Philips, Ford, Tootsie Roll: Intellectual Property Update1

Royal Dutch Philips NV’s Philips Electronics North America unit was sued for patent infringement by a closely held Michigan electronics company.

Jo-Dan International of Auburn Hills, Michigan, accused Philips of infringing two patents for outlets that can pop out of an electronic housing device to provide additional electrical outlets, according to a complaint filed December 1 in federal court in Detroit.

In dispute are patents 6,854,989, issued in February 2005; and 6,872,086, issued in March 2005. Jo-Dan claims Philips’ entire line of expandable surge protectors infringes these patents.

Claiming the infringement is “willful, wanton, deliberate, without license and with full knowledge of plaintiffs’ rights of exclusivity,” Jo-Dan asked the court for an order barring further infringement, including a ban on all sales of the Philips’ expandable surge protector line.

Additionally, the company seeks attorney fees and money damages, and requests the damages be tripled.

Philips is presently involved in 54 patent infringement cases, according to Bloomberg data.

J. Michael Huget and Zachary V. Moen of Detroit’s Butzel Long represent Jo-Dan.

The case is Jo-Dan International Inc. v. Philips Electronics North America Corp., 2:08-cv-14970-DPH-VMM, U.S. District Court, Eastern District of Michigan (Detroit).

BYD Says Criminal Probe Ended, Beijing Patent Officers Arrested

BYD Co. said that Chinese authorities ended a criminal probe into the company after arresting three government patent officers and a former BYD employee for taking bribes in relation to the case.

Three staff members at the Beijing JZSC Judicature Appraisal Center for Intellectual Property were accused of destroying and fabricating evidence, BYD, China’s biggest maker of rechargeable batteries, said in a statement yesterday to the Hong Kong stock exchange. The former BYD employee was charged with accepting bribes and with stealing company information, the company said.

A call to the Beijing appraisal center outside office hours went unanswered.

BYD, backed by Warren Buffett, and its BYD Electronic (International) Co. unit were sued by Foxconn International Holdings Ltd. in a dispute over patents. Foxconn, the world’s biggest contract maker of mobile phones, has claimed that BYD obtained trade secrets about handset production from its former workers.

All investigations against former BYD director Xia Zuoquan have also been ended, BYD said.

Blackboard Sues Patent Office to Halt Patent Reexamination

Blackboard Inc., an educational software company based in Washington, sued the U.S. Patent and Trademark Office, seeking to stop the agency from reconsidering whether one of its patents should have been issued.

The software company successfully sued Canadian competitor Desire2Learn Inc. for infringing the patent in federal court in Lufkin, Texas, in July 2006. In May 2008, U.S. District Judge Ron Clark entered the final judgment, awarding Blackboard $225,000. Desire2Learn is appealing that judgment.

The patent in dispute is 6,988,138, for an “Internet-based education support system and methods,” according to the patent document. The patent was issued in January 2006.

That case is Blackboard Inc. v. Desire2Learn Inc., 9:06-cv-00155-RC, U.S. District Court, Eastern District of Texas (Lufkin).

In December 2006, Desire2Learn, based in Kitchener, Ontario, asked the patent office to reexamine the patent. The Software Freedom Law Center filed a request for reexamination of the same patent in November 2006 on behalf of three providers of open-source software. The Patent office granted the foundation’s request in January 2007.

In its court papers filed Dec. 1 in Alexandria, Virginia, Blackboard asked the court to stop the reexamination procedure. The software company argued that the trial court’s final judgment closed out any questions about whether the patent shouldn’t have been issued.

Blackboard claimed that the patent office’s decision to continue examining the patent after the court decision is “unlawful” and “arbitrary and capricious and an abuse of discretion.”

Jeffrey Walter Mikoni of Chicago’s McDermott Will & Emery represents Blackboard in the Virginia case.

The case is Blackboard Inc. v. Dudas, 1:08-cv-01216-GBL- TCB, U.S. District Court, Eastern District of Virginia (Alexandra)

For more patent news from yesterday, click here

Trade Secrets

Ixia Sued for Infringement, Trade-Secret Misappropriation

Ixia, a California company that provides video-stream testing products, was sued for trade-secret misappropriation and patent infringement by a competitor.

IneoQuest Technologies Inc. of Mansfield, Massachusetts, claims Ixia violated a July 2004 non-disclosure agreement, and used the information it received to develop competing products, according to a complaint filed Nov. 25 in federal court in Los Angeles.

Ixia continued to “extract further trade secrets” from IneoQuest in October and November 2004, according to court papers.

IneoQuest’s patent 7,321,565 was issued in January 2008. The patent covers a “system and method of analyzing the performance of multiple transportation streams of streaming media in packet-based networks,” according to the patent document.

The company said that, after it filed its patent application, it disclosed the invention to Ixia, so the California company could consider incorporating it into its products. Ixia said it wasn’t interested, according to court papers.

Three Ixia products use this technology without authorization, IneoQuest claims. The infringing products are Ixia’s IxLoad, IxRave and IxChariot, according to IneoQuest’s pleadings.

IneoQuest asked the court to declare that Ixia infringed the patents, and to order the California company to stop its infringement. Additionally, IneoQuest wants an order barring any further use by Ixia of the trade secrets.

IneoQuest also requests unspecified money damages and attorney fees.

Ixia didn’t respond immediately to an e-mailed request seeking comment.

Richard T. Williams and Ieuan G. Mahony of New York’s Holland & Knight represent IneoQuest.

The case is IneoQuest Technologies Inc. v. Ixia, 2:08-cv-07773-JSL-PLA, U.S. District Court, Central District of California (Los Angeles).


