Skype being sued by Rupert Murdoch’s British Sky Broadcasting

It was recently unveiled that Rupert Murdoch, one of the most successful businessmen of our time, has been in litigation with Skype for the past five years.  Rupert Murdoch’s News Corporation is trying to prevent Skype from using its trademark ‘Skype’ (U.S. registration number: 3005039 and 3773537) in relation to the sale of communications services over the internet, because customers might assume that ‘Skype’ is part of Sky.

Skype makes hardware and software that makes it possible for people to communicate via video and audio over the internet.

The main argument behind the dispute is that the brands ‘Sky’ and ‘Skype’ will be considered confusingly similar by members of the public.  According to records with the Trademark Trial and Appeal Board, in 2004 British Sky Broadcasting Limited was granted an extension to file an opposition to Skype’s use of the mark.  After that the matter went private and only came back on everyone’s radar earlier this month when Skype listed the dispute on documents made public in preparation of its planned initial public offering (IPO).

Unfortunately for Skype, Sky’s case for infringement was upheld by the European Union’s Office for Harmonisation of Internal Markets (OHIM), which ruled that Skype’s trademark and its blue bubble logo were too similar to Sky’s name and branding. Sky said that Skype wasn’t the only one; it has taken legal action against a string of companies for attempting to piggyback on the “Sky” brand.

Investors in Skype had better pay close attention to this one.  Should Sky prevail, it might affect what markets Skype can go into, and may, in a worst case scenario, lead to a massive judgment against it.

Eric Goodman

eric@goodmanmooney.com

Vampire Weekend in Right of Publicity Suit

The band Vampire Weekend got some shocking news a few weeks ago.  They are being sued.  The model on the cover of their new album, Contra, didn’t give her permission their use of her picture.  In the legal world, we call it a ‘right of publicity’ suit.

The law in this area states that individuals have a right to control use of their image for commercial gain.  If someone misappropriates their image, they can sue them for damages under right of publicity laws.

Ann Kirsten Kennis filed suit against the band and photographer Tod Brody in LA Superior Court, accusing them of using her photo without her permission.

She claims the photographer who licensed the image to the band for $5,000 didn’t take the photograph and forged a release form. She also claims that Vampire Weekend is also responsible because they did not check into the photo’s history to make sure they had permission to use it.  On top of that, she claims that her image is one of the main reasons the album sold so well, so she wants $2 million.  She’s going to need lots of evidence to back that claim up.

According to Celebrity Mania:

Seeking more than $2 million for misappropriation of identity, Ann noted the photo was taken around 1983, when she was working as “a high-fashion model under contract with prestigious agencies in New York City.” Claiming the signature on the release form was forged, she added she had no idea it was featured on the cover of the album until the band began promoting the album in November 2009.

Vampire Weekend released “Contra” back in January. Band member Ezra Koenig has talked about the album cover.  As quoted in LA Weekly:

“When we saw this image, we just found it very striking,” Ezra continued on explaining why they chose the pic for the cover of their new album. “And part of it is the look on her face. It’s not about the color of her hair, or the fact that she’s wearing a Polo shirt. What makes it interesting is her face.”

If Ezra is right about that, then maybe she will have a claim for two million.  If what has sold the record is Kennis’ face, then that could be a problem.  The moral of the story is “don’t misappropriate other people’s images, you could get sued.”

Eric Goodman

eric@goodmanmooney.com

Libel Tourism – Limiting Foreign Claims of Defamation

Have you ever heard the phrase “libel tourism?”  Libel tourism is the practice of suing an author or publisher in a country with less free speech protections than those given to Americans by U.S. law.  Libel is a form of defamation (when defamatory words are reduced to writing).

Here is the real world example of Rachel Ehrenfeld, a U.S. citizen who was sued in Britain by a Saudi billionaire she accused of financing terrorist groups.  According to the Sacramento Bee:

Never mind that she didn’t live in Britain and that her book wasn’t published there. (A few copies were purchased online.) Rather than face the high legal costs and burdens of proof in London, Ehrenfeld chose not to contest the case, and the court ruled against her by default, ordering her to pay hundreds of thousands of dollars in damages and legal fees.

