Portraits, the Father of the Nation and Intellectual Property [India]

A Division Bench of the Kerala High Court on 1 st October 2009 issued notice to the Union government, MontBlanc International GmbH, Germany, and other respondents on a writ petition that sought a ban on the marketing and sale of “Mahatma Gandhi Limited Edition 241” and “Mahatma Gandhi Limited Edition 3000” luxury pens in the country.

The Bench, comprising Chief Justice S.R. Bannurmath and Justice A.K. Basheer, issued the notice on the petition filed by Dijo Kappen, managing trustee of the Centre for Consumer Education at Pala in Kottayam.

Montblanc International, on September 29, launched a set of high-end pens priced at Rs.14 lakh each under its limited-edition series called the “Mahatma Gandhi Limited Edition-241.” The 241 pens in the series were made to signify the “241 miles” travelled by Gandhiji during the Dandi March.

The petitioner said the attempt by the pen company to market luxury pens in the name of the Mahatma Gandhi was in derogation of national honour. The Father of the Nation was considered the epitome of simplicity and making him the symbol of a pen that cost Rs.14 lakh was nothing but an attempt to degrade everything he stood for, and to mock a nation of middle-class and below-the-poverty-line persons who look up to him and whom he tried to liberate.

Mahatma Gandhi wrote "I have no copyright in my portraits but I am unable to give the consent you require." in May 1931, in response to a manufacturer who wanted to use his portrait in roofing tiles. Nearly four score years on, an international luxury brand wants to do precisely what Gandhi expressly bid against - use his portrait in the manufacture of prohibitively expensive, limited edition pens.

As it has turned out, within days of announcing the launch of Montblanc's limited edition pens commemorating the 140th birth anniversary of MK Gandhi, the German premium pen maker has been issued a notice by the Kerala High Court on a writ petition seeking a ban on the marketing and sale of these pens.

Specifically, the petition draws attention to Section 3 of the Emblems and Names (Prevention of Improper Use) Act, 1950 (download link), under which "no person shall, except in such cases and under such conditions as may be prescribed by the Central Government, use , or continue to use, for the purpose of any trade, business or calling or profession, or in the title of any patent, or in any trademark or design, any name or emblem specified in the Schedule or any colourable imitation thereof without the previous permission of the Central government".

Further, Entry 9A of the Schedule to the Act lists “the name or pictorial representation of Mahatma Gandhi” as an item that categorically cannot be used for the purpose of any trade, business or profession under the provisions of the Act. The petition argues that "Mahatma Gandhi is considered as the epitome of simplicity"... and "Making him the symbol of a 14 lakh pen is nothing but an attempt to degrade everything that Gandhiji symbolised, and to mock a nation of middle class and individuals below the poverty line who look up to him and who he tried to liberate."
"Gandhi's great-grandson Tushar Gandhi has endorsed the idea. His charitable foundation has already received a donation of $145,000 from Montblanc and will receive between $200 and $1,000 for each pen sold." Tushar Gandhi is reported to have announced at the pen launch that “It’s a pen which Gandhiji always associated with, it was his greatest tool. Also the donation is for an Indian Trust,which is for the good of the Society.”
The petition counters that the Rs 70-lakh donation received by the Kolhapur-based charitable trust, and Tushar Gandhi's subsequent comment is nothing but a "mischievous statement intended to give an impression that the Mahatma used Mont Blanc pens."
Tushar Gandhi seems to the only man standing in the Gandhi family in his endorsement of the brand. In an overnight response to the launch, the Mahatma's governor-grandson, Gopalkrishna Gandhi, has written a moving piece of his grandfather's relationship with the pen and the act of writing. Here, he recalls the story of the tile manufacturer quoted at the top of this note, as also other anecdotes which clearly suggest that Gandhi himself would have objected to the use of his portrait in this manner, were he alive today.
Meanwhile, Montblanc executives appear to be flummoxed: In an interview with the BBC,the company's chief executive Lutz Bethge stated that the pen was intended to honour Gandhi, and he "wouldn't have thought that people would have reacted negatively"

Foley & Lardner Sued for Allegedly Revealing Trade Secrets [United States]

A patent holding firm has sued Foley & Lardner for allegedly revealing confidential information and for undermining the company's settlement negotiations during a separate lawsuit.
Virginia-based SPH America, a company formed in 2008 by former Fish & Richardson associate Choongoo Park, filed suit against Foley Friday at the U.S. District Court for the Eastern District of Virginia, alleging breach of contract, misappropriation of trade secrets and contract interference, among other claims.

Foley represented Japanese electronics manufacturer Kyocera in 2008 after SPH brought a patent infringement case against the company over technology used in its cell phones. According to last week's complaint, Foley allegedly publicized confidential information it gained during the course of that case by incorporating it in another lawsuit.

The new suit, filed for SPH by Kevin Mun of Virginia's Echelon Law Group, states that during settlement negotiations in the 2008 case, SPH revealed that it had patent rights to 3G wireless technology that allows cell phones to carry high speed internet applications. SPH said it kept those patent rights "confidential," and shared information about them under a non-disclosure agreement. Moreover, SPH claims it informed Kyocera -- represented by Foley partners David Kleinfeld and Kurt Kjelland and senior counsel Steven Foley -- that it did not plan to sue the company over those patents.

In February 2009, Foley filed a complaint in the Southern District of California on behalf of Kyocera, asking for a declaratory judgment that it had not violated any of the 3G patents. The suit, signed by Kjelland and Foley, identified the patents by name and quoted pieces of SPH's settlement talks with Kyocera.

