Volcom, Men at Work, Oil Cleanup: Intellectual Property

Roc Nation LLC, the entertainment company founded by Shawn “Jay-Z” Carter, was sued for trademark infringement by a California competitor.

According to the complaint filed March 29 in federal court in Santa Ana, California, Roc Nation is accused of infringing the “stone” trademark belonging to Volcom Inc., of Costa Mesa, California. The mark is a black and white inverted diamond, according to court papers.

Volcom says it has been using this mark since 1991 for a range of products including music, sound recordings and headphones. It also used the mark as part of its logo for a subsidiary unit -- Volcom Entertainment -- which sponsors bands, offers live performances and sells recorded music.

The company objects to an inverted diamond logo used by Roc Nation since 2009. Volcom said that although it has informed Beverly Hills, California-based Roc Nation that it infringes, the company “refuses to cease its infringing use of the inverted diamond.”

The logo is used without authorization on headphones and for the advertising, marketing and packaging of some Roc Nation products, potentially confusing the public, according to court papers.

Volcom asked the court to bar Roc Nation from the use of the mark, and for an order for the destruction of all products and promotional materials that infringe. The company also seeks money damages, and asked that they be tripled to punish Roc Nation for its alleged infringement.

Additionally, Volcom asked the court to order Roc Nation to pay for the cost of corrective advertising, and for awards of attorney fees and litigation costs.

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

Volcom is represented by Joel A. Kauth of Kauth Pomeroy Peck & Bailey LLP of Irvine, California.

The case is Volcom Inc. (VLCM), v. Roc National LLC, 8:11-cv-00489-JST-FFM, U.S. District Court, Central District of California (Santa Ana).

Aeropostale Accused of Infringing ‘Lower East Side’ Trademark

Aeropostale Inc., the New York-based clothing retailer, was sued for trademark infringement by a New York resident.

Robert G. Lopez accuses the retailer of infringing his “Lower East Side” trademark. According to the complaint filed March 24 in federal court in New York, Lopez has been selling clothing marked with this brand name since 1997. The clothing is sold and promoted through his www.lesclothing.com website and at several retail locations in lower Manhattan.

He advertises his clothing through what he calls “grass root street marketing” including painted street murals and photo shoots of customers who buy his clothing, Lopez said in his pleadings. He holds New York state trademark registration for “Lower East Side,” according to court papers.

Lopez said he first saw hooded sweatshirts bearing his mark without authorization sold by Aeropostale at its various teen- oriented stores. He said he’s injured by the retailer’s actions and the public is confused about whether the Aeropostale products have an affiliation with his.

He asked the court to bar Aeropostale’s use of his mark, and for an order for the destruction of all infringing products and promotional materials. Additionally, he seeks money damages and extra damages to punish Aeropostale for its actions, and requested the court award him litigation costs and attorney fees.

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

Lopez sued J. Crew Inc. for infringing the “Lower East Side” trademark Jan. 21. New York-based J. Crew has not yet responded to the complaint, according to Bloomberg data.

That case is Lopez. v. J.Crew Inc., 1:11-cv-00450, U.S. District Court, Southern District of New York.

Lopez isn’t represented by counsel.

The case is Robert G. Lopez v. Aeropostale Inc. (ARO), 1:11-cv- 02047, U.S. District Court, Southern District of New York (Manhattan).

Wichita Wings Trademark Dispute Ends, Mark to Be Shared

Two Wichita, Kansas-area businessmen have ended a dispute over the trademarks to a defunct soccer club by agreeing to share the marks, the Wichita Eagle reported.

The marks are for the Wichita Wings soccer club, which was formed in 1970, according to the newspaper.

A new team using the marks and known as the Wichita Wings 2 will begin playing in a local arena in 2011, the newspaper reported.

The old logo will be retired, the newspaper said.

For more trademark news, click here.

Copyright

Men at Work Lose Bid to Reverse ‘Kookaburra’ Riff Ruling

Men at Work, the Australian band that won a Grammy award in 1983, lost a bid to reverse a court ruling that said a flute riff in their song “Down Under” breached the copyright of the 1934 children’s song “Kookaburra Sits in The Old Gum Tree.”

A three-member panel of the Federal Court of Australia in Sydney yesterday upheld a lower court decision under which Larrikin Music Publishing Pty, owner of the “Kookaburra” copyright, was awarded 5 percent of revenue the band earned from the song.

The song, written by an Australian music teacher in 1932, achieved fame when it was entered into a music competition sponsored by the Girl Guides. “Kookaburra,” often sung as a round, is still popular worldwide in the Girl Guide and Girl Scouting movements.

