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

Dear Rich: Is it possible to patent a method of sale for a product component? For example, let's say cigarettes existed but nobody had ever separately sold cigarette filters and papers. Would a system for selling such product components be patentable? This may be a bad example, but what I'm trying to find out is whether I could patent the way a particular product is sold by breaking it into separate parts and giving the consumer a more tailored choice. I'm so glad you asked. The short answer is 'probably not,' and yes, your analogy as to the novelty of component sales of filters and cigarette papers may not be a good one.The Dear Rich staff consulted with patent attorney David Pressman, who said that since the method doesn't transform physically and is not tied to technology, it would not qualify as patentable subject matter. The Federal Circuit, a federal appeals court for patents, is currently considering In re Bilski, a case that could affect your situation. Bilski is a dispute over whether a computer model that assesses risks for hedge funds (how timely) is patentable. The USPTO held that the process was not patentable because it is not tied to a particular machine, nor does it transform a tangible article to a different state. If the Federal Circuit upholds this standard, your process claim (and many other business methods) will not be considered as patentable subject matter. If the Bilski case is reversed (it can be appealed to the Supreme Court), your process is novel, and it provides a new and unexpected result, it may be patentable.

Dear Rich: I have a question. Why should I care about the Harry Potter case? Isn't it just another example of a huge megacorp using copyright law to crush the little guy? I'm so glad you asked. I don't know why you should care about the Harry Potter case. And I don't know why you should care enough to ask me why you should care about it. I don't even know why you should care about reading the answer to your question. What people care about and why they care about it is a mystery to me.

The Harry Potter lawsuit -- in which a publisher and author are attempting to stop publication of a Harry Potter lexicon -- is not an unusual copyright dispute. Maybe you're too young to remember when J.D. Salinger successfully stopped a biographer from using his unpublished letters, or when ex-president Ford stopped The Nation from printing excerpts from his unpublished memoir. But you must be old enough to remember when the producers of the television show Twin Peaks stopped publication of a Twin Peaks guide, or when the producers of Seinfeld stopped a company from publishing a book of trivia questions about the Seinfeld television series. (Talk about being re-gifted!) In these situations, the courts have done a pretty decent job of separating those cases in which the author is being exploited (not a fair use) from those cases in which the author is being explained (fair use).

As for using copyright law to crush the little guy, that knee-jerk characterization may apply in cases of RIAA smackdowns but misses the boat here. (If anything, the little guy, armed with high-tech copying tricks, has collectively done more to crush copyright than any megacorp -- check out the many illegal Potters and the frivolous Muggles-related lawsuit.) The lexicon's author knew what was at stake when he proceeded and even insisted on an indemnity clause -- a provision that saved him from having to pay any attorney fees, damages, or court costs. (Kudos to his attorney.) Time-Warner and Rowling have been reasonable in permitting the free web-based version of the lexicon for years. The lexicon's publisher understood the realities -- the real money is made selling copyrighted units of content.

Dear Rich: I have a question. I got a cease and desist letter from a law firm and I'd like to post it on my website so the world can see what a jerk this guy is. Is that legal? I'm so glad you asked. Publishing cease and desist letters on the Internet is not uncommon and there are even searchable C&D databases (in case you need help writing one). Lawyers rarely object to the practice either because they don't want more attention, or because they're aware that they're on tenuous first amendment or fair use grounds. However, some lawyers throw caution to the wind and plunge ahead with attempts to stop republication of their C&D letters. (You can read this lawyer's original cease and desist letter (.pdf) and a well-reasoned response to it by Public Citizen (.pdf).) If faced with an overly assertive law firm, keep the following in mind:

1. Getting a certificate of copyright registration for a cease and desist letter is not very hard. The hurdles for federal registration are fairly low and a cease and desist letter may meet those standards.

2. Enforcing copyright in C&D letters is difficult because of the merger doctrine. Copyright law will not protect a work if there are a limited number of ways of expressing the underlying idea. (And how many ways are there to say cease and desist?)

3. Reproduction of letters may be permitted under fair use principles. Infringing activity is often permitted for the sake of commentary and/or criticism.

Anyway, I certainly hope nobody puts a chill on republication of C&D letters. They are a great source of amusement and sometimes a matter of national security. And, for lawyers like me, it's often the only way to get published.