Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Here are several IP posts that you should check out:

• The MTTLR Blog's Lauren Strandbergh has an interesting post (click here for it) about the implications of the Google Book's settlement and how the Book Rights Registry -- a Copyright Clearance Center or ASCAP-like entity that will, among other things, distribute proceeds from out-of-print books to the authors or rights holders  -- will change the publishing industry.  Strandbergh raises the right questions, but we will only get answers as we ee how the system works.
   
• [UPDATE:]  Speaking of the Copyright Clearance Center and ASCAP, the WSJ Law Blog has a post today (click here to read it) based upon this WSJ story (subscription required for the full text) about two new companies that are aggregating patents and guaranteeing never to assert those patents against their members.  It is not clear from the story if they plan to assert them against non-members, but it is an interesting move in the struggle between non-practicing entities and corporations that feel targeted by patent litigation.  I believe there have been industry-specific versions of these companies in Europe for some time.  As I understand some of those entities, the do assert their patents against non-members to help fund operations.
   
• Victoria Pynchon offers advice for dealing with those uncomfortable Thanksgiving political conversations with family and friends at her Settle It Now Negotiation blog -- click here to read it.  The advice translates well for unwinable conversations with opposing counsel.
   
• This week's Blawg Review is up at LawyerCasting -- click here to read it.  It provides lots of advice for lawyers dealing with the tough economic times.

 

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Here are some IP stories that will give you weekend reading and viewing:

• UCLA Professor Doug Lichtman launched the IP Colloquium, a series of podcasts focused on the most pressing IP issues of the day.  Lichtman tells me he aspires for the IP Colloquium to become National Public Radio for IP lawyers.  Lichtman is well on his way.  In his first episode, Lichtman discusses copyright issue with the Electronic Frontier Foundation's Fred von Lohmann.  And if the content is not enough, Lichtman has also secured CLE credit in several states.
   
• IPTABlog has a comprehensive post -- click here to read it -- on Google's settlement with the Association of American Publishers over the Google Book Search.  The post links to much of the media coverage, as well as the settlement agreement.  Also, check out the WSJ Law Blog's post on the settlement's impact on related cases (click here to read it) and Madisonian's take on the issues springing from the settlement (click here to read that post).

 

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Vulcan Gold, LLC v. Google, Inc., No. 07 C 3371, 2008 WL 2959951 (N.D. Ill. Jul. 31, 2008) (Manning, J.)

Judge Manning granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing plaintiffs’ RICO claims. The Court previously dismissed plaintiffs’ complaint with leave to refile – click here to read the Blog’s post on that opinion. The Court held that plaintiffs did not sufficiently plead an enterprise. Plaintiffs only alleged that the defendants were contractually related within Google’s adsense program. And the alleged contractual relationship did not show consensual decisionmaking or joined purpose. Plaintiffs’ RICO claims were, therefore, dismissed.

The Court denied defendants’ motion to dismiss the unjust enrichment and civil conspiracy claims. Fed. R. Civ. P. 9(b) heightened pleading standards did not govern the claims because they were both based upon trademark infringement, not fraud.

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Illinois Computer Research, LLC v. Google Inc., No. 07 C 5081 (N.D. Ill.) (Pallmeyer, J.).

The parties in this case filed a Stipulation of Dismissal this week -- click here to read it.  Of course, details of the settlement were not disclosed.  But this appears to close what had been a very contentious dispute -- click here to read the Blog's coverage of the case. 

One other note about the case, I had been meaning to cover plaintiff's motion to strike some of defendant's pleadings for using variations of the term "shell corporation," arguing that the term is derogatory in a manner similar to the "patent troll" moniker.  Judge Pallmeyer ruled on the motion in a Minute Order stating that the Court would no longer use the terms, but denying the motion to strike.  Because the Minute Order does not provide much analysis and because the issue was already covered very well by Joe Mullin at The Prior Art blog -- click here to read Mullin's post -- I will not do a separate post on the motion.  But if you are interested in the historical, legal use of the term, the pleadings on the motion are an excellent information source.
 

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Managing Intellectual Property published its annual list of the fifty most powerful people in the international IP community (hat tip to Patent Docs for pointing it out).  Click here for the list (subscription or two week free trial sign up required).  There were two honorees with Chicago connections:

• Rhonda Steele (#8) -- Steele is both the president of INTA and Asia-Pacific marketing properties manager for Mars.  While Steele does not necessarily work in Chicago or on Chicago-specific IP, Mars makes Fun Size versions of its 3 Musketeers, Snickers and Milky Way candy bars in Chicago.
  
