Bloomberg News

Comcast, BT, Dr. Pepper, Microsoft: Intellectual Property

September 21, 2011

(This is a daily report on global news about patents, trademarks, copyright and other intellectual property topics. Updates with BT spokeswoman’s comment in first item.)

Sept. 21 (Bloomberg) -- Comcast Corp., the largest U.S. cable-television provider, sued a unit of BT Group Plc, the U.K.’s biggest fixed-line phone company, seeking a ruling that it doesn’t infringe eight BT patents.

Comcast, based in Philadelphia, asked for a jury trial and an award of legal fees from London-based BT Telecommunications Plc in a complaint filed Sept. 19 in federal court in Wilmington, Delaware.

“There is substantial controversy of sufficient immediacy and reality” between the companies “to warrant the issuance of a declaratory judgment,” Comcast said in court papers. The company also wants the BT patents ruled invalid.

Comcast, with revenue of $37.9 billion last year, operates cable-TV systems and provides high-speed Internet and phone services to homes and businesses. BT Group, with revenue of about $31 billion last fiscal year, offers fixed and mobile communications services in more than 170 countries.

The patents cover network-traffic management, pricing methods, fault monitoring and other functions, according to court papers.

The lawsuit was filed in response to a motion by BT to amend another patent lawsuit in the same court filed last year against Cox Communications Inc. and Cable One Inc. asking for unspecified treble damages. The amendment would add Comcast as a defendant, according to a Sept. 1 filing.

“BT’s constant investment in innovation has seen it develop a large portfolio of patents which are corporate assets, so it is only right that we are seeking to protect that investment,” Kris Kozamchak, a BT spokeswoman, said in an e-mail.

Comcast lawyers said in a Sept. 19 letter to U.S. District Judge Sue L. Robinson that adding Comcast would “expand many times over” the process of document gathering, confuse the issues and “strain the patience” of jurors.

The new case is Comcast Cable v. British Telecommunications, 1:11-CV-00843, U.S. District Court, District of Delaware (Wilmington).

For more patent news, click here.

Trademark

Dr. Pepper, Texas Bottler Square Off Over Beverage Trademark

Dr. Pepper Snapple Group Inc. and one of its regional bottlers are locked in a trademark battle related to the beverage’s history and the use of cane sugar in its formula.

The beverage company, based in Plano, Texas, sued in June in federal court in Sherman, Texas, accusing Dr. Pepper Bottling Co. of Dublin of infringing Dr. Pepper trademarks by using a bottle with an unauthorized modified label.

The public is confused by the different label, and other bottlers’ sales are negatively affected by the Dublin bottler’s actions, according to the complaint.

The product is a soft drink first made 116 years ago in Waco, Texas. The defendant, based in Dublin, Texas, is the first bottler of the product, according to court papers.

The regional bottler, unlike many others, refused to switch to high-fructose corn syrup as a sweetener, and also doesn’t use beet sugar. According to the response it filed Sept. 12, Dublin Dr. Pepper has always used only cane sugar, and as a result its product is sought out by Dr. Pepper aficionados worldwide.

A comparable battle was fought in federal court in Dallas between PepsiCo Inc. and a Texas company that imported made-in- Mexico Pepsi manufactured with cane sugar. That case ended with an order barring the Texas company from importing and selling products made in other countries bearing the Pepsi marks.

That case was PepsiCo Inc., v. Marroko USA LLC, 3:09-cv- 00338-B, I.S. District Court, Northern District of Texas (Dallas).

In the case brought by Dr. Pepper Snapple, the regional bottler claims that the beverage company tacitly approved its actions, including the special label indicating its product is “Dublin Dr. Pepper.” Dr. Pepper Snapple has “reveled and openly welcomed the free exposure and increased name recognition provided by Dublin Dr. Pepper,” the bottler said in court papers.

