Bloomberg News

GE, Apple, Urban Outfitters, Mattel: Intellectual Property

March 01, 2012

General Electric Co., the biggest U.S. maker of wind turbines, won a partial appeals-court victory in a patent-infringement case against Mitsubishi Heavy Industries Ltd. (7011)

A federal appeals court ordered the U.S. International Trade Commission to review whether Mitsubishi Heavy violated GE’s rights under patent 6,921,985, while affirming a decision that there was no infringement of patent 7,321,221. The decision was posted yesterday on the website of the U.S. Court of Appeals for the Federal Circuit.

GE is seeking to block Tokyo-based Mitsubishi Heavy from bringing its turbine parts into the U.S. The two companies are in the midst of a trial in Dallas over whether Mitsubishi is infringing a different GE patent, for a way to keep turbines connected to utility grids during voltage fluctuations without sustaining damage.

GE originally claimed Mitsubishi’s turbines infringed three patents related to technology that ensures a consistent flow of electricity to the grid no matter the wind speed. One patent expired Feb. 1, 2011, and was dropped from the case.

GE can still pursue past royalties through a separate civil suit that it filed against Mitsubishi in federal court in Texas.

In a separate action, Mitsubishi filed an antitrust lawsuit in Arkansas accusing GE of trying to monopolize the wind-turbine market. That suit is on hold, pending the outcome of the GE patent cases, including the federal appeal.

The appeal is General Electric v. ITC, 10-1223, U.S. Court of Appeals for the Federal Circuit (Washington). The ITC case is In the Matter of Certain Variable Speed Wind Turbines and Components Thereof, 337-641, U.S. International Trade Commission (Washington).

The civil cases are General Electric Co. (GE) v. Mitsubishi Heavy Industries Ltd., 09cv229, U.S. District Court for the Southern District of Texas (Corpus Christi) and General Electric Co. v. Mitsubishi Heavy Industries Ltd., 10cv276, U.S. District Court for the Northern District of Texas (Dallas).

The antitrust case is Mitsubishi Heavy Industries Ltd. v. General Electric Co., 10cv5087, U.S. District Court for the Western District of Arkansas (Fayetteville). Mitsubishi’s case against GE is Mitsubishi Heavy Industries Ltd. v. General Electric Co., 10cv812, U.S. District Court for the Middle District of Florida (Orlando).

For more patent news, click here.


Apple Urges China Court for ‘Fair and Just’ Ruling in IPad Case

Apple Inc. (AAPL) urged a court in southern China to deliver a “fair and just” ruling in its dispute with the local unit of Proview International Holdings Ltd. (334) over ownership of the iPad trademark in the country.

Lawyers for both companies presented arguments for almost six hours at the Higher People’s Court of Guangdong in Guangzhou Feb. 29 before being asked by the three-judge panel if they wished to settle. Attorneys for Apple and Proview said they would consult their clients and the hearing was adjourned without a new court date or a timeframe for a ruling.

Apple appealed a November ruling by a lower court that its 2009 contract to buy rights to the iPad name in China was invalid because Proview’s Shenzhen unit that owned them wasn’t a party to the agreement. A loss in court would subject Apple to lawsuits seeking damages and enable a nationwide ban on iPad sales in the company’s biggest market outside the U.S.

The dispute centers on whether Proview’s Taiwan unit, which Apple paid 35,000 British pounds ($55,780) to use the iPad name in mainland China, had the right to sell it or whether that rested with the Shenzhen unit and its creditors, including Bank of China Ltd. (601988) and China Minsheng Banking Corp. (1988)

Proview’s wholly owned subsidiary, Proview Technology (Shenzhen) Co., obtained the iPad trademark in China in 2001, according to a Feb. 3, 2010, regulatory filing with the Hong Kong stock exchange. The mark was obtained for a desktop terminal with touch-screen display called the Internet Personal Access Device, or IPAD, that the company developed starting in 1998.

Proview has also applied to China’s Customs Bureau to block exports and imports of iPads. Last week, the company asked a court in California to stop Apple from using iPad trademarks.

