Los Angeles Intellectual Property Trademark Attorney Blog

Rothschild Family Sues Commoner For Using Surname And Coat Of Arms As Furniture Trademarks

Mon, 14 May 2012 05:43:09 -0800

In a complaint that should have been written by quill on a wax-sealed scroll instead of pleading paper, Baron Philippe de Rothschild S.A. and Société Civile du Château Lafite Rothschild (you may now bow or curtsey), companies owned by the Rothschild Family (whose ancestors were ennobled by European monarchies), are suing an alleged commoner, Judson Rothschild, for trademark infringement and cybersquatting for using the surname and Coat of Arms to hock furniture and interior design services to both noblemen and commoners alike. As full disclosure, I am not ennobled by European monarchies. Instead, my father enjoyed reading Shakespeare, thus the name: Milord.

Plaintiffs allege that the family is engaged in numerous international businesses, including “two of the most famous wine enterprises in the world, and own the estates which produce the well-known ‘Chateau Mouton Rothschild’ and ‘Chateau Lafite Rothschild’ wines. These wines have become known as the finest of Bordeaux wines, and command a price appropriate to their quality.” Plaintiffs own several USPTO registered trademarks incorporating the surname, including Chateau Lafite-Rothschild, Chateau Mouton Rothschild, and Baron Philippe de Rothschild.

“As a result of the activities of the plaintiffs and their predecessor entities, and the well-known history of the Rothschild Family, the Rothschild name has become well known in the United States and throughout the world in connection with luxury goods.” Plaintiffs also allege that “because of the association of the Rothschild Family and their enterprises with opulent decoration, there are numerous literary references to ‘the Rothschild style’ or ‘the style Rothschild.’ The term has become part of interior decorators’ language.” Further, plaintiffs contend that the family’s coat-of-arms is famously associated with the Rothschild name and has developed secondary meaning in connection with products denoting luxury and comfort.

Defendant Judson is accused of establishing business entities that include the Rothschild name and operating the rothschildinteriors.com and therothschildcollection.com websites, which entities advertise luxury-style furniture and interior design services. Also, Judson is accused of using a confusingly similar coat-of-arms. Plaintiffs allege that defendants’ use of the infringing trademarks will mislead consumers into believing that Judson is a member of the world-famous Rothschild family and the goods and services he offers are approved or associated with the Rothschild family.

The case is Baron Philippe de Rothschild, S.A. v. Judson Rothschild, et al., CV12-3884 MMM (C.D. Cal. 2012).

Guyism Website Sued For Infringing Copyrighted Katy Perry Bikini Pictures

Thu, 03 May 2012 07:00:41 -0800

Mavrix Photo is a celebrity photography agency that licenses the pictures to magazines and celebrity gossip websites. Mavrix alleges that it has licensed individual images of celebrities for over $100,000 to major content outlets. Mavrix is accusing the popular men’s website, Guyism.com, of infringing at least 21 different copyrighted Katy Perry bikini pictures by posting them on its website. An exemplary picture taken from the complaint is shown to the right. “Defendants herein have driven massive traffic to Guyism.com—including millions of visitors monthly across the United States and California—in part due to the presence of the sought after and searched-for celebrity images that frame this dispute. All of this traffic translates into significant ill-gotten commercial advantage and revenue generation for Defendants as a direct consequence of their infringing actions.”

Mavrix is seeking statutory damage of $3,150,000 for the 21 images. In order to qualify for statutory damages under 17 U.S.C. §412, a plaintiff must show that the pictures were registered within three months from the date of first publication or that the registration occurred before the infringement began. Here, the Katy Perry photographs were taken in the Bahamas on July 18, 2010 and registered by September 7. Section 504(c) of the Copyright Act provides for damages of up to $150,000 per work wherein the infringement is shown to be willful. Here, Mavrix alleges that despite Guyism’s “economic resources and sophistication on intellectual property matters, Defendants have, on information and belief, violated federal law by willfully infringing Mavrix copyrights to at least 21 different photographs on Guyism.com.” In other words, Guyism is sophisticated enough to know that it willfully infringed Mavrix’s copyrights by posting the Katy Perry photos on its website. I was able to do the math – calculator unaided – and 21 multiplied by $150,000 does, in fact, equal plaintiff’s demand.

This isn't Mavrix's first bikini clad celebrity photo copyright infringement lawsuit. Mavrix previously sued the Daily Mail for for copyright infringement for posting Kate Hudson's bikini pictures on its website and using the pictures in its print publication. The Daily Mail lawsuit ended with a confidential settlement payment.

The case is Mavrix Photo, Inc. v. Guyism, LLC, CV12-3625 PA (C.D. Cal. 2012).

