Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – Costa Mesa trademark attorneys filed breach of sponsorship agreement on behalf of NASCAR driver’s team Robby Gordon Motorsports and seek declaratory relief regarding the defendant’s trademark rights. Because of Robby Gordon’s successful NASCAR racing career, companies are willing to pay significant amounts of money for sponsorship and licensing opportunities. The complaint alleges that in 2007, Gordon and Camping World entered into a sponsorship agreement by which Camping World sponsored Robby Gordon Motorsports in connection with several NASCAR races.

For the 2008 racing season, Camping World and Robby Gordon Motorsports entered into another sponsorship agreement where “Camping World agreed to provide two motor coaches and pay [Gordon] $200,000 per race for primary car sponsorship for four NASCAR Sprint Cup races.” The complaint alleges that Camping world has partially performed its obligations by providing one of the two motor coaches, but is now refusing to provide the second motor coach. The complaint continues that Camping World sought to renege the sponsorship agreement by demanding that Robby Gordon “ensure that Camping World’s colors and logos do not appear on [Gordon’s] car...and Gordon does not have [Camping World’s] permission to bear [Camping World’s] trademarks.” Also, Camping World has allegedly failed to pay at least $250,000 due under the sponsorship agreement. Robby Gordon Motorsports requests monetary damages for the alleged breach of contract and the Court’s determination of the rights of the parties with respect to the trademarks. The case is titled Team Gordon, Inc. v. Camping World, Inc., CV08-01731 MMM (C.D. California).

Burbank, CA – Copyright attorney files copyright infringement lawsuit in Los Angeles Federal District Court alleging infringement of Spiderman cartoon copyrights. BVS Entertainment, Inc. owns exclusive copyrights to episodes of the animated Spiderman television series from the 1960s. BVS alleges that Defendant Trans World had purported to license copyrights and provide copies of Spiderman to various entities around the country. In February, Trans World signed a settlement agreement acknowledging BVS’s copyrights, disclaiming its own, admitting infringement, and promising to cease and desist. However, as the complaint continues, Trans World began marketing rights to Spiderman again in violation of BVS’s copyrights and the settlement agreement.

In the settlement agreement, Trans World admitted to infringing BVS’s copyrights and was required to identify all entities to which Trans World had licensed the Spiderman animated series. The complaint, however, alleges that Trans World failed to identify all of the entities which BVS later discovered. BVS claims that “Trans World failed to abide by the terms of the Settlement Agreement and continued to infringe [the copyrights] even after Trans World signed the Settlement Agreement on Februaruy 1, 2008. Specifically, Trans World sent an email on February 3, 2008, to Corus Entertainment, Inc., offering ten episodes of ‘Spiderman’ to which BVS owns the exclusive copyrights, as Trans World acknowledged in the Settlement Agreement.” BVS seeks monetary damages, attorneys’ fees, and a permanent injunction against Trans World and asks the Court to order the “seizure of unauthorized copies of ‘Spiderman’ in Trans World’s possession custody and control, including means of production as provided by 17 U.S.C. section 503.” The case is titled BVS Entertainment, Inc. v. Trans World Films Corp., CV08-01694 DDP (C.D. California).

Los Angeles, CA - Patent attorneys filed a patent infringement lawsuit, in Los Angeles Federal District Court, on behalf of Bella Bella, Inc. against numerous cosmetic products manufacturers for allegedly infringing a patent covering a cosmetic composition used in micro-dermabrasion procedures. Bella is the assignee of U.S. Patent No. 6,290,976 titled “Facial skin dermabrasion cleansing and conditioning composition.” The complaint alleges that each of the laundry list of defendants “has infringed and continues to infringe the ‘976 patent by making, using, providing, offering to sell, and selling … microdermabrasion products containing alumina.” Bella alleges that some of the defendants were aware of the ‘976 patents because it had been cited as prior art in the defendants’ own patent application. Also, as to some of the other defendants, Bella alleges that they were aware of the ‘976 patent because Bella had contacted them to offer a license to practice the invention. Bella seeks a permanent injunction in addition to monetary damages for patent infringement. The case is titled Bella Bella, Inc. v. Neutrogena Corporation, et al., CV08-01270 GAF (C.D. California).

Here’s the list of the “et al.” defendants, if you're interested: Johnson & Johnson, DermAnew, Inc., Sharper Image, Physicians Formula Holdings, Inc., Physicians Formula Cosmetics, Inc., American International Industries, Guthy-Renker Corporation, Stearn’s Products, Inc., Derma E, L’Oreal S.A., L’Oreal USA, Inc., Laboratories Garnier Paris, Garnier LLC, Lancome Perfumes et Beaute, Avon Products, Inc., Mary Kay, Inc., Graf Skin Care, Inc., Homedics-U.S.A., Inc., Borghese, Inc., Photomedex, Inc., Procyte Corporation, Kao Brands, Beauticontrol, Inc., ABBE Laboratories, Inc., Guinot, Lachman Imports, Inc., Estee Lauder Companies, Inc., Prescriptives, Inc., Peter Thomas Roth, Inc., Platinum Skin Care, and, LAST BUT NOT LEAST, Cosmesis Skincare, Inc.

