Sony, War Memorial, DMCA, Lubin: Intellectual Property

Sept. 23 (Bloomberg) -- Sony Corp. won a federal judge’s ruling that it doesn’t infringe a patent owned by defense contractor L-3 Communications Holdings Inc. for image sensors used in video cameras and security systems.

L-3 filed the suit in federal court in Delaware in August 2011, seeking a jury trial, unspecified damages and a permanent injunction against infringing products.

In a Sept. 19 opinion, U.S. District Judge Richard Andrews said Tokyo-based Sony didn’t infringe patent 5,541,654. He said the Sony also didn’t infringe under patent law’s doctrine of equivalents, which finds infringement in an item that operates the same way as a patent describes.

The case is L-3 Communications Corp. v. Sony Corp., 1:10-cv-00734-RGA, U.S. District Court, District of Delaware (Wilmington).

WIPO Says It Added China’s Patent Collection to Patent Database

The World Intellectual Property Organization, a United Nations agency, has expanded its patent database with the addition of China’s national patent collection, the Geneva-based organization said in a Sept. 20 statement.

About 3 million documents from China were added, bringing the database to about 32.5 million documents. Patent applications made under the international Patent Cooperation Treaty are available in full-text format on the day of publication, and may be searched in multiple languages, WIPO said.

The database included English-language bibliography data for Chinese patents and patent applications from 1985 to 1995, and from 1996 onwards in both English and Chinese.

WIPO said Chinese residents filed 415,829 applications in 2011, the most of any country in the world.

For more patent news, click here.


Korean Memorial Sculptor Awarded $685,000 Over Stamp Image

The sculptor who created figures of weighed down soldiers at the Korean War Veterans Memorial in Washington will receive almost $685,000 in royalties for the unauthorized use of the image, a federal court ruled yesterday.

Frank Gaylord, who designed the stainless-steel models known as The Column, had won a copyright-infringement case against the U.S. Postal Service for its use of the sculptures on a stamp issued in 2002 marking the 50th anniversary of the armistice. The service had paid $1,500 for rights to a photograph of the soldiers covered in snow.

Gaylord appealed after he was awarded $5,000 for the use of his copyright. A federal appeals court said that award didn’t take into consideration how much Gaylord would have demanded in negotiations before the image was used without his permission.

The U.S. Court of Appeals for the Federal Circuit said in May 2012 that the lower court should consider the outcome of a hypothetical negotiation over total sales, including to collectors and commercial merchandise.

In its ruling yesterday, the lower court looked at the value of the unused stamps using this image that were purchased by collectors and commercial merchandise sold by the U.S. Postal Service that featured an image of the stamp. Gaylord didn’t include the value of stamps actually used to send mail, and the court didn’t award any damages in that category.

The Postal Service derived an estimated $5.4 million from the stamps that were collected and not used as postage, and almost $331,000 from the sales of related merchandise, according to the court ruling.

The court applied a 10 percent royalty rate to these amounts and awarded Gaylord $540,000 in damages for stamps bought by collectors, and $33,092 for merchandise using the stamp’s image. He was also awarded pre-judgment interest of $111,752, bringing his total award to $644,844.

The case is Frank Gaylord v. U.S., 1:06-cv-00539-TCW, U.S. Court of Federal Claims (Washington).

Home Birth Dispute Brings in MPAA and EFF Over DMCA Request

A dispute between a Massachusetts physician and an Illinois doula over the safety of home birth brought the Electronic Frontier Foundation in on one side, and the Motion Picture Association of America on the other.

The doula -- a non-medical childbirth assistant -- failed in her request that the court dismiss the copyright suit.

Dr. Amy Tuteur is the author of “The Skeptical OB,” a blog that opposes and warns of the dangers of home birth. Gina Crosley-Corcoran, the doula, is the author of the blog “The Feminist Breeder,” and a proponent of so-called natural birth.

The two bloggers have feuded over the safety of home birth, and in December, Crosley-Corcoran posted a photograph of herself giving the middle finger and stating she posted it to give Tuteur “something else to go back to her blog and obsess about.”