Mr. Brainwash Sued For Infringing Copyrighted Photos Of Jimi Hendrix, John Coltrane And Other Musicians

Wed, 25 Apr 2012 15:12:42 -0800

Street artist Thierry Guetta (aka “Mr. Brainwash”), featured in the documentary Exit Through the Gift Shop, is not a newcomer to copyright infringement claims relating to photographs of musicians. Almost a year ago, the Court found Guetta infringed photographer Glen E. Friedman’s copyrighted photo of musicians Run DMC by using the photo as a base for pasting broken pieces of phonograph records thereto in creating his derivative work. In the process, the Court also found Mr. Brainwash was not entitled to a transformative fair use defense because it would eviscerate the intent of copyright law, i.e. the protection of original works.

Mr. Brainwash appears to be in hot water again. Photographer James J. Marshall’s estate is suing Guetta and Google for infringing several copyrighted photographs of musicians Jimi Hendrix, John Coltrane, Sonny Rollins, Thelonious Monk, Dizzy Gillespie, Gerald Wilson, Brian Jones, and Stanley Turrentine. Mr. Brainwash is accused of directly copying the images and adapting them without Plaintiff’s permission and engaging in widespread self-promotion of the copies to the public, including selling the derivative works.

In addition, Thierry built or designed a backdrop in Los Angeles featuring huge blow-ups of the Coltrane and Hendrix images that Google used in an infringing manner to promote its “Google Music” service. Plaintiff also alleges that Google hosted a launch party and authorized others to photograph the infringing backdrop and to reproduce the images with Plaintiff’s authorization, including hosting them on www.gettyimages.com. Plaintiff is demanding an accounting of Defendants’ profits and/or Plaintiff’s actual damages or statutory damages under the Copyright Act, which can be as high as $150,000 per copyrighted work in cases of willful infringement.

The case is The Estate of James J. Marshall v. Thierry Guetta, et al., CV12-03423 SJO (C.D. Cal. 2012). Marshall's estate is represented by Douglas Linde, Friedman's attorney in the Run DMC case.

eBay Sellers Sued For Using Moshi Trademark On Counterfeit Goods

Thu, 12 Apr 2012 14:34:35 -0800

Aevoe has filed a trademark infringement and false designation of origin lawsuit against numerous entities accused of selling iPad and iPhone accessories bearing its Moshi®, stylized M and iGlaze trademarks. Aevoe manufactures peripherals and accessories for portable electronic devices and computers that are sold through Apple, AT&T, and its own online retail store. It alleges that its Moshi® branded products have garnered extensive media coverage and Aevoe has built up and developed significant goodwill and trademark recognition in its entire product line. And in light of this success, it’s alleged that the Moshi® trademark and products have become targets for unscrupulous individuals and entities who wish to take a ‘free ride’ on Aevoe’s goodwill.

Aevoe is accusing numerous eBay sellers of selling counterfeit or imitation goods bearing its trademarks: “Defendants maintain and operate a storefront or webpage on eBay.com [through which] Defendants regularly and systematically advertised, marketed, distributed and sold products bearing unauthorized MOSHI® registered trademarks.” Regarding one defendant, E & D International Trade, Inc., Aevoe’s investigator purchased a “red Moshi iGlaze 4 back case cover for iPhone 4 4G” from E&D. Upon inspection, “security measures confirmed that the item defendants sold was in fact a counterfeit.” Thus, Aevoe contends, “Defendants’ actions have confused and deceived, or threatened to confuse and deceive, the consuming public concerning the source and sponsorship of the counterfeit ‘red Moshi iGlaze 4 back case cover for iPhone 4 4g’ sold and distributed by Defendants. By their wrongful conduct, Defendants have traded upon and diminished Plaintiff’s goodwill. Furthermore, the sale and distribution of counterfeit goods by Defendants have infringed upon Plaintiff’s federally registered trademarks.”

In addition to its trademark infringement and unfair competition claims, Aevoe asserts a claim for trademark dilution, which appears to be susceptible to a motion to dismiss. To establish a trademark dilution claim, Aevoe must allege that "(1) the mark is famous and distinctive; (2) the defendant is making use of the mark in commerce; (3) the defendant's use began after the mark became famous; and (4) the defendant's use of the mark is likely to cause dilution by blurring or dilution by tarnishment." Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008). Under the Trademark Dilution Revision Act of 2006, however, a dilution cause of action is reserved for only the most truly prominent brands, such as Coca Cola, Apple, AT&T, or Sony, and it does not appear that Moshi is such a prominent, household name to survive a motion to dismiss.

The case is Aevoe Corp. v. E&D International Trade, Inc., CV12-02928 SVW (C.D. Cal 2012).

Court Finds “I Gotta Feeling” Song Doesn’t Infringe Pringle’s Copyright, He Destroyed Evidence

Thu, 05 Apr 2012 12:08:18 -0800

Songwriter Bryan Pringle sued the Black Eyed Peas and others, including David Guetta, for copyright infringement asserting that their “I Gotta Feeling” song copied elements of his “Take a Dive” song, which he copyrighted in 1998. Click here for details of the initial complaint and an audio comparison of the two songs. The Court granted Defendants’ summary judgment motion finding that the song does not infringe Pringle’s copyright, which it found to be invalid, and dismissed Pringle’s claim as a sanction for his willful destruction of evidence, namely the hard drive that Defendants could’ve used to prove his backdating of the creation date of “Take a Dive” dance version.

