Trademark Infringement | "Keyword Trademark Infringement Claim Fails Where Mark is Generic"

By: Brian A. Hall
Source: http://unintellectualproperty.com
Category: Trademark Infringement


The United States District Court for the Eastern District of Ohio denied a motion for reconsideration to alter or amend a judgment pursuant to FRCP 59(e) and held that the “evidence still fails to create a genuine issue of material fact as to whether SpinLife’s alleged uses of the three-word phrase “the scooter store” creates a likelihood of confusion necessary to support its affirmative claims for trademark infringement, unfair competition, unjust enrichment and misappropriation.” Plaintiff The Scooter Store, Inc. sued Defendant SpinLife.com, LLC for, among other causes of action, trademark infringement and unfair competition in connection with SpinLife’s purchase of Google AdWords for “the scooter store” and other similar combinations as well as use of the phrase in “metadata” and “meta tags” on its website. The Court previously ruled that “[t]he phrases ‘the scooter store,’ ‘scooter store,’ and other such phrases containing ‘scooter store’ are generic, and Plaintiff TSS has no trademark rights in the use of these phrases.”

Plaintiff sought reconsideration to introduce expert testimony that the phrases are not generic and that instead the consumer public associates them with Plaintiff. Put another way, Plaintiff sought to introduce additional evidence to create an issue of material fact in an effort to avoid invalidation of its THE SCOOTER STORE trademark as generic. The Court denied the motion for reconsideration and again recognized that the phrases are generic (interestingly, the Court also mentions the word descriptive, which could change the entire analysis and determination as to trademark rights given the ability to acquire distinctiveness in a descriptive mark).

To the extent the Court found the mark generic, then THE SCOOTER STORE is indeed UnIntellectual Property. However, to the extent the Court found the mark descriptive (bearing in mind the registrations and the presumptions that go along with such registrations), it may not ultimately be UnIP. Regardless, the Court did find no likelihood of consumer confusion given the weakness of the mark and other factors that seem to be common in keyword infringement lawsuits. Needless to say, the Plaintiff probably did not expect a genericness finding that has the potential to do far more damage to its business than an online competitor. My guess is that the Plaintiff will be scooting to an appeal as soon as possible. Unfortunately, the appellate process is more like using a walker than a scooter.


Source: http://unintellectualproperty.com/keyword-trademark-infringement-claim-fails-where-mark-is-generic/

Patent Infringement | "No Disqualification of Expert Who Met With Opposing Counsel Before Being Retained"

By: DOCKET NAVIGATOR 
Source: http://docketreport.blogspot.com
Category: Patent Infringement

Patent Infringement

The court denied plaintiff's emergency motion to disqualify an expert who had met with plaintiff regarding this same case, discussed hypothetical arguments regarding claim interpretation with plaintiff's counsel, and then was hired by defendant a week later. "[A]fter [plaintiff's counsel]. . . explained [plaintiff's] position about how the claims should be interpreted . . . [the expert] proposed an argument [defendant] might make in response. [The expert] recalls that [counsel] did not want to discuss the subject any further and did not respond with anything of substance. [Plaintiff's counsel] recalls that she responded in a substantive fashion as to how [plaintiff] would address this hypothetical. . . . [T]he hypothetical posed by [the expert] and [counsel's] unsolicited response thereto do not constitute confidential information sufficient to disqualify [the expert] from consulting for [defendant]. . . . [T]he nature of the relationship and of the information allegedly disclosed instantly is much too abbreviated to warrant such a drastic sanction."

Source: http://docketreport.blogspot.com/2012/10/no-disqualification-of-expert-who-met.html

Patent Litigation | "Patent problems force Motorola to yank tablets, smartphones from German store"

By: Ricardo Bilton
Source: http://venturebeat.com
Category: Patent Litigation

Patent Litigation

Motorola’s ongoing patent litigation in Germany is taking some more damage.

Motorola has yanked some of the products from its online store in Germany. Many of its smartphones and all of its tablets are gone from the site, German news site Areamobile reports. All that remains are three devices: the Motorola Razr i, the Motorola Razr HD, aPatentnd the Motorola Gleam+.

