BlackBerry, Disney, VF, Vivendi: Intellectual Property

July 19 (Bloomberg) -- BlackBerry Ltd., the Canadian maker of wireless communication devices, didn’t infringe patents belonging to a Michigan company, a federal appeals court ruled.

St. Clair Intellectual Property Consultants Inc. sued BlackBerry, formerly known as Research In Motion Ltd., in federal court in Delaware in June 2008, alleging that four patents related to digital cameras in mobile telephones were infringed.

The court entered a judgment against St. Clair in September 2012. St. Clair appealed.

The U.S. Court of Appeals for the Federal Circuit affirmed the trial court’s ruling in a judgment delivered without comment.

The appellate case is St. Clair Intellectual Property v. Matsushita Electrical Industries, 12-1652, U.S. Court of Appeals for the Federal Circuit. The lower court case is St. Clair Intellectual Property v. Research In Motion Ltd.,08-cv-00371S, U.S. District Court, District of Delaware (Wilmington).

Disney’s Marvel Off the Hook for Spiderman Toy Patent Royalties

Walt Disney Co.’s Marvel Enterprises unit didn’t have to continue pay royalties to an Arizona inventor after his patent expired, a federal appeals court ruled.

Stephen Kimble, whose patent 5,072,856 covers a toy web-shooting glove, sued Marvel for patent infringement in 1997, claiming that the Spiderman Web Blaster infringed his patent. In 2001, the parties settled that dispute, granting Kimble an initial cash payment and a percentage on future sales.

In 2006, Marvel entered into an agreement with toymaker Hasbro Inc. to produce the toy. Kimble and Marvel then disputed the issue of further payment, and he filed another suit. The court found that under his royalty agreement with Marvel, the payments would stop when the patent expired.

Kimble appealed that ruling, claiming the agreement covered both patent and non-patent rights and that his compensation should continue. The appeals court in a July 16 ruling said that a license that covers both patent and non-patent rights is unenforceable after the patent expires unless the agreement provided for a discount for the non-patent rights.

In the absence of a discount, the court said the post-expiration royalty payments were “an improper extension of the patent monopoly.”

The case is Kimble v. Marvel Enterprises Inc., 11-15605, U.S. Court of Appeals for the Ninth Circuit (San Francisco).

For more patent news, click here.


Trademark Case Against VF’s Vans Can Go Ahead, Court Rules

VF Corp.’s Vans unit failed to persuade a U.S. court to dismiss a trademark lawsuit brought by Airwair International Ltd., a U.K.-based shoe manufacturer.

Airwair sued in federal court in San Jose, California, in September claiming that Van’s Gibson line of shoes infringed trademarks and trade dress related to shoe design.

Vans asked the court to dismiss the case in December.

In a July 17 order, U.S. District Judge Edward J. Davila said that Airwair’s complaint satisfied the requirements for the case to go forward.

The case is Airwair International Ltd. v. Vans Inc., 12-cv-05060, U.D. District Court, Northern District of California (San Jose).

For more trademark news, click here.


Diller’s Vimeo Seeks to End Vivendi Music Copyright Lawsuit

Vimeo, the video-sharing website owned by Barry Diller’s IAC/InterActiveCorp, said federal law protects it against a Vivendi SA copyright lawsuit over music that includes recordings by the Beatles and the Beach Boys.

U.S. District Judge Ronnie Abrams heard arguments yesterday on Vimeo’s motion to throw out the case. She said at the end of the three-hour hearing in Manhattan that she would rule later.

Vivendi labels including Capitol Records sued Vimeo in 2009 claiming that the website “induces and encourages its users to upload” copyrighted videos and songs it wasn’t authorized to display. The songs include the Beatles’ “Let It Be,” the Beach Boys’ “Surfin’ USA” and Radiohead’s “High and Dry.” Users post homemade videos in which they lip-synch to the infringed songs, the labels said in the complaint.

Vimeo, based in New York, denied infringing copyrights and said that it’s protected by the safe-harbor provision of the Digital Millennium Copyright Act, or DMCA. The safe-harbor rule applies if a site removes infringing material when informed about it.

The company, which has more than 14 million registered users, gets its revenue from subscription fees and advertising.

The labels said that Vimeo can’t be protected by law because it knew that the uploaded videos contained unlicensed copyrighted material and that it benefited financially from them.

The labels asked the judge to deny Vimeo’s motion and grant them partial summary judgment. If Abrams rejects the motions, the case may go to trial by jury.

The litigation had been on hold pending a ruling in a similar case, in which Viacom Inc. sued Google Inc.’s YouTube for displaying Viacom’s copyrighted television and movie content on the web without authorization. The Second Circuit Court of Appeals reversed a lower-court ruling in favor of YouTube and sent the case back to district court.

U.S. District Judge Louis Stanton then dismissed Viacom’s suit in April, saying YouTube was protected from liability by the Copyright Act’s safe-harbor provision.

The case is Capitol Records LLC v. Vimeo LLC, 1:09-cv-10101, U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.

Trade Secrets/Industrial Espionage

Outdated Mail Rule Helps Pangang, Kolon Elude U.S. Charges

China’s Pangang Group Co. and Korea’s Kolon Industries Inc. have eluded U.S. criminal charges of trade-secret theft for months. Unlike fugitive security contractor Edward Snowden, they aren’t hiding from authorities.

Pangang and Kolon can’t be forced yet to face the accusations in court because federal rules dating to the 1940s require prosecutors to issue a summons the old-fashioned way -- by mailing it to a U.S. address. The companies said they don’t have offices, employees or agents in the U.S. and can’t be served. Federal judges in California and Virginia have mostly agreed.

Prosecutors must file papers this week telling a judge in San Francisco how they will proceed with Pangang while a judge in Richmond, Virginia, is scheduled to hear arguments in Kolon’s case.

The issue threatens to derail the case against Pangang. The company was charged in San Francisco last year with conspiring to steal secrets from DuPont Co. about titanium dioxide, a white pigment used in paint, plastics and paper. Kolon and five of its executives were charged in October with stealing trade secrets from DuPont related to the manufacture of Kevlar, the anti-ballistic fiber used in police and military gear.

Prosecutors are required to serve summonses on defendants by delivering copies to officers or legal representatives and mailing copies to the defendants’ last known U.S. address, according to federal rules of criminal procedure.

The Justice Department, saying the procedures have fallen behind the “new reality” of a global economy and electronic communications, recommended the committee allow the serving of summonses outside the U.S. by agreed-upon delivery methods with foreign jurisdictions, according to an October letter from then-Assistant Attorney General Lanny Breuer to the committee.

The case is U.S. v. Kolon Industries, 12-cr-00137, U.S. District Court, Eastern District of Virginia (Richmond). The Pangang case is U.S. v. Liew, 11-cr-00573, U.S. District Court, Northern District of California (San Francisco).

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at

To contact the editor responsible for this story: Michael Hytha at

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