Month: April 2014

Federal Circuit Upholds Invalidity of Patent in Case against Warner and CBS

The Federal Circuit Court of Appeals has upheld a trial court’s ruling that invalidated a patent owned by CyberFone Systems LLC on the basis that it covered an abstract concept rather than a patentable invention.

CyberFone owned US Patent No. 8,019, 060, issued in 2011, for a “Telephone/transaction entry device and system for entering transaction data into databases.”  According to the patent abstract,

Transaction data is entered by the user in response to prompts in a template. The template and entered data are accumulated into data transactions which are exploded and sent to an external database servers [sic] for processing and storage. Each database server may explode the data transaction to produce ancillary records which are then stored, and/or forwards the data transaction or some or all of the ancillary records to other database servers for updating other databases associated with those database servers. The database server(s) may also return data streams for use in completing the fields in the data transaction.

Soon after the patent was issued, CyberFone sued 81 defendants for infringement.  The defendants included news and media companies such as Warner Bros., CBS, Yahoo, Twitter, and LinkedIn.

The defendants moved for summary judgment on the grounds that the patent’s claims described only an abstract idea.

The district court judge agreed, saying:

The patent, broken down into its component parts, recites steps by which data is obtained, sorted and stored.  These steps represent nothing more than a disembodied concept of data sorting and storage.

The Circuit Court found that the patent unfairly purported to give CyberFone ownership of a basic idea:

Here, the well-known concept of categorical data storage, i.e., the idea of collecting information in classified form, then separating and transmitting that information according to its classification, is an abstract idea that is not patent-eligible.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.


Supreme Court to Rule on Whether Lanham Act Governs FDA-Regulated Products

The US Supreme Court has agreed to rule on whether the federal Lanham Act governs a case involving labeling of a product regulated by the Food and Drug Administration (FDA).

POM Wonderful LLC and Coca-Cola Co. are engaged in a dispute over Coca-Cola’s labeling of a drink as “pomegranate blueberry juice.”

The drink’s label says “Pomegranate Blueberry Flavored Blend of 5 Juices,” and the first two words are in bigger letters.

POM, which makes its own pomegranate-based juice drinks, claims that Cola-Cola misled consumers into believing that the Coca-Cola drink contained mostly pomegranate and blueberry juice.

POM claims that the label is misleading because the drink actually contains only .3% pomegranate juice and .2% blueberry juice.  Apple and grape juice are 99% of the drink’s ingredients.

Coca-Cola says the drink’s label is accurate in that it tells consumers that the drink is a fruit juice blend and tastes like pomegranate and blueberry.

A district court had ruled in favor of Coca-Cola.  The Ninth Circuit Court of Appeals, based in San Francisco, found that POM might have standing to pursue state-law claims against Coca-Cola but upheld the lower court’s decision against POM on federal law grounds.

The question before the Supreme Court is whether the Ninth Circuit erred in concluding that POM, as a private entity, was not allowed to file a complaint under the Lanham Act since the juice drink was regulated by the FDA under the U.S. Food, Drug and Cosmetic Act.

The federal Lanham Act prohibits false designations of origin (including counterfeit trademarks), false descriptions, and trademark dilution.   It forbids misrepresentations about “the nature, characteristics, qualities, or geographic origin” of “goods, services, or commercial activities.”

The Ninth Circuit had said that “we must respect the FDA’s apparent decision not to impose the requirements urged by Pom.”

The case is expected to be decided by the end of June.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

US House of Representatives Considers Copyright Protection for Standards

The House Judiciary’s Subcommittee on Courts, Intellectual Property and the Internet held hearings on whether privately developed safety standards later adopted as law can be protected by copyright.

Private organization such as the American National Standards Institute (ANSI) develop voluntary consensus standards for products and services in the United States, and coordinate US standards with foreign standards so that US products can be used all over the world.

The federal government often applies these voluntary standards in laws and regulations, as do local and state governments.

Some standards organizations have sought to exercise control over their standards under copyright law, even after the standards become part of the law.

Works of the US government, as well as those of state and local governments, are excluded from copyright protection and are in the public domain.  Building codes, for example, are in the public domain and may be freely copied by anyone.