This practice is called ‘forum shopping,’ where a plaintiff picks the most favorable jurisdiction to sue in, and files suit there.  American courts do not like plaintiffs who forum shop, and several states have tried to limit this practice.  The Bee also reported:

Several states have enacted so-called Rachel’s Laws to prevent libel tourists from using U.S. courts to enforce foreign judgments. California’s version, enacted last year, says that state courts won’t enforce libel judgments from other nations unless the foreign defamation law “provided at least as much protection for freedom of speech and the press as provided by both the United States and California constitutions.”

However, the House of Representatives passed a Bill this week aimed at shielding U.S. journalists, authors and publishers from “libel tourists.”  The measure would prevent U.S. federal courts from recognizing a foreign judgment for defamation that is inconsistent with the First Amendment, which guarantees freedom of speech.

This is good news for publishers and authors who wish to express their opinions.

Eric Goodman

eric@goodmanmooney.com

Trademark Infringement Photo #13

Amanda Mooney

amanda@goodmanmooney.com

Gizmodo, Apple, Gawker, and the iPhone4 Settlement

We reported a month or so ago on the iPhone4 ‘incident.’  If you’re not up to speed on what transpired, read this article.

If you are up to speed, here is what went down a few days ago.  According to PC Mag:

Gawker Media and Gizmodo have agreed to voluntarily turn over relevant documents to authorities, according to a report.

That deal apparently persuaded a California judge to void a search warrant against Gawker, Gizmodo, and editor Jason Chen, Wired reported.

Gawker and Gizmodo will voluntarily turn over the documents that the San Mateo County District Attorney and its team require, Wired said. As a result, the search warrant will be withdrawn.

After the iPhone story broke, the authorities searched Jason Chen’s home.  Many attorney’s across the nation cried foul because reporters like Chen fall under a shield law.  California’s Penal Code section 1524(g), which disallows the use of warrants to obtain “unpublished information obtained or prepared in gathering, receiving or processing information for communication to the public.”

Eric Goodman

eric@goodmanmooney.com

Patent Troll on a Money Making Rampage

Did you know that companies are allowed to collect patents for inventions they never plan to manufacture?  These “patent trolls,” can then opportunistically sue alleged infringers.

Peter Detkin, the assistant general counsel for Intel, coined the term “patent trolls” in the 1990s, to describe “somebody who tries to make a lot of money off a patent that they are not practicing and have no intention of practicing and in most cases never practiced.”  Patent licensing is a $100 billion dollar business, and these patent trolls are taking an ever increasing piece of the pie.

For example, NTP Inc., a patent holding company…er patent troll…, filed lawsuits last week against Google, LG Electronics, Apple, HTC, Microsoft and Motorola for infringements of eight patents NTP owns related to wireless e-mail delivery.

According to CNN Money:

““The filing of suit today is necessary to ensure that those companies who are infringing NTP’s patents will be required to pay a licensing fee,” NTP cofounder Donald Stout said in a prepared statement. The lawsuits were filed in U.S. District Court for the Eastern District of Virginia.”

A few years ago NTP settled a similar lawsuit with Research in Motion (the makers of the mighty Blackberry) for $613 million.

In light of these practices, a bill has been proposed in the Senate that may bring significant changes to the USPTO, including a transition from a “first-to-invent” system to a “first-to-file” approach.  Interestingly, the U.S. is the only major country that gives patents to those who can prove they invented an item, device, or gizmo before someone else’s patent was filed.  This is a widely debated issue that we will follow closely.

Eric Goodman

eric@goodmanmooney.com

Sneaky IP Lawyer Loses Bid for Trillions

There is provision in patent law that allows a citizen to sue a company that deceives the public by using false patent numbers.  This is important because last year, the U.S. Court of Appeals for the Federal Circuit made false marketing lawsuits much more attractive with its decision in Forest Group Inc. v. Bon Tool Co.. That decision stated that a court can award a winning false-marking plaintiff damages of up to $500 per individual falsely marked product.

