With Mobile Fitness Exploding, Two Heavyweights Fight Over Patents

Adidas recently sued Under Armour ("UA") and UA's subsidiary, MapMyFitness, for infringing its mobile fitness related patents.  Adidas claims that UA's performance tracking products and the suite of mobile fitness apps/websites of MapMyFitness (which UA acquired in November) utilizes Adidas' patented miCoach technology.

The miCoach fitness training devices provide audible coaching (in real time) and a web application to help optimize your workout sessions.  MapMyFitness offers users with the ability to map, record, and share their workouts.  It does this by using GPS and other technologies.  Adidas claims that UA's and MapMyFitness' products infringe on several of its patents relating to the following technologies:  a location-aware fitness training device that supports real-time interactive communication and automated route generation, systems and methods for presenting characteristics associated with a physical activity route, methods and computer program products for providing information about a user during a physical activity, and a mobile device that receives information from a server about a user’s movement.

Adidas' lawsuit specifically targets Under Armour’s Armour39 system, which includes an Armour39 module that can be attached to a chest strap (sold together); a mobile app that tracks heart rate, calories, and intensity; and a display watch that Under Armour says is an alternative to the mobile app, but sold separately.  Adidas included MapMyFitness in the lawsuit because the company offers methods for detecting, evaluating, or analyzing movement of a body or determining performance information in its apps MapMyFitness, MapMyWalk, MapMyHike, MapMyRun, MapMyRide, and MapMyDogwalk, which also can connect to the MapMyFitness Heart Rate Monitor.

What's more, Adidas claims that both UA and MapMyFitness knew of Adidas' patents, and therefore, "willfully" infringed upon them.  This allegation of willfulness stems from UA's hiring of Adidas' former senior innovation engineering manager.  If true, UA and MapMyFitness could be subjected to three times the amount of Adidas' damages and attorneys' fees.  Attorneys' fees for patent litigation are usually in excess of $ 1 million dollars.

Interestingly, it appears as if Adidas and UA are heading down the contentious path blazed by Samsung and Apple.  That is, using patent litigation as revenge for competition in the market.  In particular, UA recently signed a 10-year deal with Notre Dame which had a relationship with Adidas for 17 years.  

Clearly, this is a market which is heating up and competition is beginning to become fierce.  Both Samsung (no stranger to patent litigation all over the world) and FitBit are making forays into this market.  This will definitely be an area to keep an eye on in the future. 

When an Onion is More than an Onion

Georgia's most valuable crop, the Vidalia Onion, is the centerpiece of a boiling trademark dispute.  The Vidalia Onion claims Federal trademark protection, as well as state protections.  Georgia decreed that an onion that grows up on the right side of the tracks (aka within a certain 20 county area) may make something of itself--it may become a Vidalia.  On the other side of the tracks, it would just be an "onion." 

Now, apparently, growers are harvesting these "Vidalia's" too early, and as such, is harming the Vidalia brand.  After all, a Vidalia harvested before its prime is most certainly not as sweet or as long lasting.  Well, Georgia can't have that happen.  So, in an effort to protect its most valuable vegetable crop and its brand, Georgia has issued a new regulation setting a date before which no onion may be harvested (the date is in April).  The regulation provides an extra 10-15 days for these young onions to further mature into Vidalias.

As you may imagine, this has caused a ruckus among the growers and between some growers and the good state of Georgia.  Many growers complain that an arbitrary harvest date is unreasonable and violates their "freedom to farm" as it were.  Others claim that the imposition of a harvest date does not take into account soil, weather, and other conditions which play a part in an onion's growth from mere "onion" to "Vidalia." 

This dispute is simply one more example of the importance of a brand or trademark and the lengths some will go to in protecting it.  Should be interesting to see if the regulation brings back the flagging Vidalia brand.  Stay tuned. 

Angry Birds Knockout Angry Clubs

If you are not familiar with the Angry Birds logo and game by now, then you have been living under a rock for the last few years.  Indeed, Rovio's Angry Birds trademark and logo is well-recognized (I admit to having spent countless hours playing Angry Birds).  One of the many trademarks owned by Rovio is this little angry guy:








Note the eyebrows, the scowl (if birds could scowl, that would be what it looks like), and the angry eyes.  Now, consider this trademark from a company who makes golf clubs that apparently doubles as a swing trainer and equipment saver:

  

Again, note the angry eyebrows and eyes, the red color of the "A," and the scowl.  Look familiar? It should.  Indeed, in the video promoting the Angry Club, the owner discusses killing "two birds with one stone."  Huh, maybe he is trying to evoke a certain angry Ave?   The idea is that the Angry Club works as a swing trainer to allow you to warm up before hitting the golf course.  Then, once on the golf course when you hit a bad shot, instead of damaging your equipment (e.g. breaking your club over your knee or throwing your bag into the water), you just slam the Angry club on the ground and it angrily berates your play. 