"Neither Foley nor Kyocera notified SPH America, let alone obtained SPH America's consent, prior to filing the complaint, nor did they even attempt to file the complaint under seal or with redaction," SPH claims in its complaint.

The new suit also claims that Foley lawyers published SPH's patent infringement charts, which they acquired during discovery. The charts were made public when the firm asked the U.S. Patent & Trademark Office to re-examine two of SPH's patents. According to the SPH, the infringement charts were "attorney eyes only" under the terms of a court order.

SPH also claims that Foley lawyers violated a protective order issued by the U.S. International Trade Commission, where the patent firm had also sued Kyocera.

Aside from revealing confidential information, SPH also claims that Foley partners distorted SPH's infringement position towards Kyocera, which "undermined" the patent firm's position during settlement negotiations.

Google Must Face Trademark Suit Involving Keyword Ads [2nd Circuit; United States]

In a long-awaited opinion, the 2nd U.S. Circuit Court of Appeals ruled that Google must face a trademark infringement lawsuit for selling keywords that trigger ads.

The three-judge panel reversed a lower court's dismissal of Rescuecom v. Google, 06-4881, in which computer-repair company Rescuecom had claimed that users could be confused by links to competitors' ads that appear alongside Google search results for the company's trademarked name.

Google had persuaded the lower court to toss the case, arguing that its use of Rescuecom's trademark was internal and not a "use in commerce," which constitutes trademark infringement. The dismissal was hailed as a big victory for Google and other search engines, for which keyword advertising is a lucrative business.

The appeals court ruled Friday that "Google's recommendation and sale of Rescuecom's mark to its advertising customers are not internal uses," sending the case back to the trial court. IP lawyers had been anticipating the decision because of mixed rulings on keyword cases.

In dismissing the case, the lower court had relied on 2nd Circuit precedent in the watershed case of 1-800 Contacts v. WhenU.com., which found that 1-800-Contacts didn't have its trademark infringed by keyword advertising sales. In Friday's ruling, the 2nd Circuit expended considerable effort explaining how the Rescuecom case is different. The 2nd Circuit decision doesn't offer that many answers about the legality of keyword advertising. Rescuecom and others will still have to prove their trademarks were infringed in the end.

Same script, 2 films: Big B movie caught in legal row [India]

Percept Picture Company has brought an injunction against UTV Motion Pictures, alleging that the idea of Shoojit Sircar's Shoebite was earlier sold to them as Johny Walker with Big B in the lead. But UTV representatives said they had not received any injunction order yet.

Shailendra Singh of Percept said, "We were to make Johny Walker with Amitabh Bachchan and Shoojit Sircar. Bachchan was even paid a signing amount but we couldn't manage to get the shooting dates and so the project was put on hold. We were very excited about the film, dealing with a pan-India subject, and our company even did a reconnaissance for it." Bachchan apparently even returned the signing amount to Percept and the whole matter was put behind by the company till it saw some promotional material of a film titled Shoebite, with Bachchan and Sarika in the lead. "A red alarm went off in my head," Singh said. "I realised that Shoebite looked identical to our film, Johny Walker." Singh said he tried calling UTV's Ronnie Screwvala but failed. Meanwhile, Percept gathered evidence to try and prove that Sircar had sold the same subject to UTV. Percept then did what it thought was correct; it took the matter to court. The official release from Percept Holdings said, "Percept approached the Delhi high court to protect its intellectual property in the script, Johny Walker, which has been registered. Counsel Rajiv Nayyar, instructed by Ameet Naik of Naik, Naik and Company, and Rishi Agarwal appeared for Percept. The Delhi high court was prima facie convinced that Shoojit Sircar disregarded the terms of his engagement with Percept and was making the Amitabh Bachchan-starrer, Shoebite, with UTV based on Percept's script. The high court granted an injunction, restraining UTV from infringing on Percept's copyright in the script and dialogue of the film, Johny Walker, in any manner, including by making the film, Shoebite, based on the script." It is an ex-parte injunction and a notice has been issued to UTV and Sircar. The court will next hear the matter on September 3. Trade reports say Shoebite is almost 60% complete, having finished schedules in Shimla and Nashik. UTV said it had not received any injunction order while Sircar remained unavailable for comment. Singh and Percept are, however, adamant that UTV will not be able to continue with the shooting/trading of Shoebite till the legal issues are sorted out. But what is the film, Shoebite, about?

Bachchan has written on his blog, "The film is a glimpse into the life of 60-year-old bookstore owner John Pereira, a man like most married men, who takes his wife of 40 years, Aditi, somewhat for granted. His entire world, however, turns upside down the day Aditi meets with a near-fatal accident and falls into deep coma. Sitting there by the side of her inert form, John decides to do something for her as an act of penance. Something extraordinary."

Cybersquatting: Don’t let your IP slip through the net

Cybersquatting is the practice of registering domain names incorporating trade marks of third party companies and then trying to sell the domain name back (for a handsome profit) to the trade mark proprietor. It's not going away - it's growing and it's a huge problem for trade mark proprietors.

The number of domain name disputes lodged in terms of the Uniform Domain Name Dispute Resolution Procedure (UDRP) that applies to .com, .net and .org domain names increased by 18% in 2007 compared to the number filed in 2006 and by 48% versus the number lodged in 2005.

