cell-phone.jpgSan Diego – The United States International Trade Commission has promised to investigate Smartphone-maker HTC, for the alleged patent infringement claims made by Apple.  Results from the investigation may prompt a ban on sales of HTC products such as the HTC Flyer, Droid Incredible, Wildfire, and EVO 4G.

“The products at issue in this investigation are hardware and software used in a variety of portable electronic devices, including mobile communication equipment,” an ITC spokesperson said.  “The complainant (Apple) requests that the USITC issue and exclusion order and cease and desist orders.”

Unlike the federal courts, the ITC is authorized to ban imports during the time it is conducting an investigation, while the courts are only able to do so after granting an injunction or if the defendant is found guilty of infringement, which can take years.  In addition to banning imported products to be unloaded at the ports, the ITC can execute a cease and desist letter which would prevent HTC from selling products that have already made it past their port of entry.

The investigation stems from a complaint filed with the ITC by Apple last month, in which it claims that HTC copied Apple’s hardware and software.  The ITC seemed to agree with the allegations, concluding that HTC may have infringed on two Apple’s patents.  The ITC has agreed to set a target date for completing the investigation within 45 days.

The patent battle between Apple and HTC heated up in March 2010, when the Cupertino, Ca-based Apple sued HTC in a California District Court for twenty instances of patent infringement, all connected to various features of the iPhone.

Apple has a patent infringement complaint against another Android-maker, Samsung, which the ITC has agreed to pursue as well.

football-field-lambeau.jpgLos Angeles – Recently, when the owners of Green Bay Distillery in Ashwaubenon, Wisconsin announced their plans for a new bar/restaurant to be called Titletown Distilllery, they faced the defense of the Green Bay Packers.

The Packers politely informed the distillers that they owned the federally registered trademark, ‘Tiltetown’, which was registered in several different business classes back in November 2010.  The owners of the new restaurant decided to go with Green Bay Distillery instead. 

Titletown, a nickname given to Green Bay in the 1960’s to pay homage to the fact that the Packer’s had won five NFL championships out of seven, is just one of several trademarks owned by the 2011 Superbowl champs.  Other trademarks owned by the team include Lambeau Field, Packers, and the team’s iconic, oval “G.”

Although the Packers understand the value of protecting their registered trademarks, the team also realizes that it must tread lightly when dealing with local businesses over these legal issues, acknowledging the fact that Titletown essentially belongs to the fans.  Jason Wied, Packers vice president of administration and general counsel, said that after a friendly discussion with the distillery about the trademark, it was the distillery that decided to give up the Titletown name. 

There are several established businesses in Green Bay that have been using the Titletown trademark for years.  There is Titletown Brewing Co., Titletown Train Show, Titletown Oil, and the Green Bay Chamber of Commerce’s web address is www.titletown.org, and the city includes Titletown U.S.A. in its logo.  However, most of these entities have priority of use and so wouldn’t have to cease use if requested by the Packers. 

Most of these businesses with priority of use are practicing their “common law” rights, in which a federal registration is not required to establish rights to a trademark.  These rights are based on actual use of the trademark and may allow the common law user to successfully challenge a trademark application or registration.  Common law trademarks are related to products and services in a particular geographic region and are established by years of use.

In the case of Titletown, it appears that local businesses and municipalities are respectful of how the name was derived and use the name harmoniously with the NFL team. 

headphones2.jpgSan Diego – It seems as if legal troubles follow Lil’ Wayne wherever he goes.  Just after his recent release from jail for serving a one-year sentence for weapons possession, the rapper is now a defendant in a $15 million copyright infringement suit for allegedly stealing parts of the hit song, “Bedrock.”

The plaintiffs in the lawsuit, Done Deal Enterprises, are accusing Wayne and his record label, Young Money Records, of stealing parts of the song which also featured artists Drake, Nicki Minaj, and Lloyd.  The song hit number one on Billboard Magazine’s Rap Charts and number two in the Hot 100.  Also named in the lawsuit are Universal Music Group and Cash Money Records.

Done Deal is claiming that it owns the copyrights to the song samples and is asking for monetary damages of $15 million.  Lil’ Wayne has been ordered to appear in court on October 12, to answer the claims.

