Blackberry, TD Ameritrade, Dell, Network-1, ASCAP, BMI, Whole Foods, Qualcomm, Led Zeppelin – the week in IP
Blackberry’s push into patent litigation, a case involving a Dirty Dancing trade mark, settlements between OpenTV/Apple and Dell/Network-1, and a DOJ investigation into performing rights organisations were among recent stories in the intellectual property headlines
Also on the blog in the past week were:
Sponsored post: Mandatory post-approval biosimilar notice implicates millions
We’ve also posted the following articles in the past week (log in via subscription or free trial):
Courts get tough on intermediaries in fight against counterfeits
How genuine use is treated across the EU
Sterne Kessler first law firm to 500 PTAB proceedings
US patent litigation update: July filing down 11%
The PTAB, pharmaceutical patents and reverse payments
July CBM petition filing slumps to lowest level since February 2013
Brexit and IP: The UK IPO’s views
PTAB’s third PGR decision invalidates container delivery patent
Limelight and Akamai convert $51m damages award into licence
Judge vacates VirnetX’s $626m damages award in Apple case
Blackberry: patent troll?
Blackberry has “entered into the patent litigation game” with its first suit filed versus Avaya in the Northern District of Texas, reports Seeking Alpha.
The complaint reveals Blackberry sent a letter to Ayaya in December 2015 asking it to take a licence to Blackberry’s portfolio.
“The parties likely entered into a six-month standstill agreement to negotiate an agreement (or Avaya ignored the letter),” said IP Hawk on Seeking Alpha. “Obviously, nothing was agreed too and BlackBerry was forced to file a suit.”
BlackBerry in the suit alleges that Avaya infringed eight patents, which have filing dates ranging from 1998 to 2011.
As Ars Technica notes, Blackberry CEO John Chen said on a conference call in May that it was in “patent licensing mode” and eager to monetize its 38,000 patents. Last June, Cisco agreed to pay Blackberry a licence fee for some of its patents.
The case of their lives
A dispute between TD Ameritrade and the makers of the 1987 hit movie Dirty Dancing has been reignited, according to The Hollywood Reporter.
Lionsgate objected to TD Ameritrade using the tagline “Nobody puts your old 401(k) in the corner” in an advert because it claims to own trade mark rights to “Nobody Puts Baby in the Corner”, a much-quoted line from Dirty Dancing.
“In March, California federal judge Dean Pregerson threw out trademark infringement claims as being dressed-up ones preempted by copyright law,” explained The Hollywood Reporter’s Eriq Gardner. “On a subsequent motion for reconsideration, Lionsgate focused on the way that the court had dismissed a claim for trade mark dilution, meaning that TD Ameritrade had allegedly used a famous and distinctive mark in commerce and blurred or tarnished it.”
But last week Judge Pregerson of the Central District of California decided that such a rule was based on a statute that was rendered obsolete by the Trademark Dilution Revisions Act of 2006. The court said the subsequent Ninth Circuit case law had eliminated the “identical or nearly identical” required laid out in Jada Toys.
Pregerson wrote: "Given that the parties do not dispute a slogan can be used as a trade mark and given Lions Gate’s allegations that Defendants intended to use this phrase as part of branding campaign, the cause of action survives the Motion to Dismiss."
OpenTV, closed case
Swiss company Kudelski, the owner of OpenTV, has settled a patent dispute with Apple that had threatened Apple’s video streaming features in devices sold in Germany, reports Reuters.
The two companies have agreed a patent licence agreement and dropped all pending patent litigation between them.
Open TV sued Apple in 2014 in the Northern District of California. Apple took the fight to the Patent Trial and Appeal Board, which was due to issue rulings in September and October.
Dell pays $6m settlement
Network-1 also announced a settlement last week, with Dell paying $6 million to licence a remote power patent. The patent relates to delivering power over Ethernet cables to remotely power network connected devices, and expires in March 2020.
Network-1 had sued in the Eastern District of Texas in 2011, with Dell one of 16 original defendants. Ten of these have settled, with the remaining five companies being Avaya, Axis Communications, Hewlett-Packard, Juniper Networks and Polycom.
DOJ ends two-year ASCAP/BMI investigation
The Department of Justice has announced it will not change the antitrust consent decrees that govern music performing rights organisations ASCAP and BMI. The DOJ also concluded the existing language of the decrees requires full-work licensing and prohibits “fractional licensing”.
“This means that for songs with multiple songwriters (which are increasingly prevalent in popular recorded music) any individual songwriter or rightsholder can license the song, as long as they distribute royalties to the other rightsholders,” explained DISCO’s Ali Sternburg. “In a ‘fractional licensing’ system, PROs would purport to issue blanket licences only to fractions of songs, thus requiring licensees to licence the remaining fractions from other rightsholders. DOJ’s conclusion will maintain important protections in the ASCAP and BMI consent decrees.”
The DOJ’s investigation lasted two years. A federal appellate court had earlier found “troubling coordination” in music publishing.
DISCO’s Sternburg concluded the DOJ announcement was “good news for a competitive music marketplace”, because the consent decrees are an important mechanism for protecting competition in the music industry. “Preserving the consent decrees and explicitly prohibiting fractional licensing will also help alleviate the ‘weaponized uncertainty’ problem, because it will prevent rightsholders from saying ‘no’ as frequently, and will facilitate more transactions that make more music available on more lawful services,” she said.
ASCAP and BMI process about $2 billion in royalty payments each year, according to The New York Times. BMI said it will challenge the decision in federal court, while ASCAP said it would explore legislative solutions.
– The USPTO has denied Whole Foods Market’s application for “World’s Healthiest Grocery Store” because it makes a laudatory claim or is based on exaggerated praise, reports The Washington Post.
– Qualcomm has signed a 3G/4G China patent licence agreement with Vivo.
– Led Zeppelin has been denied $800,000 in legal fees in the Stairway to Heaven case, reports The LA Times.