facebook.jpgLos Angeles – Parody site Lamebook and social networking site Facebook have reached a settlement in a trademark dispute that erupted last year.  Lamebook, a regularly updated blog that re-posts funny and lame Facebook updates, pictures, and conversations, will be allowed to retain its name but must add a disclaimer to its website stating that it is not in affiliation with Facebook.

“We are pleased to arrive at an agreement that protects Facebook’s brand and trademark and allows for Lamebook’s continued operation,” the companies said in a joint statement.  “The parties are now satisfied that users are not likely to be confused.”

As part of the settlement agreement, Lamebook has agreed not to trademark its name.  The blog allows users to submit the “funny, ridiculous, and outright crazy posts that can be found on your favorite social networking site.”

The settlement agreement resolves a legal dispute dating back to 2010, when Facebook demanded in a cease and desist letter that Lamebook stop using its name.  At the time, Facebook objected to “attempts to create brand names that trade off of Facebook’s fame.”  As the dispute heated up, Facebook vowed to diligently block all outgoing links to Lamebook.com, shut down the small company’s Facebook page, and block visitors to the funny site from ‘liking’ posts.

In response to Facebook’s cease and desist letter, Austin, Texas-based Lamebook filed a complaint against the social networking giant in U.S. District Court in the Western District Court of Texas.  Lamebook sought a decision that it doesn’t infringe on Facebook’s brand or trademark since the two are not in competition with each other.  The matter was dismissed pursuant to the agreement.

Facebook is currently in another legal battle with Teachbook.  In its complaint against the networking site for school teachers, Facebook is alleging that Teachbook’s name is likely to cause users to believe that it is “endorsed or sponsored” by Facebook.

Teachbook, seeking a dismissal of the case, claims that the only commonality it shares with Facebook is the “indistinct, generic word “book.”

cheeseburger.jpgOrange County – Officials at the Irvine, California-based In-N-Out fast-food chain have confirmed that they have filed a trademark infringement lawsuit against an alleged copycat burger joint on the east coast.

The defendant is Maryland-based Grab-N-Go Burger, which uses a red logo with a yellow streak through the letters.  Facebook photos of the restaurant portray a red and white tiled wall as the décor.  In-N-Out is claiming that the logo is a clear case of trademark infringement on its yellow boomerang marquee arrow, which has been the chain’s best-known symbol since the 1950’s.  All of the In-N-Out restaurants are decorated with red and white tiled walls and seating.

“Since our inception in 1948, we have worked hard to develop the unique look and feel of our restaurants,” an attorney for the famous burger chain stated.  “Consumers have come to associate our ‘In-N-Out’ name, yellow arrow, long-standing colors, restaurant décor, menu design, and unique menu items, such as ‘Animal Style’ burgers, with the highest in food quality and freshness.  We will always vigorously defend our trademarks and trade dress against any and all copycats and imitators but, as in every case, we also look for friendly resolutions with all parties.”

In addition to the similarities in the logo and restaurant décor, In-N-Out has expressed concern with Grab-N-Go’s ‘Wild Style’ burger, citing that it is a knockoff of its famous ‘Animal Style’ burger, a mustard-cooked beef patty with additional pickles, cheese, spread, and grilled onions diced up and mixed together on the grill before being put on the burger.

In-N-Out, which has prided itself on its simplicity with its limited but awesome menu, is anything but simple when it comes to protecting its intellectual property.  In 2000, it sued Texas-based Whataburger for selling a trademark-infringing ‘Double Double’ burger.  The following year, In-N-Out took action against Lightening Burgers in Arlington, Texas of fast-food “espionage” for using information from former In-N-Out employees to copy the chains famous menu and look.  In 2007, Utah-based Chadder’s began selling ‘Animal Style’ burgers while copying everything from the color scheme to the employees’ uniforms. 

In-N-Out was victorious in all of the cases.

ipad-iphone.jpgSan Diego – Samsung is getting creative in its defense in a patent infringement dispute with Apple.  It is using scenes from the 1968 Stanley Kubrick film, 2001: A Space Odyssey.

Last month, Apple filed a motion for a preliminary injunction to stop Samsung from selling its Galaxy Tablet and some smartphones based on patents that Apple holds.  Samsung responded with an opposition brief using an image taken from the Kubrick film. 

