Chicago Business Lawyer Blog

Helferich has filed a patent lawsuit against Nokia, saying the company is violating its patent protection in Illinois, Reuters News reported.

Intellectual property attorneys in Chicago have watched as the copyright wars have heated up among smartphone companies. Many companies are snapping up patents by the thousands in order to avoid litigation or the need for dispute resolution.

Helferich Patent Licensing vs. Nokia Corp. contends 27 other companies, including Motorola Mobility Holdings Inc., have honored Helferich's patents or obtained licenses. The company is seeking an injunction against Nokia that would prohibit the company for making or selling products using technology for which Helferich owns the patents.

Apple, Microsoft and other tech companies have spent billions snapping up thousands of available patents in recent years -- to avoid such litigation. CNN Money reports Apple recently shelled out $4.5 billion for 6,000 patents owned by Nortel.

-Research in Motion and Ericsson partnered to put up $1.1 billion.

-Microsoft and Sony spent another $1 billion.

Google apparently played number games at a recent auction, bidding 1.902160540 (Brun's constant) and 3.14159 (pi). The company was apparently having a little fun. Yet its Android partners -- including HTC, Motorola and Samsung -- continue to be under fire by companies claiming copyright infringement.

When it comes to patent protection, tech giants have been in a buying frenzy. Google bought 282 patents last year. Apple bought 563. Microsoft led the way with 3,121. Industry watchers say Google has not yet placed the emphasis on protecting itself through patent purchases; Microsoft made a similar mistake in its infancy.

"There are a lot of phenomenal portfolios for sale," Dean Becker, a patent broker, told Bloomberg News. "Every operating company is in the market because of the expense, distraction and the potential financial risk of patent litigation."

Winning the bidding for Nortel's portfolio would have increased Google's patent holdings ninefold; currently the company has about 700 patents, according to the U.S. Patent & Trademark Office.

Google is facing lawsuits from Oracle Corp. Meanwhile, Apple is demanding licensing revenue from makers of products that run Google's Android operating system. In some cases, a Google executive said, lawsuits have involved low-quality software patents. By purchasing and maintaining large war chests of patents, companies hope to discourage such lawsuits.

"One of a company's best defenses against this kind of litigation is (ironically) to have a formidable patent portfolio," said Google's General Counsel Kent Walker.

Helferich Patent Licensing is a Chicago company that holds, manages and licenses patented technology involving multimedia delivery.

Continue reading "Helferich Patent Licensing vs. Nokia Corp. filed as Smart Phone Copyright Wars come to Chicago" »

Our Chicago intellectual property lawyers were intrigued when, on July 20, reality star and celebrity Kim Kardashian filed a $20 million lawsuit in a federal district court against Old Navy and Gap, Inc., its parent, for using her doppelganger in an advertisement for the retail store.

First aired in February 2011, the ad shows the "look-alike" getting her picture taken by the paparazzi, finessing her way out of tickets, and dressing in clothing particular to Old Navy. The ad has already been viewed more than two million times on Old Navy's YouTube channel.

Kim Kardashian is arguing that the advertisement violates her "right to publicity" because it portrays her as falsely promoting Old Navy. She contends that since consumers may become confused by the advertisement and its endorsements, the advertisement violates her right to publicity noting that she "has invested substantial time, energy, finances, and entrepreneurial effort in developing her considerable professional and commercial achievements and success, as well as in developing her popularity, fame, and prominence in the public eye."

The right of publicity prevents the unauthorized commercial use of an individual's likeness, name, or some other recognizable quality. This means that the right of publicity gives an individual the limited right to license his or her identity for a commercial reason. The purpose behind the right of publicity is the protection of a person's economic interests.

This is not the first time that a celebrity has asserted her right of publicity. Bette Midler had previously filed a lawsuit against Ford Motor Co. alleging that the company violated her publicity rights by hiring an individual that sounded like her to sing in a car commercial. The jury ultimately ruled in favor of Midler holding that it is unlawful to imitate a person's voice to sell a product if the person has not given permission.

