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Cisco, Remy Cointreau, UHS: Intellectual Property

Commil USA LLC was granted a new trial on patent-infringement claims against Cisco Systems Inc. because of what a judge said were prejudicial comments by a Cisco lawyer.

In his Dec. 29 order, U.S. District Judge Charles Everingham said the lawyer made comments regarding religious practices that “prejudiced the jury’s findings regarding indirect infringement and damages” and “had a tendency to appeal to the prejudices of the jurors.”

Commil, based in The Woodlands, Texas, sued Cisco in federal court in Marshall, Texas, in August 2007, claiming it infringed patent 6,430,395, which covers short-range communications technology. Cisco, the world’s largest maker of networking equipment, is based in San Jose, California.

A jury sided with Commil and on May 17 awarded the company $3.7 million in damages, well below the amount the Texas company sought.

In its June 21 motion for a new trial, Commil said a Cisco lawyer “made numerous overt and veiled sidebar comments” aimed at creating prejudice against the patent owner and inventors.

These comments “pervaded the trial, playing into known stereotypes of Jews, foreigners and plaintiffs’ personal injury lawyers,” Commil said in court filings. The remarks affected the jurors’ ability “to deliver a fair and impartial verdict,” according to the filing.

One of the remarks to which the company objected was a comment to the jury when Cisco’s counsel was cross-examining Commil’s Israeli owner. Commil claimed the lawyer asked about the owner’s dinner at a barbeque restaurant, and said “I bet not pork” was eaten.

Although the court admonished Cisco’s lawyer about this remark, Commil claims the damage was done and made worse by the lawyer’s subsequent references to the trial of Jesus by Pontius Pilate as “a Bible story we all read as kids.” Other objectionable remarks, Commil said, included references to “bottom-feeders” and a big verdict that would give the company owner “a pretty good day at the track.”

Neither Commil nor the judge identified the lawyer in court papers.

Otis W. Carroll Jr., a lawyer from the firm that represented Cisco in the case, didn’t respond immediately to an e-mailed request for comment. The firm is Ireland, Carroll & Kelley PC of Tyler, Texas.

Everingham scheduled a pre-trial conference for March 24 and said in his order that jury selection will begin April 4.

The case is Commil U.S.A. v. Cisco Systems Inc., 2:07-cv- 00341-CE, U.S. District Court, Eastern District of Texas (Marshall).

Ernie Ball Wins Damages in Guitar-Device Infringement Case

Ernie Ball Inc., a maker of guitar accessories, was awarded $250,000 in damages in a patent-infringement case.

The Coachella, California-based company sued Earvana LLC in federal court in Riverside, California, in April 2006. Ernie Ball claimed Earvana, based in Paso Robles, California, infringed patent 6,433,264, which covers a device for tuning guitars.

In addition to being awarded money damages, Ball persuaded the court to bar Earvana from selling a range of tuning devices that infringe the patent.

Ernie Ball was represented by G. Henry Welles of Best Best & Krieger of Riverside.

The case is Ernie Ball Inc., v. Earvana LLC, 5:06-cv-00384- JHM-OPX, U.S. District Court, Central District of California (Riverside).

For more patent news, click here.

Trademark

Fake Versions of Remy-Martin and Hennessey Found in China

A government agency in Quingdao, China, found fake versions of Remy Cointreau SA’s Remy-Martin and LVMH Moet Hennessy Louis Vuitton SA’s Hennessy, according to the Chinese Wines Information website.

The 3,600 bottles of fake products were labeled with the counterfeit versions of the two company’s labels, Chinese Wines Information reported.

The investigation was conducted by the Jiaonan Administration of Industry and Commerce, the website reported.

UHS’s $2.4 Million Award to Sex Researcher Johnson Upheld

Sex researcher Virginia Johnson’s $2.4 million trademark- infringement award will stand, a federal appeals court ruled.

Johnson, who with her late former husband William H. Masters conducted pioneering research into sexual response and dysfunction, licensed the “Masters and Johnson” service mark to United Health Services Inc.’s UHS of Delaware unit in 1994.

The mark was to be used in connection with the treatment of sexual dysfunction and sexual trauma in accord with Master’s and Johnson’s methodology, she said in the complaint filed in federal court in St. Louis in December 2006.

Johnson said she found that UHS was using the mark for treatments of non-sexual trauma, addictions, eating disorders, compulsive behavior, chemical dependency and for services including yoga, expressive dance and tai chi.

Her suit accused the King of Prussia, Pennsylvania-based health-care management company of trademark infringement and breach of contract.

The jury found that UHS had deliberately infringed the mark and breached the licensing agreement and awarded Johnson $2.4 million of the company’s profits.

On appeal, UHS argued that ordering the company not to use the mark beyond the scope of its license was a sufficient outcome to the trial. The appeals court disagreed, saying a court order “was not sufficient to do equity here.”

The court also rejected UHS’s argument that the infringement wasn’t deliberate, saying evidence showed that the company’s employees and executive “knowingly elided the terms of the agreement to their advantage.”

The health-care company also claimed that Masters failed to show that consumers were confused by UHS’s use of the mark. The court said proof of actual confusion wasn’t necessary for the award to stand.

The court said the use of the “Masters and Johnson” mark to lend “credence and legitimacy to programs and methods divorced from the intellectual theories that the mark symbolized” adulterated what the mark represents.