The increase can be attributed to:
The rise of "pay-per-click" advertising, whereby cybersquatters associate the domain name they have registered with a website containing adverts promoting a variety of competing brands. Every time Internet users access this website and click on one of the adverts, the cybersquatter receives money.
Domain tasting, whereby cybersquatters register a number of domain names and then wait several days before paying for the domain names. They then count the domain names that attract the most Internet users and then pay for only for those. The remaining domain names are then deleted. Problem is, in the period between the cybersquatter registering and paying (or does not pay) for the domain name, it is reflected as being registered.
The use of privacy services by cybersquatters, who are thereby able to register domain names without revealing their identity to the general public. Cybersquatters can thus remain anonymous while trade mark proprietors must go to great lengths to establish the cybersquatter's identity.

There are a number of steps that companies can take to combat cybersquatting, the most important of which is to develop a domain name registration and conflict policy.

Such a policy would clearly identify relevant criteria to determine which domain names should be registered, whose responsibility it is to administer them and in which countries they should be registered.

As a general rule, companies should ensure that companies register their trade marks and trading names in the countries in which they trade, thereby preventing third parties from launching a website to sell competing goods and services under a domain name identical to a company's trade marks and trading names.

Not only should a company continually ensure that its most important trade marks and trading names are registered as domain names, but it should continually monitor what domain names have been registered that incorporate its trade marks and trading names.

In short, companies must monitor the domain name space to check what domain names have been registered that might incorporate their trade marks and domain names.

Indian Judiciary has the onerous responsibility of interpreting the balance between Private Interests and Public Welfare – D. Purandeswari [India]

Smt. D. Purandeswari, Minister of State for Human Resource Development has said that the Indian judiciary, as the defender of the majesty of law, has the onerous responsibility of interpreting the balance between private interests and public welfare.

She was speaking at the National Judicial Seminar on the Role of Judiciary in enforcement of the Copyright Law. Following is the full text of the speech of Smt. D.Purandeswari, Minister of State for Human Resource Development:

“I am happy to be here at the inaugural session of the National Judicial Seminar on the Role of Judiciary in Enforcement of the Copyright law. The importance of this Seminar is underlined by the inspiring presence of Shri JusticeV.S.Sirpurkar, Judge, Supreme Court of India, on this occasion. India has a strong parliamentary democracy and constitutional government and is committed to the principles of equity, social justice, secularism and above all, we pride ourselves in the rule of law which dictates the way we conduct our society. Obviously, rule of law is our strength when compared to so many other developing societies; and it is this strength which ranks India so high in the comity of nations, makes our economy a highly desirable destination for investments, gives stability and continuity to our polity, provides strong foundation to our institutions of governance, and makes the State accountable. Even though our present copyright legislation has been in force since 1957, dealing with the law of copyrights is nothing new to the judicial system in India, having been enforced in India since at least the year 1914, when the then Indian Copyrights Act was brought into force by the colonial power. Just as no one judicial decision can resolve al difficulties, similarly no law can for all times to come, lay down all the boundaries of action – technological advances, changing societal preferences and values, call for review and relook at the existing law from time to time. Any law, in the ultimate analysis, ought to provide a level playing field to all stake holders, which is a continuing legislative quest. The present copyright law itself has undergone a number of amendments, the last being those made in 1994 to make the provisions compliant with our commitments under the Trade Related Intellectual Property Rights (TRIPS). The need to review its existing provisions continues to exercise us, particularly in the light of the developments in digital technologies. This is yet another aspect that we need to bear in mind, that India, as a responsible member nation of the world community, respects global sensitivities, irrespective of whether we are signatories to formal agreements or not. A case in point is the Rome Convention, of which India is not a signatory; however, our copyright law is fully compliant with that Convention. Indeed, the process of law making in open democracies like our depends, not merely on treaty obligations or obligations towards the rest of the world, but perhaps even more on social, economic or political preferences from within the Indian society, which is sensitive to mankind’s common destiny and morality. This is also what needs to be appreciated by the outside world, when dealing with a large mature democracy like India, where the legislative intent factors in emerging concerns of humanity and the rule of law ensures justice to all. In its most simple understanding, the Copyright law, like all other intellectual property laws, is a compromise drawn up by society between the necessity of encouraging creativity on one side, and the desirability of society’s access to new knowledge or creative expressions, on the other. The rewards to the creators come from the value that they are permitted by law to derive from consumers in consonance with the rights and protection that the law accords to them from any infringement of exercising such rights. This balance between public welfare, as defined through the exemptions provided by “fair use” by society, and the private interest defined as copyright for a limited period of time is laid down under the copyright law. Infringements by illegal means and abuse of ‘fair use’ require enforcement by the copyright authorities and intervention by the appropriate courts when the occasion so demands. While action is called for against those who infringe copyrights of owners of such rights, those who induce infringement by others are also proceeded against, without affecting the legitimate rights of the public for “fair use” allowed under the law. It is obvious that without the concept of “fair use”, it would be impossible for any society to advance its knowledge for the many as knowledge would then confine itself to the few. Copyright is an intangible property right and the rationale for an entirely market driven approach is to my mind, some what suspect. We in India acknowledge the need to balance the rights of authors and the larger public interest of enriching education, research and access to information. I am aware that the judicial organ of the State cannot play its role effectively, unless copyright administration is made more efficient. Modernisation of the copyrights offices is a task that we have set for ourselves under the 11th Five Year Plan, so that copyright administration is more effective and facilitative for the users. At the same time there is a need for the industry and the copyright owners themselves to be alert to the exercise of the rights under the law. Conflicts among rights-holders put them against one another, thereby affecting all. The body of rights holders owes itself sincere, efforts to dialogue with each other, and also to productively negotiate agreements that make it possible for consumers to access copyrighted materials legitimately. This means a responsibility on rights holders also to ensure affordability for users of copyrighted materials easy accessibility, education of public to respect copyrights, and above all not putting up barriers for the exercise of the copyrights of others. As we all know enforcement of copyright law in India would not be effective of efficient unless the state governments are also co-opted in these efforts. The copyright Enforcement Advisory Council constituted by the Ministry of Human Resource Development with the participation of the rights holders representative bodies and the state governments advised the Central Government in improving enforcement measures. We have managed to persuade almost all our states to establish special cells for enforcement of the copyright law. A number of seminars and other events are held to sensitize public opinion and also to familiarize all concerned about the need for effective enforcement. Courts have an important role in protecting the copyrights and in ensuring a check on the legality and constitutionality of executive action. At the lower levels of the judiciary in particular, awareness building would lead to a more effective and timely execution of its functions. There are those who feel that we need to have special courts to handle copyrights and intellectual property rights matter; perhaps the opportunity provided by this Seminar could be utilized to debate and test the validity of such an idea. I need hardly reiterate before this august audience that the Indian judiciary, as the defender of the majesty of law, has the onerous responsibility of interpreting the balance between private interests and public welfare. In the context of the copyright law, this balance is even more delicate, and I am sure the present Seminar would help guide in particular, the lower judiciary in playing its effective role in the enforcement of copyright law with speed and alacrity. I wish this endeavor all success, and would look forward to the outcome.”