The bottler asked the court to declare it’s not infringing the Dr. Pepper trademarks or for an award of money damages. It also seeks litigation costs and attorney fees.

Dr. Pepper Snapple asked for an order barring the use of “Dublin Dr. Pepper” by the regional bottler and a declaration that the contract between the companies is terminated or terminable.

Dr. Pepper Snapple is represented by Van Harold Beckwith and Jonathan Robert Mureen of Houston’s Baker Botts LLP, together with Clyde Moody Siebman and Lawrence Augustine Phillips of Siebman Reynolds Burg & Phillips LLP of Sherman, Texas.

Dublin Dr. Pepper is represented by Richter Darryl Burke, Samuel Franklin Baxter and Steven D. Wolens of McKool Smith PC of Dallas.

The case is Dr. Pepper/Seven Up Inc. v. Dr. Pepper Bottling Co., 4:11-cv-00398-MHS-ALM, U.S. District Court, Eastern District of Texas (Sherman).

Microsoft Applies to Register ‘Charm’ as Software Trademark

Microsoft Corp., the world’s largest software maker, is seeking to register “charm” as a trademark, according to the database of the U.S. Patent and Trademark Office.

The application, filed Sept. 12, is for use of the trademark with computer programs, graphical user interface software and operating system programs.

The Redmond, Washington-based company has asked the International Trade Commission to block entry of mobile telephones using the Android system and made by Motorola Mobility Holdings Inc. This included Motorola’s Charm phone.

An initial ruling on that dispute, which is over patented technology, is expected in November.

Motorola’s “charm” trademark was registered April 19. Other “charm” trademarks include registration in June 2006 by Charm Sciences of Lawrence, Massachusetts, for diagnostic kits and scientific instruments; a June 2008 registration by a resident of Newport Coast, California, for use with cosmetics; and a December 1992 registration by a Willowbrook, Illinois, mattress company for use with beds, mattresses, box springs and sofabeds.

At a developers’ conference last week, Microsoft identified “charms” as icons for commands that can be swiped in from the side of the screen in the Windows 8 user interface, the Seattle Times reported.

Vietnam Has ‘Room to Improve’ on WTO Commitments, U.S. Says

Vietnam needs to reduce support for state companies, clarify contract procedures and improve intellectual property- rights enforcement to move toward a market-based economy, a U.S. government official said.

“There’s always room to improve, and that continues to be the case,” Assistant U.S. Commerce Secretary Suresh Kumar said in an interview in Ho Chi Minh City when asked about Vietnam’s adherence to its World Trade Organization commitments. “There needs to be greater transparency for rules and regulations, greater transparency in public procurement tender awards.”

Vietnam joined the WTO in 2007 and is one of nine countries negotiating the U.S.-led Trans-Pacific Partnership trade accord.

U.S. President Barack Obama has identified Vietnam as a priority market to fulfill a pledge to double American shipments abroad by 2015. Still, a move in May by the Vietnamese government to restrict some imports to three seaports is an example of changing rules “mid-stream” that damages business confidence, Kumar said.

“That’s the type of thing which doesn’t make for an open market,” Kumar said yesterday during a visit to the city formerly known as Saigon.

The measures took effect in June and limit the entry of mobile phones, some types of alcohol, and cosmetics to the ports of Haiphong, Danang and Ho Chi Minh City. Previously the goods could enter through any port, land crossing or airport. Vietnam’s government has said the restrictions are designed to prevent the entry of counterfeit and low-quality goods.

Vietnam’s participation in the TPP talks is a “positive step” that demonstrates a desire to boost trade, Kumar said. The other countries involved in the talks include Australia, Brunei, Chile, Malaysia, New Zealand, Peru and Singapore.

The U.S. will propose rules for state-owned companies as part of the TPP negotiations, Barbara Weisel, an assistant U.S. Trade Representative, told reporters on Sept. 15 after a round of discussions in Chicago. Investment rules and intellectual- property protections also need more work, she said.

