Tiffany, Hasbro, MotionPoint: Intellectual Property
By Ellen Rosen – Nov 1, 2013 12:01 AM ET
An arbitrator ordered Hasbro Inc. (HAS) to pay about $72.9 million in royalties to Atlanta-based Johnson Research & Development Co., one of its licensors, over the toymaker’s line of Nerf guns.
A separate case, pending in federal court in Atlanta, seeks royalties from Hasbro’s line of Super Soakers, which were invented 25 years ago by Johnson’s founder, Lonnie G. Johnson, an engineer.
The royalties claimed are somewhat unusual. They relate to Hasbro products that are based on the appearance of products manufactured using licensed technology.
Johnson originally sought arbitration in February. At the same time, Johnson sued Hasbro in federal court in Georgia over royalties for sales of the Super Soaker.
The allegations in both the arbitration and litigation are similar, Benjamin Easterlin IV, Johnson’s lawyer, said in a telephone interview yesterday.
Hasbro “strongly disagrees with the arbitrator’s ruling and is considering all possible appeals and challenges to the award,” according to a statement from the Pawtucket, Rhode Island-based company.
In the statement, the toymaker said it “anticipates taking an additional charge to its earnings for” the fiscal third quarter, which ended Sept. 29. Its stock closed yesterday at $51.65, a drop of 1.2 percent.
The arbitration award isn’t public yet.
The Super Soaker case is Johnson Research & Development Co. v. Hasbro Inc., 1:13-cv-00451, U.S. District Court, Northern District of Georgia (Atlanta).
Victoria’s Secret, Delta Websites Caught in Translation Spat
MotionPoint Corp., a maker of technology that translates business websites into foreign languages for customers such as Victoria’s Secret Stores LLC and Delta Air Lines Inc. (DAL), is asking a judge not to block its core product in a patent lawsuit brought by a rival.
A federal jury in Oakland, California, found in July that closely held MotionPoint, whose customers also include the U.S. Centers for Disease Control, directly infringed a patent held by TransPerfect Global Inc. and should pay $1 million in damages. New York-based TransPerfect, whose customers include Home Depot Inc. (HD) and American Airlines Inc., is seeking a permanent injunction barring the sale or use of MotionPoint technology that directly or indirectly infringes the patent. A hearing is scheduled for today.
The two companies have competed head-to-head for customers, with closely held TransPerfect losing clients to MotionPoint and at times lowering its prices as much as 20 percent to compete, Michael Eisenberg, TransPerfect’s lawyer, said in a court filing.
“TransPerfect would risk losing potential new customers for its entire range of products and services, which is a recognized harm found to support an injunction,’ Eisenberg said in the filing.
If an injunction isn’t granted, TransPerfect may seek a running royalty rate of more than 4 percent of sales of infringing technologies, he said.
TransPerfect representatives didn’t immediately respond to an e-mail sent to the company’s press office seeking comment on the case.
MotionPoint, based in Coconut Creek, Florida, provides translation services for more than 1,800 websites, its lawyers said in a court filing. An injunction targeting its services on customer websites would ‘‘deny hundreds of thousands, if not millions, of foreign language speakers access to translated versions of websites,” Matt Robson, MotionPoint’s attorney, said in a court filing.
The case is TransPerfect Global Inc. v. MotionPoint Corp., 10-cv-02950, U.S. District Court, Northern District of California (Oakland).
For more patent news, click here.
Tiffany Wins Injunction, Damages Against Counterfeiters
Tiffany & Co. (TIF) won a trademark case filed earlier this year against 78 companies that sold counterfeit Tiffany jewelry on their websites.
U.S. District Judge Kenneth Marra in Miami awarded the company $2.18 million in damages on Oct. 29 along with a permanent injunction.
The 78 defendants sold counterfeit Tiffany goods via websites which also infringed Tiffany’s trademarks, such as salestiffany.net, shoptiffanyco.com, tiffanyandcomall.com and bluejewelrybox.com. The judgment required that the website operators’ domain names be transferred to Tiffany.
