Bloomberg News

Boadin, American Express, Target, TCW: Intellectual Property

September 14, 2011

(This is a daily report on global news about patents, trademarks, copyright and other intellectual property topics. Adds Renesas Electronics Corp. item in patent section.)

Sept. 14 (Bloomberg) -- New York Times Co., Bloomberg LP, News Corp.’s Dow Jones & Co. and four other media outlets were sued for allegedly infringing two patents for “instantaneous symbol lookup,” used on websites.

Boadin Technology LLC, which said it owns the rights to the patents, filed the lawsuit Sept. 12 in federal court in Wilmington, Delaware. Boadin, whose office is in Newark, Delaware, is seeking a finding of infringement and unspecified compensatory damages, according to the complaint.

The news providers infringed Boadin’s patents by selling “certain computer products that embody” the covered technology, according to the complaint, which said the companies used the technology on their websites.

Other defendants include News Corp. units Fox News Network and Marketwatch Inc., Gannett Co. and Comcast Corp.’s CNBC TV network. Bloomberg LP is the parent company of Bloomberg News.

Ty Trippet, a Bloomberg spokesman, declined to comment on the suit. Charles Douglas, a Comcast spokesman, and Danielle Rhoades Ha, a New York Times spokeswoman, didn’t immediately comment. Jack Horner, a News Corp. spokesman, and Robin Pence, a spokeswoman for the Gannett newspaper chain, didn’t immediately return calls seeking comment.

The case is Boadin Technology LLC v. Bloomberg LP, 11-CV- 00802, U.S. District Court, District of Delaware (Wilmington).

Renesas Complaint Against Vizio TVs to Get Trade Agency Review

The U.S. International Trade Commission instituted an investigation of a patent complaint filed Aug. 12 by Renesas Electronics Corp. of Kawasaki, Japan.

Renesas seeks to block closely held Vizio Inc.’s televisions from the U.S., claiming circuits in those products are made using the Japanese company’s patented inventions.

One patent covers an arrangement of connections on the surface of the circuit, while the second is for a manufacturing process that reduces corrosion.

The ITC is a quasi-judicial agency with the power to block products that violate U.S. patent rights. It typically completes investigations in 15 to 18 months.

Renesas was formed in 2003 from the semiconductor divisions of Hitachi and Mitsubishi Electric and is owned by those two companies and NEC Corp. The company made its request for enforcement to the ITC in August.

Vizio, based in Irvine, California, has its own patent- infringement case pending against Renesas at the ITC that was instituted in July. A trial in that case, which also involves digital TVs, is scheduled for next June, according to information on the agency’s website.

The civil case against Vizio is Renesas Electronics Corp. v. Vizio Inc., 11-cv-00356, U.S. District Court for the Eastern District of Texas (Marshall).

The ITC case is In the Matter of Digital Televisions Containing Integrated Circuit Devices, Complaint No. 2840, U.S. International Trade Commission (Washington).

The Vizio case against Renesas is In the Matter of Digital Televisions and Components Thereof, 337-789, U.S. International Trade Commission (Washington).

For more patent news, click here.

Trademark

AmEx Barred from Using Marks Similar to Zone IP’s in New Zealand

American Express Co. can’t use marks in New Zealand that potentially infringe on trademarks of Israel’s Zone IP Ltd., according to New Zealand’s National Business Review.

A court issued a temporary order barring the company from using the marks until after a full trial in 2012 on the infringement issues, according to the newspaper.

The judge noted that Tel Aviv-based Zone IP had a “not insubstantial” business and was the fifth-largest trademark filer in New Zealand, the National Business Review reported.

Counsel representing the Zone IP content company told the newspaper that the court found that while New York’s AmEx wasn’t necessarily infringing, there was enough of a similarity between the two companies’ marks to require a future court determination.

IMD Acquires Anti-Youth Obesity Trademark, Program Content

IMD Companies Inc., a health-care and fitness company, acquired the trademark “Kidshape” from Healthy America Inc., the Delray Beach, Florida-based company said in a statement.

The mark is to be used for a juvenile weight-loss program aimed at reducing child and teen obesity. In addition to the mark, IMD is acquiring copyrighted materials related to the program. Healthy America has used the program for more than five years, according to the statement.

IMD will use the program in conjunction with content produced by its Positive Solutions Centers, and aims to get work with state and local governments to implement the program in school systems, the company said in the statement.

Terms of the acquisition weren’t disclosed.

Qantas Seeks ‘RedQ,” Related Marks for Upcoming Asia Service

Qantas Airways Ltd., the Australian airline, applied for several trademarks likely to be used for its spinoff airline aimed at executive travelers in Asia, the Sydney Morning Herald reported.

The Mascot, New South Wales-based airline has filed applications to register “RedQ,” “RedQ Executive Express,” “RedSky” and “OneAsia,” the newspaper reported.

A potential problem with the name is Virgin Blue Airlines Pty. Ltd.’s use of “Red Jet” as a trademark for its charity foundation, according to the Sydney Morning Herald.

Olivia Wirth, who heads Qantas corporate affairs, told the Sydney Morning Herald that while several different names are under consideration for the new Asia service, the final choice hadn’t yet been made.

Target’s Missoni Trademarked Items Hit Bulls Eye for Retailer

Target Corp. discovered yesterday that the draw of the famed Italian designer Missoni SpA’s trademarks is so great that the retailer’s website crashed multiple times.

