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IBM, Priceline, Red Bull, Life360, Fox, Katy Perry – the week in IP



Michael Loney


IBM suing Priceline for patent infringement, Red Bull objecting to Old Ox’s trade mark application, Life360 accusing Advanced Ground Information Systems of being a troll, Fox being denied summary judgment on fair use grounds, and the debate over Left Shark were in the IP headlines this week

IBM sues Priceline

IBM has filed a lawsuit against Priceline, alleging infringement of four patents, the oldest of which goes back to 1999.

IBM filed the lawsuit in the District Court of Delaware against The Priceline Group and subsidiaries that own and operate Priceline.com, Opentable.com and Kayak.com for infringement of IBM intellectual property.

In its complaint, written by John Desmarais, IBM seeks damages for past infringement and for a reasonable royalty going forward. The company says Priceline in the running of its travel and dining websites infringes its patents relating to tracking conversation with a user, speeding internet transmissions, showing internet advertising, and improving on a single sign-on, according to Reuters.

"We have filed this lawsuit against Priceline for a very simple reason – IBM's patents are being knowingly and unfairly exploited," said William LaFontaine, IBM’s general manager of intellectual property. "Our preference is to engage in good faith negotiations and agree to a fair patent licence, but when another company willfully uses our intellectual property, without permission through a licence, we have no option but to protect and vigorously defend it through every means available."



Red Bull’s "corporate wedgie"

Energy drink maker Red Bull is opposing a trade mark application from a brewery in North Virginia called Old Ox Brewery. The brewery is named after a Virginia road dating back to the 18th century.

As reported by Entrepreneur, The Austrian company initially sent a letter to Old Ox 10 months ago before the brewery had brewed a single beer objecting to its name and use of colours. Old Ox responded by changing its logo and promising never to make energy drinks.

On January 28, Red Bull stepped up its opposition by filing an opposition at the USPTO.

"An 'ox’ and a 'bull’ both fall within the same class of 'bovine’ animals and are virtually indistinguishable to most consumers," says the filing. "In addition, an ox is a castrated bull."

Chris Burns, president of Old Ox, responded with a letter posted on the company’s website that said Red Bull was being "extremely uncool", "holding us hostage", "bullying" and "giving us one hell of a corporate wedgie".

"The only similarity between our two products is that they are both liquids," wrote Burns. "You make non-alcoholic (but very extreme) energy drinks. We make delicious (but laid-back) beer. Our consumers are looking for two distinctly different experiences from our respective products."



Troll, "piece of s***", or legitimate patent holder?

The IP Close Up blog this week analysed an interesting patent infringement dispute involving Life360 and Advanced Ground Information Systems (AGIS).

Life360 claims it is being unfairly targeted by what it sees as a patent troll. Its CEO Chris Hulls said AGIS’s lawsuit is meritless. In a letter from Life360 to AGIS, Hulls wrote: "Dear Piece of S***, We are in the process of retaining counsel and investigating this matter… I will pray that karma is real and that you are its worthy recipient."

Bruce Berman writing on the IP Close Up blog countered that the Life360 lawsuit was filed in the Southern District of Florida, rather than a more-patent friendly district, and is the only patent lawsuit currently filed by AGIS. The blog added that AGIS is represented by Kenyon & Kenyon, "a highly respected law firm known for defending large operating companies" that "represents precious few if any plaintiffs".

The blog post concluded: "Whatever the outcome, going public with a 'damn-the-troll’ defense, as Life360 has, is looking old and worn, even if it can still sometimes work. Allegations like those are outside the merits of the case, and from the preliminary research, will be difficult to prove."

 

Fox in fair use blow

A New York federal court this week denied Fox summary judgment on a fair use defence in a copyright dispute over its use of a 9/11 photo.

As reported on the 43(B)log, North Jersey Media Group had sued Fox for infringing its copyright on the photo. On the Facebook page for Fox’s Justice with Judge Jeanine programme, an image was posted juxtaposing the photo featuring firefighters raising the American flag with the iconic photo of Marines raising the flag at Iwo Jima in World War II.

"Though the PA in charge of the programme and the associated Facebook page sought legal advice on fair use a few times a month for the programme, she’d never consulted the legal department for the Facebook page," explained the 439(B)log. "She 'Googled’ 9/11 to find an appropriate commemorative image in 2013, and immediately recognized the juxtaposition. She chose to use the combined image because of the parallel between the first responders and the Marines. The combined image uses a lower-resolution, cropped version of plaintiff’s photo. She added the hashtag #neverforget, and testified that she did so in order to convey Fox News’ participation in the global conversation taking place on social media that day. IHundreds of people commented on the image post."

The court examined the four factors of fair use, and said Fox failed on two of them.

Fox argued that its use was transformative commentary on the parallels between 9/11 and Iwo Jima. However, the court found the alterations to the imge were "barely discernable".

Judge Edgardo Ramos also ruled against Fox on the factor of the effect of the use upon the potential market for the photo. New Jersey Media Group has made more than $1 million licensing the photo, mostly in 2002, 2003 and 2004. The judge said Fox’s action "poses a very real danger that other such media organisations will forego paying licensing fees for the Work and instead opt to use the Combined Image at no cost."


 

Left Shark debate rages on

This week IP folks on the internet continued to debate the fallout of the Left Shark dancer from Katy Perry’s Super Bowl half time show.

As reported here last week, Perry’s lawyers had threatened legal action after a design for a 3D printed Left Shark by artist Fernando Sosa were put for sale online.

This week it transpired that Perry was attempting to file for a trade mark for Left Shark, as reported by Techdirt. This was quickly abandoned, but interestingly Perry’s lawyers in the application used the image that Sosa had used for his 3D printed shark.



Also on the blog this week:

Join us for the fifth annual International Patent Forum

Latest IP updates from around the world

The petitioners, patent owners and law firms topping the PTAB rankings

Guest blog: Why Europe must reform its trade secrets rules

Has China’s "skin in the game moment" arrived?


In our news and analysis this week:

Managing IP – North America awards shortlist revealed

Is Taiwan’s improving IP environment a sign of mainland China’s future?

Interview: Captain Wei-Hsu Chen of Taiwan IP Police, Taipei company

CJEU gives guidance to patent/SPC owners and importers

Australia High Court to tackle Myriad

AIPLA warns over Unitary Patent fees

OHIM seeks input on 2020 vision

Managing IP - Global Awards Shortlists published

Qualcomm and Chinese regulators settle antimonopoly law charges

J A Kemp makes litigation-boosting hire

Data – 100 IPR petitions filed in January

The South African draft IP Policy: Patents and Health in South Africa

Two of India’s biggest IP firms to merge

Awapatent establishes Greater China presence

Microsoft and Samsung settle US contract dispute

Damages wins for Sprint and Intellectual Ventures in Delaware

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@BrocklehurstIP Good luck! T minus four days ...

May 26 2017 10:50 ·  reply ·  retweet ·  favourite
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Is "gnarly complexity of territorial copyright licensing" to blame for closure of BBC Store? https://t.co/JMMJP8kEPH

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Congratulations to everyone listed this year! #ipwomen https://t.co/JU7wSPDuBR

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