John Wiley, AZ Electronic, Cole: Intellectual Property

John Wiley & Sons Ltd. (JW/A), a publisher of technical and scientific journals, sued two law firms for copyright infringement.

The suits, filed in federal court in Chicago and Minnesota, claim the firms infringed the copyrights to articles from Wiley’s technical publications. The infringement occurred, according to the complaints, because the firms made copies of these articles without authorization and submitted them to the U.S. Patent and Trademark Office.

Patent applicants submit examples of what is known as “prior art” as a means to demonstrate the invention for which patent protection is sought is truly innovative. Wiley says this “mere multiplication of copies for the for-profit business purposes” of the law firms “is not privileged under the law.”

The law firms are handling the patent applications “for the profit of themselves and their clients” and are using the copyright-protected content “as part of that profit-making activity without due compensation” to the publisher, Wiley claims.

Wiley says it publishes, sells and distributes its content and licenses it “for precisely these types of use.” It says that even though it is “ready, willing and able” to license the content to the law firms, none of them have acquired the necessary licenses.

The firms that were sued are Schwegman Lundberg & Woessner PA of Minneapolis, and Chicago’s McDonnell Boehnen Hulbert & Berghoff LLP.

Mary Hirsch, spokeswoman for Schwegman Lundberg, said in an e-mailed statement March 9 that her firm “is declining to comment on the merits of the case until it has fully assessed the lawsuit, but is grateful for the overwhelming support it has received from the intellectual property community.”

Marcus J. Thymian of McDonnell Boehnen said in a telephone interview that his firm “is currently investigating the claims asserted in the complaint. We are aware of a wider range of support from the legal and technical communities, substantiating the position that copies made for the purpose of submitting references to the patent office constitutes a fair use.”

The case against the Minnesota firm is John Wiley & Sons Ltd. v. Schwegman Lundberg & Woessner, 0:12-cv-00528-RHK-JJK, U.S. District Court, District of Minnesota. The case against the Chicago firm is John Wiley & Sons Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, 1:12-cv-01446, U.S. District Court, Northern District of Illinois (Chicago).

For more copyright news, click here.

Patents

AZ Electronic Units File Korean Patent Suit Against UP Chemical

AZ Electronic Materials SA, a Luxembourg-based maker of specialty chemical materials for the electronics industry, sued Korea’s UP Chemical Company Ltd. for patent infringement.

The suit, filed in Korean courts by two AZ units, related to patents covering the perhydropolysilazane dielectric technology used in the manufacture of semiconductors.

The complaint was filed in Seoul Central district Court, AZ said in a statement, alleging that UP Chemical infringes Korean patent 10-734301.

AZ asked the court for money damages and is seeking an order barring future infringement, according to the company statement.

U.K. Inventor Burns Patent, Says He Can’t Halt Theft of His IP

An inventor from Wales held a public burning of his U.K. patent for color printing technology, saying it had become worthless as big companies used his technology without permission, having no fear of consequences for infringing a small inventor’s intellectual property, the U.K.’s Telegraph reported.

Michael Wilcox told the Telegraph that in addition to the patent he destroyed, he is putting his other pending projects into the garbage because “I know they will just be taken.”

The U.K.’s SME Innovation Alliance, which supports small and medium-sized technology ventures, has learned that many of its members are halting projects on concern they can’t protect their innovations from infringement, according to the Telegraph.

Members of the group now expect to reap benefits from their inventions for only a short period before they’re infringed by larger companies, John Mitchell, who heads the organization, told the Telegraph.

For more patent news, click here.

Trademark

Rocket Lawyer Wants Ruling It Doesn’t Infringe Pocket Lawyer

Rocket Lawyer Inc., a provider of referral services and cooperative advertising services for lawyers, asked a federal court in San Francisco to declare it’s not infringing trademarks belonging to a company in Southern California.

According to the complaint filed March 8, Pocket Lawyer Corp. of Northridge, California, filed opposition to Rocket Lawyer’s attempt to register its marks with the U.S. Patent and Trademark Office.

Rocket Lawyer filed its trademark application in May 2010, according to the database of the U.S. Patent and Trademark Office. Pocket Lawyer filed its first opposition in June 2011, followed by a second in July.

The San Francisco-based company said it has also received a cease-and-desist letter from Pocket Lawyer, demanding it cease from all use of “Rocket Lawyer” and withdraw its pending trademark application.

Rocket Lawyer asked the court to declare it’s not infringing Pocket Lawyer’s trademarks, and it seeks awards of attorney fees and litigation costs.

The company is represented by Lindsey B. Furtado and Lawrence G. Townsend of San Francisco’s Owen Wickersham & Erickson PC.

Pocket Lawyer, a provider of pre-paid legal services, didn’t respond immediately to an e-mailed request for comment.

The case is Rocket Lawyer Inc., v. Pocket Lawyer Corp., 3:12-cv-01155-JCS, U.S. District Court, Northern District of California (San Francisco).

Cole Sued by Breast Buddies Founders Over Double Ribbon Trademark

Kenneth Cole Productions Inc., the New York-based footwear and accessories company, was sued for trademark infringement by two New Jersey women who run websites for Breast Buddies, an organization aimed at promoting women’s health awareness.

According to the complaint filed March 7 in federal court in Newark, New Jersey, Cole is accused of using a double ribbon design that infringes on a “double ribbon” design the two women registered as a trademark in 2006 for Breast Buddies.

They said they discovered in November that Cole was using double ribbons on its www.awearness.com website, and was offering pins in that shape. These aren’t used by permission, according to court papers.

Included in the case filing is a printout from the Cole website showing the pin offered for sale. According to the Cole site, 10 percent of the profits from the sale of the $5 pin will go to support the American Foundation for AIDS Research, and MTV’s “Staying Alive” campaign.

The two women say they are damaged by Cole’s actions that the New York company hasn’t quit selling and promoting products with the double ribbon design despite being sent a cease-and-desist notice.

They asked the court to order Cole to quit infringing the trademark and for awards of money damages, attorney fees and litigation costs.

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

The case is Cynthia Meehan V. Kenneth Cole Productions Inc., 2:12-cv-01433-SRC-MAS, U.S. District Court, District of New Jersey (Newark).

For more trademark news, click here.

IP Moves

Sheppard Mullin Hires Patent Litigator From Sidley Austin

Sheppard Mullin Richter & Hampton LLP hired Edward V. Anderson for its IP practice group, the Los Angeles-based firm said in a statement.

Anderson, a patent litigator, joins from Chicago’s Sidley & Austin LLP. Before that, he practiced at San Jose, California’s now-defunct Skjerven Morrill LLP.

He has represented clients in the computer, semiconductor, telecommunications and software industries in disputes in federal trial and appellate courts and before the U.S. International Trade Commission.

Anderson has an undergraduate degree and a law degree from Stanford 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: Michael Hytha at mhytha@bloomberg.net.

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