Posted On: January 29, 2009

Perfecting Serum® Trademark Infringement And Unfair Competition Lawsuit Filed By Murad In Los Angeles

murad-trademark-attorney-perfecting-serum.jpgLos Angeles, CA – Trademark attorneys for Murad, Inc. filed a trademark infringement and 15 U.S.C. § 1125(a) unfair competition complaint, at the Federal District Court in Los Angeles, against Boots Retail USA. Murad registered the Perfecting Serum® trademark with the USPTO in 1998, but it was registered on the Supplemental Register because the mark was descriptive. It is not clear why Murad has not since applied to register the trademark on the Principal Register under §2(f), which affords prima facie evidence of acquired distinctiveness. Instead, Murad must now prove acquired distinctiveness in Court. See Commerce Bancorp, Inc. v. BankAtlantic, 285 F. Supp. 2d 475, 484 (D.N.J. 2003)

The complaint alleges that long after Murad used and registered the Perfecting Serum® trademark, Defendant began using “the trademark Intense Perfecting Serum despite the fact the identified trademark wrongfully appropriates Murad’s registered Perfecting Serum trademark and is confusingly similar thereto. . . Defendant’s use of trademark Intense Perfecting Serum as alleged above to designate, advertise and/or promote the sale of skin moisturizer is likely to cause confusion or mistake or to deceive the purchasers of its products as to the source of origin of defendant’s products and to cause defendant’s products to be passed off or viewed as those which are provided or authorized by Murad.” The case is titled Murad, Inc. v. Boots Retail USA, Inc., CV09-0246 SVW (C.D. Cal. 2009).

Posted On: January 26, 2009

Factory Five Racing’s Attorneys File Motion To Dismiss Carroll Shelby’s Daytona Coupe Trade Dress And Unfair Competition Lawsuit

Los Angeles, CA – In response to Carroll Shelby’s trademark lawsuit (details blogged here), Factory Five Racing’s attorneys filed a motion to dismiss and set out Factory Five’s version of events, because this isn’t the first lap around the track between the parties. Eight years ago, Shelby sued Factory Five in the District of Massachusetts over the sale of replica kits of the 427 Roadster and Type 65 Coupe. The Massachusetts case settled with an entry of a consent judgment and injunction, wherein Shelby dismissed his claims of trade dress infringement with prejudice with respect to Factory Five’s kit cars, including the 427 Roadster and Type 65 Coupe and Factory Five agreed to refrain from using certain word trademarks. In addition, to avoid future litigation based on trivial alleged violations, the consent judgment contained a thirty-day cure provision after receiving written notice of any alleged violation.

factory-five-carroll-shelby-lawsuit-trade-dress-daytona-cobra.jpgAfter the Factory Five lawsuit, Shelby sued another party, Superformance International, in Massachusetts asserting the Cobra trade dress. Unfortunately for Shelby, he lost on summary judgment and the court found that Shelby did not have any trade dress rights in the Cobra vehicle design.

Similarly, Factory Five’s motion first requests dismissal under the doctrine of res judicata, i.e. the matter has already been judged and cannot be relitigated, because the trade dress claims were dismissed with prejudice. Langton v. Hogan, 71 F.3d 930, 935 (1st Cir. 1995) (“A judgment that is entered with prejudice under the terms of a settlement, whether by stipulated dismissal, a consent judgment, or a confession of judgment, is not subject to collateral attack by a party or a person in privity, and it bars a second suit on the same claim or cause of action.”)

Factory Five then argues that Shelby’s case should be dismissed because he failed to provide the thirty day notice and opportunity to cure the alleged violation of the consent judgment. Shelby filed the lawsuit on December 1, 2008 and then sent a letter to Factory Five on December 23 providing the required written notice of the violation. Within thirty days of receiving the letter, Factory Five removed the allegedly infringing meta tags and links to other objectionable websites. Thus, Factory Five argues that Shelby’s trademark and unfair competition claims are moot.

Finally, Factory Five argues that the case should either be dismissed or transferred to Massachusetts to allow the original court to interpret and enforce its own judgment. “[I]t is well established that the issuing court is the court that should interpret and enforce its own injunctions. Baker by Thomas v. GMC, 522 U.S. 222, 236 (1998) (‘Sanctions for violations of an injunction, in any event, are generally administered by the court that issued the injunction.’)” Read Motion Here.

