Property, intangible

a blog about ownership of intellectual property rights and its licensing

  • Thanks to All

    Thanks to everyone who responded on the ice cream survey. I had 207 responses, 200 US and 7 foreign. I’ll be posting the results in the next day or two.

    © 2008 Pamela Chestek

  • “I’ll be a Monkey’s Uncle” Genericism Survey

    I read a case recently that made me wonder whether my personal reaction about the genericism of a phrase was right or wrong, so I decided I’d see what others think. I prepared a Teflon-type survey on SurveyMonkey for you to take; send your friends to take it too. It should take you no more than five minutes (shorter if you type fast or ignore the one question that requires typing). When I’ve collected enough responses I’ll be blogging the results, along with my thoughts on the case that provoked the survey.

    The survey collects no personal information other than an age range and a U.S./non-U.S. selection. The survey is based on U.S. trademarks, but I’m happy to see what non-U.S. respondents have to say too. If you recognize what case inspired my survey and know the outcome, please answer the question with whatever your impression was before reading the case.

    Just a disclaimer that it’s a survey for fun and won’t be reliable for anything other than seeing who’s the monkey’s uncle.

    Click here to take survey.

    © 2008 Pamela Chestek

  • Bratz Post-Verdict Spinning

    You may have seen that there’s some dispute in the Mattel v. MGA case over the amount of the verdict. Mattel claims it’s $100 million and MGA claims it’s either $20 million or $40 million, saying some of the awards in the verdict form are duplicative. I put the verdict form here, so you can see for yourself. I’m at a loss for how MGA might think the award was $20 million, although I can see how it can make an argument for $40 million.

    But apparently when Juror 7 heard MGA claiming $40 million she was shocked and emailed the court to confirm that the verdict was meant to be $100 million. Here’s more of the story in a document Mattel filed with the court, asking that it recall the jurors to confirm the correctness of the verdict.

    Read this document on Scribd: Bratz Statement on verdict amount

    © 2008 Pamela Chestek

  • Heavy Hitting in Las Vegas

    The Law Vegas Trademark Attorney gives us background on a newly-filed dispute over the mark HEAVY HITTER(S). It’s an interesting situation – it looks like an advertising agency registered the mark HEAVY HITTER (although the certificate says HEAVY HITTERS) for legal services and relied on licensees’ use to support its registration. Glen Lerner, of Law Vegas, touts himself as “The Heavy Hitter” and there may have been a contractual relationship between the agency and Glen Lerner – indeed, a specimen showing Mr. Lerner’s use may be what was filed with the agency’s Statement of Use. Mr. Lerner has now filed a declaratory judgment action against the agency claiming that the agency doesn’t own the mark. Perhaps he was inspired by this case.

    © 2008 Pamela Chestek

  • NY Times on Revival of Brands

    There’s an interesting NYT article that attributes the resurgence of revived brands (blogged here) to tougher economic times – it’s cheaper to revive than build from scratch.

    © 2008 Pamela Chestek

  • Aerotel Visits the United States

    The name “Aerotel” is fairly well known in the UK, at least among software companies. The UK doctrine on patentability of business methods and software is known as Aerotel/Macrossan, after the pair of cases decided in Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan’s application [2006] EWCA 1371 (Civ) (2006-10-27). The Aerotel patent had been revoked by the High Court, but in this decision it was reinstated by the Court of Appeals. This past May, the patent was revoked by the High Court again on the basis of obviousness and excluded subject matter. Perhaps one of our UK friends can tell us how it is that the Court of Appeals can hold that the patent stated patentable subject matter, but the lower court had the freedom to disagree. Blog posts on Aerotel/Macrossan and the ultimate revocation can be found here (reporting original decision and subsequent application of the standard), here and here.

    U.S. Patent No. 4,706,275 is a U.S. patent similar to Aerotel’s UK Patent No. 2 171 877. The subject matter of the patents is a telephone system enabling prepayment for telephone calls; all list Zvi Kamil as the inventor. Feel free to ignore the following if you are not a patent maven: the UK patent was filed January 13, 1986 and claims priority to two Israeli patents filed on January 13, 1985 and November 10, 1985. The U.S. patent claims no priority, and was filed on November 13, 1985.

    In the U.S. litigation, there was a challenge to Aerotel’s ownership of the patent. The inventor Kamil had assigned his rights in the patent to plaintiff Aerotel, Ltd.; this ownership is shown on the face of the patent. The defendants challenged Aerotel’s ownership, claiming that Kamil had no patent rights to assign to Aerotel because the patent was owned by one of two different Israeli companies with which Mr. Kamil had previously been associated.

    A claim that Kamil was obliged under an employment agreement to turn over his invention was quickly brushed off. The defendants could not assert the equitable rights of a third party arising from a potential breach of Kamil’s employment contract in their own defense.

    But the defendants might have better luck if they could prove that one of the companies was the legal owner as a result of the operation of Israeli law. The first potential owner was Elscint, a medical imaging company. Kamil was the plant manager of the radiological division and later the chief developer of MRIs; there was also testimony that he was not involved in any way in telecommunications and/or telephony. Although there was some disagreement about the period of Kamil’s employment, it didn’t matter because, applying Israeli law, the patented invention was not made “in consequence of” Kamil’s service to his employer and thus Elscint not the owner of the patent.