Pringle claimed that he created the dance version with the eight-bar guitar twang sequence in 1999 and backed up his creation file onto an NRG image file, which is a disc image file that contains a series of separate sound files for each individual instrument in the song. He then claimed that the music equipment and hard drives he used to create the dance version were stolen in 2000. Before the lawsuit was filed, defense counsel sent detailed correspondence to Pringle’s counsel expressing concern about his alleged creation dates of two CDs with the two versions of his song and communicated Pringle’s duty to preserve all evidence, including his computer records to allow investigation of altered dates of creation. Pringle’s counsel agreed and advised that he was preserving evidence.

Pringle then filed a copyright application for the dance version, seeking registration for the sound recording and the musical composition of the guitar twang sequence, which was the only new material added to the original version. In December of 2010, Pringle delivered to his expert a CD-Rom with the NRG files, but in January of 2011 Pringle got rid of the hard drive, copying only “relevant files” but not making a backup copy of the entire hard drive. When asked to produce all hard drives used in 2009, ’10, and ‘11, Pringle did not produce any, although he had copied data from a 2011 hard drive for his expert.

The Court found that “I Gotta Feeling” does not infringe the original version of “Take a Dive” because Pringle could not establish access and because the two songs are not substantially similar. Nor did “I Gotta Feeling” infringe the dance version because that copyright is invalid because Pringle failed to comply with the deposit requirement. In order to obtain a copyright registration, the applicant must provide a copy of the work along with the application. The Copyright Act, however, does not consider a reconstruction of the work as a proper copy, i.e. the copy must be produced by referring to the original work and not by recreating the work anew. Seiler v. Lucasfilm, Ltd., 808 F.2d 1316 (9th Cir. 1986). In this case, Pringle’s MP3 of the dance version was not created in 1999 or copied directly from a file created in 1999. Rather, it was created later using the separate sound files for each individual instrument contained on the NRG file; thereby, the copyright registration was not properly obtained. Kodadek v. MTV Networks, Inc., 152 F.3d 1209 (9th Cir. 1998).

The Court also dismissed Pringle’s case because of his willful destruction of relevant evidence. The Court found that Pringle was fully aware of his duty to preserve evidence because of the allegations of back-dating and Defendants’ suggestion to his counsel to copy the hard drives before Pringle is confronted with the allegation of backdating. Pringle was also aware of this duty because he backed up “relevant files” before disposing of all the hard drives. The information on the hard drives was relevant and Pringle’s spoliation of the hard drives prejudiced defendants’ ability to mount a defense and obtain an earlier dismissal of the case.

Even worse for Pringle, Defendants have filed a motion for sanctions against him and his attorney for their improper conduct.

The case is Bryan Pringle v. William Adams, Jr. et al., SACV10-1656 JST (C.D. Cal. 2010).

Court Again Denies Mgame's Temporary Restraining Order Against K2 Network For Knight Online Game

Wed, 28 Mar 2012 11:31:06 -0800

K2 network sued Mgame in state court for breach of contract and fraud because K2 claimed overpayment of royalties in its distribution of the Knight Online 3D video game. Mgame then sued K2 in Federal Court seeking a temporary restraining order and a preliminary injunction for copyright infringement and violation of the Computer Fraud and Abuse Act. The Court denied the TRO and preliminary injunction because Mgame's complaint did not have a claim that conferred the Federal Court jurisdiction. Click here for details.

Mgame has now filed a new complaint alleging copyright infringement, trademark infringement, and violation of the Computer Fraud & Abuse Act. Once again, Mgame requested that the Court issue a Temporary Restraining Order and Preliminary Injunction against K2 pending submission of the dispute to arbitration, as provided in the parties' contracts.

The Court has once again denied Mgame's application for a temporary restraining order because Mgame's own conduct does not establish its entitlement to emergency relief:

Although Plaintiff implies that emergency relief is not available from the arbitral tribunal because of the length of time required to constitute the tribunal, Plaintiff has not yet initiated arbitration. Instead, Plaintiff merely states that it intends to initiate arbitration. Therefore, at least part of the reason that recourse to the arbitral tribunal is unavailable is that Plaintiff has failed to initiate arbitration. Furthermore, Plaintiff has been aware of a dispute with Defendant since at least the beginning of February, first responding with self-help, then terminating the agreement with Defendant on February 23, 2012. Only now, a month later, has Plaintiff sought a temporary restraining order. The Court concludes that this does not amount to an emergency requiring ex parte relief. Accordingly, Plaintiff’s request for a temporary restraining order is DENIED.

