United States: Three Point Shot - December 2015

Keep Off the (Patented) Grass

Maintaining a beautiful lawn usually requires a lot of work, unless you are friends with Edward Scissorhands or install a "Brady Bunch" lawn of artificial grass  instead.  Installing artificial grass (or turf) has been an increasingly popular option in the sports industry, but with the average price of installation of a football field being quoted at $380,000, things were bound to get dirty. 

In 2010, FieldTurf USA, Inc. and FieldTurf Tarkett, Inc. ("FieldTurf") filed a patent infringement suit against AstroTurf, LLC. (FieldTurf USA, Inc. v. Astroturf, LLC, No. 2:2010cv12492 (E.D. Mich. filed June 23, 2010)).  Recently, after a month long trial, a jury found AstroTurf willingly infringed FieldTurf's U.S. patent No. 6,723,412 ("the '412 patent") and awarded FieldTurf $30 million in damages.

FieldTurf and AstroTurf are rivals in the artificial grass industry – manufacturing, selling and installing synthetic turf products for sports and recreational fields.  The first major installation of a synthetic grass surface was in 1966 at the Astrodome in Houston, Texas.  It was touted as being able to stand up better to wear than natural grass, require less maintenance, and "survive" without sunlight when installed in closed stadiums.  However, after extended use, the first generation of artificial surfaces became harder and less resilient, presented drainage problems, interfered with the speed and bounce of balls, caused skin abrasion to players and even gripped players' cleats, representing a risk of injury to players' legs, ankles or knees (including metatarsophalangeal joint sprain, or "turf toe"). 

With time, manufacturers developed new technologies and "synthetic turf systems" to make it closer to the real thing.  This brings us to the turf war around FieldTurf's '412 patent.  According to FieldTurf, its '412 patent provides an improved synthetic grass surface that is more resilient, has improved drainage and playing properties, is less expensive to maintain, and less abrasive to players. Shortly after its issuance, at the request of a third party, the USPTO reexamined and confirmed the patentability of all claims of the '412 patent.  Although there is still debate about whether artificial turf increases the risk of sports injuries, FieldTurf also claims its product is safer than any other artificial surface and "equal to – if not better than – natural grass in most critical areas of player safety."

For those who want to dig further, the main advance of the '412 patent, according to FieldTurf's filing, was that it employed grass ribbons "having a length about twice as long as the spacing between the rows of ribbons" and in a unique three-layered particulate infill system comprised of a bottom layer of washed silica sand, a mix of cryogenic rubber and silica, and a top layer of larger-sized cryogenic rubber, in which "the thickness of the particulate material is at least two-thirds the length of the ribbons."

Here's a look at FieldTurf's patented system:

In its infringement complaint, FieldTurf asserted that after the issuance of the '412 patent, AstroTurf offered for sale, sold and installed certain synthetic turf products covered by one or more of the claims of the '412 patent.  In addition to the patent infringement claim, FieldTurf alleged violations of the Lanham Act and unfair competition under Michigan common law, asserting AstroTurf had intentionally engaged in unfair methods of competition by making false and/or misleading statements about its products.

Not content to wonder if those patented grass stains would come out in the wash, AstroTurf counterclaimed for a declaratory judgment that the '412 patent was invalid, and not infringed, and also asserted violations of the Lanham Act, unfair competition and defamation.  According to AstroTurf, its competitor withheld material information from the USPTO that would have affected the patentability of the '412 patent.

Ultimately, the jury disagreed, finding that AstroTurf willingly infringed the '412 patent and awarding FieldTurf $30 million in lost profits and reasonable royalties.  The jury also rejected, in their entirety, AstroTurf's counterclaims, and following the verdict, the parties have filed multiple post-trial motions.  Bouncing right up after that ferocious tackle, Astroturf announced that the ruling will not impact customers because it only relates to a limited line of products in its portfolio and that the company may appeal the judgment.  For now, however, it looks like the grass is greener on FieldTurf's side. 

"It Ain't Over Till It's Over" – Photographers Obtain Preliminary Injunction to Halt Infringing Sales of Memorabilia    

The late Yogi Berra once quipped: "You've got to be very careful if you don't know where you are going, because you might not get there." Professional sports photographers know exactly where they are going when aggressively pursuing protection of their rights.

