Posted On: February 25, 2009

Los Angeles Court Grants Factory Five’s Motion To Transfer Venue In Caroll Shelby’s Trade Dress Lawsuit

trade-dress-infringement-lawsuit-type-65-coupe-factory-five-kit-carroll-shelby.bmpLos Angeles, CA – In response to Carroll Shelby’s trademark and trade dress infringement lawsuit (details blogged here), Defendant Factory Five’s attorneys filed a motion to either dismiss the case or transfer venue to the District of Massachusetts (details blogged here). Co-defendant Internet Community Partners, LLC, dba ffcobra.com, joined in Factory Five’s motion.

On February 23, 2009, after the parties’ oral arguments, the Honorable Christina A. Snyder granted Factory Five’s motion and transferred the case to the District of Massachusetts (read the order here), the location of the parties’ previous trademark and trade dress dispute in 2000.

In deciding a motion to transfer, the Court must consider the following three factors: (1) the convenience of the parties; (2) the convenience of the witnesses; and (3) the interests of justice. 28 U.S.C. § 1404(a); see Los Angeles Mem’l Coliseum Comm’n v. NFL, 89 F.R.D. 497, 499 (C.D. Cal. 1981).

In analyzing the “interests of justice,” a number of factors are relevant, including the following: (1) the location where the relevant agreements were negotiated and executed, (2) the state that is most familiar with the governing law, (3) the plaintiff’s choice of forum, (4) the respective parties’ contacts with the forum, (5) the contacts relating to the plaintiff’s cause of action in the chosen forum, (6) the differences in the costs of litigation in the two forums, (7) the availability of compulsory process to compel attendance of unwilling non-party witnesses, and (8) the ease of access to sources of proof. Stewart Org. v. Ricoh Corp., 487 U.S. 22, 29-30 (1988); Jones v. GNC Franchising, Inc., 211 F.3d 495, 498-99 (9th Cir. 2000). Other factors that can be considered are: the enforceability of the judgment; the relative court congestion in the two forums; and which forum would better serve judicial economy. 17 MOORE’S FEDERAL PRACTICE § 111.13[1][c] (3d ed. 1997).

After applying the Ninth Circuit’s legal standard, the Court concluded that the case should be transferred to the District of Massachusetts pursuant to 28 U.S.C. § 1404 because “[t]he 2000 litigation was filed before the instant litigation and the two actions involve substantially similar parties and issues – the crux of both actions is Factory Five’s allegedly unlawful use of the Shelby parties’ marks in the marketing, sale, and distribution of its products. The ‘interests of justice’ are best served by transferring this case to the United States District Court for the District of Massachusetts, which has already dealt extensively with this dispute between the parties.”

Because the Court granted defendants’ motion to transfer venue, the Court declined to reach the merits of defendants’ motion to dismiss.

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

Posted On: February 23, 2009

Mexican Company’s Shrimp Cocktail Packaging Subject Of Trade Dress Lawsuit

mexico-trademark-attorney-lawsuit-camaronazo.jpgRiverside, CA – Vista Del Mar Food & Beverages, LLC filed a Lanham Act § 43(a) trade dress infringement, false advertising, and unfair competition lawsuit at the Federal District Court in Riverside. Vista has sold a shrimp tomato cocktail juice under the Camaronzazo trademark since 2006 and uses a label with “images of a glass of the juice surrounded by shrimp against a backdrop of ocean, sky and clouds.”

In 2009, Vista became aware that Defendants were selling Clamato brand shrimp tomato cocktail juice with an allegedly similar design and label. Vista also complains that Defendants’ label has the words “The Original” prominently placed thereon. Vista alleges that Defendants’ representatives informed Vista that the Camaronazo was a great idea, and subsequently began selling Defendants’ product in 2008. As a result, Vista claims that “The Original” statement on Defendants’ label “is false and misleading because Defendants’ product is not the original or the first shrimp tomato cocktail juice.” The case is titled Vista Del Mar Food & Beverages, LLC v. Compania Exportadora De Aguas Minerales, S.A. De C.V. and Distribuidora Anahuac, S.A. De C.V., EDCV 09-217 SGL (C.D. Cal. 2009).

Posted On: February 19, 2009

Fun With Phonics Sues Leapfrog For Copyright Infringement Over Language Teaching DVDs

copyright-lawyer-phonics-leapfrog.jpgLos Angeles, CA – Fun With Phonics, Inc. filed a copyright infringement lawsuit at the Federal District Court in Los Angeles over alleged infringing sales of phonetic language teaching tools by Leapfrog. Plaintiff’s predecessor, William O’Connor, created materials to aid in learning to read English by phonetic methods of instruction, including anthropomorphizing letters of the alphabet so that each letter would assume a character and engage in activities that children would associate with the letter. “For example, Mr. O’Connor drew the letter ‘I’ with sticky green liquid dripping from it and gave it the character of ‘Icky I.’ This characterization helped students remember that the letter ‘I’ makes the short vowel sound with which the word ‘icky’ begins.” These characters were used and sold in various media, including flash cards, audiotapes, and CD-Roms. Plaintiff then acquired the rights from Mr. O’Connor and filed copyright applications with the U.S. Copyright Office.