Motorola told Areamobile that the missing devices were being “reworked,” but there’s no word on when they will return.

Motorola’s North American arm, however, has a different story: It’s simply phasing out its devices.
“As we have previously stated, Motorola Mobility is focusing on fewer mobile devices. As a result we have phased out some of our lower tier devices in Europe/Germany,” a company spokesperson told VentureBeat.
While that explanation’s at least partially valid, it’s hard to imagine that Motorola would phase out all of its tablets. Clearly, there’s something else amiss here.

The irony of the situation cannot be overstated. When Google bought Motorola last year for $12.5 billion, it did so with the assumption that Motorola’s patent trove would be able to protect the search giant from patent litigation. But it seems the company can’t even protect itself.

Motorola has been on the losing end of quite a few patent cases with companies like Microsoft and Apple in recent months, and it’s lost the majority of them. The company, however, did win a case last week, which shows that it has some momentum on its end as well.


Source: http://venturebeat.com/2012/10/08/motorola-removes-devices-germany/

Trademark Infringement | "Sony Sues its Former Spokesperson for Trademark Infringement"

By: Alison Keeley
Source: www.ipbrief.net
Category: Trademark Infringement

Trademark Infringement

Advertisements have always had characteristic spokespersons that are used in a series of ads.  Just think of the Old Spice Guy, Fabio for “I Can’t Believe It’s Not Butter,” and “Flo” the character in all those Progressive ads, to name a few.  It is clear that these characters and actors can be heavily associated with a particular product and a particular ad campaign.  They appear on billboards, on busses, and in a series of ads.  But what does that mean for the actor in the future?

This question is raised by Sony’s recent lawsuit against Bridgestone tires and the representation of actor Jerry Lambert.  The actor played a character called “Kevin Butler” in a series of ads for PlayStation 3.  In addition to appearing in a series of television commercials, the actor appeared live, in character, at the Electronic Entertainment Expo.  The character even has his own Twitter account.  Sony did clearly invest a lot in “Kevin Butler” and by extension, Jerry Lambert.  But, of course, ad campaigns end and actors may eventually move onto a new ad.  Jerry Lambert went on to be in a Bridgestone tire ad.  The problem?  The characters were playing on a Nintendo Wii in the ad.

Sony, the makers of PlayStation, sued both Bridgestone and Lambert for trademark infringement, breach of contract, and tortious interference with a contractual relationship.  Apparently, Sony claims that it had an exclusivity agreement with Lambert that prevented him from appearing in ads for Nintendo or similar competitors.  While the ad isn’t technically for Nintendo Wii, the actors are playing Mario Kart for pretty much the whole ad, and the promotion allows those who purchase Bridgestone tires to get a Wii console as part of a promotion.

Bridgestone denies that Lambert was playing the “Kevin Butler” character in its ad.  Apparently Lambert’s contract with PlayStation expired three days before the Bridgestone ad aired.  But if Bridgestone and Nintendo are using PlayStation’s character or this violates the exclusivity clause (which, given the unusual situation here, probably depends on the wording of the clause) then Sony has a point.  This also raises the question of how much control a company can have over an actor when it has invested time building an actor into a particular advertising character and associating that actor with its product.   But how much can a company owe an actor’s basic appearance?  In this case, at least, it is clear at least some consumers identify a connection between Lambert and PlayStation.  This article, posted before Sony filed a lawsuit, bears the title “Sony spokesperson Kevin Butler’s latest commercial has him…promoting the Wii?!”

Based on at least one reporter’s impression, Sony may be able to prove that consumers believed that the “Kevin Butler” was in the Bridgestone ads, playing on Lambert’s previous connection with PlayStation.  And while the ad wasn’t exactly for Nintendo products, the fact that the actors were playing on a Nintendo Wii for most of the ad may run afoul of the exclusivity agreement between Lambert and Sony.  But obviously, if the actress who played “Flo” appeared in an All State ad, or that of another similar competitor in the insurance industry, there would be an obvious problem.  The issue will likely ultimately come down to how much the court thinks a company should be able to restrict an actor in order to protect the company’s rights to a character it created.


