headphones.jpgSan Diego – Roc Nation, the brainchild of rapper and businessman Jay Z, is being sued for trademark infringement by Volcom for use of a similar diamond-shaped logo.  In addition to monetary damages, Volcom is requesting an injunction to stop the sale of any Roc Nation products bearing the diamond logo, that Roc Nation destroy any products with the trademark, and for Roc Nation’s trademark registration for the logo be cancelled.

Volcom, who owns the trademark registration for the diamond logo in connection with its “Youth Against Establishment” and “Let the Kids Ride Free” campaigns and has been using it since 1991, is specifically uneasy with Roc Nation’s use of the logo in conjunction with the sale of its Skullcandy headphones.  The manufacturer and distributor of premium quality clothing, shoes, and accessories for young people stated in the suit that Roc Nation’s unauthorized use of the logo will likely cause confusion with consumers and lead consumers to believe that Volcom is involved with the Roc Nation/Skullcandy brands.  It is contending that Roc Nation initially used the diamond logo in connection with the Roc Nation brand name but is currently using the logo by itself.

This case is a reminder of how important it is to be unique when choosing a trademark.  Companies such as Shell, Apple, Nike, and Pepsi Co. all have been successful at creating brand identity with a distinctive logo.  The more unique the logo is, the more likely it is that it will not conflict with another logo, and the less likely it is to be infringed upon.

tattoo.jpgLos Angeles – “The Hangover, Part 2”, Warner Bros.’ sequel to the 2009 blockbuster hit, may soon be sobering up over a copyright infringement lawsuit.  S. Victor Whitmill, the tattoo artist who inked the infamous tribal tattoo on Mike Tyson’s mug, is suing to halt the release of the movie which is scheduled for release this Friday. 

In the complaint, Whitmill accuses Warner Bros. of using his copyrighted tattoo design without his permission.  Apparently, the character portrayed by Ed Helms has the same facial tattoo as a playful reference to Mike Tyson, who appeared in the original “Hangover.”  Not only does the tattoo appear in scenes in the movie, but it was also used in the marketing for the picture. 

Generally a tattoo artist would own the rights to all tattoo designs with the person receiving the tattoo having an implied license to use the design.  In this case, it does not appear that Warner Bros. received any permission to display the design and unlike the original movie no implied rights exist.  With the overwhelming popularity of the first movie and all the buzz behind the much-anticipated sequel, it is likely that Warner Bros. will attempt to quickly purchase a license to use the design. 

Because Whitmill would have to post a large bond to receive an injunction, we don’t expect any delay in the release of the movie.  Warner Bros. has thus far declined to comment on the suit.

web_browser_icons.jpgSan Diego – In response to a patent infringement complaint filed in March by Microsoft, Barnes & Noble has filed its own claim accusing the Seattle-based computer giant of abusing patent laws to prevent manufacturers from using the Android technology.  Microsoft’s lawsuit against the largest book retailer in the United States involves the alleged infringement of six patents in its Android-based Nook e-Reader.  Also included in the complaint are Nook manufacturers Foxconn and Inventec.

The technology behind the patents in Microsoft’s complaint include display of a webpage’s content before the background image is received, allowing users to interact with the page faster, navigation options for information provided by device apps via a separate control window with tabs, giving users the ability to annotate text without changing the original document, the ability for apps to superimpose download status on top of the downloading content and, allowing users to choose text in a document and make changes to that selection.  Reportedly, Microsoft had initially offered to license the patents to Barnes & Noble, which was refused.  It has already struck licensing deals with several Android manufacturers including Amazon and HTC for the Kindle e-Reader. 

Barnes & Noble’s response to the patent infringement complaint claims Microsoft is “misusing these patents as part of a scheme to try to eliminate competition to its own Windows Phone 7 mobile device operating system posed by the open source Android operating system and other open source operating systems.”  The book retailer also described a July 2010 meeting with Microsoft at which Microsoft claimed it had “detailed claim charts” that it said would prove that Barnes & Noble was infringing on the patents.  Microsoft would not allow Barnes & Noble to view the claim charts unless the latter signed a non-disclosure agreement, which was refused by the book giant. 

Does Barnes & Noble have enough evidence to prove that Microsoft is forcing out the competition by abusing patent laws?  Between this battle with Microsoft and the overall decline in physical book sales, Barnes & Noble has quite a challenge facing it.

tablet_pc.jpgLos Angeles – Just one day before the reveal of its new Xoom tablet, Motorola was served by Xoom Corporation in a trademark infringement lawsuit.  In addition to the alleged trademark infringement, the lawsuit, filed in the U.S. District Court for the Northern District of California, also accuses Motorola of false designation of origin, unfair competition, false advertising, and unfair business practices.

