Two months ago, we reported on a lawsuit filed in New Jersey by BMW against digital media company, TurboSquid, Inc. According to the complaint, TurboSquid was “marketing 3-D virtual models of vehicles that infringe the BMW trademarks, trade dress, and design patents.” The case presented interesting legal questions with respect to IP and virtual reality. For example, can selling a digital 3D model of a car, which exists only in virtual reality, infringe a design patent?
On August 10, BMW filed a Notice of Voluntary Dismissal of the case — without prejudice — leaving open the possibility of BMW “rebooting” its lawsuit against TurboSquid in the future. Thus, at least for now, it appears that the interesting legal questions are left to be resolved in a different or future dispute. Interestingly, we note that TurboSquid no longer sells 3-D models of BMW or Mini Cooper vehicles on their website — although they do have models of other vehicle manufacturers, such as Tesla, Audi and Toyota.
The blog, Protecting Designs, reported an interesting case filed last month that may have legal ramifications to the burgeoning VR industry: BMW v. TurboSquid, Inc.
The issue: Can selling a digital 3D model of a car, which exists only in virtual reality, infringe a design patent?
According to Wikipedia,
TurboSquid is a digital media company that sells stock 3D models used in 3D graphics to a variety of industries, including computer games, architecture, and interactive training. The company, headquartered in New Orleans, Louisiana in the United States, is most known for brokering the sale of 3D models in return for a percentage of the sales. As of 2014, TurboSquid had over 370,000 3D models in its library, making it the largest library of 3D models for sale in the world.
TurboSquid’s website lists Sony Pictures, Activision and Pixar as a few of their clients.
On May 3, 2016, BMW filed a complaint in a federal district court in New Jersey alleging, among other claims, that TurboSquid’s 3D models of certain vehicles infringe BMW’s design patents. In particular, BMW alleges that TurboSquid is “marketing 3-D virtual models of vehicles that infringe the BMW trademarks, trade dress, and design patents. [TurboSquid] markets and tags BMW-trademarked 3-D virtual models of BMW vehicles as suitable for games.”
BMW’s design patents (D473,165, D639,209, D664,896, D714,190, D714,687, and D724,495) are directed to BMW, Mini, and Rolls-Royce branded vehicles produced by BMW Group. The ’165 patent is titled “Surface configuration of a vehicle, toy and miscellaneous consumer products incorporating the design,” and the other patents are each titled “Vehicle, toy, and/or replicas thereof.” BMW have also asserted trademark infringement claims against TurboSquid and is seeking injunctive relief, disgorgement of all of TurboSquid’s profits under 35 U.S.C. Section 289, attorneys’ fees and other remedies.
It remains to be seen whether “virtual” objects can infringe a design patent (or perhaps in a future case, utility patents).
For more analysis on the trademark claims, Patently-O had an interesting write-up which can be accessed here.
On May 5, 2016, GeoVector Corporation (“GeoVector”) sued Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC (“Samsung”) in federal district court in the Northern District of California. GeoVector’s complaint asserts against Samsung numerous patent infringement claims, trade secret misappropriation claims (under California law), Lanham Act violations and RICO violations.
According to the complaint, GeoVector was founded in 1987 by John Ellenby, a former employee at Xerox-PARC. In 1990, John Ellenby and his son, Thomas, conceptualized and invented “the first augmented reality device which utilized data as to the device’s position and orientation to display relevant information to the user.”
GeoVector is the owner and assignee of U.S. Patent Nos. 6,037,936 (“Computer vision system with a graphic user interface and remote camera control”), 7,301,536 (“Electro-optic vision systems”), 7,916,138 (“Electro-optic vision systems”).
GeoVector alleges that, in December 2002, Samsung and GeoVector had a meeting in which GeoVector produced a “confidential slide deck demonstrating the possibility of integrating GeoVector technology into Samsung handsets.” GeoVector also alleges that it disclosed to Samsung, in confidence, “its entire unpublished patent portfolio, including its early applications for augmented reality patents.” Despite negotiations that continued into 2008, the parties never consummated a licensing agreement. Subsequently, GeoVector alleges that Samsung began incorporating GeoVector’s technology into its Galaxy devices.
GeoVector begain sending numerous notice letters to Samsung in April 2013, notifying them of infringement, including claim charts. GeoVector also alleges that Samsung wrongfully patented GeoVector’s same augmented reality technology.
GeoVector’s complaint is fairly detailed and also takes a few shots at Samsung’s past IP litigations (“Because Samsung regularly refuses to license technology without being sued, victims are forced to sue Samsung”), and includes a list of former “victims.”