Source: http://www.ipbrief.net/2012/10/11/sony-sues-its-former-spokesperson-for-trademark-infringement/

Trademark Infringement | "Sony Sues its Former Spokesperson for Trademark Infringement"

By: Alison Keeley
Source: www.ipbrief.net
Category: Trademark Infringement

Trademark Infringement

Advertisements have always had characteristic spokespersons that are used in a series of ads.  Just think of the Old Spice Guy, Fabio for “I Can’t Believe It’s Not Butter,” and “Flo” the character in all those Progressive ads, to name a few.  It is clear that these characters and actors can be heavily associated with a particular product and a particular ad campaign.  They appear on billboards, on busses, and in a series of ads.  But what does that mean for the actor in the future?

This question is raised by Sony’s recent lawsuit against Bridgestone tires and the representation of actor Jerry Lambert.  The actor played a character called “Kevin Butler” in a series of ads for PlayStation 3.  In addition to appearing in a series of television commercials, the actor appeared live, in character, at the Electronic Entertainment Expo.  The character even has his own Twitter account.  Sony did clearly invest a lot in “Kevin Butler” and by extension, Jerry Lambert.  But, of course, ad campaigns end and actors may eventually move onto a new ad.  Jerry Lambert went on to be in a Bridgestone tire ad.  The problem?  The characters were playing on a Nintendo Wii in the ad.

Sony, the makers of PlayStation, sued both Bridgestone and Lambert for
, breach of contract, and tortious interference with a contractual relationship.  Apparently, Sony claims that it had an exclusivity agreement with Lambert that prevented him from appearing in ads for Nintendo or similar competitors.  While the ad isn’t technically for Nintendo Wii, the actors are playing Mario Kart for pretty much the whole ad, and the promotion allows those who purchase Bridgestone tires to get a Wii console as part of a promotion.

Bridgestone denies that Lambert was playing the “Kevin Butler” character in its ad.  Apparently Lambert’s contract with PlayStation expired three days before the Bridgestone ad aired.  But if Bridgestone and Nintendo are using PlayStation’s character or this violates the exclusivity clause (which, given the unusual situation here, probably depends on the wording of the clause) then Sony has a point.  This also raises the question of how much control a company can have over an actor when it has invested time building an actor into a particular advertising character and associating that actor with its product.   But how much can a company owe an actor’s basic appearance?  In this case, at least, it is clear at least some consumers identify a connection between Lambert and PlayStation.  This article, posted before Sony filed a lawsuit, bears the title “Sony spokesperson Kevin Butler’s latest commercial has him…promoting the Wii?!”

Based on at least one reporter’s impression, Sony may be able to prove that consumers believed that the “Kevin Butler” was in the Bridgestone ads, playing on Lambert’s previous connection with PlayStation.  And while the ad wasn’t exactly for Nintendo products, the fact that the actors were playing on a Nintendo Wii for most of the ad may run afoul of the exclusivity agreement between Lambert and Sony.  But obviously, if the actress who played “Flo” appeared in an All State ad, or that of another similar competitor in the insurance industry, there would be an obvious problem.  The issue will likely ultimately come down to how much the court thinks a company should be able to restrict an actor in order to protect the company’s rights to a character it created.


Source: http://www.ipbrief.net/2012/10/11/sony-sues-its-former-spokesperson-for-trademark-infringement/

Patent Infringement | "Microsoft to add Google Maps to patent infringement claims in Motorola lawsuit"

By: Tyler Lee  
Source: www.ubergizmo.com
Category: Patent Infringement

Patent Infringement

It looks like Google Maps could be in trouble as Microsoft has expanded their patent case against Motorola, and have added Google to the mixF, considering that Google now owns Motorola Mobility. To that extent Microsoft has also added a patent infringement claim on Google Maps, stating that they believe that Google’s service infringed upon a patent Microsoft owned back in 1995 which still has a good 3 years left. The lawsuit was announced in Germany and it was noted that should Microsoft be successful in their claims, Google Maps could no longer be made available in Germany next year along with every Android device that relies on it.

