Bloomberg News

RIM, CAIR, Greenpeace, Discovery: Intellectual Property

September 13, 2011

(This is a daily report on global news about patents, trademarks, copyright and other intellectual property topics. Updates with comments from lawyer in Haig copyright item.)

Sept. 13 (Bloomberg) -- Research In Motion Ltd., maker of the BlackBerry smartphone and Playbook tablet computer, agreed to pay patent royalties to Dolby Laboratories Inc. to end a legal battle over technology to improve audio quality.

RIM will pay “standard terms,” San Francisco-based Dolby said in a statement yesterday, settling patent-infringement lawsuits filed in June in the U.S. and Germany. While financial terms weren’t disclosed, Dolby told analysts on a conference call last month it was counting on $15 million in back royalties from RIM in the fiscal fourth quarter, as well as interest income.

Dolby, inventor of surround sound, said the patents cover ways to compress digital audio files using less storage while maintaining quality. The technology has been incorporated into an industry standard for audio coding, and Dolby said it sued when Waterloo, Ontario-based RIM refused to sign a licensing agreement even though it used the standard in the BlackBerry Storm, Tour, Pearl, Curve and Torch models, and the Playbook.

“We are pleased to welcome RIM into Dolby’s family of mobile-technology licensees,” Dolby General Counsel Andy Sherman said in the statement. “We believe in and will continue to protect the value of our intellectual property.”

Dolby and RIM filed to dismiss the case in federal court in San Francisco yesterday.

Dolby reported $228 million in revenue in its fourth quarter ended in September 2010, with about 78 percent of the total coming from licensing revenue.

RIM signed a license agreement with Via Licensing Corp., a company designated to handle Dolby patents, shortly after the lawsuits were filed, Dolby said. The agreement covers the implementation of the industry standard, the company said.

According to the lawsuit filed in federal court in San Francisco, Dolby invented technology known as “spectral band replication” and “parametric stereo” that “represented a quantum leap forward in compression efficiency, and which were perfected only after years of research and development.”

Apple Inc., HTC Corp., LG Electronics Inc. Nokia Oyj and Samsung Electronics Co. are among smartphone makers that license the Dolby technology.

Via and RIM had been in talks since 2007, according to court filings by Dolby and RIM. Dolby had argued that by complying with the industry standard known as High-Efficiency Advanced Audio Coding, RIM was using the patented inventions and should compensate Dolby.

The case is Dolby International AB v. Research In Motion Ltd., 11cv2931, U.S. District Court for the Northern District of California (San Francisco).

For more patent news, click here.

Trademark

Virginia Tech, Brokerage Settle ‘Hokie’ Trademark Case

Virginia Polytechnic Institute and State University, the scene of a shooting massacre in 2007, settled a trademark dispute with a Blacksburg, Virginia-based real estate broker, according to court documents.

Terms of the settlement weren’t disclosed in filings in federal court in Roanoke, Virginia. Each side must pay its own litigation costs, according to the settlement document.

The Roanoke Times reported that Hokie Real Estate Inc. can keep its name, and its owner gets free tickets to Hokies football games, a free parking slot for the games, four free half-page ads in the Virginia Tech magazine and platinum-level membership in the Hokie Club.

The university’s legal fees in the case topped $125,000, the newspaper reported.

The school sued the real-estate brokerage for using the word “hokie” in its name. According to the complaint filed in October, “hokie” is “a made-up word, a coined term with no meaning.”

The school said the term arose from a campus contest for a new spirit yell in the 1890s. The winning entry contained the word “hoki” -- which later had an “e” added to the end --and is today defined as a supporter of Virginia Tech.

After the 2007 shooting, in which 31 students and faculty members died, the phrase “we are all hokies” was used to show solidarity with the university.

The school uses the term in a variety of ways and says it is “very careful and interested to monitor the use of the nickname to maintain its reputation and the goodwill of the university as a whole.” It has registered the term as a trademark.

Hokie Real Estate’s use of the name got in the way of the school’s plan to develop a program with an architect to develop house plans that are “specially drawn up for and targeted to Virginia Tech alumni, fans and friends,” the school said.