Bobby Bedi blames law enforcement agencies for piracy [India]

A veteran Bollywood filmmaker has said that problems of piracy and counterfeiting were plaguing the Indian entertainment and blamed the law enforcement agencies for the scenario.
Ahead of the World Intellectual Property Day on Saturday, filmmaker Bobby Bedi slammed the government of India for poor enforcement of the "great laws" to curb piracy.

"Today in Bombay, for example, you could go to jail for a night for talking on your mobile phone while driving. But if you are caught with cable piracy, it is not so easy to prosecute. There is no sense in having a law that cannot be enforced," Bedi said.

"But that is India's problem in so many areas. We have great laws and not so great enforcement," Bedi said.

Bedi's remarks assumes significance in view of a recent study by Ernst & Young showing that the Indian entertainment industry was losing $ 4 billion a year, representing almost 40 per cent of their potential annual revenue, due to piracy and counterfeiting.

"Tonight we hear the story of one filmmaker who has made a tremendous contribution to India's burgeoning entertainment industry. He represents one of the thousands of filmmakers around the world who are victims of piracy," said California Congresswoman Diane Watson.

Michael P. Ryan, director of the Creative and Innovative Economy at the GW Law School, argued that originality and innovation are essential to driving long-term growth in developing economies and that piracy creates a real dilemma for filmmakers like Bedi as it curtails their imagination.

"So long as pirates earn a high share of movie revenues, producers must focus on making relatively inexpensive movies. To finance a grander vision, the creators must receive not just the critical but also the monetary rewards of inventiveness.

"The Indian film industry is the largest in the world with more than 1,000 films produced each year," Ryan said.

Bedi is critically acclaimed for his work in films, including Bandit Queen, Fire and Saathya. He is now producing a three-film series on the Indian legend, the Mahabharata, at an estimated cost of $ 70 million. It will be India's most expensive movie venture ever.

According to a report India's television industry loses $ 2.68 billion and as many as 820,000 direct jobs are also lost as a result of theft and piracy.

SC reserves verdict in Dabur trademark case [India]

The Supreme Court on Friday reserved its judgement on a petition filed by Dabur India, which sought to restrain Andhra Pradesh-based K R Industries from violating the intellectual property rights on Dabur Dant Manjan (tooth powder).

A bench headed by Justice S B Sinha reserved the verdict on Dabur's plea against a Delhi High Court order that partly dismissed its petition on alleged IPR infringement by K R Industries. Dabur had moved the High Court in 2002 alleging that K R Industries was infringing its copyright by copying similar colour combination, layout and features as that of Dabur Dant Manjan. The division bench of the High Court had directed Dabur not to combine two different causes of action infringement of copyright and selling goods in similar packaging. The High Court observed that it did not have the territorial jurisdiction to decide on the issue and asked Dabur to file a fresh petition in a competent court.

According to Dabur, it had asked K R Industries to stop manufacturing and marketing its product in a similar packaging and colour combination as that of Dabur Dant Manjan. K R Industries had denied the allegations and filed an application saying that the Delhi High Court did not have the jurisdiction to entertain the Dabur's petition.

End to `Krazzy4' row; film set for release with all songs [India]

Bollywood film `Krazzy4' is set for release on Friday with all song sequences after an advertisement-jingle composer and producer Rakesh Roshan reached a "settlement" shortly after the Mumbai High Court ordered deletion of two songs on plagiarism charges.

After a victory in the Bombay High Court, composer Ram Sampath reached a settlement with producer Rakesh Roshan and gave his consent for the movie's release with all the songs, which were embroiled in the legal case.

Earlier in the day, High Court had upheld Sampath's case prima facie, restraining Roshan from releasing the movie with the songs. Sampath had claimed that his tunes had been copied for two songs--`Krazzy4' (title song) and `Break-free'--and their remixed versions.

But in the afternoon, Sampath reached a settlement with Roshan, and both the parties approached Justice D G Karnik for revocation of his earlier order.
"I won the case, and then we settled the matter "inside the court", Sampath told PTI.

"We went back to the Judge, and got the (earlier) order vacated," he added.
However, he declined to divulge the terms of the settlement. "Once we end the case formally, the settlement will be in the public domain," the composer said.

Sampath's case was that his tunes for the advertisement for Sony Ericsson cell-phones was copied by music composer and Rakesh's brother Rajesh Roshan.

