purse.jpgLos Angeles – Chanel Inc. has filed a trademark infringement and cyber piracy lawsuit in Nevada against hundreds of website operators for allegedly selling counterfeit products which contain the Chanel name and logo.  The complaint names defendants in China, the Bahamas, and other countries in which counterfeit products are a problem.

Besides seeking damages, Chanel’s lawsuit requests that certain website domain names be disabled or seized.  For more information, click here: Chanel Files Trademark Infringement Lawsuit.

USPTO Image.jpgLos Angeles – Last week, President Obama signed a new patent reform bill called the America Invents Act into legislation which passed in the Senate by a large bipartisan majority vote, 89-9.  The rare occasion that both political parties agree on anything would be reason to celebrate, however, in this case, individual inventors and entrepreneurs did anything but that.

Those opposing the new law argue that it will undermine the very things that have given America its economic power and uniqueness: technology and entrepreneurship.  By far the biggest threat to small businesses is the change from the First to Invent System to the First to File System (FTF).  Under the FTF system, the rights to a patent for a given invention belong to the first person to file a patent application, regardless of the date of actual invention.  This major change was adopted under the new law in order for the U.S. to be in line with the patent laws of other countries.

The problem with the FTF system, its opponents claim, is that it will create a race to the finish line, with those companies that have the deepest pockets getting there first.  Typically, in order for an entrepreneur or inventor to pursue an invention, they first must get investors to believe in their idea.  Under the FTF system, these ideas can easily be stolen by larger companies that have the funds to file for patent protection immediately. 

Opponents have also been quick to bring up the fact that although Canada and Europe have been operating under the FTF rules, it doesn’t mean that it has been wildly successful.  In 2009, a European research organization published a study titled “Lost Property: The European patent system and why it doesn’t work,” which highlighted the fact that the European nations are falling far behind in innovation due to their patent laws.

Only time will tell how the America Invents Act will affect small businesses and independent inventors.  One possibility that could lessen the blow of the FTF system is a tiered fee system based on the size of a business to make filing fees more affordable for entrepreneurs.  Regardless, it has been and will continue to be extremely important for entreprenuers to file for patent protection as soon as possible.

 

remotecontrol.jpgSan Diego – A jury trial for a patent infringement lawsuit that TiVo has filed against AT&T and its U-verse TV platform has been delayed until January.  TiVo initially filed the complaint in 2009  over patents relating to DVR technologies.  The complaint seeks damages for past infringement and a permanent injunction against AT&T.

The delay in the trial could possibly give the two companies more time to reach a settlement involving allegations that the DVR that AT&T deploys in U-verse homes violates patents owned by TiVo.  The three patents at issue describe a “Multimedia Time Warping System,” a “System for Time Shifting Multimedia Content Streams,” and an “Automatic Playback Overshoot Correction System.” 

Back in May, a judge reached a $500 million verdict in favor of TiVo from an ongoing patent infringement lawsuit with EcoStar and Dish Network after TiVo attorneys convinced the court that the two companies had continued to replicate the Time Warp functionality in their set-top boxes. 

TiVo CEO Tom Rogers said that the Dish Network settlement increased the value of TiVo’s patent portfolio.  He stated, “There’s just no doubt that successful litigation improves the value of a patent portfolio.  And so battle-tested patents, we think, improve the value of the patent portfolio more than simply the quantity of patents that might be out there.”

twitter.jpgLos Angeles – Social blogging network Twitter has filed a trademark infringement complaint in a San Francisco district court against Twittad over the use of the trademark ‘tweet.’  Twittad is currently the largest advertising platform operating on Twitter. 

Twitter, the micro-blogging service that allows users to post messages called Tweets, has long been trying to register ‘tweet’ as a trademark, however the third-party Twittad beat it to the punch when it registered the slogan “Let your ad meet tweets” in 2009.  Just last week, Twitter filed its lawsuit with Twittad with the hopes that it would force the company to give up rights to the trademarked slogan.

In the past, Twitter has been quite lenient with those who use the word ‘tweet.’  Clearly, at the time it published its guidelines regarding the use of its intellectual property, it didn’t realize the future impact that ‘tweet’ would have.  Although, late in the game of attempting to register the trademark, Twitter most likely deserves to have exclusive rights to the trademark since it is responsible for the origin of the word in the first place.  However, Twitter would have to show that it actually used “Tweet” as a trademark in relation to the goods or services prior to all other users.