• Jim Malackowski (#34) -- Malackowski is a founder of Chicago-based Ocean Tomo, as well as its president and CEO.  Among other things, Ocean Tomo is well known for its patent auctions (at leas the last several of which have each totalled more than $10M in sales), IP valuation services and damages expert work.

These IP luminaries share the honor with Second Life avatars (#1), the PTO's Director John Dudas (#4), the Federal Circuit's Judge Michel (#9), Harry Potter (#14),and  blogger and Google copyright counsel William Patry, of the Patry Copyright Blog.

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LimitNone v. Google, Inc., No. 08 C 4178 (Manning, J.).

Last month I posted that LimitNone, a Chicago company, sued Google for trade secret misappropriation seeking $1B -- click here for that post.  Earlier this week, Google removed the case to the Northern District, arguing that LimitNone's Illinois Consumer Fraud and Deceptive Business Practices Act ("ICFA") claim sounded in copyright and, therefore, was preempted by the Copyright Act creating federal question jurisdiction (click here for Google's removal papers). 

In its complaint, LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone's gMove software -- software that helps Microsoft Outlook users migrate data to the Google platform.  Google allegedly assured LimitNone that it would not offer a competing product.  But after receiving LimitNone's trade secrets, including its software code, and promoting the $19 gMove software, Google allegedly began offering a free, competing software package which allegedly used LimitNone's trade secrets.   LimitNone has not filed any responsive papers or pleadings yet, but I will keep you updated if LimitNone challenges the removal.

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The Chicago Tribune's Jessica Guynn reported last week (click here to read the article) that a Southern District of New York judge ordered Google to produce information about YouTube user's viewing habits.  Viacom sued YouTube and its parent Google, alleging copyright infringement based upon the alleged infringing posting of Viacom's copyrighted content on YouTube.  Guynn reports that privacy advocates are concerned about the ruling.  But Guynn also quotes Viacom's General Counsel Michael Fricklas saying that "unequivocally that this information will not be used" outside of the lawsuit.

The WSJ Law Blog also has a great post about the order -- click here for the post -- explaining the type of information that Google was ordered to disclose:

Viacom wants records from a YouTube database that records each time a video is watched and pairs that with two kinds of information about people who viewed it: log-in names (for YouTube users that have accounts), and IP addresses (for YouTube users without accounts).

For those concerned about the production, there is nothing to be worried about.  Virtually every federal case involving sensitive information is governed by a protective order preventing use or disclosure of the information outside of the litigation.  And in virtually all of those cases the parties honor the protective order and the information is not disclosed or used besides in the litigation.

[UPDATE:]  Randy Picker at the University of Chicago Faculty Law Blog has an interesting post questioning how the information could be kept or produced by Google differently to avoid disclosing identities along with the viewing information, and whether the information is covered by the Video Privacy Protection Act of 1988 (enacted after Judge Bork's video rental records were obtained during Senate confirmation hearings):

So Viacom has a legitimate interest in seeing YouTube’s viewing records. But of course viewers have a privacy interest in those records as well. Exactly how many views have I contributed to The Evolution of Dance, the, I gather, most-viewed video on YouTube (currently at 91,619,702 views)? (I have watched only because I teach copyright, not because it is quite funny.)

This isn’t abstract or speculative. Indeed, after the release of some information regarding then-Judge Bork’s viewing habits came out in his Supreme Court confirmation hearings, Congress passed the Video Privacy Protection Act of 1988, codified at 18 USC 2710. (See the background page on this provided by the Electronic Privacy Information Center.)

I am unaware of any decisions assessing whether an online video provider like YouTube is covered by the VPPA, but it is written in sufficiently media-neutral terms that it appears that YouTube would be covered. If so, that triggers a number of obligations. The VPPA requires the destruction of records containing personally identifiable information “as soon as practicable, but no later than one year from the date the information is no longer necessary for the purpose for which it was collected.” Personally identifiable information is, unsurprisingly, a defined term and “includes information which identifies a person is having requested or obtain specific video materials or services from a videotape service provider.”

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LimitNone v. Google, Inc., (Cook County Ct. Jun. 24, 2008).