The Court did, however, provide Mgame with a glimmer of hope by issuing an order that K2 appear on April 30, 2012 and show cause why a preliminary injunction should not issue enjoining k2 from "either directly or indirectly, from continuing to operate, promote, publish, produce, distribute and service the Game; ordering Defendant to immediately transfer the Game Servers and Billing and User Databases to Plaintiff, including up-to-date billing and user data; ordering Defendant to provide Plaintiff with up-to-date sales information; and ordering Defendant to take any further steps necessary to transfer control of the Game to Plaintiff without disruption in its availability and continuity."

The new case is Mgame Corp. v. K2 Network, Inc., CV12-2525 JST (C.D. Cal. 2012).

Court Denies Mgame’s Knight Online 3D Game TRO and Preliminary Injunction Against K2 Network

Mon, 26 Mar 2012 09:59:04 -0800

UPDATE: Court Denies Mgame's Second Attempt For Temporary Restraining Order.

Mgame licensed K2 Network in 2003 to operate and distribute the “Knight Online 3D” multiplayer, role-playing game in return for payment of royalties. Mgame claims that it terminated the written license on February 23, 2012 due to K2’s failure to pay royalties. Despite the termination, K2 is allegedly continuing to operate and distribute the game without payment of royalties. Also, K2 is accused of illegally accessing Mgame’s secured servers without authorization and illegally copying user and billing databases and has refused to return Mgame’s servers. “K2, in short, has hijacked the Game to Mgame’s detriment and has continued to operate and distribute it using Mgame’s own computer hardware, software, and Game-related intellectual-property.”

Although the parties’ licensing agreement provides for Arbitration, Mgame sued K2 in Federal Court for a more expedited ruling since “it could easily take 60 days after Mgame files its Notice of Arbitration, and possibly much longer, before the arbitral tribunal is fully constituted and capable of entertaining a request for interim measures.” That delay, Mgame contends, will cause and is currently causing irreparable harm. Thus, Mgame asks the Court to issue a temporary restraining order and a preliminary injunction prohibiting K2’s conduct.

The Court denied Mgame’s motion for a temporary restraining order because Mgame failed to establish the Court’s jurisdictional authority to do so in light of the parties’ arbitration provision in their licensing agreement. The Court found that the complaint asserts only a single cause of action for “TRO and Preliminary Injunction,” which is insufficient to establish the Court’s jurisdiction to grant the requested relief. F.T.C. v. H.N. Singer, Inc., 668 F.2d 1107, 1109 (9th Cir. 1982). “Plaintiff does not point to any jurisdictional authority that allows the Court to provide preliminary injunctive relief without an underlying claim. While Plaintiff states that this case “arises under” federal copyright laws and the Computer Fraud and Abuse Act, neither of these claims is actually asserted in the Complaint.” Further, the Court could not find a likelihood of success on Mgame’s copyright and Computer Fraud and Abuse Act claims because they were not asserted in the complaint, but are claims Mgame intends to assert in arbitration.

Other Courts in the Ninth Circuit have granted injunctions despite agreements to arbitrate. PMS Distrib. Co. v. Huber & Suhner, A.G., 863 F.2d 639 (9th Cir. 1988) (holding court retains jurisdiction to issue injunction despite order to arbitrate). Mgame’s loss may be based on a technicality, its failure to include a cause of action for copyright infringement and Computer Fraud & Abuse Act claim to provide the Federal Court with jurisdiction to grant the requested relief.

The case is Mgame Corp. v. K2 Network, Inc., SACV12-438 JST (C.D. Cal. 2012).

It also appears that K2 sued Mgame a day earlier in Orange County Superior Court for breach of licensing agreement and fraud. K2 alleges that a March 1, 2012 audit revealed it overpaid Mgame by $1,903,254.07 in royalties. K2 also claims that Mgame's February 23, 2012 termination letter is a repudiation of their 2011 extension because it constitutes a termination without cause and excludes the accompanying payment. Mgame is also accused of breaching the contract by failing to use its best commercial efforts to maximize the sales of electronic serial numbers ("ESNs"), selling in specific territory after its right to do so had been terminated, failing to sell country specific versions, and publishing a competing game through "eNTiTy Games" and "NFinity Games". Defendant Chris Hwang -- part owner of Mgame -- is also accused of intentionally interfering with K2's contractual relations with Mgame by establishing competing corporations to disrupt Mgame's performance of the K2 agreements.

The state court case is K2 Network, Inc. v. Mgame Corporation, et al., Orange County Superior Court Case No. 30-212-00555196-CU-BC-CJC.

Charriol Files Cable Motif Jewelry Copyright and Trade Dress Infringement Lawsuit

Wed, 21 Mar 2012 20:11:17 -0800

A’lor International Ltd., dba Charriol USA, is suing sixteen defendants for manufacturing and selling numerous jewelry designs incorporating a nautical cable motif that allegedly infringe Charriol’s copyrights and trade dress. Charriol claims that it has been designing unique jewelry designs for decades, which have either been registered with the U.S. Copyright Office or are pending registration. To see pictures of Charriol’s entire list of asserted designs and allegedly infringing products, click here. Through many years of sales, advertising, and media coverage, Charriol alleges that the cable motif has become its trade dress, meaning that the jewelry’s visual appearance functions as a trademark and consumers associate the appearance with the source of the jewelry. Charriol also asserts a breach of implied contract against four defendants that received samples of the jewelry and agreed to only use the designs if they compensated Charriol.

