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Georgia IP Litigation: February 2013

BLOGS: Georgia IP Litigation

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Thursday, February 28, 2013, 4:29 PM

Eleventh Circuit Affirms Conviction and 51-Month Sentence for Criminal Copyright Infringement and Trafficking in Counterfeit Labels

Let it be known that in the United States, large-scale piracy of copyrighted materials is taken very seriously and can, in fact, result in significant jail time.  On February 25, 2013, the U.S. Court of the Appeals for the Eleventh Circuit affirmed the conviction and 51-month federal imprisonment sentence of Charles Ndhlovu, of Fairburn, Georgia.

Conviction and Sentencing

A federal jury convicted Ndhlovu on July 28, 2011 on two counts of criminal copyright infringement and one count of trafficking in counterfeit labels, associated with illegal copying and distribution of copyrighted CDs and DVDs which, according to a May 19, 2009 indictment, included such works as the films “The Dark Knight” and “Gran Torino,” and recordings by Kanye West and Lil Wayne, among others. 
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Wednesday, February 27, 2013, 5:57 PM

Insurance Company Files DJ Action to Avoid Coverage for Defendant in Lawsuits Brought by George Clooney and Julia Roberts

In a prior post, we reported on an October 2012 right-of-privacy (right to publicity) lawsuit filed in the Northern District of Georgia by celebrities George Clooney and Julia Roberts against Kennesaw-based Digital Projection, Inc. (“DPI”), a seller of projectors and related items.  With service of the summons having been waived and an extension of time to answer the complaint having recently been granted, nothing of substance has yet occurred in that case since the filing of that complaint.  However, DPI now finds itself a defendant in a new, related case.
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BJ's Wholesale Club Sued Over Bone-Shaped Dog Bowls

On February 21, 2013, Elite Dogstands Ltd. ("Elite") of Harlow, United Kingdom, filed a complaint in the Northern District of Georgia against For The Earth Corporation ("FTEC") of Phoenix, Arizona, and BJ's Wholesale Club, Inc. ("BJ's") of Westborough, Massachusetts, alleging causes of action for design patent infringement, trademark infringement, trademark dilution, and unfair competition over FTEC's and BJ's sales of bone-shaped dog bowls.

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Suit Against Kimberly-Clark Transferred from Western District of Washington Mirrors Recently-Filed Complaint

In a recent post, we reported that Pedigo Products, Inc. ("Pedigo") and its subsidiary OR Specific ("OR-S") (collectively, "Pedigo") filed suit on February 5, 2013 in the Northern District of Georgia against Kimberly-Clark Worldwide, Inc. and Kimberly-Clark Global Sales, LLC (collectively, "Kimberly-Clark"), alleging infringement of U.S. Patent No. 6,091,102 ("the '102 Patent") through its manufacture and sale of certain surgical drape products.  But that filing was not the beginning of the dispute between Pedigo and Kimberly-Clark; Pedigo had filed a nearly identical suit against Kimberly-Clark on June 7, 2012 in the Western District of Washington, Pedigo's home forum.[1]

On December 19, 2012, Kimberly-Clark moved to transfer the suit to the Northern District of Georgia.  In its motion, Kimberly-Clark noted that OR-S had previously asserted the '102 Patent in November 2010, when it sued Drape Options, LLC, a Tennessee-based company, in the Northern District of Georgia.  That case, Kimberly-Clark observed, proceeded through early discovery before it was dismissed in June 2011.  Kimberly-Clark also stated that the design, development, marketing and sale of its accused surgical drape products are centered in Roswell, Georgia (which is in the Northern District of Georgia).  As a result, Kimberly-Clark urged the Court to exercise its discretion to transfer the case to Georgia under 28 U.S.C. § 1404(a).  On January 30, 2013, Judge Benjamin Settle of the Western District of Washington granted Kimberly-Clark's motion and ordered that the case be transferred to the Northern District of Georgia.  The case was officially transferred on February 15, 2013.   

