Wealth of Ideas Blog

Trademark Woes for Apple

Submitted by General Patent on Fri, 09/28/2012 - 14:35

We hate to seem repetitious, but we hereby present yet another blog post about Apple. What other company provides such a wealth of blog topics from its lawsuits in all areas of intellectual property?

While Apple celebrates its success in its lawsuit against Samsung and attempts to secure a permanent injunction on as many of its competitors' products as possible, the steady stream of lawsuits filed against Apple continues unabated. And in an ironic twist for the computer company known for its iconic designs, some of Apple's legal woes have to do with design patents and trademarks.

Recently we wrote about how Apple's engineers were inspired by German electronics from the "Mad Men" era (see The Sincerest Form of Flattery). In deciding on a new look for the clock app on the iPad, they also drew inspiration from a classic design: a Swiss clock design first used in 1944. The problem is that the clock design is still in use, it's trademarked by the Swiss Federal Railway service (SBB), and it's licensed to Swiss watch manufacturer Mondaine. (You can see one of the clocks in an SBB station here.)

Although the SBB is "pleased" that Apple likes the clock's design enough to use it, Apple is nevertheless not licensed to do so. So it appears that the SBB might be serving up a trademark lawsuit to the electronics giant soon.

It may be that a small change will be enough to derail the railway system's lawsuit. (Sorry, couldn't resist.) Three years ago, Apple had a design complaint of its own when it sent a letter of rejection to app developer Tapbots. Apple rejected Tapbots' Convertbot 1.4 app because it used a clock icon that was practically identical to Apple's own clock design used in the History/Recent resource. Since the Apple design in question is a clock showing the time as 3:00, Tapbots simply changed its clock to show the time as 9:00. Apple approved the change and the app issued about a month after Apple initially rejected it.

"Now Apple may own 3 o'clock, but I guess they don't own 9 o'clock," quipped the developer in a blog post.

In other trademark news, Apple lost an appeal in its bid to trademark its iPhone Music icon because it is too confusingly similar to the trademark for iLike, a defunct music download service. Both designs feature two connected eighth notes on a square orange background. The difference is that Apple's music notes are dark orange and slant up to the right while iLike's music notes are white and slant down to the right. You can compare and contrast both marks here.

Apple has the right to appeal the Trademark Trial and Appeal Board's decision again, but we wonder if they might offer to buy the trademark from MySpace, which acquired iLike in 2009 and shut it down earlier this year.

Of Music, Art, Trademarks and a 45-Year-Old Banana

Submitted by General Patent on Wed, 09/12/2012 - 13:52

It may be spotty and four decades old, but the iconic banana image Andy Warhol designed for the Velvet Underground's debut album in 1967 is at the center of a very modern copyright and trademark battle.

Although the Velvet Underground disbanded in 1972, their music lives on among hipsters, college kids and anyone who appreciates Andy Warhol's art. The Velvet Underground were part of the same scene as Warhol, perhaps inextricably so because he was also the band's manager and producer, and that's where the legal complications begin in our current case.

The banana image basically became the Velvet Underground's logo over the past few decades, which is not a problem for the band because the Warhol Foundation signed a covenant not to sue them for copyright infringement - even going so far as allowing the band to license the banana image to others (as it did in 2001 when it licensed the banana to Absolut Vodka for an ad). But when the Warhol Foundation licensed the banana image to be used on pricy swag such as a $149.95 shoulder bag, a $59.95 protective sleeve for the iPad, and other iPhone/iPad accessories, band members Lou Reed and John Cale sued the foundation and accused them of trying to "deceive the public" into thinking the Velvet Underground had endorsed the banana-fied products.

Warhol, who died in 1987, never copyrighted the banana image himself. The Velvet Underground noted that the banana logo was its trademark in a CD box set it issued in 1995.

Untangling the case's copyright and trademark issues is a daunting task, but a federal judge took a step in that direction this week when she dismissed the band's claim that the banana image was in the public domain and could not be copyrighted by the Warhol Foundation. However, the band can still make their claim for trademark infringement despite the Warhol Foundation's argument that the band broke up in 1972 and thus cannot claim a trademark for ongoing business.

