Archives for posts with tag: intellectual property

This case is about the patent of a collapsible structure, specifically pop-up goals available for sale at Target. The producer of the goods is a United Arab Emerites based corporation called Ninja Corp.

Patent Category Corp.
Target Corp. and Franklin Sports, Inc.

CV 06-7311 CAS (CWx); 567 F. Supp. 2d 1171

Honorable Christina Snyder, July 16, 2008, decided:

Plaintiff Patent Category Corp. (“plaintiff” or “PCC”) owns the rights to U.S. Patent No. 6,266,904 (“the ‘904 patent”) issued on July 31, 2001, and U.S. Patent No. 6,604,537 (“the ‘537 patent”), issued on August 12, 2003. On November 15, 2006, plaintiff filed the instant suit against defendants Target Corp. (“Target”) and Franklin Sports, Inc. (“Franklin”) alleging that defendants are infringing plaintiff’s patents. Defendant Franklin is a distributor of at least fifteen models of collapsible, spring-form soccer goals (“Pop-Up Goals”), which plaintiff alleges infringe its patents. [FN1] Franklin purchased these accused products from The Ninja Corp. UAE (“Ninja“). 2 Id. Defendant Target Corp. (“Target”) sells Pop-Up Goals to consumers pursuant to an agreement with Franklin.

=== Footnotes ===
FN1 At the hearing held herein, the parties provided the Court with two examples of the accused products. Exhibit 1, the Dora the Explorer Pop-Up Goal, is accused of infringing the ‘537 patent only. Exhibit 2 is accused of infringing both the ‘537 patent and the ‘904 patent. The Court will refer to these exhibits in deciding the issue of infringement, or non-infringement as the case may be.2 On March 9, 2007, Ninja, a corporation organized under the laws of the United Arab Emirates, filed suit against plaintiff in the United States District Court for the Southern District of Texas, seeking a declaration that its products do not infringe the ‘904 and ‘537 patents, and that these patents are invalid. The action was then transferred to the United States District Court for the Central District of California in September 2007, and assigned to this Court as a case related to the present action.

dora the explorer pop up goal target

Recall the connection of multicultural cartoons associated to this Ninja word. Here it is a UAE corporation, sending children’s toy products for consumer distribution at Target. It is perhaps merely a coincidental connection but in the context of this rhetorical study of words, it is a notable that there is this seemingly unnecessary connection of the Dora character. Recall Teenage Mutant Ninja Turtles role in Federal Court ruling the general idea of multicultural cartoons was not protected by copyright.

This actual patent case about the Pop Up Goals remained unresolved at the end of the Courts opinion. The Court denied all the summary judgment motions because of factual issues about obviousness; whether there is a “continuous frame member” and the effect of a prior art on “flexible frame”.

Patent ‘537 is for “Collapsible structures” (US Patent 6,604,537)
Patent ‘904 is for “Collapsible structures supported on a pole ” (US Patent 6,266,904)

I dunno. They look obvious. Ha just kidding. I have no idea.

In this 1996 case Topps sued to protect its product, the Ring Pop, from competition. One of the reasons it won was because of the substantial advertising to non-sophisticated purchasers (kids), by means of cartoons. And so of course again, appearing somewhat unnecessarily in a Federal Court opinion, the Teenage Mutant Ninja Turtles.

ring pops

THE TOPPS COMPANY, INC., Plaintiff, – against – GERRIT J. VERBURG CO. and B.I.P. HOLLAND B.V., Defendants.
96 Civ. 7302 (RWS)
1996 U.S. Dist. LEXIS 18556; 41 U.S.P.Q.2D (BNA) 1412

December 12, 1996, Decided

The Court explains:

During the mid-1970’s, Topps developed the product for which it now seeks protection, the Ring Pop lollipop. It is comprised of a candy portion in the shape of a solitaire jewel, supported by a plastic base portion in the form of a stylized, or “play,” ring. The Ring Pop is held by inserting a finger through the ring, and the candy is then licked.

In 1975, Topps filed patent applications in the U.S. Patent Office on the “inventive” ornamental design for a diamond gemstone ring candy and was awarded two patents, Nos. Des. 242,646 and Des. 242,645 on December 7, 1976. These patents expired on December 7, 1990, but reference to them continues to appear on the Topps’ packaging.

On June 1, 1976 a trademark was registered for Ring Pop by Topps and on July 26, 1994 a trademark was issued consisting of “a candy portion in the configuration of a jewel mounted on a stylized ring.”

The Court continues explaining the high volume of sales and about

Topps’ advertisements on broadcast television during the past ten years of the Ring Pop emphasized the configuration of the product during children’s programming on well-known, popular programs, such as Tom & Jerry Cartoons, Teenage Mutant Ninja Turtles, and Power Rangers, shows specifically aimed at the children for whom the Ring Pop candies were conceived. The buyers of these products are not sophisticated purchasers.

Because the Court will rely on a likelihood of confusion analysis for the trademark infringement claims, the fact that the competing candy products “are expressly intended to be consumed by children” is important. The Court also notes other deceptive aspects of defendant’s packaging and that it “fails to meet the requirements set by regulations” of the US FDA as to nutritional labeling.

