Bloomberg News

Nokia, Dow, AARP, Beastie Boys, USPTO: Intellectual Property (1)

December 12, 2013

Nokia Oyj (NOK1V)’s preliminary victory in its efforts to collect royalties from Taiwanese phonemaker HTC Corp. (2498) will be reviewed by a U.S. trade agency with the power to keep the smartphones from entering the country.

The U.S. International Trade Commission in Washington will consider parts of a judge’s findings that HTC violated two Nokia patents and not a third, the agency said in a notice dated Dec. 9 and posted on its website yesterday. The six-member commission, which is being asked to block HTC phones that infringe the patents, is scheduled to make a final decision by Jan. 23.

Nokia, once the biggest maker of mobile phones that has since sold its handset business, has filed patent-infringement complaints against HTC throughout the U.S. and Europe. HTC on Dec. 3 was banned from selling its One Mini phone in the U.K. after it was found to infringe a Nokia patent there, though it was given time to appeal.

ITC Judge Thomas Pender in September found HTC violated Nokia’s patent 6,292,260, covering a way to remove errors in radio signals; and patent 7,415,247, for a process of dealing with different radio frequencies. No infringement was found of Nokia’s patent 5,884,190, which covers a method of transmitting data from a computer to a mobile phone, which Google Inc. (GOOG:US) helped Taoyuan, Taiwan-based HTC challenge. It was directed at phones running on Google’s Android operating system.

HTC, which is challenging the infringement finding, argued in a filing with the agency that its products shouldn’t be cut from the U.S. market even if it loses. It said the case is part of an effort by companies like Microsoft Corp. and Apple Inc. to curtail the growth of Android phones in the U.S.

The case targets HTC phones including the Amaze 4G, One, Rhyme and Vivid, as well as the Flyer and Jetstream tablet computers. Nokia has a second trade case pending against HTC at the agency.

Nokia is selling its handset business to Microsoft, enabling it to demand excessive royalties on its patents without fear of facing an infringement case against its own products, HTC told the agency.

Dow AgroSciences Receives U.S. Patent Related to Enlist Corn

Dow Chemical Co. (DOW:US)’s Dow AgroSciences unit received a patent on a method of protection for corn plants, including the use of the company’s proprietary Enlist herbicide-tolerant traits.

Patent 8,598,413 was issued Dec. 3, and Dow said in a statement that it expects to introduce the Enlist corn covered by the patent in 2015 in the U.S.

Indianapolis-based Dow AgroSciences applied for the patent in February 2011, with the assistance of Faegre Baker Daniels LLP of Minneapolis.

For more patent news, click here.

Trademark

AARP Told to Bring in More Evidence to Justify Damages Award

American Association of Retired Persons, the Washington-based nonprofit organization that provides advocacy services for older Americans, failed to convince a federal judge that its $10 million damages request in a trademark case is justified.

The organization sued a New Jersey insurance broker in federal court in Washington D.C. April 30, accusing him of trademark infringement. According to court papers, Michael Sycle used the AARP trademark in advertising his business, even though he doesn’t sell AARP-branded insurance.

Sycle used the trademarks without authorization on his alifetimeinsurance.com website, and through Internet advertisements and videos on Google Inc.’s YouTube video-sharing service, according to the complaint.

Sycle didn’t respond to the complaint, and U.S. District Judge Colleen Kollar-Kotelly issued a ruling finding that he had infringed the trademarks and awarding attorney fees to AARP.

While the advocacy group requested a $10 million damages award, Kollar-Kotelly said AARP failed to provide any evidence of Sycle’s sales, revenue, profit or expenses. She said she was unable to make detailed estimates of Sycle’s gains resulting from the infringement.

She also said that she lacked information about AARP’s licensing fees and royalties related to the use of its trademarks. Kollar-Kotelly gave AARP until Dec. 20 to provide documentation that supports its damages request, or of its efforts to acquire that information and explanations of why Sycle’s actions blocked that request.

Additionally, she told AARP to submit documentation of its costs and legal fees by that same date.

The case is AARP V. Michael Sycle, 1:13-cv-00608, U.S. District Court for the District of Columbia (Washington D.C.)

For more trademark news, click here.

Copyright

Beastie Boys Fire Back in ‘Girls’ Dispute with GoldieBlox

The Beastie Boys have responded to the copyright suit filed by GoldieBlox Inc., a toy company founded to inspire girls to go into engineering and science.

The Oakland, California-based company sued the band Nov. 21, seeking a judicial determination that one of its promotional videos didn’t infringe the copyright for “Girls,” a 1987 song by the Beastie Boys.

The suit is related to a video that has received more than 8 million hits on Google Inc.’s YouTube video-sharing website.

