Bloomberg News

N.Y. Times, Roche, Citigroup: Intellectual Property

March 03, 2009

The U.S. Supreme Court (1000L:US) will consider reviving a settlement under which dozens of publishers would pay freelance writers $18 million for electronic rights to newspaper and magazine articles.

Heeding calls from both publishers and writers, the justices agreed to review a lower court ruling that said federal judges lacked power to approve the settlement because most of the articles weren’t registered with the U.S. Copyright Office.

New York Times Co. (NYT:US) and units of News Corp. (2FA:US), Reed Elsevier Plc and Thomson Reuters Corp. (TRI:US) were among the companies urging the Supreme Court to hear the case. They say that some publishers have had to remove articles from electronic archives and that a comprehensive settlement is needed so that companies can restore their databases without facing writer lawsuits.

The publishers argued in their appeal, filed in Washington, that class-wide releases are necessary to restore the integrity of the “national archival electric record of the nation’s magazines and newspapers.”

The settlement grew out of a 2001 Supreme Court decision that said publishers violate author copyrights by putting freelance articles on the Internet and CD-ROMs without permission. The 7-2 ruling suggested that those involved in the case should work with the courts to develop a system for compensating writers.

The 2nd U.S. Circuit Court of Appeals nonetheless said in a 2-1 decision that federal copyright law gives the courts jurisdiction only over suits involving registered copyrights.

The appeals court said that during settlement talks the publishers agreed with that view, contending that authors couldn’t sue unless they had begun the registration process and that consequently a class-action suit was impractical. Up to 99 percent of all works at issue aren’t registered.

The appeals court conclusion has drawn fire from all sides in the case, including a group of writers who objected to the settlement as providing insufficient compensation. They joined the publishers and settling writers in urging Supreme Court review.

The case is Reed Elsevier v. Muchnick, 08-103, U.S. Supreme Court (Washington).

Directional Publishing Sues Tamsan Design Seeking $3 Million

Directional Publishing Inc., an art publisher and distributor, sued Tamsan Design Inc. on Feb. 27 in federal court in Mobile, Alabama, alleging that Tamsan infringed copyrights by selling pictures to which it didn’t own the rights.

Directional also sued husband and wife Steven and Tamara David. The company claims the Davids copied and distributed the artworks owned by Directional and were the “moving force” behind the infringement, according to the complaint.

The lawsuit concerns pictures of seashells and beach chairs by the shore rendered in pastel colors with titles such as “Sea Study I” and “Recline Time I.”

Directional seeks an injunction to stop the copying and distribution of the artwork by Tamsan, as well as money damages. Although the damages remain to be calculated, they “are not less than” $3 million, the complaint said.

Tamsan and the Davids haven’t yet appeared in the action. Steven and Tamara David couldn’t be reached for comment.

The plaintiff is being represented by Marcus R. Chatterton of Balch & Bingham in Birmingham, Alabama.

The case is Directional Publishing Inc. v. Tamsan Design Inc., 9cv00404, U.S. District Court, Northern District of Alabama (Mobile.

For other copyright news, click here.


Takeda Unit Sues Teva Over U.S. Patents for Velcade Cancer Drug

Takeda Pharmaceutical Co.’s Millennium unit accused Teva Pharmaceuticals U.S.A. Inc. of infringing two U.S. patents for Velcade, a drug used to treat blood cancer.

A subsidiary of Teva Pharmaceutical Industries Ltd. of Petah Tikva, Israel, applied for U.S. Food and Drug Administration approval to sell a generic form of the injectable medicine in violation of the patents, Cambridge, Massachusetts- based Millennium Pharmaceuticals Inc. (MLNM:US) contends in the complaint.

The case is Millennium Pharmaceuticals Inc. v. Teva Parenteral Medicines Inc., U.S. District Court for the District of Delaware (Wilmington).

To see the patents click: 6,713,446 and 6,958,319.

Callaway Golf Sues Acushnet Again Over Patent, Company Says

Callaway Golf (ELY:US), the company that designs, makes and markets golf equipment, sued Acushnet Co., the golf business of Fortune Brands Inc. (FO:US), claiming its new golf balls infringe patents owned by Callaway Golf, the company said in a statement.

In the suit, filed today in federal court in Wilmington, Delaware, Callaway claims the new Acushnet 2009 Titleist Pro V1 and Pro V1x golf balls, available to the public in spring 2009, infringe on golf ball patents owned by Callaway, the company said in the statement.