At the recent hearing, the general counsel for ANSI noted that industry groups spend time and money to create complex systems of standards and that they would be unable to continue making this investment without the ability to charge for this content.

“If the government were to take that process away,” she said, “the government would have to provide that expertise … and ultimately the taxpayers would have to pay for that.”

The founder of Public.Resource.Org, a non-profit group that favors free online access to legal codes, testified that charging for access to laws was contrary to “a fundamental principal of our democracy.”

He said, “That the law has no copyright because it’s owned by the people is a principal that has been repeatedly reaffirmed by the courts.”

California Congresspeople Darrell Issa and Zoe Lofgren expressed their concern that citizens should have free access to the laws that they must live under.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Circuit Court Revives “KC and The Sunshine Band” Copyright Case

The 11th Circuit Court of Appeals has reversed a lower court’s decision barring the heirs of a former member of KC and the Sunshine Band from bringing a copyright suit over royalties for the song “Spank.”

The case was filed in Florida by the heirs of late band member Ronnie Smith.  Smith died in 2012, and his estate claimed that Harry Wayne Casey, the founder and front man for the Sunshine Band, had failed to make royalty payments due to Smith.  The plaintiffs sought over $250,000 in damages.

The lower court had dismissed the case, on the grounds that Smith’s record label registered the copyright for him and thus that Smith (and therefor his heirs) lacked standing to sue for copyright infringement.

The Circuit Court said that Congress intended for composers of works owned by third parties to be able to sue for infringement, even if the third parties filed the copyright applications.

Under US copyright law, the author of a work such as a song may transfer some rights to a copyright owner (such as an employer or record label) while retaining a “reversionary interest” in the copyright.  Thus, an author can be the “legal” owner of a copyright while a third party can be the “beneficial” owner of the same right.

According to the 11th Circuit,

Were we to … hold otherwise, redundant registrations would be necessary for statutory standing purposes every time legal and beneficial ownership of the same exclusive right rested with two distinct parties, even if they joined together in filing suit against an alleged infringer.

The case will now go back to the lower court for a decision on whether the additional royalties are due to Smith’s estate.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Kanye West Brings Trademark Suit over Online Currency

Hip-hop artist Kanye West has filed a trademark infringement lawsuit against the operators of a digital currency called “Coinye West.”

Within hours after the complaint was filed, the defendant’s website was taken down and replaced with the message “Coinye is dead. You win, Kanye.”

Amazon, which hosted the website, was also named as a defendant, along with other named and “John Doe” parties.

The suit claims that the Coinye operators “usurped” West’s brand in order to increase the value of their virtual currency, which is similar to Bitcoin and launched on January 7.

According to the complaint, “Although defendants could have chosen any name for their cryptocurrency, they deliberately chose to trade upon the goodwill associated with Mr. West by adopting names that are admitted plays on his name.”

Coinye admitted adopted the name as an homage to West, and expressed the hope that the performer would “name drop” Coinye.

The currency’s logo originally showed a cartoon version of West’s face on a coin.  The logo was later replaced with a “half-man-half-fish hybrid who is wearing sunglasses.”

The complaint includes causes of action for trademark infringement, unfair competition, trademark dilution, cybersquatting, state law deceptive practices, and violating West’s protected name and likeness.

West’s trademark lawyer said that the removal of the website would not end the matter and that his client would continue to pursue the defendants for damages.

Under the right of publicity, also called the “personality right,” a person can control the commercial use of his or her name or image.  This right is considered a property right and can even survive death in some jurisdictions.

For example, Albert Einstein bequeathed his estate to HebrewUniversity, which licenses the right to use his image in educational materials and commercial products.

The right to prevent one’s name or likeness from being used commercially without permission is similar to a trademark right.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

In Trademark Dispute with Pinterest, Travel Company Claims “Pin” Is Generic

Pintrips, Inc., a startup travel planning company, has called Pinterest Inc. a “trademark bully” for suing over its use of the word “pin.”

