Tuesday, July 31, 2012

A Cease and Desist Letter Written With Honey, Not Vinegar

Over the course of my practice, I have often had clients come to me after receiving a cease and desist letter.  Usually, the cease and desist letter, written by an attorney trained by or from one of the "Big Firms," promises hellfire and damnation to my client unless it immediately acquiesces to their client's laundry list of demands.  The demands are lengthy, and often include requiring my clients their first and second born.  I am not a big fan of these types of letters, in firing off cease and desist letters indiscriminately, or such intellectual policing tactics.  Unfortunately, sometimes such tactics are necessary when the other side is simply unreasonable and uncooperative.

As I often counsel my clients when they want me to send a cease and desist for them, it is usually better to try the nice approach first rather than immediately going for the mean approach.  In fact, I often try to get the client to agree to ending the cease and desist letter with an offer to have a dialogue about the issues raised in the letter in the hopes of avoiding having to litigate.  Other times, I try to get the client to think of ways to turn the issue into a "win-win," for my client and the other party. For many small business (and some medium businesses), litigation is bad business--well, except for us litigation attorneys who usually will get paid regardless of result. 

So, when I ran across this article about the attorney for Jack Daniels sending a cease and desist letter to author Patrick Wensick over his book cover art, I was impressed.  I disagree with the article saying that such a letter is "unlawyerly," since the letter gets across the conundrum that every intellectual property owner faces:  if you do not protect it, you can lose it.  Apparently, Mr. Wensick was impressed with the letter because he posted it on his website.  I am sure that Jack Daniels did not expect, but does welcome the free good publicity.  Moreover, as an intellectual property owner himself, Mr. Wensick clearly understands the issues and does not need a nasty letter telling him that he going straight to hell for infringing on Jack Daniels' label design.

Three cheers to Jack Daniels' attorney and a big thank you for reminding us that sometimes you can catch more bees with honey than with vinegar! 


Tuesday, July 24, 2012

Apple v. Samsung Over Galaxy and a Schizophrenic UK Court Ruling

 In another chapter of the international legal saga between Apple and Samsung over their intellectual property relating to their tablets (iPad and Galaxy), a UK court made an interesting ruling.  While the UK judge found that there was no infringement by Samsung of Apple's design rights, he also will allow Apple to opine that Samsung infringed its design rights.  What? Yes, you read that correctly, but wait, it gets better.  The same judge ordered Apple to pay for ads in various UK media and on Apple's website to correct the impression that Samsung violated Apple's design rights in the iPad.

From what I understand of this ruling, it is about as schizophrenic as any ruling I have ever seen.  On the one hand, the court finds that there is no infringement of Apple's design, requires Apple to place ads stating that Samsung's Galaxy tablets do not copy Apple's iPad design, but allows Apple to claim, as an opinion, that Samsung infringed the design of the iPad.  Of course, Apple states that it plans to appeal this ruling.  It will be interesting to see if the ruling withstands the appeal.

Friday, July 6, 2012

Settling with Proview Bought Apple Two New Lawsuits in China

Well, after settling with Proview for its iPad name, Apple appears to have bought two more lawsuits over its intellectual property in China.  Thursday, a company named Zhi Zhen Internet Technology sued Apple over Siri.  Zhi Zhen alleges that Siri infringes its voice assistant service patents named Ziao i Robot. According to reports, Zhi Zhen applied for its patent in 2004.  Apple recently announced adding Mandarin and Cantonese versions of Siri which undoubtedly is what caught Zhi Zhen's attention.  Of course, the recent $ 60 million settlement with Proview must have caught Zhi Zhen's eye, as well. 

Jiangsu Xuebao is also suing Apple for allegedly infringing its Snow Leopard trademark. Apparently, Jiangsu registered the Chinese equivalent of Snow Leopard in 2000.  In 2008, Apple tried to register that same word, but the Chinese trademark authority refused to register that name.  Presumably, the denial of registration stemmed from Jiangsu's prior registration.  Jiangsu seeks $ 80,000 and an apology.  The timing of this lawsuit is curious, indeed.

It seems as if Apple is caught in the Chinese conundrum.  It is a huge potential market.  It also is ambivalent to intellectual property protection.  I am sure there will be more to these stories.

Monday, July 2, 2012

Apple Buys iPad Name from Proview

As I wrote a few months ago, a Chinese Company, Proview Technologies, was the purported owner of the iPad name in China.  Well, as suspected, Apple was essentially left with no choice, but to pay to get the iPad name back.  According to reports, after a round of mediation, Apple settled its dispute in the Chinese courts by transferring $ 60 million to an account the court designated.

As you may recall with regard to the dispute, Apple thought it had purchased the global rights to the iPad trademark when it bought Proview's parent company.  Proview, a financially troubled company, disagreed and embarked upon attempting to secure payment for its mark through several lawsuits.  After two years rumbling through the Chinese Courts, Apple finally succumbed.  Apple now owns the iPad trademark in China and may continue with its planned expansion into that market.