Gaming IP Odds and Ins

March 10, 2015

Toyland Irony:  Toy-versions of Machines have longer-lasting IP Protection than the Real Thing

In Lanard Toys Ltd. v. Novelty Inc, the Ninth Circuit confirmed that toys are copyrightable as ‚pictorial, graphic or sculptural works‘.  The question at hand was whether a toy helicopter was  ‚useful‘ and thus not eligible for copyright, because it depicted something ‚useful‘ (a real helicopter) and could also performs some of its functions.  The court deemed the toy helicopter ‚non-useful,‘ citing a line of decisions with similar objects such as clown noses (i.e. real noses are useful but clown noses are not).  The bittersweet irony, of course, of this distinction, is that the inventor of a new type of helicopter receives only 20 years of patent protection, while the toymaker who imitates said helicopter gets copyright protection for life plus at least seventy years.

January 9, 2015

Dispute over popular Rainbow Loom bracelets may lead to first Post-Grant Review

As you may remember, the passage of the America Invents Act also introduced a new type of trial to be carried out by the USPTO’s Patent Trial and Appeal Board named Post-Grant Review.  Since patents are now granted to the first inventor to file as opposed to the first inventor to invent, Post-Grant Reviews (referred to as PGRs), offer a way to review the legitimacy of patent claims after the patent is granted.  Up until now, this type of review has not been requested.

Malaysian businessman Cheong Choon Ng was granted a patent titled “Brunnian Link Making Device and Kit” on July 26, 2013.  Though there were other, similar patent applications, Cheong Choon Ng received priority because his application was based on a series of continuations going back to November 5, 2010.  In August of 2014, he sued fellow manufacturers of this bracelet, including LaRose Industries, Toys R Us, and Zenacon LLC, for patent infringement.

Now, LaRose and Toys R Us have teamed up to challenge Cheong Choon Ng’s patent.  The challengers claim that Choon’s claims, which were granted on July 25, 2013 are not supported by the previous applications dating back to November 5, 2010.  They state that the claims lack written detail and description.  This could indicate that Choon filed his patent for illegitimate business purposes, such as trolling for example.

If the USPTO accepts this review, it could lead to greatly expanded freedoms for other companies who manufacture similar bracelets.

Read the petition here.

January 7, 2015

Kimble v. Marvel Enterprises Inc.:  A patent case worth following in 2015

For this case, the court will review a 50-year-old rule that royalty agreements cannot extend beyond the expiration of a patent.    The inventor of a Spider-Man toy attempted to collect royalties from Marvel Enterprises Inc. after his patent had expired, but he was denied.  If the Supreme Court overturns this decision and sides with the inventor, this could add a new dimension to licensing talks and agreements, making them potentially more complicated and longer.  It is possible that that some licensees could pay royalties on patents in perpetuity, but with a lower rate.

January 6, 2015

One Woman’s Icy Response to “Frozen”

Nearly everyone in the U.S. has seen “Frozen,” the highest-grossing animated film of all time, by now.  The film delighted audiences in the US and world-wide and this past Halloween, and it was the most popular theme for children’s costumes.

At least one person, however, was not so delighted by this film, most especially it’s trailer.  Kelley Wilson, an animator and independent filmmaker, filed suit against The Walt Disney Co.  for copyright infringement, claiming that Disney’s blockbuster and specifically the First Look trailer borrowed substantial elements from her short film “The Snowman.” 

So far, the judge in the case has agreed that there are enough similarities in the teaser to allow the case to proceed.  It will be important for Wilson to prove to a jury that Disney had access to her material before creating their own.  Feel free to compare the videos for yourself:

Watch Wilson’s “The Snowman” here and compare it to Disney’s First Look Trailer here.

