Bloomberg News

Shire, Oprah, Fred Perry, Kim Dotcom: Intellectual Property (1)

June 03, 2013

Shire Plc (SHP) settled a patent lawsuit against Teva Pharmaceutical Industries Ltd. (TEVA), paving the way for lower-cost generic copies of the drug Intuniv, used to treat attention deficit hyperactivity disorder.

Teva, the world’s largest generic-drug company, will get a license to market a version of the drug, Dublin-based Shire said in a May 31 statement. The license takes effect once another generic-drug maker, Actavis Inc. (ACT:US), has sold the drug for six months starting in December 2014.

Shire sued Teva, based in Petach Tikva, Israel, in federal court in Wilmington, Delaware, in April 2010 alleging infringement of two patents for Intuniv. Shire previously settled with Parsippany, New Jersey-based Actavis over the patents. A trial of the litigation against Teva and Actavis was held in September.

The Teva settlement couldn’t immediately be confirmed in court papers. Shire said it submitted the agreements with Teva and Actavis to the Federal Trade Commission for review.

Teva officials didn’t immediately respond to an e-mail seeking comment on Shire’s statement.

The case is Shire LLC v. Teva Pharmaceuticals USA Inc., 10-cv-00329, U.S. District Court, District of Delaware (Wilmington).

For more patent news, click here.

Trademark

Oprah Winfrey’s ‘Own Your Power’ Trademark Win Overturned

Oprah Winfrey’s victory in a trademark-infringement case brought against her over the phrase “Own Your Power” was overturned by a federal appeals court.

The district court was incorrect in finding that Winfrey’s use of the phrase in her magazine, on her website and in an event constituted fair use under trademark law, the U.S. Court of Appeals in New York said May 31. The appeals judges sent the case back to the lower court.

Simone Kelly-Brown sued Winfrey and her company, Harpo Productions Inc., and her magazine publisher, Hearst Corp., claiming they violated Kelly-Brown’s trademark for “Own Your Power,” which she uses for a motivational services company. She also sued corporations including Wells Fargo & Co. (WFC:US), Estee Lauder Cos. (EL:US), Clinique Laboratories LLC and Chico’s FAS Inc. (CHS:US) that sponsored Winfrey’s Own Your Power event.

“The defendants have not adequately established a fair use defense,” U.S. Circuit Judge Chester Straub wrote in his opinion.

The appeals judges also overturned the lower-court rulings in Winfrey’s favor on the claims of reverse confusion and false designation of origin. They affirmed U.S. District Judge Paul Crotty’s order dismissing the claims for counterfeiting, vicarious infringement and contributory infringement.

Nicole Nichols, a spokeswoman for Winfrey and Harpo, and Lisa Bagley, a spokeswoman for New York-based Hearst, didn’t immediately respond to messages seeking comment on the ruling. Calls to Kelly-Brown’s company, Own Your Power Communications Inc., for comment weren’t immediately returned.

Kelly-Brown hosts a radio show, conferences and a blog that promote the message of personal empowerment.

Straub wrote in his opinion that Winfrey sought to trademark her new enterprise, Oprah Winfrey Network, or OWN, about the same time that Kelly-Brown registered her trademark.

Kelly-Brown sued in New Jersey federal court in July 2011 and in November the case was transferred to New York. The defendants made a motion to dismiss all the claims. Crotty granted that motion in its entirety in March 2012.

“There was no chance that an observer of the magazine or event could believe that they were created by Kelly-Brown and her company,” the defendants said in their motion.

The appeals case is Kelly-Brown v. Winfrey, 12-1207, U.S. Court of Appeals for the Second Circuit (Manhattan).

Fred Perry Wins U.K. Trademark Dispute With Secret Sales

Fred Perry Ltd., the British sportswear company, won a trademark dispute with Secret Sales Ltd., a London retailer that sells products on TV and through the Internet, the U.K.’s Retail Gazette reported.

The sportswear company claimed Secret Source sold fake merchandise bearing the Fred Perry laurel-wreath logo without authorization, according to Retail Gazette.

The publication reported that Secret Sales agreed to pay damages and litigation costs and promised not to sell infringing merchandise in the future.

South Africa Professor Calls Tobacco Logo Ban Unconstitutional

A professor at Stellenbosch University’s Faculty of Law in Matieland, South Africa, said a ban on the use of trademarks on tobacco products would be unconstitutional and ineffective.

Speaking at his inaugural lecture at the university, Professor Owen Dean criticized his nation’s proposed ban on the use of logos on cigarette packages. He said this constituted an arbitrary deprivation of property -- trademarks -- and an illegal taking of a company’s asset.

“Preventing a trademark from being used leads to it being extinguished and this amounts to the destruction of an item of property,” he said, according to a university statement.

He also warned that once the use of trademarks on tobacco products is restricted, similar bans may be sought with regard to trademarks for liquor and other products.