Based on the timing of the transfer and of the recently-filed complaint, it appears that Pedigo decided it was in its interest to file a new suit rather than wait for the transfer to take effect.  Pedigo's filing of a motion for preliminary injunction in the related suit supports the idea that time was of the essence to Pedigo.  Interestingly, Kimberly-Clark mentioned in its motion to transfer--before Pedigo's motion for a preliminary injunction--that Pedigo had first threatened to seek injunctive relief many months into the case, thus presumably undercutting a claim of irreparable harm.  At this point, no action has taken place in the transferred case, and one would think that one or both parties will seek to consolidate the two related actions in the near future.  In the related action, briefing on Pedigo's motion for a preliminary injunction is ongoing.

The case is Pedigo Prods., Inc. and OR Specific v. Kimberly-Clark Worldwide, Inc., No. 1-12-cv-00490-RLV, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Senior Judge Robert L. Vining. 
[1] In the first complaint, Kimberly-Clark Global Sales, LLC was not a named defendant.  Kimberly-Clark represented in its motion briefing that this entity is "principally involved in the activity related to the accused surgical drapes." 

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Tuesday, February 26, 2013, 5:21 PM

Comverge Asserts Infringement of Patents Disclosing Power Management/Energy Load Devices and Methods against Entek Systems, a Company Operated by Inventors of Some of the Patents

Energy load devices and methods permit utilities to dial down the amount of electricity used by consumers during peak periods by sending command signals to devices (such as air conditioners) that require large amounts of electricity.  By reducing the electrical demand of large consumption appliances during peak periods, energy requirements are balanced over the day resulting in lower charges for the consumer and less generating capacity required of the utility.

The complaint of Comverge filed on February 11, 2013, points out in paragraph 20 that one of the three members of Entek Systems, LLC (“Entek”) was an inventor on two of the three asserted patents, U.S. Patent No. 5,345,225 and U.S. Patent No. 5,576,700.  The third asserted patent is U.S. Patent No. 7,606,639, which assets methods and systems claims “for curtailing the energy consumption of an appliance.”  The ‘225 Patent claims apparatuses and methods “for monitory current supplied to an electrical load and detecting when an electrical load management device has been disconnected.”  The ‘770 Patent claims apparatuses and methods “for controlling an electrical load in an electrical load management system and monitoring the load control operations and energy supplied to the electrical load.”

Direct infringement is asserted against Entek for violation of the apparatus claims and indirect infringement is asserted relating to the method and systems claims.  Further, Comverge asserts intentional infringement with the attendant damages related to the ‘225 and ‘700 Patents based on Entek’s knowledge of those patents through its member, Mr. Davis, an inventor on both.

Comverge focuses its infringement assertion against an EnTek switch denominated MC140RAC. 

Pictured below is Figure 1 from the ‘225 Patent illustrating a schematic for the preferred embodiment of the invention.
The case is Comverge, Inc. v. Entek Systems, LLC, No. 2:13-cv-0026-WCO, filed 02/11/13 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge William C. O’Kelley

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Wednesday, February 20, 2013, 5:13 PM

Northern District of Georgia Adopts Special Master’s Patent Claim Construction and Summary Judgment Denial Recommendations Over Sprint’s Objections

In an order entered on February 5, 2013, the Northern District of Georgia adopted the Report and Recommendation of a Special Master concerning disputed patent claim interpretation issues.  This marks the second time in less than a month that the Northern District of Georgia issued this type of a ruling.
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Tuesday, February 19, 2013, 5:45 PM

Northern District of Georgia Finds Insufficiencies in Both a Covenant Not to Sue and in a MSJ of Patent Obviousness

In an order entered on February 6, 2013, the Northern District of Georgia denied both a plaintiff’s motion to dismiss its own patent infringement claim and a defendant’s motion for summary judgment on its counterclaim for a declaratory judgment of patent invalidity (obviousness).  In denying the plaintiff’s motion, the court held that the plaintiff’s covenant not to sue did not remove the case or controversy concerning the patent.  In denying the defendant’s summary judgment motion, the court found insufficient evidence on which to make a finding of the level of ordinary skill in the art.

