Posted On: April 30, 2009

Skycam Sues Its Former Engineer For Trade Secret Misappropriation And Trademark And Copyright Infringement

Los Angeles, CA – Skycam manufactures the Emmy award winning aerial camera system that is used to obtain above the action camera shots at sporting events such as the Super Bowl®. Skycam filed suit against Patrick Bennett and Actioncam, LLC for trademark and copyright infringement and trade secret misappropriation.

trademark-attorney-copyright-trade-secret-skycam.jpgPlaintiff alleges it hired Bennett as its chief engineer and provided him with engineering and design documents to work on the next generation of aerial cameras. Although Bennett developed new stabilization algorithms and hardware he was testing, Skycam states that it has not yet publically disclosed or the displayed the innovations. Skycam also alleges that in his position as chief engineer, Bennett was provided access to Skycam’s customer and vendor lists.

In 2006, Bennett and Skycam entered into a Separation Agreement and Release when his employment with Skycam ended, which agreement included a provision for maintaining the confidentiality of all proprietary information. Skycam alleges that “under Bennett’s guidance and with full knowledge of Bennett’s obligation to keep information learned during his prior employment with Skycam confidential, Actioncam utilized the confidential information provided by Bennet to develop” a competing aerial camera system which is marketed to Skycam’s customers. Defendants allegedly posted Skycam’s copyrighted works on their website and used Skycam’s trademark without authorization. The case is Skycam, LLC v. Actioncam, LLC, CV09-02409 PA (C.D. Cal. 2009).

Posted On: April 27, 2009

Court Imparts Tough Love and Denies Preliminary Injunction

Los Angeles, CA – 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 for Defendants’ use of “Tough Love” as the reality show's title. (Details here)

trademark-lawyer-tough-love-vh1-mtv-lawsuit.jpgThe Court determined that Plaintiff did not demonstrate that the balance of hardships tipped in its favor because by the time Plaintiff filed its preliminary injunction motion, the program was already in the middle of its first season. “Given that the evidence before the Court shows that if an injunction were to issue, Defendants would lose a ‘significan financial investment’ in the Program and advertising revenue…as well as suffer reputational damage with viewers and advertisers, the Court finds that the likely harm to Defendants if the preliminary injunction is granted exceeds the potential harm to Plaintiff if the preliminary injunction is denied.”

Next, the Court analyzed whether Plaintiff had shown a combination of probable success on the merits and the possibility of irreparable injury. With respect to its Intent To Use trademark application, the Court found that Plaintiff filed the ITU application after it read Defendants’ press release regarding the upcoming series. Thus, the Court determined that Defendants were the prior users of the mark, which use predated the ITU application filing date.

Addressing the registered Toughlove mark for counseling services, Plaintiff was entitled to a “statutory presumption of an ownership interest in the mark and the exclusive right to use the mark in relation to the specified goods and services.” Thus, the Court had to determine whether there is a likelihood of confusion between Defendants’ use of “Tough Love” mark for the television program and plaintiff’s counseling services. Applying the eight Sleekcraft factors, the Court first deemed the mark either “descriptive” or “suggestive,” and deemed Toughlove “a weak mark entitled to a restricted range of protection." As a result, the Plaintiff would have to make a stronger showing with respect to the remaining likelihood of confusion factors.

Unfortunately for Plaintiff, the Court then ruled that the services provided by the parties were not proximal: “The Court finds that Defendant's reality television program, which seeks to entertain viewers while providing dating advice for women participants, is distinct from Plaintiff's goods and services, namely educational services, psychological counseling, and manuals and books for troubled teenagers, as well as substance abuse and mental health patients, or their loved ones.”

Although the Court found that “the similarity of the marks” factor favored the Plaintiff, the instances of actual confusion – through misdirected emails and phone inquiries – were minimal and only weighed slightly in favor of a finding of likelihood of confusion. The marketing channels factor, however, was deemed to be dissimilar because the sole assertion that the parties use the Internet as a marketing tool was insufficient. The degree of care exercised by the purchaser weighed against Plaintiff because consumers exercise a greater degree of care when selecting a therapist. With respect to Defendants’ intent in selecting the mark, the Court concluded that it was done in good faith and did not intend to free-ride on Plaintiff’s mark. As a result of Plaintiff’s failure to show a likelihood of success in proving a likelihood of confusion, the Court denied Plaintiff’s preliminary injunction motion. The case is titled Toughlove America, LLC v. MTV Networks Company et al., CV 09-1521 SJO (C.D. Cal. 2009).

