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ALS Association, Oracle, plain packaging, Deep Throat, Google, Illinois patent troll bill – this week’s round-up



Michael Loney


The ALS Association’s ice bucket challenge trade mark application, a rebuff of Oracle’s attempt to reinstate a $1.3 billion verdict, a plain packaging report, Google’s award of attorney fees, a copyright fight over Deep Throat, and Illinois’ patent troll legislation were among the intellectual property stories hitting the headlines this week

Pouring cold water on controversy

The ALS Association, the charity responsible for social media sites being dominated by videos of people pouring buckets of cold water and ice over their heads, had applied for trade marks on the phrases "ice bucket challenge" and "ALS ice bucket challenge", it emerged this week.

The Washington Post reports that two trade mark applications filed last week claim that the ALS Association owns the phrases for charitable giving purposes.

Trade mark lawyer Erik Pelton said on his blog that the move was not appropriate for several reasons, including doubts over whether ALS Association is the true owner of the phrase, whether the phrase ice bucket challenge is associated exclusively with fundraising for the ALS Association, the question is whether the phrase is already generic, and whether the public would view the phrase as indicating the source of the charitable fundraising services.

"An effort to register the ICE BUCKET CHALLENGE strikes me as a bit akin to those who sought register BOSTON STRONG after the marathon bombings in 2013," Pelton wrote. "Even if it were permissible under the law to register the phrase (again that is not clear here), it is in poor taste. If others want to use the phrase to raise money for their causes, why would ALS Association want to stop them?"

The ALS Association acted quickly to the criticism of its trade mark applications by withdrawing them.

"The ALS Association filed for these trademarks in good faith as a measure to protect the Ice Bucket Challenge from misuse after consulting with the families who initiated the challenge this summer. However, we understand the public’s concern and are withdrawing the trademark applications. We appreciate the generosity and enthusiasm of everyone who has taken the challenge and donated to ALS charities," the association said on its website.



Feeling unrestored

Oracle has been denied in its attempt to have a $1.3 billion jury verdict restored in its copyright dispute with SAP by the US Circuit Court of Appeals in San Francisco.

The 9th Circuit said jurors had used "an undue amount of speculation" in making its $1.3 billion verdict in 2010. The court also found that a US district court in Oakland was wrong to award only $272 million in damages to Oracle.

Judge William Fletcher instead directed the court to offer Oracle $356.7 million or a second trial.

Oracle first sued SAP in 2007 after it noticed thousands of downloads of its software, which SAP later admitted was its employees illegally downloading Oracle files. SAP agreed to pay $306 million but the agreement allowed Oracle to seek the restoration of the jury verdict.



New report reveals plain facts

A new report from Australia has found that plain packaging has not changed the way people buy cigarettes.

The BBC reports that the use of illegal tobacco has not increased and cheaper brands have not flooded the market, according to researchers from the Centre for Behavioural Research in Cancer.

Plain packaging came into effect in December 2012.

The percentage of smokers studied who had brought unbranded illegal tobacco in the past 12 months did not change significantly between 2011 and 2013 – at between 4% and 5%. In 2013, 2.6% of smokers said they bought at least one pack of cigarettes that was not packaged according to the new legislation in the past three months.



Google awarded attorney fees

Google this week was awarded attorneys fees in a case against Beneficial Innovations, a firm some label a patent troll.

Beneficial sued a dozen media companies that were users of Google’s DoubleClick ad technology in 2011 for patent infringement. Google had paid for a licence for the patent, and said the lawsuit was a breach of the agreement. The firm subsequently won nominal damages of one dollar and an order stopping Beneficial targeting more DoubleClick users.

Judge Rodney Gilstrap in the Eastern District of Texas this week awarded Google attorneys fees. In his opinion, however, he did not agree with Googole that it should be awarded the costs of its expert witness so the figure was $101,324.50 lower than the firm asked for.



No Deep Throat infringement

New York District Court Judge Thomas Griesa threw out a lawsuit by the owner of 1972 pornographic film Deep Throat, starring Linda Lovelace, against The Weinstein Co claiming copyright and trade mark infringement.

The dispute was over the Weinstein’s 2013 movie Lovelace, a biographical film based on Lovelace’s life and starring Amanda Seyfried. Arrow Productions claimed that the film Lovelace bore striking similarities to Deep Throat and that the title was used without licence or permission, and sought $10 million in damages.

Referring to Deep Throat as a "famous pornographic film replete with explicit sexual scenes and sophomoric humour", Judge Griesa said that the use of three scenes from Deep Throat in Lovelace was fair use. He said the scenes add "a new, critical perspective on the life of Linda Lovelace and the production of Deep Throat".

Judge Griesa did not award attorneys fees, however.


Illinois becomes number 18

Illinois this week became the 18th US state to pass legislation against patent trolls when Governor Pat Quinn signed a new measure into law.

The bill makes it a violation of civil law to demand royalties from a company if the demander does not hold the patent or represent the patent owner, or if the patent has been invalidated in court or has expired. It also outlaws using written communication to falsely accuse someone of patent infringement with the intent of forcing a settlement.

An interactive map of the states that have passed or introduced legislation can be seen on the Patent Progress site.



Also on the blog this week:

The biggest PTAB milestones so far. Is a rule tweak next?

Five IP trends we’ll be tracking this year


And in our news and analysis:

Kilpatrick partner named US intellectual property enforcement coordinator

Better metrics may be key to patent system improvements

The surprising rise of the PTAB

PTAB "a very scary process" – patent lawyers

Federal Court invalidates Bingo patents, citing Alice

Apple loses bid for injunction against Samsung

Concurring opinion in I/P Engine v AOL confuses

USPTO telework allegations blasted by former officials

Federal Circuit vacates denial of attorney fees in Icon v Octane

Rouse hires Thai patent litigators

GeneDx files 11 IPR petitions against Myriad patents

INTA signs MoU with Colombia's IP office

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RT @abelimray: Number of green energy patents issuing on the slide - a cause for concern? https://t.co/BHeySZ69LX

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Analysis of yesterday's Filmspeler case on communication to the public via @TaylorWessing @adramIP @markowen1 https://t.co/EScEozVuBc

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