Xoom Corporation, which sells “remittance software services” has a federally registered and incontestable trademark for “XOOM” for its online services.  The company has been operating xoom.com since 2003 in connection with its payment processing services.  The motive behind the lawsuit seems to be Motorola’s purchase of the “Xoom” keyword  with the search engines.  As a result of the keyword purchase, consumers entering the word “xoom” into search engines have been directed to the official website for Motorola’s Xoom tablet device.  A spokesperson for Xoom Corporation stated, “To confuse and mislead consumers, Motorola without any authorization deliberately and unlawfully appropriated Xoom’s trade name and trademark rights.”

The Motorola Xoom tablet was launched on February 23, 2011 in the U.S. through Verizon Wireless Inc.  It is in direct competition with Apple Inc.’s iPad and other competing devices that, like the Xoom, operate on Google’s Android software.  The tablet sells for approximately $600 with a two-year Verizon contract and about $800 without one.

Xoom Corporation is requesting a preliminary and permanent injunction, damages, profits from the sale of the tablet, and attorneys fees.

money-cut.jpgSan Diego – With the Federal Budget for Fiscal Year 2012 set, the United States Patent and Trademark Office (USPTO) can expect to see $100 million less in its budget.  Never mind that the USPTO is a fee-funded agency, and does not receive any funding from taxpayer dollars.  What this cut equates to is a siphoning of revenues from the USPTO to fund other government programs.

Under the new budget, the USPTO will have the authority to spend $2.09 billion, $100 million less than its projected revenue of fee collections.  While the $100 million accounts for only about 5% of the USPTO budget, the cuts are expected to be taken over the next five months which would equate to a 10% reduction in spending for that time period.

As a result of this money being siphoned from the USPTO, Track 1 of the new fee-based prioritized  patent examination process will not be utilized.  The Fast Track initiative would have been available May 4, 2011.  Spending for the trademark budget will not be affected by the cut.

In addition to not implementing the new patent examination initiative, other areas that will be affected by the reduction in spending include the opening of new satellite offices to reduce the backlog in Washington D.C., the hiring of new employees, training for existing employees, overtime, information technology projects, and funding for the Patent Cooperation Treaty (PCT) outsourcing.

This cut is odd considering President Obama’s recent efforts to promote prompt intellectual property protections in an effort to spur U.S. innovation and economic development.  The president also recently announced his plans to double domestic exports over the next five years.  The President’s export plan is now a little more unattainable as the USPTO’s efforts to examine and register patents has been undermined by the  spending reduction.  With the spending cuts, the already overburdened patent examination process cannot be as efficient at examining and registering patents and getting innovations and jobs to market.

leopard-print.jpgLos Angeles – Fashion apparel retailer J.Crew is being sued by Tony Duquette, Inc. for trademark infringement.  The clothing chain allegedly has taken the internationally acclaimed designer’s proprietary leopard print design and moniker to brand its line of cardigans as the “Duquette Factory Leopard Print” sweater.

The lawsuit accuses J.Crew of willful misconduct because it used the Duquette trademark without permission or any licensing agreement for use in its cardigan sweater line.  The complaint also claims that Crew capitalized on the now-deceased artist and designer‘s exclusive association with the leopard print design.  In the 1950’s, Mr. Duquette created the leopard print design for fabric, wallpaper, carpet, clothing, and furniture and according to Duquette attorneys,“still remains such a defining and recurring element” of Duquette history that consumers associate the design with Duquette products.  The company currently licenses the designs to Jim Thompson, Inc. for a collection of woven textiles, and to Roubini, Inc. for use in carpets and tapestries.

Duquette, Inc. took issue with the fact that its signature leopard print design is now associated with J.Crew and its marketing ads.  For example, the cardigan sweater is the first result in a Google search for “Duquette Leopard Print”. 

It appears to us that J.Crew may have some defenses to make with regard to the leopard print design.  However, without regard to the use of the Duquette trademark without authorization, that one is a head scratcher for sure.  Perhaps someone at J.Crew forgot to run it by legal?

golf_ball_callaway.jpgSan Diego – A U.S. District Court in Delaware recently upheld a jury verdict that ruled four of Callaway Golf’s patents are invalid.  The judgment, which stems from a 2006 patent infringement lawsuit Callaway filed against Acushnet Co., officially closes the case in that particular court but can be appealed at the Federal Circuit level.

Acushnet Co., a $1.4 billion manufacturer and marketer of golf balls, golf clubs, golf shoes, and golf gloves, is comprised of the Titleist and FootJoy golf brands.  The dispute between Acushnet and Callaway goes back to January 2006 when Acushnet filed a request for reexamination of four Callaway patents with the Patent and Trademark Office.  The patents at issue involved a breakthrough technology for producing multi-layer, solid-core golf balls.

One month after the request to reexamine, Callaway swung back by filing a patent infringement complaint against Acushnet.  A jury verdict reached in December 2007 ruled in favor of Callaway, but the decision was successfully appealed by Acushnet which earned it a new trial.  The judgment for that trial, held in March 2010, ruled in favor for Acushent, which Callaway appealed requesting a new trial or a judgment in its favor as a matter of law.