Though the competing product has been available in Hong Kong for as long or longer than the Topps Ring Pop product, and despite the expiration of Topps patent, trademark still protects the Ring Pop.

There is no inherent conflict between trademark rights under the Lanham Act and patent rights. Because the Lanham Act and the patent statute are both federal statutes, there is no preemption. A product can be both patentable and protected by trademark rights as long as the particular design protected does not have a utilitarian function.

Therefore, deciding the Ring Pop is not a functional design, the Court ordered a preliminary injunction. And in a subsequent motion decision, (April 28, 1997, 961 F.Supp. 88) the claims against defendant-manufacturer from Hong Kong were dismissed for lack of personal jurisdiction, leaving only the claim against the US distributor (which I assume was probably settled out of court..?).

Meanwhile, it seems a new relative of this case is coming back to the Courts. A false marketing claim was filed in May 2011, alleging Topps is violating marketing laws by continuing to list the patent numbers on Ring Pop packaging after the patents expired. See “Ring Pops: A Fun Way to Teach Your Kids about False Patent Marking” posted by Travis Burchart, Jun 2011 The complaint alleges that each Ring Pop sold violates marketing laws and if the Court agrees, Topps will be liable for a LOT of damages.

Finally, recall, this is not the first time we at NinjaLaw have seen the turtles mentioned unnecessarily and also not the first time mentioned with the Power Rangers. Last time we saw the Turtles team up with the Power Rangers in Federal Court, they served to exemplify the business model of cartoon merchandising. Here they help protect their sponsor Topps (baseball cards and candy and what else?), again implicating the susceptibility of kids to product marketing.

tmnt power rangers animation handshake

Previous NinjaLaw cases about the Ninja Turtles:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

First mention of Ninja Turtles in F.Ct. where it’s actually about them
Mirage Studios v. Weng – April 29, 1994

Burger King Kids Club with Mutant Ninja Turtles – multi-ethnic path to Glee and Celebrity Apprentice
CK Company v. Burger King – September 29, 1994

Ninja Turtles again, this time with FASA’s BattleTech, ExoSquad, RoboTech and Playmates
Fasa v. Playmates – June 19, 1995

Spam vs Spa’am with Splinter from TMNT and Pumbaa from Lion King
Hormel Foods v. Jim Henson Productions – September 22, 1995

This NinjaLaw post is about a case that has no real reason to include “ninja”. It is a wonderful example of how characters become metaphors used in the law. Here ninja is a mere throw-away reference but it helps to firmly root the word in a world of computer programming. This case involves a type of wood truss design software that is alleged to violate copyright by similarities in user interface. Presumably the ninja reference is about a specific software but I am not sure which one.

Case No. 91-2629-CIV-MOORE
864 F. Supp. 1568
Decided September 9, 1994, and amended Oct 31, 1994

and affirmed in 1996

The district court opinion by Judge K. Michael Moore explains Learned Hands idea of “breaking down a literary work into its elements as a means of separating a writer’s ideas from his expression”, (See Nichols v Universal Pictures Corp) but

Judge Hand’s abstraction test is not as easily applied to computer programs as it is to literary works, such as books or films, because the mediums are so different. Unlike a computer program, the copyrightability of a film applies solely to its “user-interface,” that is the images and sounds the viewer perceives. In contrast, a computer program has two distinct elements of expression – the literal aspects, including the source code and object code, which tell the computer what to do, and the nonliteral aspects, such as the sights and sounds the program generates on the screen. The Gates Rubber case sets forth a uniform, six-part abstraction test for breaking down a computer program’s literal elements. Gates Rubber, at 835. However, this test is not helpful for this Court’s analysis, which focuses on the nonliteral elements of the program.

[Footnote #8]: The Gates Rubber court states that a computer program can be broken down into six levels of declining abstraction: (1) the main purpose, (2) the program structure or architecture, (3) the modules, (4) algorithms and data structures, (5) source code, and (6) object code. Id. at 835, citing John W.L. Ogilvie, Defining Computer Program Parts Under Learned Hand’s Abstractions Test in Software Copyright Infringement Cases, 91 Mich.L.Rev. 526 (1992). [End Footnote]

The Fifth Circuit in Engineering Dynamics provided some guidance for the abstraction of nonliteral elements of a computer program. The court found that there is a “spectrum” of copyrightable material in nonliteral elements of computer programs, ranging from the ‘blank form’ that epitomizes an uncopyrightable idea, through a “high expression, like that found in some computerized video games.” Engineering Dynamics, at 1344. The court found that “in the middle of the abstraction spectrum sit user interfaces such as that of Lotus 1-2-3, whose menu structure, including its long prompts, contains numerous expressive features.” Id. at 9-10, citing Lotus I, 740 F. Supp. at 65-66. Thus, the distinctive garb of a computer-generated Ninja will be afforded the highest copyright protection, while a simple computer prompt asking the user to fill in the blank warrants the least. In the middle, are programs which require the input of significant amounts of information in a common, computer format. The Court finds the programs at issue in this case fall into this middle range of expression.

