Dish, Mars, Warner Music, P&G: Intellectual Property

Dish Network Corp. (DISH), a provider of satellite television services, may not be able to register “TV Everywhere” as a trademark, according to filings with the U.S. Patent and Trademark Office.

Englewood, Colorado-based Dish filed applications in September 2009 to register the phrase as a trademark.

The Patent Office sent Dish a notice July 1 that the application was suspended because of other pending applications. In June 2009, Time Warner Inc. (TWX) filed four applications to register “on demand everywhere” as a trademark.

An earlier application to register “TV everywhere” was filed in August 2005 by IdeaMax Corp., of Covina, California. That application was abandoned in September 2006.

An application to register “MyTV Everywhere” was filed in January 2007 by Proxure Inc., of San Luis Obispo, California. That application was abandoned in April 2010.

An Israeli company did successfully register a trademark containing the phrase “TV everywhere.” In November 2008, Siano Mobile Silicon Ltd. of Netanya, Israel, registered “Siano -- Enabling TV Everywhere.” That company is a maker of chips that enable TV on mobile and hand-held devices.

Best Buy’s European Push Lands Company Spanish Trademark Fight

Best Buy Co. (BBY), an electronics and appliance retailer, is involved in a European trademark dispute with a Spanish company, the U.K.’s Daily Mail reported.

Worldwide Sales Corp. of Spain has done business as Best Buy International for the past 16 years and opposes the Richfield, Minnesota-based retailer’s use of the name in Europe, according to the Daily Mail.

Best Buy has said it plans to open 80 megastores in Europe in a partnership with London-based Carphone Warehouse Group PLC (CPW), the newspaper reported.

A representative of Best Buy told the Daily Mail that the trademark dispute would have “absolutely no material impact” on the company’s plans to operate in Europe.

Mars, BBDO Settle Trademark Dispute with Zorro Productions

Mars Inc., the world’s largest chocolate maker, and the owners of the “Zorro” trademark have settled their trademark dispute, according to court filings.

Zorro Productions Inc. of Berkeley, California, sued the closely held Mars Inc. for trademark infringement in federal court in San Francisco in March. The suit related to the candymaker’s use of a masked figure in its advertising that Zorro Productions claimed infringed its rights to the “Zorro” mark.

The Zorro character began as a pulp-fiction character from California’s colonial era, and was popularized in a Walt Disney Co. television program in the 1950s and, later, in a 1998 movie starring Antonio Banderas and Catherine Zeta-Jones.

Zorro Productions controls the Zorro marks and has, over the years, licensed Zorro costumes, publications and film, stage and television productions, according to the company Web site.

In the suit the trademark-holder said it had experienced damages in excess of $500,000 and that Mars’ alleged infringement had generated profits of more than $500,000.

Details of the settlement weren’t disclosed in the court filing, which was approved by counsel for both sides. The two companies “are exchanging documents to memorialize the terms of the settlement,” and will fill a dismissal after that’s completed.

Codefendant with Mars was its advertising agency, Omnicom Group Inc. (OMC)’s BBDO Worldwide unit.

Zorro Productions is represented by Ross L. Libenson of the Law Offices of Ross L. Libenson of Oakland, California. Mars and BBDO were represented by Christopher T. Holland of Krieg Keller, Sloan Reilley & Roman LLP and Michael S. Cryan of Washington’s Arent Fox LLP, Omnicom Group Inc.’s BBDO Worldwide unit.

The case is Zorro Productions Inc. v. Mars Inc., 3:10-cv-01179-SC, U.S. District Court, Northern District of California (San Francisco).

For more trademark news, click here.

Copyright

Warner Sues Porno Filmmaker for Copyright Infringement

Warner Music Group Corp. sued a maker of adult films for copyright infringement.

RK Netmedia Inc., of Miami Beach, Florida, is accused of using songs by Warner’s artists in the soundtracks for “extreme, sexually explicit videos” without permission.

These songs include performances by Michael Jackson, Katy Perry, Missy Elliot, Sean Paul and The Notorious B.I.G., according to the complaint filed July 7 in federal court in Los Angeles.

There is “little, if any dialogue” in the videos, Warner says. Instead, while RK’s actors perform their scenes, musical works are played through the filming.

Warner claims the music is used to give the illusion that the scenes take place in an actual nightclub or pool party. In some instances, “the performers ‘lip-synch’ the lyrics of the song while engaged in intercourse or other sexual activity,” according to court papers.

