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(This is a daily report on global news about patents, trademarks, copyright and other intellectual property topics. Adds Pfizer Inc. item in patent section.)
Nov. 15 (Bloomberg) -- Tiffany & Co., the luxury jewelry company, submitted a friend-of-the-court brief on behalf of Christian Louboutin SA in the French shoe designer’s trademark battle with Yves St. Laurent America.
Louboutin sued St. Laurent in federal court in Manhattan in April, claiming the use of red shoe soles by St. Laurent infringed its trademarks. The trial court rejected the shoemaker’s request to bar St. Laurent shoes with red soles, and Louboutin filed an appeal of that ruling in mid-October.
In that appellate filing, Louboutin noted that the “Keds blue rectangle on the heel, the Burberry plaid, the Gucci stripes all act as trademarks because the consuming public has recognized them as indicators of source.”
New York-based Tiffany, which packages its jewelry items in distinctive robin’s-egg blue boxes, weighed in on Louboutin’s behalf. In its filing, Tiffany noted that it has a registered trademark for its “Tiffany blue” color.
The company argues that the lower court holding that a single color for a fashion item can never be a valid trademark “is not supported” by trademark law.
Tiffany’s brief was filed by Richard Z. Lehv and Jason D. Jones of Fross Zelnick Lehrman & Zissu PC of New York.
The case is Christian Louboutin SA v. Yves St. Laurent America Inc, 11-3303, U.S. Court of Appeals for the Second Circuit.
The lower court case is Christian Louboutin SA v. Yves St. Laurent America Inc., 1:11-cv-02381-VM, U.S. District Court, Southern District of New York (Manhattan).
Serta Says Mattress Name Honors Astronomer, Not Fashion Designer
Serta Restokraft Mattress Co Inc.’s Serta unit asked a federal court in Chicago to declare it didn’t infringe trademarks belonging to the late Oleg Cassini, a fashion designer.
Paris-born Cassini, who won fame as the designer of Jacqueline Kennedy’s White House wardrobe, had objected to a mattress Serta made for J.C. Penney Co., according to letters included in the court file. Penney isn’t a party to the suit.
The “Cassini” was one of a series of space-themed model names Serta said it used for its “Perfect Day” mattresses. Among others in the series were the “Gemini,” “Onyx Moon,” “Taurus” and Nebula.” Cassini was chosen to honor both Giovanni Domenico Cassini, a 17th-century French/Italian astronomer, and the National Aeuronautics and Space Administration’s Cassini Solstice Mission.
Oleg Cassini Inc. sent Serta a letter Sept. 13, complaining about the “Cassini” mattress and warning the company it didn’t have permission or a license to use the Cassini name. The mattress company responded Oct. 14, saying it had discontinued the mattress line.
The Cassini company sent a second letter, saying it “does not consider this matter closed” and threatening an infringement suit. It demanded that no Cassini floor samples be offered for sale any longer, and the removal of any link to Serta products that would come up after an Internet search for “Cassini mattresses.”
Serta argued in its court filings that, given the widespread use of its “Perfect Day” trademark, there is “simply no evidence” that consumers would have confused the Cassini mattress with the designer, or his clothing and perfume lines.
It asked the court to declare that it didn’t infringe the trademarks, to order the Cassini company to quit threatening litigation, and for awards of attorney fees, litigation costs, and monetary sanctions against the designer’s company.
Serta is represented by Nicole M. Murray and Nicole A. Bashor of Quarles & Brady LLP of Milwaukee.
The case is Serta Inc. v. Oleg Cassini Inc., 1:11-cv-08004, U.S. District Court, Northern District of Illinois (Chicago).
‘Ohno,’ ‘Argh,’ ‘Markel’ Suggested as New Brand Name for Euro
Jeremy Phillips, a trademark specialist and a partner in London’s Olswang LLP, suggested in October in the IPKat blog to which he contributes, that the Euro may need rebranding in the wake of financial difficulties of various European nations.
He ran a rebrand-the-Euro contest, with a volume of an intellectual property legal textbook of which he is an editor as the prize.
Most of the entries were submitted tongue in cheek. Among them are “the argh,” “the folly,” “the pigswill,” and “the ohno.” Others were “the markel,” which appears to be a play on the German mark and the name of German Chancellor Angela Merkel, “the Vitis” and “the credit,” with the submitter noting that this term is often used for currency systems in science fiction literature.
“The neuro,” short for “not the Euro,” was also submitted, as was “the bizmark,” which may be a nod to a German chancellor of the past.
Phillips is inviting readers to submit votes on their favorites, with midnight Nov. 20 as the deadline.
For more trademark news, click here.
Pirate Party Uninvited From Swedish Game Exhibition
The Pirate Party, a political party with branches in many countries, was banned from exhibition at Sweden’s Gamex computer-game trade show, the TorrentFreak website reported.
The anti-copyright party claimed show organizers solicited its participation and then told the group it was too controversial to participate, according to TorrentFreak.
The TorrentFreak website contained a photograph of a Swedish-language billboard for the event that listed the Pirate Party as an exhibitor.
Fair manager Bear Wengse told the Pirate Party its presence could cause problems because some of its work “could be perceived as criminal,” according to TorrentFreak.
For more copyright news, click here.
Luma Labs Quits Product When Patent Is Issued to Competitor
Luma Labs LLC, a maker of camera accessories, sent a letter to its customers saying it was discontinuing a product because of a patent that was issued to a competitor.