Callaway has sued Acushnet in the past. In 2006, it sued Acushnet and obtained a permanent injunction “halting sales of earlier versions of the Pro VI of golf balls,” which resulted in a nationwide recall, the statement said.

India Top Court Wants Roche Patent Case Decided in Eight Weeks

India’s Supreme Court yesterday asked the patent controller to decide on a challenge filed by two patient groups against Roche Holding AG’s Valcyte in eight weeks.

The post-patent grant issue filed by the voluntary agencies should be decided by the assistant controller of patents in Chennair within the stipulated time, said the bench headed by Justice S.H. Kapadia,

The groups representing AIDS patients were asked to file their application in four weeks, the court said. Applications filed by drugmaker Cipla Ltd. and other agencies have also been referred to the patent authority.

Two patient groups had challenged the grant of the patent to Roche without hearing their July 2006 claim that the drug lacked novelty. The groups also say the drug was first patented in the U.S. in 1994, while India provides product protection only for medicines patented after 1995.

The Supreme Court on Dec. 18 last year granted interim protection to Roche in a patent infringement case against Cipla, India’s second-biggest drugmaker by market value, filed in the Bombay High Court.

Pending the patent controller’s decision, the suit against Cipla can’t be dismissed in view of a Madras High Court judgment, the Supreme Court said. Roche is seeking to stop Cipla from selling a copy of Valcyte.

Micron Offers Patents to Taiwan Chipmakers, Economic Daily Says

Micron Technology Inc. (MU:US) is offering Taiwan access to more than 2,500 patents in exchange for being selected by the island’s government to lead a proposed new chip company, the Economic Daily News said, citing Michael Sadler, the U.S. company’s senior executive in Taiwan.

Micron is interested in investing in the holding company the Taiwan government is proposing as part of its bailout plan for the island’s money-losing memory-chip makers, the Taipei- based, Chinese-language newspaper said.

Taiwan has said it aims to boost the competitiveness of its chipmakers through an industrywide consolidation with foreign companies such as Micron and Japan’s Elpida Memory Inc. Micron is the largest U.S. memory-chip maker.

For other patent news, click here.


Citigroup Sues Look-Alike Cybersquatter to Protect Trademark

Citigroup Inc. (C:US) sued in federal court in Alexandria, Virginia, to stop an unidentified person from using the domain name “,” according to the Feb. 27 complaint.

The complaint names only the domain name as a defendant, known as proceeding in rem, or against the thing itself. This is permitted under the federal Anticybersquatting Consumer Protection Act. The domain name is being used to direct business to competitors of Citigroup, according to court papers.

New York-based Citigroup, which said it has owned the Citi mark since 1959, said it uses the, and domain names and “has spent substantial sums” advertising the Citi marks, according the court papers. The “infringing domain name” was registered using a Canadian registrar, the complaint said.

The bank said the domain name infringes on its mark and is confusingly similar to Citibank. The name is “currently associated with a pay-per-click Web site that features links to Citigroup’s competitors” as well as links to sites that sell competing products, the complaint said.

The bank seeks an order directing the Public Interest Registry to change the name of and to register it to Citigroup.

Citigroup is represented by Janet Shih Hajek of Greenberg Trauig in Washington. hasn’t yet appeared in the action.

The case is Citigroup, Inc. v., 9cv00223, U.S. District Court, Eastern District of Virginia (Alexandria).

Microsoft Sues Instaclick Over Xbox, Encarta, Other Domain Names

Microsoft Corp., the world’s largest developer and maker of computer software, sued Instaclick Inc. and an individual in federal court in Miami on Feb. 27 for infringing company service and trademarks, according to court papers.

Instaclick and a man named Dan Traina “are the registrants and users of numerous Internet domain names that contain or consist of Microsoft marks” such as Encarta, Xbox, Xbox Live, Xbox360, Windows and Hotmail, or “intentional misspellings of Microsoft marks,” the complaint says.

The Web sites bearing names used by Instaclick confuse consumers and the links provided in them lead to products and services that aren’t endorsed by Microsoft, the complaint says.

Microsoft seeks damages of $100,000 for each domain name used by the defendants relating to cybersquatting claims and has asked the court to treble the amounts, as well as statutory damages under the Lanham Act for trademark infringement.