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Monday, February 18, 2013, 2:56 PM

Commenting Upon Applicable Twombly/Iqbal Standards, Northern District of Georgia Refuses to Dismiss Indirect Patent Infringement Allegations

In an order entered on February 8, 2013, the Northern District of Georgia followed recent Federal Circuit precedent holding that the Supreme Court’s decisions in Twombly and Iqbal[1] apply to allegations of indirect patent infringement (i.e., inducement of infringement and contributory infringement).  However, disagreeing with the defendant that the Federal Circuit precedent applied a fact-pleading standard to such allegations, the court denied a motion to dismiss them.  Notably, the court prefaced its analysis with a discussion of what it views as misinterpretations of Twombly and Iqbal.
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Sunday, February 17, 2013, 10:34 PM

TRO Motion in “Jack the Rapper” Trademark Lawsuit Spawns Early Settlement Dialogue

Who was “Jack the Rapper”?  Answering that question requires a glimpse into a part of Atlanta’s history.  Recent use of that name precipitated a trademark lawsuit and a motion for a temporary restraining order (“TRO”).  However, the lawsuit may be short-lived, as an early exchange of settlement terms prompted withdrawal of that TRO motion.

Historical Backdrop

In 1949, now-defunct Atlanta radio station WERD “became the first radio station in America to be owned by an African American,” according to Georgiaencyclopedia.com.  That source states that veteran disc jockey Jack Gibson was hired and became “a popular on-air personality, perhaps the city’s leading disc jockey at the time.”  A February 14, 1993 article in the Orlando Sentinel states: “Gibson spun rhythm and blues by [R&B] artists such as Big Joe Turner and the Drifters.”  That article referred to Gibson as “radio pioneer and one of the black entertainment industry[’]s national treasures.”

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Thursday, February 14, 2013, 3:24 PM

Kimberly-Clark Hit with Suit and Preliminary Injunction Motion Over Surgical Drapes

Welcome to the Georgia IP Litigation Blog's 100th post.  Thank you for your continued readership and feedback!

On February 5, 2013, Pedigo Products, Inc. ("Pedigo") and OR Specific ("OR-S"), both based in Vancouver, Washington, filed a complaint in the Northern District of Georgia against Kimberly-Clark Worldwide, Inc., based in Irving, Texas, and Kimberly-Clark Global Sales, LLC, based in Neenah, Wisconsin (collectively, "Kimberly-Clark"), alleging that Kimberly-Clark's manufacture and sale of surgical table covers infringes U.S. Patent No. 6,019,102 ("the '102 patent").  Pedigo and OR-S followed up several days later by filing a motion for a preliminary injunction, asking the court to enjoin Kimberly-Clark from making or selling the accused products pending a final resolution on the merits.

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Wednesday, February 13, 2013, 5:20 PM

BMI Strikes Again: Rome, GA Restaurant Target of 3rd GA Copyright Suit Filed in 3 Weeks

BMI and 7 music publishers (collectively “Plaintiffs”) have sued a Rome, Georgia establishment, marking BMI’s third filing of a copyright lawsuit in Georgia in just three weeks.

In a copyright infringement complaint filed on February 12, 2013 in the Rome Division of the U.S. District Court for the Northern District of Georgia, Plaintiffs allege that on August 30, 2012, Rome-based La Mara XIV, Inc. d/b/a Las Palmas Mexican Bar & Grill (“the Establishment”), and an individual corporate officer, engaged in “unauthorized public performance” of four copyrighted songs, including “Mama Told Me Not to Come” (a song covered by Three Dog Night in 1970 but written earlier by Randy Newman for Eric Burdon, former frontman of the '60's British Invasion group The Animals) and “I Think We're Alone Now” (originally recorded by Tommy James and the Shondells).  The complaint does not describe the Establishment’s manner of such performance.
The complaint alleges willful infringement and seeks injunctive relief, statutory damages, and attorneys’ fees under the Copyright Act. 

For information regarding BMI's earlier recent complaints filed in Georgia federal courts, see our prior posts here and here.

The case is Broadcast Music, Inc., et al. v. La Mara XIV, Inc. d/b/a Las Palmas Mexican Bar & Grill, et al., No. 4:13-cv-0032-HLM, filed 02/12/13 in the U.S. District Court for the Northern District of Georgia, Rome Division, assigned to U.S. District Judge Harold L. Murphy.

