Bloomberg News

Freescale, EBay, P&G, Elpida: Intellectual Property

July 13, 2011

(This is a daily report on global news about patents, trademarks, copyright and other intellectual property topics. Adds Intellectual Ventures item in top section.)

July 13 (Bloomberg) -- A U.S. trade agency agreed to investigate claims made by Freescale Semiconductor Inc. that Funai Electric Co., Mediatek Inc. and Zoran Corp. infringed a patent for chip technology used in televisions.

Freescale, based in Austin, Texas, filed the complaint with the U.S. International Trade Commission on June 8, seeking to block imports of products from those companies, according to an ITC statement on July 11. The trade agency agreed to review the claims, it said.

The ITC, an independent federal agency, has the power to block imports into the U.S. of products it determines to have violated patents, including devices that use those products. Freescale alleges infringement of a patent issued in 1995 for technology used to reduce unwanted signals between integrated circuits, according to the complaint.

Mediatek was aware of the case on June 8 and doesn’t see any impact on its operations, Sharon Lo, a spokeswoman for the Hsinchu, Taiwan-based company, said by telephone yesterday. Funai is aware of the case, Naoyuki Takanaka, a spokesman in Osaka, said by telephone. Both declined to comment further.

A call to the office of Sunnyvale, California-based Zoran wasn’t answered after office hours. Zoran, which makes chips for digital audio and video products, agreed to be bought by CSR Plc in a $484 million cash-and-share transaction, CSR said June 17.

Freescale filed a similar complaint last year against Funai, with Mediatek and Zoran added to the new complaint, according to documents the company submitted in support of the June 8 case.

The current ITC case is In the Matter of Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions, 337-786, U.S. International Trade Commission (Washington). The earlier ITC case is 337-709, U.S. International Trade Commission (Washington).

Myhrvold Sues Hynix, Elpida as Chipmakers Balk at Royalty

A patent business controlled by former Microsoft Corp. Chief Technology Officer Nathan Myhrvold sued Hynix Semiconductor Inc. and Elpida Memory Inc., along with 10 of their customers, after the companies refused to pay royalties on computer-chip technology.

The complaint by Intellectual Ventures LLC targets products made by Ichon, South Korea-based Hynix, the world’s second- largest maker of computer-memory chips, and Tokyo-based Elpida, the third-largest. Wal-Mart Stores Inc., Dell Inc. and Best Buy Co., which make or sell products that have Hynix or Elpida chips, were also targeted in the lawsuit.

Closely held Intellectual Ventures, founded by Myhrvold after he left Microsoft in 2000, has bought more than 30,000 patents and collected almost $2 billion in licensing fees, according to the complaint. Hynix and Elpida have “failed and refused to license Intellectual Ventures’ patents on reasonable terms and continues to use those inventions without permission,” the Bellevue, Washington-based company said in the complaint filed July 11 in federal court in Seattle. This is the forth patent-infringement suit Intellectual Ventures has filed since December.

The other companies named in the new suit are: Acer Inc., A-Data Technology Co., Asustek Computer Inc., Hewlett-Packard Co., Kingston Technology Co., Logitech International SA and Pantech Co.

In dispute are patents 5,654,932, 5,982,696, 5,500,819, 5,687,132 and 5,963,481. The first four patents were originally issued to Cirrus Logic Inc. of Austin, Texas, between 1996 and 1997. The other patent was issued to the Enhanced Memory Systems unit of Ramtron International Corp. in 1999.

Investors in Intellectual Ventures include Microsoft, Apple Inc., JPMorgan Chase & Co., and the Mayo Clinic, according to a court filing in a Xilinx Inc. lawsuit against Intellectual Ventures that challenged some of patents.

Myhrvold is a columnist for Bloomberg View, which is owned by Bloomberg LP, the parent company of Bloomberg News. He is also the author of “Modernist Cuisine,” a six-volume The case is Intellectual Ventures I LLC v. Hynix Semiconductor Inc., 11cv1145, U.S. District Court for the Western District of Washington (Seattle).

