Bloomberg News

Ernie Ball, ‘Kaepernicking,’ MGA: Intellectual Property

January 25, 2013

Ernie Ball Inc., musical instruments maker, lost its patent-infringement case against a developer of tuning systems for string instruments.

The San Luis Obispo, California-based company sued Earvana LLC for patent infringement in federal court in Riverside, California, in April 2006, claiming its patent 6,433,264 was infringed. The patent covered a device for a string instrument that helps govern the pitch of the strings.

In January 2011 the trial court found that Earvana had infringed the patent, awarded Ernie Ball $165,000 in damages, and ordered the Paso Robles, California-based defendant to halt activities that infringed the patent.

Earvana then filed an appeal to the Washington-based appellate court that hears patent cases.

The appeals court reversed the infringement verdict yesterday, saying that the patent was invalid. The claims the patent asserted were so vague that they failed on the grounds patent law calls indefiniteness, the court said.

The lower court case is Ernie Ball Inc. v. Earvana, 5:06- cv-00384-JNH-OP, U.S. District Court, Central District of California (Riverside). The appellate case is Ernie Ball v. Earvana, 12-01276, U.S. Court of Appeals for the Federal Circuit (Washington).

For more patent news, click here.

Trademark

Kaepernick Follows Tebow’s Lead, Seeks ‘Kaepernicking’ Trademark

Colin Kaepernick, the San Francisco 49er’s quarterback who threw four touchdown passes in the National Football League playoff game against the New England Patriots, has filed an application to register a trademark, according to the database of the U.S. Patent and Trademark Office.

He’s seeking to register “Kaepernicking” as a trademark. The term has been used to describe the player’s victory- celebration practice of flexing his pass-throwing arm and kissing his bicep.

According to the application Kaepernick filed Jan. 14, he plans to use the mark on t-shirts. In seeking the trademark, Kaepernick is following the lead of New York Jets quarterback Tim Tebow, who registered “Tebowing” as a trademark Dec. 25 last year.

That word came about because Tebow, a devout Christian, has the practice of kneeling in prayer at the end of a game. The patent office rejected some applications for “Tebowing” filed by others because the applicants lacked the player’s permission for the use of his name, according to patent office documents.

Kaepernick will lead the 49ers against the Baltimore Ravens in the 2013 National Football League Super Bowl in New Orleans Feb. 3.

News Corp. Wins Dismissal of Religious Broadcaster’s Suit

News Corp. (NWSA:US)’s Fox Television Studios unit didn’t infringe a trademark held by a developer of religious television programming, a federal court in Iowa has ruled.

Louis Scorpiniti of Des Moines, Iowa, sued Fox in federal court in Cedar Rapids May 2011, claiming that his “The Gate” trademark was infringed by a Fox television series, “The Gates.” He claimed that his business opportunities to exploit his mark and expand his broadcast offerings were harmed when potential investors learned of the Fox series.

He also alleged that the public was likely to be confused by the name similarity and that his business reputation was harmed.

In her Jan. 23 order, U.S. District Judge Linda R. Reade said Scorpiniti’s mark was weak. He failed to demonstrate any actual evidence of consumer confusion, she said, adding that in any case, the parties’ businesses were sufficiently different that the public could distinguish them.

Reade took exception to evidence Scorpiniti presented to advance his claim of customer confusion, saying “statements by Scorpiniti’s former girlfriend and the unidentified man at the bar are hearsay.”

She also rejected his request for damages.

The case is Scorpiniti v. Fox Television Studios Inc., 1- 11-cv-00064-LRR, U.S. District Court, Northern District of Iowa (Cedar Rapids).

For more trademark news, click here.

Copyright

‘Spider-Man’ Producers, Taymor Reach Settlement, Lawyer Says

The producers of the Broadway musical “Spider-Man: Turn Off the Dark” settled a lawsuit brought by the show’s fired director, Julie Taymor, two weeks after a judge set a May 27 trial date, a lawyer for Taymor said.

U.S. District Judge Katherine Forrest in New York, who is presiding over the case, on Jan. 10 restored the case to her active court calendar, saying that while both sides told her in August they had agreed to a tentative settlement over royalties and creative control, they hadn’t completed it.