Factory Five’s motion should be granted. The case is titled Carroll Shelby v. Factory Five Racing, Inc. et al., CV 08-07881 CAS (C.D. Cal. 2008).

Posted On: January 22, 2009

Allegedly Infringing Sales Of Perfect Pushup Exercise Device Trigger Copyright And Trademark Lawsuit

Los Angeles, CA – Trademark and copyright infringement and Lanham Act § 43(a) unfair competition lawsuit was filed at the Federal District Court in Los Angeles by Perfect Pushup, LLC’s attorneys. Plaintiff sells its “Perfect Pushup” product through infomercials and direct response, where the conception of a swiveling pushup exercise device is attributed to a former platoon commander of the United States Navy SEALs. Plaintiff has registered its “Perfect Pushup” trademark with the U.S. Patent & Trademark Office. In addition, Plaintiff has registered its works with the U.S. Copyright Office, which works include its advertising photos, box designs and workout poster. Plaintiff also owns the www.perfectpushup.com domain name and website.

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The Plaintiff alleges that it purchased defendants’ products and upon closer examination “found it to contain counterfeit merchandise. The product appeared to be almost identical to Plaintiff’s Perfect Pushup product, and included a direct counterfeit Perfect Pushup workout poster and workout DVD.” Defendants had allegedly brazenly established a website at www.perfectpushups.com (with an extra “s”) to sell the infringing product. The case is titled Perfect Pushup, LLC v. Suzette White, CV 09-0243 CW (C.D. Cal. 2008).

Posted On: January 19, 2009

Court Denies Konami’s Preliminary Injunction Application In Copyright and Trademark Lawsuit Over Sales Of Yu-Gi-Oh! Trading Cards

UPDATE 1/10/2010: Court rules that Upper Deck counterfeited Yu Gi Oh! cards. Details here.

UPDATE: Court grants preliminary injunction (details here).

trademark-litigation-attorney-los-angeles-konami-yu-gi-oh.jpgLos Angeles, CA – Konami Digital Entertainment filed a trademark and copyright infringement lawsuit (details here) against Vintage Sports Cards, Inc. over sales of Yu-Gi-Oh! trading cards. Konami then discovered that Upper Deck Company allegedly supplied the the infringing cards to Vintage. Konami amend its complaint to add Upper Deck and moved for preliminary injunction while the case was pending, preventing further sales of allegedly unauthorized cards by Upper Deck.

The Court denied Konami’s application for preliminary injunction (read here) because:

(1) the motion papers submitted by Plaintiff did not include competent evidence to support a finding that Plaintiff is entitled to preliminary injunctive relief;

(2) the evidence submitted with Plaintiffʹs Reply papers was untimely; and

(3) Plaintiffʹs motion papers failed to adequately present the scope of the requested injunctive relief, i.e., in a timely filed Proposed Order.

It appears that Konami will receive a second bite at the apple. The case is titled Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc., CV08-06630 VBF (C.D. Cal. 2008).

Posted On: January 14, 2009

Clothing Manufacturer Stussy Files Copyright Infringement Lawsuit Over Use Of Its Website Pictures

Los Angeles, CA – Copyright lawyers for Stussy, Inc. filed a copyright infringement lawsuit, at the Central District Of California, against Defendants Shoes And Tees99 and If Investments. In 1980, Shawn Stussy, a local cult surfboard designer, applied his scrawled signature logo to tee-shirts and sold them in Laguna Beach, California. Since that time, the clothing line has grown to an internationally recognized brand which is promoted and sold on its websites www.stussy.com and www.stussydirect.com. The websites and the photographs thereon have been registered with the US Copyright Office.

copyright-lawyer-infringement-stussy.jpgThe complaint alleges that Defendants reproduced and copied the copyrighted photographs without Stussy’s permission. “Specifically, Defendants have used the copyrighted photographs in connection with auctions on www.ebay.com. Stussy notified eBay, Inc. that Defendants were using infringing copies of Stussy’s Copyrighted Works. eBay terminated the Defendants’ auctions because of the infringement. Yet, Defendants continue to make further and additional use of the photographs contained in the Copyrighted Works.” The case is titled: Stussy, Inc. v. ShoesAndTees99, et al., SACV08-01435 AG (C.D. Cal. 2008).