Last week, LimitNone, a Chicago company, sued Google for trade secret misappropriation seek $1B.  LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone's gMove software -- software that helps Microsoft Outlook users migrate data to the Google platform.  Google allegedly assured LimitNone that it would not offer a competing product, but after receiving LimitNone's trade secrets and promoting the $19 gMove software, Google began offering a free, competing software package which allegedly used LimitNone's trade secrets.  LimitNone filed a speaking complaint, for example:

With gMove priced at $19 per copy and Google's prediction that there were potentially 50 million users, Google deprived LimitNone of a $950m opportunity by offering Google's competitive product for free as a part of its 'premier' Google Apps package

This appears to be an interesting and potentially significant case.  I will keep my eye on it and update you as opinions and events occur.  For more on the filing, check out:

• Chicago Tribune
  
• Slashdot
  
• Tech Report
  
• ZDNet

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When Google introduced its Google Patents, it revolutionized online (read "free") patent searching.  But I always had one complaint.  When I use Google Patents, my goal is usually getting a either a pdf or a hard copy (which I usually obtain by printing a pdf) of the patent.  Google Patents gives you that, but it takes too many steps. 

Rolf Claessen of IP Newsflash (a German patent attorney and partner with v. Kreisler Selting Werner in Cologne, Germany), recently emailed me about his new Free Patent PDF Download tool that solves my one, relatively minor, Google Patents complaint.  Enter your patent number (after free registration, that is) hit enter and get your pdf.  Also, Claessen's tool uses the espacenet database, so its coverage is substantially more than just US patents.

Patent Retriever is another new and free download service that allows you to download US, European and PCT patent and published applications as PDF files (no registration required).

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Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. Mar. 20, 2008) (Manning, J.).

Judge Manning granted in part the defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs' RICO, Lanham Act and related state law claims. Plaintiffs alleged that the "parking defendants" – entities that allegedly register common misspellings of domain names – worked together and conspired with defendant Google to populate the misspelled domains with revenue-generating advertising related to the actual web sites' business.*

Anticybersquatting Consumer Protection Act ("ACPA")

The Court denied the Parking Defendants motion to dismiss plaintiffs' ACPA claims. While plaintiffs did not allege that the Parking Defendants were the registrants of the domains at issue, they did allege that the Parking Defendants registered, owned, and controlled the sites. Furthermore, the Court would not rule on the factual issue of whether the domains – for example, vulcangolf.com and vulcanogolf.com – were confusingly similar to plaintiffs' marks.

The Court denied Google's motion to dismiss because while Google did not register or own the domains at issue, it was sufficient that they allegedly "trafficked" in them by working in concert with the other defendants.

Trademark Infringement

The Court upheld plaintiffs' trademark infringement claims. It was sufficient that plaintiffs had trademarks covering their own domain names, they were not required to have marks covering defendants' misspelled domains. Additionally, the Court could not rule upon Parking Defendants' arguments that they did not use the marks. The complaint alleged use, and determining whether Parking Defendants' particular acts constituted use would require reliance upon facts outside the complaint.

Google argued that it should be dismissed because it was, at most, an innocent infringer and it had already agreed to permanently exclude all allegedly infringing domains identified by plaintiffs. Because the only remedy against an innocent infringer was an injunction, which Google had already agreed to, Google argued should be dismissed. The Court, however, did not dismiss the trademark claims against Google because dismissal would have required reliance upon facts outside of the complaint. The Court denied the motions to dismiss plaintiffs' false designation of origin claims for the same reasons the trademark infringement claims were not dismissed.

Trademark Dilution

Defendants argued that the dilution claims must be dismissed because plaintiffs' marks were not famous. But because plaintiffs pled fame and because fame is a question of fact, the Court did not dismiss the claims.

*  This post only addresses the IP aspects of the opinion, but the opinion also considers RICO and state law issues.

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Several unrelated legal stories that are worth a read:

• An excellent Illinois Business Law Journal article regarding whether Google is losing its trademark to genericide.  It concludes that Google's mark is relatively safe, partly because Google's trademark is identical to its domain name.*
  
• Patent Troll Tracker has been unmasked.  The unmasking was based, at least in part, on Ray Niro's bounty for Troll Tracker's name.  As would be expected, Troll Tracker unmasked himself with class and a sense of humor.  He is taking a few weeks off from blogging to decide whether to continue.  I hope he decides to continue.  Troll Tracker is a powerful voice on some complex issues, and he is right that it is great to see another inhouse legal blogger.  Plus, it would be a shame for Troll Tracker to disappear just after Ron Coleman finally discovered him. 
  
