Congratulations to Joshua Eichenstein 2017 Super Lawyer Rising Star

Cohen IP Law Group PC is proud to announce that associate Joshua Eichenstein has been named as a California Super Lawyer Rising Star for 2017.  Inclusion to the list demonstrates that Mr. Eichenstein has attained a high-degree of peer recognition and professional achievement.  To become a Super Lawyer, lawyers must go through a selection process including independent research, peer nomination and peer evaluations   Ultimately, no more than 2.5% California attorneys under the age of 40 are named to the Rising Stars list.

U.S. Supreme Court Cracks Down on Patent Trolls

The Supreme Court last week struck a blow to patent owners who made a living off threatening others with frivolous litigation by loosening the standard for the prevailing party to collect legal fees. Patent owners that do not sell products or services, but earn or try to earn the majority of their income by enforcing their patents through frivolous litigation are commonly known as “Non-practicing entities” (NPEs) or “Patent Trolls.” For years, some NPEs would buy patents for the sole purpose of using their new ownership rights against corporations by demanding licensing fees, or litigation. The cost of paying a licensing fee frequently outweighed the cost of litigation because Federal Courts rarely allowed the prevailing party to recoup expensive legal fees. Under 35 U.S.C. § 285, “the court in exceptional cases may award reasonable attorney fees to the prevailing party.” (Emphasis added). The test for exceptional cases, outlined in Brooks Furniture Manufacturing, Inc. v. Dutailier Int’l, Inc., 393 F.3d 1378 (Fed. Cir. 2005), required the prevailing party to prove that both (1) the litigation was brought in subjective bad faith, and (2) the litigation was objectively baseless. This was so rigid that many chose to pay licensing fees, rather than prevail in litigation but still pay more in legal fees.

Last week, the Supreme Court ruled on two cases that loosened the “exceptional cases” test: Octane Fitness, LLC v. Icon Health & Fitness, Inc., and Highmark Inc. v. Allcare Health Management System, Inc. In Octane Fitness, Justice Sotomayor threw out the Brooks Furniture 2-part test, by holding “nothing in [section] 285 justifies such a high standard of proof. Section 285 demands a simple discretionary inquiry; it imposes no specific evidentiary burden, much less such a high one.” Furthermore, the Court strengthened it’s new stance on §285 by throwing out the Brooks Furniture test again in Highmark Inc. “Our opinion…rejects the Brooks Furniture framework as unduly rigid and inconsistent with the text of §285.” In Highmark Inc., the court held that since “exceptional” is in the judgment of the District Court, the decision on appeal may only be reviewed for abuse of discretion.

Since the Supreme Court’s reinterpretation of section 285 allows the sitting judge more flexibility to determine “exceptional cases,” newly empowered patent owners may be able to fight back against frivolous litigation. Interestingly, approximately 200 patent infringement cases were filed around the time of these decisions. This is a definite upswing in the volume that is normally filed. It’s possible that the increase is due to adverse ruling for patent trolls and the accompanying legislation in congress taking place to curb NPEs. One NPE in particular filed 87 lawsuits in April in Texas.

Super Soaker Settlement $73 Million

The power of creating an incredible invention and having good counsel can be seen in a recent arbitration settlement in which the inventor of the Super Soaker, Lonnie Johnson Ph.D, was awarded $72.9 million in royalties against Hasbro. Although Johnson has over 80 patents, many of which we are sure relate to the Super Soaker or variations of it, Johnson was able to obtain this mammoth settlement based on a breach of contract of a more ambiguous nature rather than on any specific intellectual property. Namely, in a 1996 agreement, Hasbro agreed to pay Johnson royalties of 2 percent for “three-dimensional products” based on the appearance of the toy and 1 percent for “two-dimensional visual representations.” Negotiating such broad terms in his agreement opened the doors for Hasbro’s breach which ultimately led to this incredible settlement.

Just to put things in perspective, Johnson founded his company and licensed the Super Soaker for the first time in 1989, which generated more than $200 million in retail sales in the following two years.

Michael N. Cohen Super Lawyer

Cohen IP Law Group, P.C. is once again pleased to announce the nomination of Michael N. Cohen for inclusion in the 2013 Southern California Rising Stars Super Lawyers® publication.

Super Lawyers® is a listing of outstanding lawyers from more than 70 practice areas who have attained a high-degree of professional achievement. The selection process is multi-phased and includes independent research, confirmation that nominees are properly licensed, in good standing with the state licensing agency, and, when possible, that they have no history of disciplinary action that would warrant removal from the list. In addition to a general survey, an attorney-led research team reviews the credentials of potential candidates and assigns points based on a set of defined evaluation criteria, and those with the highest point totals are named to the Rising Stars list. No more than 2.5 percent are named to the Rising Stars list.

Super Lawyers was first published in 1991 by Law & Politics and was acquired by Thomson Reuters, Legal in February 2010. Thomson Reuters is a leading source of intelligent information for businesses and professionals.