Ford Wins EU Court Challenge Over ‘Fun’ Trademark for Some Cars

Ford Motor Co., the second-biggest U.S. automaker, came a step closer to getting the European Union trademark rights to “Fun” after a court overturned a decision by the region’s trademark agency.

Ford applied for the trademark in 2005, seeking the exclusive rights to use the word “fun” on some vehicles. The EU trademark agency a year later rejected the application, deciding the word Fun wasn’t an inventive word because it described the experience of driving a Ford car.

The European Court of First Instance in Luxembourg, the main appeals tribunal for decisions by the EU agency, yesterday overturned the decision. It said the connection between the word “‘fun’ and cars is too vague and subjective to give the word a descriptive character in connection with the relevant products.”

The Alicante, Spain-based trademark agency, called the Office for Harmonization in the Internal Market, ruled in 2006 that the main target audience for Ford was English-speaking in the age range of 18 to 70.

These people “will take the word ‘fun’ as an indication that the car has a fun design and is enjoyable to drive,” the agency ruled. In addition, the word “fun” is part of the basic English vocabulary and as such should be kept free for the use by other traders and advertisers, it said.

Yesterday’s ruling can be appealed one last time to the European Court of Justice, the EU’s top court.

The case is T-67/07 Ford Motor v. OHMI (FUN).

Tootsie Roll Sues T-Shirt Retailer for Trademark Infringement

Tootsie Roll Industries, maker of Dots, Sugar Babies, Junior Mints and Tootsie Pops, sued a clothing retailer for trademark infringement.

James MacDonald of Ormond Beach, Florida, operates retail Web sites through which he sells T-shirts that infringe Tootsie trademarks, the company said in its complaint filed Dec. 1 in federal court in Boston.

Trademarks that are infringed include “Sugar Daddy,” “Tootsie,” “Tootsie Roll,” “Tootsie Roll Pop,” “Tootsie Pops” and “How many Licks,” in addition to a logo described as the “Tootsie Stripes Owl,” according to court papers.

Tootsie, based in Chicago, claims the infringing items have been sold since 2005. The company said MacDonald was sent a cease-and-desist letter in September 2007, and he agreed to quit infringing and removed some items from EBay Inc.’s auction Web site.

MacDonald continues to sell the infringing items through the and Web sites, according to court papers.

Tootsie asked the court to order MacDonald to cease his unauthorized use of the company’s trademarks, and to pay money damages and all profits relating to the alleged infringement. The candy company asked that damages be tripled and for attorney fees.

David Wolf of Boston’s Wolf, Greenfield & Sacks represents Tootsie.

The case is Tootsie Roll Industries LLC v. MacDonald, 1:08- Cv-11988, U.S. District Court, District of Massachusetts (Boston).

Two LDS Splinter Churches Feud over ‘RLDS’ Trademarks

A church that split off from the Church of Jesus Christ of Latter Day Saints over the question of polygamy and the successors to Joseph Smith sued a second split-off religious organization for trademark infringement.

The Community of Christ Copyright Corp., which is also known as the Reorganized Church of Jesus Christ of the Latter Day Saints, was established after Joseph Smith’s murder in 1844, and named Smith’s son as its leader. The church differs from the mainstream LDS church -- also known as the Mormons -- over several key questions today, including the ordination of women and the use of the Book of Mormon.

The Devon Park Restoration Branch of Jesus Christ’s Church is part of a movement that split off from the Community of Christ in the 1980s over doctrinal issues.

The Community of Christ objects to the Devon Park organization’s use of trademarks that include “Reorganized Church of Jesus Christ of Latter Day Saints” and “RLDS.”

In July 2007, the Community of Christ filed a similar suit in federal court against another splinter group, the South Restoration Branch Church. That case closed in April 2008 with U.S. District Judge Gary A. Fenner ordering the defendant to quit using the Church of Christ’s trademarks.

That case was Community of Christ Copyright Corp. v. Miller, 4:07-00543-GAF, U.S. District Court, Western District of Missouri (Kansas City).

In the new case, the Community of Christ asked the court to bar the splinter group from using its trademarks, and for the destruction of any materials that bear the trademarks without authorization.

It’s also seeking to be compensated for corrective advertising, and all “receipts, donations and profits” the splinter group received through its unauthorized use of the marks, and for attorney fees.

J. David Wharton, Mark McKay Iba and Stephen J. Owens of Kansas City, Missouri’s Stinson Morrison Hecker represent the Community of Christ. Wharton and Iba also represented the church in the case against the South Restoration Branch Church.

The new case is Community of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ’s Church, 4:098- cv-00906-GAF, U.S. District Court, Western District of Missouri (Kansas City).

For more trademark news from yesterday, click here


U.K. Couple Accused of Downloading Gay Porn Claims Innocence

A U.K. couple in their 60s received a letter from the Davenport Lyons law firm accusing them of illegally downloading German gay pornography, the Guardian newspaper’s Web site reported.

They received a 20-page letter demanding they pay 503 British pounds ($1,271.50) for “copyright infringement” or be sued for infringing a German filmmaker’s rights to a film featuring the “Gestapo” and “Czech” farmers, according to the Guardian.

The couple, which denied the allegations, told the Guardian that they didn’t watch porn, “straight or gay,” didn’t know how to do downloads, and were deeply offended by the film’s title, which contained a vulgar word for sexual intercourse.

Davenport Lyons, which represents content owners in copyright disputes, declined to discuss the specific case with the Guardian, saying it didn’t comment on individual cases. The firm told the newspaper that if recipients of their demand letters “have done nothing wrong, they have no reason to be concerned.”

For more copyright news from yesterday, click here

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To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at

To contact the editor responsible for this story: David E. Rovella at

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