On June 23, 2015, plaintiffs Scott Boehm and David Stluka, two professional sports photographers, lodged a suit requesting several sports memorabilia suppliers and retailers to stop selling or distributing sports collectibles containing unauthorized copies of their photographs. In an instant replay, this is the second copyright infringement case that the plaintiffs have brought against sports memorabilia retailers for selling unlicensed copies of their copyrighted photographs as part of sports merchandise, having litigated similar claims in Wisconsin district court in 2013. 

In the current dispute, the photographers filed for a preliminary injunction, claiming irreparable harm if the alleged unlicensed sales continue. Even though some of the retailers claimed that the injunction was not necessary, as they professed to have already stopped selling any infringing merchandise, the photographers argued that without the injunction there is no way to eliminate the defendants' incentive to sell off inventory of the merchandise before a definitive court ruling or otherwise prevent any future copyright violations.  A Wisconsin district court found the defendants' practices out of bounds, ruling that the balance of harms favored the plaintiffs and the public interest favored enforcement of IP rights. In August 2015 (and later enunciated in a September 2015 Order), the court granted a preliminary injunction barring the defendants from creating, displaying, selling, or distributing any reproduction in any medium of the copyrighted photographs that are the subject of the suit. (Boehm v. Scheels All Sports, No. 15-379 (W.D. Wisc. Sept. 8, 2015)). The September Order also prohibited the defendants from destroying or otherwise disposing of any unauthorized copies in any medium of the covered photographs, and required the defendants to safely secure all memorabilia that contains the covered photos (and retain all documents relating to the sale or acquisition of the covered photographs).

Following the issuance of the original injunction in August, a visit to the store of one of the defendants, Gameday Sports LLC, allegedly revealed the presence of contested merchandise still on sale – what the plaintiffs labelled as an attempt to "hide evidence before discovery began" and a violation of the preliminary injunction. Crying foul, the plaintiffs subsequently moved the court for several types of relief: (1) injunctive relief barring the defendant from further violations of the injunction; (2) a directed verdict of willful copyright infringement ($600,000 in total for four instances of alleged infringement); (3) $25,000 in sanctions for non-compliance and attorney's fees, and an additional $10,000 per day for any continuing violations.  The photographers accused Gameday Sports of continuous violation of the injunction and deceiving the court about the store's voluntary cessation of unlicensed products sales containing the plaintiffs' works. Subsequently, another online store was allegedly discovered to be selling infringing merchandise, despite the store operator having reported to the court that he had no reproductions of the covered photographs in his possession. 

Upon further review, on October 26, 2015, the court made a preliminary finding of contempt and ordered the defendants to appear at a future hearing to show cause why they should not be sanctioned for contempt, including potentially for criminal contempt. Yet, on November 25, 2015, the court refused to amend the existing preliminary injunction to require all defendants to "quarantine reproductions of any photograph in which the defendant does not itself hold the copyright, pending review by an independent auditor."  The court recognized the plaintiffs' legitimate concerns of non-compliance with the injunction, but declined to impose a "sweeping prohibition" involving works not at issue in the suit, instead suggesting that the court would award appropriate relief against defendants who have failed to comply with the injunction.  

After obtaining a preliminary injunction and pushing for sanctions against those sellers who allegedly violated the court order, the plaintiffs have no intention of winning the battle but losing the war. The plaintiffs also requested that the court amend the preliminary injunction to require that all defendants "quarantine reproductions of any photograph in which the defendant does not itself hold the copyright, pending review by an independent auditor." The court denied the motion, however, refusing to impose such a "sweeping prohibition" on photographs not at issue in the suit, instead noting that in accordance with sanctions sought by the plaintiffs, the court would award appropriate relief against non-complying defendants. Determined to protect their rights, the photographers are still seeking monetary damages and a permanent injunction to ban the sale of the infringing articles once and for all. It ain't over till it's over, as the final decision is yet to come.