Kumar noted the sale of “rip-off” apparel using U.S. brands at the airport in the central Vietnamese city of Danang during his visit to the country.

“That’s a violation” of Vietnam’s WTO commitments, Kumar said. “Of course it is going to be raised.”

For more trademark news, click here.

Copyright

University of Michigan Says It Made ‘Errors’ in Digitization

The University of Michigan responded to a copyright- infringement lawsuit by the Authors Guild by issuing a statement in which the school said it made “a number of errors, some of them serious.”

The school had planned 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 filed Sept. 12 in Manhattan.

The Authors Guild, the Australian Society of Authors and the Quebec Writers Union were among the plaintiffs in the suit claiming the school obtained unauthorized scans of copyright- protected books that Google Inc. performed.

The school’s statement, published on the university library’s website, acknowledged that “our pilot process is flawed.” Instead, the school said it will create “a more robust, transparent and fully documented process” for access to the so-called orphan works.

It claimed that the widespread dissemination of the list of scanned works “has had the intended effect: rights holders have been identified.” The school’s mistake “have not resulted in the exposure of even one page of in-copyright material,” according to the university statement.

The other schools that are co-defendants in the suit are University of California, University of Wisconsin, Indiana University and Cornell University.

The case is Authors Guild Inc. v. Hathitrust, 1:11-cv- 06351-HB. U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here

Trade Secrets/Industrial Espionage

Oto Melara Loses Korean Trade Secrets Case Over Naval Gun

Oto Melara SpA’s trade-secrets claim against Hyundai Wia Corp. was rejected by a court in Seoul, the Korea Herald reported.

Oto Melara, based in La Spezia, Italy, sued in 2010 claiming a naval gun sold by Hyundai Wia was made by reverse- engineering a sample of its own, according to the newspaper.

Although the South Korean military had been buying the Italian company’s gun since 1975, Hyundai drew up the plan for its version in 2001, before the country’s Defense Ministry loaned Hyundai a sample of the Oto Melara product, according to the Korea Herald.

The court found there were significant technological improvements in the South Korean company’s gun and that some of the technology used to produce it wasn’t secret, being available in engineering texts and on the Internet, the Korea Herald reported.

Mitsubishi Heavy Computer in Cyber Attack, Possible Data Theft

Mitsubishi Heavy Industries Ltd., Japan’s largest maker of heavy machinery, was struck by hackers, had its computers infected and is believed to have had confidential data stolen, the Daily Yomiuri reported.

About 80 servers and computers at factories where submarines, missiles and nuclear power plants are built were targeted, the newspaper reported. Some viruses could have allowed hackers to eavesdrop on conversations near the computers or even to operate webcams, according to Yomiuri.

Mitsubishi Heavy made the discovery that some of its computers were infected in mid-August and brought in an Internet security company to investigate the breach, according to the newspaper.

IP Moves

Kramer Levin Comes to Menlo Park With King & Spalding Hires

Kramer Levin Naftalis & Frankel LLP hired Paul J. Andre and Lisa Kobialka for its newly opened Menlo Park, California, office, the New York-based firm said in a statement.

The two new hires, both intellectual-property litigators, join from Atlanta’s King & Spalding LLP.

Andre has litigated patent cases for clients whose technologies include life sciences, computer science and electrical arts.

He has an undergraduate degree in biology and a master’s degree in immunology from Middle Tennessee State University, and a law degree from Fordham University. He was a candidate for a doctorate in cellular and molecular biology at Mt. Sinai School of Medicine.

Kobialka has done trade secret, false advertising and unfair competition, and patent litigation for technology clients.

She has an undergraduate degree from the University of California at Davis, a master’s degree in music from the San Francisco Conservatory of Music and a law degree from the University of San Francisco.

--With assistance from Jason Folkmanis in Ho Chi Minh City and Phil Milford in Wilmington, Delaware. 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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