Los Angeles, CA - Activision, the maker of the popular video game “Guitar Hero,” filed a declaratory judgment complaint asking the Court to rule that the video game does not infringe on Gibson Guitar’s patent. Gibson is the owner of U.S. Patent No. 5,990,405 (“the ‘405 Patent”), titled “System and Method For Generating and Controlling a Simulated Musical Experience.” In January of 2008, patent attorneys for Gibson informed Activision that the Guitar Hero video-game infringed the ‘405 Patent and offered a license. Apparently Activision was already licensing trademarks owned by Gibson and the parties had a continuing business relationship for several years.

Licensing negotiations hit a sour note and Activision filed the instant complaint asking the District Court in Los Angeles to rule that the ‘405 Patent is invalid and/or not infringed by the Guitar Hero video-game. Activision also alleges that because Gibson has been aware of the Guitar Hero video-game for many years and has encouraged its sale, that Gibson should be estopped from asserting the patent. Also, because Gibson has encouraged the sale of the games, Activision argues that it has an implied license under the ‘405 patent. Further, Activision alleges that because Gibson has been fully aware of the Guitar Hero video-game for several years, it should not be able to enforce the patent under the doctrine of laches. The case is titled Activision Publishing, Inc. v. Gibson Guitar Corporation, CV08-01653 PSG (C.D. California).

Los Angeles, CA - Trademark and franchise law attorneys filed a lawsuit on behalf of the Dairy Queen® franchisor against a Culver City franchisee for allegedly breaching the franchising agreement and for trademark infringement. Dairy Queen’s trademarks have been registered with the USPTO and since the 1940’s have been franchised or licensed for use on ice cream, dairy products, and other consumables. In this case, Defendant Lee had executed two franchising agreements and licensed the rights to use Dairy Queen’s numerous trademarks. The franchising agreements require the franchisee to maintain the store at a specific standard, follow operating procedures, pay a monthly license fee, pay a lease administration fee, and pay a sales promotion program fee.

The complaint continues that the franchisee must also agree to allow Dairy Queen to audit the financial records to determine whether the proper amount of the licensing fee is being paid. If any of these franchising terms were not met and cured, it would constitute a default and the franchise rights would be terminated. After termination, the franchisee would agree to immediately cease the use and display of all of Dairy Queen’s trademarks. The terminated franchisee would also need to pay a termination fee to compensate Dairy Queen for the early termination of the franchising agreement. The complaint alleges that defendant Lee failed to comply with the upkeep standards set by Dairy Queen for its franchisee’s location and was given 60 days to correct the deficiencies, which went uncorrected. The complaint also alleges that, after an audit, it was determined that Lee underpaid Dairy Queen by $16,911.84, which Lee failed to pay after receiving notice. The complaint alleges the following causes of action: (1) Trademark infringement of USPTO registered trademarks; (2) False designation of origin under the Lanham Act 43(a) (15 U.S.C. 1125(a)); (3) Federal trademark dilution of famous trademarks under the Lanham Act 43(c) (15 U.S.C. 1125(c)); (4) Trademark counterfeiting; and (5) Breach of contract. The case is titled American Dairy Queen Corporation and DQF, Inc., v. Myung Taek Lee, CV08-01505 AHM (C.D. California).

Pasadena, CA - Patent attorney files patent infringement lawsuit on behalf of Mobile Hi-Tech Wheels, Inc. over USPTO issued design patents covering custom wheels against Custom Wheels Unlimited, Inc. in Los Angeles District Court. Mobile has designed and distributed custom wheels for automobiles since 1996, and its products are sold to automobile dealers and retail distributors of custom wheels. Its Condo wheel design was issued U.S. Design Patent No. 497,583. Its Big Homie wheel design was issued U.S. Design Patent No. 514,052. The complaint alleges patent infringement because Custom Wheels Unlimited “manufactured, imported, offered for sale and/or sold vehicle wheels which are copies of the patented Condo and Big Homie designs. The complaint seeks monetary damages and a preliminary and permanent injunction barring Custom Wheels Unlimited from infringing on the patents. The case is titled Mobile Hi-Tech Wheels, v. Custom Wheels Unlimited, Inc., CV08-01599 MMM (C.D. California).