Tuteur copied the photo and posted it on her own blog without Crosley-Corcoran’s permission. The doula filed a takedown request to Tuteur’s Internet service provider, claiming her copyright on the photo was infringed. Tuteur filed a counter notice protesting the infringement claim.

The Internet service provider told both parties it was up to them to pursue legal action. Tuteur shifted her blog to a new service provider and again used the photo. Crosley-Corcoran sent a second takedown notice and Tuteur submitted a counter notice.

Lawyers for Crosley-Corcoran then attempted unsuccessfully to broker a settlement. Instead, Tuteur filed suit in federal court in Massachusetts in January, accusing the doula of making misrepresentations and interfering with her business relationships with her Internet service providers.

Crosley-Corcoran sought to have the case dismissed. The Motion Picture Association of America came into the case as a friend of the court supporting Crosley-Corcoran while San Francisco’s Electronic Frontier Foundation and the Digital Medial Law Project from Harvard University filed briefs on Tuteur’s behalf.

The organizations filing court briefs addressed the issue of the takedown notice, and the proper test of what is required of a copyright owner before the filing of such a request.

U.S. District Judge Richard G. Stearns said in his Sept. 10 ruling that Tuteur properly pleaded that Crosley-Corcoran made “a knowing and material misrepresentation” in her takedown requests and refused to dismiss the suit.

The judge also rejected Tuteur’s argument that the copyright owner needed to go beyond belief that infringement occurred in order to file a DMCA complaint.

The case is Amy Tuteur M.D. v. Gina Crosley-Corcoran, 1:13-cv-10159-RGS, U.S. District Court, District of Massachusetts (Boston).

For more copyright news, click here.


‘Undie Run’ Renamed, Reset for Same Time as Church’s Conference

A conflict over the trademark for a clothing brand means delegates to the annual conference of the Church of Jesus Christ of Latter-day Saints in Salt Lake City will be surrounded by thousands of runners in their underwear around the conference site on Oct. 6, according to the Salt Lake Tribune.

Organizers of the Undie Run ran into opposition from San Diego’s The Dew LLC, which uses the Undie Run name with events to promote its products and raise funds for charity, the newspaper reported.

Initially race organizers called off the event, which was set for Sept. 22. They renamed it the Utah Underwear Run and scheduled it the same weekend as the church’s conference, according to the Tribune.

Nate Porter, founder of the event, said it couldn’t be postponed until later in October because it would be too cold for runners clad only in their underwear, the newspaper reported.

Lubin’s Former Subsidiary Agrees to Surrender Trademarked Goods

A Georgia company organized as a subsidiary of a 215-year-old French perfume house has agreed to surrender all goods and promotional materials bearing the French company’s trademarks.

Lubin North America Inc. was sued in federal court in Atlanta Aug. 15 for trademark infringement in August by Lubin SARL, of Paris. According to court papers, the French company was founded in 1798, and created fragrances that were the favorites of the Empress Josephine.

Atlanta-based Lubin North America was accused of using the marks without authorization following the termination of its license in March 2013. The French company said it had the exclusive worldwide rights to use the Lubin trademarks and to sue for infringement.

Investigators for the French company found Lubin-marked products continued to be sold and that the company’s trademarks continued to be visible in images of the defendants’ store posted on Facebook Inc.’s social media site.

The French company demanded an end to the alleged infringement and damages in excess of $2.5 million.

Under an agreement filed with the court Sept. 9, the defendants agreed to quit using the Lubin marks in any way, and to surrender all remaining Lubin inventory and promotional materials at its stores in Tennessee and Georgia, and to provide an accounting of all sales of any Lubin-branded products and transactions entered into by Lubin North America. The agreement made no mention of money damages.

The case is Lubin SARL v. Lubin North America Inc., 1:13-cv-02696-AT, U.S. District Court, Northern District of Georgia (Atlanta).

For more trademark news, click here.

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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