Sandvik, American Apparel, Omnicom: Intellectual Property

Sandvik AB sued Kennametal Inc., claiming infringement of patents used for metal-cutting tools and a method for alumina coating.

Kennametal, an industrial goods supplier, intentionally used Sandvik’s technology, Sandvik claimed in a lawsuit filed April 27 in federal court in Asheville, North Carolina. The suit seeks an order stopping Kennametal’s allegedly infringing actions and asks for unspecified damages.

Kennametal, based in Latrobe, Pennsylvania, had “full knowledge of the infringement and total disregard for the rights of Sandvik,” according to Sweden’s Sandvik, the world’s largest maker of metal-cutting tools.

Kennametal representatives didn’t immediately return messages seeking comment on the lawsuit.

The case is Sandvik Intellectual Property AB v. Kennametal, 09cv163, U.S. District Court for the Western District of North Carolina (Asheville).

Copyright

MGA Fails to Cut Mattel’s $100 Million Bratz Verdict

MGA Entertainment Inc. lost its effort to reduce a $100 million jury verdict won by Mattel Inc., the world’s largest toymaker, over claims a former Mattel employee first created MGA’s Bratz dolls.

U.S. District Judge Stephen Larson, in an order issued April 27, rejected closely held MGA’s arguments that the damage award was duplicative. Larson also lifted a stay on his previous order barring MGA from marketing the multiethnic fashion dolls and appointed a temporary receiver to oversee the Bratz business.

“The jury’s verdict of $100 million is well within the range of possible awards based on the evidence of record, and therefore the court must leave it undisturbed,” Larson said in his decision.

The judge denied a Mattel request for a ruling that all Bratz dolls infringe its copyright as a matter of law. The judge threw out $31,500 the jury had awarded Mattel for drawings that were taken to MGA because the drawings were ordered to be returned.

“We are very disappointed with this order and we plan to immediately appeal this ruling,” Isaac Larian, chief executive officer and majority owner of Van Nuys, California-based MGA, said in an e-mailed statement April 27.

Larson on Dec. 3 ruled that MGA couldn’t make or sell the infringing dolls. He later modified the order, saying retailers would be allowed to buy the spring and fall lines from MGA through Dec. 31, or from either Mattel or a court-appointed receiver if he awards them the rights to the infringing Bratz products.

A federal jury in Riverside, California, found last year that some of the pouty and multiethnic Bratz dolls closely held MGA started selling in 2001 were substantially similar to the drawings of a former Barbie-doll designer for Mattel.

The jury also found that designer Carter Bryant made the sketches while he was at Mattel in 1999 and 2000.

Lisa Marie Bongiovanni, a spokeswoman for El Segundo, California-based Mattel, declined to comment.

The case is Bryant v. Mattel, 04-09049, U.S. District Court, Central District of California (Riverside).

Trademark

American Apparel Loses Bid for New Evidence in Woody Allen Case

American Apparel Inc., the retailer sued by director Woody Allen for using his image on billboards without permission, can’t force him to turn over fan mail and other evidence of his public image, a judge ruled.

U.S. District Judge Thomas Griesa in Manhattan rejected as “overly broad” American Apparel’s request to make the 73-year- old Academy Award winner reveal documents related to past product endorsements, performances and interview transcripts. The retailer earlier argued Allen’s image was too tarnished from past scandals to justify his request for $10 million in damages.

“There is no reason to require Allen to produce documents regarding each of his personal appearances and performances during his lengthy career,” Griesa said in the April 24 ruling. “This information would not provide meaningful evidence of the value of defendant’s endorsement.”

Allen in March 2008 filed the trademark-infringement lawsuit against Los Angeles-based American Apparel, known for its racy advertising, for using an image of him dressed as an orthodox or Hasidic Jew from his 1977 movie “Annie Hall” online and on billboards in New York and Los Angeles for less than a week.

In the same ruling, Griesa denied American Apparel’s request to interview Allen’s sister, Letty Aronson, who is also his producer, saying “there is no indication that Aronson has any information relevant to this litigation.”

The actor is represented by Christian D. Carbone and Michael Philip Zweig of New York’s Loeb & Loeb LLP. American Apparel’s lawyers are Dominick Anthony Piccininni Jr., of Merrick, New York’s Curtis, Vasile, Devine & McElhenny, and Kristi Akins Davidson of Pittsburgh’s Buchanan Ingersoll & Rooney PC.,

The case is Allen v. American Apparel Inc., 8-cv-3179, U.S. District Court, Southern District of New York (New York).

