellectual property, the rules governing work made for hire aren't always concrete. For an authoritative handling of work made for hire, check out the Copyright Office's Circular 9, which covers how to determine if a work is in fact made for hire.

Closing the lid on Pandora?

Ever since Napster, it's been anybody's guess as to how (or if) music distributors can deliver media to listeners in a way that is satisfactory to both consumers and people with a financial stake in industry. The industry has made it clear that they will enforce their copyrights, and, with the support of the Federal government (particularly via the Digital Millennium Copyright Act), has tended to favor pretty strict control over the use of their protected materials.

One solution that has, at least up until now, seemed to be working was using the radio format to play music over the internet. For many years, record companies and artists have relied on performance rights organizations to streamline the licensing process so that copyright owners can profit from radio broadcasts of their songs. These groups (in the U.S., it's ASCAP, BMI, and SESAC) are responsible for setting royalty costs for radio play, keeping track of who played which songs on which station, and getting payments from radio stations to copyright holders.

Sound Exchange is the organization responsible for managing digital broadcasts, including Internet radio broadcasts. The Washington Post ran an interview last week with Tim Westergren, founder of a very popular Internet radio site called Pandora, in which he discusses the effect that recent royalty hikes have had on the otherwise successful startup.

Pandora takes a unique approach to radio broadcasting in which listeners can create personal radio stations that play songs that match their taste. Listeners can enter a song or artist that they like, then the radio station will try to play songs that have similar characteristics. The data about the songs comes from a related project called the Music Genome, in which analysts assign characteristics to describe songs. The idea is that each user can start with something that they know they like, then play music that is musically similar, but which they may not have otherwise found. Pandora makes its revenue from advertising on the website.

If you'd like a musical background while you ponder the ramifications of digital media on the world of intellectual property, you may want to try Pandora sooner rather than later, for Westergren claims that the new, higher royalties are taking their toll on his company's profits and it may soon have to pull the plug.

It's been fun, at least for IP nerds like myself, to watch intellectual property policy evolve to meet the demands of new technology. If Pandora's royalties bills are too high and it has to go away, I wonder who might step up next to deliver free music over the Internet.

If digital copyright issues are of interest to you, there is no better place to start reading than the Stanford Copyright and Fair Use Center, where you will find a real feast of thoughtful commentary, links to all sorts of copyright sources, and an excellent copyright primer contributed by NOLO Press.

Patent fees revision, effective October 8, 2008

Just in case you missed the Federal Register this morning, the Department of Commerce announced that patent fees for the fiscal year 2009 will be increasing a bit.

Fee increases are based upon the Consumer Price Index for all Urban Consumers.

Click here to read the notice. Table two compares the current fees with the adjusted fees for small entities; these are the fees that usually apply to independent inventors and non-profits.

This ain't your Mr. Coffee

This patent and trademark librarian enjoys a cup of coffee now and again. And again and again. In fact, this eye-opening beverage has become part of my daily routine, and over the years I've tried a few contraptions to get more flavor out of the beans. I've tried grinders, French presses, stove-top espresso makers, percolators, and even, in a time of desperation, made some cowboy coffee.

The process of coffee making is simple enough -- add ground up roasted beans to water, heat, remove the grounds to the best of your ability, and enjoy -- and I was a bit surprised to learn of a major technological innovation in the coffee field. But leave it to our java-loving West Coast neighbors to the north to come up with a high-tech, computerized, $11,000 coffee maker called the Clover.

The Clover isn't a one-off, jewel-encrusted show piece. It's a purely functional commercial machine that just does one thing -- make coffee.

It is apparently no joke, either, if one can judge by the demand for both the expensive machine and the expensive cup of coffee that the machine is capable of cranking out. According to Mathew Honan, who wrote a piece about the Clover for Wired Magazine, there are about 250 of these things in operation. At the moment, the Clover is almost exclusively found in independent coffee shops in cities around the country. But that's all about to change -- Starbucks bought Coffee Equipment Company, manufacturers of the Clover, and will no longer sell machines to anyone. The only place new Clovers will be shipped will be Starbucks locations. I'd recommend reading Honan's piece to get the whole scoop. There's also a cool video of the Clover in action.

