Tessera, Zynga, Art & Fragrances: Intellectual Property

Tessera Technologies Inc. lost an appeals court ruling in its efforts to get new licensing revenue from makers of computer-memory chips, including Acer Inc. and Nanya Technology Corp.

The U.S. Court of Appeals for the Federal Circuit yesterday upheld a trade agency’s finding that the companies weren’t infringing a Tessera patent. The court vacated the agency’s finding of no violation of two other patents because they had already expired.

Tessera owns patents related to packaging that protects silicon wafers from damage while allowing the chips to be made smaller and faster. Patent 5,663,106, which was the subject of the case before the U.S. International Trade Commission, covers a method for encapsulating wafers without contaminating the terminals that connect the chips to a circuit board.

In its ruling yesterday, the appeals court said that the commission was correct in its December 2009 determination that the patented innovation related to a different layer of the packaging than what is used by the chipmakers.

The court also said Tessera couldn’t make a claim against products made by Elpida Memory Inc. of Tokyo because the company bought its products from firms that already had a license with Tessera.

San Jose, California-based Tessera filed complaints against companies that refused to license the technology and in December won an appeals court ruling against Qualcomm Inc., Spansion Inc. and STMicroelectronics NV.

The ITC, a quasi-judicial agency that investigates claims of unfair trade practices, said the computer-chip makers weren’t violating Tessera’s rights. Tessera had sought an import ban on certain dynamic random-access memory, or DRAM, chips that act as the main memory in computers and electronics.

Royalties and licensing fees accounted for $279.6 million, or 93 percent of the company’s 2010 revenue, Tessera said in its annual report.

The companies named in Tessera’s complaint included Acer of Taipei; Kingston Technology Co. of Fountain Valley, California; Nanya of Taoyuan, Taiwan; Powerchip Semiconductor Corp. of Hsinchu, Taiwan; Ramaxel Technology Ltd. of Hong Kong; and Smart Modular Technologies Inc. of Fremont, California.

The case is Tessera Inc. v. ITC, 10-1176, U.S. Court of Appeals, Federal Circuit (Washington). The ITC case is In the Matter of Semiconductor Chips with Minimized Chip Packaging, 337-630, U.S. International Trade Commission (Washington).

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Zynga Sued by Learning Company Over ‘Oregon Trail’ Trademark

Zynga Inc., the creator of Farmville and other games used on social media sites, was sued for trademark infringement by Houghton Mifflin Riverdeep Group Plc’s Learning Co. unit.

The suit, filed May 18 in federal court in Boston, accuses the San Francisco-based game designer of infringing “The Oregon Trail” trademark used for a Learning Co. game by that name.

According to court papers, the Learning Co.’s Oregon Trail game is used to teach elementary-school students about the migration across the Oregon Trail that took place in the 19th century. The company says it’s used by more than 60 percent of all third- through fifth-grade teachers in the U.S., and 40 percent of those who teach sixth through eighth grades.

In 2010 Zynga and the Learning Co. had discussed having the San Francisco-based company create a version of the game for Facebook Inc.’s social-media website. Discussions came to naught, according to the complaint, and Learning Co. used a different developer. That game was offered on Facebook beginning in February and has now been used by more than 1.2 million users, the company said in its pleadings.

Zynga has posted a preview on Google Inc.’s YouTube video-sharing site promoting its Oregon Trail game, according to court papers. This game, which will appeal to similar customers and is promoted through similar channels to those used by Learning Co., will confuse customers and cause them to believe erroneously that a connection exists between the two companies.

Learning Co. claims that Zynga has a reputation as a “corporate bad actor” and that it deliberately chose the name as a way of trading off the goodwill associated with the existing Oregon Trail game.

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

Learning Co. asked the court for an order barring the use of its mark, and for awards of Zynga’s profits related to the alleged infringement, money damages, attorney fees and litigation costs. Alleging the infringement is deliberate, Learning Co. asked the court to triple the damages award.

Representing Learning Co. are R. David Hosp, Mark S. Puzella, Sheryl Koval Garko and Erin M. Michael of Boston’s Goodwin Procter LLP.

The case is The Learning Co. v. Zynga Inc., 1:11-cv-10894, U.S. District Court, District of Massachusetts (Boston).

Arizona Antiques Seller Says It Doesn’t Infringe Lalique Marks

Art & Fragrance SA’s Lalique unit was sued by an Arizona seller of antiques who seeks a court declaration it doesn’t infringe the Lalique marks.

City Concession Co. of Arizona Inc. sells antique art items made by the late Rene Lalique, a French artist who lived from 1860 to 1945. He designed both jewelry and art glasss, according to court papers.