Needless to say, Rovio did not take too kindly to Indiegogo (the Angry Club company) using a trademark that evoked their beloved (and valuable) trademark.  Yes, you guessed it, they sued.  After all, Rovio could not have these duffers turned inventors diluting the value of their Angry Bird marks.  Ultimately, the lawsuit resolved by settlement wherein Indiegogo agreed not to use the name "Angry Clubs" or the "A" logo. 

This case illustrates the importance of being careful about how you go about choosing your trademark.  Now, after spending time and effort promoting the "Angry Club" name and using the "A" logo, Indiegogo is back to square one with regard to marketing its brand--it must now come up with another one which will not infringe upon or dilute another's intellectual property. 

My guess is that the inventor did not consult with a trademark attorney before deciding on the name and the logo for his golf swing trainer.  Had he done so, he probably would have avoided the lawsuit altogether.  Yes, attorneys are not necessarily cheap, but hiring an attorney at the front end usually saves you money by not having to hire one once litigation or a dispute arises. 

Another One for the No Good Deed Shall Go Unpunished File

For those who live in Southern California, you may recall reading about a bear who had an affinity for Costco meatballs (I mean, who wouldn't).  He loved them so much in fact that he would often return to Glendale after relocation to the Angeles National Forest in search of these frozen delicacies.  Hence, the residents of Glendale dubbed him "Meatball."  

Unfortunately, Meatball's repeated incursions to Glendale to forage for his food of choice (or maybe it was just his "comfort food?") landed him in line to be euthanized.  Well, one resident, Sarah Aujero, found that solution to be unbecoming and began a Twitter campaign to raise funds to find Meatball a more permanent home in this world.  The campaign Twitter moniker she chose was @TheGlendale Bear.  The effort became so successful, it included branded shirts, tote bags, and stickers which Ms. Aujero sold to pay for a new enclosure at Lions, Tigers & Bears sanctuary for Meatball.  She even obtained a trademark for the products bearing the Meatball name.  Ms. Aujero says that she would often use her own funds to bridge the gap between expenditures and donations and that she does not make money off of Meatball.  Meatball has been at the sanctuary for over a year.

Now, comes the legal part.  The sanctuary wants Ms. Aujero to hand full control of the Twitter account and assign all rights to the copyright to the sanctuary.  As you may expect, the sanctuary "lawyered up," and these lawyers took a fairly aggressive stance with Ms. Aujero.  So much so that when Ms. Aujero refused to sign over the rights to these items--although, she did tell the sanctuary it was free to use the name for fundraising efforts--the lawyers informed her that she would no longer be allowed on the sanctuary's property.  A somewhat childish response given that Ms. Aujero started the campaign to raise funds which went to the sanctuary. 

Ah, wait, it gets better.  Apparently, a publisher asked Ms. Aujero to right a children's book about Meatball.  She agreed and said that she would donate a portion of the proceeds to the sanctuary.  The sanctuary objects because they believe that Ms. Aujero is exploiting Meatball and they believe it is their job to protect the animals from exploitation.  What is clearly left unsaid by the sanctuary is that they would prefer to be the ones doing the exploitation.

By now, you are probably thinking why these two are fighting when they appear to be on the same side? My thoughts exactly, there has to be some way to resolve this without devolving into a long drawn out dispute.  In my practice, I am often asked for my legal advice on a matter to which I respond with discussing what my clients wish to achieve from a business perspective.  Maybe the sanctuary and their attorneys should have a similar conversation to figure out how best to raise funds for the sanctuary and Meatball instead of having to raise funds to pay attorneys' fees fighting this particular fight. 

Blurring the Lines Between Robin Thicke and Marvin Gaye: Marvin Gaye's family Sues Robin Thicke

Robin Thicke filed a declaratory judgment action against Marvin Gaye's family in order to have the court declare that his song, "Blurred Lines" did not infringe Marvin Gaye's copyright in the song "Got to Give It Up."  Notably, at the time of filing the lawsuit, the Gaye's were not asserting that "Blurred Lines" infringed their copyright.  One of the requirements of a declaratory judgment action is that there is an actual conflict between the parties over their rights/remedies.  This is certainly a case of some really awful legal advice on the part of those advising Robin Thicke.  Usually, a lawsuit would be a last resort option, not the first.  Also, if Mr. Thicke thought that his song would infringe, he may have been better served trying to work out a deal with the Gaye family to settle without resort to litigation.  Alas, he fired first.  

