Monsanto, J.C. Penney, Elsevier: Intellectual Property

Monsanto Co. squares off next week against a 76-year-old Indiana farmer in a U.S. Supreme Court hearing with implications spanning industries from engineered fish to biotechnology medicines.

The court will consider whether patent owners can control the use of products that can make copies of themselves, such as soybean seeds producing plants bearing new seeds, genetically modified salmon, live vaccines, or stem cells and bacteria strains used in medical research.

The Supreme Court has scheduled arguments Feb. 19 in an appeal of a patent-infringement case by Vernon Hugh Bowman, a farmer who planted soybean seeds harvested from plants that were grown from Monsanto’s engineered seeds. The world’s biggest seed company said Bowman violated a policy forbidding farmers from saving seeds for replanting rather than buying them anew each season from Monsanto or a licensee.

Monsanto, based in St. Louis, inserts genes into crops that allow them to withstand application of the herbicide Roundup. Farmers who buy so-called Roundup Ready seeds agree to restrictions on their use.

A victory for Bowman “would potentially kill the seed industry,” said Peter Corless of Boston’s Edwards Wildman Palmer LLP, who specializes in biotechnology patents. “No one would bother doing the research. If you sold just one round of seeds, you’d never be able to price high enough to recoup the costs of development and marketing.”

Monsanto can use sales contracts, rather than patents, to prevent copying while permitting farmers to save seed for themselves, the Center for Food Safety, a Washington-based critic of genetically engineered foods, told the court in a brief.

The U.S. Court of Appeals for the Federal Circuit in September 2011 rejected Bowman’s arguments that Monsanto’s rights were exhausted once it sold the seed. The crop from the planting was a “newly infringing article,” the court ruled in upholding an $84,456.20 award against Bowman.

Monsanto is trying to claim rights over the seed when its invention is limited to the gene trait, said a group that includes the American Antitrust Institute and the National Farmers Union.

BSA - The Software Alliance, whose members include Apple Inc. and Microsoft Corp., told the court that eliminating patent protection for self-replicating seeds could facilitate software piracy. Research universities and biotechnology companies say a victory by Bowman would harm their ability to license their work in cancer research, crop protection and nutrition.

Diagnostic companies including Agilent Technologies Inc. and Life Technologies Corp. said they often sell items for research use only, which allows them to charge lower prices by preventing replication of their products. They asked the court to uphold Monsanto’s conditions.

For more patent news, click here.

Trademark

J.C. Penney Seeks Non-Infringement Declaration Over ‘Aspen’ Mark

J.C. Penney Corp., the 111-year-old retail chain, asked a federal court in Texas to declare it doesn’t infringe a trademark belonging to a Florida company.

In a complaint filed Feb. 8, Penney said it received a cease-and-desist letter from Aspen Licensing International Inc. objecting to the use of “Aspen” to describe a type of winter boot sold under Penney’s “The Original Arizona Jean Company” trademark.

The Plano, Texas-based retailer said it uses “Aspen” only in a “generic, geographic manner to reinforce the winter theme of the boots.” It doesn’t use the term “in a trademark manner,” the company said in its pleadings, adding that the word “Aspen” is not printed anywhere on the boots that are at issue.

Penney said customers haven’t been confused by its use of “Aspen” and that even after sending letters to the Florida company explaining how it uses the term, it continues to receive harassing e-mails and telephone calls.

Aspen, based in Boynton Beach, Florida, has asserted that it’s “entitled to compensation for sales using the Aspen name,” Penney said in its pleadings.

According to the database of the U.S. Patent and Trademark Office, Aspen registered “Aspen” for a wide range of uses, including floor coverings, curtains, towels and linens, water coolers, jewelry, bath products, watches, clothing, after-ski boots and luggage.

The company’s website lists companies that have taken a license to use “Aspen,” including Aspen Luggage Co., Adidas AG’s Rockport unit and Marmot Mountain LLC. Aspen was founded as a clothing maker in 1949, and phased out manufacturing to focus on licensing in the 1980s, according to the website.

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

The case is J.C. Penney Corp. v. Aspen Licensing International Inc., 4:13-cv-66, U.S. District Court, Eastern District of Texas (Sherman).

WPP Unit Responds to Trademark Suit, Claims Vendor Is Infringer

An ad agency that helped develop a campaign for used cars made by Bayerische Motoren Werke AG has responded to a trademark infringement lawsuit filed by the maker of tree-shaped auto air fresheners.

WPP Plc’s Grey Global Group said in court filings that it was told by a supplier that the tree-shaped air fresheners it supplied didn’t infringe anyone’s intellectual property rights. Grey Global said the purchase order with the vendor “explicitly incorporated” its terms with respect to IP rights.

Grey Global was sued in federal court in Manhattan Dec. 7 by Car-Freshner Corp. of Watertown, New York, the company that makes tree-shaped deodorizers for cars. In the past decade, Car- Freshner has filed more than 30 trademark-infringement suits, according to data compiled by Bloomberg.

