Bloomberg News

Google, MGM, Papst Camera, Avatar: Intellectual Property (1)

November 18, 2013

Google Inc. (GOOG:US)’s victory in a copyright suit challenging its project to digitally copy millions of books may help cement its dominance of online searches.

A federal judge in New York ruled Nov. 14 that the Google Books project doesn’t violate copyright law, dismissing an eight-year-old lawsuit against the biggest search-engine company.

The decision, if upheld on appeal, may help Google retain its Internet dominance, which has allowed it to become the world’s largest online advertiser. Google has more than 70 percent of the ad revenue tied to online searches in the U.S., according to researcher EMarketer Inc.

“This is a huge victory for Google, which had previously tried to resolve legal issues regarding Google Books by class-action settlement,” Mark P. McKenna, a law professor specializing in intellectual property at the University of Notre Dame, said in an e-mail. “This decision vindicates Google’s project entirely on fair use grounds, making unnecessary the elaborate structure the parties had proposed for compensation.”

Google Books provides a public benefit and is a fair use of copyrighted material, U.S. District Judge Denny Chin in Manhattan ruled.

Google, based in Mountain View, California, in October 2012 reached an agreement with five publishers to end their objections to the digital scanning. The accord allows U.S. publishers to choose whether to make their books and articles available for scanning or have them removed.

The publishers are McGraw-Hill Cos., Pearson Education Inc., Penguin Group USA Inc., John Wiley & Sons Inc. (A:US) and Simon & Schuster Inc., which is owned by CBS Inc.

“This has been a long road, and we are absolutely delighted” with the Nov. 14 judgment,’’ Google said in an e-mailed statement. Google Books complies with copyright law and acts as a card catalog for the digital age, the company said.

The case is The Authors Guild v. Google Inc., 1:05-cv-08136, U.S. District Court, Southern District of New York (Manhattan).

MGM Joins James Bond Producer to Acquire Rights From Estate

Metro-Goldwyn-Mayer Inc. (MGMB:US) and the producer of the James Bond films said they acquired all rights to the fictional British secret agent held by the estate and family of the late screenwriter Kevin McClory.

Metro-Goldwyn-Mayer, the distributor of the films, and Danjaq LLC, the longtime James Bond producer, said in a Nov. 15 statement the accord ends legal and business disputes that have arisen over 50 years.

McClory is credited with co-writing and producing 1965’s “Thunderball” and 1983’s “Never Say Never Again,” according to Imdb.com, an industry website. He died in 2006, according to his biography page on the site.

The James Bond franchise is among Hollywood’s most enduring. Twenty-four films dating back to 1963’s “Dr. No” have grossed $1.91 billion in U.S. theaters, according to BoxOfficeMojo.com, an industry researcher. The most recent, last year’s “Skyfall,” took in $304.4 million domestically.

MGM, Sony Corp. (6758) and Danjaq plan to release the next Bond film in October 2015 in the U.K and in the U.S. the following month, according to a July statement.

For more copyright news, click here.

Patents

Papst Camera Patent Case Judgment Entered, Certified for Appeal

A federal court in Washington entered a final judgment in Papst Licensing Gmbh’s patent suits against Nikon Corp. (7731), Fujifilm Corp. (4901) and several other camera manufacturers.

The cases were consolidated in Washington in 2007. Germany’s Papst Licensing had accused the camera makers of infringing parents 6,470,399 and 6,895,449, which are related to digital photography. Earlier the court found none of the manufacturers’ products infringed the patents.

The camera makers and the patent owner then asked that a final judgment be entered and the case be certified for appeal. According to the court’s Nov. 14 ruling, although the manufacturers wanted certification to be delayed until their requests for attorney fees and sanctions were decided, the court said this wasn’t necessary.

“Moreover, the delay that would be caused by such litigation is contrary to the efficient resolution of the merits,” U.S. District Judge Rosemary M. Collyer said in her ruling. She ordered entry of the final judgment of non-infringement, and dismissed all other claims and counterclaims in the case with respect to the first group of manufacturers Papst sued.

There is a second group of manufacturers who are waiting to have their cases heard, and the court said they agreed to have their cases on hold until the appeal is completed by the Washington-based court that hears appeals of patent cases.

Federal Circuit review of the first wave of camera cases “is likely to narrow the issues” in the later cases also, Collyer said.

The case is In re Papst Licensing Digital Camera Patent Litigation -MDL 1889, 1:07-mc-00493, U.S. District Court, District of Columbia (Washington).