Pintrips contends that “pin” is a generic verb that can’t be reserved for the exclusive use of one company.  A “generic” term is one that is merely the accepted and recognized description of a class of goods or services – for example, “Apple” brand apple juice.  Generic terms are not protected by trademark law.

Pinterest, which allows people to save and share images on a virtual bulletin board, sued Pintrips in federal court claiming that the travel company’s function allowing users to bookmark flight information using a “pin” button violated Pinterest’s trademark rights.

Pinterest’s causes of action also included false designation of origin, unfair competition, and trademark dilution.

Pintrips has asked the court to dismiss the case, saying,

This complaint is a textbook example of an industry giant using a spurious lawsuit to bully a small entity into giving up its right to use a generic, common term that merely describes a core function of its service.

According to Pintrips, just as Facebook can’t own the verb “like,” Pinterest can’t own the word “pin.”  The company pointed out that many other websites and apps use the term “pin” for similar functions.

Pinterest claims that it originated the use of the term “pin” for social media bookmarking and that the public now identifies the word “pin” with Pinterest.

Pinterest has applied for a US federal trademark for “pin” but registration is being opposed by Sprint.  The “Pin” mark has been successfully registered by the company in other countries.


Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Apple and Samsung Agree to Mediation of Patent War

Apple Inc. and Samsung Electronics have agreed to work with a mediator and try to end their high-profile patent war.  Mediation is scheduled to begin by February 19.

Company executives met to discuss settlement after US District Judge Lucy Koh ordered them to submit a proposal for settling their case before her.  They’ve already agreed on a mediator, whose identity has not been disclosed.

If the parties are unable to resolve their dispute, they face another trial in March.

During pre-trial proceedings, Apple claimed that Samsung’s smartphones and tablets infringed Apple patents on the iPhone 5.  Samsung argued that parts of Apple’s patents were invalid.

In August of 2012 a California federal court jury concluded that Samsung’s devices infringed Apple’s iPhone patents and awarded Apple more than a billion dollars in damages.  A retrial was held after the judge determined jurors had improperly calculated damages, but Samsung still owes Apple hundreds of millions of dollars.

Samsung is seeking to have damages reduced to $52.7 million.  The South Korean company also claims that the verdict was unsupported by the evidence and influenced by Apple’s patent attorneys’ “direct appeals to racial prejudice.”

Mediation is a form of alternative dispute resolution (ADR) in which the parties seek to come to a negotiated settlement with the help of a neutral third-party mediator.  Mediators are often retired judges, and may also be experienced attorneys or even laypeople.

In mediation the parties can choose a mediator who is an expert in the field of the dispute.  Although a mediator (unlike an arbitrator) cannot impose a resolution on the parties, a mediator can suggest options and creative solutions the parties may not have thought of.

Mediation is often faster and less expensive than resolving disputes via traditional litigation.  However, it is not appropriate in all cases, especially when the facts are in dispute.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

WIPO Launches “Green” Intellectual Property Marketplace

The World Intellectual Property Organization (WIPO) has launched a new online marketplace to connect buyers and sellers of “green” technologies.

The “WIPO GREEN” database and network is designed to match owners and inventors of green technologies with people or companies seeking to commercialize or license such technologies.

WIPO’s goal is to accelerate innovation and use of green technologies in order to address climate change.

Green technologies listed on the site include those dealing with:

  • Alternative energy production
  • Energy-saving technologies
  • New forms of transportation
  • More sustainable agriculture and forestry
  • Greener waste management

Those who are looking for green technologies can search the site for “assets.”

According to WIPO,

The database offers green technology providers greater visibility for their products, services and IP assets (including inventions, patents, technologies and know-how) for sale or license, helping to attract partners and finance.

Providers of green technologies can search for “needs” – including specific technologies and IP, funding, and professional services such as training.

The database is targeted at “investors, entrepreneurs and licensing managers looking to construct and execute deals in the green technology space.”

The service is free for all parties but registration is required.

The WIPO GREEN site is also a gateway to other WIPO services, such as WIPO’s IP Arbitration and MediationCenter.

WIPO is an agency of the United Nations.  It is a “global forum for intellectual property services, policy, information and cooperation” established in 1967.  It now has 186 member states.

