Posted On: March 30, 2009

Website Trade Dress And Copyright Infringement Lawsuit Filed Against Competing Legal Document Preparation Service

Los Angeles, CA – Legaljiffy.com sued rival website based legal document preparation company Legalcpu.com, Inc. for copyright infringement, trade dress infringement, and state unfair competition. Legaljiffy’s website has provided self-help legal documents since 2008 and is attorney-owned and operated. Defendant allegedly began its website in December of 2005, but has recently changed the look and feel of its website by copying “Legaljiffy’s website, both in look, feel and by content.” Defendant is alleged to have modified its website after Plaintiff declined to enter into a partnership, which partnership offer was intended to add an attorney to Defendant’s ownership group.

PRACTICE NOTE: It would have been interesting to see how the Court would have ruled on a motion to dismiss Plaintiff’s trade dress claim. Unfortunately, it was not part of Defendant’s motion. (Read BNA article regarding the viability of website trade dress claims).

PLAINTIFF’S WEBSITE FRONT PAGE:
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DEFENDANT’S WEBSITE FRONT PAGE:
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Although the complaint asserts a copyright infringement claim, it does not plead the prerequisite ownership of a copyright registration. Further, Plaintiff claims that its website is distinctive in support of its trade dress cause of action. However, the complaint fails to specifically identify which elements comprise its trade dress or which elements are inherently distinctive without requiring a showing of secondary meaning. The case is Legaljiffy.com, Inc. v. Legalcpu.com, Inc., CV 09-01867 AHM (C.D. Cal. 2009).

PRACTICE NOTE: Reviewing the front page of Plaintiff’s website, nothing in its design immediately strikes me as being distinctive. Courts have not yet determined whether website “look and feel” qualifies as product packaging (which may be inherently distinctive) or product design (which requires a showing of secondary meaning). Indeed, the Supreme Court in Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000), noted that “[t]o the extent there are close cases, we believe that the courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.” Based on the recent creation of Plaintiff’s website, it would be difficult to illustrate secondary meaning. Also, although a recent District Court case in the Ninth Circuit denied a motion to dismiss a trade dress cause of action for “look and feel” of a website as preempted by the Copyright Act, Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240 (W.D. Wash., 2007), another granted summary judgment of non-infringement on Plaintiff’s trade dress infringement claim because Plaintiff had not shown secondary meaning in its website's pink color or two phrases posted thereon. SG Servs. v. God's Girls Inc., 2007 U.S. Dist. LEXIS 61970 (C.D. Cal. May 9, 2007).

Posted On: March 26, 2009

Clothing Designer Christian Audigier Files Counterclaims In Bryan Callan’s Unfair Competition And Breach Of Licensing Agreement Lawsuit

christian-audigier-clothing-designer-lawsuit.jpgLos Angeles, CA – Clothing designer Christian Audigier was sued by Bryan Callan for unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and breach of their licensing agreement (details blogged here). Audigier answered the complaint and counterclaimed (copy available here) alleging he entered into an agreement to purchase Callan’s original artworks and copyright thereto for use on Audigier’s eponymous product line. Audigier alleges that Callan breached the agreement by failing to provide a minimum of ten original pieces of artwork each and every month. In addition, Audigier claims that despite the transfer of ownership of the copyrights to Audigier, Callan requested that Audigier loan him some of the artwork to show in Callan’s gallery. By failing to return the artwork, it’s alleged that Callan intended to convert the artwork to his own possession and use under the guise of “borrowing” the same. Audigier seeks a declaration of copyright ownership because Callan allegedly applied for federal copyright registration wherein Callan falsely represented that he is the owner copyrights despite assigning the rights to Audigier. The case is Bryan Callan v. Christian Audigier, Inc. et al., CV 08-08072 GW (C.D. Cal. 2008).