No publicly listed telephone number could be found for Dan Traina or Instaclick. Neither has yet appeared in the action.

Microsoft is represented in the action by Jonathan B. Morton of K&L Gates LLP in Miami.

The case is Microsoft Corp. v. Instaclick Inc., 9:09-cv- 80343, District Court, Southern District of Florida (Miami).

Danone Claim for Wahaha Brand Belongs in China, U.S. Judge Says

Groupe Danone SA, the French company fighting its former Chinese partner Hangzhou Wahaha Group for control of the $2.4 billion Wahaha beverage brand, should pursue its claims in China’s courts, a U.S. judge said.

California has no jurisdiction in a case over Ever Maple Trading Ltd. and Hangzhou Hongsheng Beverage Co., the state’s Superior Court Judge Carl J. West said in a ruling filed Feb. 27 in Los Angeles. China is a more suitable place for Danone’s claims against the wife and daughter of Wahaha Chairman Zong Qinghou, the legal representatives of the companies, the judge said in his order.

Danone, the world’s biggest yogurt maker, has yet to win a case in the legal battle that’s sparked more than 30 lawsuits in at least seven countries as it tries to gain control of the Chinese brand that means “laughing child.” China was Paris- based Danone’s third-biggest market after France and Spain before the dispute with Wahaha Group became public in 2007.

A spokesman for the Danone described the ruling as “procedural” in nature and said it does not address the merits of Danone’s claims.

West declined to dismiss the claims and required both sides to report every six months on the status of the case in China and reserved the right to let the claims against the two individuals proceed in California if China proves to be an unsuitable forum.

Lance Etcheverry, a lawyer for the defendants, said today his clients “are thrilled” with the ruling.

Danone established its venture with the Chinese beverage maker in 1996 to produce bottled water, teas and juices for the world’s most-populous nation using the Wahaha brand. As part of their original agreement, Wahaha Group agreed to transfer ownership of its trademark to the venture.

The case is Group Danone v. Kelly Fuli Zhong, BC372121, California Superior Court (Los Angeles.)

For more, click here.

Internet Piracy/Regulation

Telenor Rejects Demands to Block Access to Pirate Bay Web Site

Telenor ASA (TELNY:US), the Norway-based telecommunications, information-services and media company, rejected demands by the International Federation of the Phonographic Industry and other organizations to block access to the Swedish Web site Pirate Bay, the company said yesterday in a statement.

In a Feb. 27 letter to Simonsen Advokatfirma DA, Telenor refused to block access to Pirate Bay as requested by the law firm on behalf of IFPI, the Norwegian Videogram Association and the Norwegian Film Distributors Association, according the statement.

ISPs are “not complicit” in the actions of customers on the Web,” Telenor said in the statement. “Asking ISPs to control what Internet users can and cannot download is just as wrong as asking the Post Office to open and read letters and decide what should and should not be delivered.”

There is “no legal basis for the demand for ISPs to control and/or assess the content users download,” Telenor said. At the same time, Telenor “does not condone pirating of material and illegal file sharing,” according to the statement.

IP Moves

Kirkland & Ellis Expands IP Practice Group, Law Firm Says

Kirkland & Ellis LLP will add three partners, Dale Cendali, Claudia Ray and Diana Torres, to its intellectual-property practice group.

Cendali and Ray will be based in the firm’s New York office. Torres will join the Los Angeles office.

Cendali, an IP litigator, previously was chair of O’Melveny & Myers LLP New York Intellectual Property and Technology practice and firmwide chair of the Copyright, Trademark, and Internet subpractice.

Before joining Kirkland, Ray was a partner in O’Melveny’s New York office, focusing on copyright, trademark and Internet- related litigation.

Torres comes from the Los Angeles office of O’Melveny, where she was a partner focused on copyright, trademark, false advertising, trade secrets and Internet law.

Google’s South African Manager to Leave, Eyewitness News Says

Google Inc.’s country manager in South Africa, Stafford Masie, resigned after 18 months with the company, South Africa’s Eyewitness News reported.

He will leave the position at the end of April.

Masie said he “needed a break” and wanted to spend more time with his family, Eyewitness News reported.

According to Masie, Google has begun looking for a replacement, Eyewitness News said.

To contact the reporter on this story: Carla Main in Jersey City, New Jersey, at

To contact the editor responsible for this story: David E. Rovella at

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