The rapper, born Dwayne Carter Jr., has also been sued by several music producers for unpaid royalties from a 2008 duet with rapper, T-Pain.  In addition, music producer David Kirkwood is suing Wayne for outstanding payments for his work on the rapper’s album, ‘Tha Carter III.’  Probably the most notorious copyright allegations Wayne has faced came from Abkco Music, Inc. in 2008, which claimed Wayne infringed on its rights to the Rolling Stone’s song “Play With Fire,” when he released an altered version without their permission.  As a result, “Play With Fire” was removed from the online music tracklists for Wayne’s album, ‘Tha Carter III.’

No comment was available from Wayne and his attorneys.

cell-phone2.jpgLos Angeles – A federal judge has ordered mobile phone-maker Verizon to pay $115 million in damages in a patent infringement lawsuit filed by ActiveVideo Networks.

According to the May 2010 complaint, ActiveVideo, which provides the CloudTV service, accused Verizon of patent infringement, saying that its FiOS system infringed on four ActiveVideo patents related to video-on-demand and interactive TV services.  ActiveVideo Networks CEO Jeff Miller, said that historically his company has not pursued litigation.  However, when Verizon used the patents to attack Cablevision, ActiveVideo’s largest U.S. customer, it was necessary to take legal action. 

“Not only was Verizon treating us poorly, but the company was attacking our customers,” stated Miller.

Since the judge ruled in favor of ActiveVideo, its legal team has plans to pursue an injunction that would force Verizon to change its FiOS technology or shut it down altogether.  Regardless of its recent victory in patent court, winning the injunction might be difficult for ActiveVideo, since courts have enacted stricter rules in recent years for obtaining patent injunctions.  Much more argument and evidence will be required from ActiveVideo before a judge would consider the injunction.

Regardless of the $115 million verdict, the largest ever in a patent case in the Eastern District of Virginia, ActiveVideo was not victorious in all aspects of the case.  The jury did not agree with ActiveVideo’s argument that Verizon willfully infringed on the patents and it actually sided with Verizon’s counter-argument that ActiveVideo had infringed on two Verizon patents.  Damages for the infringement on Verizon patents were only estimated to be $16,000.

Verizon is no stranger to high stakes patent litigation.  In 2006, Verizon filed suit against Vonage for VoIP patents and was awarded damages of $120 million.  The decision was later rebuked when Verizon used some of those same patents to go after Cox Communications in 2008.

oprah.jpgSan Diego – The former queen of daytime talk-television is being sued for trademark infringement over the phrase “Own Your Power.” 

The plaintiff, Simone Kelly-Brown, CEO of Own Your Power Communications, Inc., claims that it was her company that created the phrase along with the OYP acronym and the concept that people can “live their best life” if they believe that “anything you want in life is attainable.”  Kelly-Brown applied for trademark rights to “Own Your Power” with the United States Patent and Trademark Office back in May 2007.

According to the complaint, Winfrey began using “OYP” to “Identify Harpo Productions (and) Oprah…as advocates for individuals to ‘live (their) best life’ through self-awareness and motivational communication, the same type as OYP services.”  Own Your Power Communications has been in business since 1996 and provides life coaching, empowering events, a radio show, and a blog to help individuals attain both personal and professional goals.

The lawsuit also contends that the infringement began when the October 2010 issue of Oprah’s O Magazine included the “Own Your Power” phrase.  The magazine also lists a section of its website called Own Your Power.

The complaint reads:

“Under such circumstances, with (Winfrey and Harpo) being much larger, spending more money, having a wider reach, and an overlapping audience with the much smaller Company, particularly with one of the most influential women in the world at the helm…OYP has been irreparably harmed.”

Winfrey was also said to have hosted an “Own Your Power” event in the same New Jersey city that Kelly-Brown’s company is based in just days apart from one that Kelly-Brown hosted herself.  Kelly-Brown is seeking compensatory damages for Winfrey and Harpo’s “brazenly unlawful disregard for the existence and use of the OYP trademark.”

Winfrey’s camp claims they have not been served and know nothing of the lawsuit.