UHS didn’t immediately respond to an e-mailed request for comment.

The case is Mary Masters v. UHS of Delaware Inc, 09-3542, 8th U.S. Circuit Court of Appeals. The lower court case is Mary Virginia Masters v. UHS of Delaware Inc., 4:06-cv-01850-DJS, U.S. District Court, Eastern District of Missouri (St. Louis).

Dead-Celebrity Dealmaker Salter Buys Marilyn Monroe Name

Dealmaker Jamie Salter, who already markets Bob Marley- themed merchandise, has agreed to acquire the rights to another dead celebrity: Marilyn Monroe.

Salter’s New York-based firm Authentic Brands Group LLC and media company Neca Inc. are buying Marilyn Monroe LLC from the late star’s estate, Salter said. Anna Strasberg, who is the administrator of the estate, will be a minority partner in the venture, which will control, among other things, the actress’s name and images of her lips and eyes, he said.

Authentic Brands, which is backed by Leonard Green & Partners LP, is shopping a reality show based on Monroe, who has been dead almost 50 years, and plans to sell makeup, lingerie and other products that carry her name, Salter said.

“Every female celebrity has tried to emulate her in some way,” said Salter, who declined to say how much his firm paid for the name. “Marilyn Monroe is the brand.”

Dead stars and their associated business generated $2.25 billion in North American revenue in 2009, says Ira Mayer, who runs The Licensing Letter, which tracks licensing deals. UBS, PSA Peugeot Citroen and Cie. Financiere Richemont SA’s Montblanc have all hitched their brands to dead icons.

“The interest in dead celebrities by brands is only growing because it’s a known quantity,” said David Reeder, vice president at GreenLight, a unit of Corbis Corp. that represents the estates of Steve McQueen, Johnny Cash and Andy Warhol. “There’s a lot of private-equity money looking to buy entertainment properties.”

Authentic Brands is in talks with mass and luxury retailers to sell a line of Monroe-branded lingerie, cosmetics and home products, Salter said. The proposed reality TV show, “Who is The Next Face of Marilyn,” would feature contestants vying to represent the Monroe brand.

For the full story, click here.

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Trade Secrets/Industrial Espionage

Renault Kept Leak Probe From Government, Minister Says

Renault SA, which filed a criminal espionage complaint yesterday over electric-car technology leaks, kept the French government in the dark about its investigation, Industry Minister Eric Besson said in an interview.

The minister, who visited Renault’s main research and development center Jan. 4, said he wasn’t told about a five- month probe at the company that culminated in the suspension of three executives a day earlier.

“I wasn’t informed of anything,” Besson said in Toulouse. “This made me very angry, and I said so to Renault. I don’t remember when I’ve been so angry.”

Renault, which acknowledged the suspected leaks Jan. 5 in response to French media reports, cited allegations of industrial espionage, corruption, breach of trust and theft in its court submission, without naming suspects. The government, Renault’s biggest shareholder with a 15 percent stake and two board seats, is waiting for more information from the company, Besson said.

“I still have many questions about what happened,” he said, adding that ministers are so far aware of “very few findings” from Renault’s investigation.

Renault spokeswoman Caroline De Gezelle declined to comment on Besson’s remarks.

“The matter is now in the hands of the legal authorities,” she said. “Renault is reserving the findings in its possession for the competent services.”

Chief Paris Prosecutor Jean-Claude Marin told reporters he had received Renault’s filing and said the alleged crimes could carry jail time.

The Renault probe uncovered payments by State Grid Corp. of China, the state-owned power distributor, into accounts held in Liechtenstein and Switzerland by two of the suspended executives, a person with knowledge of the matter said Jan. 12. The Chinese foreign ministry rejected the reports as “baseless and irresponsible.”

All three of the accused managers have denied wrongdoing. Lawyers for Michel Balthazard, head of long-term product development and a member of Chief Executive Officer Carlos Ghosn’s management committee, didn’t return calls seeking comment on the court filing.

The other suspended executives, Balthazard’s subordinate Bertrand Rochette and deputy electric-vehicle program chief Matthieu Tenenbaum, had no immediate comment, their attorneys said.

The carmaker said all three face dismissal for “serious misconduct” following final disciplinary interviews that were held on Jan. 11 in accordance with French labor law.

Renault and alliance partner Nissan Motor Co. have invested a combined 4 billion euros ($5.2 billion) in electric-car technology, including lithium-ion batteries developed by the Japanese carmaker in a venture with NEC Corp. to power its Leaf model and four Renault vehicles.

IP Moves

IV Hires Ex-Justice Department Lawyer Kris as General Counsel

Intellectual Ventures, the company that claims to own more 30,000 patents and to have earned more than $2 billion in licensing fees, hired David Kris as general counsel, the company said in an e-mailed statement.

The company, based in Bellevue, Washington, was founded by Nathan Myhrvold, Microsoft Corp.’s former chief technology officer.

Kris was formerly the assistant attorney general for national security in the U.S. Justice Department. He also has worked as deputy general counsel and chief compliance officer for Time Warner Inc. and was an assistant U.S. Attorney in the criminal division of the U.S. Attorney’s office for the District of Columbia.

Before practicing law, Kris served as a judicial clerk for Judge Stephen S. Trott on the U.S. Court of Appeals for the Federal Circuit.

Kris has an undergraduate degree from Haverford College and a law degree from Harvard University.

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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