The Minneapolis-based retailer said in a July statement that it would offer Missoni merchandise through early December, with products in the clothing and home-furnishings area ranging in price from $1.99 through $599.99, with most items less than $40. By contrast, a Missoni dress offered on the website of the Neiman Marcus Group was priced at $1,490.

When accessed several times yesterday, the Target website showed a picture of the Target logo dog standing by a red toolbox and the text “woof! We are suddenly extremely popular. You may not be able to access our site momentarily due to unusually high traffic. Please stay here and we’ll try to get you in as soon as we can!”

Dartington Residents Take Issue with Dartington Hall’s Trademark

Residents of a U.K. village whose name was first listed in official records in 833 A.D. are incensed that the trust operating a medieval hall near the village has registered the village’s name as a trademark, according to the BBC.

Dartington Hall’s registration of “Dartington” is “pure arrogance,” residents of the village of Dartington told the BBC.

Vaughan Lindsay, chief executive of the Dartington Hall Trust, told the BBC registration was necessary to “protect the brand name of the trust.”

He said that while the trust had met with locals and listened to their concerns, a decision was made to go ahead with the registration despite the objections, the BBC reported.

For more trademark news, click here.

Copyright

Authors Sue for Seizure of 7 Million Books at U.S. Universities

The Authors Guild, a U.S. advocacy group, is leading a copyright infringement lawsuit seeking seizure of 7 million books digitized by Google Inc. and stored at five colleges including the University of Michigan.

The writers, including the Australian Society of Authors and the Quebec Writers Union, filed suit Sept. 12 in federal court in New York claiming the universities obtained unauthorized scans of the copyright-protected books. Next month the University of Michigan plans to release 27 works by French, Russian and American authors that it deems “orphans” for free downloads to about 250,000 students and faculty, according to the lawsuit.

“This is an upsetting and outrageous attempt to dismiss authors’ rights,” Angelo Loukakis, executive director of the Australian Society of Authors, said in a statement on the guild’s website.

The lawsuit comes after a U.S. judge gave Google and a group of publishers and authors more time in July to try and negotiate a settlement of a legal dispute over the search-engine company’s digital reproduction of books. The Mountain View, California-based company was sued in 2005 by authors and publishers who said the company was infringing their copyrights by digitizing books and allowing “snippets” of them online.

The case is The Authors Guild Inc. against HathiTrust. File No. 11-cv-6351. U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.

Trade Secrets/Industrial Espionage

TCW Says Gundlach Prepared to ‘Eliminate’ Former Employer

Ex-TCW Group Inc. chief investment officer Jeffrey Gundlach engineered a scheme to use his former employer’s trade secrets to start his own firm in 2009, TCW’s lawyers told a Los Angeles jury in closing arguments.

The California state court jury must try to decide whether Gundlach secretly plotted to set up DoubleLine Capital LP while still at TCW or whether the company breached its contract with him, as Gundlach alleges, and fired him to avoid having to pay him hundreds of millions of dollars in fees on the distressed- asset funds he set up in 2007 and 2008.

TCW, the Los Angeles-based unit of Societe Generale SA, sued Gundlach, 51, in January 2010, after more than half of its fixed-income professionals joined DoubleLine. TCW claims it suffered $344 million in damages from Gundlach’s alleged interference with clients’ contracts and $222 million from a claimed breach of fiduciary duty.

“They secretly stole, they secretly set up a Delaware company,” TCW lawyer John Quinn told the jury yesterday. “They were preparing to eliminate TCW as a competitor.”

Gundlach, who had worked at TCW for 25 years and was named Morningstar’s Fixed Income Manager of the Year in 2006, countersued, saying TCW fired him to avoid having to pay management and performance fees for the distressed-asset funds his group managed and that went “through the roof.” Gundlach seeks about $500 million.

The jury heard more than six weeks of testimony as the two sides provided conflicting views of Gundlach’s falling out with TCW Chief Executive Officer Marc Stern in 2009, which ended with Stern’s buying Metropolitan West Asset Management LLC to run TCW’s fixed-income group and firing Gundlach in December 2009.

Stern testified that he became suspicious of Gundlach after a series of September 2009 meetings and instructed TCW’s in- house lawyer to start monitoring the e-mail of Gundlach and others in his group. The investigation showed Gundlach’s people were downloading TCW’s proprietary information and looking for office space, Stern said.

“He was the pope and the godfather, he was above it all,” Quinn said. “You haven’t heard him repent for anything.”

Gundlach has denied that DoubleLine used any of TCW’s proprietary software systems and data.

DoubleLine’s lawyers have argued that Stern started looking to replace Gundlach as early as June 2009, about the time Stern returned to active management. Gundlach and other senior managers at TCW had opposed Stern’s return out of retirement and had wanted the firm to be run by a management committee instead.

Gundlach had negotiated for him and his group to receive 60 percent of the performance fees for the distressed-asset funds he set up in 2007 and 2008. The funds invested in mortgage- backed securities that were downgraded and dropped in value with the collapse of the U.S. housing market.

As the funds performed better than expected, Paris-based Societe Generale and TCW wanted to replace Gundlach with a less expensive asset manager, DoubleLine’s lawyers said. TCW has argued that Gundlach isn’t entitled to management and performance fees from the funds after his firing.

The case is Trust Co. of the West v. Gundlach, BC429385, California Superior Court, Los Angeles County (Los Angeles).

--With the assistance of Susan Decker in Washington, Joe Schneider in Sydney, Edvard Pettersson in Los Angeles and Jef Feeley in Wilmington, Delaware. Editors: Mary Romano, Peter Blumberg

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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