For more patent news, click here.

Trademark

EBay May Be Liable in L’Oreal Trademark Suit, EU Court Says

EBay Inc. may be held liable for trademark breaches on its auction site if it has knowledge of the infringing data, the European Union’s highest court said in a dispute involving cosmetics maker L’Oreal SA.

The EU Court of Justice in Luxembourg ruled yesterday that, as an operator of an online platform, EBay is liable if it “played an active role” that would “give it knowledge of or control over the data relating to the offers for sale.”

L’Oreal has argued EBay, the world’s largest online marketplace, is liable for trademark breaches, citing its active involvement in the pre-sale, sale and after-sale processes.

The EU court was called in at the request of the U.K., which sought guidance in 2009 after a local tribunal found EBay wasn’t liable for trademark breaches by users. A French court ordered the two companies into mediation in 2009 after saying EBay’s efforts to block sales of counterfeits showed its good faith, and in 2008 a Belgian case rejected similar claims by L’Oreal, the world’s largest cosmetics company.

“The judgment provides some clarity on certain issues, and ensures that all brands can be traded online in Europe,” said Stefan Krawczyk, EBay’s European government-relations director. “A lot of cases will still have to be assessed by the national courts. We’ve moved on -- we fulfill most of these conditions now anyways.”

EBay, based in San Jose, California, had hoped the EU court ruling would provide enough legal guidance to help settle pending trademark disputes between it and L’Oreal, he said. The EU court ruled last year, in a dispute between Google Inc. and LVMH Moet Hennessy Louis Vuitton SA, that Internet hosts may benefit from an exemption under the EU’s e-commerce law only if their role in processing potentially infringing data is neutral.

Laurence Balmayer, a spokeswoman for L’Oreal in Paris, said the company would study the ruling before commenting.

The case dates back to 2007 when L’Oreal sent a letter expressing its concerns about the “widespread” sale of fake products on EBay’s European websites and asking it to address those concerns. L’Oreal sued, saying EBay hadn’t done enough.

Trademark-protected words EBay bought to bring visitors using search engines to its site via sponsored links were a point of contention raised by L’Oreal. While L’Oreal said the practice helps guide people faster to fake products, EBay and the U.K. government argued it is meant as an EBay advertisement.

The case is C-324/09, L’Oreal SA, Lancome parfums et beaute & Cie SNC, Laboratoire Garnier & Cie, L’Oreal (UK) Limited v. EBay International AG, eBay Europe SARL, eBay (UK) Limited.

P&G Sues German Private-Label Manufacturer for Infringement

Procter & Gamble Co., the world’s largest consumer products company, sued a private-label manufacturer for trademark infringement in the District Court of Dusseldorf, according to a statement from the Cincinnati-based company.

Luhns GmbH is accused of infringing trademark rights related to P&G’s Fairy dishwashing liquid. According to the statement, Luhns is selling Magnum private-label dishwashing liquid to a retailer in the U.K.

The bottle of the Luhns product too closely imitates the bottle shape and overall appearance of the Fairy product, P&G said in its statement.

The company filed the case to protect its investments in the innovations behind the Fairy product and to ensure that customers aren’t being confused, Deborah P. Majoras, P&G’s chief legal officer, said in the statement.

P&G seeks an order barring the sale of infringing products and any future intellectual property violations, the company said.

Luhns, based in Wuppertal, Germany, didn’t respond immediately to an e-mailed request for comment.

Assemblies of God Wins $6.1 Million in Trademark Dispute

The General Council of the Assemblies of God, a Pentecostal Christian church based in Springfield, Missouri, won $6.1 million in a trademark-infringement case against the proprietors of two stores in Stockton, California.