• Blawg Review #148 is up at Blawg IT.  In addition to the usual links to law blog posts, Brett helps us smell the electronic roses with numerous non-legal video clips.

*  Hat tip to Michael Atkins at the Seattle Trademark Blog for pointing out the article during his Trademark Dilution Weekend.

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Illinois Computer Research, LLC v. Google Inc., No. 07 C 5081 (N.D. Ill.) (Pallmeyer, J.).

Judge Pallmeyer is presiding over this case, which began as a standard case of a patent holding company, Illinois Computer Research (“ICR”) suing a large defendant, in this case Google, for patent infringement. The complaint was a standard three page notice pleading complaint alleging that Google infringed ICR’s patents based upon its Book Search functionality – click here for the original complaint. But the case quickly morphed into a dispute between a law firm, Fish & Richardson (“Fish”), and its former partner, the inventor and former owner of the patents in suit Scott Harris. ICR amended its complaint adding Fish and turning it in to a speaking complaint alleging that Fish forced Harris to resign because of the suit against Google and seeking a declaratory judgment that Harris, not Fish, owned the patent in suit – click here for the amended complaint. 

Fish answered the amended complaint – click here for the answer – and filed speaking counterclaims alleging that Harris breached his partnership contract and fiduciary duties, and seeking a declaratory judgment that Fish owned the patents – click here for the counterclaims. Harris responded with his own speaking counterclaims alleging tortious interference and defamation – click here for Harris’s counterclaims and click here for Fish’s answer. Shortly after Fish’s second answer, Google was voluntarily dismissed with prejudice, but the case regarding Harris and Fish continued.

Fish filed a motion for expedited discovery, which the Court granted in court, without an opinion detailing the discovery allowed. Fish also filed a Fed. R. Civ. P. 12(c) motion for judgment on the pleadings seeking to dismiss plaintiffs’ tortious interference and defamation claims. That motion has been briefed, but not decided yet. And last week, Fish filed a motion to amend its counterclaims and third-party complaint naming six additional entities – click here for the motion.  The motion does not identify the new parties specifically except to say that some are unnamed Doe defendants and that they are all related or believed to be related to Harris’s and ICR’s law firm Niro Scavone. Fish appears to be making a Propat-style argument that some or all of the additional defendants have or had an interest in the patent in suit and, therefore, are necessary parties. I will cover these opinions as they come out, but in light of all of the coverage this case has been getting – for example, see this recent Troll Tracker post and this case timeline at Joe Mullin’s The Prior Art Blog which Mullin promises to update periodically – I thought readers would be interested in some detailed background of the case. More to come as the Court issues opinions.

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The Chicago Tribune has had a few IP-related articles this week. First, the Tribune reported – click here for the story -- that the House is about to take up a bill that would allow an abbreviated approval process for generic versions of biotech drugs, commonly known as biosimilars or biogenerics, similar to abbreviated new drug applications. The Senate Health, Education, Labor and Pensions Committee approved a similar bill in June, called the Biologics Price Competition and Innovation Act of 2007.

Second, the Tribune reported – click here for the story – about a new book, "The Telephone Gambit: Chasing Alexander Graham Bell's Secret," by Seth Shulman -- which argues that Alexander Graham Bell, one of America’s most famous patentees, stole his most famous invention, the telephone, from his rival Elisha Gray. And Shulman argues that he was aided by attorneys and a corrupt patent examiner.  The book is due out January 7. It looks like it could be an interesting read.

Third, the Tribune reported – click here for the story -- that the Federal Circuit reversed in part the Western District of Wisconsin’s April 2007 decision which held that Google’s AutoLink and AdSense feature did not infringe HyperPhrase’s patents. The Court upheld Judge Shabaz’s decision that AdSense did not infringe the patents and remanded the case for further proceedings regarding whether the AutoLink feature infringed two of the patents in suit. Click here for a copy of the Federal Circuit decision.

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The Chicago Tribune ran a story on the front page of Wednesday's Business section about the use of trademarks in keyword internet advertising:  Trademark Battlefield.  The story discussed various efforts to stop internet search engines (like those offered by Google, Yahoo and Microsoft) from selling trademarked terms as search keywords.  For example, the story suggested that State Farm, an insurance company, may have purchased the name of its chief competitor, Allstate, from Google.  As a result, if you google "Allstate" Allstate's websites will come up first in the search results, but in the upper right corner of the search results page, you will see a State Farm ad. 