We'll be watching this interesting lawsuit to see which way the banana peels.

The Sincerest Form of Flattery

Submitted by General Patent on Tue, 09/04/2012 - 16:27

On the heels of Apple's win over Samsung, some in the tech industry have pointed out that Apple has been known to copy electronics designs that its designers found aesthetically pleasing. Not only have they mentioned it, they've also created a photo essay of the similarities between Apple products and Braun radios and speakers from the 1950s and 1960s.

Besides basing the physical appearance of some of its electronics on Braun products designed by Dieter Rams, head designer at Braun for almost 30 years, Apple also based the graphic interface of the iPad music app on the look of the Braun tape recorder.

Presumably, any patents that existed for the Braun products have long ago expired, while Apple's design patents for the iPhone, iPad and other products are obviously still going strong (just ask Samsung.) But it's interesting to see the vintage electronics that gave Apple's designers so much of their inspiration.

Samsung Dealt $1 Billion Blow in Lawsuit with Apple

Submitted by General Patent on Wed, 08/29/2012 - 17:53

On Friday, August 24, the jury in the Apple v. Samsung case found that Samsung had infringed six of Apple's patents for mobile devices and awarded Apple $1 billion in damages - making the case one of the most expensive patent lawsuits ever.

The case may have wide-ranging implications for the very competitive smartphone market, especially non-iPhone platforms like Android and Microsoft's Windows Phone. Some analysts expect that the Windows Phone operating system will grow in popularity precisely because of its dissimilarity to Apple's iOS - and that Samsung, which already makes phones that operate on the Windows Phone platform, may choose to focus more on its Windows Phone offerings in the near future. Others fear that the lawsuit will lead to fewer smartphone options for consumers.

But fear not, smartphone fans. Though $1 billion is a pretty formidable number, so is Samsung's market share: Samsung shipped 44 percent of all Android smartphones in the second quarter of this year. And Android phones (Samsung and otherwise) accounted for about 68 percent of worldwide smartphones shipped in the same quarter, compared to Apple's 17 percent. (Hat tip: LA Times) What's more, according to ZDNet, the U.S. accounts for only 20 percent of Samsung's total smartphone shipments.

And in another bit of consolation for Samsung, the smartphones affected by the jury verdict are older phones - not Samsung's latest offerings, the Galaxy S3 and Galaxy Note. And Samsung has a bit of leverage over Apple due to the fact that Samsung is one of Apple's major suppliers of memory and screens, but Apple's component purchases only make up about 5 percent of Samsung's operating profit.

Samsung had this to say in an "internal memo" that it posted on its blog: "Certainly, we are very disappointed by the verdict at the US District Court for the Northern District of California (NDCA), and it is regrettable that the verdict has caused concern amongst our employees, as well as our loyal customers. However, the judge’s final ruling remains, along with a number of other procedures. We will continue to do our utmost until our arguments have been accepted."

Lodsys Update

Submitted by General Patent on Tue, 07/31/2012 - 16:21

From time to time, we like to check in on the Lodsys lawsuit - which, if you'll recall, was one of the most high-profile patent infringement suits filed in 2011. So what's new with Lodsys and the dozens of app developers and big tech companies it sued? Looks like they're still duking it out - and some defendants are using the anti-joinder provision in the America Invents Act (AIA) to try to extract themselves from the lawsuit.

The AIA made it much more difficult for one company to sue a gaggle of infringers all at once, unless the individual acts of infringement were part of the same transaction. And the anti-joinder provision was one of the sections of the AIA that took effect upon its passage in September 2011. Thus, in the weeks leading up to the bill becoming law, a flurry of multi-defendant patent lawsuits were filed.

Unfortunately for the many app makers and IT firms targeted by the Lodsys lawsuit, they were sued before the anti-joinder provision took effect. But then came a glimmer of hope in the form of In re EMC.