Santa Ana, CA – Trademark attorneys, Irvine based, file trademark infringement lawsuit in Santa Ana District Court for infringement of Newport Dental trademarks, with additional causes of action for California law trademark infringement (Cal. Bus. & Prof. Code § 14320), unfair competition (§ 17200), and common laws passing off and unfair competition. Plaintiff Bright Now! Dental is a network of over 300 dentist offices which have used the trademark Newport Dental since 1985. Plaintiff has numerous trademark applications pending before the USPTO which use the words Newport and Dental in some form. Plaintiff alleges that a defendant dentist, Farshad Saghatchi, is using the infringing trademark of Newport Dental Group and offering dental services.

Plaintiff alleges that “Defendant adopted and began using the Newport Dental Group mark with actual or constructive knowledge of [Plaintiff’s] prior use and application to register the Newport Dental Marks, and with the intent to trade on the goodwill and reputation of the Newport Dental Marks. Defendant’s use of the Newport Dental Group trademark, the complaint alleges, “is likely to lead to lead consumers to erroneously believe that Defendant’s services originate from or are otherwise sponsored by, approved by, or affiliated with the owner of the Newport Dental” trademarks. In addition to preliminary and permanent injunctions, Plaintiff seeks monetary damages and attorneys’ fees as a result of the Defendant’s alleged trademark infringement. The case is titled Bright Now! Dental, Inc., v. Newport Dental Group, SACV08-00223 JVS (C.D. California).

Santa Ana, CA – Watson Laboratories, Inc., through its biotechnology patent attorneys, filed suit in Santa Ana District Court seeking declaratory relief of patent non-infringement and patent invalidity against Barr Pharmaceuticals, Inc. and Duramed Pharmaceuticals, Inc. The pharmaceutical companies own U.S. Patent No. 7,320,969, which they listed “with the Food And Drug Administration (FDA) in the Approved Drug Products with Therapeutic Equivalence Evaluations (“Orange Book”), as a patent that could reasonably be asserted against anyone marketing or seeking to market a generic version of [their] SEASONIQUE® female contraceptive product." Watson “previously filed an Abbreviated New Drug Application (ANDA) with the FDA seeking approval to market a generic form of SEASONIQUE®.” After the patent was filed with the FDA, Watson “filed an amendment to its ANDA containing a certification pursuant to 21 U.S.C. § 355(j)(2)(A)(vii)(IV) and that the ‘969 patent is unenforceable, invalid and/or not infringed by Watson’s ANDA product.”

Watson has beaten the patent owners to the punch and filed a declaratory judgment action because it believes that it will be sued for patent infringement. Watson seeks a declaration from the Court that the patent is “is invalid, unenforceable and/or not infringed by the commercial manufacture, use or sale of the drub product described in Watson’s ANDA.” The case is titled Watson Laboratories, Inc., v. Duramed Pharmaceuticals, Inc., SACV08-0243 JVS (C.D. California).

Los Angeles, CA – A garment industry copyright lawsuit was instituted by copyright attorneys for Major Textile Imports, Inc. against Jones Apparel Group, Inc in Los Angeles District Court. In November 2006, Major Textile designed a fabric design or pattern and applied for copyright registration with the U.S. Copyright Office, which copyright was registered in December of 2006. In fact, Major Textile produced several fabric designs and applied to copyright them with the Copyright Office around the same time frame. Major Textile asserts that it “has always printed its copyrighted designs on good quality fabric in attractive color combinations and sold fabric bearing the copyrighted designs to garment manufacturers and others.”

Plaintiff asserts that “since at least as early as or prior to September 2007, Jones Apparel infringed said copyright by advertising, offering for sale, and selling…garments imprinted with designs and/or patterns which is (sic.) closely copied from and substantially similar to Major Textile’s copyrighted designs, patterns and/or fabrics.” In addition to monetary damages, Plaintiff seeks preliminary and permanent injunctions against defendant’s sale of the allegedly infringing garments made with the Plaintiff’s designs, patterns, and/or fabrics. Plaintiff also seeks recovery of its costs and attorneys’ fees. The case is titled Major Textile Imports, Inc. v. Jones Apparel Group, Inc., CV08-01448 CAS (C.D. California).

Los Angeles, CA – Glendale, California trademark attorney files, on behalf of Nike, a trademark infringement, Lanham Act unfair competition, Lanham Act dilution of famous trademark, section 17200 unfair competition, and dilution under California law complaint in Los Angeles Federal District Court. Nike is combating the willful sale of unlicensed and counterfeit products that bear Nike’s numerous trademarks registered with the USPTO. Nike alleges that it sells over 4.5 billion dollars of merchandise a year all of which bear Nike’s famous trademarks.