Supposedly every Android manufacturer has licensed Microsoft’s patent portfolio, but according to FOSS Patents’ Florian Mueller, Google opposed Motorola’s licensing of Microsoft’s patent portfolio which has ultimately led to the lawsuit. We’re not sure how this will play out, but safe to say Microsoft’s victory will have an extremely huge impact on Android devices so we’ll keep our eyes peeled for more information when it has been made available.


Source: http://www.ubergizmo.com/2012/10/microsoft-to-add-google-maps-to-patent-infringement-claims-in-motorola-lawsuit/

Patent Infringement | "Microsoft finally sues Google directly for patent infringement"

By: Surur
Source: http://wmpoweruser.com
Category: Patent Infringement


For the first time ever Microsoft has dropped the proxy battle and has attacked Google directly.

Today in the Munich Regional Court  Microsoft announced that it would amend its complaint against Motorola, Google’s owner, to add Google Inc., the operator of the server infrastructure that powers the Google Maps Android app, as an additional defendant.

The current case target’s Google Maps, and mainly deals with delivering maps from an online repository, in this case Google’s Maps server, and then Geotagging.

Previous German patent rulings in Apple’s and Microsoft’s favour have already required Motorola to pull all of its Android-based devices from the German market.  The company has a bad track record in Germany, and Fosspatents note that if Motorola had not been purchased by Google they would have purchased a license a long time ago, like Samsung, HTC and a range of other Android OEMs.

If Google loses this case it could affect many more companies than just Motorola.  Microsoft has told the court they are willing to settle if Motorola takes out a license. It seems the ball is now in Google’s court.


Source: www.google.com/url?sa=t&rct=j&q=&esrc=s&source=blogsearch&cd=10&ved=0CFQQmAEwCQ&url=http://wmpoweruser.com/microsoft-finally-sues-google-directly-for-patent-infringement/&ei=DpZ3UN3bBMXyrQed1YD4Cw&usg=AFQjCNGrtl07XDgjjr39v39gtEAaUk78Cw&sig2=JQTN-q_4VDrPVX-HNaIWmQ

Patent Litigation | "Tech giants to talk patent reform at the U.N."

By: Shara Tibken
Source: http://news.cnet.com
Category: Patent Litigation


Apple, Google, Microsoft and other tech giants are meeting in Switzerland today to discuss patent litigation reform, seeking to find ways to protect their intellectual property without hurting innovation.

The roundtable, hosted by the U.N.'s International Telecommunications Union in its Geneva headquarters, will cover topics such as "potential improvements to existing policy frameworks, entitlement to injunctive reliefs, and definitions of what constitutes a royalty base."

The group hopes to find out how standard essential patents can be enforced without hindering competition and how to make sure licenses can be offered at reasonable terms.

"We are seeing an unwelcome trend in today's marketplace to use standards-essential patents to block markets," Hamadoun Touré, secretary-general of the ITU said. "There needs to be an urgent review of this situation: Patents are meant to encourage innovation, not stifle it."

The participants will include standards organizations, key industry players, and government officials. According to a report from the BBC, some companies attending along with Apple and Microsoft are Samsung, Google, Research in Motion, Intel, Qualcomm, Philips, Huawei, Sony, and Hewlett-Packard.

Patent-related litigation has been rampant in the technology sector, particularly in the fast-growing smartphone and tablet markets. Apple and many other companies, including Samsung, have been suing each other over infringement, and Apple in August won its case against Samsung. Other companies have been making acquisitions -- like Google's purchase of Motorola Mobility -- to help build their patent arsenals.

Google's chief legal officer, David Drummond, told the Wall Street Journal yesterday that "the company is walking a fine line as it seeks reforms in the U.S. patent system" as it tries to reduce lawsuits related to mobile devices. He wants to make it more difficult to get U.S. patents on software.

Meanwhile, many companies submitted statements to the ITU ahead of the roundtable.