Once a program has been broken down into its abstract elements, the next step is to “filter out” the unprotectable elements to obtain a core of protectable expression. In addition to ideas, copyright protection is not afforded to processes, methods or scientific discoveries. Other materials not subject to copyright include facts, information in the public domain, and scenes a faire, i.e., expressions that are common to a particular subject matter or are dictated by external factors. Engineering Dynamics, at 1343.

[Footnote #9]: Elements taken from the public domain are not protected by copyright law because they are not “original works of authorship” under the Copyright Act of 1976. 17 U.S.C. § 102(a). [End Footnote]

[Footnote #10]: For example, scenes of pitching, home runs and cheering crowds appearing in a movie about baseball would not be copyrightable because they are necessarily incidental to the subject. [End Footnote]

The Court decided that the elements of this software were not protectable under copyright. This case is important to early computer law and is often mentioned along with the Lotus v Borland decision.

It is interesting to note that this court finds the distinctiveness of a ninja’s garb to be of the highest copyright protectability while meanwhile contemporaneous courts used the word as a descriptor: See NinjaLaw posts about Ninja Pants, and Ninja hood, and ninja-style motorcycle.

NinjaLaw has already posted about three prior mentions of the Teenage Mutant Ninja Turtles in Federal Court opinions but it was in 1994 that for the first time, a Federal Court opinion was actually involving them as intellectual property in dispute.

MIRAGE STUDIOS, a Massachusetts general partnership, Plaintiff, v. WENG C. YONG, MERRY M. YONG, DENNIS C.M. LOW and DOES 1-5 inclusive, dba TAI FUNG TRADING; et al., Defendants.
No. C-93-2684-VRW
1994 U.S. Dist. LEXIS 5618

The opinion is by Judge Vaughn R. Walker. You may recall he is also the judge who recently ruled that California’a Proposition 22 was unconstitutional in case Perry v. Schwarzenegger about gay marriage case.

Written April 29, 1994:

On July 15, 1993, Mirage Studios (“Mirage”) filed this action for copyright and trademark infringement against a group of thirty-four retailers, distributors and manufacturers, alleging that each of the named defendants has infringed and threatens to further infringe upon Mirage’s copyrighted and trademarked “Teenage Mutant Ninja Turtles.”

I presume this was mostly for infringing tee-shirts. And as is typical, the copyright holder asked for maximum damages, in this case $10,000 but Judge Walker found no evidence of any such actual damages and ordered only $500 per defendant (34×500 is $17,000). Also the Judge ordered attorney’s fees of “$780 in attorney fees and $40 in service costs per defendant” – that $780 is the attorney’s bill of “5.2 hours (at $150 per hour)”.

The Court also chides the defendants who did not answer the complaints suggesting that they could have more easily settled the case in advance, but I wonder because attorney fees to answer could only have increased costs.

So this is the first time TMNT is actually directly involved in a Federal Court opinion. But recall the previous NinjaLaw posts about the prior tangential mentions the characters:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

Don’t worry, there’s more to come too.

This 1990 opinion by Judge Alex Kozinski, is about security interests in copyrights of movies during a bankruptcy.

In re PEREGRINE ENTERTAINMENT, LTD., The Peregrine Producers Group, Inc., Peregrine Film Distribution, Inc., National Peregrine Inc., and Peregrine-United Corporation, Debtors. NATIONAL PEREGRINE, INC., a Utah corporation, successor by merger to American National Enterprises, Inc., Plaintiff-Appellant, v. CAPITOL FEDERAL SAVINGS AND LOAN ASSOCIATION OF DENVER, a Federal Savings and Loan Association, Defendant-Appellee
District Court Case No. CV 90-1083-AK.

116 B.R. 194, Decided June 28, 1990

The opinion is written by Judge Alex Kozinski (from before he became Chief Judge of the Ninth Circuit):

National Peregrine, Inc. (NPI) is a Chapter 11 debtor in possession whose principal assets are a library of copyrights, distribution rights and licenses to approximately 145 films, and accounts receivable arising from the licensing of these films to various programmers.


This appeal from a decision of the bankruptcy court raises an issue never before confronted by a federal court in a published opinion: Is a security interest in a copyright perfected by an appropriate filing with the United States Copyright Office or by a UCC-1 financing statement filed with the relevant secretary of state?

And in footnote:

Cap Fed has stipulated that there is at least one such film, the unforgettable “Renegade Ninjas,” starring Hiroki Matsukota, Kennosuke Yorozuya and Teruhiko Aoi, in what many consider to be their career performances.

The Court concludes:

The judgment of the bankruptcy court is reversed. The case is ordered remanded for a determination of which movies in NPI’s library are the subject of valid copyrights.

However, don’t rely on this case law. Though cited and followed in a number of subsequent cases, it has also been questioned, criticized and distinguished by a variety of others. One 2006 case in particular, from New York, Gasser Chair Co. v. Infanti Chair Mfg. Corp., suggests that the law from the above discussed case, In re Peregrine, was superseded by statute when “the revised Article 9 of the UCC was enacted in 2001”.