The Velvet Underground Sues Andy Warhol Foundation for Trademark Infringement

Issues of copyright and trademark ownership can become tricky when an artist makes a work for hire.  This is currently the case with The Andy Warhol Foundation for the Visual Arts and 60’s rock band The Velvet Underground.  Many people would recognize the Andy Warhol stylized print of a banana as the Velvet Underground’s unofficial logo.  Many of the same people would also know that the banana was created by Warhol, who often collaborated with the band.  But who owns the rights to the iconic print? 

The banana print was never properly trademarked through a trademark attorney, neither was the copyright.  The Velvet Underground recently filed a trademark infringement lawusit that claims that the print was taken from a newspaper ad that was part of the public domain.  The Andy Warhol Foundation currently owns most of Warhol’s copyrights, which are valued at over $120 million.  The foundation earns about $2.5 million a year by licensing these copyrights.  When the foundation decided to start using the banana print as part of its copyrighted repertoire, the band sued.  According to the lawsuit, the band wants a judicial declaration that the foundation has no copyright protection for the banana icon.

Yahoo vs. Facebook

Yahoo Patent Infringement Dispute with Facebook

Yahoo vs. Facebook

 

As Facebook readies itself for an initial public offering this spring, tensions are running high in Silicon Valley.  A bit too high, perhaps.  Yahoo has just sued Facebook for patent infringement over 10 patents that involve methods to advertise online.  A similar suit occurred in 2004, when Yahoo sued Google just prior to its IPO.  Yahoo has recently come under the management of a new CEO, and it looks like he means business.  After initially becoming the internet’s main source of networking and online searching, Yahoo has fallen in recent years to Google and Facebook.  A Facebook spokesman recently told the L.A. Times “We’re disappointed that Yahoo, a longtime business partner of Facebook and a company that has substantially benefited from its association with Facebook, has decided to resort to litigation.”

Apparently this kind of lawsuit has been on the rise in recent months in Silicon Valley.  Most of these suits come from firms that buy technology patents to create large IP portfolios.  The Yahoo suit is more of a surprise, although the cozy business relationship implied by Facebook’s statement is probably a bit of an exaggeration.

Copyright-Infringing Artist May do Hard Time

Obama Hope 2008

 

 

 

Is it possible to do jail time for copyright infringement?  If you destroy and falsify discovery information during your federal trial, the answer is yes.  You are probably familiar with the iconic Obama posters from the 2008 election.  The hugely successful posters were created by Los Angeles artist Shepard Fairey.  Fairey based the image off a copyright-protected image, owned by the Associated Press.  In 2009, perhaps in a preemptive move, Fairey sued the Associated Press in Federal Court, seeking a declaration that the poster constituted “Fair Use.”  The AP countersued.  Fairey claimed he had used a certain image of Obama with actor George Clooney, when in reality the image was based off a closely cropped solo shot of the presidential candidate.  As the proceedings rolled along, it was discovered that Fairey had created several fake documents and deleted others to try and support his claim.  This, of course, led to a criminal case, to which Fairey pled guilty on February 24th.  He now faces up to 6 months jail time, and $5,000 in fines.

Proview Trademark Litigation with Apple Continues

The trademark dispute between Apple and the Chinese company, Proview Technologies, is intensifying.  If you remember, Proview secured the trademark for “iPad” in China back in 2000.  The chain of events is not clear, but the core of the dispute is whether Apple ever obtained a proper license or acquired the use of the iPad trademark in China from the correct owner.  Proview Officials in the Chinese province of Hebei seized Apple iPads from store shelves, as the battle over the iPad name in China continues to roll along.  Proview Technologies,  has continued to put road blocks in Apple’s way, filing complaints against Apple in over 20 Chinese cities, as Apple tries to market and sell its products in China.  The problem is  that the Chinese public are anxiously buying iPads or waiting to buy them.  In fact, apparently a riot almost broke out at the release of the iPhone 4S in Beijing.

Apple mistakenly thought they bought the rights in 2005 from Proview-Taiwan, but apparently Proview-Shenzhen still held the rights in China.  After Proview went bankrupt a few years back, they probably realized they were still holding a goldmine with this Apple trademark.  And now they want to cash in.  Apple has quit dealing with them formally, instead deciding to take them to court in China.  But it looks like China is siding with Proview for now.  At first, Apple was just barred from using the trademark in a few provinces, but now that ban has spread, and the latest development is that iPads are even being confiscated.  Store owners are jittery as local authorities have been making moves to ban or confiscate merchandise after the Proview complaint.

Initially, it looked as though Proview was a small company with a nuisance claim to the trademark, but as the situation has continued to escalate, it appears that their claim to the trademark rights is a lot more valid, at least to the Chinese government, than first suspected. Apple has continued to decline to comment throughout the ordeal.