Amazon, Ben & Jerry’s, Costco: Intellectual Property

Amazon.com Inc., the world’s largest online retailer, persuaded a federal court in San Francisco to dismiss a suit brought by a patent owner from Menlo Park, California.

OIP Technologies Inc. sued the Seattle-based retailer March 12, claiming its patent 7,970,713 was infringed. The patent, which was issued in June 2011, covers a method and apparatus for automatic pricing in electronic commerce. Although the application was filed in 2000, it took 11 years for the patent to be issued by the U.S. Patent and Trademark Office.

According to court papers, Amazon was in discussions with OIP’s predecessor in 2001 over acquisition of the company and the technology covered by the patent. OIP claims that instead of buying the company or taking a license to the technology, Amazon interviewed two of the company’s engineers about the technology and offered each a job.

OIP said in its complaint that the software system Amazon uses through its website infringed the patent. It asked the court for money damages to compensate for what it said was unauthorized use of its technology, together with litigation costs and attorney fees.

In his Sept. 11 order, U.S. District Judge Edward M. Chen dismissed OIP’s case. He said that the technology at issue wasn’t patentable, under U.S. patent law, because it was “directed toward the abstract idea of price optimization, which is a fundamental economic principle” that belongs in the public domain.

The case is OIP Technologies Inc., v. Amazon.com Inc. (AMZN), 3:12-cv-01233-EMC, U.S. District Court, Northern District of California (San Francisco).

For more patent news, click here.

Trademark

Porn Producer Agrees to Stop Selling ‘Ben & Cherry’s’ Films

The seller of adult films with titles and packages based on Ben & Jerry’s Homemade Inc. flavors agreed to pull them from the market.

Rodax Distributors Inc., which does business as Caballero Video, agreed Nov. 11 to a court order barring it from selling its “Ben & Cherry’s” series of 10 DVDs with titles including “Peanut Butter D-Cups” and “Boston Cream Thigh” while a trademark suit is under way.

The order requires Caballero to recall the DVDs and to destroy all products, labels and marketing materials that infringe on Ben & Jerry’s trademarks.

Ben & Jerry’s, a unit of London-based Unilever NV (UNA), sued Caballero in federal court in New York Sept. 5, claiming the DVDs and packaging violated its trademarks. The packaging featured images of naked men and women against backgrounds that copy the design of Ben & Jerry’s ice cream containers such as grazing cows and fluffy white clouds, the company said in its complaint.

U.S. District Judge Lewis Kaplan issued a temporary restraining order against Caballero on Sept. 6.

The case is Ben & Jerry’s Homemade Inc. v. Rodax Distributors Inc., 12-cv-6734, U.S. District Court, Southern District of New York (Manhattan).

Costco Sued by Stanley Furniture Over ‘MyHaven’ Trademark

Costco Wholesale Corp. (COST), the membership warehouse chain based in Issaquah, Washington, was sued for trademark infringement by a furniture manufacturer.

According to the complaint filed Sept. 10 in federal court in North Carolina, Stanley Furniture Co. accused Costco of selling furniture under a “My Haven” label. High Point, North Carolina-based Stanley says this infringes its “MyHaven” mark it has used since 2006.

Including in the complaint are photos Stanley says are of allegedly infringing packaging and furniture sold in Costco stores. The furniture company claims that the “My Haven” furniture sold at Costco has “virtually duplicated numerous non-functional features” of furniture Stanley created.

Customers are confused about the “source, sponsorship, approval or certification” of the “My Haven” items sold at Costco, Stanley claims, and are likely to assume falsely that the North Carolina company is the source.

Stanley said it has suffered harm from Costco’s actions, and asked the court to bar further infringement, and for awards of triple the profits realized from the sale of the allegedly infringing merchandise. Additionally, the North Carolina company seeks money damages, litigation costs and attorney fees.

Costco didn’t respond immediately to an e-mailed request for comment on the suit. The warehouse chain’s supplier is co- defendant with Costco.

The case is Stanley Furniture Co. (STLY) v. Whalen Furniture Manufacturing, 1:12-cv-01007-TRDS-JEP, U.S. District Court, Middle District of North Carolina.

Deccan Chronicle Puts Up Trademarks as Security in IDBI Loan

Deccan Chronicle Holdings Ltd. (DECH), a newspaper publisher in Secunderabad, India, has mortgaged the trademarks of all four of its publications, the Times of India reported.

The trademarks as associated with the “Deccan Chronicle,” “Asian Age,” “Andhra Bhoomi” and the “Financial Chronicle,” the newspaper reported.

The company entered into the loan agreement that uses the trademarks for security in March 2011, according to the Times of India.

