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A copyright infringement, trade dress infringement (Lanham Act 43(a), 15 U.S.C. 1125), and unfair competition lawsuit was filed by luxury jeweler Van Cleef & Arpels against supermodel Heidi Klum’s company and jewelry designer Mouawad USA, Inc. in Federal District Court in New York in December of 2007. The complaint alleges that for almost forty years, Van Cleef “has marketed the Alhambra collection of jewelry, which has become world renowned for its distinctive well-recognized design.” Van Cleef alleges that it is the owner of all copyrights in the subject designs and, through extensive advertising and promotion of the Alhambra collection, it has established secondary meaning and distinctiveness therein.  Jewelry copyright registrations are relatively inexpensive and afford robust protections and damages.

heidi-vancleef.jpgVan Cleef alleges that defendants intentionally and willfully copied the Alhambra designs, which mainly feature a four leaf clover. Van Cleef continues that defendants, by appropriating the goodwill built up by plaintiff are causing confusion in the market place, in that consumers are often confused between the plaintiff’s designs and those of defendants.

It now appears that the lawsuit is going to be settled even before the Defendants file an answer to Van Cleef’s allegations. On February 13, 2008, the parties asked the Court to adjourn the initial conference from February to April while they negotiate a settlement of the case.

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Pharmaceutical company Sanofi-Aventis filed a complaint in Los Angeles, California District Court seeking a declaratory judgment that three medical device patents are invalid and not infringed by Sanofi’s syringes. The three United States patents at issue, which cover syringes having needle shield safety devices and may be used with pre-filled pharmaceutical injection syringes, are owned by Saftey Syringes, Inc.

Sanofi-pic-syringe.jpgSafety Syringes asserted the same three patents, Nos. 6,613,022, 7,101,355, and 7,300,420, in Los Angeles District Court in April of 2007 against Plastef. That case is titled: Safety Syringes, Inc. v. Plastef Investissements, 07-CV-2307 (C.D. CA 2007). Sanofi alleges that it imports and uses a needle safety shield device that is similar to the device in the Plastef case. Thus, because Safety Syringes has asserted claims of inducement and contributory patent infringement in the Plastef case, Sanofi-Aventis believes that it is being accused of infringing the three patents and that an actual controversy exists between the parties. Sanofi alleges that Safety Syringes has put Sanofi in a “position of pursuing behavior that [Safety Syringes] would allege constitutes an infringement or of abandoning a course of action which Aventis believes it has a lawful right to pursue.”

PRACTICE NOTE: Sending a cease and desist letter to a potential infringer may subject a patent holder to a declaratory judgment complaint in the potential infringer’s backyard. Careful wording in a cease-and-desist letter may divest the court of jurisdiction in the infringer’s home town and, thereby, eliminate defendant’s “home court” advantage.

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Domain-name arbitration complaint was filed by trademark owner Laerdal Medical Corporation at the WIPO. Laerdal had common law trademark rights in “Laerdal” before it filed a trademark application with the U.S. Patent & Trademark Office on October 16, 2000. The Disputed Domain Name leardal.com – a misspelling of the trademark which transposes the “a” and “e” – was registered by the Respondent on October 11, 2001, nearly one year after the trademark application filing date. Laerdal’s trademark registered with the USPTO on March 25, 2003, after the domain name was registered.

laerdallogo.gifThe Panel found that the medical company’s trademark and the misspelled domain name were confusingly similar. Also, the pay-per-click advertising on the parked website targeted the same consumers based upon offers for competing medical equipment and the registrant did not have any rights or interests in the confusingly similar trademark. Further, the Panel found that the domain was registered in bad faith because it was registered after the trademark application was filed and offered similar products through pay-per-click ads. Thus, the Panel ruled that the registration “was an act of typo squatting and was calculated to confuse Internet users as to the source of and to take commercial advantage of the Complainant’s rights in the LAERDAL trademark.” Click Here To Read The WIPO Arbitration Ruling.

PRACTICE NOTE: You should choose a strong trademark because it allows for instantaneous protection from the date of first use. For example, because laerdal’s trademark is strong, even though Laerdal’s trademark had not registered with the USPTO at the time the domain name was registered, the Panel found that the prior application date was sufficient to establish trademark rights. Fanciful, arbitrary, or suggestive trademarks are strong, whereas descriptive and generic marks are weak. Click Here For Additional Suggestions In Selecting A Trademark.