 

dna-strand.jpgLos Angeles – Last year, when a federal judge ruled that human genes couldn’t be patented, scientists and geneticists were pleased.  The particular case at issue involved Myriad Genetics, which holds the patent rights on two genes, BRCA1 and BRCA2, which are associated with a woman’s increased risk of developing breast and ovarian cancers.  At the time of the court’s ruling last May, Myriad’s gene patents were deemed invalid.

But now it appears that the courts have reversed their ruling yet again.  In a decision handed down on Friday, two federal judges determined that the case of gene patent validity comes down to the meaning of the word “isolated.”  Judge Sweet’s ruling last year to invalidate Myriad’s patents was based on the scientific fact that genes are derivative of human nature, not an invention, and therefore could not be patented.  The judge’s decision was quite controversial for patent lawyers since the United States Patent and Trademark Office had already granted patents for over 4,000 human genes.

In last week’s court reversal,  it was determined that Myrriad‘s gene patents are indeed valid, thus restoring patent rights to the company.  The court’s reversal revealed the fact that there was a huge lack of understanding of DNA, genes, and genomes.  The court used the reasoning that “isolated DNA” is different than the natural DNA in humans, and this distinction allows it to be patented.  The judges wrote in the ruling:

“Native DNA exists in the body as one of forty-six large, contiguous DNA molecules…Isolated DNA, in contrast, is a free-standing portion of a native DNA molecule, frequently a single gene…Accordingly, BRCA1 and BRCA2 in their isolated state are not the same molecules as DNA as it exists in the body.”

Scientists, disgruntled over the reversal, claim that genes are “isolated” by our body’s own genetics when they are copied into RNA and then converted into proteins.  What continues to trouble scientists is that they claim gene patents slow down the progress of science and genetics as legalities arise for anyone who wants to work with any of those genes.  

rugby.jpgSan Diego – A statue of rugby legend, Michael Jones, which is supposed to be placed outside the Rugby World Cup headquarters in Eden Park, New Zealand, is the focus of a copyright infringement debate.

Sculptor Richard Wells, who has since been dropped from the statue project, has filed a copyright infringement suit claiming that he has been cheated out of money owed to him and co-authorship of the statue.  The statue is a one-and-a-half time life size replica of Michael Jones.  “I’ve changed it from something that looked like a robot to something which is actually flying through the air,” Wells commented.

Natalie Stamilla sees it differently.  Her father, Geoff Dale, snapped the famous photograph of Jones in the moment just before he scored the first try in the 1987 Rugby World Cup.  Stamilla claims that the idea for the statue came from her and that Well’s was hired to only do the “grunt work” and that his artistic input was limited.  She added that it was completely herself and her father who designed the look of the statue and so Wells should have no copyright rights to it.

The dispute centers around two separate images and two very different accounts of how the statue was transformed into what it is.  Stamilla is claiming that although she had no experience sculpting with bronze before, it was “the next step” in her life-long sculpting career.

“There was no way they could work it out,” Wells exclaimed, referring to Stamilla and her father.  “If you don’t have a history and a body of work that leads to something like this, there’s no credibility to it,” he added.

The statue, which commemorates the moment Jones dived across the line to be the first person to score a try in the opening game of the inaugural Rugby World Cup in 1987, cost an estimated $300,000 to create and will be on permanent loan to Eden Park.

download.jpgLos Angeles – Online payment service PayPal is partnering with the City of London Police and the international recording industry to combat Internet copyright infringement by banning use of its service for items that violate or infringe any copyright under its Acceptable Use Policy.

This new agreement will provide stronger ammunition in the war on copyright theft by preventing PayPal’s services from being used by illegal websites worldwide that sell pirated music.  Many of these pirating sites are located in Russia and the Ukraine and have violated local and international copyright laws for years by selling music without paying the artists, songwriters, or producers for their work.  The agreement follows the March announcement that payment providers Visa and Mastercard would also withdraw their services from the infringing sites.

Frances Moore, chief executive of IFPI, which represents the recording industry worldwide, stated, “We knew that when illegal online music services could no longer take payment from credit cards, they would try to work around the restriction.  That is why we and the City of London Police approached PayPal and I am delighted to say they responded instantly and positively.”