Posted On: March 24, 2009

SureFire And Advanced Armament Battle It Out In Preliminary Injunction Filings

Santa Ana, CA – Gun suppressor manufacturer SureFire, LLC filed a false advertising lawsuit, in the Central District of California (Santa Ana Division), against Advanced Armament Corp. (“AAC”), details blogged here. Returning fire, AAC then filed its own false advertising counterclaim (copy available here) alleging that SureFire’s representation that its suppressors could withstand the continuous firing of 1,5000 rounds without failure is false and no tests were conducted to support the statements.

false-advertising-lawyer-silencer-advertisement-surefire-gun.jpgAllegedly on December 23, 2008, AAC agreed not to run its advertisement in exchange for SureFire’s agreement not to seek preliminary injunctive relief. AAC also allegedly agreed to provide SureFire’s counsel with copies of modifications to the advertisement for approval prior to publication. But AAC began running a modified version of the allegedly offensive advertisement without seeking SureFire’s prior approval. As a result, SureFire filed an application for preliminary injunction to prevent publication of the modified version of the advertisement. (Preliminary injunction application is available here).

The modified advertisement contains the same pictures, but includes a statement in “fine print…that the SureFire suppressor was ‘FIRED 580 ROUNDS’ and that the AAC suppressor is ‘UNFINISHED/UNFIRED.’” SureFire contends that its suppressor must have been fired more than 580 times and appears to have been both abused and physically manipulated to create the false impression that it suffered a massive structural failure during normal use.” SureFire also asserts “the claim that SureFire’s suppressors use spot-welds is literally false,” as are claims regarding the strength of AAC’s welds compared to those used by SureFire. SureFire uses a series of redundant “tack” welds – which uses molten filler to strongly join seams between metal pieces – and not the weaker “spot” welds – where pressure and a strong electric current effectively melts two overlapping pieces of metal together at the “spot” of application. The AAC suppressor is produced by “fusion” welds, which do not use metal filler but draw metal from the two parts being joined together. According to SureFIre, “fusion” welds are generally weaker than “tack” welds, thereby rendering false AAC’s claims of greater durability.

AAC filed its opposition (copy available here) contending that its claims in the advertisement are not literally false and that the picture of the competitor’s product is not readily identifiable as a SureFire suppressor; therefore, no individualized harm can be shown by SureFire. AAC also contends that it previously used filler material in what it calls “plug welds,” but turned to fusion welds for strength because “a plug weld does not join all abutting metal at the seam, it is not continuous, and as a results, is not as strong.” AAC admits that its advertisement states that spot welded cores “can fatigue, crack, and break under the high-stress environment of semi and full-auto firing,” but denies that its advertisement makes any representations about failure rates for spot welds, even though AAC contends that fusion wells are stronger and more durable.

In its Reply Memorandum (copy available here), SureFire submits the declaration of a metallurgical engineer to rebut AAC’s contention that SureFire’s “tack” welds are the same thing as “spot” welds. The engineer’s declaration distinguishes between filler incorporated “tack” welds and spot welds – which exclude filler, and contends that ACC’s advertisement’s “Spot-Welded” designation of SureFire’s suppressor is literally false. SureFire further argues that AAC’s contention that SureFire’s suppressor is not as strong as the AAC’s welds is false because AAC has failed to do any comparative testing prior to making such claim, only relying on the “common sense” of AAC’s declarant. AAC’s implied assertion that its fusion welds cannot “fatigue, crack, and break under the high-stress environment of semi and full-auto firing” is also contested by the engineer because any weld can break. SureFire also contends that the comparative product is readily identifiable as a SureFire suppressor because its distinctive single weld ring on the outer tube is depicted in the picture. SureFire also submits evidence from Internet forums where users identify the product as a SureFire suppressor.

AAC filed an ex-parte application for leave to file a surreply, which the Court denied. Fireworks are sure to fly at the hearing on the motion for preliminary injunction, which is set to be heard on April 13, 2009. The case is SureFire, LLC v. Advanced Armament Corp., SACV 08-1405 DOC (C.D. Cal. 2008).

Posted On: March 20, 2009

Upper Deck Enjoined From Selling Yu Gi Oh! Cards; Prescient Threats Of “Mutual Assured Destruction” In Counterclaims

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

Los Angeles, CA – In October of 2008, Konami sued Vintage Sports Cards, Inc. in the Central District of California for sales of allegedly counterfeit Yu-Gi-Oh! trading cards (details blogged here). The Court entered a permanent injunction against Vintage and, after taking expedited discovery, Konami discovered that Upper Deck – Konami’s exclusive distributor – was the alleged source of the infringing cards distributed by Vintage.

