Bloomberg News

TiVo, YSL, Microsoft, AU Optronics: Intellectual Property

October 17, 2012

TiVo Inc. (TIVO:US) said it may be entitled to billions of dollars in damages should it win its patent- infringement lawsuit against Google Inc.’s Motorola Mobility unit over digital-video recording technology.

“Motorola’s massive production of infringing DVRs dwarfs the numbers of accused products at issue in TiVo’s previous cases,” TiVo said in a filing Oct. 15 in federal court in Marshall, Texas. “TiVo’s damages claim is likely to run into the billions of dollars.”

TiVo disclosed the figure in a request to consolidate the case against Motorola Mobility with one involving Cisco Systems Inc. (CSCO:US) to address pre-trial issues, saying it would speed the process and conserve resources. The companies make set-top boxes for Time Warner Cable Inc. (TWC:US), which is a defendant in both cases. TiVo said it also will seek an order to force Motorola Mobility to stop selling products that infringe TiVo patents.

In an Oct. 9 filing, Motorola Mobility said TiVo waited too long to make its request, since the judge had already split the case to have the claims against Motorola Mobility and Cisco handled separately. The Motorola Mobility case is further along than the Cisco one, it said.

Motorola Mobility, based in Libertyville, Illinois, said it also has its own patent-infringement claims against TiVo that are unrelated to Cisco. The company said it would seek to have TiVo give up patent-licensing revenue it claims was “wrongfully derived from Motorola’s inventions.”

Alviso, California-based TiVo is basing its damages estimate in part on previous patent settlements including the $600 million it received from Dish Network Corp., more than $215 million from AT&T Inc. and more than $250 million from Verizon Communications Inc.

Mountain View, California-based Google, which bought Motorola Mobility for $12.5 billion in May, is seeking to sell the unit that supplies cable television providers with set-top boxes and other equipment. The TiVo litigation could make that difficult, said Kevin Stadtler, principal of Stadtler Capital Management LLC in Fort Worth, Texas, who owns TiVo shares and is projecting they will rise.

“It is highly improbable Google can sell the set-top box division without settling with TiVo considering the threat of an injunction and a potential claim like this,” he said.

The cases are Motorola Mobility Inc. v. TiVo Inc., 11cv53; and TiVo Inc. v. Cisco Systems Inc., 12cv311, both U.S. District Court for the Eastern District in Texas (Marshall).

For more patent news, click here.

Trademark

Yves Saint Laurent Seeks to Dismiss Claims Against Louboutin

Yves Saint Laurent SAS, following an appeals court ruling in September that it has the legal right to sell monochromatic women’s shoes with red soles, asked a federal judge to dismiss counterclaims it filed against Christian Louboutin Sarl.

Yves Saint Laurent seeks to end the lawsuit Louboutin brought to prevent Saint Laurent from selling red-soled shoes, according to a filing yesterday in Manhattan. Saint Laurent tried to persuade the federal courts to reject Louboutin’s trademark for red soles. The U.S. Court of Appeals in New York, in a mixed decision, said Louboutin had a limited right to the trademark but couldn’t stop Saint Laurent from selling monochromatic red shoes.

“Now that the Second Circuit has definitively rejected Louboutin’s claims against YSL, YSL prefers to refocus its energies on its business and creative designs, and has determined that these claims are no longer worth pursuing,” Yves Saint Laurent said in the filing.

U.S. District Judge Victor Marrero in August 2011 rejected a bid by Louboutin for an injunction to stop Saint Laurent from selling the shoes. Louboutin appealed and Marrero said he would defer deciding whether to cancel Louboutin’s trademark for the red sole until after the appeals court ruled. The appeals court said Louboutin’s trademark didn’t extend to all-red shoes.

“It’s not unexpected,” Harley Lewin, a lawyer with McCarter & English LLP who represented Louboutin, said in a phone interview. “We’re talking to the client about whether there are any further steps to take. This is all that was left. The essential dispute was resolved.”