Charriol’s cable jewelry designs are reminiscent of David Yurman’s twisted cable design. Indeed, Yurman has filed numerous lawsuits for infringement of his copyrights and trade dress in the twisted cable jewelry design. In Yurman Design, Inc. v. PAJ, Inc., the defendant appealed the jury’s verdict awarding Yurman damages for PAJ’s infringement of Yurman’s copyrights and trade dress. The Second Circuit affirmed the finding of copyright infringement despite the use of cable designs by others in the jewelry industry because “the originality in Yurman's four designs inheres in the ways Yurman has recast and arranged those constituent [preexisting] elements. We have carefully reviewed the cable jewelry produced by third parties that PAJ submitted to the jury, and cannot conclude that any of Yurman's four combinations are nonoriginal as a matter of law.” The appellate court, however, reversed Yurman’s trade dress victory because his definition of the trade dress as "the artistic combination of cable [jewelry] with other elements" was overbroad or generic:

Yurman's inability to articulate its trade dress at a lower level of generality is not altogether surprising, given (1) that there are 18 different Yurman pieces in the product line it seeks to protect (eight rings, seven bracelets, and three pairs of earrings), four of which the jury found to be separately copyrightable; and (2) Yurman's concession that the pieces are composed exclusively of elements commonly used in the jewelry industry. A unique combination of elements may make a dress distinctive, but "the fact that a trade dress is composed entirely of commonly used or functional elements might suggest that the dress should be regarded as unprotectible or 'generic,' to avoid tying up a product or marketing idea."

Charriol defines its trade dress as “interwoven nautical cable threads; twisted stainless steel components; 1.0, 1.2, 1.5, 1.6, 5.5, 3.0, and 6.0 millimeter cable composition; electro-polished juxtaposed multi-strand cable threading; treated soft-textured components; poly/physical vapor deposition-treated design elements.” Assuming that it does not suffer Yurman’s overbroad or generic definition of its trade dress, it will be interesting to see how Charriol will argue that its cable jewelry design trade dress has been substantially exclusive in light of Yurman’s similar cable jewelry design.

The case is A’lor International, Ltd. v. Tappers Fine Jewelry, Inc., CV12-02215 RGK (C.D. Cal. 2012).

Copyright Infringement Lawsuit Filed Over Artist’s Use Of Beastie Boys Photos

Tue, 13 Mar 2012 17:01:18 -0800

Artist David Flores is being sued for copyright infringement for using photographer Glen Friedman’s pictures of the Beastie Boys to make derivative artistic works, some of the photographs and accused infringing works are reproduced to the right. Friedman also alleges copyright ownership in a photograph of famous skateboarder, Jay Adams, which copyright was infringed by Flores’ derivative artistic work. Friedman contends that defendants engaged in widespread distribution of unauthorized copies of his copyrighted works. In addition to monetary damages, Friedman seeks his attorneys’ fees.

The current images remind me of Shepard Fairey’s “Obama Hope” posters, where Fairey was countersued for copyright infringement by the Associated Press for using one of its photographs to make his derivative work. After Fairey admitted to destroying evidence and was untruthful regarding which photo he used, Fairey settled the case for an undisclosed sum and his agreement to refrain from using AP photo’s without a prior license. Two weeks ago, in the criminal case against Fairey, he plead guilty for disobeying a judge’s order to not destroy evidence and lying to the court. He is to be sentenced on July 16, 2012.

On the other hand, the clothing company, One 3 Two, Inc., that used Fairey’s work on T-shirts and its website continued the litigation with AP claiming that its use of Fairey’s work did not infringe and was protected under the fair use defense. In a relatively short order, U.S. District Judge Alvin K. Hellerstein, denied One 3 Two’s fair use defense: “I hold, however, that should the AP establish copyright infringement, One 3 Two does not have a basis to rebut the finding on the ground of fair use. I therefore grant [AP’s] motion insofar as it seeks to pare the fair-use dense away from the case, but otherwise deny it.” The AP was also seeking a finding of copyright infringement and a violation of the DMCA, which were not decided on summary judgment and must now proceed to trial.

The case is Friedman v. Flores, CV12-1840 JFW (C.D. Cal. 2012).

Can LA Clippers Use Trademark Law To Stop Clipper Darrell?

Wed, 29 Feb 2012 16:38:42 -0800

Clipper Darrell has been a fixture at Clippers’ basketball games for the last decade, even when the team was horrible and I would go watch them solely because my friend would give me his season tickets. In fact, Staples Center was so empty during Clippers games that Clipper Darrell was the only person cheering. But now that the Clippers are winning, my friend has stopped giving away his tickets and the Clippers have apparently told Clipper Darrell he can no longer use “Clipper” in his name or sell merchandise that allegedly infringes the “Clippers” trademark.