Upper Deck allegedly was the source of “at least 531,240 counterfeit Rare Cards” provided to Vintage. And in October of 2008, Konami’s attorneys discussed Upper Deck’s role in the distribution of allegedly infringing cards with Upper Deck’s lawyers. During counsels’ communications, Upper Deck’s lawyers allegedly threatened Konami with “mutual assured destruction” through litigation.

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Konami then provided Upper Deck with access to the seized cards and subpoenaed records from Upper Deck to determine the scope of the alleged counterfeiting and infringement. One day before responses were due, Upper Deck refused to comply with the subpoena raising an objection of improper service on its California office.

On December 10, 2008, Upper Deck filed suit in the District of Nevada alleging Konami breached its agreements and committed fraud. The complaint also contained causes of action for slander and civil conspiracy arising from Konami’s communications to third parties that Upper Deck provided counterfeit cards to Vintage. In response, on the very next day, Konami terminated its distribution agreement with Upper Deck. Upper Deck then raised the stakes by filing suit in Amsterdam on December 16, “seeking an interim order requiring specific performance of the European version of the parties’ distribution agreement.” Konami then alleged that Upper Deck misrepresented the holdings of the Dutch proceedings in that “the five-page interim order did not decide any issue in this action,” despite Upper Deck’s assertion to the Central District of California.

Konami amended its complaint to add Upper Deck as a co-defendant and moved for preliminary injunction against Upper Deck, which motion was denied without prejudice (details blogged here). Konami then renewed its motion for preliminary injunction against Upper Deck (read here), which injunction was granted.

On February 26, 2009, the Central District of California granted Konami’s preliminary injunction application enjoining Upper Deck from manufacturing, advertising and distributing the Yu-Gi-Oh! cards (read order here). In response, Upper Deck filed suit, in the District of Nevada, against Konami alleging trademark infringement of its hologram mark, in addition to Nevada unfair competition and deceptive trade practices claims. (Ryan Gile blogged here)

And now, as the cherry bomb on top of the “mutual assured destruction” sundae, Upper Deck has filed its counterclaims in the Central District of California (copy available here), wherein it asserts eleven causes of action including breach of contract, breach of implied covenant of good faith and fair dealing, fraud, slander per se, and civil conspiracy. Updates to the fireworks are sure to follow. The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008).

Posted On: March 16, 2009

Magician Makes Patent Infringement Lawsuit Appear – Not An Illusion For The Defendant

Los Angeles, CA – Magician Yigal Mesika filed a patent infringement lawsuit at the Federal District Court in Los Angeles – no magic here – through his attorneys. I thought the magician’s code was to never reveal their secrets. Maybe I’m wrong because Mesika filed a patent application for his invention and was issued U.S. Patent No. 7,311,609, entitled “Miniature Spooling Apparatus.” The patent generally relates to a miniature electrically powered thread reel and spooling mechanism discretely hidden inside a pen. There goes the secret. The pen is used by magicians in routines requiring “invisible” thread to control small objects and the “Electric Spider Pen” is sold through authorized magic shops and websites.

magic-patent-attorney-magician-electric-spider-pen.jpgMagic seems to be a popular legal topic lately, including a motion in limine to prevent opposing counsel from performing magic tricks during closing arguments (article here). And now back to our regularly scheduled legal magic programming:

Defendant Bogunia sells an “iThread” product which allegedly infringes on one or more claims of the ‘609 patent. In addition, Defendants are set to release a modified product called the “iThreadX,” which is also believed to infringe. In May of 2008, Plaintiff informed Defendants of their allegedly infringing activity and attempts were made to settle the matter. When negotiations went up in a cloud of smoke, Plaintiff filed this lawsuit. Don’t worry, that was my last pun for now. I am saving “Defendant Magician To Make Lawsuit Disappear” pun until a motion to dismiss is filed. The case is titled Yigal Mesika v. Sean Bogunia et al., CV09-1580 JFW (C.D. Cal. 2009).