U.S. District Judge Amy J. St. Eve, in a June 29 order, awarded damages and attorney fees and ordered a transfer of 32 domain names to the church. She also said all goods bearing counterfeit trademarks must be destroyed and ordered the defendants to halt all infringing activities.

The defendants were two separate stores, Ranger Supply Store and Valley Homebuyer Service, and three Stockton residents who the church said are the proprietors. The suit, filed in federal court in Chicago in November, stemmed from the sale of counterfeit versions of emblem patches, t-shirts and other items bearing the church’s trademarks.

The church also accused the defendants of unauthorized use of Internet domain names that mirror some of its ministry groups, such as “Royal Rangers,” “Missionettes” and “Frontiersman Camping Fellowship.” In addition, they were accused of copyright infringement for copying the text and images on the church’s website.

The defendants were unrepresented by counsel and didn’t appear in court or respond to the allegations against them.

The church was represented by Julianne Marie Hartzell, Gregory James Chinlund, Maureen Beacom Gorman and Tiffany D. Gehrke of Chicago’s Marshall, Gerstein & Borun LLP.

The case is General Council of the Assemblies of God v. Ranger Supply Store Inc, 1:10-cv-07050, U.S. District Court, Northern District of Illinois (Chicago).

For more trademark news, click here.

Copyright

New Zealand ISPs to Be Paid for Processing Infringement Claims

Content owners who sent New Zealand Internet service providers copyright-infringement notices against their customers will have to pay the ISPs NZ$25 ($20) in processing fees for each notice under a new copyright regime in the country, Australia’s ITNews reported.

ISPs lacking automated processing systems may not be able to cover their costs with that fee and may require it be increased to about NZ$40, Paul Brislen, of the New Zealand Telecommunications Users Association, told ITNews.

New Zealand’s Minister of Commerce Simon Power told ITNews that the fee is intended to prevent the inundation of ISPs with automated copyright-infringement notices.

Rights holders also must provide specific details about each alleged infringement, according to ITNews.

Biker Claims IP Rights to Image of Vancouver Neon Sculpture

A former member of a Canadian Hells Angels biker group is claiming ownership rights to a image featuring a cross shape containing the words East Van, and has accused a photographer of copyright infringement, the Vancouver Sun reported.

The photographer shot a picture of a neon cross sculpture by artist Ken Lum installed in the city in January 2010, according to the Sun.

The City of Vancouver registered the sculpture as a trademark last year, about five months after biker Rocco Dipopolo registered “East Van Inc., + Original cross” with the Canadian Intellectual Property Office, the Sun Reported.

Barb Floden, a spokeswoman for the City of Vancouver, told the Sun that while Dipopolo has the legal right to continue using the mark, which was tattooed on his arm in 1993, the city alone has the right to permit or bar its use.

For more copyright news, click here.

IP Moves

Kilpatrick Townsend Hires Director of Fujitsu Patent Center

Kilpatrick Townsend & Stockton LLP hired Thomas S. Auchterlonie for its IP practice, the Atlanta-based firm said in a statement.

Auchterlonie, who does patent-acquisition work, will be a member of the firm’s electric engineering/software team.

He joins from Fujitsu Ltd.’s Fujitsu Management Services of America unit, where he was the director of the Fujitsu Patent Center. He also has worked as a patent examiner at the U.S. Patent and Trademark Office.

He has handled patent applications in a wide range of technologies, including software, network and communications protocols, storage-area networks, integrated circuits, LCDs, photocopiers, x-ray filters and digital cameras.

Auchterlonie has an undergraduate degree in physics from Dickinson College, a master’s degree in engineering from City University of New York City College and a law degree from George Mason University School of Law.

--With assistance from Stephanie Bodoni in Luxembourg, Heather Smith in Paris, Susan Decker in Washington and Tim Culpan in Taipei. Editor: Stephen Farr

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at vslindflor@bloomberg.net.

To contact the editor responsible for this story: Michael Hytha at mhytha@bloomberg.net.


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