The video is set to a new recording of the song with new lyrics, GoldieBlox said, claiming the ad is a parody created “specifically to comment on the Beastie Boys song.”

Lyrics for the two versions are printed side by side in the complaint. In the Beastie Boys’ version, girls are said to be good for doing dishes, cleaning house and doing the laundry.

In the GoldieBlox version, girls are “more than princess maids” and they can build spaceships, “code the new app” and “grow up knowing that they can engineer that.”

The parody was created “to further the company’s goal to break down gender stereotypes and to encourage young girls to engage in activities that challenge their intellect,” GoldieBlox said.

In its answer to the complaint, filed with the court Dec. 10, the band said its music publisher was contacted in November by a representative of an ad agency that wanted to make sure the song’s use had been properly licensed.

Beastie Boys claims that request was made because the ad agency was in the process of submitting the GoldieBlox ad to a competition sponsored by Intuit Inc. to win a 30-second television commercial spot during the 2014 Super Bowl.

Shortly after this, GoldieBlox filed the suit seeking the non-infringement declaration.

The band said in its court filing that the toy company had used its song as a “jingle to sell GoldieBlox products” in an advertising campaign that “condones and encourages stealing from others.”

GoldieBlox founder Debbie Stern said in a Nov. 27 blog post that her company removed the video from YouTube and “we are ready to stop the lawsuit as long as this means we will no longer be under threat from your legal team.”

She said she had didn’t know the late Beastie Boy member Adam Yauch “had requested in his will that the Beastie Boys songs never be used in advertising. Although we believe our parody video falls under fair use, we would like to respect his wishes and yours.”

Beastie Boys’ counterclaim indicates the band will pursue an infringement action. In its court papers, the band asked for an order barring GoldieBlox’s use of the song, together with the removal of the ad from circulation and destruction of all copies.

Additionally, the band asked for money damages, including all revenues, gains and profits the alleged infringement brought to the toy company, together with extra damages intended to punish GoldieBlox for its actions, together with awards of attorney fees and litigation costs.

The case is GoldieBlox Inc. v. Island Def Jam Music Group, 13-cv-05428, U.S. District Court, Northern District of California (Oakland).

Miramax, Weinsteins Sue Time Warner Over ‘The Hobbit’ Share

Miramax LLC and its founders, Harvey and Bob Weinstein, sued Time Warner Inc. (TWX:US) for $75 million over claims they were deprived of their share of revenue from the movie adaption of J.R.R. Tolkien’s book “The Hobbit” after it was split into three different films.

Time Warner units New Line Cinema Corp. and Warner Bros. Entertainment Inc. are accused in the lawsuit, filed yesterday in New York State Supreme Court in Manhattan, of using their decision to split the screen adaptation of the book into three films to keep revenue due Miramax and the Weinsteins.

“Warner’s position is simply an improper attempt to deprive the people originally responsible for hugely successful films being made from the works of J.R.R. Tolkien of their right to share in revenue from two out of the three filmed installments of Tolkien’s ‘The Hobbit,’” the plaintiffs said in the complaint.

Tolkien’s sued Warner Bros. Entertainment in federal court in Los Angles in November 2012, alleging it doesn’t have the right to license gambling games with “Lord of the Rings” characters and story elements.

That litigation has been put on hold until August 2014, according to a court filing.

That case is Fourth Age Ltd. v. Warner Bros., 12-cv-009912, U.S. District Court, Central District of California (Los Angeles).

The new case is Miramax LLC v. New Line Cinema Corp., 161383/2013, New York State Supreme Court, New York County (Manhattan).

For more copyright news, click here.

IP Moves

Michelle Lee Named Deputy Director of U.S. Patent Office

Michelle K. Lee was named deputy under secretary of commerce for intellectual property and deputy director of the U.S. Patent and Trademark Office, according to a statement from the patent office.

Lee had previously served as director of the patent office’s Silicon Valley office in California. Before she joined the patent office, she was Google Inc.’s deputy general counsel, leading the company’s patent and patent strategy operations.

Before that, she was a partner at Mountain View, California’s Fenwick & West LLP. She also served as a judicial clerk to U.S. District Judge Vaughn R. Walker.

Before she became a lawyer, Lee was a computer scientist at Hewlett-Packard Research Laboratories and at Massachusetts Institute of Technology’s Artificial Intelligence Laboratory.

She has an undergraduate degree and a master’s degree in electrical engineering and computer science from Massachusetts Institute of Technology and a law degree from Stanford University.

To contact the reporter on this story: Victoria Slind-Flor in San Francisco at vslindflor@bloomberg.net

To contact the editor responsible for this story: Michael Hytha at mhytha@bloomberg.net


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