Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

How do you protect your intellectual property? What is intellectual property? Is a special sandwich that you make better than anybody else intellectual property? Imagine you are the owner of a new restaurant who has created a new edible masterpiece. And subsequently, to your surprise, you discover that a copycat sandwich is being made across the street, without your permission.What do you do? What are your remedies?

In a new television commercial, Burger King's mascot breaks into the headquarters of McDonald's and steals the recipe to the Egg McMuffin.

I don't think they can register the work with the U.S. Copyright Office and obtain a certificate of copyright. Can they file an application for patent registration of the sandwich structure?

Remember for something to be patentable subject matter it must be a new, useful and a non-obvious improvement over something that's already out there. You don't see too many patents on food recipes and sandwiches. Maybe a design patent (.PDF), but I doubt that will give them much protection.

It may be argued that the business conduct of Burger King in this instance is actionable under federal unfair competition provision of the Lanham Act. While the Lanham Act, in general, focuses primarily on obtaining, maintaining, and enforcing trademark and service mark rights, Section 43(a), allows for suits for false designation of origin. But I don't think there is a false designation, Burger King comes right out and says we're making our own version of this old sandwich.

And it's not a copy of a trade secret (like the McDonald's special sauce) so I don't think there's any grounds for McDonald's to bring a suit. There is probably not much McDonald's can do to stop Burger King from making their version of the egg McMuffin.

What is protectable is the brand name or the trademark. What Burger King is tacitly saying in this clever breakfast commercial is that, McDonald's doesn't own the rights to eggs, sausage, cheese or English muffins. McDonald's owns the trademark "Egg McMuffin(.PDF)."

John DeVore, recently wrote a Special article to CNN entitled "Big burger boys burgle breakfast." about the commercial showing how Burger King's new BK Breakfast Muffin Sandwich's is just a copy of the classic Sausage McMuffin.

But are McDonald's executives upset with this campaign? Have lawyers been rallied and accusatory calls been made?"We haven't received any direct feedback from competitors," said Brian Gries, Burger King's vice president of marketing impact. Gries further defends his company's choice to be up-front about the similarities between the BK Breakfast Muffin and the McMuffin, saying, "We are not above taking a product that we know customers like and delivering it to our guests at a great price."

I love the guile of Burger King making a full admission in the commercial that they are copying this sandwich. I would love to see the internal memos from the lawyers arguing about whether or not they should allow this commercial to air. It is not like McDonald's has not been involved in a number of lawsuits involving trademark issues in the course of its history. But I think if McDonald's brings a lawsuit in this instance it would fuel of a lot of bad press and they would have little chance of success.

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Tweet of the week

Thanks to Peter Black @PeterBlackQUT for tweeting this week about the importance of teaching children to respect the intellectual property rights of others.

Ben Child, Guardian film writer and blogger wrote that Lord David Puttnam the president of the Film Distributors' Association voiced his concern of the need for new methods to stop  copyright infringement of films through internet piracy.

In a recent keynote speech as president of the FDA Puttnam said that:

"young people needed to be educated at an early age that it was wrong to illegally download copyrighted material"...."The concept of intellectual property and its value needs to be embedded inextricably into the school curriculum."

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A fairness hearing regarding the Google Book Settlement was held on Thursday, February 18, before Judge Denny Chin in a federal US district courtroom in New York City. The copyright class action lawsuit  related to the Google Books Library Project is entitled The Authors Guild, Inc., et al. v. Google Inc., Case No. 05 CV 8136 (S.D.N.Y.).

The lawsuit pits the internet giant Google against thousands of authors, publishers and other right holders, National governments and multi-national corporations, claiming that Google has violated their copyrights and those of other Rights holders of Books and Inserts by scanning their Books, creating an electronic database and displaying short excerpts without the permission of the copyright holders. Google denies the claims.

Today, Judge Chin was hearing statements from interested parties before deciding whether changes made to the settlement could withstand constitutional scrutiny.

The New York Times reported

“Supporters of Google’s effort to create the world’s largest digital library on the Internet told a federal judge in Manhattan on Thursday that the library would benefit society, while opponents said it would infringe on copyright protections and violate the privacy of readers.”

Chad Bray of the Wall Street Journal blog reported “Thursday, U.S. District Judge Denny Chin in Manhattan said he wants to write an opinion at a later date outlining his views, noting there have been “voluminous materials” submitted in the case.”

The Judge will have to decide whether the benefits of the Google Books Library Project outweigh the rights of copyright holders. Is the Google Books Library Project a virtual library that the general public can benefit from or a commercial way to exploit authors without adequate compensation?

Even though the parties appear to be far from settlement some believe that an approvable settlement might be achievable, by requiring rights holders to opt in to the settlement. Amazon, Microsoft and Yahoo oppose the Google settlement.

There is an administration website for the Google Book Search Copyright Class Action Settlement. The site has a claim form for copyright holders to claim a Cash Payment for Books or Inserts digitized by Google on or before May 5, 2009 that must be submitted March 31, 2011 (extended from January 5, 2010). Although there is no absolute deadline to file an Amended Settlement Claim Form.

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I got the opportunity to be a guest on the "On Target" radio talk show hosted by Judge Penny Wolfgang on Buffalo Entercon Radio (WWKB, WWWS, WLKK, WKSE, WTSS).

I really had a great time in the studio recording the half-hour discussion about IP Law. Penny Wolfgang is truly a marvelous interviewer and host. I think she could make any topic interesting. We discussed many of the things an inventor should be aware of regarding patent, trademark and copyright law.

I have to share with you my experience walking into the studio, I ran into a great ambassador for Buffalo, my friend, classmate from St. Joe's high school and now client, the Buffalo "Wing King" Drew Cerza.

As we're walking into the studio we met and shook hands and said, "What are you doing here?" And we both answered, "I am here to do a radio talk show with Penny Wolfgang." Each of us thought maybe we wrote down the wrong day that we were supposed to be a guest on the show. As it turns out two shows were scheduled to be recorded back-to-back. We had a good laugh.

Since Drew's interview was recorded first I got a great opportunity to listen to the President of the Buffalo Niagara Convention & Visitors Bureau talk about all the great things that are happening in Buffalo today. I couldn't help thinking that what makes a place great are the people who live there and people like Penny Wolfgang and Drew Cerza certainly make Western New York a better place to live.

Drew is no stranger to protecting his intellectual property rights. He has registered his mark for the National Buffalo Wing Festival, National Hamburger Festival and his moniker known by one and all across the country the "Wing King.

For specific times on when Penny's show airs, see after the jump.

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