Microsoft, Headwaters, American Eagle: Intellectual Property

Microsoft Corp., the world’s largest software company, sued a unit of the U.K.’s Amphion Innovations Plc (AMP), seeking a court declaration that two patents are invalid.

According to the complaint filed yesterday in federal court in Manhattan, Redmond, Washington-based Microsoft said Aphion’s DataTern unit has sued other companies for infringing the patents and, in their court papers, “referenced Microsoft software.”

In dispute are patents 5,937,402, issued in August 1999, and 6,101,502, issued in August 2000. Both patents deal with relational databases and software. On April 4, DataTern filed a patent infringement suit in federal court in Marshall, Texas, accusing 11 companies in a variety of industries of infringing one of the two patents that is the subject of the Microsoft case against DataTern.

Among the companies DataTern sued in that case are General Mills Inc. (GIS), Hewlett-Packard Co. and Harley-Davidson Inc. (HOG)

In its suit against DataTern, Microsoft said that some of the defendants sued by DataTern have asked Microsoft to defend them in the patent-infringement case, or to provide them with indemnification. This has “placed a cloud over Microsoft and its products” and has injured the Redmond, Washington-based company’s business and business relationships, Microsoft said in its pleadings.

DataTern has filed four additional infringement suits since June 2009 relating to one or both of the patents that are the subjects of Microsoft’s suits, according to court papers.

Microsoft claims a large number of defendants have been dismissed from those cases, which, the software company says, resulted in payment to DataTern.

Microsoft argued in its court papers that both patents are invalid because elements of each invention were not new.

It asked the court to declare it hasn’t infringed either patent or induces others to infringe them. It also asked for awards of attorney fees and litigation costs.

Microsoft is represented by Dale M. Heist, Steve J. Rocci Aleksander J. Goranin and Daniel J. Goettle of Woodcock Washburn LLP of Philadelphia, and Danielle L. Rose, Michael S. Kim and Carrie A. Tendler of Kobre & Kim LLP of New York.

The case is Microsoft Corp. (MSFT) v. DataTern Inc., 1:11-cv- 02365, U.S. District Court, Southern District of New York (Manhattan).

ZTE Says Ericsson Lawsuit Won’t Have Adverse Impact on Business

ZTE Corp. (763), a Chinese telecommunications equipment maker that’s being sued by Ericsson AB for alleged patent infringement, said the lawsuit won’t have any “material and adverse” impact on the company’s financial conditions and operations.

Business in the U.K. accounted for a “very small share” of ZTE’s overall operating revenue, the company said in a statement filed to the Hong Kong stock exchange yesterday.

For more patent news, click here.

Trademark

Imperial Tobacco, BAT to Fight Aussie Cigarette Packaging Law

Imperial Tobacco Group plc (IMT) and British American Tobacco Plc (BATS) have both threatened to sue Australia’s government over new requirements that all cigarettes be sold in that country in plain packages with no brands showing, the Australian Broadcasting Corp. reported.

Scott McIntyre, a BAT spokesman, told ABC that the government “is trying to take away our intellectual property rights.”

An unidentified spokesman from Imperial Tobacco told ABC “we will take whatever measures are open to us to protect our valuable intellectual property and if that means going to court, we will go to court.”

Professor Mark Davison, who teaches trademark law at Australia’s Monash University, told ABC the tobacco companies chances of winning a trademark case are slim because “there is no acquisition of property going on.”

Todd Thomson’s Headwaters Sued For Trademark Infringement

Headwaters Capital LLC, the private-equity fund begun in 2007 by Todd Thomson, the former chief financial officer of Citigroup Inc. (C), was sued for trademark infringement by a Denver- based merchant bank.

Headwaters MB LLC, which registered its name as a trademark in July 2001, said it has invested almost $2.5 million in advertising and promotion of its mark. The company claims that consumers associate “Headwaters” as a provider of “top-level investment and merchant banking and private-equity investment services.”

According to the complaint filed April 5 in federal court in Nashville, Tennessee, the Colorado company became aware of Headwaters Capital in August 2010, and the company claims it received numerous calls and e-mails from people who mistakenly believe the entities are connected.

The company sent Headwaters Capital a cease-and-desist letter in October 2010, and, in a Nov. 2 letter, demanded that the New York-based company agree to a three-month phase-out of its use of the “Headwaters” trademark.

The two companies’ names and Internet domain names are “so similar in terms of appearance, sound, meaning and connation” that consumers are confused, according to court papers.

Headwaters MB asked the court to bar the New York company’s use of the name, and for awards of money damages, profits derived from Headwater Capital’s alleged infringement, extra damages to punish the New York company for its actions, and awards of attorney fees and litigation costs.

Andy Merrill, a spokesman for Thomson, said in an e-mail statement that “the allegations contained in the complaint are entirely without merit and we look forward to addressing them in court.”

Headwaters MB is represented by Paige Waldrop Mills of Bass Berry & Smims PLC of Nashville.

The case is Headwaters MB LLC v. Headwaters Capital LLC, 3:11-cv-00333, U.S. District Court, Middle District of Tennessee (Nashville).