Leapfrog allegedly began marketing phonetic instructional materials infringing upon Plaintiff’s copyrighted materials in 2003. “Leapfrog’s materials presented anthropomorphized letters with visual representations giving each letter a character connected with the phonetic sounds associated with that letter.” Leapfrog is accused of copying the “Icky I” character from Plaintiff’s work, down to the sickly green liquid dripping from the letter. Plaintiff states that its damages cannot yet be determined and may elect between the profits generated by the Leapfrog or statutory damages under 17 U.S.C. § 504. Plaintiff also requests that the damages be enhanced because the Defendant’s alleged infringement is willful and intentional. Plaintiff also requests that their attorneys’ fees and other costs in connection with the prosecution of its claims be paid by defendant pursuant to 17 U.S.C. § 505. The case is titled Fun With Phonics, LLC v. Leapfrog, Inc., CV09-0916 CT (C.D. Cal. 2009).

Posted On: February 16, 2009

Minka Lighting Files A Patent Infringement Lawsuit Over Regency Fan’s “Spirit” Ceiling Fan

Los Angeles, CA – Patent attorneys for Minka Lighting shine a spotlight on Defendant’s alleged patent infringement with a lawsuit filed at the Central District of California. Minka is in the business of designing, manufacturing, and selling home products, including ceiling fans. Minka sells the subject ceiling fan under the Como trademark and the U.S. Patent & Trademark Office issued U.S. Patent No. D476,728, entitled “Combination Ceiling Fan And Light Fixture” for the subject design.

lighting-patent-attorney-ceiling-fan-patent-lawyer.jpgDefendant Regency Fans sells a lighted ceiling fan under the Spirit trademark, which is advertised on its website and elsewhere. The complaint alleges that “Defendant, without license from Minka, has sold and offered for sale and is selling ceiling fans to which the patented design of the ‘728 Patent or a colorable imitation thereof has been applied, including without limitation, Regency’s ceiling fan sold under the Spirit mark.” The complaint also incorporates by reference the patent infringement allegations as a basis for its California statutory (Cal. Bus. Prof. Code § 17200) and common law unfair competition causes of action. The case is titled Minka Lighting, Inc. v. Tacony Corporation d/b/a Regency Fan Corporation, EDCV 09-00234 SG: (C.D. Cal. 2009).

PRACTICE NOTE: It appears that the unfair competition claims are merely based on the patent infringement claim and should be dismissed as they are preempted. "Federal patent and copyright laws limit the states' ability to regulate unfair competition." Summit Mach. Tool Mfg. Corp. v. Victor CNC Systems, Inc., 7 F.3d 1434, 1439 (9th Cir. 1993). A plaintiff's state law claim must be "qualitatively different from a copyright or patent infringement claim" or else it is preempted. Id. at 1440.

Posted On: February 12, 2009

Godzilla’s Lawyers File Monster Trademark Infringement Lawsuit Against Pink Godzilla

Los Angeles, CA – Godzilla’s trademark lawyers previously devoured Subway’s "Five Dollar Footlong" Commercial (blogged here) and are now endangering Pink Godzilla’s existence with a trademark infringement and Lanham Act § 43(a) unfair competition lawsuit filed at the Federal District Court in Los Angeles. Godzilla was reawakened by the detonation of an atomic bomb and since 1956, it has starred in twenty-seven sequel films. Godzilla’s USPTO registered trademark has been used and licensed for use on a wide range of merchandise, whereby the mark has become famous.

trademark-attorney-godzilla-pink.bmpDefendant allegedly operates a retail sales operation called “Pink Godzilla,” which sells Japanese-related games, toys and other merchandise online at www.pinkgodzillagames.com. Godzilla claims that Pink Godzilla is using the infringing mark on similar merchandise, including t-shirts, stuffed animals, card games, video games and posters. “Toho is informed and believes, and based thereon alleges, that Defendant chose Pink Godzilla for the name of its business and elected to affix the words ‘Pink Godzilla’ on much of its merchandise after the Godzilla Mark became famous and because it wanted to trade on the good will associated with Toho’s famous Godzilla Mark. The case is titled Toho Co., Ltd. v. Pink Gozilla LLC, CV 09-0830 FMC (C.D. Cal. 2009).

PRACTICE NOTE: I wonder if sushi is next on Godzilla's menu: www.pinkgodzilla.com.

Posted On: February 9, 2009

Coach Sues To Cancel Trademark Registration Of Alleged Infringer

trademark-attorney-coach-handbags-purse.jpgLos Angeles, CA – Trademark attorneys for Coach, Inc. filed a trademark infringement, dilution and unfair competition lawsuit at the Federal District Court in Los Angeles, which also seeks to cancel the trademark registration of the alleged infringer (15 U.S.C. § 1064). Coach, which started as a family-run workshop in Manhattan over sixty years ago, is the owner of the Coach® mark and the “CC Design” mark (pictured herein) and sells handbags, purses, apparel, and accessories under said marks. Coach has expended over a hundred million dollars in advertising of products bearing the marks and has sales of over two billion dollars annually.

The complaint states that on May 27, 2008, the U.S. Customs and Border Protection informed Coach that it had seized goods being imported from China by YH Forever, Inc. The seized goods allegedly used a mark confusingly similar to that of the “CC Design.” Coach then discovered that the Defendant had registered its “MW” mark with the USPTO. Coach contends that when the M and W are shown in solid colors, as with the seized goods, it essentially imitates the CC Design used by coach. The case is titled Coach, Inc. v. YH Forever, Inc., CV 09-00771 R (C.D. Cal. 2008).

Posted On: February 3, 2009

Best Super Bowl Commercial: Cash4Gold.com's Mc Hammer and Ed McMahon Spot

Although Cash4Gold.com is a defendant in a trademark infringement lawsuit (details here), its Super Bowl ad was the best this year:

Although Cash4Gold's commercial was amusing, according to these sites (here and here) Cash4Gold's business practices are not.