Hanes Seeks Non-Infringement Declaration for Tank Top Design

Hanesbrands Inc., the North Carolina maker of underwear, hosiery and athletic wear, asked a federal court to declare it doesn’t infringe a design patent for tank tops.

An Oct. 30 cease-and-desist letter that Lululemon Athletica Canada Inc. (LULU:US) of Vancouver, sent to Hanesbrands is appended to the complaint in the case filed in federal court in North Carolina Nov. 15.

A tank top made by Hanesbrands’ Champion unit infringed patent D654,665S, according to the letter. Lululemon said the item is made in Vietnam, labeled with the Champion brand and sold at Target Corp. (TGT:US) stores.

The Canadian company demanded that all manufacturing, importation and sales of the allegedly infringing garment be halted, all advertising for it cease, and the remaining unsold garments be surrendered. Lululemon also sought an agreement that Winston-Salem, North Carolina-based Hanesbrands agree to liquidated damages of $50 per infringing garment for any future infringement.

In its court filings, Hanesbrands said its products don’t infringe the patent, and asked the court to order Lululemon to stop making infringement claims. It also asked for awards of litigation costs and attorney fees.

Although the cease-and-desist letter also accuses Target of infringement, only Hanesbrands is seeking the non-infringement declaration.

The case is Hanesbrands Inc. (HBI:US), v. Lululemon Athletica Canada Inc., 1:13-cv-01024, U.S. District Court, Middle District of North Carolina.

For more patent news, click here.

Trademark

Maker of ‘Avatar’ Film Denied Registration for ‘Pandorapedia’

Twenty-First Century Fox Inc. (FOXA:US)’s bid to register “Pandorapedia” as a trademark for clothing was rejected by an appeal board at the U.S. Patent and Trademark Office.

The studio applied to register the mark -- related to James Cameron’s “Avatar” film -- in 2009. A trademark examiner rejected the application, finding it to be too much like an existing mark -- “Pandora” -- also used with clothing.

An appeal was filed, and in an opinion released Nov. 9, the Trademark Trial and Appeal Board affirmed the examiner’s determination. The board said that even though the studio specified the mark would be used for clothing “related to motion picture films,” it is the identification of the goods that controls how the mark is used, rather than whatever extrinsic evidence may show about their specific nature.

The possibility of confusion would be too great, the board said, and consumers would be confused. The board also noted that the only difference between the two marks is the suffix “pedia.” Under U.S. trademark law the second user may not appropriate another’s mark and try to avoid the likelihood of confusion by adding descriptive or subordinate matter, the board said.

Two other “Pandorapedia” applications submitted at the same time are still pending. They are for use of the mark with Christmas decorations and CDs. There is also a “Pandorapedia” trademark that was successfully registered in 2010 for use with motion pictures, according to the database of the U.S. Patent and Trademark Office.

The ruling is U.S. Patent and Trademark Office Trial and Appeal Board, In re Twentieth Century Fox Film Corp., 77824292.

‘Charbucks’ Didn’t Tarnish Starbucks’ Marks, Appeals Court Said

Starbucks Corp. (SBUX:US)’s claims that a family-owned New Hampshire coffee roaster’s sale of a blend called “Charbucks” infringed the Seattle-based company’s trademarks were rejected by a federal appeals court.

Black Bear Micro Roastery in Tuftonboro, New Hampshire, didn’t dilute the fame of the Starbucks trademarks nor confuse the public, the court said in a Nov. 15 opinion.

A consumer telephone survey presented by Starbucks aiming at showing confusion was flawed, according to the court, which also found that the “distinctiveness, recognition and exclusive use” of the Starbucks trademarks failed to overcome “the weak evidence of association” between the marks.

Starbucks, based in Seattle, sued in 2001 in federal court in Manhattan accusing Black Bear’s owner, Wolfe’s Borough Coffee Inc., of confusing consumers and diluting the value of the Starbucks brand by selling Charbucks in New England and online.

After U.S. District Judge Taylor Swain dismissed the claims in June 2008, Starbucks then appealed. In December 2009, the Second U.S. Circuit Court of Appeals vacated part of the trial court’s ruling, and sent it back for a determination of whether “Charbucks” diluted the fame of the Starbucks marks.

The lower court then found no determination, and the Seattle coffee company appealed that ruling.

The case is Starbucks Corp. v. Wolfe’s Borough Coffee Inc., 12-3674, U.S. Court of Appeals for the Second Circuit (New York).

For more trademark 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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