Nokia, Apple, Japan Post, Faiza, Franek, Wal-Mart: Intellectual Property

Nokia Oyj removed one patent from its complaint against Apple Inc. with the U.S. International Trade Commission, company spokesman Mark Durrant said.

“We chose to remove the ‘735’ patent in the interests of efficient use of time in the ITC case, although we continue to believe it is infringed by Apple products and so it remains in suit in the parallel Delaware case,” Durrant said in an e-mail.

Nokia also has filed a lawsuit in Delaware against Apple. According to the database of the U.S. Patent and Trademark Office, Nokia’s patent 6,262,735 helps link functions and applications on a mobile phone to one another. The patent was issued in July 2001, and is one of seven patents at issue in the Delaware case.

That case is Nokia Corp. v. Apple Inc., 1:09-cv-01002-GMS, U.S. District Court, District of Delaware (Wilmington).

For more patent news, click here.

IP Trade Issues

EU Says WTO High-Tech Goods Ruling May Cost 300 Million Euros

A World Trade Organization ruling that the European Union violated global trade law by applying import duties on high-tech electronic goods may cost the bloc as much as 300 million euros ($386 million) in revenue a year.

“This is a very rough and highly hypothetical estimate, based on import calculations from previous years, that if we didn’t appeal, the future loss revenue would amount to 300 million euros annually,” European Commission spokesman Patrizio Fiorilli said yesterday at a news conference in Brussels. The EU has 60 days to appeal the ruling.

The WTO decision followed a complaint by the U.S., Japan and Taiwan saying the EU is circumventing a trade accord called the Information Technology Agreement that was signed by 72 countries and scraps import tariffs on electronic products. WTO judges agreed and called on the EU to drop the levies.

The case against the EU involves three products -- cable converter boxes, multifunction printers and flat-panel computer displays -- all developed after 1996, when the ITA came into force. Trade in ITA products produced by companies including Hewlett-Packard Co., Samsung Electronics Co. and Canon Inc. more than tripled to $4 trillion in 2008 from $1.2 trillion in 1996, according to the Information Technology Industry Council.

The EU imposed duties ranging from 6 percent to 14 percent on the products, the bloc’s imports of which amounted to $11 billion in 2007.

The EU proposed expanding the list of electronic goods exempt from customs duties in September 2008. The 27-nation bloc never committed to adding the three products that are at the heart of the WTO complaint to the ITA, saying only that it wanted to give priority to multifunctional goods, and that its call to reopen talks on the accord was never approved.

“The list of items under this agreement has never been updated,” Fiorilli said. “This is where the problem lies now. The EU has consistently asked for this to be updated via negotiations.”

Trademark

PepsiCo Claims ‘Camouflage Beer Can Wraps’ Infringe Trademarks

PepsiCo Inc., the world’s largest snack-food maker, sued two Connecticut-based makers and sellers of novelty products for trademark infringement, objecting to “camouflage beer can wraps” that can be applied to the outer surface of beer cans.

Outrageous Ventures Inc. of Hartford, and PrankPlace.com LLC of Marlborough, are accused of making and selling beer can wraps that mimic PepsiCo’s Pepsi and Mountain Dew labels.

The wraps contain no references “to the fact that these products are not legitimate PepsiCo products,” according to the complaint filed Aug. 13 in federal court in New Haven, Connecticut.

PepsiCo, based in Purchase, New York, claims consumers who buy the wraps or see them used will probably mistakenly believe that it is their source or authorized their sale. The company said the association of its marks with illicit alcohol consumption is “abhorrent” and likely to “upset” consumers.

The company asked the court to bar the defendants from infringing the trademarks and seeks destruction of infringing products and awards of all profits derived from the alleged infringement, money damages, attorney fees and litigation costs.

Neither Outrageous Ventures nor Prankplace.com responded immediately to e-mailed requests for comment.

PepsiCo is represented by Thomas J. Finn of Washington’s Jorden Burt LLP.

The case is Pepsico Inc., v. Outrageous Ventures Inc, 3:10- 01309-SRU, U.S. District Court, District of Connecticut (New Haven).