Posted On: January 12, 2009

Court Grants Larry Flynt’s Temporary Restraining Order Prohibiting Use Of “Flynt” Trademark By Nephews

Los Angeles, CA – Larry Flynt had sued (click here for details) his nephews and their company for trademark infringement and unfair competition and was seeking a temporary restraining order to prevent the use of the word “FLYNT” in the business name and the domain names www.flyntdistribution.com and www.flyntcorp.com. The Federal District Court in Los Angeles granted the temporary restraining order (click here) because Larry FLynt had demonstrated a probability of success on the merits of the lawsuit and irreparable harm. Pending hearing on the application for preliminary injunction on January 21, 2009, the Court restrained the defendants from:

1. Advertising, selling and distributing adult-themed motion pictures, videos, and DVDs, as well as other adult-themed goods, which contain “FLYNT” in any typographical format and phrase, including “Flynt Media Corporation” and “FlyntCorp Distribution;”

2. promoting such goods and services on Internet websites, including but not limited to www.flyntdistribution.com and www.flyntcorp.com; and

3. passing off such goods and services as those of Plaintiff Larry C. Flynt at the AVN Adult Entertainment Expo 2009 in Las Vegas, Nevada and elsewhere.

The case is titled Larry C. Flynt v. Flynt Media Corporation, et al., CV 09-00048 AHM (C.D. Cal. 2008).

Posted On: January 10, 2009

Pornographer Larry Flynt Sues Nephews For Trademark Infringement And Unfair Competition For Using Family Name In Porn Industry – Seeks TRO and Preliminary Injunction

Los Angeles, CA – Larry Flynt took a break from seeking a $5 Billion Government porn bailout to file a trademark infringement and unfair competition lawsuit at the Federal District Court in Los Angeles against his nephews, Dustin Flynt and Jimmy Flynt, II, and Flynt Media Corporation – the company founded by the nephews. The First Amended Complaint alleges that the nephew’s were terminated from their position at Larry Flynt’s company, after which they started a rival company to produce and distribute pornography using a “Flynt” trademark “to trade off and usurp the famous FLYNT name and mark of their uncle.”

los-angeles-trademark-attorney-larry-flynt-surname-family-name-lawsuit.jpgLarry Flynt filed an ex parte application for a Temporary Restraining Order and is requesting a preliminary injunction preventing Defendants’ use of the mark. Defendants have filed their opposition setting forth several arguments, which are not likely to succeed. Defendants first argue technical defects in Plaintiff’s moving papers for failing to comply with the Central District’s Local Rules. The next argument attacks the Plaintiff’s lack of standing to bring federal trademark claims because Larry Flynt has not used the stand-alone FLYNT mark in commerce – as opposed to “Flynt Publications” or “Larry Flynt.” Defendants’ argument ignores the fact that a likelihood of confusion can arise even if the competing marks are not exactly alike. Defendants further argue that Flynt is their family name and they have a right to use it in their business. If your family name is McDonald, do not use your name as a mark for your hamburger joint. Defendants also argue that Plaintiff will not suffer irreparable harm because Larry Flynt’s declaration states that “he will have to help out his nephews when [they fail]” because they are selling substandard products. Thus, Defendants deduce, if no one buys their products because they are bad, there will be no realistic irreparable harm. Finally, Defendants argue that the balance of hardships tips in their favor because they will lose their personal investments in the company and will not be able to raise additional funds with an injunction issued against them. Thus, they ask for a bond of at least $1,000,000 should an injunction issue. An update on the court’s ruling will be provided. The case is titled Larry C. Flynt v. Flynt Media Corporation, et al., CV 09-00048 AHM (C.D. Cal. 2008).

