Ray Niro tributes, Marathon Patent Group, Ed Sheeran, Ghostface Killah, LOT Network, Alexander Wang – the week in IP
Patent litigation icon Ray Niro passing away, Marathon acquiring 307 Siemens patents, Ed Sheeran being sued again, a Ghostface Killah copyright case being revived, Honda and General Motors joining the LOT Network, and a $90m judgment in an Alexander Wang counterfeit and cybersquatting case were among recent stories in the intellectual property headlines
Also on the blog in the past week were:
Analysing the PTAB in the first half of 2016 – guest post
Guest post: Designs, Brexit and the fashion industry
Join us for UPC, Unitary Patent and Brexit discussions in Munich and Paris
Sponsored post: Lowering the (on sale) bar
We’ve also posted the following articles in the past week (log in via subscription or free trial):
Federal Circuit grants en banc review of PTAB amendment practices
AbbVie v Amgen: Is the “patent dance” fair for both sides?
PTAB’s use of common sense reversed in Arendi v Apple
Patent litigation and settlement trends in Japan
Dids Macdonald OBE of ACID on design rights, Brexit and Section 52
The Samsung v Apple briefs are in
Federal Circuit rules in Halo on remand from Supreme Court
Courts get tough on intermediaries in fight against counterfeits
Remembering Ray Niro
IP icon Ray Niro died last week of a heart attack while vacationing in Italy. He was 73.
IP Watchdog ran a heartfelt remembrance for Niro, who was referred to as the original patent troll in some quarters.
“Of course, referring to Ray as a patent troll is at best half the story,” wrote Gene Quinn on the IP Watchdog blog. “No picture of Ray Niro could ever be complete without mention of his extraordinary success. The reason he managed to get under the skin of so many giant tech companies was because he was very good at proving that large corporations infringed valid patents owned by his clients, sometimes on fundamentally important innovations. Indeed, in a long and distinguished career that spanned over 40 years, Niro collected well over $1 billion for his inventor clients.”
The Wall Street Journal called Niro one of the US’s “most feared and influential patent litigators”. He set up Niro Law in 1976, and by 2006 was involved in more than 5% of patent cases that went to verdict that year.
Marathon looks to Asia with Siemens deal
Marathon Patent Group has acquired 307 worldwide patents from Siemens and certain of its affiliates.
The first portfolio of 221 patents relate to W-CDMA and GSM cellular technology and cover economies including China, France, Germany, the UK and the US. Many of the patent families have been declared to be standard essential patents with the European Telecommunications Standard Institute and/or the Association of Radio Industries and Businesses related to Long Term Evolution, Universal Mobile Telecommunications System, and/or General Packet Radio Service.
The second portfolio of 86 patents relates to Internet-of-Things technology, mostly generally directed toward self-healing control networks for building automation systems.
Doug Croxall, Marathon's CEO Officer, stated: "These transactions with Siemens not only materially increases our asset count to now 631 US and foreign patents, with 79 patent applications, but importantly, it will expand Marathon's patent licensing activity into Asia, while remaining active in both the United States as well as countries in Europe. Many of the newly acquired assets have been declared as SEPs and we intend to assert our patent rights, wherever infringed.”
Marathon this week also announced that its wholly-owned subsidiary TLI Communications GmbH has asserted its patent rights related to the French and Italian Parts of European Patent 0 814 611 B1 ("EP '611") in both France and Italy, respectively. It sued Yahoo, Tumblr and Pinterest.
Sheeran sued again
Ed Sheeran has been sued for copyright infringement again, reports The Telegraph. The suit was filed in the Southern District of New York by the heirs of Ed Townsend, who co-wrote the lyrics and created the musical composition to Marvin Gaye’s Let’s Get It On. The suit claims Sheeran’s song Thinking Out Loud copies core elements of Gaye’s 1973 hit.
"The Defendants copied the 'heart' of 'Let's' and repeated it continuously throughout 'Thinking,'" says the lawsuit. "The melodic, harmonic, and rhythmic compositions of 'Thinking' are substantially and/or strikingly similar to the drum composition of 'Let's.'"
In June, Sheeran was sued by two musicians claiming his song Photograph infringes the copyright of one of their songs, as this blog previously reported. In a lawsuit filed in the Central District of California, Martin Harrington and Thomas Leonard claim the chorus of Photograph shares 39 identical notes to their track Amazing. The pair are represented by Richard Busch of King & Ballow, the lawyer that won the Blurred Lines case – another case involving a Gaye hit.
Reintroducing the Ghostface Killah lawsuit
In other music-related copyright news, the Second Circuit recently revived claims against Sony and Ghostface Killah, in Urbont v Sony Music Entertainment, reports Akerman’s Marks, Works & Secrets blog.
The court held that, although third parties may raise a work for hire defence, this case had factual issues that precluded summary judgment. But the Court affirmed summary judgment on plaintiff’s state law claims as preempted by the Copyright Act.
Jack Urbont had sued Sony, Razor Sharp Records, and Dennis Coles (known better as Ghostface Killah).to enforce his ownership rights in the “Iron Man” theme song, sampled on two tracks on the Supreme Clientele album released in 2000.
“The District Court granted summary judgment, finding no factual dispute that Urbont’s work was a work for hire for Marvel, and that the state law claims were preempted by the Copyright Act,” explains Akerman. “The Second Circuit disagreed in part.”
Accelerating LOT’s membership drive
Honda and General Motors recently signed up for the License on Transfer (LOT) Network, following other auto companies including Hyundai, Ford and Uber in joining the network in the past year.
Fortune reports that this is “another sign of the growing ties between Detroit and Silicon Valley” that automakers and tech companies are coming together to fight patent trolls.
The LOT Network was launched in 2014 as a Google initiative. Members pledge that their patents will never be used by a patent troll to sue another member of the network.
“The move by auto companies to join LOT comes amid an ongoing debate over whether Congress needs to take new steps to rein in patent trolls,” noted Fortune’s Jeff John Roberts.
- Alexander Wang was handed a favorable ruling against 45 defendants in a trade mark counterfeiting and cybersquatting case in the Southern District of New York, reports The Fashion Law blog. Wang was given a default judgment including $90 million in damages and ownership of 459 domain names that were either offering counterfeit goods for sale or using the Alexander Wang brand name.
- Are you itching to read a history of US beauty pageant naming disputes? The Trademark & Copyright Law blog has you covered.
- The FTC and DOJ are seeking views on a proposed update of the antitrust guidelines for licensing of intellectual property.
- In other DOJ news, following last week’s announcement of no change to the antitrust consent decrees that govern ASCAP and BMI, the two music performing rights organisations are challenging the DOJ action.