The letter, posted on the Portland, Oregon-based company’s website and on its page at Facebook Inc.’s social media site, says the company and its legal counsel have found “more than enough” comparable technology already existed before the patent was issued. This comparable technology is known as “prior art” and can be used to invalidate a patent on the grounds that the invention isn’t new.
Luma lists at least four examples of prior art, dating all the way back to a rifle strap that was patented in 1885. “To say we’re disappointed that the USPTO couldn’t find the prior art around the idea is an understatement,” Luma said of the actions by the U.S. Patent and Trademark Office.
Still, the company says it’s immediately discontinuing its “Loop” and “Loopit” camera straps.
While the sliding sling covered by the patent “isn’t an amazing new invention,” Luma said it feared defending a patent infringement case “would consume the majority of our resources” and “we could very well lose everything, even if we won.”
Luma says the patent that has forced its products off the market was issued Nov. 1. According to the database of issued patents at the patent office, patent 8,047,729 was issued on that date to Black Rapid Inc. of Seattle, Washington.
That patent covers an “enhanced camera transport system and method” and includes a strap and a sliding coupler. The Black Rapid website claims that its sliding camera strap is based on a concept that is “so simple it evaded everyone . . . until now.”
George C. Rondeau Jr. of Seattle’s Davis Wright Tremaine LLP handled the patent application process for Black Rapid.
Pfizer Strikes Pharmacy Deals to Hold on to Lipitor Market Share
Pfizer Inc. is seeking to add Express Scripts Inc. to the list of U.S. pharmacy benefits managers that won’t dispense generic Lipitor after the world’s best-selling drug loses patent protection this month.
Lipitor had $10.7 billion in sales last year, about half in the U.S. Deals made with Medco Health Solutions Inc., the country’s third-biggest benefits manager, and Catalyst Health Solutions Inc. may help Pfizer retain as much as 40 percent of users through May, said Paul Bisaro, chief executive officer at Watson Pharmaceuticals Inc. Watson is producing a generic version approved by New York-based Pfizer.
Securing that much of the market would produce sales of about $932 million in 2012, compared with $233 million if Pfizer retained just 10 percent, the amount generally seen for medicines losing patent protection, said Tim Anderson, an analyst with Sanford C. Bernstein in New York. Express Scripts provides medicines to about 90 million workers.
“We have had discussions with Pfizer,” said Brian Henry, a spokesman for St. Louis-based Express Scripts, in an e-mailed response to questions. While he declined to comment on where the talks stand, he said “Pfizer has offered similar deals in the marketplace” to those struck with Medco and Catalyst.
Under Pfizer’s agreements with Franklin Lakes, New Jersey- based Medco and Rockville, Maryland-based Catalyst, the companies will block generic versions of Lipitor from reaching their customers until the end of May 2012, according to documents obtained by Bloomberg.
CVS Caremark Corp., the U.S.’s second-biggest PBM after Express Scripts, had no immediate comment, according to Christine Cramer, a spokeswoman for the Woonsocket, Rhode Island-based company.
“Pfizer is trying to avoid just a total collapse, since the U.S. is such a big market,” said Christopher Bowe, an analyst with Informa-Scrip Intelligence in New York.
There’s a big incentive for distributors to move quickly to offer the generic copy “so managing it for the first sixth months without a complete collapse, that’s really important,” Bowe said in a telephone interview.
Mackay Jimeson, a spokesman for Pfizer, declined to comment specifically on the company’s agreements with pharmacy benefit managers.
Watson, based in Parsippany, New Jersey, has an agreement with Pfizer for an “authorized generic” version of Lipitor that will hit the market on Nov. 30, and will split revenue with Pfizer on the pill. India’s Ranbaxy Laboratories Ltd. has the rights to bring its own generic competitor to market on that date.
Ranbaxy, though, has yet to resolve a dispute over its manufacturing plant with the U.S. Food and Drug Administration, and the Justice Department that may block sale of its generic version because of a dispute over a previous fine.
For more patent news, click here.
Trade Secrets/Industrial Espionage
Landis Gets Suspended Sentence in Industrial Espionage Case
U.S. cyclist Floyd Landis was given a one-year suspended jail sentence after a French court convicted him of hiring an industrial espionage firm to spy on an anti-doping lab, Agence France Presse reported.
Landis had employed an economic intelligence consultancy to get him unauthorized access to documents from France’s anti- doping agency, according to AFP.
Members of the consultancy, known as Kargus Consultants, also received jail sentences and fines, according to the French news service.
The cyclist, who was initially declared the winner of the 2006 Tour de France, was disqualified after he failed a drug test for excess testosterone, AFP reported.
Baker & Daniels Hires IP Specialist Reckamp Before Merger
Baker & Daniels LLP hired Christopher J. Reckamp for its IP practice, the Indianapolis-based firm said in a statement.
Reckamp joins from Chicago’s Vedder Price P.C. Before he was a lawyer, he worked as an electric engineer at Motorola Inc.
His practice is focused on patent and trademark acquisition and technology-transfer transactional work, and patent litigation in federal courts and at the U.S. Patent and Trademark Office. He has represented clients with a wide range of technologies including security systems and medical equipment.
Reckamp has an undergraduate degree in electrical engineering from Marquette University and a master’s degree in business administration and a law degree from DePaul University.
Baker & Daniels will be merging with Faegre & Benson LLP of Minneapolis Jan. 1, according to a joint statement the two firms released yesterday. The new firm will be known as Faegre Baker Daniels.
--Editors: Mary Romano, Peter Blumberg
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