SunTiger Inc., a Calabasas, CA, company that owns the rights to the technology for “blue-blocking” sunglasses, was awarded $2.7 million in damages for a patent infringement lawsuit against Scientific Research Funding Group.
An attorney for SunTiger said the case was significant for the DRTV industry because it marked the first time an infomercial marketer was found liable for assisting other companies in infringing on a product patent.
“Every single thing we asked for was entered in judgment,” said Alan Mittelman, founder and president of SunTiger. “I'm very pleased with the verdict.” His company is now seeking an award of treble damages and attorneys' fees from Scientific Research.
The verdict marked the latest legal victory for SunTiger, which had filed patent infringement suits against several companies that marketed blue-blocking sunglasses in infomercials. Blue-blocking technology was developed by a team of NASA scientists for use by astronauts after it was discovered that eagles and other birds of prey possess a natural orange filter that blocks blue-colored light, while protecting and enhancing vision. These same properties were synthetically replicated in the blue-blocking lenses.
SunTiger was chosen as the only company endorsed by the NASA scientists to market the technology in sunglasses. Unfortunately for the company, several competitors began marketing similar sunglasses without licensing the technology. One of those companies was Scientific Research Funding Group, which had test marketed an infomercial for its “Eagle Eyes” blue-blocking sunglasses in 1994.
Scientific Research signed a distribution agreement with Positive Response Television Inc., a DRTV marketing firm in Sherman Oaks, CA, to air the infomercial. Positive Response later contracted with TeleBrands Inc., a DRTV marketer in Fairfield, NJ, to sell Eagle Eyes in retail stores. A lawyer for Scienific Research, James C. Wray in McLean, VA, declined to comment on the case.
While SunTiger obtained licensing agreements from Positive Response Television, TeleBrands, BluBlocker Corp., National Media Corp. and JS&A Group Inc., it was unable to reach an agreement with Scientific Research.
SunTiger filed a patent infringement suit in the Eastern District of Virginia in March last year. The company's attorney said the verdict marked the first time an infomercial marketing company was found to be willfully liable for “active inducement of patent infringement,” which basically means that Scientific Research was liable for all sales of Eagle Eyes made by Positive Response and TeleBrands.
“Infomercial producers are now going to have to be very, very careful,” said Tim Meece, an attorney with Banner & Witcoff Ltd., an intellectual property firm in Chicago. “Before they produce an infomercial, they're going to have to check and make sure that the product they're offering for sale does not violate anyone's patents because they can be held liable.”