Saint Laurent seeks to dismiss six counterclaims. Four were over trademark rights, and Saint Laurent said in its filing that the district court no longer has jurisdiction over this issue.

The two other claims were for tortious interference and unfair competition. Saint Laurent said Louboutin called certain retailers and told them to stop selling Saint Laurent’s red shoes because it owned the trademark.

As for the trademark counterclaims, Bernstein said that because Louboutin’s claims against Saint Laurent were dismissed, the only place to pursue cancellation of the trademark would be the U.S. Patent and Trademark Office. He said Saint Laurent would not pursue that action unless “Louboutin were to file a new lawsuit against us.”

Louboutin, a Paris-based fashion company, claimed in its lawsuit filed in April 2011 that Yves Saint Laurent’s red-soled footwear “threaten to mislead the public.”

Yves Saint Laurent is a unit of Paris-based PPR (PP), which owns other luxury brands including Gucci

The case is Christian Louboutin SA v. Yves Saint Laurent America, 11-2381, U.S. District Court, Southern District of New York (Manhattan.)

For more trademark news, click here.

Copyright

GM Didn’t Infringe Rights to Einstein Persona, Judge Says

The use of images of the late Albert Einstein, “even in tasteless ads,” can’t be barred by invoking copyright law, a federal judge in Los Angeles said.

U.S. District Judge A. Howard Matz ruled in a case brought by Hebrew University of Jerusalem against General Motors Co. The school, which inherited the rights to all of the physicist’s papers, copyrights, royalties, publication rights and literary property, objected to GM’s use of an image of Einstein in an advertisement.

According to court papers, that ad, which ran in one issue of “People” magazine, was used to promote GM’s 2010 Terrain vehicle. The university said the ad, which featured Einstein’s face over the body of “a shirtless, muscle-bound underwear model” and the text “ideas are sexy too” infringed its IP rights.

The school also claimed that such a use of Einstein’s image denigrated and caused injury to its “carefully guarded rights” to the image of the famous scientist.

The case was filed in California rather than New Jersey, where Einstein died in April 1955. A New Jersey court said that a term of life plus 50 years would be appropriate. In California, that right extends for 70 years after the person’s death.

The university had argued that California law prevails and that, in any case, the term should be 70 years under federal copyright law.

Matz noted that nothing in Einstein’s will specifically mentioned any right of publicity and that during his lifetime, he never claimed or received compensation for the use of his personal image.

Matz said it “assumes without deciding” that the school had succeeded in proving that Einstein had intended to transfer his publicity rights along with the rest of his intellectual property. California’s 70-year term for publicity rights doesn’t apply to Einstein because the physicist died in Princeton, New Jersey, and California’s rights extend only to its residents, he said.

A maximum 50-year postmortem duration would be “long enough for a deceased celebrity’s heirs to take advantage of and reap the benefit,” according to the court. The court noted that at the time the university acquired Einstein’s rights, the term of copyright law was only 50 years postmortem.

Matz decided that 2005 was the last year in which the university could sue to enforce any right of publicity related to Einstein. Because the case wasn’t filed until 2012, the school isn’t entitled to pursue it further, Matz said, saying there would be no trial.

GM has until Oct. 22 to file a proposed judgment in accord with the court’s ruling.

The case is Hebrew University of Jerusalem v. General Motors LLC, 10-cv-03790, U.S. District Court, Central District of California (Los Angeles).

Microsoft’s Infringement Filter Targets ‘45’ on Websites

For Microsoft Corp. (MSFT:US)’s automated filter that searches the Internet for infringements of its copyrights, the magic number apparently is “45,” the TorrentFreak website reported.

The Redmond, Washington-based software company sent requests to Google Inc. (GOOG:US) to take down web pages through which unauthorized copies of the company’s Widows 9 program were allegedly being distributed, according to TorrentFreak, the anti-copyright news source.