Allegations from the Twitter complaint read:

“Defendant’s LET YOUR AD MEET TWEETS registration unfairly exploits the widespread association by the consuming public of the trademark TWEET with Twitter, and threatens to block Twitter from its registration and legitimate use of its own trademark.  In fact, it appears that Defendant has used LET YOUR AD MEET TWEETS solely as a generic phrase to refer advertising in connection with Twitter itself, and as such it is incapable of serving as a trademark, rendering the registration subject to cancellation on that ground.”

Twitter went on to say that it had placed a “considerable investment” in the word ‘tweet’ and that prior to the company’s launch in 2006, ‘tweet’ was only associated with ‘birdsong’ but since then it has become “widely adopted by consumers and media outlets to refer to Twitter.”

Interestingly, Twittad sells advertising on Twitter by connecting advertisers that are willing to pay per tweet to users who fit its demographic requirements that are willing to be paid to “tweet” sponsored ads.  This happens to conflict directly with Twitter’s own Promoted Tweets advertising product, which is most likely the motivation of the lawsuit.

books-stack.jpgSan Diego – Published authors from the United States, Britain, Australia, and Canada are suing five American universities for allegedly “engaging in one of the largest copyright infringements in history.”  The writers claim that the universities planned to digitize out of print books and provide them online to students.

The Authors Guild and the Australian Society of Authors were among groups joining eight individual authors to file the lawsuit on Monday in a Manhattan district court.  The University of Michigan, the University of California, the University of Wisconsin, Indiana University, and Cornell are accused of pooling the unauthorized scans of an estimated seven million copyright-protected books, which they allegedly obtained from Google.  Apparently, the digitized files were being stored in a repository organized by the University of Michigan.

“This is an upsetting and outrageous attempt to dismiss authors’ rights,” stated Angelo Loukakis, executive director of the Australian Society of Authors.  “This group of American universities has no authority to decide whether, when or how authors forfeit their copyright protection.  These aren’t orphaned books, they’re abducted books.” he added.  With out of print books, also know as orphan works, it is difficult to locate the writers, making them prime targets for copyright theft.

According to Paul Courant, the University of Michigan’s dean of libraries, said the digital library project called the HathiTrust, planned to make books available online to staff and students this Fall.  He added that the university had been in recent discussions with the Authors Guild and was surprised by the allegations.

Courant stated, “I’m confident that everything we’re doing and everything we’re contemplating doing is lawful use of these works.”

The first set of the orphaned books, 27 works by French, Russian, and American authors is scheduled to be released to an estimated 250,000 students and faculty members on October 13th.  In November, an additional 140 books, including works in Spanish, Yiddish, French, and Russian are planned for release. 

Authors have been in a long-running battle with Google over its plans to create a massive online library to include out of print books.  After the Authors Guild reached an agreement with Google over a copyright infringement claim in 2008, a New York judge rejected the settlement after objections were made by consumer watchdog groups, academic experts, literary agents, and foreign governments. 

Another hearing in that case is expected this week.

clouds-desert.jpgLos Angeles – iCloud Communications has dropped a trademark infringement lawsuit against Apple’s iCloud.  There was no public comment available but the most likely reason was that the Phoenix, Arizona communications company was no match for Apple’s legal forces.  In addition to dropping the suit, iCloud Communications appears to be operating under a new name.

The trademark infringement lawsuit was filed after the 2011 Worldwide Developers Conference where Apple announced its new iCloud storage and syncing service to replace MobileMe.  The Arizona-based iCloud argued that its name and trademarks had been in use since 2005.  Like Apple, it provides VoIP solutions for business and residential customers along with other cloud-based services.  iCloud Communications claims to have spent more than $550,000 building up its data center and telecommunications hub in Phoenix and tens of thousands of dollars in advertisements using its own iCloud logos.

In spending large sums of money to promote its business, the one thing iCloud Communications didn’t do was register the trademark with the United States Patent and Trademark Office (USPTO).  Apple, however, is the owner of the iCloud trademark which did not help the case for iCloud Communications.

Three months after filing the complaint, iCloud Communications has filed for voluntary dismissal of the case, asking for dismissal with prejudice, meaning it cannot refile the suit.  To further demonstrate Apple’s strong arm with the USPTO, iCloud Communications recently updated its Facebook page noting, “iCloud is now Clear Digital Communications,” and the profile’s photo shows a sign that reads “Phoenix Soft” above the company’s former name.