Dean is a former senior partner in and remains a consultant to Spoor & Fisher, a Praetoria, South Africa-based IP specialty firm.

Coach’s $5 Million Infringement Award Upheld by Appeals Court

A $5 million judgment awarded to Coach Inc. (COH:US) in a trademark-infringement suit was upheld by a federal appeals court May 31.

The leather goods maker sued Frederick Goodfellow, the operator of Southwest Flea Market in Memphis, Tennessee, in federal court in that city in June 2010. Goodfellow was accused of knowingly permitting vendors of counterfeit Coach products to sell their goods from stalls in the market.

A jury awarded Coach $5.04 million in damages in March 2012, and also granted the New York-based company $186,666.61 in attorney fees and litigation costs. Goodfellow appealed.

In its May 31 ruling, the 6th U.S. Circuit Court of Appeals said any evidence of remedial efforts Goodfellow made to halt the sale of the fake products “is hardly compelling evidence of a reasonable response.”

Goodfellow engaged in “ostrich-like behavior,” treating infringing activities with “knowledge and willful blindness,” the appeals court said.

The attorney fee award was also appropriate, according to the appeals court opinion. The lower court was “well within its discretion” in finding Goodfellow’s actions fell into the category of “intentional, deliberate, or willful ignorance” of the sale of infringing good, according to the appeals court ruling.

The appeal is Coach Inc. v. Goodfellow, 12-5666, U.S. Court of Appeals for the Federal Circuit. The lower court case is Coach Inc. v. 3rd Street Flea Market, 2:10-cv-02410-dkv, U.S. District Court, Western District of Tennessee (Memphis).

The market was shut down in 2011 and Goodfellow was arrested, WREG-TV reported on its website.

In June, Goodfellow pleaded guilty to smuggling charges with respect to counterfeit Rolex watches sold at the market. He was sentenced to one year home detention, three years of supervised release, 20 hours of community service a week for the duration of his house arrest and community service and a $5,000 fine.

That case is U.S. v. Goodfellow, 2:12-cr-20152-JTF, U.S. District Court, Western District of Tennessee (Memphis).

For more trademark news, click here.

Copyright

Dotcom Wins Release of Some Seized Computers in New Zealand

Kim Dotcom, founder of the cloud-storage service Megaupload.com that the U.S. shut down on copyright-infringement charges, won the release of some computers and data seized by New Zealand police.

New Zealand High Court Justice Helen Winkelmann had ruled that police used illegal search warrants in a January 2012 raid on Dotcom’s home. The judge, ruling May 31, rejected police claims that the breaches were technical and it would be too difficult and expensive to return and give Dotcom access to the seized computers and data.

Dotcom, 39, was indicted in January 2012 in Virginia on charges of racketeering, money laundering, copyright infringement and wire fraud through the Megaupload website, with the U.S. calling it the biggest copyright-infringement case in the country’s history. The Internet entrepreneur is scheduled in August to face an extradition hearing to the U.S. from New Zealand, where he is a resident.

Police used helicopters and a police assault team during a raid on Dotcom’s home in a suburb of Auckland, seizing 18 luxury vehicles, including a 1959 pink Cadillac, art, cash, computers and hard drives.

“A miscarriage of justice did result,” Winkelmann wrote in the May 31 ruling.

The judge said removal of cloned data from New Zealand to the U.S. was illegal and ordered the police to ask U.S. authorities to destroy material that’s not relevant to the alleged crimes.

Items in New Zealand must be reviewed by police at their cost and irrelevant material returned to Dotcom, the judge said. None of the items in New Zealand is allowed to leave the country, she said.

While police can retain storage devices containing a mix of relevant and irrelevant data they should provide a clone of those devices to Dotcom, the judge said.

The New Zealand case is between Kim Dotcom and Attorney General, CIV2012-404-001928, High Court of New Zealand (Auckland). The U.S. case is USA v. Dotcom, 12-cr-00003, U.S. District Court, Eastern District of Virginia (Alexandria).

Merchant Ivory, Janus Settle Film Distribution Copyright Dispute

Merchant Ivory Productions Ltd., the maker of films such as “A Room With a View,” settled a copyright dispute with New York-based movie distributor Janus Films LLC.

The production company filed suit in federal court in Manhattan in August 2012, complaining that the distributor infringed the copyrights by distributing films after their licensing deals expired.

The agreement for all films except “Howards End” expired in December 2011 and London-based Merchant Ivory accused Janus of continuing to distribute them.

The closely held production company asked the court to stop Janus from reproducing the films or otherwise using the copyrighted materials and sought damages including all profit related to the alleged infringement.

Terms of the settlement weren’t disclosed in the May 24 filing dismissing the case. The court document did say that each party was to pay its own litigation costs and attorney fees.

The case is Merchant Ivory Productions Ltd. v. Janus Films LLC, 1:12-cv-06325, U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.

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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