Posts in Licensing

This week’s news headlines include nomination hearings for the potential incoming U.S. Commerce Secretary, the Supreme Court’s granting certiorari for an important case in biologics, a patent infringement suit targeting the NFL, the expiration of copyright protecting the works of a very influential science fiction author from the early 20th century, and another sports figure — this time UFC Lightweight Champion Conor McGregor — filing trademark applications.

One of the more exciting young talents currently playing in the National Hockey League is Johnny Gaudreau, a forward for the NHL’s Calgary Flames who is also known by the nickname “Johnny Hockey.”… U.S. Trademark Registration No. 4992448 protects the use of the standard character mark “JOHNNY HOCKEY” on goods in trademark class 25, which includes marks registered for clothing, footwear and headgear. Specifically, the mark has been registered for use on clothing goods such as shirts, sweatshirts and coats as well as footwear goods like shoes and boots.

While those in the military are often thanked for their service, let’s also thank researchers like Dr. Rosenberg and his colleagues who spend their lives trying to alleviate human suffering. But that can only happen when their discoveries are commercialized– otherwise they are merely generating interesting research papers. Rather than deserved accolades, NCI and Kite Pharma got a pie in the face from the NY Times.

The fine on Qualcomm is for allegedly refusing to license standard essential patents to competing companies on fair and reasonable terms. According to the Korean authorities, Qualcomm’s actions amounted to coercion for the purpose of strengthening its monopolistic power in the patent license market and chipset market… Not surprisingly, Qualcomm vehemently disagrees with the assertions made in the press release, has pointed out that a final written decision is not generally expected after an announcement like this for another 4 to 6 months, and promises to aggressively appeal… Rosenberg explained that Qualcomm was repeatedly denied access to documents and the right question witnesses, rights that are guaranteed to U.S. companies under the Korea-U.S. Free Trade Agreement.

On Monday, November 28th, the UK-based nanotech firm Nanoco Group announced that it had acquired a patent portfolio from Eastman Kodak in the field of quantum dot electroluminescent displays (QLED). The commercial terms of the deal were undisclosed at the time of the announcement. According to a statement from Nanoco CEO Michael Edelman, the acquisition reflects the company’s belief that liquid crystal display (LCD) technologies will dominate in the coming years while QLED tech could become a very valuable contender in display tech over the long term.

A recent report from French consulting firm PMP Conseil made waves in the media for indicating that public performance exemptions in U.S. copyright law, such as Section 110 exemptions, cost copyright owners $150 million each year in lost royalties, $44 million of which is attributable to U.S. copyright owners in Europe. On November 11th, this study was presented by the International Council of Creators of Music (CIAM) at it’s annual conference in London. CIAM maintains that the U.S. is one of two “more economically developed countries” that have an exemption in place for playing music in bars, restaurants and retail establishments by radio or television.

Ohio State alleges that CafePress offers 1,100 Ohio State Buckeyes designs available on a total of 67,300 products. These products infringe upon trademarks held by Ohio State protecting its use of a buckeye flower design on decals and stickers, a large stylized “O”, a similar stylized “O” with the wording “OHIO STATE” running through the center and an illustration of four figurines forming the letters “O-H-I-O” with their arms above their heads. Ohio State also alleges trademark infringement on CafePress merchandise reflecting the persona of Urban Meyer, who has assigned the rights to his name, voice, signature and other rights of persona to the university.

American semiconductor giant Qualcomm has been taking actions in recent months against a Chinese smartphone developer whose stature has been on the rise. In a press release dated October 14th, Qualcomm announced that it had filed a complaint with the U.S. International Trade Commission (ITC) against Meizu, a portable electronics manufacturer founded in 2003 and headquartered in the Chinese city of Zhuhai. Along with the ITC complaint, Qualcomm also filed a patent infringement action against Meizu in Germany’s Mannheim Regional Court and initiated a infringement-seizure action in France to begin collecting evidence for a potential future patent infringement action in that company.