Wanna-be inventors should take note. The coffee machine is kind of like a modern-day mousetrap; it's ubiquitous, performs a simple task, and would appear to have been perfected long ago. Appears that way, that is, until someone takes a closer look at it. Granted, the Clover inventors were Stanford-educated product designers, but that doesn't take any gravity away from the awesomeness of their invention. I don't know how much Starbucks paid for the company, but even before that deal they'd sold 250 coffee machines at $11,000 each, which is $2.75 million worth. What a pay day! All for a coffee maker! I'm never going to look at my current coffee rig(I got it for $3.99 at Thrift Town) the same way!

The patent for the Clover hasn't actually gone through yet, but I'm going to guess it's likely to be granted. (Starbucks probably wouldn't have bothered to buy the company if their attorneys thought that they could produce the machines themselves.) Take a look at the application here and marvel at its technology. You can also follow the patent prosecution process by using Public PAIR.

Should the Coffee Equipment Company have resisted selling to a corporate giant? Is it ethical for Starbucks to keep this technology to itself? Can the success of an invention be measured by the amount of money it pays? I'm not even going to go there. I'll leave that to the other bloggers. I haven't tried the coffee yet, either, so I can't even posit an opinion on how it tastes.

For our purposes here, the Clover is a lesson in looking creatively at the every day objects in our lives. The heart of the patent system is the dissemination of technology, and every technological advance builds on the earlier work of others.

If you're a local reader and you're curious about the coffee (how could you not be?), Ritual Roasters is the only cafe in town where you can try Clover coffee. That will probably change when Starbucks puts their new acquisition to work.

The image used in this post courtesy of the San Francisco History Center, San Francisco Public Library.

USPTO reconsiders Dell trademark, bloggers rejoice!

Internet News (among many others) reports that the USPTO has gone back on its decision to allow Dell Computers to register "Cloud Computing" as a trademark for a line of server products.

Dell submitted a registration application in March of 2007 and was given the go-ahead by the USPTO in late July of 2008. On Tuesday, the USPTO canceled the Notice of Allowance, effectively reversing their decision that the trademark was valid.

Most of the coverage of this issue has been via bloggers, bemoaning what they see as a trend towards allowing companies to get intellectual property protection (patents and trademarks, specifically) for things (inventions or phrases) that are commonly in use or just plain obvious. It's fascinating stuff, and I'd recommend following this link to read all about it.

I'd rather not voice my opinion on such matters in this space. Instead, I'd like to highlight some of the opportunities for learning about trademarks that this story presents, which I've done in easy-to-digest bullet points below:

• Public opinion does count in trademark registration, although it's unusual for the USPTO to take back a permitted mark. Trademark applications are published, as are patent applications, for public scrutiny every week in the Trademark Official Gazette. (Published patent applications are available online as well.) Generally speaking, the time to speak up about a trademark application that you don't like is any time up to 30 days following publication. My guess would be that the intense media scrutiny caused the USPTO to reconsider.
• Even if the mark were registered, it could be challenged in court. The consensus seems to be that using the term "cloud" as a metaphor for the internet is pretty common knowledge. If Dell's registration would have gone through and somebody would have challenged it in court, a judge may have decided that the trademark was too obvious, in which case it would have been thrown out. It happens every so often that a brand name becomes so thoroughly adopted in popular language that its trademark no longer identifies the provider of the good or service, but only the service, and the company loses its mark. That's how in 1950 "Escalator" became "escalator."
• You can track the status of a trademark registration online. It's in the best interest of the USPTO to make trademark applications as accessible as possible -- every potential mark that is contested before registration is a mark that won't show up in the courts later on down the road. You can track the whole lifespan of a trademark registration online at the USPTO website using TARR, Trademark Application and Registration Retrieval.

My favorite is "Olympigs"

As usual, I scooped the Wall Street Journal by a few months with my report on the Congressional trademark protection given to the Olympics Committee. In all fairness, their story is, er, better, and thus perhaps worth a click.