Bloomberg News

Microsoft, ECOJ, Tebow, BitTorrent: Intellectual Property

April 03, 2012

Microsoft Corp. (MSFT:US) said Motorola Mobility Holdings Inc. (MMI:US) demanded $4 billion a year in patent royalties for use of technology critical to functioning of the Xbox video-gaming system.

“Motorola’s demand was so over-reaching that no rational company could ever have accepted it or even viewed it as a legitimate offer,” Microsoft said in a March 30 filing.

Both companies want a federal judge in Seattle to rule whether Libertyville, Illinois-based Motorola Mobility broke its promise to license patents essential to comply with industry standards on wireless networking and video coding on fair and non-discriminatory terms.

The case is part of a broader dispute in which Motorola Mobility is seeking to block sales of the Xbox, and Microsoft wants a ban on U.S. imports of Motorola Mobility phones that run on Google Inc. (GOOG:US)’s Android operating system.

Microsoft said Motorola Mobility is seeking $4 billion a year for licensing 50 patents on video compression. The entertainment division of Redmond, Washington-based Microsoft generated $8.9 billion in sales last year. Microsoft’s total revenue was $69.9 billion in the fiscal year that ended June 30, 2011.

The software maker said it pays $6.5 million a year to a group of 29 companies with 2,339 patents that cover the same industry standard.

Motorola Mobility contends that the licensing offer made in October 2010 -- a 2.25 percent royalty on the total value of a product -- was the same one it has presented to every company over the past decade as a starting point for negotiations. Instead, Microsoft filed the breach of contract suit.

Microsoft had never licensed the technology, and Motorola never pushed it, because the two worked together to develop phones that used Microsoft’s operating systems. The relationship strained when the Microsoft platform failed to gain market share and Motorola Mobility turned to Android, Motorola Mobility said.

Microsoft and Apple Inc. (AAPL:US), which has its own patent battles with Motorola Mobility, have both filed complaints with the European Union accusing the handset maker of misusing its patents on standard-essential technology

The U.S. case is Microsoft Corp. v. Motorola Inc., 10cv1823, U.S. District Court for the District of Washington (Seattle).

ECOJ Says Polish Generics Drugs Legislation Violates EU Law

The European Court of Justice said Polish legislation permitting the importation of unauthorized generic forms of drugs already permitted in the market is contrary to European Union law.

In a March 29 statement, the court said Poland’s use of permitted “special needs” drug importation base only on lower price isn’t justified. The “special needs exception” must be interpreted strictly, “applicable in exceptional cases where it is appropriate to meet special medical needs,” not for financial considerations in themselves, the court said.

The court said that the present harmonized marketing authorization within the EU “enables cost-efficient and non- discriminatory market access,” while ensuring that the requirements of safeguarding public health are met.

Oracle, Google Settlement Talks Over Java Patent Failed

Oracle Corp. (ORCL:US) and Google Inc. have reached an “irreconcilable impasse” in settlement talks to resolve an intellectual property dispute over the Java programming language and their lawsuit should proceed to trial on April 16, a judge said.

U.S. Magistrate Judge Paul Grewal in San Jose, California, wrote in a filing yesterday that no further settlement conferences will be scheduled. According to the court document, the unfruitful negotiations went on for six hours.

Oracle accused Google in a 2010 lawsuit of infringing patents related to its Java software in the company’s Android mobile software. With a settlement, the companies avoid the risk of a jury deciding whether Google owes royalties.

The case is Oracle America Inc. v. Google Inc., 10-03561, U.S. District Court, Northern District of California (San Francisco).

For more patent news, click here.

Trademark

IPad Trademark Fight to Continue After China Court Ruling

A Chinese court rejected a creditor’s application to liquidate Proview Technology (Shenzhen) Co., allowing the failed display maker to pursue its legal fight against Apple Inc. over the iPad trademark in China.

The Shenzhen Intermediate People’s Court ruled against Fubon Insurance’s bid to liquidate Proview, Roger Xie, a lawyer for Proview, said by phone yesterday. The decision was released to litigants on March 31, he said.

The same Chinese court ruled in November that Proview owned the iPad trademark in China, saying Apple’s 2009 contract to acquire rights to the name was invalid. The Cupertino, California-based company has appealed, and a decision is expected within two months. Proview has filed separate complaints alleging that Apple’s sale of iPad tablets in the country infringed intellectual-property laws.

Fubon Insurance, a unit of Taipei-based Fubon Financial Holding Co. (2881), is assessing whether to take further action in the case, according to an e-mailed statement yesterday. The application for liquidating Proview was taken on behalf of reinsurance partners, Fubon said March 6.

Proview will continue its litigation with Apple, Xie said yesterday. The action against Apple, the world’s most-valuable company, might have been affected if Fubon’s application had been granted, he said. The rejection was first reported by China’s state-run Xinhua News Agency.