Although Bette Midler was successful, that does not necessarily mean that Kim Kardashian will be as well. To prevail under California law, she will have to establish the "knowing use of [her] name, photograph, or likeness for commercial purposes, and a direct connection between the use and the commercial purpose."

This is an interesting case and is a little different from soundalike cases, like Midler's. For example, with a "lookalike," the viewer has more information and opportunity to evaluate the actor. And, in this situation, there is no use of Kardashian's name. (We're not informed about reality TV news enough to know whether any ad elements would resemble any "signature" aspects of Kardashian's persona.) However, it seems highly likely that Melissa Molinaro, the ad's actress, was selected with awareness of her physical similarities to Kardashian and there is a reference to celebrity status in the ad. Furthermore, there clearly is a commercial purpose if a jury would find that the portrayal constitutes Kardashian's "likeness."

In any event, it seems like Kim Kardashian will not give up without a fight. Gary Hecker, the attorney who filed the suit on Kim Kardashian's behalf, noted that "Kim Kardashian is immediately recognizable and is known for her look and style. Her identity and persona are valuable. When her intellectual property rights are violated, she intends to enforce them." That is a very bold statement, and it will be interesting to see if it will be realized.

This post was prepared by summer research assistant Yelena R. Our Chicago business attorneys regularly assist clients with advertising, marketing and related intellectual property matters and our available to meet about your corporate law needs in Chicago, Deerfield, Northbrook, Oak Brook, Rosemont, Schaumburg, Skokie and other offices in the area.

A Tinley Park-based healthcare company is being sued by the Illinois Attorney General's Office, which claims it pressured consumers into buying expensive, and perhaps needless, body scans.

Obviously any suit filed by the state must be taken seriously. As the healthcare system continues to fracture and become more specialized, and as the introduction of technology continues to make procedures more complex, such companies must seek the legal advice necessary to stay on the right side of the law -- and must aggressively defend themselves from unwarranted allegations. Finding small business legal help in Chicago or hiring an attorney with the knowledge and experience to help ensure you are in compliance with laws and regulations governing product safety and liability, is essential to a young company's growth and viability.

Frankly, paying for expensive and perhaps unnecessary medical scans sounds like routine medical care! Perhaps we are being facetious, but you see how quickly that line begins to blur. Whether it's by telephone or over the Internet, rules and regulations govern the sale of goods and services to the public. In some cases -- such as medical or legal services -- other legal or ethical rules may apply.

The lawsuit filed in Cook County Circuit Court accuses Heart Check America of using unfair and deceptive business practices to pressure consumers into buying 10-year screening contracts. The lawsuit contends consumers were not evaluated by medical providers and claims that the procedures could detect cancer or other diseases were false or misleading. It also claims consumers may have been exposed to risks, such as radiation exposure or false positives and that the company solicited from people on the National Do Not Call Registry.

Heart Check America had local offices in Arlington Heights and Tinley Park. The suit seeks civil penalties of $50,000, which could double if there is evidence of intent to defraud. The state is also seeking to recover the costs of investigating and prosecuting the case.

Illinois AG Lisa Madigan is also focusing on Internet scams. Internet sales in general are subject to an increasing number of complex state and federal laws, as illustrated by the recent passage of the sales tax in Illinois. Companies that do business online must stay abreast of new rules and regulations in the various states in which they operate. Madigan said she is particularly concerned about seniors.

"The Internet provides us with amazing opportunities, but unfortunately it also provides criminals with the opportunity and powerful means to deceive and defraud," Attorney General Madigan said. "It's important that we help seniors equip themselves with the tools needed to recognize online scams, deal safely with insecure websites and avoid other potential pitfalls online."

Continue reading "Allegations of Heart Monitoring Fraud in Chicago show Sales by Phone and Internet Subject to Increasing Regulation" »

Our Chicago technology attorneys were interested in a recent example of how patent owners can relatively quickly seek resolution of certain infringement claims.

In March of 2010, Apple filed a complaint against HTC Corporation claiming that the company infringed 10 of its patents with respect to Droid and other smartphone elements. On July 15, 2011, the U.S. International Trade Commission ("ITC") issued an initial ruling in Apple's favor on two of the patents at issue.