RK’s actions are “willful and deliberate,” Warner says, claiming it’s “well-known to the public” that the company doesn’t license its music for use “in such pornographic videos.” The music company claims the filmmaker knew the songs wouldn’t be licensed “so they simply stole them.”

The Florida company asserts the copyrights on all the content on its websites, registers its films with the U.S. Copyright Office and has sent out “takedown” notices under the Digital Millennium Copyright Act, so presumably is sophisticated about copyright law, Warner says in its pleadings.

The unauthorized use of its music has “severely impaired and diminished the value” of its content, according to the music company.

It asked the court for an order barring all unauthorized use of its music, and awards of money damages, attorney fees and litigation costs.

Codefendant with RK Media is Realitykings.com, a website that sells and distributes RK’s content.

Warner is represented by David A. Steinberg and Marc Ellis Mayer of Los Angeles-based Mitchell Silberberg & Knupp LLP.

The case is Warner Bros. Records Inc. v. RK Netmedia Inc., 2:10-cv-04991-CBM-JEM, U.S. District Court, Central District of California (Los Angeles).

Fitness Australia Says New Music License Fees Are ‘Unaffordable’

Fitness Australia, a fitness-industry trade group, said it will appeal a decision by that nation’s Copyright Tribunal to increase the license fees 1,500 percent, the organization said in a statement.

The rate has been raised from 96.8 Australian cents per class to $15, or $1 per attendee, the organization said.

Fitness Australia, which is based in Alexandria, New South Wales, will file an appeal of this decision to the Federal Court of Australia.

The Photographic Performance Company of Australia Ltd., which grants licenses for music performance, has asked that the new license rate be introduced in November 2010.

The increased fees “are unaffordable for the fitness industry,” Lauretta State, the chief executive officer of Fitness Australia, said in the organization’s statement.

For more copyright news, click here.

Patents

Kimberly-Clark, P&G Again Sued for Infringing Tampon Patent

Kimberly-Clark Corp. (KMB) and Procter & Gamble Co. (PG) were sued for patent infringement by a Washington-based patent holder.

Allegra Hemphill claims her patent 4,557,720, which was issued in December 1985, is infringed by feminine hygiene products made by the two consumer-products company. Dallas-based Kimberly-Clark’s Kotex and Poise products infringe, as does Cincinnati-based P&G’s Always, according to the complaint filed July 9 in federal court in Washington D.C.

The patent holder said she informed each company of the infringement, and the infringement continued unabated.

She asked the court to award her “a reasonable royalty,” money damages, attorney fees and litigation costs. Hemphill asked that the damages be tripled to punish the two companies for their actions.

Hemphill is unrepresented by counsel. She has previously sued the two companies for patent infringement in May 2005, and July 2007. In both instanced, the court dismissed those cases upon the consumer-products companies’ request.

The case is Hemphill v. Kimberly-Clark Corp, 1:10-cv-01159-RMC, U.S. District Court, District of Columbia (Washington D.C.).

Protectus to Get Patent on System to Prevent Needle Stick Injury

Protectus Medical Devices Inc., a maker of safety products for medical professionals, said in a statement it has received notice it will be issued a patent on a new safety-syringe device.

According to the National Institute for Occupational Safety and Health, healthcare workers are at risk of contracting AIDS or two different strains of hepatitis from accidental needle sticks. Workers most frequently stick themselves with contaminated needles when trying to recap them, transferring a body fluid between containers, and failing to dispose of used needles in special puncture-resistant containers.

Each year from 600,000 to 1 million needle stick-related accidents occur in the U.S., according to the Protectus website. The cost of healthcare supplied and services to treat those who get an accidental stick is more than $3 billion, the Minneapolis-based company said on its website.

Present federal regulations required healthcare employers to supply “the best available safety devices” to cut down on potential needle stick injuries.

The technology covered by the prospective patent is a spring-activated, automatic self-sheathing syringe. The technology helps protect users and workers without their having to perform any conscious action, according to the company statement.

For more patent news, click here.

Trade Secrets/Industrial Espionage

IP Moves

Seyfarth Shaw Hires Patent Specialist Lenkin From Fulbright Firm

Seyfarth Shaw LLP hired Alan M. Lenkin for its IP practice, the Chicago-based firm said in a statement.

Lenkin, a patent specialist, joins from Houston’s Fulbright & Jaworski LLP. He does both transactional work and litigation. He has represented companies whose technologies have included computers, telecommunications, aerospace, medical devices and semiconductors.

He has an undergraduate degree in systems analysis and engineering from George Washington University and a law degree from Loyola University, Los Angeles.

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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