More information on WIPO GREEN is available at

If you are the owner or developer of a green technology invention, or if you are seeking to license green technology IP rights, identifying a partner is just the first step.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Underwear versus Hummus in Trademark Dispute

A Canadian hummus maker is embroiled in a trademark dispute with an American underwear manufacturer over the use of the “Hanes” name on their respective products.

Yohannes Petros established his food business in Saskatoon, Saskatchewan, four and a half years ago.  He has four employees.

Hanesbrands, Inc. is based in Winston-Salem, North Carolina and is a publicly traded company with 50,000 employees worldwide.

Hanesbrands has threatened to sue Petros for violating the Hanes trademark.  The US company has also demanded that Petros destroy his stock of allegedly infringing hummus.

Hanesbrands sent Petros a “cease and desist” letter objecting to his use of the mark “Hanes Hummus” in his application to register the name in Canada and the United States:

The mark HANES HUMMUS is essentially identical and confusingly similar to the HANES mark.  Your … mark incorporates the distinctive HANES mark in its entirety and the mere addition of the generic wording HUMMUS does not distinguish the marks.

The underwear company asked Petros to withdraw his application for the trademark.

Petros told reporters that the name “Hanes” comes from his nickname, which is short for “Yohannes.”

His trademark attorney responded to Hanesbrands with 36 pages of case law opposing the underwear company’s contention that consumers would confuse the hummus maker with the underwear brand:

I was not aware that HBI [Hanesbrands Inc.] was in the business of manufacturing and selling hummus. In fact, I am confident that HBI is not in the food production business at all, let alone the production of fine and tasty hummus of the type manufactured and sold by Hanes Hummus.

Petros said that his customers had never confused his product with Hanes underwear.  “I was not aware that HBI’s T-shirts were edible, made with chick peas, lemon or garlic,” his trademark lawyer added.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson

China’s New Trademark Law Takes Effect in May

China’s new trademark law, which takes effect May 1, 2014, is designed to discourage the trademark hijacking and piracy that have caused headaches for foreign companies attempting to do business in China.

In July of 2012, Apple paid a $60 million settlement to the Chinese company Proview Technology to acquire the right to use the iPad name in the Chinese market.  Proview had registered the name in China in the year 2000.  Apple also lost a claim that Proview was infringing Apple’s trademark when Proview sold its own “iPad” product.

Under the current version of the Chinese trademark law, foreign companies are subject to China’s “first to file” trademark system.  This system allows “trademark hijacking” by applicants who file Chinese trademarks that are similar or identical to trademarks used abroad.

These trademark applications are routinely granted.  The Chinese Trademark Office does not require applicants to establish that they have either used or intend to use the marks on actual products.

Foreign companies are then forced to buy back “their” trademarks when they wish to enter the Chinese market.  In addition to Apple, John Lewis, Sainsbury’s, and Top Shop are among the companies which paid to obtain the rights to use their marks in China.

Under the current law, a trademark registration made in bad faith or for a well-known mark may be cancelled.  However, the cancellation process is cumbersome and expensive.

Under the new law, trademarks must be registered and used “by the principle of honesty and credibility.”

A trademark application will be denied if the mark is identical to another party’s mark that has been used (but not yet registered) in China in connection with the same or similar products if:

  • The trademark applicant has a contractual or other business relationship with the other party and knows or should have known of the other party’s prior use of the mark;  and
  • The other party challenges the application.

The new trademark law also expands the list of actions that will constitute trademark infringement.  For example, it will be a violation of trademark law if someone purposefully facilitates or assists trademark infringement activities. This assistance can include transporting counterfeit goods.

Civil damages for trademark infringement have also been increased.  For “malicious” infringement, the trademark owner will be able to recover up to three times the owner’s loss or a reasonable royalty.  Trademark owners will also be able to recover their reasonable enforcement costs including trademark attorney’s fees.  Where it is difficult to determine the amount of the trademark owner’s loss, a Chinese court will be able to award compensation of up to three million Chinese Yuan (RMB) (about US$500,000).

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.