Furthermore, iCloud Communication’s former domain no longer has a website associated with it. 

concert.jpgSan Diego – Iconic pop star Madonna has successfully made a name for herself as the ‘Material Girl.’  If we take a trip down memory lane, we fondly recall how the Queen of Pop coined the phrase in her classic 1985 song and video of herself emulating Marilyn Monroe.  The ‘Material Girl’ nickname managed to stick through years of image transformations.  However, it is now the subject of a trademark infringement lawsuit.

When Madonna launched her clothing line in 2010, it was inevitable that she would name the label ‘Material Girl.’  The problem arose when a California apparel company called L.A. Triumph claimed that it owned the rights to the trademarked phrase.  Reportedly, its predecessor company had registered the trademark in California and sold clothing under the ‘Material Girl’ label from 1997-2003.  In August 2010, a lawyer for the Los Angeles clothier filed a trademark infringement complaint against Madonna and her company, asking for a declaratory judgment that it has exclusive rights to the ‘Material Girl’ name.

Lawyers representing Madonna were able to get the pop diva dismissed from the case in November 2010, however, Los Angeles federal judge S. James Otero ruled that claims against her clothing company could proceed.  Madonna lawyers then asked for a summary judgment on the grounds that Madonna had created the ‘Material Girl’ trademark when she released the song in 1985 and performed it for audiences all over the world.  In addition to creating the phrase, her lawyers insisted that she had also used it on merchandise for more than twenty years, long before L.A. Triumph had ever used the trademark.

Just last week, Judge Otero denied the motion for summary judgment and wrote in a seven-page decision, “The singing of a song does not create a trademark.  Defendants cannot establish, as a matter of law, that Madonna was the senior trademark user because of her ‘Material Girl’ performances.”  Additionally, the judge also ruled that her use of the phrase on concert merchandise did not give her exclusive rights, because Madonna witnesses gave contradictory statements regarding the timeline of when she began using the phrase on clothing labels.

Regardless of the fact that L.A. Triumph’s predecessor allowed the trademark registration to lapse, Jude Otero indicated that the question of trademark rights for ‘Material Girl’ would be decided by the jury.  In the meantime, Madonna may want to consider using one of her other clever phrases on her clothing label.

mlk.jpgLos Angeles – The late civil rights activist Martin Luther King, Jr. made his momentous “I Have a Dream” speech on Washington Mall forty eight years ago this week.  For those people too young to have been there, many would turn to YouTube with hopes to view the historical oration about Dr. King’s pursuit for racial equality.  But you won’t find the recorded speech on YouTube or anywhere else.  The speech is copyrighted content and rights to its usage remain with the King family.

Usually, a speech that is broadcast to a large audience on radio and television, especially one that is considered crucial to historic political change and one of the most memorable speeches of modern times, would be available to the public domain.  Soon after Dr. King made the speech in 1963, he applied for and was granted federal copyright protection for the speech under the Copyright Law of 1909.  He then successfully sued Mister Maestro Inc. and Twentieth Century Fox Records to stop their unauthorized sale of recordings of the famous speech. 

Fast-forward to 1995, twenty-seven years after Dr. King’s untimely death, to the “20th Century with Mike Wallace,” an hour-long series that takes a look back at some of the most historical events of that century.  Dr. King’s estate sued CBS for copyright infringement, claiming that a portion of King’s speech used in the documentary was taken without permission or any royalties paid. 

In 1999, a judge ruled against CBS’s defense that the speech was available in the public domain on the grounds that a public oration did not constitute general publication no matter how large the audience was.  Apparently, CBS was not alone in the confusion over general vs. limited publication and fair use laws.  In 1994, USA Today paid the King estate $10,000 in attorneys fees and court costs plus a $1,700 licensing fee after publishing the full speech without authorization.  CBS reportedly settled with the family for an undisclosed sum.

One crucial fact supporting the King family’s copyright claims was that although Dr. King himself had obtained a copyright registration on the speech a month after delivering it, his original claim against Mister Maestro was deemed valid since no “tangible” copy of the speech had been distributed before he had made his claim (as based on the copyright law from 1909).