The real-estate company responded to the suit by claiming the school obtained the disputed mark fraudulently. It asked the court to order the patent office to cancel the school’s “Hokie” registration, and the destruction of all items marked with the term.

The real-estate company’s website bears a disclaimer that it isn’t affiliated with Virginia Tech.

The case is Virginia Polytechnic Institute and State University v. Hokie Real Estate Inc., 7:10-cv-00466-GEC, U.S. District Court, Western District of Virginia (Roanoke).

CAIR Critic Answers Complaint, Says Marks Were Abandoned

Deborah K. Schlussel, who acknowledged in court papers that she registered an acronym associated with the Council on American-Islamic Relations “to drive the Muslims crazy,” filed a response to the organization’s trademark-infringement lawsuit.

The council filed the infringement suit against Southfield, Michigan-based Schlussel in federal court in Detroit in January. The group objected to her use of its trademarks, and said her actions “are calculated to harass and impede” the work the council does on behalf of Muslims.

CAIR claimed in its pleadings that Schlussel began operating a website containing its marks and sent letters to government agencies claiming to be the real “CAIR-Michigan” and proclaiming the council as “imposters.” The council said Schlussel’s alleged infringement “is no close call.”

In her Aug. 23 response, Schlussel argued that CAIR had abandoned its marks by “nakedly licensing” them to independent third parties. As a result, the use of the CAIR trademarks “goes unpoliced,” she said.

She also claimed that by failing to pay annual filing fees to Michigan, CAIR’s trademarks are “abandoned, lapsed or void.”

Schlussel said in her court filing that the Southfield- based group is “an unindicted co-conspirator to a terrorist organization, and has a mission to promote a radical agenda through litigation like this designed to force critics to cease writing about it.”

The council characterized itself in court filings as a nonprofit organization with a mission “to enhance the understanding of Islam, encourage dialogue, protect civil liberties, empower American Muslims” and “promote justice and mutual understanding through education, mediation, media and the law.”

A status conference in the case is set for Sept. 27.

The case is Council on American-Islamic Relations Action Network Inc., v. Deborah K. Schlussel, 2:11-cv-10061-AC-MKM, U.s. District Court, Eastern District of Michigan.

Lacoste Seeks Dissociation From Anders Breivik, BBC Reports

Maus Freres Holding AG’s Lacoste unit wrote to Norwegian police to ask that Anders Behring Breivik stop wearing its clothing in his court appearances, the BBC reported.

Breivik has acknowledged killing 77 Norwegians in July through shooting and a bomb attack, according to the BBC.

Norwegian police acknowledged being contacted by Lacoste and declined to disclose what was discussed, the BBC said.

The move by Lacoste follows an earlier request by Abercrombie & Fitch Co. that a contestant on the “Jersey Shore” reality show quit wearing its apparel, the BBC reported.

For more trademark news, click here.

Copyright

Haig Productions Lawyer Sanctioned in Downloading Case

A lawyer representing Mick Haig Productions E.K., a German maker of adult films, was hit with $10,000 in sanctions for his actions in a copyright-infringement case.

The film company sued 670 unidentified defendants in federal court in Dallas Sept. 21, accusing them of infringing the copyrights of “Der Gute Onkel” through unauthorized file sharing. Counsel for Haig asked the court for permission to issue subpoenas to various Internet service providers so he could learn the alleged infringers’ identities.

The court declined to rule on his request and instead directed the ISPs to preserve existing activity records for each IP address. It appointed three attorneys to represent the unidentified defendants in response to the Haig request for subpoenas.

The three appointed attorneys, from San Francisco’s Electronic Frontier Foundation advocacy group and from Washington-based Public Citizen Litigation Group, filed a response calling into question the court’s jurisdiction over many of the defendants and the propriety of combining hundreds of defendants into one suit.

According to court papers, before the court could make a ruling, Haig dismissed the case, saying it had little chance of winning because of the opposition by the three lawyers. The film company said the lawyers were “renowned for defending Internet piracy.”