Because the ITC has the power to ban products from coming into the United States, a final ruling against HTC could mean that HTC products will be unable to enter the country. Given such a ruling could have widespread implications for HTC, the company plans on appealing the decision. However, if the appeal is not successful, HTC might have to settle with Apple. This means that in addition to paying Microsoft $5 for each Android device they sell, HTC might also have to pay Apple royalties from its sales. The General Counsel for HTC, Grace Lei, recently commented that "we are highly confident we have a strong case for the ITC appeals process and are fully prepared to defend ourselves using all means possible." However, these may just be fighting words.

This is not the first time that the ITC has had the potential to affect large companies in patent disputes. In fact, the ITC is quickly becoming a popular forum for owners of intellectual property trying to prohibit infringing products from the United States market. Using the ITC as a forum for resolving patent disputes has its advantages. Since it usually takes less than a year for cases going though the ITC to go to trial, the ITC is generally able to provide quick verdicts. The ITC also has in rem jurisdiction over the imports in question. This means that a complainant can bring one action against several respondents in different jurisdictions. Lastly, using a jury is not an option in ITC trials. Rather, an administrative law judge presides over the proceeding. As the judge usually has specialized knowledge in patent law, the result is arguably a fairer trial than if a jury was present.

However, going the ITC route is not without its problems. Since the ITC is a federal agency, ITC final decisions do not bind a U.S. District Court. This means that parties unsatisfied by an ITC ruling can choose to bring suit again in district court. Lastly, to have standing with the ITC, the complaining party needs to show that there is or will be a U.S. industry connected to the products protected by the alleged intellectual property rights. Such a requirement does not exist if a suit is being filed in a U.S. district court.

An ITC action is one of the first measures to be considered when considering patent infringement strategies involving imported goods or articles.

This post was prepared by summer research assistant Yelena R. Our Chicago business lawyers frequently counsel clients about protecting or defending their patent, trademark, copyright, trade secret and other intellectual property rights with corporations, limited liabilities companies and individuals in Illinois.

Internet users are very familiar, of course, with ".com," ".org," and ".net." These are examples of some of the existing generic top-level domains ("gTLDs"). There are now only twenty-two of these gTLDs available. However, a recent decision by the Internet Corporation for Assigned Names and Numbers ("ICANN") provides that starting from January of 2012, domain registers will essentially have unlimited access to all the words in the English language, as well as access to virtually any type of character when choosing a domain name. For example, your business name could serve as a new gTLD.

Although it may seem like just about anyone can apply for a new domain name, this is not the case with these expanded domain names. Not only does the registration process include a complicated 200-page application, but it also comes with a hefty price tag. Applying for a new gTLD alone will cost $185,000; this does not even include the additional $25,000 yearly fee. The procedures will include measures to protect trademark rights.

The existence of essentially an unlimited number of domain names has important implications for business recognition and branding. For a large business, the expansion means an opportunity to reinforce one's brand name. For a small business, the expansion means the ability to pick domain names that are no longer "available" at the dotcom level. This translates into an opportunity to enhance business recognition.

It is important to remember, however, that if businesses fail to register as many domain names as possible that "match their brands," they may fall victim to competitors who will try to lure customers away from their site. Such pressure to protect their brands may cause businesses to unnecessarily register too many domain names.

Our Chicago business attorneys advise you to decide if, based on the expense and burden, application for a gTLD is a feasible option. If it is, you should anticipate and prepare responses to potential competitors and/or third-party gTLD applicants.

Our Chicago Interent lawyers can help you assess the merits of pursuing a new gTLD. For instance, there are uncertainties currently surrounding the issue. It is not clear how ICANN will handle two companies that apply for the same gTLD. And, business owners should keep in mind the benefits of registrations to prevent cybersquatters from obtaining control of a desirable domain name. Although it is not feasible to register every possible important term, it is important to consider the most common ones.

This post was prepared by summer research assistant Yelena R. Please contact us to discuss this or any other Internet or other information technology law matter.