Nike alleges that two individual defendants manufacture, distribute, and or sell counterfeit footwear bearing the Nike trademarks through several websites. Nike alleges that the two individual defendants are residents of Long Beach, California and base their counterfeiting operations there. Nike’s federal trademark infringement arises under Sections 32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114 and 1125. Nike’s Lanham Act – unfair competition claim arises under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and (d) for false designation of origin and false descriptions and representations in interstate commerce. Nike’s dilution of famous marks arises under the Lanham Act section 43, 15 U.S.C. § 1125(c). The case is titled Nike, Inc. v. Nyla Kauv, CV08-01404 ODW (C.D. California)

Los Angeles, CA – North Hollywood based Air Dimensional Design, Inc. instituted a patent infringement, trademark infringement, and unfair competition lawsuit against several competitors for allegedly infringing on its promotional and marketing inflatable toy figures. Plaintiff is the assignee of U.S. Patent No. 6,186,857, which relates to an inflatable form, usually human, made from an ultra-light, thin fabric or sheet material that is sewn or otherwise formed into tubular sections that are connected together to form the full figure. The inflatable bendable figure is connected to an air blower that constantly blows air into the fabric. Holes in the head and arms of the figure and the dynamic air flow cause the figure to undulate like it’s dancing. Plaintiff has used the trademark “Fly Guy” on its promotional product and has registered it with the U.S. Patent & Trademark Office.

Plaintiff alleges that several defendants are infringing its patent by making, selling, and using undulating figure products embodying the patented invention. Plaintiff also states that defendants are infringing on its “Fly Guy” trademark by using the confusingly similar “Fly Guys” trademark. In addition, Plaintiff contends that the defendants are using its “Fly Guy” trademark as a Google adword to redirect consumers to defendants’ websites. The complaint asserts causes of action for infringement; federal trademark infringement of registered trademark (15 U.S.C. §§ 1114-1117; Lanham Act § 32); federal unfair competition (false designation of origin and false description (Lanham Act 43(a) and 15 U.S.C. 1125); trademark infringement under California law; California unfair competition under section 17200; and trademark dilution. Plaintiff alleges that the infringement is willful and intentional and requests that the damages be trebled. The case is titled Air Dimensional, Inc., v. Action Sky Dancers, CV08-01121 GW (C.D. California).

Los Angeles, CA – A trademark infringement and unfair competition complaint was filed in the Central District of California by Woodland Hills based trademark attorneys representing RVCA Platform, LLC. RVCA is in the garment industry and is engaged in the business of design, manufacture, distribution and sale of apparel. It has used a crest design trademark in connection with the sale of apparel products and garments. Its trademark is registered with the U.S. Patent & Trademark Office for use on an extensive list of apparel products, including T-shirts and other garments.

Defendant Nautica Apparel, Inc. is a manufacturer, distributor and retailer of apparel. The complaint alleges that Nautica adopted and used Plaintiff’s trademark on apparel, including T-Shirts, in interstate commerce. Plaintiff alleges that Nautica’s trademark infringement is not only obvious and willful, but that Nautica “has attempted to misappropriate all of the consumer recognition and goodwill Plaintiff has established in the trademark by intentionally confusing consumers by using [Plaintiff’s] trademark under the words Nautica Jeans Company.” Plaintiff continues that “even a cursory, preliminary trademark clearance search incorporating the design search codes for particular design elements incorporating Plaintiff’s trademark would have revealed” plaintiff’s registration. The complaint asserts causes of action for federal trademark infringement (15 U.S.C. §§ 1114-1117; Lanham Act § 32); federal unfair competition (false designation of origin and false description (Lanham Act 43(a) and 15 U.S.C. 1125); trademark infringement under California law; and California unfair competition under section 17200.

Los Angeles, CA – Santa Monica copyright attorney files a copyright infringement, contributory copyright infringement, and vicarious copyright infringement lawsuit on behalf of musician Christopher Swann against Anna Kournikova for using his music on her entertainment DVD titled “A Date With Anna.” Swann alleges that in 1999 he wrote, produced and recorded a full-length music album and in February of 2003 the United States Copyright Office issued a copyright registration for the compositions. In April of 2003, Swann learned that score/soundtrack music was need for the Kournikova project and Swann submitted his copyrighted music for synchronization with the “A Date With Ana” video. Swann was provided a licensing agreement by a production company involved in the project which Swann rejected after meeting with his copyright attorney. The copyright licensing agreement was not executed and Swann believed that his music was not going to be used on the Kournikova project.

In February of 2006, Swann purchased a DVD of “A Date With Anna” and discovered that twenty two minutes of his copyrighted music was used in Kournikova’s DVD. Swann alleges that because he expressly rejected the licensing agreement offer, no agreement was ever reached and the use of the copyrighted material without license, or other consideration constitutes copyright infringement. Swann alleges that “as early as April 2003, defendants, and each of them, without Plaintiff’s permission, license, and without remuneration to Plaintiff, adapted, used, reproduced, marketed, distributed and sold Plaintiff’s copyrighted material in the defendants’ video production, a digital video disc (DVD) entitled, ‘A DATE WITH ANNA.’” Swann continues that the infringement by the defendants was intentional and knowing and seeks preliminary and permanent injunctions against the distribution of the video. The case is titled Christopher Jerry Swann v. Anna Kournikova et al., CV08-01477 R (C.D. California).

