Perfect 10, Beastie Boys, T-Mobile: Intellectual Property

Updated on

(Bloomberg) -- Perfect 10 Inc., a California-based publisher of adult-themed magazines, was ordered to pay a Usenet news group more than $5 million in attorney fees.

The fee award was made in a 2011 suit in which Perfect 10 accused Giganews Inc. of using its content without permission. A court determined in November 2014 that Giganews didn’t infringe Perfect 10 copyrights and it rejected claims of trademark infringement and unfair competition under California law.

U.S. District Judge Andre Birotte Jr. on March 24 ordered Perfect 10 to pay $5.21 million in attorney fees and $424,235 in litigation costs.

The judge said there was “ample evidence” that Perfect 10 pursued the litigation “for reasons inconsistent with the purpose of the Copyright Act” and that this weighed in favor of the attorney fee award.

He rejected Perfect 10’s claims that the fee requests represented a “billing frenzy” on the part of Giganews’s counsel, saying the hours billed were “largely reasonable.” He said there was little doubt that the dispute was “precisely the sort of complex, large and burdensome case that justified top-tier litigators,” and the value of Giganews choice of counsel “showed in the quality of defense counsel’s lawyering and the decisive results they obtained.”

Court documents reveal a wide range of billing rates for defense counsel. According to an appendix to the court order, Fenwick & West LLP’s Andrew P. Bridges, who joined the Mountain View, California-based firm in November 2011 from Chicago’s Winston & Strawn LLP, billed at rates of $825 to $930 an hour. Several other Fenwick partners billed $750, and some associates’ rates were as high as $690.

The case is Perfect 10 Inc. v. Giganews Inc., 2:11-cv-07098, U.S. District Court, Central District of California (Los Angeles).

Beastie Boys Persuade Court to Dismiss Copyright Claims

The Beastie Boys managed to defeat a copyright infringement claim related to alleged unauthorized sampling of others’ compositions in their 1989 album “Paul’s Boutique.”

In a March 24 order, U.S. District Judge Alison J. Nathan dismissed copyright claims brought by TufAmerica Inc., which accused the hip-hop act of infringing two recordings, “Let’s Get Small” and “Say What.”

She granted the Beastie Boys’ request to dismiss the 2012 infringement suit, finding that TufAmerica lacked standing to sue. U.S. law permits only two types of claimants in an infringement case, the actual owners of the copyright and those who have an exclusive license to the copyright, she said.

TufAmerica didn’t have an exclusive license, she said, and therefore wasn’t entitled to pursue the Beastie Boys for infringement.

The case is TufAmerica Inc. v. Diamond, 1:12-cv-03529, U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.


Google Receives U.S. Patent on External Air Bags for Vehicles

Google Inc., creator of the world’s most-used Internet search engine, received a patent on an invention that would protect pedestrians’ legs in the event of an impact with a motor vehicle.

Patent 8,985,652, which was issued to the Mountain View, California-based company March 24, covers air sacs on the outside of a vehicle that would be designed to burst on impact.

The patent notes that conventional vehicle bumpers, while providing a measure of protection to passengers, are too stiff and strong to provide cushioning to a pedestrian. The bumpers’ tendency to spring back upon impact can also cause a pedestrian to rebound from the bumper and suffer a secondary injury upon collision with a road surface.

Google said the inflated bumpers covered by the patent could be used with self-driving vehicles as well as those in which an operator is exercising control. Google showed off a prototype self-driving car in November 2014.

The company applied for the patent in September 2013 with the assistance of Chicago’s McDonnell Boehnen Hulbert & Berghoff LLP.

On Track Wins Summary Judgment Against T-Mobile in Patent Suit

In a case against T-Mobile USA Inc., a federal court in Manhattan ruled that On Track Innovations Ltd. presented enough evidence of patent infringement that the issue needn’t be tried.

On Track, of Rosh Pinna, Israel, is a developer of microprocessor-based smart-card technology. It sued Bellevue, Washington’s T-Mobile in March 2012, accusing the telecom company of infringing patent 6,045,043, which covers a kind of data transaction card.

Devices sold by T-Mobile, including the HTC Amaze 4G and the Nokia Astound, infringed the patent, the Israeli company said.

On Track asked the court for an order halting further infringement as well as money damages.

The case is On Track Innovations Ltd. v. T-Mobile USA Inc., U.S. District Court, Southern District of New York (Manhattan).

Philip Morris Ordered to Reveal Profit in Infringement Case

Philip Morris International Inc. was ordered to account for the profit it realized from infringing Imperial Tobacco Group Plc’s Canadian “Marlboro” trademark.

In a March 23 order, a federal court in Ottawa ruled that Imperial has the right to choose between being awarded damages and the profit Philip Morris reaped.

The case is related to Philip Morris’s 2006 introduction of a no-name cigarette into Canada in packaging that resembled that used for Marlboros. The Marlboro brand, which is the top-selling cigarette worldwide, belongs to Philip Morris except in Canada, where it has been licensed to Imperial or its predecessor since 1924.

A Canadian appeals court found in June 2012 that the no-name packaging infringed the trademark, and issued an order barring its use and mandating the destruction of all offending packaging, according to the court opinion.

After the opinion came down, Philip Morris began selling a new brand -- Rooftop -- in Canada, using packaging of the same design as the infringing no-name cigarettes, the court said. Imperial then made a new claim in federal court.

In its order this week, the court said that while the question of the Rooftop infringement remains “very much a live issue,” it would go ahead with a ruling that would entitle Imperial to choose the form of compensation it would seek for the earlier infringement.

The case is Philip Morris Products SA v. Marlboro Canada Ltd., t-1784-06, Federal Court, Ottawa, Ontario.

For more patent news, click here.

Trade Secrets/Industrial Espionage

Ukrainian Arrested in Russia Is Accused of Industrial Espionage

A Ukrainian was arrested on suspicion of industrial espionage related to metallurgical equipment, the Moscow Times reported.

The allegedly misappropriated trade secrets are machinery blueprints acquired from businesses around Yekaterinburg, Russia, according to the Moscow Times.

Russia’s Federal Security Service said the Ukrainian was setting up contacts with employees of Russian companies who would provide the documents in return for payment, the newspaper reported.

The suspect was arrested in February after he received a package of materials related to the production of high-tech machinery, according to the Moscow Times.

To contact the reporter on this story: Victoria Slind-Flor in San Francisco at

To contact the editors responsible for this story: Michael Hytha at Charles Carter, Andrew Dunn