Colin Hay, who co-founded Men at Work with Ron Strykert, and EMI Music Publishing Australia Pty, the song publisher, “are disappointed with the result,” Mark Bamford, a Sydney- based partner at TressCox Lawyers who represented both, said in an e-mailed statement. “If the application of copyright law leads to a result like this, it’s time to rethink its modern application.”

“Down Under” topped the charts in the U.S. and U.K., according to Billboard, and was the theme song for the victorious Australia II yacht team in the America’s Cup in 1983, the year the band won the Grammy for Best New Artist.

Published first in 1979, “Down Under” gained popularity following a 1981 recording that added the flute riff, which the judge found had been lifted from “Kookaburra.” Both “Kookaburra” and “Down Under” are “iconic” Australian songs, Federal Court Judge Peter Jacobson, said in the July 6 ruling determining the damages.

The “aim in adding the flute riff was to inject some ‘Australian flavor’ in the 1981 recording,” Jacobson wrote. Greg Ham, the flautist on Men at Work, “deliberately reproduced the relevant part of Kookaburra for the purpose,” according to the ruling.

Hay had disputed the judge’s earlier finding of infringement in a February 2010 open letter to the public.

“I believe what has won today is opportunistic greed,” Hay wrote. “This ruling will have lasting repercussions, and I suspect not for the better.”

Hay said he didn’t appropriate anything when he wrote the song in 1978.

The appeal court also upheld Jacobson’s decision that Qantas Airways Ltd. (QAN), Australia’s biggest airline, didn’t infringe the copyright when it used “Down Under” in an advertising campaign.

The appeal judges overturned Jacobson’s decision that other recordings of “Down Under,” including the theme song for the animated film “Finding Nemo,” also didn’t infringe the copyright. The appeal court ordered Jacobson to reconsider the claim.

EMI is owned by Terra Firma Capital Partners Ltd., a private equity firm.

The case is Larrikin Music Publishing Pty v. EMI Songs Australia Pty. NSD145. Federal Court of Australia (Sydney).

For more copyright news, click here.

Patent

Italian Group Wins Raw-Wool Patent to Clean Oil Spilled at Sea

An Italian group was granted a patent for a method of collecting oil spilled in the sea based on the water-repellent qualities of raw wool.

The technology covered by the patent was developed by Luciano Donatelli, Mauro Rossetti and Mario Ploner utilizing the water-repelling properties of coarse wool, which can absorb 10 times its weight in oil, according to a presentation by Gruppo Creativi Associati engineering society yesterday in Milan.

“We are able, in a fairly simple way, to recuperate a good 950 tons of oil, equal to 6,350 barrels, with 10 tons of greasy wool because the same wool can be used at least 10 times over,” Rossetti said. “The oil can then be processed straight away in any refinery.”

The entrepreneurs began working on the project after 4.1 million barrels of crude spilled into the Gulf of Mexico last year when BP Plc (BP)’s Deepwater Horizon rig exploded while drilling a well, causing the worst offshore oil spill in U.S. history. BP has reserved more than $40 billion to cover expenses for the cleanup, restoration and government fines related to the spill.

Rossetti heads the textile association in Biella, a city in the foothills of the Alps in northwestern Italy and a center for wool and textile processing dating back to the 13th century. The province is also where the men’s luxury clothing group Ermenegildo Zegna was founded in 1910.

Rossetti, Donatelli and Ploner say raw wool, wool shorn from a sheep and not processed, is often considered a waste by sheep farmers and poses disposal problems.

Wool absorbent pads have been used in the cleanup of oil around the globe. Following the Gulf spill, Monterey Mills, the largest manufacturer of knit pile fabric in the U.S. submitted a proposal for clean-ups with wool to the federal government.

The Italian businessmen say their development, rather than just offering wool pads, creates a patented system that follows the whole process of cleanup from placing the wool to collecting it, squeezing, reusing and then storing oil and dirty wool that alone can weigh as much as 28,000 kilos after use.

Spills ranging from 300,000 to 1 million tons of oil could be cleaned with 10,000 tons of raw wool, the statement said.

For more patent news, click here.

IP Moves

Lloyd ‘Rusty’ Day Joins WilmerHale After Howrey Firm Closes

Wilmer Cutler Pickering Hale & Dorr LLP hired Lloyd “Rusty” Day to its IP practice, the Washington-based firm said in a statement.

Day, a patent litigator, was a founding partner of Day Casebeer Madrid & Batchelder LLP. That firm was absorbed by the now-defunct Washington firm of Howrey LLP in 2009.

He also practiced at the San Francisco firm now known as Cooley Godward Cornish LLP.

Among the clients he has represented are Amgen Inc. (AMGN), SAP AG (SAP), and Sun Microsystems Inc., according to Bloomberg data.

Day has an undergraduate degree in political science from Williams College and a law degree from the University of Chicago.

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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