Skip to main content
Kurt M Rylander

Kurt Rylander’s Answers

10 total

  • What is the best method of forming a counterclaim to a lawsuit filed against me for the distribution of counterfeit items?

    I was served with a lawsuit from a software company that claims that I have sold a lot of counterfeit software packages. It is a case of mistaken identity. I have never been involved with the distribution of counterfeit software. I have never rece...

    Kurt’s Answer

    I handle intellectual property lawsuits and am located in Vancouver, Washington.
    There have been a number of private investigator based software counterfeiting suits in this district. These cases can be difficult because the investigators are very thorough in their investigation and reports, and the companies pursuing them are acting on broad principes: that is, they care less about the particular economics of the case then about stopping counterfeiting. In other words, they are prepared to spend, and expect to spend, more than they expect to get in return. Normal case analysis does not work.
    Software counterfeiting is a very specific type of case and the law is very tangled.
    I echo the recommendations below in that you should contact an intellectual property litigation attorney for advice. So to, the clock is definitely ticking.
    One final recommendation would be to file a claim with your insurance agent. Some commercial general liability (CGL) policies cover these types of claims.
    Good luck.

    See question 
  • I am 20% shareholder of S Corp and 50% profits. Am I entitled to review business checking account and all other bookkeeping?

    The owner is filing bankrupcy and wants me to resign and sign back over the gifted 20%. I have no problem with that. However, with very little income from good sized jobs (building contractor) the past several months, I want to see the books bef...

    Kurt’s Answer

    Rights to inspect are typical in State enactments of the Model Business Corporation Act. You will need to know what State the company was incorporated under to review the appropriate enactment. For example, in Washington State's enactment of the Model Business Corporation Act (which is very typical), the right to inspect corporate records, including corporate accounting records, is clear and express (quoted in pertinent part):

    "RCW 23B.16.020 Inspection of records by shareholders.
    "(1) A shareholder of a corporation is entitled to inspect and copy, during regular business hours at the corporation's principal office, any of the records of the corporation described in RCW 23B.16.010(5) if the shareholder gives the corporation notice of the shareholder's demand at least five business days before the date on which the shareholder wishes to inspect and copy.
    "(2) A shareholder of a corporation is entitled to inspect and copy, during regular business hours at a reasonable location specified by the corporation, any of the following records of the corporation if the shareholder meets the requirements of subsection (3) of this section and gives the corporation notice of the shareholder's demand at least five business days before the date on which the shareholder wishes to inspect and copy:

    "(a) Excerpts from minutes of any meeting of the board of directors, or of any meeting of a committee of the board of directors while exercising the authority of the board of directors, minutes of any meeting of the shareholders, and records of corporate actions approved by the shareholders or board of directors or a committee thereof without a meeting, to the extent not subject to inspection under subsection (1) of this section;

    "(b) Accounting records of the corporation; and

    (c) The record of shareholders.

    "(4) The right of inspection granted by this section may not be abolished or limited by a corporation's articles of incorporation or bylaws. ...

    I would be extremely surprised if the State applicable to your situation did not have a very similar provision.

    I hope that was helpful for you.

    See question 
  • I wrote a user manual for generic mp3/mp4 players that look like the ipod nano. I called it "User Manual for the fake iPod Nano

    I wrote a user manual for generic mp3/mp4 players that look like the ipod nano. Currently thousands of these lookalikes are sold on ebay every day. They are called MP4 Players and look very similar but act different than the real thing. The user...

    Kurt’s Answer

    I agree with the previous answer.
    It appears from your question and a review of your website that you have several potential problems. First, you are using Apple's trademarks without Apple's permission, and without proper attribution. Moreover, to the extent any of the fake Ipod Nanos' infringe on software copyright or other intellectual property of Apple, you could be considered a contributory infringer. You are enabling infringement.

    See question 
  • About Priority patent filing - can subsequent filings be different?

    Hi, I don't want to hire very expensive law firms to draft my patent yet - i want to prove that my product has good performance. Can i file patent application in Thailand first in order to claim priority, so i can go to companies and talk t...

    Kurt’s Answer

    I agree with the prior answer. I write to address a different issue. You say you are "Thai", but does that mean your nationality, or your ethnicity. And if it means your nationality, do you have dual citizenship with the US. I write this because there a very strict rules about filing in the US first if you are a US citizen. Where the rules apply, you cannot file first in Thailand, or any other country, before coming to the US, without first getting a foreign filing license.

