Redskins, Corbis, OpenTable: Intellectual Property

The Washington Redskins won an appeals court ruling in its 17-year fight over whether trademarks on the National Football League franchise’s name should be canceled due to complaints from American Indians.

A U.S. appeals court upheld a judge’s decision that Mateo Romero, an artist from the Cochiti Pueblo reservation in New Mexico, waited too long to file his claim that six trademarks used by the team are offensive.

The May 15 ruling by the U.S. Court of Appeals for the District of Columbia Circuit ends a legal dispute begun in 1992 over the name of the team. An appeals board within the U.S. Patent and Trademark Office ruled in 1994 that the trademarks should be canceled after Romero and six other American Indians complained. Pro-Football Inc., the closely held parent company of the Redskins that was granted the trademarks in 1967, sued in 1999 to overturn the finding.

“It’s a good day for the Washington Redskins,” said lawyer Robert Raskopf of Los Angeles-based Quinn Emanuel Urquhart Oliver & Hedges LLP, who argued the case for the football team.

He said there is another suit pending by other Indians over the name of the team. Slogans and images considered disparaging can’t be registered under U.S. trademark law.

Without trademark protection, the team would be unable to prevent others from making and selling products branded with its logo.

The case is Pro-Football Inc. v. Harjo, 03-7162, U.S. Court of Appeals for the D.C. Circuit. The lower court case is Pro- Football Inc. v. Harjo, 99-cv-1385, U.S. District Court, District of Columbia (Washington).

Corbis Unit to License Johnny, June Carter Cash Rights

Corbis Corp.’s GreenLight unit was named licensing agent for the personality rights of the late singers Johnny Cash and June Carter Cash, Billboard reported May 11.

Among the other celebrities GreenLight has represented are Maria Callas, Albert Einstein, Andy Warhol, Steve McQueen and aviation pioneers the Wright brothers, according to Billboard.

Some of its licensing projects have involved Dolce & Gabbana Spa, Deutsche Telekom AG’s T-Mobile unit, TAG Heuer International SA and Coca-Cola Co., Billboard reported.

GreenLight, based in Seattle, is negotiating initial licensing products for the Cash names, according to Billboard.

Mizuno Baseball Gloves Accused of Infringing ‘Softhands’ Mark

Mizuno Corp., an Osaka, Japan-based sporting goods manufacturer whose products are endorsed by Major League Baseball players Ichiro Suzuki, Chipper Jones and Scott Rolen, was sued for trademark infringement by a maker of a baseball- training device.

Birmingham Softhands Infield Trainer Co. makes a “hand- held catching device used for improving baseball skills and playing baseball-related games,” according to the complaint filed May 1 in federal court in Syracuse, New York.

The owner of the “Softhands” trademark is Peter Bingham of Syracuse, who assigned his rights to the company bearing his name. He is co-plaintiff with Birmingham Softhands.

He registered the mark in December 1995 with the U.S. Patent and Trademark Office and says the device has been sold under that name since 1986. The product is advertised through the Web site www.softhands.com and is endorsed by Derek Jeter of the New York Yankees, according to court papers.

Mizuno is accused of infringing the trademark by offering baseball and softball gloves with “Softhands construction.” The phrase is used “without permission or authority” from Bingham or Birmingham Softhands, according to their pleadings.

Birmingham said he sent Mizuno a cease-and-desist letter in December 2006 and received a response a month later in which Mizuno said it quit using the term “softhands construction.”

The Japanese company is still selling products that infringe the mark, Birmingham claimed, including several lines of baseball gloves. As a result of these sales, Birmingham Softhands says it’s suffered “a steady decline in sales” of its product. It’s had an 18 percent decline in sales in the past four years and attributes all the decline to Mizuno’s alleged infringement.

The products Birmingham says infringe are sold in both online and brick-and-mortar retail outlets. He asked the court to order Mizuno to quit infringing and require the seizure and destruction of all infringing goods and promotional materials.

In addition to attorney fees, Birmingham requests damages of $1 million and additional damages of $10 million to punish Mizuno for its actions.

Kenneth R. Bobrycki and Elizabeth A. Genung of Syracuse New York-based Melvin & Melvin PLLC represent Birmingham and his company.

The case is Birmingham v. Mizuno USA Inc., 5:09-cv-00566- GTS-GHL, U.S. District Court, Northern District of New York (Syracuse).

Trade Secrets/Industrial Espionage

S.C. Johnson Seeks Dismissal of Clorox’s Trade-Secret Suit

S.C. Johnson & Son Inc., which was sued for trade-secret misappropriation by Clorox Co. in April, asked the court to toss out the case because the employee alleged to have committed the misconduct wasn’t named in the suit.