The image from the film depicts the characters using tablet-like devices, which Samsung lawyers are hoping will prove that designs for the iPad and iPhone were established long before Apple filed patents for them.

“In a clip from that film lasting about one minute, two astronauts are eating and at the same time using personal tablet computers,” reads the explanation for the exhibit.  “The tablet disclosed in the clip has an overall rectangular shape with a dominant display screen, narrow borders, a predominantly flat front surface, a flat back surface (which is evident because the tablets are lying flat on the table’s surface), and a thin form factor.

Samsung is relying on this “prior art” to invalidate Apple’s iPad patents.  Prior art, also know as state of the art or background art, consists of all information that has been made public in any form before a given date that might be relevant to a patent’s claims of originality.  If an invention has been demonstrated in prior art, a patent on that invention could be proved invalid.

It will be interesting to see what the judge thinks of Samsung’s defense tactics.  If successful, the Star Trek series could also be fertile ground for prior art – think sliding doors, wireless earpieces, portable memory, voice activated computers, etc. 

hockey.jpgLos Angeles – A Brooklyn heavy metal band is suing the New Jersey Devils for $10 million in a copyright infringement case over a song.  Rob Traynor, lead singer of Black Water Rising is claiming that the professional hockey team used one of the band’s songs in a video without authorization.  The lawsuit was filed after the Devils refused to pay the band for use of the song, “Rise.”

In a statement from the attorney representing the band, he said the Devils “are stubbornly stuck on offering an insultingly small amount of money to settle the case.” 

According to details in a statement released by Traynor, the alleged infringement took place in September 2010.  Traynor was informed via text message by a friend attending a Devils game that the hockey team was using the band’s song, “Rise” as their entrance/introduction music.  Traynor then investigated the matter by posting the news on Facebook, which led to many responses from Devils fans claiming that they too had witnessed the song being played.

It seemed that “Rise” was the song of choice for the hockey team in its 2010-2011 “Devil’s Army Rise Up!” campaign to create energy and excitement with the fans.  Traynor admits that the band was flattered to hear that its song had been chosen but also very shocked since the band had not been contacted for its permission.  After further investigation, Traynor discovered that “Rise” was not only being played at New Jersey Devils hockey games, but also in a video on the Devils website used to promote the team.

An organization known as ASCAP (American Society of Composers, Authors and Publishers) serves as the middle man between musicians and organizations by licensing music and collecting royalties owed to the musicians.  Most of the organizations that use ASCAP hold “blanket licenses” which cover just about every public use of ASCAP-licensed music.  The claim from the band is that the blanket license doesn’t cover use of the song and that the Devils must hold a “sync license” to use the song in a pre-game pump-up video for the fans.  Any videos on the team’s website with use of the song, have since been removed.

ipad-iphone.jpgSan Diego – In its ongoing efforts to trounce trademark infringement, Apple is suing two sellers of knockoff Apple accessories that are based in the New York borough of Flushing, Queens.

Apple is accusing the defendants, Apple Story and Fun Zone, of selling unauthorized iPod, iPhone, and iPad accessories which are illegally branded with Apple’s logo and signature markings along with phrases found on genuine Apple products including “Designed by Apple in California.  Assembled in China.”  Both operations accused of the infringement are owned by New York City resident Janie Po Chiang.

In an undercover attempt to catch the counterfeiters, Apple reportedly sent representatives to the businesses in question, where they purchased an assortment of unauthorized accessories.  Among the accessories that were acquired were stereo headsets in packaging that was almost identical to the original packaging from Apple.

The case, originally filed on July25, was not made public until today due to a U.S. trademark counterfeiting law that allows a plaintiff to initially file a trademark infringement complaint under seal, so the alleged counterfeiters will not be alerted to the case before the infringed products have been seized.

U.S. District Judge Kiyo Matsumoto allowed Apple’s preliminary injunction and ordered both stores to stop selling the counterfeited goods.  Apple also asked the judge to order Apple Story to change its name so that it would not cause confusion among consumers, however the judge has yet to issue an order on that.  Quite possibly, Apple’s most crucial victory was that it was granted access to the defendants’ business email accounts where it can find evidence of individuals and businesses that have bought or sold the illegal products. 