    Also, I believe Thailand has not yet formally acceded to the Patent Cooperation Treaty.

    Finally, you don't need to hire big expensive firms to get quality patent representation. Check around. Big expensive law firms only give you one thing different from small firms--big expenses.

    See question 

    Mr. Jefferson Hampton Coulter II Mr. Daniel Nathan Ballard Mr. Gordon T. Arnold Thank you for taking the time to help me with my problem. Your responses were comprehensive and very helpful, you helped me see issues I was not aware of. Thank y...

    Kurt’s Answer

    The question presupposes that you have protectable property. Have you filed for and been granted copyright registration? Have you filed for and been granted software patent protection (increasingly difficult given recent decisions)? Have you in place a formal trade secrets management and protection program and are you following that program?

    Assuming protectable property, you could consider an infringement suit if they are infringing. Are they selling any product or service in the US, or, even better, in your locale?

    If they are an actual or potential customer or working partner, you preferably would have a written agreement, drafted by an attorney who knows the specifics of your product, that specifically addresses this problem and also gives you jurisdiction in your local territory.

    Please note that this does not constitute and is not intended to constitute legal advice. For reliable legal advice, consultation in person with an attorney licensed in your jurisdiction should always be pursued.

    See question 
  • Copyright infringement

    I am a singer/song writer and have just recently left a band. They wanted to go in a direction I didn't want to go, so kicked me out. When they did, I told them I was taking all the songs I wrote with me. The lyrics I have registered with the U.S...

    Kurt’s Answer

    You should always consult with a lawyer before contemplating a legal action. Copyright law is complex. Jurisdiction for copyright infringement actions lies in Federal Court, and most if not all Federal Courts utilize electronic filing for pleadings. Representing yourself in such an action could be quite difficult.

    Whether you have a legitimate claim is another concern. Was the band incorporated or an official partnership? While you registered the songs yourself, could the band members claim you were an employee of the band, and thus the songs were work for hire making them owned by the band as a whole. Did you have a written partnership agreement where you agreed to share contributions? Even if the band was not incorporated and there was no written partnership agreement, a joint decision to act together for a business purpose, i.e., forming a band to make money through performances, could be a common law partnership and thus governed by the particular State's implementation of the Uniform Partnership Act.

    As you can see, these issues are complicated. You may have a claim. You could have difficulty representing yourself in Federal Court. You would be best served by consulting with a copyright lawyer familiar with business organizations relating to musical groups.

    See question 
  • Copyright and/or a trademark violation

    Can I alter (re-work) a copywritten logo such (Harley Davidson) and use different verbiage and then give the printed t-shirts away for free? Or perhaps ask for donations which would go to a non-profit? Could I get in trouble for that?

    Kurt’s Answer

    The short answer is that this sounds like trouble. The issue is both copyright law, which protects original expression, and trademark law, which protects source identifying media. As a general matter, trademark infringement exists when an accused infringer uses the mark of another or a mark similar to the mark of another for similar goods or services, and there is a likelihood of confusion that the owner is either the source of the goods or services or has endorsed the goods or services, or is somehow associated with the goods or services. Trademark dilution exists when an accused diluter uses the mark of another or a mark similar to the mark of another in a manner that dilutes the protectability of the mark of another--usually only applicable to famous marks, which is determined federally and/or on a State by State basis. For example, Harley-Davidson and its logos would likely be considered “famous” under any framework. Trademark tarnishment exists when an accused tarnisher uses the mark of another or a mark similar to the mark of another in a manner which tarnishes the goodwill imbued in the protectable mark of another. Copyright infringement exists when an accused infringer copies the work of another or creates a derivative work.

    Given the scenario presented, each of these legal claims appear possible and could create trouble. It is recommended that the question poser seek advice of counsel before engaging in the activities described. The fact that the activity is non-profit or charity related will not prevent liability, nor will giving away products for free.

    It will be recognized that this response is not intended to be legal advice. Legal advice is directed to particular client whom both the attorney and client understand to have created an attorney-client relationship, and considers specific facts unique to the individual client. For legal advice, a prospective client should contact an attorney licensed to practice in the geographic locale appropriate to the prospective client.