PRACTICE NOTE: In order to recover statutory damages, attorneys’ fees, and costs, the copyright in the work must have been registered before the commencement of the infringement. 17 U.S.C. § 412.

Los Angeles, CA – A trademark, trade dress, and unfair competition complaint was filed in the Central District of California by Torrance based Virco, through its Pasadena trademark attorneys. Virco is a furniture manufacturer and has manufactured a chair with three parallel slots that extend from the seat to the backrest. Virco filed a trademark application for the “three slot” design feature with the USPTO and it became a registered trademark on June 10, 1997. Virco asserts that in the furniture industry, the three slot design trademark is well recognized as a product manufactured by Virco and since 1997, its sales of the three slot chairs have averaged in excess of $10,000,000 per year.

Virco alleges that in late 2007, it discovered that defendant “was manufacturing, selling, advertising, and distributing two versions of a children’s plastic chair that used [Virco three slot design trademark]. The goods sold by defendants are confusingly similar copies of the [Virco’s trademark].” Virco continues that defendant’s use of the three slot trademark “creates a likelihood that Plaintiff’s customers, potential customers, members of the trade, and the public generally will be misled as to the source of goods or services in that they are likely to believe that Defendant’s business and products are affiliated with or sponsored by Plaintiffs. The complaint sets forth the following seven causes of action: (1) Registered trademark infringement, (2) False designation of origin 15 U.S.C. 1125, (3) Trade dress infringement, (4) Common law trademark infringement, (5) Common law unfair competition, (6) Statutory unfair competition, § 17200, (7) Trademark Dilution. The case is titled Virco MFG. Corp, v. Jonti-Craft, Inc., CV08-01332 PSG (C.D. California).

PRACTICE NOTE: Because Virco’s trademark has been registered for over five years, it has become incontestable under 15 U.S.C. § 1065. A defendant in a trademark lawsuit cannot challenge an incontestable trademark on the following grounds: descriptiveness, deceptive misdescriptiveness, geographic descriptiveness, and primarily merely a surname. Another important reason to register trademarks is that a prior user of an unregistered mark cannot contest a registered mark after five years based on prior use.

Los Angeles, CA – In Wham-O’s trademark and trade dress trial in October of 2007, a jury awarded Wham-O six-million-dollars in damages for willful trademark infringement of its registered trademarks, willful trademark dilution, and willful false advertising in connection with Toyquest’s use of the yellow color of Wham-O’s Slip-n-Slide toys, which color functions as a trademark. Toyquest is a dba of SLB Toys USA. The Court also entered a permanent injunction against the infringers and ordered that the infringer, including its officers, agents, servants and employees, forever refrain “from using the color yellow on the sliding surface of water slide toys, or packaging or advertising depicting the same, or any mark similar thereto or likely to cause confusion therewith.” The Court, however, denied WhamO’s request to order destruction of infringing articles and denied Wham-O’s request to order compliance reporting by the infringers.

In a newly filed trademark infringement, trademark dilution, false advertising, unfair competition (17200), contributory infringement, contributory trademark dilution, and judgment debtor’s interest (Cal. Civ. Proc. Code § 708.210) lawsuit, Wham-O alleges that SLB Toys initiated an elaborate scheme designed to evade judgment and deprive Wham-O of its monetary award through an assignment for benefit of creditors. Wham-O alleges that the individual defendants, who were officers of the defendant SLB Toys, have “flagrantly disregarded the terms of this Court’s injunction by continuing to sell and distribute to retailers unauthorized slides bearing” the yellow waterslide trademark and to advertise the same. Wham-O asserts that SLB Toys was merely an undercapitalized shell corporation that failed to follow corporate formalities and the individual officers and other companies which are owned by the officers are SLB Toys’ alter egos.

Through the creditor’s suit against Wal-Mart, Target, TRU, and Kmart, Wham-O attempts to recover from the retailers several million dollars in funds that are payable to the true judgment debtor, Manley Toys – which was allegedly set up by the same individual defendants that were officers in SLB Toys. The case is titled: WHAM-O, Inc. v. Manley Toys, LTD., CV08-01281 PSG (C.D. California).

PRACTICE NOTE: Officers of corporations or LLCs that authorize and direct infringing activities can be held personally liable. Committee for Idaho’s High Desert, Inc. v. Yost, 92 f.3d 814, 823 (9th Cir. 1996).

Glendale, CA – Copyright lawsuit was filed by Glendale, CA copyright attorneys representing Burbank based Disney Enterprises, Inc. The copyright infringement lawsuit, filed in Los Angeles Federal District Court, itemizes several motion pictures which have been produced by Disney and registered with the US Copyright Office. Disney alleges that the defendant does business on eBay and has “copied, reproduced, distributed, advertised and/or sold and continue to copy, reproduce, distribute, advertise and/or sell unauthorized copies of motion pictures owned by Disney,” which copies are counterfeit.