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The trade secret and copyright infringement lawsuit filed by Symantec subsidiary Veritas against Microsoft is proceeding to trial in Washington, as we discussed here, when the Court denied Microsoft’s motion for summary judgment. Microsoft had also filed counterclaims in the Washington lawsuit against Symantec for breach of contract and for breach of the implied covenant of good faith and fair dealing. The agreement between the companies was for Symantec to provide source code in certain software to Microsoft for use with its operating software and servers; however, there were specific limitations on the use of the software which Symantec alleged Microsoft exceeded. The agreement also included the following jurisdictional provision:

VERITAS consents to jurisdiction and venue being solely in the state and federal courts sitting in the Western District of the State of Washington with respect to any claim or counterclaim brought by VERITAS in connection with this Agreement. MICROSOFT consents to jurisdiction and venue being solely in the state and federal courts sitting in the Northern District of the State of California with respect to any claim (including a counterclaim) brought by MICROSOFT in connection with this Agreement.

On summary judgment, the Court dismissed Microsoft’s contract-based counterclaims because of the unambiguous and express contractual language. The Court was not persuaded by Microsoft’s argument that enforcing the bargained-for forum selection clause would be unreasonable under the circumstances. Nor was the Court moved by Microsoft’s argument that Veritas had waived this defense by waiting to raise it on summary judgment because the defense was clearly stated in Veritas’ earlier filed Reply to Microsoft’s counterclaims. Click To Read The Order.

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Copyright infringement litigation was filed against Miguel Naranjo by Warner Bros. Entertainment, Inc. and Disney Enterprises, Inc. on February 6, 2008 in the Central District of California, Los Angeles. The copyrighted movies at issue are Tim Burton’s Corpse Bride and Finding Nemo. The complaint alleges that since 2005, Mr. Naranjo, without plaintiffs’ permission, used the KaZaA online file sharing technology to distribute the movies in violation of the Copyright Act, 17 U.S.C. 101 et seq. The complaint alleges that the copyright infringement was willful and intentional and seeks preliminary and permanent injunctions, in addition to monetary damages and attorneys’ fees. Read The Warner Bros. Ent., Inc. v. Naranjo Complaint.

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A patent infringement lawsuit was filed by tax preparation company H&R Block against Jackson Hewitt on February 8, 2008. Click To Read Complaint. H&R Block is the owner of US Patent No. 7,072,862 and US Patent No. 7,177,829 and asserts that Jackson Hewitt is infringing both patents.

The ‘862 and ‘829 patents are business method patents that cover providing a tax refund to a tax payer through debit cards, credit cards, or credit at a retailer. The patents also cover the ability to assign other governmental payments, social security payments for example, to creditors that in turn credit the funds to a tax payer via debit cards or credit cards. The complaint alleges that Jackson Hewitt’s ipower CashCard infringes on H&R Block’s two tax refund patents. The complaint seeks three times the actual damages because Jackson Hewitt’s conduct was allegedly intentional and willful.

PRACTICE NOTE: As of February 14, 2008, there are 63 issued patents that are classified by the US Patent & Trademark Office as “tax strategy” patents, with an additional 107 published applications. There have been discussions in Congress to ban tax strategy patents, but until there is a change in the law, tax advisors need to be aware of the tax patent landscape. Follow these steps in order to search for tax strategy patents by classification number:

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A trademark cancellation proceeding – which is similar to a lawsuit – was filed at the Trademark Trial and Appeal Board (TTAB) by John Lennon’s widow, Yoko Ono, against Lennon Murphy, the registrant of the “Lennon” trademark. Murphy, a musician, filed an “intent to use” trademark application with the United States Patent and Trademark Office (USPTO) for the trademark “LENNON” on April 11, 2001. The trademark application was published on October 29, 2002 and was registered on January 21, 2003.

JohnLennon.jpgOno alleges that she is the owner of two registered trademarks for “John Lennon” (although she fails to disclose that they are for a design – John’s signature pictured to the left – and not a word mark) for use with “paper products, tote bags and address books” and “eyewear and eyewear accessories.” Murphy’s registration, on the other hand, is for the use of the “Lennon” trademark on musical sound recordings and entertainment services by a musical group.