Source: http://news.cnet.com/8301-13578_3-57529625-38/tech-giants-to-talk-patent-reform-at-the-u.n/

Trademark Infringement | "Trademark Infringement Case Against AASP-NJ Dismissed"

By: BodyShop Business news
Source: www.bodyshopbusiness.com
Category: Trademark Infringement


After four years of litigation, United States District Judge Kenneth M. Karas has dismissed most of Rockland Exposition Incorporated's (REI) complaint against the Alliance of Automotive Service Providers of New Jersey (AASP-NJ), AASP-NJ board members Tom Elder, Thomas Greco, Glenn Villacari and Thomas Greco Publishing. REI filed suit in 2008 after the association elected not to renew their management contract with REI and its president David McCarey, and moved AASP-NJ’s NORTHEAST Show back to New Jersey.

In an 87-page opinion issued Friday, Sept. 14, Judge Karas dismissed REI's most significant claim – that AASP-NJ and the other defendants infringed on REI's claimed rights in the trademark "NORTHEAST." Therefore, REI's demands on this count for injunctive relief and damages failed. The court also dismissed REI's claims for trademark infringement, dilution and unfair competition under New York law.

The court dismissed REI's claims for false and deceptive advertising, trade libel and disparagement; tortious interference with prospective business advantage; and tortious interference with contract with respect to AASP-NJ, Thomas Greco and Thomas Greco Publishing.

“We are extremely happy that this is over,” AASP-NJ President Jeff McDowell said. “It has been a long, painful experience that has taken its toll on many of the dedicated volunteers who serve our association, and we are proud that we took a stand to make sure justice was served.

“There are many people to thank, especially board members Brian Vesley and Joe Amato. Brian has spent countless hours of his own time making sure that AASP-NJ’s interests were being looked after from day one. Joe went way beyond the call of duty to make sure we were protected from an insurance standpoint. I don’t know where we would be without those two individuals. Our association and our industry are indebted to them.”


Source: http://www.bodyshopbusiness.com/Article/105100/trademark_infringement_case_against_aaspnj_dismissed.aspx?categoryId=

Patent Infringement | "$100m Creative lawsuit over iPod led Apple to “patent it all” "

By: Mark Tyson
Source: http://hexus.net
Category: Patent Infringement

Patent Infringement

In 2006 Apple lost a patent infringement lawsuit initiated by Singapore based Creative Technology. Creative are mainly famous for their PC soundcards (and strategy of “driver obsolescence”) but at this time the company was one of the pioneer manufacturers of portable MP3 players. After the lawsuit Steve Jobs reportedly gathered his senior managers and declared “we're going to patent it all”. From that time on, just before the launch of the first iPhone, Apple’s internal corporate strategy has evolved. Now it has been revealed that Apple spends more money on patent activity than on R&D.

Creative submitted a patent, to the US patent office in 2001, describing a portable media player user interface. It is this patent, awarded in 2005, which barbed Apple and its fledgling iPod media player. After this painful 100 million dollar fine Jobs decided to patent absolutely everything the company came up. You can see Mr Jobs showing off the first iPhone, in the Macworld 2007 presentation below. He ends a section describing the interface of the new smartphone with the phrase “And boy, have we patented it!”

Nancy R. Heinen, Apple’s general counsel at the time this all happened, said Steve Jobs’ “attitude was that if someone at Apple can dream it up, then we should apply for a patent”. Shortly after this time Apple engineers had to take part in monthly patent sessions with lawyers making sure all their inventive thoughts and aspirations got a patent applied to them. Ms Heinen added that “Even if we knew it wouldn't get approved, we would file the application anyway," she continued to explain, "if nothing else, it prevents another company from trying to patent the idea.”

In the last decade Apple has been granted more than 4,000 patents and taken part in many fierce and protracted patent battles. How might things have been different if Creative had lost the patent case in 2006?


Source: http://hexus.net/business/news/legal/46469-100m-creative-lawsuit-ipod-led-apple-patent-all/

Patent Litigation | "NYT: Patent litigation is hurting innovation"

By:  Anthony Garreffa
Source: www.tweaktown.com
Category: Patent Litigation


In case you didn't already realize that all of these patent wars between various companies was hurting not just consumers, and businesses, but it's also hurting innovation. This innovation stops you from getting better, thinner, more exotic products, and now The New York Times has chimed in with a piece on the subject.

 The Times' piece covers the fact that big companies usually strong arm small start-ups with an extensive patent portfolio that usually ends up with an acquisition, and if the smaller company isn't acquired they're sued.

