white_house.jpgOrange County – In an effort to suppress Internet piracy, President Obama has announced a set of proposed bills he will be sending for Congressional approval.  The legislative proposals are designed to increase the enforcement of laws regarding intellectual property theft, specifically online piracy.

Victoria Espinel, who has been appointed by the Obama administration as the first intellectual property enforcement coordinator, submitted the Joint Strategic Plan on Intellectual Property Enforcement (Strategy).  Some of the categories outlined in the strategy include the U.S. Government’s attempts to prevent importation and use of infringing products, and working with Internet service providers, credit card companies, search engines, and others in order to secure the U.S. supply chain.  The goal of such efforts will be to limit the number of infringing products entering into the country.  The U.S. will also continue working with foreign governments to enforce intellectual property laws abroad. 

The Obama administration is also praising the Anti-Counterfeiting Trade Agreement (ACTA), a copyright treaty that it believes will help intellectual property owners and the U.S. government combat infringement.

Espinel’s proposal doesn’t make mention of the right to make fair use of copyrighted material, however there is a side note on a page that mentions the White House seeks to protect “legitimate uses of the Internet and principles of free speech and fair process.”

dvd-blue.jpgSan Diego – Reacting to a patent infringement suit filed by Sony, LG Electronics has filed its own patent infringement complaint, attempting to have sales of the PlayStation 3 banned in the United States.

The battle began in December when Sony, the Tokyo-based consumer electronics giant, filed a complaint claiming that LG’s mobile phone and Blu-ray technology infringes on seven of its patents.  LG responded by filing two complaints with the U.S. International Trade Commission, claiming that Sony’s Blu-ray drives, specifically the PS3, infringe on four of its patents for gaming consoles.  In the complaint, LG is requesting a permanent order against the “importation, marketing, advertising, demonstrating, installing, servicing, repairing, and warehousing inventory of such Accused Products for distribution, sale and/or use in the United States.”

The speculation has been that LG’s complaint is more about a vengeful retaliation because, if LG is successful limiting Sony’s imports into the United States, that would obviously deal a serious financial blow to Sony.  The International Trade Commission is researching claims from both LG and Sony and reserves the right to ban imports of any infringing products to the United States.

lips_with_smoke.jpgOrange County – What happens when a marketing department decides to try their hand at filing a patent application?  Harlequin Enterprises, better known for its woman’s fiction novels than its R&D department, has answered that question.  Recently, Harlequin filed a patent application for “The Essential Romantic Kiss.”  The application traces the history of the kiss to the Ancient Greeks, quotes from Shakespeare’s “Romeo and Juliet,” and cites Wikipedia (to the horror of teachers and professors everywhere) to espouse the benefits of kissing.  Thankfully, Harlequin has promised that if the patent is registered the kiss will be available to everyone free of charge.  Attempting to capitalize on this application, Harlequin has created the website www.patentyourkiss.com, allowing visitors to submit their own kiss diagrams and enter a contest while pictures of Harlequin book covers appear in the background.

The question that must be asked is whether filing such a patent is ethical.  Clearly, Harlequin’s patent application will have a difficult time satisfying the novelty and non-obviousness requirements of the U.S. Patent Act.  Patents are meant to be a vital tool to be used by private individuals and corporations alike to protect their ideas, not tools to be used to increase a company’s public exposure. 

As a government entity, the USPTO relies on tax payer dollars to operate and therefore tax payer dollars are being spent to support Harlequin’s marketing strategy.  Should a patent application whose goal is mere publicity and not the thoughtful protection of intellectual property result in a form of Rule 11 sanctions (monetary punishment for frivolous filings in civil litigations) against the applicant? 

Katherine Orr, VP of Public Relations for Harlequin, stated that the application is merely to “protect and preserve” the kiss. 

dog-glasses.jpgSan Diego – The American Humane Association (AHA) has threatened legal action against the producers of the academy-award winning movie “The King’s Speech”.  The film’s credits used the phrase “No animals were harmed” referring to the treatment of Corgi dogs that appeared in the movie.  According to the AHA, this is in violation of its trademark rights because it owns a certification trademark to that phase, see: No Animals Were Harmed trademark.

The animal rights group has been involved with the movie industry for years, acting as advocate for animals used in films.  It demands to be present whenever animals are being used and require advanced copies of scripts for review before permitting any animals to be involved.  The “King’s Speech”, however, never asked the group to monitor the animals in its film.