Ono alleges that the use of the “Lennon” trademark will dilute, either by blurring or tarnishment, the power of her John Lennon trademarks. Ono further alleges that Murphy committed fraud on the USPTO in her application by not disclosing that “Lennon” was her first name and that Murphy lied to the USPTO when she stated that she began using the trademark in 1997, at the age of 15. Click To Read Ono’s Filing.

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A lawsuit alleging trade secret and copyright infringement litigation was filed by Symantec security products subsidiary against Microsoft in 2006: Veritas Operating Corporation v. Microsoft Corporation, Case No. 2:06-CV-00703-JCC (W.D. Washington). The case arose from a 1996 agreement between Symantec and Microsoft, whereby Symantec had shared its source code in certain software products for Microsoft to uses in its operating systems and server software. Symantec alleged that Microsoft breached their agreement by modifying the software in ways that were exclusively reserved to Symantec and expressly prohibited, thereby running afoul of Symantec’s trade secret rights and copyrights. Microsoft filed for summary judgment of non-infringement of Symantec’s alleged trade secrets, copyrights, and other claims.

logo-symantec.gifOn February 4, 2008, the Court denied most of Microsoft’s requests. The Court ruled that it was not persuaded that Microsoft did not breach its agreement and that Veritas had presented enough evidence to establish its trade secret rights in the private interfaces and other information. The Court also noted that Veritas had provided credible evidence of bad faith, one in the form of an email summarizing a statement by one of Microsoft’s managers on the project, who admitted that:

his intention is to eventually get [Symantec] out of the box because he believes we should not rely on any 3rd party for core components. . . . He also says he doesn’t care a damn about the contract because he wasn’t involved, and we should just lie to [Symantec] that we are doing this for performance reasons[.]

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In April of 2006, an Eastern District of Texas jury awarded TiVo $73.9 Million in damages for EchoStar’s infringement of several claims of U.S. Patent No. 6,233,389. The ‘389 patent covers digital video recorder (“DVR”) technology that covers time shifting both for previously recorded programs and for programs that are currently being recorded. You may recall TiVo’s commercials proclaiming that “you can pause live TV.” The jury found that EchoStar, operator of the Dish Network, infringed on both the hardware claims and the software claims. The district court issued a permanent injunction against EchoStar and entered the judgment. EchoStar appealed.

tivo.jpg On an emergency motion by EchoStar, the Court of Appeals for the Federal Circuit (“CAFC”) stayed the permanent injunction pending the outcome of the appeal. On January 31, 2008, although the CAFC agreed with EchoStar that it did not infringe on the hardware claims, the CAFC upheld the infringement of the software claims. The CAFC explained that because the jury had not segregated the damages award along the hardware and software claims, the $73.9 Million award still stood. In fact, the CAFC instructed the lower court to increase the monetary award based on EchoStar’s continuing infringement while the lower court’s judgment was stayed. Click To Read The CAFC Opinion.

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Filing a trademark application with the USPTO for a descriptive trademark does not provide enforceable trademark rights until secondary meaning can be established, after which the trademark can be registered on the principal register from the supplemental register. The trademark owner learned the drawbacks of choosing a descriptive trademark when attempting to enforce its trademark rights against a domain name registrant in a National Arbitration Ruling that was filed under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”).

Complainant trademark owner B&V Associates, Inc. filed a trademark application for its ewaterways.com trademark on July 26, 2000. However, because the USPTO deemed the mark was merely descriptive of applicant’s services, B&V amended its application to seek registration under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f), based on acquired distinctiveness as a result of continued and exclusive use since 1996. On June 18, 1999, a year before B&V’s trademark application was filed, Respondent registered the ewaterway.com domain name. The Panel found that at the time of Respondent’s domain name registration, Complainant, as admitted by its Section 2(f) filing with the USPTO, had not established trademark rights because it had not acquired distinctiveness. Accordingly, because Complainant did not meet the initial burden of presenting a sufficient prima facie case showing of enforceable rights in the trademark at the time of the domain name filing, the Panel denied cancellation or transfer of the domain name. Click To Read The Decision.

PRACTICE NOTE: It is best to adopt a trademark that is immediately protectable and enforceable. Descriptive trademarks are not immediately protectable and require a showing of acquired distinctiveness. Click To Read Suggestions On Selecting A Proper Trademark.