Racine, Wisconsin-based Johnson hired Timothy Bailey, Clorox’s former vice president of product supply. Clorox, based in Oakland, California, sued only Johnson and argued in its court papers that Bailey would inevitably disclose the company’s trade secrets.

The two companies compete in many of the same consumer- product areas.

The suit was filed in federal court in Milwaukee. Unlike many other states, California has strict limits on non-compete agreements.

Johnson filed papers May 12, asking the court to throw out the suit because Bailey hadn’t himself been sued. The Wisconsin company claimed Clorox didn’t name Bailey because it was trying to “side step California’s limits on post-employment restrictions.”

On May 5, counsel for Johnson sent Clorox’s lawyers an e- mail saying “as a show of good faith” the company would bar Bailey from working on certain projects until the court rules on the California company’s request to bar disclosure of its trade secrets.

Michael P. Roche, Clorox’s lawyer, responded, saying Johnson shouldn’t allow Bailey to begin working at all until the court rules. Roche also said Johnson dropped “voluminous papers on Clorox at the eleventh hour with the clear intent to take advantage of Clorox’s limited opportunity to reply.”

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. S.C. Johnson & Son Inc., 2:09-cv- 00408-JPS, U.S. District Court, Eastern District of Wisconsin (Milwaukee).

Patents

OpenTable Accused of Infringing Restaurant-Reservation Patent

OpenTable Inc., the operator of a restaurant-reservation Web site, was sued for patent infringement by a company based in Mountain View, California.

Mount Hamilton Partners LLC claims San Francisco-based OpenTable is infringing a patent for a system of restaurant reservations, according to the complaint filed May 12 in federal court in San Francisco.

Patent 6,741,969 B1, issued in May 2004, covers a system and method for reducing excess capacity for restaurants and other industries during off-peak or other times. Application for the patent was filed in May 2000, with the assistance of Boston- based Mintz Levin Cohn Ferris Glovsky & Popeo PC.

Characterizing its patent as a “pioneer patent,” Mount Hamilton claims it provides an “innovative solution” to dealing with off-peak capacity and contains “a unique combination of features” to address the problem.

OpenTable’s Web site contains a number of elements that infringe the patent, Mount Hamilton said in its pleadings.

Mount Hamilton asked the court to bar OpenTable from infringing the patent and grant an award of money damages “no less than a reasonable royalty calculated on a per-reservation basis.”

The company also requested attorney fees and, alleging the infringement is deliberate, asked the damages be tripled.

Mount Hamilton is represented by James G. Gatto and Benjamin T. Duranske of San Francisco’s Pillsbury Winthrop Shaw Pittman LLP.

The case is Mount Hamilton Partners LLC v. OpenTable Inc., 3:09-cv-02074-EDL, U.S. District Court, Northern District of California (San Francisco).

Copyright

Edmund Hillary’s Children Seek to Keep Father’s Papers Private

The family of the late Sir Edmund Hillary is disputing the IP rights to the mountain climber’s writings, the U.K.’s Telegraph reported May 15.

Hillary, who with his guide Tenzing Norgay was the first to climb Mt. Everest in 1953, died at the age of 88 in January 2008. He left his papers, including letters, diaries, maps and photos, to the Auckland War Memorial Museum, the newspaper reported.

His children have asked a court in New Zealand to declare a clause in their father’s will allows them to veto access to some of the material, according to the Telegraph.

The whole idea of willing items to a museum “is to allow public access,” said Vanda Vitali, director of the museum, according to the Telegraph report. “Our belief is that Sir Edmund wanted that, otherwise why would he give these things to the museum?”

Big Paw Designs Sues Wholesaler for Infringing Pet Jewelry

Big Paw Designs, a maker of dog and cat jewelry, sued a Virginia pet fashion wholesaler in federal court in Dallas for copyright infringement.

Carol Perry of Dallas, Texas, who does business as Big Paw Designs, claims Pucci Inc.’s Cha Cha Couture copied her designs for pet tags and sells them on a variety of Web sites. Customers are confused, and one even told Perry that she could find the Texas designer’s products for sale elsewhere for half her asking price, according to court papers.

Among Perry’s Big Paw products are pewter pet tags with such phrases as “Fetch what?,” “Talk to the tail,” “The cat did it,” and “Squirrel Patrol.” She also made a tag featuring a paw print in the middle of a cross design.

Perry alleges that Pucci’s Cha Cha is selling identical copies of her charms and also is using her own photos of the charms on wholesale and retail Web sites.

In her complaint filed May 14, she asked the court to bar Pucci from further infringement and order the destruction of any infringing materials. Additionally, she requested money damages and attorney fees.

Mark J. Zimmerman of Dallas-based Dealey Zimmermann Clark Malouf & Macfarlane represents Perry.

The case is Perry v. Pucci Inc., 3:09-cv-00899-K, U.S. District Court, Northern District of Texas (Dallas).

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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