 The Times' piece also reveals that the smartphone industry spent a whopping $20 billion (or so) on patent litigation in the past two years. Companies such as Apple and Google have spent more money on legal battles than research and development in the past twelve months. Splitting this up, we find Apple spending around $3 billion on R&D last year, with another $4 billion to be spend this year. Those numbers may seem large, but they are far less than most other technology companies.

 Source: http://www.tweaktown.com/news/26120/nyt_patent_litigation_is_hurting_innovation/

Trademark Infringement | "Apple alleges trademark infringement by Polish online grocer A.pl"

By:  Michael Santo
Source: www.examiner.com 
Category: Trademark Infringement


Apple has previously sued for trademark infringement over such ludicrous things as the GreeNYC campaign's logo or items that use the word "Pod" in their name but that are totally unrelated to MP3 players.

The bulls-eye, this time, is focused on a Polish grocery store. The store is using a .pl top-level domain name, which makes a lot of sense considering its country of origin. The problem lies in the rest of their website's domain name.

The site is A.pl. A brief look at how that might be pronounced would probably clue you in on at least one thing that Apple is - or might be - upset about.

On Tuesday, the Polish patent office said that Apple had filed a complaint against A.pl, accusing the website of riding on its trademark in three ways. The Polish patent website also detailed the complaint against A.pl: its name is too similar, 2) it is trading on Apple's reputation, and 3) it has a logo that is similar to Apple's.

The logo, in fact, appears to be at a subsidiary of A.pl's, at fresh24.pl (seen above), rather than directly at A.pl.

As has been pointed out before by patent and trademark attorneys, to maintain the validity of its trademark, Apple needs to aggressively pursue those that it considers scofflaws, even if a connection to its trademark seems to be on the more ridiculous side.

Polish patent office spokesman Adam Taukert said, "(The) Apple brand is widely recognized and the company says that A.pl, by using the (sic) name that sounds similar, is using Apple's reputation."

Meanwhile, A.pl CEO Radoslaw Celinski rebutted the complaint, saying that "The accusation is ludicrous."


Source: http://www.examiner.com/article/apple-alleges-trademark-infringement-by-polish-online-grocer-a-pl

Patent Infringement | "Motorola wins patent infringement case against Microsoft in Germany"

By: CBR Home
source: http://mobility.cbronline.com
Category: Patent Infringement




Previously Motorola lost three other patents infringement cases against Microsoft in Germany

Google's Motorola Mobility unit has won a patent infringement case against its rival Microsoft in a German court, the latest in the series of ongoing dispute over patents between both the companies.

The regional court in Mannheim ruled that Motorola did not infringe a Microsoft patent which allows software applications to work with a phone's radio antennas on different handsets.

Microsoft had ealier alleged that Motorola had violated patents related to software application programming interfaces (APIs) used to allow software developers to write a set of code to interface with different mobile devices' radio antennas.

Microsoft associate general counsel David Howard said that this decision does not impact multiple injunctions the company has already been awarded and has enforced against Motorola products in Germany.

"It remains that Motorola is broadly infringing Microsoft's intellectual property, and we hope it will join the vast majority of Android device makers by licensing Microsoft's patents," Howard said.

Previously, Microsoft had won three patent cases against Motorola in Germany, banning some of Motorola's phones from sale.

In February this year, Microsoft had asked EU antitrust regulators to intervene in a patent dispute with Google and Motorola, saying that Motorola is aggressively enforcing patent rights against rivals to stymie competition.

In May this year, a German court in the southern city of Mannheim had ruled that Microsoft has infringed two Motorola Mobility patents, can no longer sell its products locally.

A German regional court in May 2012 ruled that Motorola's Android-based devices infringed Microsoft's patents relating to transmission of long text messages by displaying multiple SMS messages.

Recently, the Ninth Circuit Court of Appeals in San Francisco, US had ruled that Motorola cannot enforce a patent injunction that it obtained on Xbox 360 ban against Microsoft in Germany.


Source: http://mobility.cbronline.com/news/motorola-wins-patent-infringement-case-against-microsoft-in-germany-081012