Posted On: January 8, 2009

Clothing Designer Christian Audigier Sued By Artist Bryan Callan For Copyright Infringement, Breach Of Licensing Agreement, And Unfair Competition

clothing-copyright-christian-audigier-lawsuit.jpgLos Angeles, CA – Bryan Callan filed a lawsuit at the Federal District Court in Los Angeles against clothing designer Christian Audigier and Nervous Tattoo, Inc. and Shop On State, Inc. Callan is an artist and graphic designer whose style draws from his background as a tattoo artist. Callan also goes by his “Mr. Lucky” nickname and uses a Mr. Lucky logo on his artwork, which consists of text and four-leaf clover motif. The complaint alleges that in 2006, Callan and Audigier executed a licensing agreement which allowed the use of Callan’s art work subject to agreed-upon material terms:

The Agreement required that Defendants accompany each and every use of Callan’s artwork, or any part thereof, with a clearly visible Mr. Lucky logo…The Agreement also required that Defendants use commercially best efforts and act in good faith to market and advertise the Mr. Lucky logo and/or Callan’s name in each and every marketing, public relations and advertising effort made in connection with their use of Callan’s artwork. The Agreement also required that Defendants provide Callan with the right of first refusal if Defendant makes the decision to sell, lease, license, or in any way provide a third party to utilize Callan’s work in any way.

The complaint alleges that Defendants have failed to use the Mr. Lucky logo on the clothing products and have granted sub-licenses to numerous other companies, which have produced unauthorized products such as wines, cars, air fresheners, handbags and shoes. The expansion of rights beyond the agreement is alleged to constitute copyright infringement, in addition to breach of contract. By failing to place the Mr. Lucky logo on the products, Callan alleges that Defendants have engaged in unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The case is titled Bryan Callan v. Christian Audigier, Inc. et al., CV 08-08072 GW (C.D. Cal. 2008).

Posted On: January 5, 2009

Kirby Morgan Dive Systems Filed A Trademark Infringement, Unfair Competition, And Cybersquatting Lawsuit Against Universal Scuba Distributors

Los Angeles, CA – Trademark attorneys for Kirby Morgan Dive Systems, Inc. filed a trademark infringement, Lanham Act § 43(a) unfair competition, and anti-cybersquatting lawsuit at the Federal District Court in Los Angeles against Universal Scuba Distributors. Click Here To Read The Complaint. Kirby Morgan sells diving equipment including helmets, full face masks, and air control systems under its USPTO registered Kirby Morgan® and Kirby Morgan Dive Systems, Inc.® trademarks. In addition, Kirby Morgan owns five trademark registrations for the designs of its dive helmets. Kirby Morgan has also registered the www.kirbymorgan.com domain name, where its Website is located.

trademark-infringement-kirby-morgan-dive-systems.jpgThe Plaintiff alleges that Universal Scuba Distributors registered the domain name www.kirbymorgandivers.com and used images of Kirby Morgan’s registered helmets, which pictures also included the Kirby Morgan® word mark. Defendant’s “webpage then automatically resolves and/or has links to Universal Distributors’ other website at www.universaldistributors.us where it sells dive products. On [that website], Universal Distributors uses another image of Kirby Morgan’s registered helmet designs under a link to ‘commercial’ products.” The case is titled Kirby Morgan Dive Systems, Inc. v. Universal Scuba Distributors, CV 08-08258 JSL (C.D. Cal. 2008).

PRACTICE NOTE: In an attempt to not trigger insurance coverage under the Defendant’s Commercial General Liability Insurance policy, the complaint conspicuously asserts: “At this time Kirby Morgan is not seeking monetary damages on its trademark infringement claims to prevent Universal from receiving a defense of its claims from any insurance carrier and the amount of economic damages is not known.” The reservation of Plaintiff's right for a future monetary demand should trigger coverage and a duty to defend, especially in view of Plaintiff’s “Prayer for Relief” which seeks: “a judgment that Universal Distributors has willfully and deliberately infringed Kirby Morgan’s rights and that this is an exceptional case entitling Kirby Morgan to enhanced damages under the Trademark Laws of the United States” and “a judgment awarding to Kirby Morgan prejudgment and post-judgment interest until the award is fully paid.” See Gray v. Zurich Ins. Co., 65 Cal. 2d 263, 276 (Cal. 1966) (“Since modern procedural rules focus on the facts of a case rather than the theory of recovery in the complaint, the duty to defend should be fixed by the facts which the insurer learns from the complaint, the insured [e.g. cease and desist letter demanding damages], or other sources.”)