Letter from AmeriKat: End of January Jolly

Yesterday the AmeriKat was stomping up and down Kings Road on a hunt for a new casual outfit. Her journey had started with an idea of a new cocktail dress needing to be instilled in her wardrobe (the AmeriKat uses the word "needing" very liberally). However after a few frustrating attempts, she realized a perfectly fitting, appropriately priced, and pitch-perfect dress was not going to be found that cold winter's afternoon. With the stubborn ideal of a dress still swimming around her head, she begrudgingly walked into one store which never enjoys much success with the AmeriKat. After a few meaningless paces around the retail floor, she was leaving the store when she decided to change her mind and reframe her objective. She stopped, turned around and decided that she was going to find something here and marched down to the sale rack. Assisted by a trusty advisor, low and behold she found the perfect skirt at an amazing price which assisted her in sparkling later that night. It just goes to show that when you are about to give up on something, a little change in one's attitude can make all the difference. (Picture, top left - the AmeriKat hiding in her shopping bag after a long afternoon browsing)

RIAA lawyer to be next US Solicitor General

Another change was announced last week when President Obama (right) nominated Donald Verrilli as the next United States Solicitor General. Verrilli will be filling the shoes left by Justice Elena Kagan who left the post last year when she was appointed to the Supreme Court. Prior to becoming a White House lawyer, Verrilli’s private practice experience at Jenner & Block LLP included representing the Recording Industry Association of American (RIAA) in their on-going battle (or crusade, depends on who you ask) with copyright infringers. He also has represented Hollywood film studios in similar battles. According to the New York Times Verrilli has argued before the Supreme Court 12 times and before the federal appeals and state supreme courts around 35 times.

The US Solicitor General is responsible for determining the US’s legal position in matters that reach the Supreme Court and arguing on behalf of the US Government in cases in which they are a party (which is a hefty task in itself). The Solicitor General also files amicus curiae briefs in cases of federal government interest, such as the Google Book Settlement case (see report here). Former President William Howard Taft and former Supreme Court Justice Thurgood Marshall (the first African American to serve on the Supreme Court bench) also acted as the US Solicitor General.

If Verrilli’s name sounds familiar to IPKat readers, it is because Verrilli (picture, left) has been one of the lead attorneys in two famous copyright battles: Grokster and Viacom v YouTube. The Supreme Court’s famous MGM v Grokster ruling in 2005, unanimously held that operators of peer-to-peer file sharing websites could be sued for contributory copyright infringement for the illegal sharing of copyrighted content on their website. The Viacom v YouTube case, which has now reached the Court of Appeals for the Second Circuit, also involves a claim by Viacom that YouTube should liable for contributory copyright infringement in failing to remove and to prevent the uploading of Viacom’s copyrighted content (see previous reports here). However, Verrilli is known also for acting in cases which pressed for greater rights for prisoners, including methods by which death-row inmates are executed, as well for pro bono clients.

Verrilli takes over from acting solicitor general, Neal Katyal. Katyal, although a top choice for the nomination was considered to be too challenging a choice to get past the now Republican saturated Senate. In 2006 in Hamden v Rumsfeld, the Supreme Court ruled against the Bush administration in their plans to hold military commission trials for Guantanamo Bay detainees. Katyal was part of this legal team. The AmeriKat is sadly not surprised that a lawyer with specialization in the telecommunications and IP, with multi-billion dollar industry clients would be a more palatable choice for some Senate Republicans than a lawyer who won a case against the Bush administration. Americans love nothing more than mixing a bit of politics with their judiciary!

Despite the Amerikat’s general ideological qualms in relation to the Katyal choice, she is excited that the next (hopefully) Solicitor General will be an IP lawyer. This is a further message of the importance of IP to the Obama Administration and the US's economic recovery.

Verrilli will now have to go through the usual confirmation process by the Congress and Senate before he takes office. The AmeriKat will keep you posted on any developments.

Snap! Kodak’s hope for a picture perfect ITC trial is not to be

Last Monday, Eastman Kodak lost the opening round in an US International Trade Commission (ITC) patent battle. Last year following failed negotiations with Apple and Research in Motion (RIM) – the makers of Blackberry – Kodak filed a complaint with the ITC alleging that Apple and RIM infringed their 2001 patent (see previous AmeriKat mention here). The complaint coincided with Kodak filing patent infringement claims against Apple in New York and Texan federal court.