Disney states that its damages cannot yet be determined and it may elect between the profits generated by the defendants or statutory damages under 17 U.S.C. § 504. Because Disney claims not to have an adequate remedy at law, it “seeks preliminary and permanent injunctive relief pursuant to 17 U.S.C. § 502 and seizure of the Unauthorized Media Product, including the means of production as provided by 17 U.S.C. § 503.” Disney also requests that its attorneys’ fees and other costs in connection with the prosecution of its claims be paid by defendant pursuant to 17 U.S.C. § 505.

Los Angeles, CA – A complaint was filed in the Central District Court of California for violations of the Lanham Act 43(a), 15 U.S.C. 1125(a) and unfair competition under Section 17200 over labeling of sushi grade tuna. Plaintiff King Tuna advertises and offers sashimi grade processed seafood products for sale which it imports into the United States. During transport and storage of frozen tuna, carbon monoxide (“CO”) gas is used to treat the tuna to retain its initial red color. To generate CO, it is more favorable and expensive to employ filtered natural wood smoke than synthetic CO, and it is sometimes required by government regulation. “Synthetic CO, particularly at high concentrations, can sometimes be used to induce a more intense color ‘bloom’ in lower-grade tuna,” which can be used by unscrupulous vendors to pass off the lower-grade tuna as higher-grade tuna. Only tuna that is transported by “filtered wood smoke” technique of creating CO can bear such labeling. If “synthetic CO” or “chemical CO” is used to treat the tuna – produced by the chemical reaction of sulfuric acid and formic acid, such packaging cannot have the “filtered wood smoke” label.

King Tuna alleges that competing Defendants use “chemical CO” to treat their tuna during transport and not “filtered wood smoke.” Thus, plaintiff alleges that defendants’ filtered wood smoke “labeling is literally false as in actual practice and likely to mislead customers, as [defendants] misrepresent the nature, characteristics and qualities of its tuna products by presenting its raw tuna products as treated with filtered wood smoke and not chemical CO.” Plaintiff alleges that such mislabeling violates the Lanham Act because it constitutes misrepresentation in commercial advertising, which is likely to influence purchasing decisions of consumers. Also, as the complaint alleges, by mislabeling their products, defendants are engaging in unlawful business practices and unfair competition in violation of Cal. Bus. & Prof. Code § 17200.

Los Angeles, CA – Attorney files copyright infringement lawsuit on behalf of Forestweb – an information and industry intelligence provider – for infringement of its copyrights in its published newsletter. Forestweb uses proprietary software and technology to collect and analyze data regarding the wood, pulp, paper and forest product industries worldwide. Subscribers are provided access to its newsletter pursuant to a written license agreement, where the licensing fee is based upon the number of readers employed by the business. Forestweb routinely registers its copyright with the U.S. Copyright Office.

Defendant Stora Enso Timber entered into a license agreement and identified ten users with a corresponding annual license fee. Forestweb alleges that Stora breached the license agreement by distributing electronic copies of the copyrighted content to a larger number of its employees without paying the increased licensing fee. The unauthorized distribution of the copyrighted newsletters is the basis for the copyright infringement claim under 17 U.S.C. §§ 106 and 501. Forestweb also asserts a cause of action for the breach of the licensing agreement. Forestweb asks for attorneys’ fees and costs, as provided for in the licensing agreement, and also under 17 U.S.C. § 505. The case is titled: Forestweb, Inc. v. Stora Enso Timber, CV08-01306 SVW (C.D. California).

Los Angeles, CA – A copyright infringement lawsuit was filed by attorneys on behalf of several recording companies against a restaurant for having a band perform live music without obtaining a copyright license. The complaint lists five songs which are copyrighted by their individual authors with the U.S. Copyright Office, and the rights are owned by the record companies. The complaint alleges that on one night, presumably when their investigator was at the restaurant, the five copyrighted musical compositions were publicly performed “for the entertainment and amusement of the patrons attending said premises, and defendants threaten to continue such infringing performances.”

The complaint alleges that the defendants’ copyright infringement was intentional and willful because, despite numerous letters and contacts about the required copyright licenses, “defendants have not sought or obtained a license agreement from plaintiffs or the American Society of Composers, Authors and Publishers (ASCAP).” Plaintiffs request statutory damages under 17 U.S.C. § 504(c)(1), of not more than $ 30,000.00 and not less than $ 750.00 for each copyrighted song. Plaintiffs also request that the court order the defendants to pay the costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: Warner Bros. Inc., v. Gagner Corporation, SACV08-00215 JVS (C.D. California).