Apple, having surpassed Exxon to become the most valuable company in the world, has also been trying to shutdown fake Apple stores in China, one of its most promising markets.

creditcard2.jpgLos Angeles – A federal appeals court has upheld an earlier decision from a U.S. District Court, which found that the Minneapolis-based Fair Isaac Corporation’s (FICO) trademark was not infringed on by a competitor.  In addition to reaffirming the lower court’s ruling, the federal court ordered the United States Patent and Trademark Office to cancel the FICO trademark.

The case began in 2006 when FICO alleged the joint credit-scoring system offered by Stamford, Connecticut-based VantageScore Solutions, LLC was too similar to its own and violated one of its trademarks.  In November 2009, FICO lost its original trademark lawsuit when a jury found that VantageScore’s 501-990 credit-score range was not confusingly similar to FICO’s credit-scoring range of 300-850. 

After its defeat, FICO immediately sought a re-trial, which was denied by a U.S. District Judge in May 2010.  As a result of the original decision being upheld, the order to cancel FICO’s 300-850 trademark registration will remain intact, according to VantageScore.

When asked to comment on the decision, FICO indicated that it believes the court’s ruling will have very little impact on its business.  “These lookalike scores can differ significantly from a consumer’s actual FICO score, misleading consumers into believing they have higher or lower FICO scores than actually is the case,” a FICO spokesperson told a Minneapolis newspaper.  “As recent economic events have demonstrated, consumers need clarity about their own creditworthiness now more than ever.”

As Minnesota’s 40th-largest company, FICO reported revenue of $605.6 million for the fiscal year that ended in September 2010.

music.jpgSan Diego – Major music labels achieved a major victory in the copyright wars when, in May, Limewire agreed to pay $105 million to settle a copyright infringement suit.  As federal copyright laws have become much stricter and the entertainment industry much more litigious against infringement, many saw this victory as an end of a decade-long era of the illegal piracy of music on peer-to-peer online networks.

The copyright war, however, is not over for the music industry.  A new threat has reared itself to record labels, forcing them to shift their attention to the new, cloud-based “music-locker” services currently offered by Apple, Amazon, and Google.  The new cloud services have been created for users of smartphones and other mobile media devices.  Users will have the ability to upload their digital music files to remote Web services for immediate access anytime, anywhere and on any device.

The RIAA (Recording Industry Association of America) has responded by claiming that the new cloud-based model still requires the copying of copyrighted content, which will require valid licenses.  Unconvinced that the cloud services will prevent users from illegally swapping music, RIAA general counsel Steven Marks stated, “For some services, the term ‘cyber-locker’ is a misnomer because the content is not locked.  These services have the potential to become hubs for illegal distribution.”

Electronic Frontier Foundation’s intellectual property directory Corynne McSherry disagreed, stating, “You don’t need a license for simply providing storage for people to upload their music.”  She added, “That’s silly.  They [RIAA] want to wring every possible cent out of every reproduction of music.  That’s listening to your lawyers and not your business people.”

While Amazon and Google both unveiled their cloud services without the blessing of the music industry, Apple took a different approach.  While Amazon’s Cloud Drive and Google’s Music Beta require users to upload files manually in a time-consuming process, the Apple iCloud scans the music files on a user’s computer and, for those it recognizes, grants the user access to identical copies stored in Apple’s central database.  Unrecognized files can be uploaded to an iCloud server. 

Apple didn’t announce its new service until June, after negotiating deals with the four biggest record labels that will give them a combined 70 percent of revenue generated from iCloud.  The service costs $24.95 for unlimited storage.  The RIAA has acknowledged the fact that iCloud has created a more user-friendly service that will attempt to compensate music-makers for their copyrighted work, however it maintains that Apple needs a license because it is making copies of music for its central database.

The major music labels have not commented on whether they plan on filing a complaint against Amazon and Google over the cloud services.  A top executive with one label who wished to remain anonymous, said that he predicts that Amazon will negotiate a licensing deal so that it can offer a scan-and-match service similar to Apple’s.  Google is also reportedly in talks over a licensing deal.

cellphones.jpgLos Angeles – Microsoft was recently awarded a design patent for the slider design on smartphones that Nokia may use to create unique devices.  Unlike the usual slider phone designs, the new patent is for a phone that allows the keyboard to sit flush with the screen when opened, which would allow users to type more comfortably.