Though the amount that FilmKraft will have to pay as damages to the petitioner is not known, at the end of the day, Bollywood would now perhaps agree that one will really have to be Krazzy in Bollywood to copy ever again!

Two Krazzy4 songs a copy: Mumbai HC [India]

The Bombay High Court today ruled that two songs in forthcoming Hindi film "Krazzy4" are a copy of earlier compositions by jingle composer Ram Sampath and restrained producer Rakesh Roshan from releasing the movie with the songs.

The movie can be released without the songs in question, Justice D G Karnik said. "To my untrained ear, the music (in two works) appeared to be similar", Justice Karnik, who listened to both Sampath's work for a Sony Ericsson cellphone advertisement, and the two songs composed by Rajesh Roshan for the film, said.

The film was due for release tomorrow.

Krazzy 4 receives copyright infringement notice from jingle composer [India]

Hrithik Roshan’s latest chartbuster item song, Krazzy4, has courted legal trouble. Music composer Ram Sampath has dragged Hrithik’s director father Rakesh Roshan and uncle, Rajesh Roshan, to court, alleging that they have “directly lifted” his music for the Krazzy4 album.
Sampath, 32, who has composed music for over 3,000 advertisements, music tracks of films like Khakee and Let’s Talk, and even done a remix for pop sensation Justin Timberlake, has filed a suit for copyright infringement in Bombay High Court. He has alleged that four tracks from Krazzy4 were “direct lifts” from the music he had composed for an advertisement titled ‘Thump’ for Sony Ericsson phones in March 2007.

Ironically, the mobile phone ad campaign too featured Hrithik and his sinewy dance moves. Krazzy4, a comedy produced by Rakesh Roshan featuring four crazy guys, is slated for release on April 11. Sampath, who was present in court on Monday with his wife, singer Sona Mahapatra, asked the court to restrain the Roshans from using the “plagiarised music” and sought Rs2 crore in damages. Justice DG Karnik, who heard the matter on Monday, would hear the music in his chamber on Tuesday to ascertain the allegations. Hearing of the case would continue on Wednesday. The Roshans have denied the claims of copyright infringement and plagiarism. “Irrespective of the outcome, somebody will have to face the music,” quipped advocate general Ravi Kadam, who is representing one of the Roshans.The trouble began in March when Sampath heard the title track of Krazzy4 being played on a music channel. His lawyer Virendra Tulzapurkar said that his client bought a CD of the album and was shocked to find that the title track, a song titled ‘Break Free’ and their remix versions were “directly lifted” from his music for ‘Thump’ without taking his permission or giving him any credit. In fact, credit for the music has been given to music composer Rajesh Roshan.Claiming to be the composer and the sole owner of music rights of ‘Thump’, Sampath has also objected to the “plagiarised music” being broadcast worldwide.

Firm sues over the right to use sunglass[es] design: Fantastic Four - the Rise of the Silver Surfer [United Kingdom]

RDP Limited is a London-based company which sources promotional film merchandise. It lists items connected to Star Wars, Batman and Spider-Man in its list of past products. Sports clothing and equipment firm Oakley is suing all three companies over a pair of sunglasses included in a gift pack produced to promote the Fantastic Four film. It claims that the sunglasses violate rights it holds in the design through a US design patent.

Actor James Marsden wore a specially-made pair of Oakley sunglasses when he played Cyclops in the film X-Men. A design patent exists in the US but not in the UK, where a design for sunglasses could be protected through registration with the UK Designs Registry, part of the UK Intellectual Property Office.

Oakley wants the court to award it an injunction stopping the three companies from making any sunglasses that infringe on its design patent in the future. It also wants the companies to transfer to it any profits it made on the sale of the sunglasses as well as damages in compensation for its lost profits due to the activity and royalty on sales already made.

iPod, iTunes Infringe, says ZapMedia [International]

ZapMedia Services is suing Apple, claiming the company's iTunes online store and iPod portable media player infringe on ZapMedia patents. ZapMedia filed the suit Wednesday in U.S. District Court in Marshall, Texas. "The complaint alleges that ZapMedia Services' property is being exploited in a manner which is unlawful, and by law ZapMedia Services is therefore entitled to a reasonable royalty on Apple's revenues related to the infringement," ZapMedia lawyer Steven G. Hill of the law firm Hill, Kertscher & Wharton LLP said in a statement.

ZapMedia said it filed the suit after multiple attempts to negotiate with Apple starting in June 2006 through the fall of 2007. During the attempts, the company said it made Apple aware of the patents and said the intellectual property was available for licensing. "When someone takes our vision and our intellectual property without a license after several attempts, we have no option but to protect it through every means available to us," said Robert J. Frohwein, general counsel of ZapMedia.

An Apple spokeswoman said Thursday the company doesn't comment on pending litigation.

Beginning in the late 1990s, ZapMedia Inc., the predecessor of ZapMedia Services, developed a system and method for distributing media assets to devices via a portal synchronized with the devices, the plaintiff said. ZapMedia later obtained two U.S. patents, No. 7,020,704 and No. 7,343,414. The original company met with major technology and media companies, including Apple, and described its ideas. Apple launched the iPod MP3 player with an integrated iTunes application in October 2001 and the iTunes online store in April 2003.

Trademark cannot be claimed on common English words [India]

The Bombay High Court has ruled that a trademark cannot be claimed on common, descriptive English words.

Division bench of Justices S Radhakrishnan and Anoop Mohta were hearing a petition filed by cigarette giant ITC challenging an order allowing rival GTC Industries to register a trademark in the name of 'Magnum' for a brand of cigarettes and cigars.