Anti-piracy agents from IFPI supply the City of London’s Police’s Economic Crime Directorate with evidence of illegal downloads from infringing sites.  Once the evidence is verified, the police then notify the payment providers who then take action.  Since the announcement in March, Visa and Mastercard services have been removed from 24 illegal music sites and are looking into withdrawing from 38 more sites that are suspected of copyright infringement on a large scale.

In order for a retailer to use PayPal services, it will have to provide proof of licensing for the music it is selling.  In cases where the licensing appears to be inadequate, PayPal will cut off services to those retailers.  Visa and Mastercard will work with the banks that provide the retailers with payment services to also provide evidence of proper licensing to sell the music.  If the licenses are not provided, then payment services will be discontinued to those retailers as well.

Carl Scheible, managing director of PayPal UK, said, “Today’s announcement shows that PayPal is very serious about fighting music piracy.  We’ve always banned PayPal’s use for the sale of content that infringes copyright, and the new system will make life even harder for illegal operators.  Our partnership with the music industry helps rights holders make money from their own content while stopping the pirates in their tracks.”

shoes-redsoles.jpgOrange County – Back on April 10, we posted a story about fashion designer Christian Louboutin’s trademark infringement complaint against Yves St. Laurent’s (YSL) use of similar red-soles in its shoe line.  You can see the original post here: Red-Soled Shoes Trade Dress infringement.  Recently, the two fashion powerhouses hashed it out in a New York courtroom.

The lawyer for Louboutin argued that the designer’s claim to fame has been due solely (pun intended) on the popularity of its red-soled shoes, worn by fashionistas and celebrities alike and that it has had “substantially exclusive use” of the trademark for 19 years.  He added that his client is not “as YSL misleadingly argues, [trying] to claim a monopoly over the colour red…But when YSL ignores countless colour choices, including other reds, and apes the famous signature of the Louboutin brand, [it destroys] the goodwill painstakingly built in the Red Sole trademark.”  He continued with, “Unless this court enjoins YSL, the floodgates will open, and the Louboutin business will be devastated.”  Louboutin argued that if the court denies YSL the right to  use bright red soles, the company will not suffer a significant aesthetic disadvantage because it will still be able to make its shoes “engaging” and “flirtatious” by using “even Louboutin’s red…on other, more visible parts of the shoe.”

Attorneys defending YSL argued back that their client has been using red as a signature colour since its inception in 1962 and even referenced the fact that King Louis XIV of France and Dorothy from The Wizard of Oz famously wore red-soled shoes.  YSL’s defense team went on to question the validity of Louboutin’s Red Sole trademark, which was awarded a trade dress registration in 2008 by the USPTO, by asking whether any designer can monopolize one particular colour. 

The YSL defense attorney stated, “We are unaware of any case in which a court has upheld trademark protection to a mark consisting solely of a single colour on a portion of an article of apparel.”  His argument was further exacerbated by a statement from Giancarlo Giammetti, fashion designer Valentino’s honorary president, which said that if any designer should have a monopoly on red, it should be Valentino.

We think that the trade dress registration is a good one.  The judge’s verdict is expected any day now.

google.jpgSan Diego – When it comes to intellectual property litigation, it is somewhat common for judges to hear unreasonable demands and ridiculous claims from both sides.  Such is the case in an ongoing patent dispute between Google and Oracle.

Oracle’s original complaint alleges that Google’s Android technology infringes on the Java computer programming language patents that Oracle acquired from Sun Microsystems.  The judge however, rejected Oracle’s over-reaching claims because the patents in question “certainly do not cover all of Java or all of Android…It seems highly unlikely that Android derives its entire value from a small set of infringing features, given its breadth…The next report must apportion the total value between the specific infringing features versus the rest of the Android.”

Regardless of the judge’s ruling on Oracle’s claims, it appears that Google may be the one in the hot seat over an email between company engineers.  The email reads, in part:

“What we’ve actually been asked to do by Larry [Page] and Sergey [Brin] is to investigate what technical alternatives exist to Java for Android and Chrome.  We’ve been over a bunch of these and think they all suck.  We conclude that we need to negotiate a license for Java under the terms we need.”

The email is a blow to Google’s defense that any infringement was unintentional.  Judge Alsup wrapped up a recent hearing with a warning to Google attorneys that if any willful infringement is discovered, there will be profound implications with a permanent injunction.