Although the Clippers will surely resort to the canned response of “we have a duty to enforce and protect our trademark or risk losing our trademark”, some trademark professors believe the risk to be overstated. But to Clipper Darrell’s advantage, when he and I were at past Clippers games, the only other “fan” in attendance was team owner Donald Sterling, who was actually and inexplicably heckling his own players. There is no doubt that Mr. Sterling saw and/or heard his counterpart, Clipper Darrell in his trademark half-blue/half-red suit, actually cheering for the Clippers. Thus, it appears that Clipper Darrell may have a laches defense against the Clippers’ trademark infringement claim if he can show that the Clippers knew or should have known of his infringing activity and they unreasonably delayed in filing a lawsuit. Miller v. Glenn Miller Prods., 454 F.3d 975, 980 (9th Cir. Cal. 2006).

The practical approach from both a legal and PR perspective would be to license Clipper Darrell to use the trademark and not alienate Clippers’ fans that have been loyal during the lean years. The trademark license would allow Mr. Sterling to increase revenue and thereby extend Blake Griffin the maximum contract allowed under the new collective bargaining agreement. But that assumes the Clippers are now practical.

TechnoMarine Sues Unauthorized Watch Retailers Costco and Overstock.com for Trademark Infringement

Mon, 20 Feb 2012 06:15:27 -0800

TechnoMarine is suing both Costco and Overstock.com for trademark infringement because neither is an authorized retailer of its watches, which it alleges are “either counterfeit or were obtained in bad faith from TechnoMarine’s authorized retailers/distributors, who are expressly prohibited from distributing” the watches to other retailers. TechnoMarine has been selling its watches since 1997 and owns several USPTO registered trademarks for the word TechnoMarine and its T and M logo. TechnoMarine alleges hundreds of millions in watch sales by high end retailers and tens of millions of dollars in advertising through numerous renowned magazines.

TechnoMarine alleges that the sale of its watches are strictly controlled and “contractually permitted only through authorized dealers, most of which are not authorized to sell the products on the internet. All of TechnoMarine’s authorized retailers/distributors have entered into agreements in which they are expressly prohibited from transshipping and selling TechnoMarine branded products to unauthorized third party retailers and online retailers.” TechnoMarine’s warranties are inapplicable to watches obtained through unauthorized retailers thereby reducing the quality of unauthorized products. Because Costco and Overstock are not authorized TechnoMarine watch distributors, the warranties are void and render the goods not genuine in violation of TechnoMarine’s trademark rights.

This isn’t Costco’s first rodeo in the unauthorized watch sales arena. Costco was previously sued by Omega for copyright infringement for selling gray market watches in the U.S., meaning that Costco bought legitimate Omega watches abroad and imported them into the U.S. for resale. The Omega watch had a copyrighted glove image and Costco’s sales in the U.S. constituted copyright infringement because it violated Omega’s rights to distribute the work. The District Court agreed with Costco that Section 109’s first sale doctrine trumped Omega’s exclusive rights. The Ninth Circuit Court of Appeals disagreed, holding that the first sale doctrine does not apply to copies not authorized for resale in the United States. The U.S. Supreme Court tied 4-4, thus allowing the Ninth Circuit’s decision to stand, but not resolving the split between the circuits.

Trademark law prohibits importation of gray market goods that are materially different from goods intended for the U.S. market. Material differences have been found in labeling, packaging and marketing methods, caloric content, container volume, and warranty. See Societe Des Produits Nestle, SA v. Casa Helvetia, Inc., 982 F.2d 633, 638 (1st Cir. 1992).

The cases are Technomarine SA v. Costco Wholesale, CV12-00930 JFW (C.D. Cal. 2012); and Technomarine SA v. Overstock.com, Inc., CV12-00932 MMM (C.D. Cal. 2012).

Knicks’ Jeremy Lin Should Block Unauthorized Linsantity Trademark Filing At USPTO

Mon, 13 Feb 2012 15:00:02 -0800

This NBA season’s “LIN-derella” feel good story is New York Knicks’ Jeremy Lin’s fast-break rise from bench warmer to player of the week award recipient in a week. With his success, the nicknames have started pouring in faster than the 38 points he scored against the Lakers: LINsanity, LINcredible, LINvincible, LINsational, Super LINtendo, and my favorite, Duhhh LINning (à la Charlie Sheen). Lin is so popular right now that even the Knicks’ page on nba.com is dedicated to Lin and his new iPhone app. Lin’s popularity cannot be contested because I’m even writing about him. Well, I got carried away with all the hype.

But along with the upside of fame comes unauthorized, third-party trademark applicants. A search of the USPTO’s trademark database shows an application filed only six days ago by an unrelated party, Yenchin Chang, to register the “LINsanity” trademark for use on a slew of goods including athletic uniforms, t-shirts, baseball caps and hats, etc. I hope that Mr. Chang does not expect to LIN (yes, that was bad). Trademark law prevents registration of a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” 15 U.S.C. § 1052(c).