"We are of the view that the word 'magnum' is of common usage and purely descriptive," observed the judges in the order. "It can serve as an indication of character or quality or value of the goods since one of its laudatory and descriptive meaning is 'great'. Such words/marks should not be registered (as a trademark)," they held.

ITC has the major share of 65 percent in the market, owns several brands including Insignia, India Kings, Classic, Gold Flake, Silk Cut, Navy Cut, Scissors, Capstan, Berkeley, Bristol and Flake.

GTC Industries Limited (formerly known as the Golden Tobacco Company), a flagship of Dalmia Group, owns brands including Chancellor, Panama, Style, Esquire, Flair and Ms Special Filter cigarette for women. In December 1987, GTC had, for the first time, filed an application for registering a trademark in the name of 'Magnum' for a proposed brand of cigarettes.

In 1992, ITC opposed the grant of trademark, but the assistant registrar of trademarks, who passed an order in favour of GTC, dismissed its challenge.

ITC then approached the high court, where the matter went on for over eight years and in 2002, the court allowed GTC to register 'Magnum' as a trademark, saying it was not a common Indian word.

An appeal against the order was filed by ITC before a division bench.
The ITC advocate referred to English Law, which contained similar provisions as India's Trademarks Act as well as judgements of the European Courts of Justice to argue that laudatory words like 'magnum' could not be registered, which the court accepted.

The court held that purchasers of cigarettes are common men of all ages and include persons with knowledge of the English language.

The word 'magnum', the judges held, could serve as an indication of the characteristics of goods. Also Section 9(1) (b) of the TM Act "contains an absolute bar for registration of any descriptive and laudatory term," the judges stated in the order.

US patent reform to benefit Indian firms [India]

Indian pharmaceutical firms, which make most of their revenues and profits from the manufacture of off-patent, or generic, drugs, are set to play a larger role in the US, the world’s biggest drug market.

That is, if a US plan to reform patent laws by including provisions for what is called post-grant opposition to patents and limiting avenues for extending patent protection for medicine companies becomes law.

The immediate impact of the law change will be to ease challenges on drug patents and also lower legal costs in such challenges.

The changes anticipated in the Patent Reforms Act, which has already been passed by the US House of Representatives in February, would allow opposing a patent after its grant in the US, as is possible in countries such as the UK, Germany and India, along with a general tightening of patentability rules in the US.

It would also, to a large extent, halt the tactics of research-based drug giants in the US to include all possible claims in the patent application by modifying it several times during the life of a patent through what is known as “ever-greening”.

With the reforms, the US patent office sought to limit the number of times to two that a patent applicant can file “continuations” of patents. Currently, there is no limit on the number of times that a patent holder can keep updating its patent claims through such filings. The draft law is now under consideration of the US Senate.

The patent reforms in the US are aimed at eliminating frivolous patents as also invalidating several existing patents that have received such protection through “continuation” filings based on simple modifications. This would help generic players to enter the market with more products as the legal expenses will go down.

Patent experts said that the reforms that the US has initiated are an attempt to harmonize its patent law with the rest of the world, which follows a comparatively higher threshold for patentability.

The new rules, for instance, will replace the current US system that grants patents to applicant who can prove “first-to-invent” status with a “first-to-file” regime in force in others countries.
With the provision of post-grant opposition, generics companies will get a new opportunity to argue against the unsubstantiated claims made by the patent holder without going to court of law or infringing the patent—both expensive options.

Bone of Fido Parody: Louis Vuitton v. Chewy Vuiton [News Flash]

Louis Vuitton Malletier S.A. v. Haute Diggity Dog concluded that canine chew toys fashioned after Louis Vuitton handbags were a permitted parody that did not infringe or dilute Louis Vuitton’s admittedly well-known marks.

Although the decision breaks little new ground in the trademark jurisprudence of parody and infringement, it was a first opportunity for an appellate court to assess parody under the new Trademark Dilution Revision Act.

E-Business Patent Infringement Cases: Complex Issues to Unravel

Certainly, Google has already earned its place in history as the most-sued Internet Company. Every novel intellectual property ("IP") cause of action has been filed against the search engine giant. First, we witnessed the copyright infringement round. Google has been sued for every type of copyright infringement on thumbnails, meta-tags, keywords, etc. Concomitant with these copyright infringement lawsuits, Google was also accused of trademark violations in keywords, sponsor links, etc. Now, it is the time for the e-business patent round. Google was sued for business patent infringement and, like in most of the other IP lawsuits, it was triumphant (well, partially) this time.

A United States Court of Appeals recently held that Google is not liable for patent infringement when it uses two methods that link online records and provide users with relevant web pages. The plaintiff, Hyperphrase Technologies, LLC, and Hyperphrase, Inc. ("Hyperphrase"), held two business patents related to some systems and methods that linked online records. The technical process used by these systems and methods is similar to the one used by Google through its "AdSense" and "AutoLink" methods. "AdSense" is an advertising method used by Google that combines the advertiser's content with contextually related websites. AutoLink is an online application incorporated into people's computer browser that that helps Google identify relevant web addresses and information according to some ‘string of characters' that they call tokens. Hyperphrase claimed that Google violated its online linking and patented methods through the use of "Autolink" and "AdSense."

"We're very pleased that the Federal Circuit agreed that AdSense does not infringe any of Hyperphrase's patents. We continue to believe the remaining claims in the lawsuit are without merit, and will vigorously defend against those claims," Michael Kwun, Google's managing counsel for litigation, recently said after the US Court of Appeals held (on December 26, 2007) that Google's ‘AdSense' did not infringe on Hyperphrase's patent. Yet, the case was remanded as to Google's business patent infringement with respect to the use of "Autolink" system.