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Friday, February 8, 2013, 10:51 AM

Shaw Industries Files Declaratory Judgment Action Against Hershey Over KISSES® Marks

In a case that has already drawn considerable publicity, carpet giant Shaw Industries Group, Inc. ("Shaw"), of Dalton, Georgia, filed a complaint in the Northern District of Georgia against The Hershey Company, of Hershey, Pennsylvania, and Hershey Chocolate and Confectionary Corporation, of Wheat Ridge, Colorado (collectively, "Hershey"), asking the Court to enter a declaratory judgment that Shaw's use of the term "Chocolate Kiss" for one of its carpet colors does not infringe or dilute Hershey's KISSES® and HERSHEY'S KISSES® trademarks.[1]

According to the complaint, Shaw, a worldwide manufacturer of carpet, rugs, and flooring, has used the name "Chocolate Kiss" in connection with a certain carpet color for over 20 years. Shaw contends that it plans to phase out the "Chocolate Kiss" color name in June of 2013.[2] On December 19, 2012, counsel for Hershey sent a letter to one of Shaw's distributors demanding that the distributor cease use of the "Chocolate Kiss" color name in connection with carpets. After a brief letter writing campaign, Shaw determined that "in view of Defendants' specific and direct threats of trademark infringement and dilution contained in the letters dated December 19, 2012 and January 24, 2013, a controversy of sufficient immediacy and reality exists with respect to Plaintiff's use of the "Chocolate Kiss" color name to warrant the issuance of a declaratory judgment." Shaw's complaint includes counts for declaration of non-infringement of Hershey's federal and common law trademarks, declaration of no dilution of Hershey's trademarks, and declaration that Hershey is precluded from obtaining relief based on the doctrines of laches and acquiescence due to the 20-year delay in asserting its rights. 

Hershey has been involved in numerous suits over its trademarks and trade dress. Several weeks ago, a New Jersey court delivered a marginal win for Hershey, cancelling a competitor's SWISSKISS mark for candies, but holding that the SWISSKISS mark did not infringe or dilute Hershey's KISSES® mark.[3] In another case, Hershey successfully brought a trade dress dilution claim against a furniture company over a delivery van design that depicted a "brown sofa emerging from a red or burgundy wrapper reminiscent of a candy or chocolate bar, with its packaging torn open and mouth-watering contents exposed."[4] 

The case is Shaw Indus. Group, Inc. v. Hershey Co. et al., No. 4:13-cv-00027-HLM, United States District Court for the Northern District of Georgia, Rome Division, and is assigned to Judge Harold L. Murphy.
[1] For further coverage, see: Atlanta Business Chronicle, Rome News-Tribune, and ConfectionaryNews.com
[2] As of the time of this writing, the "Chocolate Kiss" color does not appear on Shaw's website, though it is available through other local retailers.  (See e.g.http://www.myerscarpet.com/shaw_tuftex_freedom_tower.html.)
[3] Hershey Co. et al. v. Promotion In Motion, Inc., No. 2:07-cv-1601-SDW-MCA, Slip Op., Docket No. 176 (D.N.J. Jan. 18, 2013) (Wigenton, J.).
[4] Hershey Co. v. Art Van Furniture, Inc., No. 08-14463, 2008 WL 4724756 (E.D. Mich. Oct. 24, 2008).

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Travel Spike, LLC Re-Files Service Mark Infringement and Cyberpiracy Complaint in Northern District of Georgia

A service mark infringement and cyberpiracy lawsuit has reappeared on the Northern District of Georgia’s docket.