Michael Kowalski, chairman and chief executive officer of Tiffany, said in a statement, “Trademark counterfeiting severely damages brand owners and consumers alike. The way to stop it is to take aggressive action against the counterfeiters and make them pay, civilly.”
Tiffany operates jewelry stores and manufactures products through its subsidiaries and doesn’t authorize the sale of its merchandise through any third-party websites. Authentic Tiffany merchandise can only be purchased online through www.tiffany.com.
Tiffany was represented by Stephen Gaffigan, a Fort Lauderdale, Florida, lawyer who specializes in counterfeiting suits.
In February, Tiffany accused Costco Wholesale Corp. (COST) in a lawsuit of selling counterfeit Tiffany diamond engagement rings. Costco isn’t authorized to sell Tiffany items, the New York-based jewelry retailer said in its complaint.
The case is Tiffany (NJ) LLC v 925jewelryonline.com, 13-cv-61311, U.S. District Court, Southern District of Florida (West Palm Beach).
Nestles Sued for Trademark Infringement Over Pet Food Line
Nestle Purina PetCare Co., a unit of Nestle SA (NESN), was sued by Nature’s Variety Inc., a closely held pet food company, for trademark infringement.
The lawsuit, filed Oct. 30 in federal court in New York, alleges that Nestle’s Purina One Smart Blend True Instinct Pet food is packaged “bearing a mark that is confusingly similar” to Nature’s Variety Instinct mark for its pet food products. The complaint says that Instinct brand is Nature’s Variety best-selling brand, “formulated to approximate the ancestral diet of dogs and cats, consisting primarily of proteins, and are grain-free and gluten-free.”
While the complaint doesn’t disclose revenues, it says that 80 percent of the company’s sales come from the brand, which is sold at independent retailers as well as Petco Animal Supplies Inc.
Keith Schopp, a spokesman for St. Louis-based Nestle, said in an e-mail that the company is “aware of the lawsuit filed by Nature’s Variety. We are confident it is without merit and will vigorously defend ourselves.”
Weil, Gotshal & Manges LLP represents St. Louis-based Nature’s Variety.
For more trademark news, click here.
Marvin Gaye’s Children Countersue Over Hit ‘Blurred Lines’
Two of Marvin Gaye’s children, Nona Marvisa Gaye and Franklin Christian Gaye, sued singer Robin Thicke, his co-producers Pharrell Williams and Clifford Harris Jr. and others Oct. 30 over the summer’s hit “Blurred Lines.”
The Gaye family claims that the song infringed their father’s classic “Got to Give It Up.” They also claim that other Thicke songs copied Gaye’s “After the Dance” and “I Want You.”
Thicke originally sought a declaratory judgment in August to have the federal court in Los Angeles rule that his song didn’t infringe any of Gaye’s music.
Howard King, who represents Thicke, Williams and Harris, said the counterclaim wasn’t a surprise. He said that after the Gaye family initially claimed the song infringed, they attempted to reach a settlement, “not out of a sense of responsibility, but because we didn’t need the controversy. But we couldn’t make the Gaye children happy.”
The complaint also accuses music publisher EMI of breach of contract and fiduciary duty for allegedly failure to protect the copyrights for the Gaye songs. EMI, now owned by Sony/ATV Music Publishing, a division of Sony Corp., (SNE) publishes music produced by Williams.
Sony-ATV said in a statement, “While we have not yet seen the claims by the Gaye family against EMI, we have repeatedly advised the Gaye family’s attorney that the two songs in question have been evaluated by a leading musicologist who concluded that ‘Blurred Lines’ does not infringe ‘Got To Give It Up.’”
Donald Zakarin of Pryor Cashman has been retained to represent Sony/ATV in the lawsuit.
The Gaye’s case is Gaye v Williams, 2:13-cv-06004, U.S. District Court, Central District of California (Los Angeles). The original declaratory judgment case is Williams v. Bridgeport Music, Inc., 2:13-cv-06004, U.S. District Court, Central District of California (Los Angeles).
For more copyright news, click here.
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