This intriguing case so far has two significant juridical teachings. First, we learned that business patents and its electronic use are slowly but steadily becoming the object of intellectual property litigation. For the time being, this litigation is centered at a domestic level; but, the legal community must be vigilant of how transnational litigation and jurisprudence on e-business patents evolves. Second, we also learned that business patents, especially e-business patents, create extremely complex litigation cases. E-business patent infringement cases involve highly technical computer methods and systems (some related to mathematical equations) and sharp legal and semantic analysis. In other words, computer/business science and sophisticated legal reasoning merge when dealing with a business patent case.

Recent patent/copyright infringement cases filed in U.S. District Courts

Beneficial Innovations Inc. vs. AOL LLC et al Beneficial Innovations alleges it owns the inventions claimed in U.S. Patent Nos. 6,712,702 for Method and System for Playing Games on a Network and 6,183,366 for Network Gaming System. The suit names AOL, The Dallas Morning News, Google, IGN Enterprises, Morris Communications, Tribune Interactive, Yahoo! and YouTube as defendants in a patent infringement suit. The original complaint states that defendants have infringed the patents through Web sites including www.aol.com; www.google.com; www.yahoo.com; www.youtube.com and others. "Plaintiff has been damaged by defendants' infringement of the patent and will suffer additional irreparable damage and impairment of the value of its patent rights unless defendants are enjoined from continuing infringement," the complaint states. The plaintiff is seeking compensatory damages, treble damages, fees, costs, interest and other relief as justice requires. Charles Ainsworth of Parker, Bunt & Ainsworth PC in Tyler is representing the plaintiff. The case has been assigned to U.S. District Judge T. John Ward and referred to Magistrate Charles Everingham. Case No. 2:07-cv-555-TJW-CE Dec. 21 Paul Bennett et al vs. Alcoa Closure Sytems International et al Paul H. Bennett of California and Thom M. Perlmutter of Rhode Island allege they are co-inventors and co-owners of U.S. Patent No. RE39,867 for a Tamper-Evident Container Closure. The plaintiffs allege that Alcoa Closure Systems International, Bericap LLC, Blackhawk Molding Co., CG Roxane, Crystal Geyser Water, Erie County Plastics, International Plastics, Rexam Closure Systems and Seaquist Closures infringe the '867 Patent through manufacture, use and sales of tamper evident closures. Various push/pull, thumb pop and twist types of tamper-evident closures are named in the suit as infringing products. Plaintiffs are asking that defendants "account for and pay … all damages caused by the infringement of the '867 Patent, which by statute can be no less than a reasonable royalty." They are seeking enhanced damages from the defendants as a result of their willful infringement, interest, fees, costs and other just and proper relief. Edward W. Goldstein of Goldstein, Faucett & Prebeg LLP of Houston is representing the plaintiffs. The case has been assigned to U.S. District Judge T. John Ward. Case No. 2:07-cv-558-TJW Dec. 28 Parallel Networks LLC vs. Netflix Inc. et al Plaintiff Parallel Networks is a Texas limited liability company with its principal place of business in Dallas. It claims to have the rights to U.S. Patent Nos. 5,894,554 and 6,415,335 B1, which concern systems and methods for managing dynamic Web page generation requests. Parallel Networks alleges that Netflix, SkyMall, ATA Airlines, John Wiley & Sons, E*Trade Financial Corp. and The Finish Line make and/or use systems within the scope of one or more claims of the patents-in-suit. "Parallel Networks has suffered damage by reason of defendants' infringement and will continue to suffer additional damage until this court enjoins the infringing conduct," the original complaint states. Plaintiff alleges that the defendants' infringement is willful and deliberate, which entitles Parallel Networks to increased damages. The plaintiff also seeks an injunction, fees, costs and other just and proper relief. Larry D. Carlson of Baker Botts LLP in Dallas is lead attorney for the plaintiff. Attorneys from Ireland, Carroll & Kelley in Tyler; Brown McCarroll LLP in Longview; Jones & Jones of Marshall; and Ward & Smith Law Firm of Longview are also of counsel for the plaintiff. The case has been assigned to U.S. District Judge Leonard E. Davis. Case No. 2:07-cv-562-LED PACT XPP vs. Xilinx Inc. and Avnet Inc. PACT is a German corporation and claims it is the owner of eight patents at issue; including U.S. Patent No. 6,088,795 for a Process for Automatic Dynamic Reloading of Data Flow Processors and Units with Two- or Three-Dimensional Programmable Cell Architectures. PACT was assigned the eight patents by co-inventors Martin Vorbach and Robert Munch. "Defendants have infringed and continue to infringe the patents by the Virtex and Spartan lines of FPGAs," the original complaint states. "Defendants' acts of infringement have caused damage to PACT, and PACT is entitled to recover from defendants the damages sustained by PACT as a result of defendants' wrongful acts in an amount subject to proof at trial." The plaintiff alleges that the infringement is willful and deliberate, entitling PACT to increased damages, attorney fees and costs. The plaintiff is also seeking interest and other relief the court may deem just and proper. Robert Christopher Bunt of Parker, Bunt & Ainsworth PC in Tyler is representing the plaintiff. Attorneys from Susman Godfrey LLP and Jones & Jones of Marshall are also representing the plaintiff. The case has been assigned to U.S. District Judge T. John Ward and referred to Magistrate Charles Everingham. Case No. 2:07-cv-563-TJW-CE Media Technologies Licensing LLC vs. Tristar Productions Inc. et al Plaintiff Media Technologies claims to own the inventions described in U.S. Patent Nos. 5,803,501 and 6,142,532 for a Memorabilia Card. The U.S. Patent and Trademark Office issued Ex Parte Reexamination Certificates for the '501 and '532 Patents in November 2007. Media Technologies alleges that defendants Tristar Production, Press Pass Inc., Ace Authentic, Bench Warmer International, Stellar Collectibles, SA-GE Collectibles and Razor Entertainment Group have infringed on the patents. The plaintiff is seeking a decree permanently enjoining defendants, compensatory damages, enhanced damages, attorney fees, court costs, interest and other relief as justice requires. S. Calvin Capshaw of Brown McCarroll LLP in Longview with attorneys from Parker, Bunt & Ainsworth in Tyler and Dovel & Luner LLP of Santa Monica, Calif., are representing the plaintiff. The case has been assigned to U.S. District Judge T. John Warner. Case No. 2:07-cv-564-TJW Dec. 31 Mondis Technology Ltd. vs. LG Electronics Inc. et al Mondis Technologies is a corporation organized under the laws of England with its principal place of business in London. The original complaint refers to seven patents, including U.S. Patent No. 6,057,812, for computer monitors and image display units. Mondis Technologies names LG Electronics, Hon Hai Precision Industry Co., FoxConn and Innolux Display Corp. as defendants in the patent infringement suit. "Mondis has been damaged by defendants' infringing activities," the complaint states. "Defendants will continue their infringing activities, and continue to damage Mondis, unless enjoined by this court. Mondis has no adequate remedy at law." Mondis is asking that the court enjoin defendants from further infringement of said patents, award damages sufficient to compensate it for the infringement, treble damages, interest, attorney fees, costs, expenses and other relief. Otis W. Carroll of Ireland, Carroll & Kelley PC in Tyler is representing the plaintiff with attorneys from Dechert LLP in Philadelphia, Pa., of counsel. The case has been assigned to U.S. District Judge T. John Ward and referred to Magistrate Charles Everingham. Case No. 2:07-cv-565-TJW-CE