“The parties have now reached an agreement on terms to settle the above litigation and have a fully drafted settlement agreement that the parties are ready to execute,” Charles T. Spada, a lawyer for Taymor, wrote to Forrest in a Jan. 22 letter made public the following day.

Spada didn’t immediately return a voice-mail message left at his office seeking comment on the settlement. Dale Cendali, a lawyer for the show’s producers, 8 Legged Productions, didn’t immediately return a call seeking comment.

Taymor was removed from the $75 million show in March 2011, after critics lambasted it during an extended 182-performance preview period. She sued the producers in November 2011, saying they violated her intellectual-property rights by making changes without her permission and didn’t pay royalties due her as a co- book writer.

In 2003, producers began negotiating with Marvel Entertainment, a unit of The Walt Disney Co. (DIS:US) that owns the rights to the character, about staging “Spider-Man” on Broadway, according to Taymor’s suit.

The original producing team asked Bono and The Edge of the band U2 to write a score and Taymor to direct. In 2004, she wrote a three-page treatment for the show and the following year she registered it with the U.S. Copyright Office, according to her suit.

In her complaint, Taymor said that as the musical’s co- author she was owed guaranteed minimum royalties of $2,917.50 a week. The producers agreed in February to pay her director’s royalties as part of a settlement with the Stage Directors and Choreographers Society.

In his letter to the court, Spada said the settlement had been conditional upon 8 Legged Productions and non-party Marvel Entertainment entering into a separate agreement to amend 8 Legged’s license to produce the Spider-Man musical.

The case is Taymor v. 8 Legged Productions LLC, 11-cv- 08002, U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.

Trade Secrets/Industrial Espionage

MGA’s Bratz Trade Secret Win Over Mattel Erased on Appeal

MGA Entertainment Inc.’s $162.5 million victory over rival toymaker Mattel Inc. (MAT:US) for theft of trade secrets was thrown out by a federal appeals court that said the counterclaims shouldn’t have been allowed to go to the jury.

The three-judge panel of the U.S. Court of Appeals in San Francisco in a ruling yesterday upheld the trial judge’s decision to award closely held MGA $137.2 million for having to defend against Mattel’s claims that MGA’s Bratz dolls infringed Mattel’s copyrights.

“At one point, a copyright defendant had to show that the plaintiff’s claim was frivolous or made in bad faith in order to be entitled to fees; but no longer,” the panel said. “Even assuming Mattel’s claim was objectively reasonable, the district court didn’t abuse its discretion in awarding MGA fees.”

It was the second time the three judges reversed the outcome of a trial in the eight-year battle between Mattel, the maker of Barbie, and MGA, which Mattel accused of stealing the idea for its Bratz dolls. In 2010, the panel reversed a trial judge’s ruling that had given Mattel almost complete ownership of MGA’s Bratz brand.

Mattel at the second trial in Santa Ana, California, lost on its copyright infringement claim, a result that it didn’t contest on appeal. The toymaker appealed U.S. District Judge David Carter’s decision to allow MGA to bring counterclaims in the case that Mattel said were unrelated to the underlying lawsuit.

The trial jury awarded MGA $88.5 million in damages on its claims that Mattel employees used fake business cards to get access to MGA’s booths at toy fairs and obtain MGA’s trade secrets. The judge later reduced the verdict to $85 million and then doubled it by adding $85 million in punitive damages.

The appellate panel agreed with Mattel that MGA’s counterclaims weren’t “compulsory” in that they weren’t based on the same underlying facts as Mattel’s trade secret-theft claims against MGA. As such, the judge had erred by allowing MGA’s claims to be part of the case, the panel said.

“That both Mattel and MGA claimed they stole each other’s trade secrets isn’t enough to render MGA’s counterclaim compulsory,” the panel said. “What matters is not the legal theory but the facts.”

Lisa Marie Bongiovanni, a spokeswoman for El Segundo, California-based Mattel, and Susan Hale, a spokeswoman for Van Nuys, California-based MGA, didn’t immediately respond to e- mailed requests for comment on the ruling.

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

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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  • DIS
    (Walt Disney Co/The)
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