For example, the USPTO’s Trademark Trial and Appeal Board affirmed the trademark examining attorney’s refusal to register the trademarks “Obama Pajama” and “Barack’s Jocks Dress To The Left” because applicant failed to provide President Barack Obama’s written consent. In re Richard M. Hoefflin, 97 USPQ2d 1174 (TTAB 2010) [precedential]. To determine “whether a particular living person bearing the “name” would be associated with the mark as being used on the goods, we must consider (1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used.” The trademark examining attorney – unless she’s been hiding under a rock this past week or is a Nets fan – should refuse registration because trademark law prevents even nicknames that identify a particular living individual from being registered without their consent.

Assuming that the trademark examining attorney is a Nets fan and does not refuse registration, all is not lost for number 17. In the trademark application process, following the examining attorney's review and approval, it is published for thirty days and any party that believes he or she may be harmed by the registration can file an opposition to prevent registration. Further assuming that Jeremy Lin misses the opposition period and the trademark registers, which is unlikely for the Harvard grad, he can still file a proceeding at the USPTO or a lawsuit in federal court seeking cancellation of the unauthorized registration.

Court Shoots Down Strip Club’s Rhino Trademark Lawsuit Against Gun Company

Sat, 11 Feb 2012 08:27:19 -0800

In an opinion that shocked no one except Spearmint Rhino, the Court dismissed WITH PREJUDICE – a rarity at such an early stage in litigation – the strip club operator’s trademark infringement case against Chiappa Firearms. Spearmint sued Chiappa for using a rhino outline as a trademark on its guns alleging that its use is “likely to cause confusion, or to cause mistake, or to deceive because, among other reasons, consumers are likely to believe that there is an affiliation, connection, or association between” Spearmint and Chiappa. As predicted, the Court disagreed with Spearmint because consumers are unlikely to confuse its G-strings with guns.

Chiappa filed a motion to dismiss the complaint, wherein the court is requested to decide whether, assuming all the allegations in the complaint are true, the plaintiff has still failed to present a case entitling it to damages. The Court, however, must consider whether the claim is plausible on its face based on alleged facts. Thus, a complaint which alleges only labels and conclusions to meet the elements of the cause of action will not survive dismissal. Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007).

To prevail on its trademark infringement claim, Spearmint had to show that it had a protectable trademark and that a “reasonably prudent consumer” is likely to be confused as to the origin of a good or service. DreamWerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1992). To evaluate likelihood of confusion, Courts analyze the following non-exhaustive factors including: (1) strength of the mark; (2) relatedness to the goods; (3) similarity of sight, sound, and meaning; (4) evidence of actual confusion; (5) marketing channels; (6) type of goods and purchaser care; (7) intent; and (8) likelihood of expansion. AMF, Inc. v. Sleekcraft Boats, 559 F.2d 341 (9th Cir. 1979).

Courts, as here, do not have to blindly believe the infringement allegations because a plaintiff has to show that likelihood of confusion must “be probable, not simply a possibility.” Murray v. Cable NBC, 82 F.3d 861 (9th Cir. 1996). If not shown, the Court may determine that likelihood of confusion does not exist as a matter of law. Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981).

The Court determined that Spearmint could not establish likelihood of confusion because “Plaintiff has not been able to demonstrate a single instance of actual consumer confusion, and indeed cannot show that any reasonable consumer is likely to be confused as to the relationship between these two companies. Plaintiff mainly provides services in the form of adult entertainment, while Defendants mainly provide goods in the form of handguns. It is highly unlikely that a consumer would accidentally purchase one when he intended to purchase the other.” In other words, because consumers are unlikely to be confused and shoot each other with G-strings, Spearmint’s trademark infringement claim failed as a matter of law. So, like clay pigeons, fell Spearmint’s false designation of origin and §17200 unfair competition claims.

Spearmint’s trademark dilution claim also fell in the Court’s crosshairs because although Rhino introduced evidence that its mark was “at least somewhat well known, it fails to assert sufficient facts to support a finding that the Rhino mark is famous under the Trademark Dilution Revision Act of 2006. Courts have consistently held that only the most truly prominent brands, such as Kodak, Coca Cola, Budweiser, or Barbie count as famous under the statute.”

The case is Spearmint Rhino Companies Worldwide, Inc. v. Chiappa Firearms, Ltd., et al., CV11-05682 R (C.D. Cal. 2011).

Sony Sued Over Karaoke Music Copyright Infringement Claims Of Almost $1.3 Billion

Mon, 09 Jan 2012 17:46:57 -0800

KTS Karaoke is suing Sony/ATV Music Publishing for declaratory relief of copyright non-infringement and/or reduction of the damages amount at issue, which Sony claims is almost $1.3 billion. The music publishing company is co-owned by The Michael Jackson Family Trust (in 1985 Michael bought ATV publishing company that included the Beatles’ catalog for $47.5 million, causing a rift with Paul McCartney) and Sony and owns a vast library of music copyrights. KTS claims to be the largest distributor of karaoke hardware and software in the country.