    See question 
  • Proving abandonment of common-law trademark

    subject: defense of common law infringement claim. i am using a mark on metal part that has been alleged to infringe on another's mark. Their mark is a single letter within a simple enclosure. Mine is arguably similar... I understand that the qu...

    Kurt’s Answer

    As a general matter, anyone concerned with common law trademark infringement needs to determine the common law. While there has been in some respects arguably a generic common law, the common law does develop independently in different jurisdictions. The jurisdiction one is in must be consulted to determine, among other things: (a) what constitutes proof of a protectable common law trademark--this can be a very difficult determination; (b) what constitutes infringement of a common law trademark-usually the standard is likelihood of confusion; and (c) for abandonment, what constitutes proof of abandonment--usually intent to abandon.

    As a pragmatic matter, anyone contemplating trademark litigation needs to (1) determine if they have insurance which covers the cost of the suit, including damages and the defense or offense fees, and (2) determine who has the biggest war chest/the best ability to withstand a protracted fight using IP attorneys ($$$). If the cost of fighting exceeds the cost of changing the mark, the wise business person may wish to change the mark.

    Please be aware that this answer is not intended to constitute legal advice which would require applying determinable tenets of law to particular facts unique to a specific situation.

    See question 
  • Establishing Prior Art against a 3rd Party Patent Application

    I discovered a prominent Silicon Valley company has filed a patent. What should I do if I feel I have prior art?

    Kurt’s Answer

    Take the prior art to a patent attorney. When the Silicon Valley company patent application is published, your patent attorney can file a third party submission of prior art to the Patent Office which brings it to the attention of the examiner. It is very easy to do.

    Your patent attorney can also send a copy of the prior art with a cover letter, preferably certified mail, to the patent attorney on the application for the Silicon Valley company. If that patent attorney and/or patent firm is not known, the same letter and can be sent to the CEO/General Counsel/Patent Counsel for the Silicon Valley company. Either of these should trigger a duty to disclose to the Patent Office.

    If none of these occur or are able to be completed, a request for reexamination, either ex parte or inter partes, can be filed after the patent issues. This is by far the more expensive course.

    Assuming you have a product that you believe would be covered by claims of the patent should it issue, you could seek an opinion on freedom of operation from patent counsel, and possibly design around the claims or cease the concerning use altogether.

    As another avenue, seek patent defense insurance.

    See question 
  • What is a provisional patent application and how can I file for one in New York state

    Where or how can I file for a provisional patent application at low cost? Attorney Craig Edward Kennedy mentioned about but they don't do provisional patent yet. Thanks.

    Kurt’s Answer

    Provisional patent applications can be a danger zone for non-patent attorneys to file. A provisional patent application gives the applicant priority for 365 days for only so much of an invention that is properly disclosed. An invention is only properly disclosed if the claims that are later examined, i.e., in a nonprovisional patent application, are "enabled" by the provisional patent application. "Enabled" means it explains how to make and use the invention from the perspective of one of ordinary skill in the particular field of endeavor to which the invention relates.

    The danger comes because most non-patent attorneys/non-patent agents don't know how to file a complete enabling disclosure. If that earlier priority date is needed, for a host of possible reasons, and the provisional patent application does not disclose enough to be enabling, the priority date is, to that extent, non-existent and the applicant has lost potentially valuable patent rights, possibly even all patent rights. Doing a provisional patent application correctly generally does not save on the patent attorney or patent agent fees, since the attorney or agent will be thorough. The only savings, and that for only a year, are reduced filing fees.

    The Patent Office doesn't do anything with the provisional patent application, and if a non-provisional patent application is not filed within 365 days, the application is abandoned and the priority date is lost. Provisional patent applications done cheaply are a perfect example of the adage "you get what you pay for." In this case, possibly even less then you pay for. Anyone who believes they have an invention of any value is stridently urged to contact a patent attorney, or at least a patent agent, to either file a provisional patent application for them, or at least to review the provisional patent application that will be filed.

    One advantage to a provisional patent application is that you can file more than one during the 365 day period as you come up with further modifications and improvements to your invention. These provisional applications can then be filed in one overriding nonprovisional application at the end of the 365 day period from when the first provisional patent application was filed.

    See question