Posted On: March 12, 2009

Football Great Jim Brown Sues Electronic Arts Over Use Of His Likeness In Madden ’08 Videogame

UPDATE 9/25/2009: Court dismisses Jim Brown's Lanham Act claim with prejudice.

jim-brown-lanham-act-attorney-lawsuit-electronic-arts-madden-football.jpgLos Angeles, CA – Jim Brown, one of the greatest running backs of all time, made a bee-line to the Federal District Court in Los Angeles to file a complaint against Electronic Arts over use of his likeness in the popular “Madden NFL” videogames. (Read the complaint.) Although many are aware of Brown’s achievements on the football field as a running back for the Cleveland Browns from 1957 to 1965, the complaint references Brown’s lesser known lacrosse talents and his induction into the Lacrosse Hall of Fame. Also, the lawsuit claims that Brown’s acting prowess, literary skills, and social activism, make him a widely recognized public figure.

Brown alleges that, unlike today’s NFL players, he never signed away his name and likeness to the NFL Player’s Union because the union didn’t exist during his career, same with videogames. Further, “Plaintiff has never entered into any agreement in which he signed away his rights of publicity and/or likeness to be used in connection with Madden NFL or any other video game produced by Defendant.” As a result of EA’s use of Brown’s likeness in the Madden football video game, Brown asserts causes of action for Lanham Act § 43(a) unfair competition, invasion of privacy, appropriation of likeness Cal. Civ. Code § 3344, and unfair competition in violation of Bus. & Prof. Code §17200. The case is James “Jim” Brown v. Electronic Arts, Inc., CV 09-1598 MMM (C.D. Cal. 2009).

PRACTICE NOTE: It appears that in July of 2008, Jim Brown filed a similar lawsuit in New York state court. Although I have not been able to determine the status of the New York suit, California’s right of publicity laws favor celebrities.

Posted On: March 11, 2009

Tough Love – Drew Barrymore’s Company And MTV/VH1 Sued For Trademark Infringement Over Reality Show Name

Los Angeles, CA – No love was lost when Toughlove America, LLC sued Drew Barrymore’s production company (Flower Films, Inc.) and MTV Networks for trademark infringement and Lanham Act § 43(a) unfair competition. In the lawsuit, filed at the Federal District Court in Los Angeles, Toughlove alleges that the Defendants’ new “Tough Love” reality show will infringe its registered Toughlove® trademark.

trademark-lawyer-tough-love-vh1-mtv-lawsuit.jpgPlaintiff complains that its licensor first began using the mark in 1979 and the “Toughlove trademark has grown to symbolize a distinct approach to peer-to-peer, self-help, and psychological counseling programs.” In addition, Plaintiff states that it began developing a Toughlove television show, which it described as a hybrid between “Dr. Phil” and “The View” in its Mach 2007 submission to the Directors Guild.

Defendants’ reality television series, entitled “Tough Love,” is set to air on March 15, 2009. The complaint alleges that the “reality show will be about individuals with romantic relationship problems – the very same types of relationships indicated in [Plaintiff’s] pending Toughlove trademark application and expressly set forth in Toughlove’s concept for its television programs.” Plaintiff alleges that Defendants were notified of Plaintiff’s prior rights, but Defendants have refused to change the name of their show. The case is titled Toughlove America, LLC v. MTV Networks Company et al., CV 09-1521 SJO (C.D. Cal. 2009).

Posted On: March 8, 2009

Italian Echo Film Sues DigiWorld, Cinemavault.com, and Monarch Home Video For Copyright Infringement

los-angeles-copyright-lawyer-movie-the-listening.bmpLos Angeles, CA – A copyright infringement and breach of contract lawsuit was filed at the Federal District Court in Los Angelesover the film “The Listening.” Echo Film, an Italian movie making company, produced the English-language feature motion picture which is about classified global audio surveillance of private citizens. The film was allegedly well received at film festivals and was believed to be an Oscar® contender.

In September of 2006, Defendant DigiWorld contracted to purchase certain rights in The Listening for $3 million. After the film was not selected for the Oscar® list, however, DigiWorld allegedly defaulted on its agreement and did not pay the $3 million nor did it return the film. Instead, Plaintiff alleges, Digiworld and its co-defendants distributed the film in the U.S. and internationally. Also, the complaint continues, Defendants “made unauthorized edits to the film and falsely listed Armas and Reynolds as producers of the film.” The case is titled Echo film S.r.l. v. DigiWorld Studios, Inc. et al., CV09-01455 JFW (C.D. Cal. 2009).