In that case, the Court of Appeals for the Federal Circuit (CAFC) required that a lower court reconsider a defendant's motion for severance in a lawsuit filed pre-AIA. In its May 2012 ruling, the CAFC held that "joinder is not appropriate where different products or processes are involved. Joinder of independent defendants is only appropriate where the accused products or processes are the same in respects relevant to the patent. But the sameness of the accused products or processes is not sufficient. Claims against independent defendants (i.e., situations in which the defendants are not acting in concert) cannot be joined under Rule 20’s transaction-or-occurrence test unless the facts underlying the claim of infringement asserted against each defendant share an aggregate of operative facts. To be part of the 'same transaction' requires shared, overlapping facts that give rise to each cause of action, and not just distinct, albeit coincidentally identical, facts. The sameness of the accused products is not enough to establish that claims of infringement arise from the 'same transaction.' Unless there is an actual link between the facts underlying each claim of infringement, independently developed products using differently sourced parts are not part of the same transaction, even if they are otherwise coincidentally identical.”

With that newly-set precedent in mind, Lodsys defendants Hewlett Packard and Lexmark each filed motions to sever Lodsys' claims against them, citing In re EMC and pointing to the difficulty of mounting a successful defense as one of many defendants.

"Surrounded by a circus of other, competing interests, Lexmark's ability to develop an individual defense is being frustrated," Lexmark's attorneys argued in their motion.

It will be interesting to see how strong a precedent In re EMC will become, and it's early days yet. But we'll keep returning to the Lodsys case as long as its multi-ring circus continues.

Disproving Prior Art Enablement Becomes Patent Applicant's Responsibility

Submitted by General Patent on Mon, 07/30/2012 - 18:07

If your patent is in reexamination, be forewarned: It's up to you to prove that any relevant prior art isn't enabling or anticipatory of your patent claims.

Antor Media Corp. owns a patent (the ’961 patent) relating “to a method and apparatus for transmitting information recorded on digital disks from a central server to subscribers via a high data rate telecommunications network.” Antor sued several companies for patent infringement, resulting in a number of ex parte reexamination requests that were merged into a single reexamination.

In that ex parte reexamination, the Board of Patent Appeals (BPAI) rejected Antor Media Corp.'s patent claims as invalid because the patented technology is both anticipated and obvious based on four pieces of prior art. Antor appealed that rejection before the Court of Appeals for the Federal Circuit (CAFC), claiming that the examiner hadn't provided evidence that the published prior art reference would enable one skilled in the art to practice the invention.

The CAFC, however, affirmed the BPAI's decision - and ruled that patentees shoulder the burden of proving that prior art is not enabling:

"[D]uring patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.”

Though the above ruling focuses on anticipation, Antor also appealed the obviousness ruling - but lost that appeal as well.

Soothing the Sting of Samsung's Win

Submitted by General Patent on Thu, 07/19/2012 - 14:19

Last week we reported on the courtroom verdict equivalent of a backhanded compliment (see "Adding Insult to Victory"), when Judge Colin Birss ruled in London court that Samsung's Galaxy tablet PCs do not infringe Apple's iPad design - because they are just not as understated and "cool" as the iPad.

Now Judge Birss appears to be trying to restore the damage caused by Samsung's mixed victory: He has ordered Apple to place a notice on its UK website for six months and also run ads in several major British newspapers and magazines stating that Samsung did not copy Apple's registered iPad designs.

Apple was upset enough at losing the lawsuit, but is positively incensed at having to effectively publish ads for Samsung.

“No company likes to refer to a rival on its website," one of Apple's attorneys complained to the court.

Looks like this will be one of those lawsuits in which neither side goes home happy, but at least the public is well-entertained.

Adding Insult to Victory

Submitted by General Patent on Wed, 07/11/2012 - 00:44

Samsung won a patent infringement lawsuit this week in a UK court. However, the verdict was (basically) noninfringement due to a lack of coolness. Ouch!

Apple had sued Samsung in the UK, claiming that the Galaxy tablet PCs infringed the iPad's design. Judge Colin Birss ruled against Apple, because he found that Samsung's tablets "do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool."

