Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

Who patented fire? As wildfires create terror in southern California, we "celebrate" the 171st birthday of the U.S. patent for the friction match (inventor: Alonzo Phillips), the invention that made fire portable.

Who really invented the match? The friction match was actually invented by English chemist John Walker in 1827, and the process was initially patented by another Englishman, Samuel Jones, and sold in the UK as "lucifers." Phillips improved on the process and patented his "Manufacture of Friction-Matches" ("for the Instantaneous Production of Light") in 1836 in the U.S., calling his product "locofocos."

And the match gave us? Lucifers and locofocos quickly led to the rise of smoking tobacco and the mass production of cigarettes. Using a match was a dangerous (and smelly) proposition until Carl Lundstrom of Sweden invented the first red phosphorus "safety" matches in 1855.

How do you sell a matchbook? Joshua Pusey--annoyed by the size of safety matches--invented book matches in 1889. Ironically, the product was unpopular until somebody realized you could advertise on it. (Kind of like the invention of the radio: nobody made a dime off it until they invented commercials.)

If you're looking to file a patent yourself, try Nolo's Patent Pending Now! software for filing provisional patent applications in a flash.

It was on this day in 1961 that the USPTO issued a federal trademark registration for HOT ROCKS, those hard hot cinnamon candies that caused both tooth decay and tooth fractures. Apparently the mark was later abandoned for candy. A soundalike version (Hot Rox) was later registered for nutritional supplements. That subsequent registration now stands in the way of a Texas company's 2007 attempt to resurrect the mark for candy. Apparently the federal government believes that consumers are likely to be confused between nutritional supplements and candy. Does that seem sad or have I just had too many sugar-coated vitamins?

The patent that started the Internet Business patent stampede may soon be in the public domain. The U.S. Patent and Trademark Office recently rejected 21 of 26 patent claims in Amazon's famous 1-Click patent (No. 5,960,411).

Why did the PTO come down on Amazon? Pesky prior art undid the mighty online mall. In particular the PTO cited two older patents discovered after the patent issued: one for a one-button ordering process for interactive TV (No. 5,819,034) and the other for a method of purchasing online financial transactions with a "BUY" button (No. 5,729,594).

What did Amazon end up with? Only claims 6-10 made the cut, and, according to patent gadfly and Nolo author Greg Aharonian "claims 6-8 are client-side patents, hard to enforce." However, as Greg notes, "Claim 9 still basically claims one-click processing, though, and Amazon will be appealing the rejection."

Wonder why Amazon cared about the 1-click system? Because 60-65% of shopping carts are abandoned before checkout.

To learn more about the basics of the patent process,  check out Nolo's Patents for Beginners, my book with David Pressman (Nolo).

If you've ever dreamed that your trashed pickup might someday resemble an all-terrain military vehicle, I've got good news. The 10th Circuit refused to shut down Urban Gorilla, a company that sells car kits that modify your SUV or pickup to look like a Hummer (see pic).

Who cares? General Motors (who acquired the Hummer line) sought to enjoin Urban Gorilla claiming that the appearance created by the assembled car kits infringed the Hummer's trade dress (the distinguishing design or packaging of a product).

Why did the court rule against GM? The 10th Circuit: (1) had questions about trade dress protection for the Hummer's appearance, (2) held that purchasers who spend $100K+ on an H3 were not likely to be confused by an under $10K car kit, and (3) noted that the products were inherently different (GM sells a faux-military vehicle; Urban sells a kit).

But didn't the kits dilute the Hummer trade dress? Dilution (the tarnishing or blurring of a famous trademark) has a unique standard for trade dress (thanks to a Supreme Court decision involving Victoria's Secret). To win on a dilution claim, GM had to prove actual economic harm (and it didn't).

What's next for GM? Maybe they'll go after this bumper sticker?

To learn more about all things intellectual property, check out my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference (Nolo).

Every once in a while people ask me IP questions that start with "Is it illegal to...?" Actually, that's not true at all. People rarely talk to me about IP law because they know my answers will only bring their head down. In an attempt to change that, here are five questions that people might ask me.

Is it illegal to unlock an iPhone? No, not if you're using it to connect to a wireless network other than AT&T (although you may lose certain warranty rights with Apple). If you're selling unlocked iPhones, that's going to be a legal problem. Punk copyright attorney Nilay Patel explains it better here.

Is it illegal to have Mickey Mouse tattooed on your back? Mickey is a copyrighted character and any reproduction ... blah blah blah... Okay, yes it's a violation of copyright law. It may also be excused as a fair use. In reality, Disney is unlikely to do anything about it unless you're a postal maintenance worker with 1,643 Disney characters in tats, in which case, they'll come after you and make you promise not to appear in tat magazines or make money off the exhibition.

Is it illegal to divulge the Coca Cola formula? First of all forget that legend that there are only two Coke execs who know the formula and each one only knows half of it. If you work at Coke, or you've signed an NDA with them, then you'd better not divulge any secrets. (And don't bother trying to sell it to Pepsi, either. That type of entrepreneurship will get you eight years in jail, and don't assume that Pepsi would benefit from knowing the formula, anyway.) If you learn the secret independently by chemically analyzing the Real Thing yourself (known as "reverse engineering"), you're free to post it anywhere you wish (though good luck tracking down the mysterious ingredient known as Merchandise 7X).

Is it illegal to claim copyright in artwork created using your buttocks? No, though you won't be able to stop others from using the same idea to create works similar to your "Tulip Butts" masterpiece. However, we do counsel against the practice if you are a high school art teacher in Virginia.

Is it illegal to reproduce a picture of Britney Spears and post it at your blog? I don't know; let's find out.

It wasn't until the late 20th century that somebody figured out how to put wheels on luggage so I guess I can't fault the Copyright Office for waiting until 2007 to offer "eCo," the electronic copyright application system. Actually, it's only available in a limited beta version but the results so far seem worthwhile. I played with it with fellow copyright nerd Stephen ("Public Domain") Fishman and we registered an unpublished literary work without too much problem though we crashed once, thought our data was lost, and then miraculously saw it resurrected when we logged back on.

How long did it take to file? Steve and I managed our single literary work registration - paying by credit card and uploading a digital word file - in about fifteen minutes. I'll report later about how long eCo takes to mail out a registration.

The Pros: The system has some neat features including the ability to store templates for various applicants, maintain a profile and an address book, preregister claims and manage all your open applications on one page. And hey shoppers, what about that $35 registration fee -- $10 off the regular price?

The Cons: The system is surprisingly funky in appearance, not very intuitive, and a little bit tempermental (use the "Save for Later" button periodically). All-in-all, these are the kinds of bumps that will be cured after a decent usability study. Hey, this is beta, right?

For more on how you can copyright the old fashioned way, check out Steve's great book The Copyright Handbook: What Every Writer Needs to Know (Nolo).