Emile Sherman, producer of the blockbuster hit, responded in a written statement by saying, “As an independent UK production we were unaware that this phrase had a certification mark and any implication that the American Humane Association was involved in our UK production was unintentional”.  In the past, the AHA has sent out cease and desist letters to film producers and distributors over use of the phrase but has yet to take anyone to court over it.

The AHA is asking the production company to remove the phrase from its credits.  Karen Rosa, vice president of the film & television unit at the AHA stated, “We are in conversation with them and hope to work something out”.  When asked whether the film can simply change the phrasing, Rosa responded, “It depends on how close the language is.  If there’s any implication of an endorsement, it could still cause confusion”.

In our opinion, “No Animals Were Harmed” is a very descriptive trademark and thus it is not that strong.  We could envision it being challenged by a movie studio in the future, but who would want the bad publicity?

bird_crow.jpgLos Angeles – A black crow is the subject of debate in an ongoing trademark dispute between alcohol-makers Jim Beam and Jose Cuervo.   

The dispute started back in the 1990’s when Jose Cuervo began labeling its bottles of tequila with an image of a black crow, which infringed on Jim Beam’s use of a crow for its Old Crow bourbon.  An agreement reached by the two companies in 1997 limited Cuervo’s use of the bird image just for its Jose Cuervo Traditional tequila.  Jim Beam agreed to not use the image for its tequila, Souza.

Things heated up again in 2002 when Cuervo began using the bird design for additional labeling on bottles of Jose Cuervo Traditional, as well as marketing materials for its entire line of tequilas.  Attorneys for Jim Beam responded to the infringement by filing a complaint in New York state supreme court in 2008 requesting that Cuervo cease use of the crow.  The complaint also asked for several million dollars in damages.

Luckily for Jim Beam, New York judge Richard Lowe III agreed that Cuervo’s actions were not only in breach but that they justified a damage award.  In a recent summary judgement ruling he stated, “Cuervo has both admitted to violating the terms of the (1997) agreement, and has failed to provide any legal support for its contention that a minor breach of contract does not entitle the non-breaching party to seek damages.” 

The judge also ruled in favor of the enforcement of the original agreement from 1997.

river-torrent.jpgOrange County – In the ongoing battle against illegal file-sharers, Google is taking steps to remove references to the word “torrent” from its search results. The search engine site announced in December that it would work towards “making copyright work better online”, and that “terms that are closely associated with piracy” would no longer populate in the auto completes for user searches.

Not surprisingly, providers for BitTorrent services are not happy with what they are calling censorship.  Some have been quick to claim that there are legitimate uses for torrents and the removal of the terms from the auto complete features are random.  One such provider, RapidShare, a popular search engine, sites concern that Google has gone too far and it will affect its users from using the site for legitimate purposes.  RapidShare’s website advertises free downloads for popular movies such as “The Green Hornet”, as well as a download to a program called “Hide my IP Address.”

As of now, illegal file-sharers are still able to search online for torrents although the search queries won’t populate in the auto complete.  It is curious to us that Google would go half way in its “torrents” related efforts.  Perhaps this is Google dipping its toe in the water, and absent a large backlash, it may be the beginning of the end of torrents related search results at Google. 

remotecontrol-inside.jpgOrange County – Microsoft is adding new fuel to the fire in its patent infringement battle with DVR pioneer TiVo.  In a recent patent infringement complaint, Microsoft is claiming that TiVo is infringing on four of its patents that date back to the mid-1990’s.  The patents are related to technologies tied to interactive television and remote interfaces.

In addition to requesting that TiVo be banned from using the technologies, Microsoft is also seeking damages and reimbursement of legal fees.  To add insult to injury, Microsoft has filed a complaint with the International Trade Commission asking that the TiVo DVR boxes and other products infringing on Microsoft’s technologies not be allowed into the United States as imports.

The recent complaint is just another layer in a long-time battle between the two companies.  The original suit, filed just over a year ago, claims that TiVo violated Microsoft patents on delivery of online programming and secure payments for downloads.   Many have commented that this suit was Microsoft’s reaction to TiVo’s suit against AT&T.  TiVo claims that AT&T ‘s U-verse technology violates its “time warp” patent.  In order to prove infringement on TiVo’s part, Microsoft sought involvement in that case since the U-verse technology is based on Microsoft’s Media Room service.