Posted On: April 20, 2009

“The Original” False Advertising Lawsuit Over “Would You Rather” Board Game

Los Angeles, CA – Zobmondo Entertainment would rather file a Lanham Act § 43(a) false advertising lawsuit over the term “original” than allow defendant to use the term. Zobmondo allegedly introduced the first board game in 1998 based on the traditional conversational “would you rather” game.

los-angeles-false-advertising-zobmondo.jpgThe complaint alleges that in 2004, Justin Heimberg and David Gomberg introduced their own “would you rather…?” board game, which was purchased by Defendant Imagination in 2008. In February 2009, Imagination marketed its new board game entitled “Justin and Dave’s Original Would You Rather…? Board Game.” Plaintiff alleges that by “including the word ‘Original’ in the title of Imagination’s new board game, Imagination is attempting to deceive the public into believing that Imagination’s game is in fact the first board game based on the ‘would you rather’ concept” and that Zombodo’s games were imitations thereof. The case is Zobmondo Entertainment, LLC v. Imagination International Corporation, CV 09-2235 ODW (C.D. Cal. 2009).

PRACTICE NOTE: In context, does the term “original” convey first in time? It conveys, at least to me, that it's the same game which was originally produced by Justin and Dave. See Cumberland Packing Corp. v. Monsanto Co., 32 F. Supp. 2d 561, 582 (E.D.N.Y. 1999) (the term “original” conveyed that the defendant’s product contained the “original” sugar-substitute aspartame-based sweetener, not that it was first in time).

Posted On: April 15, 2009

Surefire Loses Preliminary Injunction Motion Against Advanced Armament’s Silencer Advertising

false-advertising-lawyer-silencer-advertisement-surefire-gun.jpgSanta Ana, CA – The court denied Surefire’s preliminary injunction motion and silenced its attempt to shoot down Advanced Armament’s silencer advertising. (Motion details blogged here). The court quickly pointed out that the accused advertisement doesn’t make any reference to Surefire and the pictured suppressor is not readily identifiable as a Surefire product. Surefire must be questioning its decision to file a lawsuit that – unlike the advertisement at issue – unequivocally identified its product as the one pictured in the advertisement and brought more attention to it than the advertisement itself. Indeed, Surefire submitted discussions from weapon forums that referenced the lawsuit and the advertisement at issue.

The alleged four false statements at issue were: “(1) the SureFire suppressor shown uses spot welds; (2) SureFire’s spot welds are not as strong as the fusion welds used by AAC; (3) SureFire’s spot welds are likely to fail during normal semi-automatic and full-automatic firings; and (4) AAC’s suppressors are more durable than suppressors like the SureFire suppressor shown.” The court determined that the statements were not literally false on their face or by necessary implication because the suppressor cannot be positively identified as Surefire’s. As a result, the court also found that Surefire could not evidence actual injury because the non-comparative statements cause injury to all competitors and “none is more likely to suffer from the offending broadcasts than any other.” Thus, Surefire could not show a likelihood of success on the merits or significant hardship if the preliminary injunction was not granted. The case is SureFire, LLC v. Advanced Armament Corp., SACV 08-1405 DOC (C.D. Cal. 2008).

Posted On: April 13, 2009

Jury Awards Uniloc $388 Million In Patent Infringement Lawsuit Against Microsoft

UPDATE 1-4-2011: Appeals court finds Microsoft infringed Uniloc's patent, click here for details.

los-angeles-patent-attorney-uniloc.bmpAfter over five years of patent litigation, Uniloc was awarded $388 Million in damages as a result of Microsoft’s willful infringement of Uniloc’s 5,490,216 Patent, which intentional infringement allows for trebling of the monetary damages award. (Jury’s verdict available here). The ‘216 patent relates to a software registration system that allows digital data or software to run on a computer platform only after the appropriate registration number has been entered and licensing procedure followed. The invention basically prevents distribution and use of unauthorized software.

The Court of Appeals for the Federal Circuit previously overturned the Court’s summary judgment of non-infringement and remanded the case back to Rhode Island. (Order available here). Microsoft has indicated that it will appeal the jury’s verdict. According to Professor Colin Miller, Microsoft may have an argument with respect to the Court’s order allowing Uniloc’s damages expert’s testimony. The case is Uniloc USA Inc. v. Microsoft Corp., CV03-440 S (D.R.I. 2003).

Posted On: April 8, 2009

Vizio’s Patent Declaratory Judgment Lawsuit Against Sony Transferred To Los Angeles

Los Angeles, CA – On the same day that Sony filed its patent infringement lawsuit in Los Angeles, Vizio’s patent attorneys won the race – by mere hours – to the courthouse in New Jersey and filed a declaratory judgment, Lanham Act unfair competition, and trade libel lawsuit. Vizio’s complaint seeks declaratory judgment of non-infringement and invalidity of twelve of Sony’s television related patents. In addition, Vizio alleges that Sony’s officer disparaged Vizio during a public conference call with financial analysts by referring to “low-end kind of VIZIO and Chinese manufacturer semi non-HD sets.” Complaint available here.