Counsel for Haig issued subpoenas to the ISPs without permission, a gross abuse of subpoena power, the court said in its Sept. 9 ruling. Because the lawyer obtained information that he had no right to receive, he turned a “bona fide state- sanctioned inspection into private snooping,” according to the court.

Accusing the lawyer of “staggering chutzpah,” the court said it “rarely has encountered a more textbook example of conduct deserving of sanctions.”

In addition to the $10,000 sanction, counsel for the film company was ordered to pay attorney fees and expenses for the three appointed lawyers, and must disclose to the court whether he received any funds, personally or on behalf of the filmmaker, from anyone connected to the case. He also is required to file a copy of the court order “in every currently-ongoing proceeding in which he represents a party, pending in any court in the United States.”

Evan F. Stone of Dallas, who represents Haig, said in an e- mail he “absolutely” would appeal the sanction order. “The copyright holder’s right to conduct discovery to identify wrongdoers should not be in question,” he said.

The case is Mick Haig Products e.K. v. Does 1-670, 3:10-cv- 01900-N, U.S. District Court, Northern District of Texas (Dallas).

For more copyright news, click here

Trade Secrets/Industrial Espionage

Greenpeace’s Trade Secrets Case Against Dow, Sasol Dismissed

Greenpeace, the international environmental group, failed in its attempt to sue Dow Chemical Co. and Sasol Ltd. for trade secret theft.

The suit was dismissed Sept. 9 by U.S. District Judge Rosemary M. Collyer.

The environmental group sued Dow and Sasol in federal court in the District of Columbia in November, claiming the two chemical companies hired people to infiltrate the group and get into its files to better halt some of Greenpeace’s actions with respect to the two companies.

Sasol had been targeted over its vinyl chloride production in Lake Charles, Louisiana. Dow’s involvement with genetically modified organisms and manufacturing processes that create the chemical dioxin were also the subject of Greenpeace’s environmental actions, according to court papers.

Greenpeace claimed its intellectual property was diminished in value and the defendants interfered with its environmental campaigns. In addition to the trade-secrets claims, the environmental group also accused the chemical companies of racketeering and wire fraud.

Collyer agreed with the defendants, who argued that Greenpeace failed to state claims that could be pursued under federal law. She said Greenpeace’s injuries were “at too remote a distance” for the federal Racketeer Influenced and Corrupt Organizations Act to be involved.

She also found that Greenpeace failed to argue that the defendants engaged in the interstate transportation of stolen goods worth at least $5,000.

Greenpeace had claimed that because the two chemical companies paid more than $100,000 to a private security firm that allegedly gathered the data, its stolen information had a high enough value for the case to go ahead. Paying for those services didn’t support any inference about the value of the stolen information, the judge said.

The case is Greenpeace Inc., v. Down Chemical Co., 1:10-cv- 02037-RMC, U.S. District Court, District of Columbia (Washington D.C.).

Discovery Must Reveal Reality-Show Contracts for Deputies

Discovery Communications Inc. lost a bid to keep contracts for participants in one of its reality-television programs a confidential trade secret, the Fort Lauderdale Sun-Sentinel reported.

A judge in Florida’s Broward County said defense attorneys representing 10 people whose arrests were filmed for Discovery’s “Police Women of Broward County” can see contracts for two of the four Broward County Sheriff deputies who appear on the program, according to the Sun-Sentinel.

Discovery, based in Silver Springs, Maryland, claims the contracts are a trade secret and shouldn’t be seen. The company has 30 days to appeal the judge’s decision, according to the newspaper.

Defense lawyers are seeking the contracts in efforts to determine if show business considerations are influencing the deputies’ law-enforcement work, according to the Sun-Sentinel.

Italian Designer Says Industrial Espionage Behind Theft

Italian fashion designer Rocco Barocco’s collection was stolen, Agenzia Giornalistica Italia reported.

The designer claims the theft was the result of industrial espionage, according to AGI.

Barocco said the theft was planned carefully and the thieves knew exactly where to find what they were seeking, AGI reported.

Milan’s Fashion Week, during which the collection was to have been shown, opens Sept. 21, the news service reported.

--With assistance from Susan Decker in Washington. Editors: Stephen Farr, Mary Romano

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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