PRACTICE NOTE: 17 U.S.C. 504(c)(2) allows the statutory damages to be raised to $150,000.00 per infringement if it is deemed to be intentional. Also, if a restaurant or public establishment unreasonably believed that it was exempt from licensing requirements under 17 U.S.C. § 110(5), the copyright plaintiff, in addition to other damages under section 504, will be entitled to two times the license fee which it should have paid for the preceding period of up to 3 years. In some cases, business establishments that play hold music on their telephone system need to obtain copyright licenses. To obtain a music licensing agreement, and to cover all your bases, you should obtain a license from each of the following licensing societies:
ASCAP: 1-800-505-4052
BMI: 1-800-925-8451
SESAC: 1-800-826-9996

Los Angeles, CA – Copyright infringement and breach of contract lawsuit was filed by Fox against Warner Bros over “The Watchmen” motion picture that is currently under production. Fox alleges that it has “exclusive copyright and contract rights in the motion picture property entitled ‘The Watchmen,’ including Fox’s exclusive rights to produce and develop the picture and to distribute the work throughout the world.” Fox acquired all motion picture rights to The Watchmen, between 1986 to 1990, through a series of contracts with the author of the comic book or graphic novel, and subsequent screenplays by authors Charles McKeown and Sam Hamm. Certificates of Registration for the Copyrighted work were received from the U.S. Copyright Office. The case is titled Twentieth Century Fox Film Corp. v. Warner Bros. Entertainment, Inc., CV08-889DDP (C.D. California).

In 1991, Fox entered into an agreement with Largo International, whereby Fox quitclaimed certain of its rights in The Watchmen, but “expressly preserved, reserved and/or granted to Fox various rights, including exclusive rights to distribute the first motion picture based on The Watchmen.” Producer Lawrence Gordon was a joint venturer in Largo, and when he withdrew in 1993, Largo assigned, transferred and conveyed to Golar all of its rights in The Watchmen. In 1994, Fox and Gordon entered another agreement which required Fox to be paid a buy-out amount if The Watchmen movie was produced, in addition for profit participation of 2.5 percent of 100 percent of net profits on each motion picture, remake or sequel.

Fox’s lawsuit alleges that neither Gordon nor Warner Bros has paid Fox the buy-out amount, nor advised Fox of additional terms required under the contract. Fox also alleges that it had a separate agreement with Warner Bros regarding The Watchmen motion picture, which is also being breached, and that Warner Bros is fully aware that it does not have clear title to the work. Warner Bros is denying that Fox has any rights in The Watchmen project and refused to cease development of the motion picture. The complaint sets for the following five causes of action: (a) Copyright Infringement, 17 U.S.C. §§ 101 et seq., (b) tortious interference with contract, (c) breach of contract, (d) accounting, and (e) declaratory relief.

Los Angeles, CA – A mother-daughter team founded The Little Giraffe, Inc. to manufacture baby and adult accessories, apparel and giftware under the trademarks, registered with the USPTO, of “Little Giraffe” and “Giraffe at Home.” The mother, Marcia Brower, and the daughter, Sharyn Brower Newberg, were each a 50 percent owner of the shares of the corporation. The complaint alleges that the daughter breached her fiduciary duty to the company and used company checks to “pay personal expenses, wiring funds from the corporate account to pay her credit card bills, selling Little Giraffe inventory for her own account, purging vital information from her computer at company headquarters, and removing vital fabric samples and company property.” The complaint continues that the daughter, “with the help of her co-defendants, secretly took steps to set up a company to compete against Little Giraffe under the name ‘Votre Luxe,’ intentionally copying the distinctive look and feel of Little Giraffe’s products,” including the trade Dress, trade secrets, and proprietary business information.

Plaintiff asserts that its trade dress includes the appearance of its products, including “the shape and dimensions of satin trim to plush fabric,” “the color combinations of various fabrications,” “the texture of its plush or luxury fabrics,” “the patterns of Little Giraffe’s robes,” color coordinated pieces to the colors of the products of Little Giraffe, and the placement location of the Little Giraffe logo. Plaintiff also asserts that its trade secrets include “vendors and suppliers of fabric and trim, its know-how concerning the manufacturing process,” “the cutting and sewing contractors” it uses in the manufacturing process, its vendor lists, customer lists, and proprietary financial documents. Plaintiff alleges that her daughter, in association with co-defendant “Rosalie & Friends, Inc. has displayed and offered for sale Votre Luxe’s line of products that are confusingly similar to the products Little giraffe manufactures and sells.”

The complaint sets forth the following six causes of action: (1) Breach of Fiduciary Duty, (2) Trade Dress Infringement Lanham Act 43(a), 15 U.S.C. § 1125, (3) Trade Secrets Misappropriation, (4) Conversion, (5) Unfair Competition Under Cal. Bus. & Prof. Code § 17200, and (6) Injunctive relief. The case is titled: Marcia Brower v. The Little Giraffe, Inc., CV08-01111 PSG (C.D. California).