The Current Lawsuit

On January 30, 2013, Smyrna, Georgia-based Travel Spike, LLC (“Travel Spike”) filed a complaint (“the January 30 Complaint”) against New York City-based Travora Media, Inc. (“Travora”), asserting several counts related to legal theories of service mark infringement, cyberpiracy, and unfair competition.  The causes of action stem from Travora’s alleged use of the registered trademark TRAVEL AD NETWORK® in its advertising and promotion, and in a domain name.[1] 
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Wednesday, February 6, 2013, 3:26 PM

Lawsuit over Tablet-Docking Phones Opens New Front in Smartphone Wars

“Almost five years ago,” explained an April 2012 Wall Street Journal article, “the computer and mobile-phone industries collided.  Technological advances turned phones into minicomputers, complete with email, Web access and other features.” [1]  Since then, according to that article, participants in the smartphone industry have been “engaged in a lawsuit-filing frenzy, asserting their rights to dozens of patents to block rival products” in a global market valued at over $200 billion.[2] 

Now have the smartphone wars reached a Georgia federal court, dealing with a different kind of smartphone.  With the recent filing of a lawsuit in the Northern District of Georgia, the frenzy has expanded to a species of smartphone designed to connect with a specific tablet, but via a plaintiff who had not previously sued on its patents.

On January 25, 2013, UK-based ExoTablet Ltd. (“ExoTablet”) filed a complaint accusing Negri Electronics, Inc. (“Negri”) of infringing U.S. Patent No. 7,477,919 (“the ’919 Patent”).  Titled “Handheld Input/Output Device Providing Enhanced User Interface for a Mobile Telephone,” the ’919 Patent recites priority claims to a chain of earlier applications, the earliest of which issued as a patent in 2006 from an application filed in 2002 which, in turn, claimed priority to a provisional patent application filed in 2001.  This marks the first time that ExoTablet has filed suit on any patent in that chain.
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Tuesday, February 5, 2013, 11:27 AM

Special Master Issues Report and Recommendation on Claim Construction in Sewer Nozzle Patent Case

The Northern District of Georgia is well-known for its heavy reliance on special masters in patent cases. A recent study indicated that, though it accounts for just 4% of patent cases filed nationwide, the Northern District accounts for over 11% of the patent cases in which a special master is appointed.[1] In fact, if it were not for a rash of 17 related Central District of California patent cases in which a master was employed, the Northern District would lead the country in special master usage rate.

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Monday, February 4, 2013, 5:11 PM

BMI and Music Publishers Launch Their Second Georgia Copyright Lawsuit in Six Days

In a prior post, we detailed a copyright lawsuit filed on January 22, 2013 by Broadcast Music, Inc. (“BMI”) and various music publishers against an establishment in northern Georgia.  BMI and 11 music publishers (collectively “Plaintiffs”) have sued another establishment, this time in middle Georgia, marking BMI’s second filing of a copyright lawsuit in Georgia in just six days.

In a copyright infringement complaint filed on January 28, 2013 in the Macon Division of the U.S. District Court for the Middle District of Georgia, Plaintiffs allege that on August 9 and 10, 2012, Macon-based Northside Rivalry’s LLC d/b/a Rivalry’s on Northside (“the Establishment”), and an individual member of its LLC, engaged in “unauthorized public performance” of six copyrighted songs, including Three Dog Night’s “Joy to the World” and Nirvana’s “Lithium.”  The complaint does not describe the Establishment’s manner of such performance.

The complaint seeks injunctive relief, statutory damages, and attorneys’ fees under the Copyright Act. 
The case is Broadcast Music, Inc., et al. v. Northside Rivalry’s LLC d/b/a Rivalry’s on Northside, et al., No. 5:13-cv-0036-CAR, filed 01/28/13 in the U.S. District Court for the Middle District of Georgia, Macon Division, assigned to U.S. District Judge C. Ashley Royal.

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FedEx Becomes Second Carrier to Deliver Patent Declaratory Judgment Complaint to Eclipse IP LLC

Eclipse IP LLC (“Eclipse”), which is used to being the plaintiff in a series of lawsuits asserting patents purporting to cover computer-based notification systems, has for the second time found itself a defendant over those patents.

On January 25, 2013, FedEx Corporate Services, Inc. (“FedEx”) filed a declaratory judgment action against Eclipse in the U.S. District Court for the Northern District of Georgia, Atlanta Division, seeking declarations of noninfringement and invalidity of U.S. Patents Nos. 7,119,716 (“the ’716 Patent”), 7,479,899 (“the ’899 Patent”), 7,482,952 (“the ’952 Patent”), 7,319,414 (“the ’414 Patent”), and 7,876,239 (“the ’239 Patent”) (collectively, “the Patents-in-Suit”).
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