Now, I want you to imagine something.  Imagine a company develops and manufactures a new type of pencil.  Knowing it has a great product, but in a rush to market and sell it, the company stamps on the pencil fake patent numbers to discourage counterfeiters.  Then the company goes on and sells millions of pencils.  Theoretically, under these circumstances, any person who realized that the patent numbers were fake could sue for $500 per pencil.

Needless to say, someone could sue for an absurd amount of money given the right circumstances.

Well, San Diego patent lawyer Matthew Pequignot tried just that, and sued for trillions after realizing that patent markings on the lid to his daily cup of coffee (made by Solo Cup) had actually expired several years before.

However, he lost his quest in a ruling last month. The Court of Appeals found that Pequignot failed to prove the defendant company intended to deceive the public with its false mark, a requirement under the recovery statute.  If Solo had intentionally kept stamping the false markings on the cups, then we might be telling a different story.

According to the ABA Journal:

“Billions of Solo’s cup lids were made with improper marks. The court noted in a footnote to its Solo Cup opinion (PDF) that Pequignot’s quest for $500 in damages for each improperly marked product would produce an award to the United States of $5.4 trillion, an amount sufficient to pay 42 percent of the country’s national debt.”

Although we applaud Pequignot’s ingenuity and guts, this seems like a clear effort to take advantage of a poorly thought through statute.  But the law is what it is, and until the legislature changes it, or a court overrules it, it exists.

Eric Goodman

eric@goodmanmooney.com

McFest v. McDonalds – It’s Settled…

Not long ago we blogged about Lauren McClusky and “McFest,” her annual charity benefit concert for the Special Olympics.  Big bad mean McDonald’s wasn’t too thrilled with her trademark application (for the name ‘McFest’), and a dispute arose.

Well, we are happy to note that the case has settled.  According to the Chicago Sun-Times:

But now the beef’s been settled. McClusky, a college student from Chicago who’s raised about $40,000 for Special Olympics, has agreed to give up the “McFest” name in exchange for two years of sponsorship.

“It just really came down to what was best for Special Olympics,” says McClusky, who attends Boston University and is the daughter of Chicago concert promoter Jeff McClusky.

This year’s show — targeting high school and college students — will be held Aug. 4 at Metro.

The new name? Nelarusky, taken from the mixed-up letters of her first name and the “sky” from her last name.

“We wanted to come up with something completely different and a name we thought would stick with people,” says McClusky.

Good job, Lauren!  Or, I guess we should say, “Good job, Lauren’s attorneys!”

Amanda Mooney

amanda@goodmanmooney.com

CNBC Crime Inc. – Counterfeit Goods premiers today

Counterfeit goods are a $600 billion dollar problem.  Depending on the client needs, we spend a large chunk of our time protecting clients and trademark owners from this issue.  That’s why we are excited about tonight’s premiere of CNBC’s Crime Inc. – Counterfeit Goods.  We hope this show raises awareness of how large the problem is, and spurs business owners to take the appropriate protective measures.

According to CNBC’s website:

Fake handbags, watches, shoes and perfumes. The business of Counterfeit Goods is the largest underground industry in the world. Hundreds of billions of dollars are generated while sapping the economy, putting lives in jeopardy, and funding organized crime in the process.

CNBC’s “Crime Inc.: Counterfeit Goods,” takes viewers on a rare look inside a global crime spree, where the goods are produced and confiscated in a world of high-risk and high-reward.

Host Carl Quintanilla takes you on raids with the LAPD anti-counterfeiting unit, inspections at ports, and back-room factories where counterfeits are produced. Meet a company whose whole brand was copied, and the story of a defense contractor who counterfeit defense parts that found their way into weapons depots in Iraq.

At around 7% of all global trade, Counterfeit Goods are a big business with low overhead. It makes too much money to go away any time soon.

The next time you buy a pair of Timberland boots, you might want to think about whether they are actually Timberland boots.

The show Premieres tonight, July 14th  9p | 10p | 12a | 1a ET.  It will also air on Saturday, 7/18 at 10PM ET; Thursday, 7/22 at 8PM & 12AM ET; and Sunday, 7/25 at 1AM ET

Eric Goodman

eric@goodmanmooney.com

Trademark Infringement Photo #10

Eric Goodman

eric@goodmanmooney.com