PRACTICE NOTE: I wonder if Rob Spence -- a filmmaker who wants to embed a camera in his eye -- saw the movie:


EYEBORG-- The Two Week Trial from eyeborg on Vimeo.

Read the Wired article here and visit the filmmaker's website here.

Posted On: March 5, 2009

Jennifer Lopez And Marc Anthony Sue Baby Carriage Maker For Trademark And Copyright Infringement And Right of Publicity Misappropriation

Los Angeles, CA – Jennifer Lopez and Marc Anthony’s lawyers filed suit at the Federal District Court in Los Angeles against high-end baby carriage maker Silver Cross. The complaint alleges that Silver Cross “knowingly and intentionally misappropriated and used the names, images, likenesses and photographs of Lopez and Anthony to market and sell Defendants’ line of high-end baby carriages throughout the world.” The offending picture – which can still be obtained from Defendants’ website and is reproduced herein – was allegedly shown on Defendants’ website and other marketing and promotional materials.

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In addition to the right of publicity claim, Jennifer Lopez makes a Lanham Act § 43(a) trademark infringement claim because she uses “J-Lo” and “Jennifer Lopez” as trademarks on a variety of goods. And she alleges that Defendants’ use of her name to promote their products is likely to cause confusion as to the source or sponsorship of Defendants’ goods. Also, Nuyorican – the picture's copyright holder – is named as an additional plaintiff and asserts a copyright infringement claim for unauthorized use of the subject picture. Plaintiffs are demanding at least $5,000,000 in damages for each of their six causes of action. The case is titled Jennifer Lopez, et al. v. Silver Cross (UK) Ltd. et al., CV 09-01345 AHM (C.D. Cal. 2009).

Posted On: March 2, 2009

Guitar Hero Videogame Does Not Infringe: Court Rocks Gibson Guitar’s Patent Infringement Lawsuit On Summary Judgment

Los Angeles, CA – Last year, after being threatened with infringement of Gibson Guitar’s U.S. Patent No. 5,990,405 (“the ‘405 Patent”), Activision, the maker of the popular video game “Guitar Hero,” filed a declaratory judgment complaint of non-infringement (details here). After two rounds of claim construction briefing, a technology tutorial, and a Markman hearing – in addition to Gibson’s counsel withdrawing from the case, the Court granted Activision’s summary judgment of non-infringement.

guitar-hero-gibson-activision-patent-summary-judgment-non-infringement.jpgIt did not bode well for Gibson merely reading the Court’s introductory statement: “As a general observation, no reasonable person of ordinary skill in the relevant arts would interpret the ‘405 Patent as covering interactive video games.” The ‘405 Patent generally covers playback of prerecorded music by playing back the “musical sounds” of an “actual musical instrument,” and once the musician has mastered a particular song, the ‘405 Patent’s system is no longer necessary.

The Court quickly dismissed Gibson’s contention that the sound made by the Guitar Hero controller was potentially musical because Gibson’s interpretation would extend coverage to a “button of a DVD remote…to a pencil tapping a table.” Gibson conceded that the guitar controller did not produce “musical sounds,” but argued that the drum set did in fact produce “musical sounds.” The Court, however, concluded that musical sounds must have more definite characteristics than a thud produced from striking a piece of rubber or plastic. Indeed, Gibson’s own expert testified that musical sounds have articulable characteristics, e.g. “timbre” and “pitch.”

A further limitation of the patent is the output of an instrument audio signal that is representative of the sounds the musical instrument makes or is capable of making. “Gibson’s own expert admits that the signals from a Guitar Hero controller—on their own—do not represent the pitch, timbre, or any other articulable characteristic of the sound made by the controller.” Further, “the ‘405 Patent itself disavows systems that either (1) do not involve ‘actual operation of a musical instrument’ or (2) use virtual reality-type control devices.” And the Court found that the Guitar Hero controllers fall within both disavowed categories. The most painful part of the ruling was the finding that “Gibson’s doctrine of equivalents arguments border on the frivolous.”

The Court thus granted summary judgment of non-infringement and Guitar Hero players can continue on their World Tour. The case is titled Activision Publishing, Inc. v. Gibson Guitar Corporation, CV08-01653 PSG (C.D. California). Order available here.