American Eagle Outfitters Sues Furniture Chain for Infringement

American Eagle Outfitters Inc. (AEO), a Pittsburgh-based clothing chain with more than 900 retail outlets, sued a Chicago furniture company for trademark infringement.

The complaint, filed April 1 in federal court in Chicago, accuses American Eagle Furniture Inc., of infringing trademarks by moving into retail operations in shopping malls beginning in February 2010. Before that, the furniture company had “historically operated as a wholesale vendor” and hadn’t used “American Eagle Furniture” as a service mark or a trademark, according to court papers.

The clothing company says it sent multiple cease-and-desist letters to the furniture company and received no response. It claims that the furniture company is using “American Eagle Furniture” in “a deliberate and willful attempt to draw on the goodwill and commercial magnetism” of the clothing stores’ marks.

It asked the court to order the furniture company to quit using “American Eagle Furniture” and to cancel any advertising in which it uses that mark. Additionally, it asked for an award of three times the profits the furniture company derived from its alleged infringement, plus money damages, and asked that the damages be tripled.

American Eagle also asked for awards of attorney fees and litigation costs.

American Eagle Furniture didn’t respond immediately to an e-mailed request for comment.

American Eagle Outfitters is represented by Debra R. Bernard and Jeremy L. Buxbaum of Seattle’s Perkins Coie LLP.

The case is American Eagle Outfitters Inc., v. American Eagle Furniture Inc., 1:11-cv-02242, U.S. District Court, Northern District of Illinois (Chicago).

Cleveland Woman Acquitted of Criminal Trademark Infringement

A Cleveland, Ohio, resident was acquitted of a criminal trademark case, WFMJ.com television news reported.

Valerie Edwards was charged with criminal infringement after police found counterfeit DVDs in the trunk of her car during a traffic stop, according to WFMJ.com.

Edwards said she was given the videos to be donated to the Boys Club of Cleveland, WFMJ.com reported.

Louboutin Sues Yves Saint Laurent Over Red-Sole Shoes

Christian Louboutin SA, the designer of expensive red-sole women’s shoes popularized by characters on “Sex and the City,” sued Yves Saint Laurent America Inc., alleging it violated Louboutin’s trademark for the footwear.

Louboutin, based in Paris, said Yves Saint Laurent is selling shoes with red soles that are “virtually identical” to its own, according to a suit filed yesterday in federal court in Manhattan. It seeks a court injunction against the sale of the shoes and damages of at least $1 million.

Saint Laurent has been selling red-sole shoes under brand names such as Tribute, Palais and Woodstock at high-end fashion stores that also sell Louboutin footwear, including Saks Fifth Avenue, Barneys New York and Bergdorf Goodman, according to the complaint.

“Defendants’ use of a red sole on their infringing footwear threatens to mislead the public, and has impaired plaintiffs’ ability to control their reputation,” Louboutin said in the complaint.

Bridget Helene, a spokeswoman for New York-based Yves Saint Laurent America, said in an e-mail that the company had no comment.

The designer Louboutin got the idea for the red-sole shoes when he painted red nail polish on the black soles of a pair of women’s shoes, the complaint states. He introduced the red soles in 1992 and since then they have been on all of the company’s luxury shoes, according to the lawsuit.

On Barneys’ website, Louboutin red-sole shoes are priced from $445 to more than $4,000 a pair. Vanity Fair magazine reported in May 2010 that San Francisco-based romance writer Danielle Steel owns 6,000 pairs of Louboutin shoes, buying every item in his collection each season.

The U.S. Patent and Trademark Office awarded Louboutin a trademark for the red sole in 2008, according to the complaint.

Louboutin was informed by Yves Saint Laurent executives by letter in January that they planned to “continue to sell the infringing footwear,” the lawsuit states.

Yves Saint Laurent is a unit of Paris-based PPR (PP), which owns Gucci and other luxury brands.

Saint Laurent, the Algeria-born French fashion designer, died in 2008.

Louboutin has filed three other trademark infringement suits in federal court in Manhattan since December 2009, according to Bloomberg data. All three have been dismissed, with permanent court orders against the defendants barring future infringement. None of those suits was against a well-known couture house such as Saint Laurent. The new case is Christian Louboutin SA v. Yves Saint Laurent America Inc., 11- 2381, U.S. District Court, Southern District of New York (Manhattan).

For more trademark news, click here.

Copyright

Ax Murder Defendant Says IP Rights Violated by TV in Court

A man on trial for an ax murder in Portland, Oregon, has raised copyright issues in efforts to keep television reporters from showing his face during the trial, the Oregonian reported.

David Wayne French, who is accused of smashing a pickax into the skull of his roommate, asked the judge to order the reporter to turn off his equipment because he didn’t want the media telling his story, according to the Oregonian.

He said the court was “allowing a commercial entity to make money off of this” and claimed they didn’t “have a right to my name, likeness and . . . story,” the Oregonian reported.

French’s request was denied by Judge Michael Marcus, who said that under Oregon’s open court system, lawyers and video cameras are allowed in the court, according to the newspaper.

For more copyright news, click here.

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: Michael Hytha at mhytha@bloomberg.net.

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