 TiVo has refused to comment on the new lawsuit.

boxing_gloves.jpgLos Angeles – Zuffa’s Ultimate Fighting Championship (UFC)  has filed a copyright infringement complaint against Justin.tv, claiming that it has not done enough to prevent pirated streams from being uploaded on its site.  Justin.tv is a website that allows users to produce and watch live streaming video. 

The complaint, filed in Nevada U.S. District Court, states, “Since its inception, Justin.tv’s members and users have employed the website and its technology as a platform to illegally distribute, stream, perform, copy or broadcast UFC live events.”  The complaint also alleges that Justin.tv has not adequately taken the steps to respond to takedown notices issued by the UFC.  Justin.tv provides an online anti-piracy filter, however the complaint claims that the filter is not always operational.

The UFC is the largest mixed martial arts promotion company in the world, and offers pay-per-view broadcasts of boxing, Brazilian Jiu-Jitsu, wrestling, Muay Thai, karate, and other styles of fight competitions.  It has suggested that Justin.tv be more proactive in preventing its users from uploading the pirated material by assigning round-the-clock employees to monitor the site and remove unauthorized streams and also use a watermark technology to compare uploads against copyrighted material.

In December 2009, UFC CEO and Chairman Lorenzo Fertitta testified in front of the United States House of Representatives that Justin.tv and other video streaming sites were profiting off of the unauthorized use of its copyrighted material.  The usual defense made by these sites is that they are protected under the Digital Millennium Copyright Act’s safe harbor provisions, which says the sites are not liable for unauthorized content being uploaded as long as they are responding to the takedown notices.

troll.jpgSan Diego – Social media website Twitter is being sued by VS Technologies for infringing on its “309 patent” which it describes as a “method and system for creating an interactive virtual community of famous people.”  Twitter’s micro logging site attracts users who want to follow every ‘Tweet’ by famous celebrities  such as Lady Gaga, Justin Bieber and Kim Kardashian.

The complaint says, “As it pertains to this lawsuit, very generally speaking, the ‘309 Patent’ discloses methods and systems for creating interactive, virtual communities of people in various fields of endeavor wherein each community member has an interactive, personal profile containing information about that member.”

VS Technologies alleges that it has been damaged by Twitter’s misconduct and is seeking monetary compensation.  Many in the tech world are calling the plaintiff a patent troll (The lawyer in this case appears to bear the same name as the patent owner).

This reminds us a little of the legal woes of Facebook CEO Mark Zuckerberg, who was sued for stealing the idea for Facebook.com.  That suit led to a $65 million settlement, so clearly there is money to be made suing social networks.

Golf-sandtrap.jpgSan Diego – TourSwing Golf LLC has filed a trademark infringement lawsuit against Callaway Golf over its “Octane” trademark.  The lawsuit, filed in U.S. District Court for the Western District of Wisconsin claims that Callaway maliciously, deliberately, and willfully stole the trademark.

Representatives for TourSwing believe that its competitor’s deliberate use of “Octane” stems from an earlier lawsuit.  In 2003, Callaway accused TourSwing for stealing its “Fusion” trademark.  Subsequently, TourSwing agreed to stop use of the name in 2004.

Soon after the “Fusion” lawsuit, TourSwing released its line of “Octane” drivers, which have been a top-selling brand for the Grafton, Wisconsin-based company.  It claims that after it agreed to stop using the “Fusion” trademark in 2004, Callaway tracked its website to make sure that in fact it was not using the mark.   In doing so, Callaway allegedly also tracked information on TourSwing product offerings and thus gained knowledge of the “Octane” trademark.

TourSwing officials claim that Callaway also gained awareness of “Octane” by having its display booth near the TourSwing booth at golf trade shows.  Callaway is currently selling the “Octane” brand under its “Diablo” line of golf clubs.  According to the complaint TourSwing states: “Purchasers of high-quality golf clubs have closely identified the “Octane” name and mark with TourSwing.  The “Octane” mark in the golf industry has become so associated with TourSwing that another company’s use of it in the golf world would create a likelihood of confusion amongst the consuming public…In fact, Callaway’s use of the “Octane” name on golf equipment already has caused actual confusion amongst members of the consuming public.”

In addition to stopping Callaway from using the trademark, TourSwing is also seeking unspecified monetary damages based on profits made from Callaway’s use of “Octane” and punitive damages “for its intentional and outrageous disregard of plaintiff’s rights and to deter similar acts in the future.”  Our advice to TourSwing on its next line of products: File a U.S. Trademark Application before ever using the trademark.  Problem solved.