January 28, 2013

The Ninth Circuit Upholds MGA Entertainment's $137 Million Attorneys Fees Award But Reverses Its $172 MillionTrade Secret Misappropriation Award Against Mattel on Procedural Grounds

In the long and continuing saga that is the Mattel, Inc. v. MGA Entertainment, Inc. copyright infringement and trade secret misappropriation lawsuit, the Ninth Circuit on Thursday struck down a portion of MGA Entertainment's $309,000,000, award on the grounds that MGA's trade secret misappropriation claim, whether legitimate or not, should not have been joined to Mattel's lawsuit because it was not sufficiently related to Mattel's claims.

This is still a big win for MGA since it attorneys fees award is upheld, and Mattel has no further grounds to postpone payment of this award.  Second, after the ruling, MGA said that it will refile its trade secret misappropriation claim as its own standalone lawsuit.  That is, did Mattel scam MGA by making up false buisnesses, business cards, and the like to gain access to MGA's future plans, and did that result in misappropriation of any of MGA's trade secrets?  Mattel knows what one jury already said, and its shareholders and executives will be wary of reairing this evidence before another jury.

MGA professed that it is interested in settling its differences with Mattel.  Mattel may wait until it can air its statute of limitations defense, but if that defense should fail, it might be time to settle.

May 22, 2012

Hasbro’s Allegations Transform into a First Round Loss

Last year, it was announced that the toy-maker Hasbro planned to sue electronics-manufacturer Asus for trademark infringement.  Such a claim rested on Asus’ decision to include within its most recent series of tablets the “Eee Pad Transformer” and the “Eee Pad Transformer Prime,” which, according to Hasbro, misappropriated the famous toy-line upon which recent blockbuster-hits are based.  Unfortunately for Hasbro though, the judge presiding over the now-underway litigation seems to disagree with the toy-maker.

Upon recently denying Hasbro’s preliminary motion to enjoin Asus from selling the tablets at issue, the judge stated, "There is nothing gimmicky about the Eee Pad Transformer or the Eee Pad Transformer Prime, nor can it be said that there is any similarity in the use or function between Hasbro and Asus’ products.” Though the case is still underway, it seems that Asus is free to manufacture tablets capable of protecting the human race from the maniacal plans of the Decepticons. At least for now.

August 5, 2011

And Then There Were Three -- Three-Hundred-Nine-Million Dollars, that Is

Yes, that is $309,000,000, in a case fit for a action-suspense-comedy-drama blockbuster, this is the amount the District Court ultimately ordered Mattel, Inc. to pay MGA Entertainment, which contains a combination of actual assessed damages, punitive damages, and attorneys' fees.  We can expect an appeal shortly, which someone can turn into the sequel.

April 24, 2011

In a Remarkable $100,000,000 Turnaround, a Jury Issues a Resounding Defeat for Mattel, Inc. and a Resounding Victory for MGA Entertainment, Inc.

On April 20, 2011, just nine months after the Ninth Circuit reversed a verdict and $10,000,000 award in favor of Mattel, a jury sitting in Santa Ana, California, issued a remarkable verdict resoundingly in favor of MGA Entertainment and against Mattel.

This time, the jury found that Mattel did not own any trade secrets or copyrights in the Bratz line of dolls, not the original ideas, not the original concepts, not the first generation sculpts or dolls exhibiting these ideas and concepts.  MGA Entertainment therefore had not misappropriated any protectable copyright or trade secret of Mattel.

To the contrary, the jury found that Mattel had "willfully and maliciously" misappropriated numerous protectable trade secrets of MGA Entertainment, including the appearance, operation, intended play, and advertising plans of numerous later-generation Bratz dolls.  The jury awarded MGA $88,400,000.  One must really see this verdict to get a sense of what the jury was asked to decide.

Or maybe this verdict form is fascinating to me only because I also litigate matters like this, and this verdict is a great example of why I litigate hard and zealously for my clients, AND I aways press them to consider what they would need to settle the matter short of trial.  In the end, at trial, you may well be handing over to a jury the fate of a product, a product line, or even the keys to your company's future.  Of course, Mattel is only slightly scarred by such an award, and it will certainly file its flank of post-verdict motions and ultimately a notice of appeal, but this still is why I prefer to keep my clients, as much as possible, out of court and instead in the business of doing business.