Qualcomm hit with patent infringement injunction

A US Federal District Judge issued an injunction today against wireless giant Qualcomm, ruling that "certain of its products" for the US market infringe three Broadcom patents.

"We are very pleased with today's ruling which addresses Qualcomm's improper use of our patented technology covering cellular chips and software for advanced consumer devices," said David A. Dull, Broadcom's senior vice president and general counsel.

"Broadcom should not have to compete against companies that use Broadcom's own patented technology against us, and this injunction puts a stop to Qualcomm doing just that."

Qualcomm said that the ruling from Judge James V. Selna is "complex", and that it expects further clarification from the court on various aspects of the judgment, including the effect of Verizon's existing licence agreement with Broadcom.

The ruling provides a 'sunset' provision that stays the order until 31 January 2009 for QChat and 1x/EV-DO products that were found to infringe any of the three patents by providing Qualcomm a limited licence, subject to an ongoing royalty payment.

This licence is limited to products sold to customers on or before the jury verdict was delivered on 29 May 2007.

The '010 and '317 patents apply only to Qualcomm's QChat and 1x/EV-DO products. Qualcomm said that it is continuing the development of "workaround solutions" for the '010 and '317 patents.

"The order imposes an immediate injunction on WCDMA products for the US market that were found to infringe the '686 video encoding patent," Qualcomm stated.

"Qualcomm today announced the availability of new chips that have already been sampled to customers and expects to have hardware and software workarounds to the '686 patent commercially available in handsets before the end of the first calendar quarter of 2008."

The company added that it will attempt to obtain "further relief and clarity " from the courts on certain aspects of the order.

However, Qualcomm warned that the inability to obtain such relief will probably have an immediate, short-term impact as handset customers transition to new designs for WCDMA products relating to the '686 patent.

The ruling will also have a medium-term impact to certain products in the development pipeline for the US market, and longer-term ability to implement workarounds in time for commercial availability of handsets by the January 2009 'sunset' expiration.

"Qualcomm is evaluating all its options, including seeking appropriate stays and appeals, and will comply with all directives and orders of the court," the company said.

"The US Patent Office has also instituted a re-examination of the validity of the '317 patent claims."

Digg sued for patent infringement

Digg and several other companies have been sued for patent infringement in Marshall Texas by Beneficial Innovations (i.e., Sheldon Goldberg). There have actually been two lawsuits. In the first one, filed in June and amended later, Beneficial sued 9 companies including Digg and CNet, alleging that they infringed US Patents 6,712,702 and 6,183,366, which cover playing games over a network.

In the second suit, filed in late December, Beneficial accused 8 more companies including Google and Yahoo of infringement. In both suits, the plaintif claimed infringements somewhere on the defendants’ web sites, but didn’t go into detail about exactly where and how the infringements occurred. All they provided were the home page URLs for the companies in question.

In July, Digg filed for an extension to answer the suit, which was granted. In a response filed on the last day of the extension, Digg’s lawyers wrote, in part:

Digg has not and does not infringe (either literally or by the doctrine of equivalents), induce infringement, or contribute to the infringement of any valid and enforceable claim of the ’702 or ’366 Patents.

One or more of the claims of the ’702 and ’366 Patents are invalid for failure to meet one or more of the conditions of Patentability set forth in 35 U.S.C. §§ 101 et seq.

On information and belief, the ’702 and ’366 Patents are unenforceable due to an unreasonable and unexplained delay in prosecution.

Digg counterclaimed and asked the court to declare not only that Digg did not infringe upon the two patents, but also that the patents themselves are invalid. Beneficial replied in October that (surprise) it didn’t agree. The cases are still pending.