PRACTICE NOTE: This case illustrates the importance of written agreements in business partnerships, even if you are doing business with a family member.

Los Angeles, CA – A class action complaint was filed against domain name registrar Network Solutions, LLC and ICANN for basically cybersqatting and frontrunning on customers’ domain name availability searches through Network Solutions. The case is titled, McElroy v. Network Solutions, LLC et al. The complaint alleges that when a customer searches for the availability of a domain name on Network Solutions, but does not purchase it, Network Solutions itself registers that exact domain name that was searched. Network Solutions then places a full page add on a website provided under the searched-for-domain-name indicating that the domain name may only be purchased from Network Solutions. If the same customer attempts to purchase the domain name from another competing registrar, godaddy.com for example, it receives an unavailability notice. When the customer returns to Network Solutions to purchase the domain, it is charged three and a half times more than registering it elsewhere.

The complaint charges that Network Solutions' misconduct can only occur “through the acquiescence, tacit approval and participation of ICANN” and its Add Grace Period (AGP) agreement, which allows “a domain name registrar to avoid paying a registration fee for domain names canceled within five days of registration.” The complaint continues that “ICANN was, and is, aware of Network Solutions’ actions and continued to permit Network Solutions’ fraudulent abuse of the AGP for its own gain and to the detriment of consumers.” The complaint lists causes of action for fraudulent concealment, aiding and abetting fraudulent concealment, and unjust enrichment.

Los Angeles, CA – A copyright infringement, trademark infringement, Lanham Act unfair competition, and section 17200 complaint was filed in United States District Court, Los Angeles, by Hong Kong based Funrise Toys, Inc. over sales of allegedly infringing toys by defendants doing business as Aahs stores. Funrise Toys has federally registered trademarks for its “Gazillion Bubbles” word mark, bottle design trade dress, wand design trade dress, and machine design trade dress. Funrise Toys also claims to have trade dress and copyrights in the box packaging, in addition to the wand, machine, and bottle, for which it has received several copyright registration certificates. Funrise Toys also asserts that it has registered trademark rights in the green and purple colors used in the toys.

The complaint alleges that the Aahs defendants manufacture and sell bubble machines which are substantially copied from the plaintiff’s “Gazillion Bubble Machine and box packaging and Defendants Aahs’ bubble bottle and wand is substantially copied from and contains the same physical appearance and features as the trade dress of” Plaintiff’s products or is a reproduction, counterfeit, copy, or colorable imitation thereof. Plaintiff further alleges that that defendants’ infringing product “is likely to, was intended to, and did cause confusion or mistake or to deceive the relevant trade and the public into believing that the” infringing product is “sponsored by, authorized by, associated with, originates from, and/or is in some way connected with or licensed by Plaintiff.” Plaintiff continues that the infringement was willful and intentional to trade upon plaintiff’s goodwill and reputation and asks for enhanced damages and attorneys’ fees. Plaintiff also asserts causes of action for Lanham Act unfair competition Section 43(a), and unfair competition under California Business and Professions Code § 17200. The case is titled: Funrise, Inc. v. Bhasin Enterprises, Inc., CV08-01117 DSF (C.D. California February 20, 2008).

Los Angeles, CA – A copyright infringement, Lanham Act unfair competition, and section 17200 complaint was filed in United States District Court by Med-Legal, a service provider to professionals and companies in the workers’ compensation field. The complaint alleges that Med-Legal created a “Work Comp Directory” which a resource volume and compilation of directories of vendors, various services and professionals. Med-Legal alleges that it invested “substantial time, resources, and research to compile, edit, and organize the listings” even though the information is available in public sources, the compilation directory is entitled to copyright protection because of the research and judgment expended in the selection and organization of the information to include in the directory. The compilation work is registered with the U.S. Copyright Office and has received a Certificate of Registration.

Med-Legal alleges that defendant Matrix Document Imaging, Inc. is also in the business of providing services to professionals and companies in the workers’ compensation area. And that in 2006, “Matrix began copying reproducing and repackaging the copyrighted material” contained in the Work Comp Directory without editing or revision. These alleged copies were then distributed to businesses and potential clients to compete with Med-Legal. Med-Legal alleges that there has been actual confusion amongst customers where defendant’s directory was believed to be Med-Legal’s Work Comp Directory. The case is titled: Med-Legal, Inc. v. Matrix Document Imaging, Inc., CV08-1004 JSL (C.D. California).

PRACTICE NOTE: In directory compilations, the creator usually lists and keeps track of fictional entries and/or intentional typographical errors to deem whether they are copied into a competitor’s work. Even though Med-Legal does not have to prove actual confusion amongst consumers to win on its Lanham Act claim, actual confusion amongst a significant numbers of consumers provides strong support for the likelihood of confusion. Playboy Enterprises v. Netscape Communications, 354 F.3d 1020, 1026 (9th Cir. 2004).