Running Shoe Companies Accused of Infringing Sports Apparel Patent 

They can run, but they can't hide!  Asics and New Balance, two leading sports apparel companies known for their popular brands of running shoes, may have gotten themselves stuck in the mud.  Blackbird Tech LLC, a firm that routinely assists individual investors and small companies realize the value of their patents, sued the several companies in Delaware federal court this month for allegedly infringing its own patent for a sports bra. (See e.g., Blackbird Tech LLC v. ASICS America Corp., No. 15-00929 (D. Del. filed Oct. 14, 2015)).   Blackbird also filed separate suits against the sportswear entities, citing U.S. Patent Number 7,867,058 in similar complaints.  In addition to going after Asics and New Balance, Blackbird stretched its patent portfolio even further and pursued a claim against Lululemon – no stranger to litigation itself – along with Swoob and Zoot Sports, two lesser-known sports apparel companies.

The company generally seeks a recovery of past damages in the form of, at a minimum, a reasonable royalty and injunctive relief, indicating a desire for a jury trial on all issues.  According to its website, Blackbird often resolves these kinds of disputes through settlement. 

The patent in question is described with particularity: it covers a sports bra with an integral storage pouch formed by a top opening on the material, capable of holding an object such as a phone or other electronic device.  The patent was filed in 2007 and eventually published in 2011.  According to Blackbird, the products that infringe on the patent include: Asics' Abby Pocket Bra, New Balance's Fabulous Framer Bra, Lululemon's Stuff Your Bra II, Swoob's Idona Racerback Pocket Sports Bra and Zoot's Women's Run Moonlight Bra. 

This is not the first instance of a patent holder accusing competitors of infringement over a sports bra; earlier this year, Sarvint Technologies claimed that one of Victoria's Secret's offerings infringed on a patent of its own.  Further, at least one of the alleged infringers, Lululemon, finds itself on the other end of a familiar dispute.  The high-end workout apparel company sued Calvin Klein and G-III Apparel in 2012 for violating a design patent on its yoga pants.  Since then, it has accumulated a total of 31 patents on a variety of designs.  

These recurring disputes should not come as a surprise: the women's athletic apparel segment is growing fast (not to mention the frequency of runners toting their phones or other devices on runs), and companies are jockeying for position as they try to capture additional market share.  With so many big players implicated by Blackbird's claims, any court ruling could ripple throughout the entire industry.  Whatever the result, this dispute is another in an increasing trend of "athleisure" brands looking to protect their sales via intellectual property rights.

Postscript: Exhale...Ninth Circuit Rules Sequence of Yoga Poses Not Copyrightable

In the June edition of Three Point Shot, we wrote about the copyright dispute between Bikram Choudhury and his Bikram yoga institution and a small yoga studio that began offering Bikram-style "hot yoga" classes that used the same sequence of 26 poses.  In the past, Mr. Choudhury had issued cease and desist letters to several yoga studios for copyright infringement, typically resulting in settlements that have prevented such studios from using the Bikram name or copying the Bikram Sequence of poses.  The defendant, Evolation Yoga, however, remained inflexible and refused to capitulate, prompting this heated dispuate. In 2012, a California district court dismissed the copyright claims and held that although books or photographs that depict a compilation of exercises may be copyrightable, the compilation authorship would not extend to the selection of the exercises themselves depicted in the photographs. 

After analyzing the bends and twists of the Copyright Act, the Ninth Circuit affirmed the dismissal of copyright claims, refusing to place copyight law's idea-expression dichotomy on its head and achieve the legal enlightenment that Choudhury's attorneys urged.  (Bikram's Yoga College of India, L.P. v. Evolation Yoga, LLC, 2015 WL 5845415 (9th Cir. Oct. 8, 2015)).  The appeals court held that the Bikram Sequence was not copyrightable because it was an idea, process, or system designed to improve health, rather than an expression of an idea, and was otherwise ineligble for protection as a compilation of choregraphic work: "That the Sequence may produce spiritual and psychological benefits makes it no less an idea, system, or process and no more amenable to copyright protection."  The appeals court rejected Choudhury's argument that, in fashioning the sequence, he could have chosen from hundreds of postures, instead concluding that "the possibility of attaining a particular end through multiple different methods does not render the uncopyrightable a proper subject of copyright."  In a final pose, on December 7th, Choudhury filed a petition for an en banc rehearing before the full Ninth Circuit.

Three Point Shot - December 2015

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.