The story also discussed comments from a Google trademark lawyer, Rose Hagan, during a standing-room-only panel at the International Trademark Association's ("INTA") meeting on Monday, which was held in Chicago.  Hagan said that Google sells advertising space, not trademarks.  The story also notes that Utah has passed a law which prohibited the use of a competitor's trademarks as advertising keywords.  For more on the Utah law, check out Eric Goldman's Technology & Marketing Law Blog (via Marty Schwimmer's Trademark Blog).  The Utah law and the various lawsuits against Google, Yahoo and Microsoft on this issue are all evidence that this is a very unsettled area of trademark law.  A Yahoo attorney, Laura Hauck Covington, explained that "[w]e're all trying to find the right, reasonable balance for the owners of trademarks, consumers and advertisers."

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Google, Inc. v. Central Mfg. Inc., No. 07 C 385, 2007 WL 789418 (N.D. Ill. Mar. 12, 2007) (Kendall, J.).

Judge Kendall denied third party Leo Stoller's motion to intervene pursuant to Fed. R. Civ. P. 24 -- Stoller also filed a motion to interplead and various motions to suspend the proceedings for various reasons.  Plaintiff Google brought the instant suit alleging civil RICO violations based upon defendants' alleged scheme of falsely claiming trademark rights to extort money from legitimate trademark holders.  Defendants' opposed Google's application for its "Google" mark based upon allegedly fraudulent claims of common law rights in the mark in order to settle the dispute.  Stoller subsequently filed a Chapter 13 bankruptcy case, which was converted to Chapter 7.  The property of Stoller's estate included wholly-owned interests in defendants.  The Court denied Stoller's motion to intervene as of right because Stoller had no "direct, significant legally protectable" interest in the case.  To the extent Stoller was involved in the underlying actions, it was as an employee of one or more of the defendants and/or acting as defendants' representative, not in his individual capacity.  Similarly, the Court denied Stoller permissive intervention because of the Court's determination that adding Stoller would unduly delay the case.  The Court noted that the parties had entered a settlement contemplating Google's release of its monetary claims, contingent upon an entry of a permanent injunction and final judgment, a settlement the be "frustrate[d]" by Stoller's intervention.

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International Profit Assocs., Inc. v. Paisola, 461 F. Supp.2d 672 (N.D. Ill. Nov. 14, 2006) (Bucklo, J.).

Judge Bucklo held that plaintiff was likely to succeed on its Lanham Act and cyberpiracy or cybersquatter, 15 U.S.C. Section 1125(d), claims and issued a temporary restraining order ("TRO") preventing defendants from conduct that likely infringed plaintiff's trademarks.  Based upon the cyberpiracy claim, Defendants were ordered to stop making content available through their website, www.ipaopinion.com, which was likely confusingly similar to plaintiff's site, www.ipaopinions.com.  The Court also ordered defendants to stop using plaintiff's trademarks as search terms in Google's Adwords program. 

An Adwords user specifies search terms relevant to its business or website, so that whenever a search with those terms is performed on the Google site, the Adwords user's advertisement or website is displayed on the search results page.  The Court noted that the Seventh Circuit had not ruled on whether using trademarks as keywords in online search programs was a use "in commerce" as required by the Lanham Act, but noted that other courts had held that it was a use "in commerce."  The Court also held that defendants' use of plaintiff's marks was leading to "incalculable" loss.

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Bill Patry has just published Patry on Copyright -- a seven volume treatise on copyright law and the first new copyright treatise in seventeen years according to Patry.  Patry spent seven years working on his nearly 6,000 page treatise and brings a distinguished background to the subject.  He is currently Google, Inc.'s Senior Copyright Counsel, he was a professor of copyright law at Cardozo (and an adjunct professor at my alma matter, the Georgetown University Law Center), copyright counsel to the U.S. House Judiciary Committee and Policy Planning Advisor to the Register of Copyrights.  You can see the table of contents here and you can buy Patry on Copyrights here.  You can also read Patry's own thoughts about his treatise on his Patry Copyright Blog or give him feedback on the treatise at his Patry Treatise Blog, both hosted by Google's Blogger, of course.

This appears to be an excellent, exhaustive resource for copyright practitioners and academics.  Stay tuned for more from Patry himself on his treatise.  Later today or tomorrow I will be posting the Blog's first e-interview (of Patry), which I plan to make a quasi-regular Blog feature. 

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