The ad agency said in its court filing that its contract with the vendor specifically agreed to hold the ad agency and its client harmless for any claims arising out of a misrepresentation by the vendor.

Grey Global is seeking a court order holding the vendor liable for any possible trademark infringement. It also has asked for awards of attorney fees and litigation costs.

The case is Car Freshner Corp. v. Grey Global Group Inc., 1:12-cv-09824 U.S. District Court, Southern District of New York (Manhattan).

For more trademark news, click here.

Copyright

Reed Elsevier, West Win Dismissal of Copyright Infringement Suit

A federal judge in New York dismissed a copyright infringement case two attorneys brought against Newton, Massachusetts-based Reed Elsevier Inc. and West Publishing Corp. of St. Paul, Minnesota.

Edward L. White of Oklahoma City and Kenneth Elan of New York sued in February 2012, claiming that the publication of their court filings in West’s “Litigator” and Elsevier’s LexisNexis legal databases infringed their copyrights.

They objected to the commercial use the two companies made of their court filings and said they were damaged as a result. The two lawyers said they represented a class of people who had been wronged and asked the court to certify their case as a class action. Additionally, they sought money damages, and an order barring unauthorized use of their work.

In November, U.S. District Judge Jed S. Rakoff heard oral arguments on motions to dismiss the case. He filed his order dismissing the action on Feb. 11. He said that he would issue an opinion explaining the reasons for his ruling “in due course” and said the final judgment wouldn’t be entered into the court record until he issues his opinion.

The case is White V. West Publishing Corp., 1:12-cv-01340, U.S. District Court, Southern District of New York (Manhattan).

Digital-Rights Group Warns Against Copyrights on Student Work

A Massachusetts-based digital rights group has responded to news of a Maryland school district’s proposal to claim copyrights to teachers’ and students’ work.

Boston’s Fight For The Future’s Center For Rights project set up a “Don’t Copyright the Classroom” website aimed at what it calls “overzealous copyright laws” used “to attack public education through lawsuits over teachers sharing resources.”

The rights group is arguing through its website that “forcing copyright on the work that students and teachers produce will only stifle creativity and innovation in the classroom.”

The site has a link that users can click to sign an e-mail petition asking the Prince George’s County Board of Education not to “copyright your students’ and teachers’ best work.”

Sanctions Threatened in Adult-Film Copyright-Infringement Suit

A federal judge in Los Angeles issued an order threatening a lawyer representing an adult film company with possible imprisonment.

The order by U.S. District Judge Otis D. Wright II was made in a copyright-infringement case Ingenuity 13 LLC brought against an unidentified defendant. The judge said the order applied to actions by counsel in five separate cases.

He ordered Brett Langdon Gibbs, the attorney representing Ingenuity 13 and AF Holdings LLC, to appear in court March 11 to justify what the judge said were violations of rules of federal procedure and local court rules. Wright was addressing what he said was counsel’s “lack of reasonable investigation of copyright infringement activity,” “lack of reasonable investigation of actual infringer’s identity” and failure to comply with local court rules regarding discovery procedures.

He said the film companies failed to demonstrate that the alleged infringer had actually downloaded the entire copyrighted work. As far as the identification of the actual infringer is concerned, Wright said the investigation conducted by counsel was “haphazard and incomplete” and the factual analysis “cannot be characterized as anything more than a hunch.”

He suggested ways in which the actual infringer could be identified, including driving to the Internet subscriber’s home address and scanning the airwaves to see if the subscriber has Wi-Fi and has password-protected the Wi-Fi access. “An old- fashioned stakeout may be in order” to determine who was in the subscriber’s home at the time of the download, he said.

“This type of investigation required time and effort, something that would destroy plaintiff’s business model,” Wright said.

He said he previously expressed concern that in cases involving pornography, it is highly likely that the accused will immediately pay a settlement demand to avoid disclosure. “Even for the innocent, a four-digit settlement makes economic sense over fighting the lawsuit in court,” he wrote in his order.

The judge reminded counsel that under court rules, he has the power to fine or imprison attorneys for contempt of the court’s authority.

Gibbs, of Prenda Law Inc. of Mill Valley, California, didn’t respond immediately to an e-mailed request for comment on the judge’s order.

The case is Ingenuity 13 LLC v. Doe, 2:12-cv-08333, U.S. District Court, Central District of California (Los Angeles).

For more copyright news, click here.

IP Moves

Sheppard, Mullin Hires Soong for Intellectual Property Group

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

Soong, who practices both patent litigation and transactional work, previously practiced at New York’s Greenberg Traurig LLP and Chicago’s McDermott Will & Emery LLP.

He has represented clients in the software, semiconductor, Internet-related technology, biomedical device, green technology, banking and finance industries.

Soon has an undergraduate degree in electrical engineering from the University of California at Los Angeles and a law degree from the University of California at Davis.

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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