    The second potential owner was Beta, a company that Kamil co-owned before his employment with Elscint began in 1978. Kamil drafted a document in 1977 describing a “Public Pay Telephone Without Coins or Tokens,” which the defendants claimed was the conception of the ‘877 patent, and therefore the invention was owned by Beta. The court assumed arguendo that the document indeed was conception of the invention, but credited the testimony of the co-owners of Beta that the invention was not “arrived at in consequence of” Kamil’s work for Beta.

    Kamil therefore the owner of the patent, assigned it to Aerotel and Aerotel had standing for the suit.

    On a separate motion, plaintiffs Aerotel USA Inc. and Aerotel USA Ltd. were dismissed from the case for lack of standing. The companies had the right to license the patent, including in the case of USA Ltd. the right to institute legal proceedings, but neither company had sufficient ownership interest in the patent to provide them with standing to sue.

    Aerotel, Ltd. v. Radiant Telecom Inc., 04 Civ. 10292, 2008 U.S. Dist. LEXIS 60770 (S.D.N.Y. Aug. 8, 2008).

    © 2008 Pamela Chestek

  • Bratz Verdict!

    The verdict is in, but not without some confusion. Reuters reported a verdict for Mattel for $100 million, AP says $40 million. I suppose either way it’s a lot of money.

    Here’s the horse’s mouth, see for yourself. For all parties combined it could be $100,031,500, plus a little interest: $66,031,500 from MGA, $33,000,000 from CEO Issac Larian, and $1,000,000 from MGA Hong Kong. Of the $100 million, only $10 million was for copyright infringement; the rest was for tort claims. No willful infringement, and no punitive damages.

    But Reuters is also reporting that MGA is claiming a mistake, that the three identical awards for intentional interference with contractual relations, aiding and abetting breach of fiduciary duty, and aiding and abetting breach of the duty of loyalty were duplicative, not additive.

    The verdict form also shows there was fraudulent concealment. No questions on damages for it on the verdict form, so I suppose we’ll see more on that later. Even after the award is straightened out it looks like we’re still far from over; the docket shows both parties have pending motions for JMOL (docket numbers 4264 and 4265). Then there’s the matter of injunctive relief. And the appeals.

    © 2008 Pamela Chestek

  • Steamboat Willie as Public Domain

    The LA Times recently ran a story about whether some early “Steamboat Willie” cartoons are still protected by copyright. It’s not new news; in 2003, inspired by an internet article, Douglas Hedenkamp wrote a law review article on the subject and concluded they are not. But an entertaining article for both the gist of the copyright story and the business reality of what it means.

    The law review article is Douglas A. Hedenkamp, Free Mickey Mouse: Copyright Notice, Derivative Works, and the Copyright Act of 1909,

    2 Va. Sports & Ent. L.J. 254 (2003).

    © 2008 Pamela Chestek

  • Hint from the Bratz Jury

    Reuters is reporting that the Mattel v. MGA Entertainment jurors asked “Can we find that the first generation dolls violate copyright but the second generation do not?”

  • The NFL is One Entity – For Trademark Licensing, Anyway

    An appropriate decision for football season; the Court of Appeals for the 7th Circuit has affirmed, in an antitrust case, that the exclusive licensing of all professional football teams marks to one vendor is not a violation of the Sherman Act.

    NFL Properties is an unincorporated organization of 32 separately owned teams. Each team owns it own trademarks – team names, logos, slogans, and so on. In 1963 the NFL created NFL Properties, Inc., a corporate entity

    charged with (1) developing, licensing, and marketing the intellectual property the teams owned, such as their logos, trademarks, and other indicia; and (2) “conduct[ing] and engag[ing] in advertising campaigns and promotional ventures on behalf of the NFL and [its] member teams.”

    (Brackets in original). NFL Properties is therefore the legal entity that licenses the trademarks of all the teams.

    NFL Properties used to grant multiple nonexclusive licenses to a number of vendors, but in 2000 the teams authorized NFL Properties to enter into an exclusive license for headwear with one vendor. Reebok became that vendor, with a 10 year license. American Needle, an ousted vendor, sued the teams, NFL Properties, and Reebok under section 1 of the Sherman Act, claiming that the group licensing of the separately owned team trademark properties was a contract, combination or conspiracy in restraint of trade.

    Professional sports leagues are not strangers to antitrust claims. The court of appeals noted:

    We have yet to render a definitive opinion as to whether the teams of a professional sports league can be considered a single entity in light of Copperweld. The characteristics that sports leagues generally exhibit make the determination difficult; in some contexts, a league seems more aptly described as a single entity immune from antitrust scrutiny, while in others a league appears to be a joint venture between independently owned teams that is subject to review under § 1.

    For example, from a fan’s perspective a league is a single source of entertainment, but the teams act individually when hiring and firing employees. Under Copperweld, the question is whether the collective action has deprived the market of competitiveness. The court of appeals held that for the purpose of licensing trademarks, the league is one source of economic power with the purpose of promoting NFL football through licensing the teams’ intellectual property, and thus immune from a claim of conspiracy in restraint of trade.

    Once the court reached the conclusion that the league was a single entity, the exclusivity of the licensing survived a Section 2 claim as well.

    American Needle Inc. v. National Football League, No. 07-4006, — F.3d —-, 2008 WL 3822782, 2008 U.S. App. LEXIS 17553 (7th Cir. Aug. 18, 2008). Opinion here; order correcting typo (“than” for “then”) here. Points to the reader who catches the typo without specifically looking for it.