Spaniards Plan to Use ‘Obama’ Trademark for Shoes and Clothing

Four Spaniards are seeking to register the name “Obama” with the European Union’s Trademark office, the Belfast Telegraph reported.

They submitted their request Jan. 21, one day after President Barack Obama’s inauguration, according to the Telegraph.

They seek to use the name as a trademark for a wide range of goods and services, including financial services, clothing and shoes and catering, the Telegraph reported.

Under recent trademark rule changes, registering the names of famous people “will no longer be considered as deceptive and contrary to public policy,” according to the Telegraph.

Trade Secrets/Industrial Espionage

Clorox Sues SC Johnson over Hiring of VP Product Supply

Clorox Co., maker of Liquid Plumr, Glad bags and Clorox bathroom cleaners, sued S.C. Johnson & Son Inc. of Racine, Wisconsin, for trade-secret misappropriation.

The suit, filed in federal court in Milwaukee on April 21, stemmed from Johnson’s hiring of Timothy Bailey, Clorox’s former vice president of product supply. Clorox claims that Bailey will inevitably disclose the company’s trade secrets to his new employer, which competes in the same product areas.

Clorox claims its global supply relationships are what enable the Oakland, California-based company to offer “high- quality products and competitive prices.” Bailey’s knowledge of Clorox’s network of global suppliers may give Johnson a competitive advantage, according to court papers.

Bailey participated in Clorox’s strategy team and business operations leadership teams, giving him access to “critical and confidential information,” the company said in its pleadings.

He was also involved in the development of a project identified in court papers only as “S********R,” which concerned “a significant redesign of a key component” used in products made both by Clorox and Johnson, according to court papers.

Clorox asked the court to order closely held Johnson not to use any of Clorox’s trade secrets and to bar it from employing Bailey until April 14, 2011. The company also requested money damages and attorney fees, and an order “prohibiting S.C. Johnson from interfering with the secrecy agreement between Clorox and Bailey.”

A hearing on Clorox’s request for a temporary order barring Bailey’s employment is set for May 1.

Clorox is represented by Kevin A. Banasik, Michael P. Roche and Shane W. Blackstone of Chicago’s Winston & Strawn LLP; and Paul F. Heaton and Ralph A. Weber of Milwaukee-based Gass Weber Mullis LLC.

S.C. Johnson’s lawyers are Bernard J. Bobber and Susan R. Maisa of Milwaukee’s Foley & Lardner LLP.

The case is Clorox Co. v. SC Johnson & Son Inc., 2:09-cv- 00408-JPS, U.S. District Court, Eastern District of Wisconsin (Milwaukee).

University Technology Transfer

Penn Student Assembly Seeks IP Rights Policy Clarification

The University of Pennsylvania’s Undergraduate Assembly endorsed a resolution asking the school to “condense and clarify” its policy on students’ intellectual-property rights, the Daily Pennsylvanian reported.

The resolution came from student concerns that professors would take students’ ideas and pass them off as their own, according to the Daily Pennsylvanian.

The school’s IP policy could be clarified to make clear to students “up front what the situation is,” said Michael Cleare, the executive director of the university’s Center for Technology Transfer, the Daily Pennsylvanian reported.

IP Moves

Omnicom’s Siegel+Gale Hires Glass Lewis’s Jacqueline Rhoades.

Omnicom Group Inc.’s Siegel+Gale unit hired branding expert Jacqueline Rhoads as vice president of business development for its San Francisco office, the New York-based company said in a statement.

Rhoades joins from the shareholder-advisory firm of Glass, Lewis & Co., where she served as vice president of sales until its acquisition by Shanghai-based Xinhua Finance Ltd. in 2007. She also has worked for International Data Group, CMP Media and the Santa Fe Opera.

She has an undergraduate degree from Scripps College, and did graduate work at St. John’s College in Santa Fe, New Mexico.

The branding company will work with the Bay Area technology section, according to the statement. Siegel & Gale’s clients include Yahoo Inc., McAfee Inc. and Microsoft Corp.

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: David E. Rovella at drovella@bloomberg.net.

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