Japan Post Battles Sapporo Direct-Mail Marketer Over Trademark

Japan Post Holdings Co.’s Japan Post Services is the target of a trademark-infringement action brought by a direct-mail marketing company, Mainichi News reported.

Sapporo Mail Service, based in Sapporo, Japan, objects to Japan Post Service’s use of “Yu-Mail” for its delivery of printed materials, according to Mainichi News.

Sapporo Mail Service registered the Yu-Mail mark for door- to-door delivery of advertising material in June 2004, the newspaper reported.

In proceedings at the Tokyo District Court, Japan Post is arguing that the services of the two companies differ, so there is no infringement, according to Mainichi News.

Faiza Loses Right to Malaysian ‘Ponni’ Trademark For Rice

Malaysia’s Syraikat Faiza Sdn Bhd, a rice producer, lost its trademark registration for “Ponni,” used for a variety of rice it sells, Malaysia’s Star website reported.

Faiza was opposed by India’s Agricultural and Processed Food Products Exports Development Authority, Indian farmers and exporters, and Tamil Nadu Agricultural University, which developed the rice variety in 1971, according to the Star.

The opponents told the court “Ponni” rice was named after a river that runs through a region in India and that Faiza was improperly been awarded a Malaysian trademark on the term in 2006, the Star reported.

The case, heard by Malaysia’s High Court, is the first dispute related to geographic origin protection to have been tried in the country.

Franek Loses Trademark Dispute Over Circular Beach Towels

Clemens Franek, who promoted his circular beach towels in the 1980s with help from actor Woody Harrelson, lost a trademark-infringement dispute over the towels.

In an Aug. 11 ruling, a three-judge panel of the U.S. Court of Appeals in Chicago affirmed a lower court ruling that Franek’s trademark didn’t give him the power to block others from producing round beach towels.

Franek sued Wal-Mart Stores Inc. and Target Corp. for trademark infringement in federal court in Chicago in January 2008. Jay Franco & Sons Inc., the New York-based supplier of the retailers’ allegedly infringing products, successfully sued Franek, seeking a declaration its products didn’t infringe. Franek appealed that ruling.

Judge Frank Easterbrook wrote in the appeals court ruling that Franek’s design was functional and giving him the “exclusive use of a basic element of design” such as a circle “impoverishes other designers’ palettes.”

The court “cannot permit him to keep the indefinite competitive advantage in producing beach towels this trademark creates,” Easterbrook wrote.

The lower court case is Jay Franco & Sons v. Franek, 1:08- cv-01313, and the original case is Franek v. Wal-Mart Stores Inc., 1:08-cv-00058, U.S. District Court, Northern District of Illinois (Chicago). The appeals court case is Jay Franco & Sons Inc., v. Clemens Franek, 09-2155, 7th U.S. Circuit Court of Appeals (Chicago).

For more trademark news, click here.

Copyright

Fordham’s Fashion Law Institute to Help Fight Knockoffs

The law school of Fordham University established the Fashion Law Institute, with an opening date set for this year the school said in a statement.

The program will emphasize intellectual property law and receive support from the New York-based trade group Council of Fashion Designers of America. The group is seeking passage of the Innovative Design Protection and Piracy Prevention Act, which would extend copyright protection to fashion designs for three years.

Professor Susan Scafidi, the first U.S. law professor to offer a course in fashion law, is director of the Fordham program.

For more copyright news, click here.

IP Moves

Alston & Bird Expands Washington IP Practice, Hires Pivnick

Alston & Bird LLP hired litigator Scott Pivnick for its intellectual-property practice, the Atlanta-based firm said in a statement.

Pivnick joins from San Francisco’s Pillsbury Winthrop Shaw Pittman LLP. He also has practiced as a trial and appellate litigator in the U.S. Justice Department’s Commercial Litigation Branch.

He has represented clients in patent, trademark, copyright and trade-secret disputes in federal courts and before the U.S. International Trade Commission. Pivnick has an undergraduate degree from the University of Connecticut and a law degree from George Washington University.

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at vslindflor@bloomberg.net.

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