Though seemingly irrelevant compared to the billions of dollars at stake in the technology patent wars or the bidding wars for portfolios containing thousands of patents, Microsoft’s new slider design patent could become invaluable with its new partnership with smartphone-maker Nokia.  The partnership, announced earlier this year, will allow Nokia to make Windows Phone its primary operating system. 

Having lost its dominance in the smartphone industry, Nokia is relying on Microsoft’s technology platform to give it a needed boost.  Likewise, Microsoft is looking to Nokia to help it carve out its share of a mobile phone market which is currently dominated by Apple and Google. 

Nokia, experienced at manufacturing phone handsets, may potentially utilize Microsoft’s new patent to produce a slider phone that other companies cannot compete with.  Apple, with the lion’s share of the smartphone market, has decided to discontinue use of buttons in favor of a full touch screen approach, however there are still a lot of users who prefer using the buttons to type.  If Nokia is successful at creating the unique new slider phone, then Microsoft can offer a smartphone that will appeal to those users.

As Microsoft attempts to break into the smartphone market, it shouldn’t consider any patent victory too small.  With consumers always shopping around for the “next best thing” on the market, producing a successful line of slider phones through Nokia could be a nice advantage for a company that currently has limited involvement in the smartphone market. 

target_aim.jpgSan Diego – Copyright Enforcement Group (CEG) has announced its plans to launch a comprehensive takedown service targeting websites committing Internet piracy.  The websites that will be the focus of this new service to deter copyright infringement include Rapidshare, Cyberlockers, User Generated Content (UGC), Direct Download, Tube, Streaming, Auction, and other Unauthorized Distributor and/or Reseller Websites by the end of the year. 

The service, called WWW Takedown, will provide the same monitoring and validation processes as CEG’s existing P2P Collect and WWW Collect services.  Under the new service, acts of infringement will be traced and calculated by CEG’s proprietary systems and global network of servers before passing a stringent multi-level validation process involving steps such as fingerprinting and visual human authentication to eliminate false positives.

Automated daily reports will be emailed to copyright owners, who will have access every day of the year to a web-based client portal that will provide statistical information and real-time piracy data.  WWW Takedown will be provided to copyright owners at no charge who submit their entire catalog of copyright titles with CEG exclusively for global monitoring and monetization services.  The service will also be available for a small monthly fee to clients who don’t wish to provide their entire copyright catalog.

The Copyright Enforcement Group (CEG) is the leading provider of intellectual property protection and recovery services.  Its protection and monetization services cover all types of content including audio, video, logo, image, trademark and text across P2P networks, user-generated content sites, and other infringing sites.  CEG’s services are designed to assist intellectual property owners with maximizing content coverage, reduce infringements, and generate revenues that otherwise would have been lost to digital piracy.

kayak.jpgLos Angeles – Outdoor clothing retailer Eddie Bauer is the defendant in a trademark lawsuit filed by First Descents.  The Colorado-based non-profit is accusing Bauer of trademark infringement for the similarity of its brand names, First Ascent and First Descent.

First Descents was founded in 2001 by professional kayaker Brad Ludden, to help young adults with cancer experience whitewater kayaking.  Since then, the organization has expanded to include activities such as surfing and rock climbing.  First Descents obtained common law trademark rights in 2001 when it was a regional organization.  In September 2008, the non-profit filed to trademark its new camp apparel, citing first use in 2001.  The United States Patent and Trademark Office suspended the application as a result of the trademark applications filed by Eddie Bauer just months before.

The following year, Bauer launched First Ascent, a line of technical apparel, co-designed by ski and mountain experts.  Shortly after the launch of Bauer’s new line, First Descents, Inc. claimed there was consumer confusion.  In a press release from First Descents, it stated: “When Eddie Bauer launched its ‘First Ascent’ and ‘First Descent’ product lines, and began marketing efforts at the same events where we had an established presence, our ability to distinguish our organization and its First Descents outdoor adventure therapy programs was lost.”

Seattle-based Eddie Bauer is claiming it has had exclusive rights to the First Ascent trademark since 1988, long before the existence of First Descents, Inc..  Registration of the trademark was granted to Bauer earlier this year.

“We were surprised and disappointed by the lawsuit and press releases from First Descents, Inc.,” read from a statement from Bauer.  “We fully support First Descents as a non-profit organization and we want them to be successful in their mission…We are interested in resolving this in a manner that is satisfactory for both parties.”