After Proview Technology (Shenzhen) Co. defaulted on loans, the Shenzhen Intermediate People’s Court in March 2009 appointed Bank of China and Minsheng to lead a reorganization of the company, Yang, who remains chairman of the unit, said in a Feb. 21 interview.

Proview’s Hong Kong shares have been suspended since Aug. 2, 2010. The Hong Kong stock exchange on Dec. 30 gave Proview a third and final warning that it will be removed from the bourse by June 29 if it fails to publish earnings and demonstrate sufficient working capital for 12 months.

Urban Outfitters Sued by Navajo Nation Over Use of ‘Navajo’ Mark

Urban Outfitters Inc. (URBN), the lifestyle specialty retailer based in Philadelphia, was sued for trademark infringement by the Navajo Nation, which is the largest Native American tribe in the U.S.

The suit is related to the retailer’s use of “Navajo” with products it sells.

In October, the Navajo Nation sent Urban Outfitters a cease-and-desist letter objecting to the use of the word “Navajo” on underwear and the sale of a flask wrapped in what was described as “Navajo Print Fabric.” The Navajo Nation complained that the use of the word on underwear offended the tribe’s spiritual beliefs about modesty, and calling a flask “Navajo” was insensitive, given the ban on the sale and consumption of alcohol on the reservation.

Other items to which the Navajo Nation objected included an “Unknown Techno Navajo Quilt Oversized Crop Tee” and a “Truly Madly Deeply Navajo Print Tunic,” according to court papers.

The retailer removed the word “Navajo” from product names on its website and replaced it with “Printed,” in response to the cease-and-desist letter, the Navajo Nation said in its complaint.

Objectionable items continue to be sold on Urban Outfitters’s “ website,” Navajo Nation claimed in its pleadings. The Nation claims “Navajo” isn’t a general term used for descriptive purposed. The mark is used by the Nation “to distinguish its authentic and genuine products.”

The use of “Navajo” in connection with items with alcoholic connotations such as the flask is “derogatory and contrary to the Navajo Nation’s principles,” according to court papers.

Navajo Nation also objects to Urban Outfitters’s sale of goods under such titles as “Native American,” “Indian” or “Tribal,” saying this falsely suggests the items are the products of the Navajo Nation, an American Indian Tribe, an Indian arts and crafts organization or an Indian artisan.’’

It asked the court to bar all use of the “Navajo” name by Urban Outfitters, and for awards for profits related to the alleged infringement.

It also seeks damages under the Indian Arts and Crafts Act amounting to $1,000 per item for every day for each type of product it claims is falsely labeled. That 1990 federal law bars public misrepresentation in the marking of Indian arts and crafts products.

The Nation also requested additional damages to punish Urban Outfitters for “willful and intentional conduct,” and awards of money damages and attorney fees.

Urban Outfitters didn’t respond immediately to an e-mailed request for comment.

The Navajo Nation is represented by Harrison Tsosie, Dana Brobroff, Brian L. Lewis and Henry Howe of the Navajo Nation Department of Justice and Mark A. Griffin and Karin B. Swope of Seattle’s Keller Rohrback LLP (1432L).

The case is Navajo Nation v. Urban Outfitters Inc., 1:12- cv-00195, U.S. District Court, District of New Mexico (Albuquerque).

For more trademark news, click here.


Megaupload’s Dotcom Stays Out of Jail on Bail in New Zealand founder Kim Dotcom, indicted by the U.S. for orchestrating the country’s biggest copyright infringement conspiracy, can remain out of jail on bail pending an extradition hearing, a New Zealand judge ruled.

High Court Justice Timothy Brewer yesterday rejected an appeal by New Zealand prosecutors, a Ministry of Justice spokeswoman said by telephone. Brewer was acting at the request of the U.S. to keep Dotcom in prison until the extradition hearing, currently scheduled for Aug. 20.

Dotcom, 38, was indicted in what U.S. prosecutors dubbed a “Mega Conspiracy,” accusing his file-sharing website of generating more than $175 million in criminal proceeds from the exchange of pirated film, music, book and software files. He faces as long as 20 years in prison for each of the racketeering and money laundering charges in the indictment.