The lawsuit filed by Lucasfilm names a series of defendants including Michael Brown, also known as Flynn Michael, a resident of Oakland, CA, and the operator of a number of businesses including New York Jedi, Lightsaber Academy as well as Thrills and Skills. The complaint also lists a number of websites with similar names operated by the defendants. Lucasfilm notes that the defendants are in the business of offering lightsaber classes to students for improving their skills with lightsaber equipment and perform as a “Jedi.” For example, the website for New York Jedi offers a series of what it calls “light saber choreo classes” for teens and adults. As the about section of its website states, “while we are not specifically Star Wars-centric, we do rely heavily on many of the principles and training used by that of the Jedi Order.”

Anyone who has followed recent developments in the U.S. patent landscape, however, might note something interesting occurring in this particular case. According to the recent patent assertion entity (PAE) report put out by the Federal Trade Commission (FTC), Network-1’s business activities would seem to put it in the category of what the FTC calls a “litigation PAE.”… Unfortunately for the FTC, Network-1’s license agreement with Polycom is horribly inconsistent with the agency’s findings on the exact business model that Network-1 seems to employ.

The Federal Trade Commission’s (FTC) recently released report on patent assertion entities (PAEs) includes a number of key findings made by the agency on the business model of such companies. The FTC identified two different business models employed by PAEs which differ in terms of litigation and licensing activity. Most of the FTC’s recommendations are legislative in scope but the report does include some advice for the country’s judicial system. For example, the report also includes a number of recommendations to deter what the FTC calls “nuisance litigation.”

On Wednesday, October 26, 2016 at 2pm ET, please join Gene Quinn (IPWatchdog) and Monty Wright (VP of IP Assets for GE Ventures Licensing) for a discussion on how IPW professionals can become more agile and profitable by using intelligence derived from big data. Whether you are representing clients or attempting to deliver results for your company, the insights waiting to be discovered both with respect to your in-house landscape and from a competitive intelligence standpoint are great.

Basing policy recommendations on no evidence, or at best anecdotal evidence, has great potential to do more harm than good…especially when some of the missing evidence is the other side of the equation – the benefits afforded by patent licensing activity… Instead of seizing the opportunity to survey the patent licensing landscape and shed light on behavior that otherwise is invisible to the public, the FTC squandered the chance and instead developed two arbitrary categories of PAEs, determined that one of these categories was not good, and developed a set of policy recommendations because of “nuisance” litigation. By making recommendations without gathering or using the very facts that were supposed to be the public benefit of this PAE study, the FTC’s report is undoubtedly going to do more harm than good.

Why should the costs of the tortfeasing infringer be relevant in determining whether the extracted value from a settlement is fair? The fact that law firms charge a lot of money to defend patent infringement cases, and don’t particularly have any incentive to settle cases early, somehow translates into certain settlements being for nuisance value without any consideration of whether the settlement is a fair value for the rights trampled upon by the infringer? The FTC has quite a lot of explaining to do, because it seems they picked an arbitrary number that is a function of what attorneys ordinarily charge infringing defendants through discovery. I don’t see how that is a function of the value of the innovation, or how it says anything about the merits of the infringement case, the damages case, or the tactics of the patent owner. In fact, it seems as if the $300,000 figure is completely irrelevant.

With 22 vendors currently on the IAM Market, the online portal has seen about 50 percent growth since launching last year. “To be honest, my ambition is that we’d be further down the road than we are now with vendors,” Stewart said. Although he was pleased with the patent marketplace’s current status, he’d be “plenty more pleased” when they have 50 or more vendors on the site. Stewart also expressed some surprise as to the amount of information available in some of theportfolio presentations provided by vendor companies to IAM Market. “These are major corporations looking to monetize assets, we thought they would just have presentation packs that could be uploaded, but in many cases it’s not,” he said.