The lender, Mumbai-based IDBI Bank Ltd. (IDBI) has the option of selling the trademarks, within 15 days of a default on a loan for which the marks are security, the newspaper reported.

Botswanans Dispute Ownership of Zebra Mark Used by Soccer Team

Botswana’s Registrar of Companies held a hearing Sept. 10 in the dispute between the registered owner of the “Zebra” trademark and the country’s national soccer team, that is nicknamed “the Zebras,” the MmegiOnline Botswanan news website reported.

Tumisang Keitseng, the trademark owner, said she created the mark to market Botswana for tourism purposes, not to promote the team, according to MmegiOnline.

The team’s logo was designed by Ludo Kemoeng, who said that while he permitted Keitseng to use the image on T-shirts and bandanas, it was created to create solidarity among supporters of the national team, MmegiOnline reported.

For more trademark news, click here.

Copyright

Disney Claims Cut-Price Kids’ Videos in U.K. Infringe Copyrights

The Walt Disney Co. (DIS) has accused a British company with infringing copyrights for several of its animated films by selling budget DVD’s of films in look-alike packaging, the U.K.’s Guardian reported.

Among the films Disney says Brightspark Production Ltd. has infringed are “Tangled,” “The Princess and the Frog,” and “Cars,” in addition to its latest title, “Brave,” the newspaper reported.

The cut-price films selling in Tesco Plc (TSCO) and J Sainsbuly Plc (SBRY)’s supermarkets for about 3 British pounds ($4.83) apiece, are “for families on a budget,” Brightspark said, and the Guardian reported.

Brightspark told the Guardian it is in discussion with Disney and that the companies are seeking a “mutually acceptable” resolution to the dispute.

“People place great trust in the quality and creativity of Disney and when it appears that another company is causing confusion among Disney consumers, we will act to protect ourselves and the consumer,” Peter Wiley, chief regional counsel for Disney in Europe, the Middle East and Africa, said today in an e-mailed statement. “Disney believes that Brightspark has demonstrated a pattern of misleading consumers with numerous releases that confuse and undermine the trust those consumers have in Disney.”

For more copyright news, click here.

Trade Secrets/Industrial Espionage

Akorn Sued by Fera Over Drug Supply Agreement, Trade Secrets

Fera Pharmaceuticals LLC, a provider of anti-infective ophthalmic medicines, sued business partner Akorn Inc. (AKRX), seeking more than $100 million in damages for contract violations and misuse of trade secrets.

Fera alleges Akorn, of Lake Forest, Illinois, in 2009 agreed to make Fera products for seven years, “failed to perform its duties,” and sought to acquire Locust Valley, New York-based Fera’s trade secrets and make at least two products itself, according to papers filed yesterday in New York state Supreme Court.

“Akorn’s violation of the Commercial Manufacturing Supply agreement caused Fera substantial economic harm,” and Akorn should pay compensatory damages, Fera said in court papers.

Fera seeks a jury trial and unspecified punitive damages.

Akorn’s chief financial officer, Tim Dick, didn’t immediately return a voice-mail message seeking comment on the lawsuit.

The case is Fera Pharmaceuticals LLC v. Akorn Inc., 653184/2012, New York state Supreme Court, County of New York (Manhattan).

IP Moves

Obama Names Legal Academic Scott Kieff to Trade Commission

President Barack Obama is nominating F. Scott Kieff to the U.S. International Trade Commission, the government agency with the power to exclude products that infringe U.S. patents, according to a June 10 statement.

Kieff is presently a professor at George Washington University and a fellow at Stanford University’s Hoover Institution, where he directs the Project on Commercializing Innovation and served on the Property Rights Task Force. He is also a faculty member at the Munich Intellectual Property Law Center at Germany’s Max Planck Institute, and previously was a faculty fellow Olin Program on Law and Economics at Harvard University.

Additionally he was a professor at the Washington University in Saint Louis School of Law with a secondary appointment in the School of Medicine’s Department of Neurological Surgery.

Kieff was a judicial clerk to Judge Giles S. Rich of the U.S. Court of Appeals for the Federal Circuit, the Washington- based case that hears appeals of patent dispute. Kieff has also served as a mediator in that court’s appellate mediation program. Additionally, he was a member of the U.S. Patent and Trademark Office’s Patent Public Advisory Committee from 2009 to 2010.

Before he became a professor, Kieff practiced at Chicago’s Jenner & Block LLP and at New York’s now defunct Pennie & Edmonds.

Kieff has an undergraduate degree from the Massachusetts Institute of Technology and a law degree from the University of Pennsylvania.

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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