In a revised indictment filed in a U.S. court in Alexandria, Virginia, on Feb. 17, Dotcom was also charged with three new criminal copyright counts and five new wire-fraud counts.

The conspiracy deprived copyright owners of more than $500 million, the U.S. government said.

Dotcom, who legally changed his family name from Schmitz, has denied any criminal misconduct.

Megaupload advertised that it had more than 1 billion visits to the site, more than 150 million registered users and 50 million daily visitors, and accounted for 4 percent of Internet traffic, prosecutors said. The site was shut down by the U.S. Justice Department and now shows an FBI anti-piracy warning, saying the domain name has been seized pursuant to an order issued by a U.S. District Court.

The case is Kim Dotcom v. United States of America, DCNSD [25 January 2012], District Court at North Shore (Albany).

Philippine Piracy Remains a Concern, U.S. Trade Official Says

Piracy in the Philippines remains a concern, Deputy U.S. Trade Representative Demetrios Marantis told reporters in Manila yesterday.

“We really urge the Philippines to do more in this area,” he said in Manila yesterday. The U.S. is “looking with a lot of interest” at the Southeast Asian nation’s copyright measures, he said.

For copyright news, click here.

IP Moves

Reed Smith Hires Entertainment Lawyer Dossick From Katten Muchin

Reed Smith LLP (1157L) hired Harrison J. Dossick for its entertainment industry practice, the Pittsburgh-based firm said in a statement.

Dossick, a litigator who has represented motion picture and television studios, distribution companies and content owners in disputes, currently represents Sony Pictures Entertainment Inc. (CPEI) and the Weinstein Co., distributor of the Academy Award-winning film “The Artist.” He joins from Chicago-based Katten Muchin Rosenman LLP (1161L).

He has an undergraduate degree from the University of Michigan and a law degree from Boston University.

Trade Secrets/Industrial Espionage

Mattel Asks Appeals Court to Reverse $310 Million MGA Award

Mattel Inc. (MAT) asked a federal appeals court to reverse the $310 million in damages and fees that toymaker MGA Entertainment Inc. won last year in a trial over ownership of the rights to MGA’s Bratz dolls.

Mattel said in a brief filed Feb. 27 with the U.S. Court of Appeals in San Francisco that “after two trials and eight years of litigation” it isn’t contesting the jury’s finding that MGA didn’t infringe Mattel’s copyright when it developed the dolls from an idea and drawings by a former Mattel designer.

The El Segundo, California-based maker of the Barbie doll said it wants the appeals court to throw out the $172.5 million MGA won on its counterclaims that Mattel stole its trade secrets. Those claims were time-barred and shouldn’t have been brought to trial, Mattel said. Nor was there evidence that the alleged trade secrets were actually secrets, it said.

“MGA failed to prove on a trade-secret-by-trade-secret basis that the 26 products on which the jury found liability and damages were trade secrets, adducing at best only vague and general proof that MGA protected the secrecy of some of the products it displayed at toy fairs for publicity purposes,” Mattel said.

The company asked the court to reverse what it called the unprecedented $105.6 million in attorneys’ fees and $31.6 million in costs U.S. District Judge David O. Carter in Santa Ana, California, awarded to MGA for having to defend against Mattel’s copyright-infringement suit.

Carter called Mattel’s claim “stunning in scope and unreasonable in relief it requested.”

“I’m pleased that Mattel and its board of directors, after wasting $400 million of shareholders’ money in a lawsuit they should have never brought, have now abandoned that and the ownership of the Bratz brand,” Isaac Larian, chief executive officer and founder of Van Nuys, California-based MGA, said in P an e-mailed statement.

The jury in April agreed with closely held MGA that Mattel stole its trade secrets when company employees got into MGA’s showrooms at toy fairs using phony business cards.

The jury rejected copyright infringement allegations and a claim that MGA stole Mattel’s trade secrets in 2000 when it made an agreement with Carter Bryant, a toy designer, who Mattel said was one of its employees when he came up with the idea for the Bratz dolls and made the first sketches.

The case is Mattel v. MGA, 11-56357, U.S. Appeals Court for the Ninth Circuit (San Francisco).

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