Proview Technology, a unit of Hong Kong-listed Proview International Holdings Ltd. (334), has filed complaints to more than 40 branches of the Administration for Industry and Commerce in China, Ma Dongxiao, another company lawyer, said in February. Court actions have been lodged in Shanghai, Shenzhen and Huizhou, Ma said.

Apple has said it bought the rights to the iPad trademark in China from Proview.

Tim Tebow’s Fans Seek to Register ‘Timsanity’ as U.S. Trademark

First came “Linsanity,” the coined word associated with Jeremy Lin of the New York Knicks National Basketball Association team.

Now it’s “Timsanity,” associated with quarterback Tim Tebow, who was traded to the New York Jets National Football League team.

Lawyers representing Lin sent cease-and-desist letters to several applicants not connected to the basketball player who tried to register “Linsanity” as a trademark. Lin’s lawyer, Pamela Deese of Washington’s Arent Fox LLP (1377L:US), told the Huffington Post that applicants’ enthusiasm for the player “got ahead of their understanding of the law.”

According to the database of the U.S. Patent and Trademark Office, three applications have been filed to register “Timsanity” as a trademark. The applications were filed March 21 and 22, shortly after Heisman Trophy winner Tebow signed with the Jets March 20.

Christian Perez of Astoria, New York, filed an application March 22 to register the term for use on clothing. LifeNatural Corp. of Cheyenne, Wyoming, filed an application one day earlier, also for use with clothing. Frank deGrimm of New York City also filed a March 21 application to use the mark on clothing.

Palmer Says ‘Casino’ Mark Registered Only to Stop Others’ Use

Although he registered “Coolum Casino” as a trademark, the billionaire owner of the Australia’s Coolum Resort & Spa denied he plans to establish a casino, the Australian newspaper reported.

Clive Palmer said in a statement that he hadn’t discussed establishing a casino “with any authorities or the Queensland government,” according to the Australian.

Palmer, who is known as the richest man in the Queensland region, paid an undisclosed amount to Hyatt Hotels Corp. to remove the hotel company as Coolum Resort & Spa’s manager, the Australian reported.

Although he registered the www.coolumcasino.com.au domain name, to stop others from grabbing it, Palmer said a casino could have a “detrimental social effect” on the region, according to the Australian.

Mike Ashley of Newcastle United Wins ‘Sports Direct’ Dispute

The owner of the Premier Football League’s Newcastle United team prevailed in a trademark dispute over the name of his sportswear company “Sports Direct,” the U.K.’s Shields Gazette reported.

Mike Ashley’s Sports Direct International (SPD) became the target of a trademark infringement action by a husband-and-wife team that claimed it had used the name for their company -- Sport Direct Ltd. -- since 2005, according to the newspaper.

The hearing officer at the U.K.’s Intellectual Property Office made a determination that Ashley’s company had used “Sports Direct” long before the complaining company was named, and rejected all claims, the newspaper reported.

Ashley based the “Sports Direct” name on “Viking Direct,” a stationery firm he founded, according to the Shields Gazette.

For more trademark news, click here.

Copyright

Chicago Judge Rejects Conspiracy Claim in BitTorrent Case

In six consolidated copyright cases brought by adult filmmakers against unnamed defendants, a federal judge in Chicago has rejected their argument that the sharing of content through the BitTorrent file-sharing protocol fits within federal law’s definition of conspiracy.

In his March 30 order, U.S. District Judge James E. Holderman said the plaintiffs claims of a civil conspiracy are “unfounded.” He said the filmmakers had failed to argue that an agreement existed among the alleged conspirators and that it was implausible that they successfully could plead that a conspiracy existed.

He called the conspiracy allegations “unjustified attempts” to bolster their efforts to get more irrelevant information about those who aren’t even parties to the cases.

The data would help the filmmakers either sue or try to negotiate a settlement with these new potential defendants, he said. He noted that federal case law holds that “when the purpose of a discovery request is to gather information for use in proceedings other than the pending suit,” discovery is denied.

The case is Pacific Century International Ltd. V. Does 1- 37, 1:12-cv-01057, U.S. District Court, Northern District of Illinois (Chicago).

For copyright news, click here.

IP Moves

Baker & McKenzie Adds Former Torys’ Partner to Toronto IP Group

Baker & McKenzie LLP (1111L:US) hired Kamleh Nicola for its IP practice, the international law firm said in a statement.

Nicola, a litigator, has represented clients in Canadian courts in IP disputes involving pharmaceutical products, biotech, food, medical devices and multimedia. She previously was a partner at Toronto’s Torys LLP (1011L). She will practice at Baker & McKenzie’s Toronto office.

She has an undergraduate degree from Dalhousie University and a law degree from the University of Windsor.

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: Andrew Dunn at adunn8@bloomberg.net.


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