In response, and not unsurprisingly, the Gaye family sued Robin Thicke for stealing two of Marvin Gaye's songs.  The lawsuit includes an allegation that Robin Thicke has a "Marvin Gaye fixation," meaning that there may be other songs of Mr. Thicke's which "borrow" ("steal") Marvin Gaye's copyrighted material. 

Some music critics noted that "Blurred Lines" was influenced or reminiscent of "Got to Give It Up."  This may be what caused Thicke to file the declaratory judgment action.  There is a question as to whether a song is "influenced" or "reminiscent" of another's copyrighted material is sufficient to show infringement.  That will be what the court will determine in the not so near future.  

Harry Potter v. Whimsic Alley

Whimsic Alley, a store in Santa Monica (on the Miracle Mile), caters to the Harry Potter fans who want to purchase items which are reminiscent of (but not necessarily licensed from Warner Bros.) those in the movies.  Not surprisingly, it caught Warner Bros. attention and the two are engaged in litigation over the Harry Potter trademarks.  Apparently, this is the second time that Whimsic Alley has found itself on Warner Bros.' radar.  The first time concluded in a settlement agreement wherein Whimsic Alley agreed to stop using Harry Potter trademarks or other "confusingly similar" products.

Well, in looking at the website for Whimsic Alley, it appears as if Whimsic Alley is displaying items that are the same or similar products.  Now, that does not mean that Whimsic Alley did not license those products from Warner Bros., so those products may have been part of the first settlement and/or a license agreement.

What caught Warner Bros.' attention this time was Whimsic Alley's advertising a "wizard cruise."  Sounds fun, doesn't it? Well, Warner Bros. did not think so--especially since it has opened and has plans to open a Wizarding World of Harry Potter at Universal Studios around the world.

The case is set to go to trial in January, so stay tuned for a conclusion.  Nevertheless, this is another example of being careful where you tread in terms of another company's trademarks and products.  In particular, it is another example of being careful not to catch the attention of those companies who aggressively protect their trademarks. 

Sometimes Discretion is the Better Part of Valor When Confronted by a Trademark Bully

Believe it or not, if you want to try to turn water into wine, you may need to hire an attorney and not that "other guy." Recently, a new expensive bottled water ("Beverly Hills 90H20") caused a stir when it marketed its water as the "Champagne of waters."  And, at $ 5 a bottle or more in specialty retailers, gourmet markets, and restaurants, it seems as if such a claim was appropriate.  Needless to say, Champagne producers did not appreciate the reference.  The organization that represents growers and marketers of Champagne sent the Beverly Hills company a cease and desist letter asking it to drop references to Champagne in its marketing.  

According to the Beverly Hills water company ("Beverly Hills Drink, Co."), it enlisted the help of artisans to create a water that resembled wine in "bringing the notes out" of meals.  The water's recipe includes spring water and various minerals that occur naturally in water.  

The advocates for sparkling wine from the Champagne region are notoriously aggressive in protecting the Champagne name (word) and trademark--most notably, they denied those who make sparkling wine in other regions from using the "Champagne" nomenclature.  They have also fought to deny fashion houses, cigarette makers, soda makers, etc. from using the word on their products. If you follow this blog or understand trademark law even a little bit, you will understand that these others most likely would have a right to use the word "Champagne" on their products.  

These types of trademark bullies often are able to obliterate particular words from the marketing dictionary because they have the money and the stable of attorneys to bury any small business--they also have the attorneys and resources to cost the bigger business quite a bit.  This is a sad state of affairs, but sometimes it is about who has the resources and not who is legally correct.  Not surprisingly, Beverly Hills Drink, Co. decided that their resources were better spent on marketing and their product and not fighting the Champagne nazis . . . err, advocates.   

 

The lesson is that it is a good idea to try and figure out who these uber-aggressive trademark enforcers are before you spend the time and money on an ad campaign or trademark (I counseled a small company against fighting "Iron Man" even though that company was using the name descriptively and not in a trademark sense.  "Iron Man" was another brand which fought everyone and anyone using these words in any context).  While, as a youth, I subscribed to the theory that you should stand up to a bully, in the instance of standing up to these trademark bullies it is usually much easier and less costly to get off of their playground (radar).