Sony/ATV sent correspondence to KTS claiming at least 6715 acts of copyright infringement by virtue of selling karaoke discs that contained allegedly unlicensed recordings of music copyrights, resulting in statutory damages of at least $1,282,050,000.00. KTS argues that Sony/ATV has known of the manufacture and distribution of the karaoke CDs for more than the applicable three year statute of limitations and has not taken reasonable steps to stop the manufacture of the infringing products at the source. Instead, KTS alleges, Sony/ATV has engaged “in copyright misuse by seeking to secure multiple license fees from the same allegedly infringing work by suing each link of the distribution chain, by demanding license fees for licensed goods and by attempting to obtain more than one statutory damage award for the continuing infringement (i.e., downstream distributions of the infringing work) of a SINGLE WORK.”

If the court finds that KTS has infringed the copyrighted works, KTS asks the court to then determine the proper amount of damages in dispute: KTS alleges that “Sony/ATV claims that it is entitled to multiple awards of statutory damages for the same song appearing on different products while KTS believes that Sony/ATV is limited to one award per work, no matter how many different products are at issue as to a given work.” In addition, KTS contends that Sony/ATV is not entitled to any damages for many of the discs at issue because Sony/ATV has already recovered damages for the distribution of the subject discs from others in the distribution chain. KTS will presumably rely on the Ninth Circuit’s holding that “when statutory damages are assessed against one defendant or a group of defendants held to be jointly and severally liable, each work infringed may form the basis of only one award, regardless of the number of separate infringements of that work.” Columbia Pictures Television v. Krypton Broad. of Birmingham, Inc., 106 F.3d 284, 294 (9th Cir. 1997), rev’d on other grounds, Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998)).

KTS also asserts a California unfair competition claim premised on the belief that Sony/ATV has allowed the Karaoke music CDs to be placed in the stream of commerce so that it could make various claims against sub-distributors and thereby recover multiple times for the same allegedly infringing conduct. KTS essentially claims that Sony/ATV encourages the infringement because it is part of its revenue generation model to extract “multiple recoveries from the same infringing discs and to line the pockets of Sony/ATV and its counsel.”

The case is KTS Karaoke, Inc. v. Sony/ATV Music Publishing LLC, CV12-0014 (C.D. Cal. JMM).

Twilight’s Bella Swan Wins Trademark and Copyright Infringement Lawsuit Over Jacket

Mon, 28 Nov 2011 19:30:59 -0800

Before last week’s release of Twilight Saga: Breaking Dawn Part 1, a trademark and copyright infringement lawsuit saga dawned on clothing manufacturer B.B. Dakota over the pictured Bella Jacket. Summit Entertainment, the producer of the Twilight franchise that has raked in more than $1 billion in gross revenues, owns several USPTO trademark registrations for the “TWILIGHT” and “BELLA” trademarks, including for use on clothing and jewelry. Summit of course also owns all copyrights in the movies in addition to marketing and publicity materials and the “Bella Trading Card Image.” Summit’s licensing of the intellectual property rights has grossed an additional $63 million.

Defendant BB is a clothing manufacturer that sold the pictured women’s cargo jacket in 2006 under the “Leigh” mark, which was discontinued in 2008. When the Leigh jacket was worn by Bella in the 2009 Twilight movie, BB was credited as the manufacturer in an Entertainment Weekly article accompanying a photograph. BB’s outside public relations contractor then contacted Summit’s manager of national publicity requesting permission to re-publish the EW image on its website, which she included in an email link to EW’s website. Summit’s representative responded with a simple “OK.” A few days later, BB requested permission to allow for a retail store to use the image, to which Summit responded with one word: “sure”.

Without seeking further permission, however, BB created “hangtags” for the jackets that included not the Entertainment Weekly picture, but an image of Bella wearing the jacket that Summit had used to promote posters, clothing, and other merchandise. Apparently, BB’s own PR rep warned BB to obtain permission to use the new image, but BB failed to heed the warning and argued that by including “As seen in the Twilight movie” language on the tag would constitute fair use. Thus, BB’s sales representative emailed the image to two hundred of her sales accounts representing that BB had permission to use the image on the hangtag and to publicize the product. The retailers in turn sent out email blasts using the Bella image with the belief that BB had properly licensed it. Summit sent cease and desist letters to BB’s retailers, after which BB instructed them to cut the hang tags from existing inventory and provided a substitute picture of a girl resembling the Bella character. To make matters worse, BB continued to refer to the jacket as the “Twilight jacket.”

Metropark, one of BB’s retailers, filed bankruptcy and ModCloth settled the matter. BB countersued Summit for trade dress infringement and unfair competition. Summit filed for summary judgment of liability on its trademark and copyright infringement, and trademark dilution claims and on BB’s counterclaims.