In the most recent judgment, both of Callaway’s motions were denied.  “We are disappointed with the court’s decision, especially in light of our victory in the first trial and Acushnet’s admitted infringement of our patents,” commented Tim Buckman, senior director of global communications for the San Diego, California based Callaway.  Buckman went on to say that Callaway has plans to appeal the decision to the Federal Circuit Court of Appeals.

Although the 2006 lawsuit has come to a conclusion for now, the two companies continue to swing it out over a set of patent infringement lawsuits they filed against each other in 2009.

dolls.jpgOrange County – U.S. toy-maker Mattel has recently been dealt a serious blow in an ongoing copyright infringement lawsuit over the “Bratz” doll line.  Competing toy-maker MGA Entertainment was awarded nearly $88.5 million in damages after a retrial determined that it did not infringe on Mattel’s copyright.  The judge in the case also holds the power to triple the damages against Mattel over its alleged willful misconduct and intentional theft of trade secrets.

In the original copyright infringement complaint filed by Mattel against MGA, a southern California jury ruled in favor of Mattel, awarding it $100 million in damages.  Mattel maintained that “Bratz” designer Carter Bryant developed the idea for the popular dolls while working as an employee for Mattel, thereby making Mattel the owner of the sketches.  It also accused Bryant of secretly sharing the designs with MGA, which allegedly developed the first line of “Bratz” while hiding Bryant’s involvement.  Bryant insists that he thought of the idea for the dolls while living with his parents in Missouri.  He also maintains that he worked for Mattel intermittently before and after he came up with the idea.

After a lengthy appeals process, U.S. Circuit Court of Appeals in San Francisco overturned the $100 million verdict and ordered a retrial ruling that a southern California judge had mistakenly determined that an employment agreement between Mattel and Carter Bryant gave Mattel sole ownership of the “Bratz” copyright.  Just minutes after the verdict was read, Mattel’s stock (MAT) price fell 2.3 percent on the NASDAQ to close at $26.67 Thursday.

This case highlights the importance of employee agreements covering creative works.  Companies should also have all independent contractors sign work for hire/assignment agreements which clearly indicate that the commissioned work will be the property of the business, not the creator.

supreme_court.jpgSan Diego – A patent infringement case between Microsoft and i4i argued before the Supreme Court may cause a domino effect in the technology industry.  Washington-based Microsoft is seeking to change the legal criteria for invalidating patents.

At the core of the Microsoft vs. i4i dispute is a design patent that i4i applied for in 1994 which would allow formatting to be separated from text in word processing documents.  The Toronto, Canada-based tech company sued Microsoft for patent infringement and was awarded damages of $290 million.  Microsoft has appealed the decision to the Supreme Court.

Typically in patent infringement cases, a “clear and convincing” standard of evidence is in play to invalidate a patent.  Such a high standard can make it difficult to invalidate patents once they are granted.  Microsoft is now asking the high court to lower the clear and convincing standard thus making it easier to defend in patent litigation.  Undoubtedly, Microsoft’s efforts to change the legal standard would affect the entire technology industry which depends heavily on patent protection.

The technology industry is no stranger to patent infringement lawsuits for both hardware and software.  Apple recently filed a complaint against Samsung for alleged trademark, patent, and trade dress violations.  The “clear and convincing” standard has been the legal standard since the 1950’s and a departure from that standard could make it much more difficult for companies like Apple and i4i to defend their patents.

A decision from the Supreme Court is expected in June.  If the Court rules in favor of Microsoft, it only means that it will get a new trial.  Under the new standards, it will still have to convince a jury that i4i’s patent is invalid.

apple.jpgSan Diego – In an ongoing battle over what Apple is alleging to be blatant infringement of its intellectual property, it recently filed a patent and trademark infringement lawsuit against Samsung.  The infringing products up for debate are Samsung’s Galaxy line of smartphones and tablets, which are said to infringe on Apple’s line of iPhones and iPads.

Apple’s charges include patent infringement and trademark/trade dress infringements which cover similarities in packaging and appearance.  Reportedly, Apple is upset at Samsung for allegedly taking patent and design ideas such as organizing application icons into grids and making smartphones with rounded corners.  In its complaint, Apple argued, “Rather than innovate, Samsung chose to copy Apple’s technology, user interface, and innovative style in these infringing products.”

Samsung is not responding to the claims lightly, threatening legal action of its own against Apple over similar charges of patent infringement.  According to a Samsung spokesperson, “We [Samsung] think Apple has violated our patents in communications standards.  We are considering a counterclaim.”  This is an awkward position for the Seoul-based Samsung, considering that it is one of Apple’s main suppliers for computer components.  In 2010, Apple purchased an estimated $5.7 million from Samsung in semiconductors alone and reportedly may begin purchasing iPad display panels from Samsung as well.

In the world of smartphone technology, Apple’s lawsuit is just another iron in the fire as competitors jockey to gain patent protection for their innovations.  It is not uncommon for large technology companies to take legal action against each other alleging patent infringement and to stockpile patents in order to avoid the patent infringement claims altogether.