Letter from AmeriKat

Giving thanks for one’s blessings can sometimes be a difficult feat - one that the AmeriKat was struggling with, this Thanksgiving. Thanksgiving took place this past Thursday, and on every fourth Thursday of November, to commemorate the Pilgrims of Plymouth Colony celebrating their survival of a brutal winter. The modern celebration is one where Americans watch Macy’s Thanksgiving Parade or football, eat copious amounts of cornbread, turkey, cranberry sauce and pumpkin pie, and give thanks to the good things in their life. Besides the obvious go-to of being thankful for her family, friends and health, the AmeriKat was struggling for something more thoughtful to thank. However, a couple of weekends ago in a crowded bar a friend quizzed her: “What is your ideal area of law to practice in?” Without hesitation or deviation she replied, “What I do now! I would not want to do anything else but intellectual property and media law.” The AmeriKat is thankful for being involved in an area of law that constantly provides her with the intellectual challenge and whimsy that only intellectual property law can. Because really, reading a case about beer is far more exciting than reading a case about share acquisitions, isn’t it?!

With US courts and lawyers on recess during the Thanksgiving holiday, not too many noteworthy events have occurred in US IP litigation this week, but the AmeriKat has compiled the best bits from the past week.

Warner Music and Sony drop XM Radio suit

The exception to the generally slow IP week in the US, however, was the decision of District Judge Lewis Kaplan in Famous Music LLC v XM Satellite Radio Inc in the Southern District of New York. Last Tuesday, District Judge Kaplan allowed Warner Music Group and Sony Corporation (only two of the 26 claimants) to drop their copyright infringement lawsuit against XM Satellite radio. Neither party cited any reasons. The suit had been brought by the claimants against XM due to XM’s portable Pioneer Inno satellite receiver which permitted users to record and permanently store songs in a library held on the device. XM previously settled related suits with Universal Music Group and Warner Music Group. According to Bloomberg, neither lawyer for either of the parties returned a call for comment.

European “Wise Men” to take on Google Books

According to French Culture Minister Frederic Mitterand, EU ministers in Brussels last Friday agreed to create a committee of “wise men” to establish a plan to challenge Google Books. In an interview with Journal du Dimanche, Mitterand stated that the digitization of books should not be left to private companies and it was for the newly formed committee to “bring together national views and draw up a joint position.” According to Reuters, Mitterand also stated that:

"For my part, there isn't any anti-Americanism. Nevertheless, I believe America isn't a monolith, and different opinions must be expressed. That's why I don't want the State to surrender before the markets…It's not up to this or that private group to decide policy on an issue as important as the digitization of our global heritage. I'm not going to leave this decision up to simple laisser-faire."

Maybe it is the translation, but the AmeriKat is quick to point out that there is in fact a distinction between Google Inc. and the US, which is a country. She is concerned that if such imprecise language continues there will be a PR frenzy of Europe v America in the Google Book saga – a battle that the US will be destined to lose if equated solely with Google’s stated position.

Muscle Ad in Mag invalidates patent

Two weeks ago, the US Court of Appeals for the Federal Circuit upheld an Eastern District of Texas decision in Iovate Health Science Inc v Bio-Engineered Supplements & Nutrition Inc that a muscle magazine advertisement about a body-building supplement published before the critical date rendered seven of the claims obvious and therefore the patent was invalid. Circuit Judge Alan Lourie held that the advertisements in Flex magazine in June 1995 and 1996 anticipated the 1998 formal patent application in that the person skilled in the art would be able practice the invention by reference to the exact amounts of known ingredients as listed in the advertisements. The defendant’s attorney, Phillip Segrest Jr. of Husch Blackwell Sanders, stated that he was not aware of other Federal Circuit rulings involving advertisements. For more information please see this article in the National Law Journal.

Nokia v Apple – With FRANDS like these who needs enemies?

Further to this recent AmeriKat letter regarding Nokia’s patent infringement suit against Apple, American Litigation Daily reports that it will be law firms Alston & Bird versus Wilmer Cutler Pickering Hale and Door for claimants and defendants respectively in the potentially mammoth trial.

Bellagio in trade mark bust-up

A city known for its whimsy is Las Vegas, Nevada. Known as the Entertainment Capital of the World, Las Vegas is home to casinos, resorts and the most famous of Las Vegas hotels, the Bellagio. The Bellagio is owned by MGM Mirage, the second largest gaming corporation in the world. Last Monday, Bellagio filed a lawsuit against Bellagio Limousines of Toronto for trade mark infringement and dilution, unfair competition and cybersquatting. Bellagio alleges that the defendants have take unfair advantage of their marks which “have become distinctive and famous” worldwide for hotel and casino resort services including limousine services. The defendant’s registered their domain name in July 2008 which offered limousine services in Canada and the US and included images of the famous hotel and its equally famous water fountains. The claim seeks an injunction restricting further use of Bellagio’s trade marks and the transfer of the disputed domain name. For more information please see this article in the Las Vegas Sun.

USPTO and India Unite

Following the signing of a Memorandum of Understanding for the cooperation on intellectual property rights protection and enforcement between the USPTO and India’s Department of Industrial Policy and Promotion (DIPP), the USPTO announced last Monday that the Government of India has granted USPTO’s patent examiners access to TKDL - a digital database containing a library of information of traditional Indian knowledge. The TKDL is to aid the US and India in preventing the misappropriation of traditional knowledge by way of issuance of patents. Sharon Barner, the Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the USPTO stated:

“The USPTO has long been concerned about attempts to patent traditional knowledge, not only because it my result in an incorrectly granted patent, but because it removes knowledge from the public domain.”

The USPTO examiners already use several databases and tools in their examination to prevent patenting of existing traditional knowledge. TKDL was developed by India’s Council of Scientific and Industrial Research (CSIR) and the Department of Ayurveda, Yoga & Naturopathy, Unani, Siddha and Homeopathy (AYUSH). The database includes over 200,000 traditional medicine formulations to a tune of around 30 million pages.