Among those targeted in the takedown request were the BBC, the Washington Post, Wikipedia, CNN, the Rotten Tomatoes movie- ranking site, and AMC Theatres, TorrentFreak reported, noting that Google didn’t censor some of these sites such as the BBC and Wikipedia.

The common element on about half the sites was that they made reference to the number 45 in some way while they had nothing to do with the Microsoft product, TorrentFreak reported, without explaining the significance of that particular number.

UNC Copyright Committee to Clarify School’s Right to Content

The University of North Carolina’s copyright committee will develop guidelines on content use to help address concerns among faculty members about rights to work they create, the school’s the Daily Tar Heel newspaper reported.

As a condition of employment at the school, the university has the right to use materials created by the faculty, including “pedagogical, scholarly, literary or aesthetic works resulting from nondirected effort,” according to the newspaper.

Many faculty members don’t understand that when they create course material, it can be used by the school even after they moved to a job elsewhere, the newspaper reported.

Aim of the guidelines is to reduce faculty backlash against reuse of the content they create, committee member Jean DeSaix told the Daily Tar Heel.

Washington Resident Receives Copyright Infringement Sentence

An Everett, Washington, man received a 40-month prison sentence in a criminal copyright-infringement case, according to Bloomberg data.

Sang Jim Kim, who in July entered a guilty plea to two counts of infringement, must also forfeit $409,779. When he finishes his prison term, he will have two years of supervised release, according to an Oct. 12 court filing in the case.

Kim was accused of copyright and distributing Korean- language television programs, a number of pre-release action films including “Tron: Legacy,” and “The Green Hornet,” and computer games and software. He made the available through the www.82movie.com and www.007disk.com websites, the government charged. An informant told the government that Kim had offered to sell the 007disk.com websites, servers and related content for $90,000, and that he claimed he would load more than 50,000 titles onto the site before selling it.

U.S. District Judge Richard A. Jones characterized Kim as a “one man wrecking ball” against the content industries, the government said in an Oct. 12 statement. The government said that when Kim was trying to sell his websites, he acknowledged receiving infringement takedown notices, and said that he would comply for a while and then put the infringing content back up on his site.

The case is U.S. A. v. Kim, 2:11-cv-00413-RAJ, U.S. District Court, Western District of Washington (Seattle).

For more copyright news, click here.

Trade Secrets/Industrial Espionage

Two Ex-Executives Questioned About AU Optronics Trade Secrets

AU Optronics Corp. (2409), the Taiwan-based maker of flat-panel display systems, was allegedly hit by trade-secret theft after two executives left to join a competitor, the Times of India reported.

The technology related to a display technology used in mobile devices and on television screens, according to the newspaper.

Taiwan’s Bureau of Investigation said the loss of the allegedly purloined technology could undermine that country’s competitive edge in the flat-panel industry, the Times of India reported.

The two suspects, who were arrested and released, face further questioning, according to the Times.

IP Moves

Vinson & Elkins Hires IP Litigator Charles Ossola from Dickstein

Vinson & Elkins LLP hired Charles D. Ossola for its IP practice, the Houston-based firm said in a statement yesterday.

Ossola, who joins from Washington’s Dickstein Shapiro LLP, does patent and antitrust litigation and some copyright and trademark work. He has represented clients whose technologies include semiconductors, software, communication systems, MRI technologies, pharmaceutical compositions, dermatology products, medical devices, flexographic printing plates and processes, dental implants, virtual private networks, and mechanical systems.

In addition to federal trial and appellate courts, Ossola has also appeared before the U.S. International Trade Commission, a Washington-based body with the power to exclude imports that infringe U.S. patents.

Ossola has an undergraduate degree from Williams College and a law degree from Villanova University.

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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Companies Mentioned

  • TIVO
    (TiVo Inc)
    • $11.94 USD
    • -0.96
    • -8.08%
  • CSCO
    (Cisco Systems Inc)
    • $27.43 USD
    • 0.14
    • 0.53%
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