Various excerpts and remixes of “I Have a Dream” can still be used under fair use laws.  However, any recorded versions are hard to come by.  At thekingcenter.org, the family’s website, video and audio recordings of the speech are available for sale.  The King family will retain copyright privileges of the speech until 2038, seventy years after King’s death.

iphone-apps.jpgSan Diego – The Industrial Technology Research Institute (ITRI), Taiwan’s top industrial research organization, is planning to adopt three main strategies to assist smartphone maker HTC Corp and other Taiwanese IT firms in defending themselves in international patent lawsuits.

As its first step in its campaign to provide new legal strategies for local high-tech businesses, ITRI plans to raise at least $3.45 million by the end of this year. 

The three proposed strategies include assisting Taiwanese firms in obtaining international patent rights, fighting for the invalidation of competitor patents, and changing the legal playing field from the United States to China.  ITRI officials stated that nearly thirty percent of patents challenged in infringement lawsuits were found to be invalid in the U.S. and that filing invalidation lawsuits could prove to be a more practical and economical approach than buying patents.

As for moving the patent battleground to China, ITRI expressed their opinion that this would be the most advantageous move for Taiwanese firms that have invested heavily in the Chinese markets.  The fact that having patents registered in China at only one tenth of the cost they would be in the U.S. makes it economically attractive to Taiwan.  ITRI officials claim that patent litigation has become a common corporate business strategy used by large companies to expand market share and hinder the advances of competitors, as in the case of Apple vs. HTC.

By obtaining patents in China, Taiwanese businesses would be able to block the sale of competing products that violate such patents, leading to increased market share for Taiwanese companies in China, all in the efforts of reinforcing its global position.

Founded in 1973, ITRI was organized to bolster Taiwan’s economy by replacing labor-intensive industries with technology-driven industries.  Not only is it Taiwan’s largest applied technology R&D institution, but ITRI is also credited as being a pioneer in developing Taiwan’s semiconductor industry. 

ITRI emphasized that it will not be utilizing state money to fund the campaign and that it will be collecting an annual fee from local companies to continue its efforts.

motorcycle-harley-body.jpgLos Angeles – A Los Angeles fashion house retailer has recently been faced with some hell on wheels, so to speak.  Design company, Wildfox Couture is being sued by the Hells Angels for alleged copyright infringement over the unauthorized use of its name on a t-shirt.

The woman’s t-shirt, a cotton crew neck tee, reads: “My Boyfriend’s A Hells Angel,” and sells online for $60.00.  The copyright infringement complaint is accusing the designer of “exploiting the fame” (or in this case, notoriety) of the world-known motorcycle club.  Amazon.com and other online retailers are also being named in the lawsuit for selling the t-shirts.

The lawyer filing the lawsuit on behalf of  the intimidating biker group explained that even “the club itself does not put ‘Hells Angels’ on shirts they sell to the general public” and that the goal of the lawsuit is to “get them off the market, sequester them and have them destroyed.” 

As with many motorcycle clubs, the club has a Hells Angels trademark on its name and logo.  The gang’s insignia or patch, worn on the back of a black leather vest, depicts a white banner with red lettering that says ‘Hells Angels’ across the top and the name of the Charter’s location at the bottom.  The centered logo is called the ‘Death head’ and has a small square with the letters MC, which stands for Motorcycle Club.  The Hells Angels insist they are indeed a motorcycle club, and not a gang.

Wildfox is not the first to be in the tracks of the proud bikers.  Last year, the Hells Angels Motorcycle Corporation sued fashion house Alexander McQueen for trademark infringement after its clothing featured motifs similar to the winged death head design.  The lawsuit against McQueen cited four different products, including a $1,500 ‘Hells Angels’ jacquard box dress, a $500 knuckle-duster ring, a scarf and a handbag which were created shortly before the designer’s suicide in February 2010.  Saks Fifth Avenue and online retailer Zappos.com were also named in the lawsuit for selling the apparel and accessories.

Remarks from the McQueen complaint read, “From decades of notoriety, the HAMC trademarks have acquired very widespread public recognition, consequently, they evoke very strong and immediate reactions whenever used.  The impact of these trademarks is virtually incomparable, and as a result they have great commercial value.”  The McQueen lawsuit was settled and no similar designs have been made by the London fashion house.

No comment was available from Wildfox Couture, however it appears that the t-shirt has been removed from its website as well as from Amazon.com.