Sony filed a motion to transfer the case to Los Angeles, which motion was granted. Order available here. The Court found that the general rule that the first-to-file suit should take priority in venue is entitled to little priority in this case because Sony lost the race by mere hours. Further, the Court relied on the Federal Circuit’s recent ruling – which attempts to quell the race to the courthouse – by relying on “the more appropriate analysis [that] takes account of the convenience factors under 28 U.S.C. § 1404(a),” instead of who won the race. Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 904 (Fed. Cir. 2008). The Court also considered the private interests of the litigants and the public interests in the fair and efficient administration of justice and found that “overall, this controversy appears to have little meaningful connection to New Jersey…Vizio’s corporate headquarters and principal place of business are in the Central District of California…Thus, Vizio’s forum selection is entitled to less deference.” As a result, the case was transferred to Los Angeles. The case is Vizio, Inc. v. Sony Corporation et al., CV09-02129 SJO (C.D. Cal. 2009).

Posted On: April 6, 2009

Trademark Infringement And False Advertising Lawsuit Goes Medieval - Times That Is

Los Angeles, CA – Medieval Times USA, Inc. unsheathed its sword and commenced a trademark infringement, Lanham Act false advertising, and unfair competition battle against Alcatraz Media, Inc. Since 1983, Medieval Times has operated Medieval-style castles where it hosts dinner tournaments, complete with a king, a princess, and jousting knights. Although the knights nobly protect the castle, Plaintiff has turned to the USPTO to protect its Medieval Times® trademark through registration.

trademark-attorney-medieval-times-dinner-tournament.jpgDefendant Alcatraz Media is accused of operating numerous websites, including www.medievaltickets.com and www.viptickets.com, which are used to sell tickets to Plaintiffs’ dinner and tournament events. The websites are allegedly designed to confuse consumers into believing they are purchasing tickets directly from Plaintiffs. For example, the websites allegedly have links to separate webpages for each of Plaintiffs’ castles, including images and textual descriptions thereof.

Also, the complaint accuses Defendants of advertising tickets for Plaintiff’s events at artificially inflated prices, and then providing artificial “discounts” from the inflated prices. Including the discount, Plaintiffs allege that consumers are charged more than they would have been charged by Plaintiffs for the same tickets. As a result, Plaintiffs allege that irate customers have demanded – and received from Plaintiffs – refunds after attending the show and realizing they were overcharged. Further, Plaintiffs contend that consumers were sold “upgrades” by Defendants without Plaintiffs’ knowledge or receipt of payment, which Plaintiffs were forced to honor. Additionally, when Defendants no longer have tickets to Plaintiffs’ shows, they have allegedly falsely advertised that the shows were “sold out,” even though tickets were directly available from Plaintiffs. Plaintiffs allege that Defendants know that their conduct is unlawful because they were found liable in a civil action entitled Maid of the Mist Corporation v. Alcatraz Media, LLC, 06-CV-714 ODE (N.D. Ga. 2006), involving Defendants’ similar misconduct. Order available here.

Plaintiffs further complain that Defendants have purchased the Medieval Times® mark as Google keywords and have embedded the same as metatags on Defendants’ websites. The case is Medieval Times USA, Inc. et al. v. Alcatraz Media, Inc. et al., CV 09-2111 MRP (C.D. Cal. 2009).

Posted On: April 2, 2009

Spencer Forrest’s Trade Dress And Trademark Infringement Lawsuit Against Megathik Gets Hairy

hair-care-products-trademark-toppik-megathik-lawsuit.jpgLos Angeles, CA – Spencer Forrest sells hair products for balding men and women, which includes the Toppik® product lines and the Xfusion® Keratin Hair Fibers products. Plaintiff claims it has trade dress protection in its product packaging, which trade dress is defined as having “a distinctive white product name on a dark brown cylindrical container about 4 ¾” in height and about 1 11/16” in diameter, with white lettering and narrow colored band at the bottom of the cap, which features separately and together serve to uniquely identify that Plaintiff’s said products sold in that Trade Dress are from a single source.” Assuming that the features can “separately” function as the product's trade dress, the defendant’s product does not appear to incorporate the alleged color scheme, both in the script and product’s package color.

Plaintiff’s trademark infringement claim is based on Defendant’s imbedding into meta tags and other uses of the Toppik® mark on Defendant’s website. The use of Plaintiff’s trademark is alleged to surreptitiously drive traffic to Defendant’s website, which increases sales for Defendant’s products. The case is Spencer Forrest, Inc. v. Megathik, Inc., CV09-1876 PSG (C.D. Cal. 2009).