Greg Zimmerman, the owner of City Concession, operates a website rlalique.com through which it sells items made by Lalique and provides information about real and fake Lalique items offered for sale. In November 2009 City Concessions received a cease-and-desist letter from Lalique NA claiming its marks were infringed on the website.

In January 2009, City Concession said it received a second letter from Lalique NA saying that although it wouldn’t pursue infringement actions, it wanted to have further discussions about disclaimers posted on the website.

The Arizona company received a new letter from an attorney for Lalique on May 3, demanding transfer of its domain names and that the name Lalique not be used on the City Concession website, according to court papers.

City Concessions said its disclaimers make it clear it has no affiliation with the Lalique company, and that it’s necessary to use the artist’s name in order to refer to the artist and his work.

It asked the court to declare that it’s not infringing on Lalique trademarks, and that its use of the artist’s name in its domain name constitutes a fair use. Additionally, City Concession asked for awards of litigation costs and attorney fees.

City Concession is represented by Shane E. Olafson and Sean D. Garrison of Phoenix-based Lewis & Roca LLP. The case is City Concessions Company of Arizona Inc., v. Lalique North American Inc., 2:11-cv-01003-DKD, U.S. District Court, District of Arizona (Phoenix).

For more trademark news, click here.


Social Worker Sues Corrections Employees Over Copyright

A psychiatric social worker who developed a series of self-study packets for use by prison inmates sued 10 employees of the Washington State Department of Corrections for copyright infringement. The department itself isn’t a defendant in the case.

Jane E. Snyder of Washington’s Walla Walla County said she developed the work on her own time, and not within the scope of her employment by the state’s Department of Corrections. She registered her copyrights and, according to the complaint filed May 20 in federal court in Seattle, had never assigned the copyright to anyone.

The work focused on such issues as self esteem, ethical decision-making and taking responsibility. She accused the 10 employees of the corrections system of making copies or inducing others to make copies of her work and using them without authorization.

Snyder said she did grant the corrections department a limited license to use her work from March 2010 through September 2010. This license didn’t apply retroactively to the defendants she is suing and she said she didn’t waive any claims for past infringement.

No use of her work was authorized before March 2010 or after September 2010, she said in her pleadings.

She asked the court to bar further infringement and for awards of money damages, attorney fees and litigation costs.

Snyder is represented by Stuart R. Dunwoody of Seattle’s Davis Wright Tremaine LLP and Floyd E. Ivey of Kennewick, Washington.

The case is Jane E. Snyder v. Sean M. Murphy, 2:11-cv-00840-RAJ, U.S. District Court, Western District of Washington (Seattle).

Viacom Sued by Creator of ‘Ghetto Fabulous’ Concept

Viacom Inc., owner of Nickelodeon and MTV, was sued for copyright infringement by a Pennsylvania resident.

Charles S. Sims of New Kensington, Pennsylvania, created the concept for a reality TV series called “Ghetto Fabulous,” which he registered with the Writers Guild of America in February 2004, according to court papers.

He said he collaborated with television producer Allison Jordan, who submitted the concept to “various television companies, cable companies, producers, directors and actors.” It was submitted to Viacom’s VH1 channel where officials told Jordan they “Were ready to make an offer” and that they “loved” the idea, Sims said in the complaint he filed May 20 in federal court in Pittsburgh.

In April 2007, VH1 began airing its “Charm School” reality series that Sims claims is based on his idea. Sims said he never signed a release to VH1, and that he hadn’t authorized Jordan to sign one on his behalf.

He claims the VH1 program is “substantially similar, and in most cases identical” to his “Ghetto Fabulous.” The program infringes his copyright, and causes him to suffer “serious and substantial damages,” he claimed in his pleadings.

He asked the court to bar VH1’s broadcast of the allegedly infringing show, and for awards of money damages, litigation costs and attorney fees. He also seeks additional damages intended to punish the defendant for its actions.

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

Sims is unrepresented by counsel. His petition for permission to file his action without paying a filing fee was denied by the court and he was given until June 23 to pay the fee.

The case is Charles L. Sims v. Viacom Inc., 2:11-cv-00675-AJS, U.S. District Court, Western District of Pennsylvania (Pittsburgh).

For more copyright news, click here.

IP Moves

Wilson, Elser Adds Entertainment Specialist to IP Practice Group

Wilson, Elser, Moskowitz, Edelman & Dicker LLP hired William. F. Fitzgerald for its IP practice group, the New York-based firm said in a statement.

Fitzgerald, a litigator, has represented clients in the entertainment, sports, fashion, music, film, television and publishing industries. He has also represented professional athletes working in Europe and the Swedish music industry.

In addition to litigation, he has also done transactional work, negotiating deals with record, publishing, fashion, film and television companies and modeling agencies. He has also handled the court-approval process for contracts for child performers.

He has an undergraduate degree from Bethany College and a law degree from the City University of New York.

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