Despite the Pyrrhic appearance of this victory, it's still a win for Samsung - especially if the Korean company can convince would-be Apple users that it's hip to be square.

An Outspoken Judge Speaks Out - Against Software Patents

Submitted by General Patent on Mon, 07/09/2012 - 00:31

The judge who threw out Apple's patent lawsuit against Motorola Mobility (and, by extension, against Google) has spoken - and he's not a fan of what he calls the "proliferation of patents" in some industries. (Although he finds the lawsuits...amusing?)

Judge Richard Posner of the 7th U.S. Circuit Court of Appeals in Chicago said in an interview with Reuters that "it's not clear that we really need patents in most industries." His view is that patents make sense for the pharmaceutical industry, in which R&D is a tremendous investment, but not so much for software - which requires less of an investment and already gives technology companies an edge when they bring the latest gadgets to market.

In the current case, Posner rejected Apple's request for a ban of Motorola phones because a) it would harm consumers and b) Apple's patent "is not a claim to a monopoly of streaming video!"

And in tossing the lawsuit, Posner also rejected the idea of banning an entire smartphone or other device based on the infringement of patents covering individual features (like streaming video).

Despite his general skepticism about the need for software patents, Judge Posner actually offered to preside over the Apple/Motorola case because of his interest in patents - and he was looking forward to the trial.

However, "I didn't think I could have a trial just for fun," he admitted. (Not to worry, Your Honor - there are plenty of other patent lawsuits in the news at any given time to thrill and amuse IP enthusiasts.)

Of Trademarks and Really Expensive Bowling Shoes

Submitted by General Patent on Thu, 06/14/2012 - 18:35

Gucci won a trademark infringement lawsuit against Guess? Inc., but the payout was much smaller than Gucci anticipated. Gucci America, Inc v. Guess?, Inc.
(SDNY 2012)

The basis of the suit: Gucci accused Guess of infringing five of its trademarks as embodied in some of the ugliest shoes ever to walk the earth. (You can view them here...if you dare.)

Both Gucci's shoes and Guess's knockoffs are reminiscent of Gucci's famous purses, where this writer opines that the design is used much more successfully. Gucci claimed that five trademarked design elements were infringed and/or diluted: The green-red-green stripe; a repeating "GG" pattern with intertwined G's; the use of a diamond pattern with the "GG" design; a stylized G; and a script mark with the brand name. The Guess? shoes incorporated a version of all five trademarks, and Gucci anticipated $120 million in damages.

However, in the final decision, Gucci was only awarded $4.648 million. What went wrong?

We won't go too deep into an analysis of the infringement/dilution (in part because it's complicated; in part because it would necessitate spending more time looking at these shoes), but the judge found the stripe pattern to be a "basic" fashion design; the stylized "G" to be a weak mark; and the "script" mark did not cause confusion because each company's mark spelled a different brand name.

Gucci's case was also weakened by the fact that it was found to have treated Guess? differently from other alleged infringers. Said the judge: “Over the years, Gucci has sent out hundreds of cease and desists letters to entities ranging from national companies such as Bebe, Juicy Couture, and Williams-Sonoma, all the way to small-time infringers, such as a counterfeiter working out of her Los Angeles apartment and a rabbi in New York, who they suspected might sell counterfeit Gucci products to benefit his synagogue.”

In the present case, however, Gucci was aware of the alleged infringement by Guess? for several years but took no action, not even a "cease and desist" letter. Thus Gucci's claims of being unaware of the potential infringement were less than credible. And for the final nail in this case's coffin, Gucci failed to present evidence of actual damages.

The judge seems to share our opinion about the attractiveness of the infringed product, writing that Oscar Wilde “aptly called [fashion] ‘a form of ugliness so intolerable that we have to alter it every six months.’ With the instant disputes now resolved … it is my hope that this ugliness will be limited to the runway and shopping floor, rather than spilling into the courts.”

We hope so too. But if Gucci is still interested in finding infringers to sue, they might find similar shoes as close as the nearest bowling alley.