During Monday’s initial recommendation ruling Administrative Law Judge Paul Luckern ruled that Apple’s iPhones and RIM’s Blackberry models did not violate Kodak’s patent. The ITC’s six commissioners now have 4 months to decide to either amend Judge Luckern’s ruling or let it stand. Laura Quatela, Kodak’s chief IP officer stated that the judge’s recommendation represented
“a preliminary step in a process that we are extremely confident will conclude in Kodak’s favor. This very same Kodak patent was upheld by a different ALJ [administrative law judge] at the ITC in our case against LG and Samsung, whose products use the very same Kodak technology to function in the very same manner as similar products from Apple and RIM. What’s more, the attorneys at the ITC’s Office of Unfair Import Investigations, which separately examined this case, agree with Kodak’s interpretation of the patent. We fully expect the ITC Commission will ultimately rule that the patent claim at issue is valid and infringed by Apple and RIM.”
In recent years, Kodak has been attempting to reinvent itself into a digital photography powerhouse, a move which has seen them licence their technology to several companies including Motorola and Nokia. The AmeriKat does not anticipate that the commissioners will come back with anything other than bad news, but as George Will said “The nice part about being a pessimist is that you are constantly being either proven right or pleasantly surprised.”

Catcher in the Rye suit settles

Two years the AmeriKat wrote about the copyright infringement suit brought by JD Salinger against Fredrik Colting, the Swedish author of the unauthorized sequel to Catcher in the Rye - 60 Years Later: Coming Through the Rye -which was subject to an injunction barring its publication in the US, The case reached the 2nd Circuit Court of Appeals. Last week it was reported that the two parties have settled on terms that the book will continue to not be published in the UK, the title will be changed and it is reported that Colting is forbidden from dedicating the book to Salinger. For more details on the settlement please see here.

Sony Ericsson sues over logo

Two weeks ago mobile phone maker Sony Ericsson sued wireless broadband operator Clearwire for allegedly infringing their trade mark logo to the tune of about $150,000 including costs. Sony Ericsson reportedly became aware of Clearwire's intention to use the offending logo and in 2010 wrote to them demanding them to rethink its branding. In May 2010 Clearwire announced it was to begin selling mobile phones under the logo. Sony Ericsson's trade mark is not as widely recognized as it is in Europe. What do readers think? Is Clearwire's logo infringing?
Letter from AmeriKat: End of January Jolly Letter from AmeriKat: End of January Jolly Reviewed by Annsley Merelle Ward on Sunday, January 30, 2011 Rating: 5


  1. I suggest to Amerikat that when shopping in Kings Road she tries Oxfam. My son, when at university in a London, found the items on sale were far higher quality than those in country town branches. Now when in London my wife and I also follow his teaching with excellent results. This applies to the other charity shops in Kings Road.

  2. Regarding the Sony Ericsson v Clearwire dispute, I would say that in fact the Clearwire logo is almost identical to the Ocado logo rather than the Sony Ericsson logo! See here for a picture of Ocado's logo on their wikipedia page: http://en.wikipedia.org/wiki/Ocado

    Let's see if this is picked up...!

  3. Clearly very different. I feel sorry for the judge that will have to waste their time drafting a statement explaining why.

    Unless Clear's Wimax products are some sort of vegetable, there is no problem with ocado. Maybe they make Audio Visual ocados? (avocado).

  4. It is perhaps not so unrealistic to think that consumers might assume a trade link between Ocado and the broadband provider, Clearwire, since I would imagine that it is fairly widely known amongst consumers that Ocado is part-owned by the John Lewis Partnership, which sells many categories of goods and services. However, the average consumer might not be familiar with the fact that John Lewis's/Waitrose's broadband service is called Greenbee. And certainly, if presented with the Greenbee logo and the Clearwire logo, they could be forgiven for thinking that the latter is economically associated with Ocado/John Lewis/Waitrose (or perhaps a re-branded Greenbee?).

    Whilst I am aware that this straight comparison of two marks is not the test for whether consumers are likely to be confused about the origin of a trade mark, I am just attempting to demonstrate that the simple fact that Clearwire does not sell groceries and Ocado does not sell broadband services may not be sufficient to prevent a trade mark infringement claim (although whether it would and should succeed or not is an entirely different matter...)

  5. Can't disagree with that final statement, evidenced by the Sony action. As attorneys, we know there is no infringement here. As consumers we know that we wouldn't be confused. As graphic designers and advertisers, I presume we would clearly see many differnces. As corporate executives, we would be bad-mouthing our lawyers, demanding to know how Clear have gotten away with this, demanding immediate action to blow them out of the water and would be speaking to our MP at the next golf club do, bemoaning the useless IP laws that fail to protect the interests of innovative industries and demanding action. Possibly a new review of the IP system would be announced shortly thereafter.

    The ocado case for confusion has been argued well enough, but the word 'tenuous' was probably created specifically for this example.


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