SplitFish Claims Early Victory in Court Battle Against Bannco

Peripheral manufacturer SplitFish claimed an early victory in its court battle against competitor Bannco after a U.S. district judge in Alexandria, Va., ordered Bannco to stop selling game controllers that SplitFish claimed infringed its software code and trademarks. The defendant, meanwhile, was given until Sept. 10 to find a new attorney, after Lee Berlik moved to withdraw.

Swiss company SplitFish and Canadian subsidiary SplitFish GameWare sued Bannco in March, accusing it of trademark infringement and unfair competition under Virginia law, and violation of the federal Copyright Act. SplitFish claimed Bannco was selling two controllers, FRAGnStein and Scorch, that used software code copied from SplitFish’s FragFX controllers for the PS3, PS2 and PC, and had copied their design and functionality. SplitFish sought preliminary and permanent injunctions to bar Bannco from selling the infringing products through Bannco.com, Amazon.com or elsewhere. Amazon wasn’t named in the suit.

Judge T.S. Ellis issued a preliminary injunction Aug. 3 against Bannco’s selling or offering for sale in the U.S. any of its game controllers containing the plaintiffs’ copyrighted firmware or driver code, or importing into the U.S. any of Bannco’s game controllers with the firmware or code. Ellis said July 22 that he believed Nabon, another SplitFish subsidiary, was the original owner of the software code at issue and that Splitfish was likely to succeed on the merits of the copyright infringement claims. Nabon was added to the case July 14 as a plaintiff in an amended complaint.

Gui Ming Feng and You Bing Wang created the firmware and driver code used in the FragFX controllers while working for Nabon in 2006, Ellis said in his opinion. In 2008, three Splitfish senior executives left the company, including President Ken Tetterington and Vice President Nan Liu. SplitFish claimed that Liu took with him the only copy of the source code for the controllers’ firmware and drivers. In April 2009, Tetterington introduced a competing controller, the mLani MoBi, which resembled the FragFX controllers, but he agreed to stop selling his controller after Splitfish objected, the plaintiff said. Later that year, Bannco started selling FRAGnStein controllers that resembled the FragFX controllers.

Tetterington became president of FlicStick, a Canadian company that said early this week it will soon make independent movies and trailers available digitally on the PS3 and Xbox 360 using its new FlicStick Movie System (CED Aug 11 p7). The company set a tentative Oct. 1 launch date for its patent-pending system.

The Bannco case is “unusual in that the software at issue was developed in China and Judge Ellis applied Chinese law in order to establish that Nabon was the copyright owner,” said Finnegan, the law firm representing SplitFish. It was also “one of the first instances where a court in the Eastern District of Virginia has applied the more rigorous standard requiring plaintiffs seeking injunctive relief in copyright infringement actions to make a clear showing of irreparable harm,” the law firm said. “Under prior law, irreparable harm was presumed upon the plaintiff’s showing that it was reasonably likely to succeed on the merits of its case."

Bannco removed the infringing products from its website, Finnegan Partner Lawrence Robins told Consumer Electronics Daily Thursday. SplitFish’s legal team, meanwhile, was “under the impression all the major retail and online distributers are in the process of immediately removing the unauthorized SplitFish technology that Bannco had been manufacturing and selling,” said Jason Johnson, SplitFish’s creative development head. “If there is any non-compliance by Bannco or its partners, this will be followed up aggressively.”

Berlik told us he will remain Bannco’s attorney at least through Sept. 10. “The case is not in limbo, but activity will likely be minimal until new counsel can take over,” he said. On June 22, Berlik filed a motion to withdraw as Bannco’s counsel, “based primarily on the fact that Bannco had instructed Berlik to stop work and had advised Berlik that it would not be paying the fees it owed to Berlik (and continues to owe) for legal services,” he said. Two days later, defendant Ju Ning, who Berlik said was “the sole owner of Bannco,” told Berlik that he had sold Bannco to Jiang Cong, a person in China, and that Ning “no longer maintained any affiliation with Bannco.” Ning “has not communicated with Berlik in any way” since, Berlik said. Cong later wrote Berlik that Bannco couldn’t afford to pay further attorney’s fees, especially after the preliminary injunction was granted, Berlik said.