Posted On: June 30, 2009

The Court Denies Motion To Dismiss “The Original” False Advertising Lawsuit – Dastar Inapplicable

false-advertising-attorney-would-you-rather-imagination.jpgLos Angeles, CA – Zobmondo filed a Lanham Act § 43(a) false advertising lawsuit over the phrase “Justin and Dave’s Original Would You Rather…? Board Game.” Zobmondo asserted that the term “original” falsely connoted that Defendant’s product was first in time. Details here.

Defendant Imagination filed a motion to dismiss arguing that Plaintiff was asserting a false designation of authorship claim (i.e. who was the first to come up with the idea for the game) precluded by Dastar Corp. v. Twentieth Century Fox Film Corp., 539 US 23 (2003). In Dastar, the Supreme Court stated that “reading the phrase ‘origin of goods’ in the Lanham Act in accordance with the Act's common-law foundations (which were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were), we conclude that the phrase refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” Dastar, 539 U.S. at 37 (italics in original).

The district court disagreed (order available here) and found that Dastar was inapplicable because the complaint focuses on who was the first to manufacture a “would you rather” board game, not the first to come up with the idea for the game:

Here, there is no conflation with copyright (or patent) law inherent in Zobmondo’s claim. The issue for determination is whether Imagination’s title inappropriately conveys that the game is the first “would you rather” board game. This relies, in part, on determining the alleged falsity of the premise, i.e., that Imagination’s game is not the first “would you rather” board game. Making this determination requires no examination as to who came up with the idea for the board game, or who may have any copyrights in the game. The only question is who physically manufactured the first such board game.

As Rebecca Tushnet will probably agree, the court properly construed Dastar. The case will ultimately turn on whether the term “original,” taken in context, means first in time – instead of “original” meaning the same game that was originally produced by Justin and Dave. The case is Zobmondo Entertainment, LLC v. Imagination International Corporation, CV 09-2235 ODW (C.D. Cal. 2009).

Posted On: June 28, 2009

Michael Jackson: Dance Inventor and Patentee

Michael Jackson undeniably lived a troubled life, but he was also a music icon that left his mark on popular culture through his dance moves and videos. People often incorrectly credit him with inventing the moonwalk. Although he made it famous, he copied the move from other break-dancers. Michael Jackson, however, did invent a dance move for which he was awarded U.S. Patent No. 5,255,452, thereby also contributing to intellectual property culture. In his “Smooth Criminal” video, MJ and his backup dancers lean forward in a gravity-defying manner to an impossible angle.


By filing a patent application for the “Method and Means for Creating Anti-Gravity Illusion,” Michael Jackson let the cat out of the bag. The heel of the shoe is designed to detachably engage a hitch that retractably projects through the stage floor. By anchoring the heel to the floor, the dancer can lean forward and the illusion of defying gravity is achieved. His untimely death has subjected Michael Jackson’s personal choices to debate, but his dedication to creating and protecting his art is unquestionable.

Here's video of MJ live in concert using the patented shoes to perform the lean and one of the backup dancer's shoe getting stuck:

Posted On: June 24, 2009

Mimic Skateboards Sued For Indo Board Trademark and Copyright Infringement

Los Angeles, CA – EABO, Inc. sued Huntington Beach, CA based Mimic Skateboards, Inc. for copyright infringement, trademark infringement, trademark dilution, trade dress infringement and unfair competition. Plaintiff manufactures various sized disc shaped wooden boards that rest upon a cylinder shaped roller, which were originally designed by surfers for training purposes. The IndoBoard has now evolved into its own sport where individuals stand on the board and rock it back and forth to balance on the roller and perform various tricks. If a picture is worth 1,000 words, then moving pictures are priceless:

Plaintiff is the exclusive licensee of a registered Indo Board design trademark and the common law rights to the word mark. Plaintiff is also the copyright owner in an instructional DVD created in 2004. The complaint alleges that beginning in 2001, Plaintiff entered into a manufacturing agreement with Mimic to manufacture its boards, which relationship terminated in 2008 when Mimic informed Plaintiff that it was going to only manufacture skateboards.

A few months later, Plaintiff alleges that it discovered Mimic offering for sale a similar product under the “Orbit Board” mark, but purchase of the Orbit product included an unauthorized copy of the instructional DVD. In addition, Mimic allegedly used the Indo Board trademark to route customers to websites where the Indo Board was “sold out,” but offered its Orbit Board as an equivalent replacement. Plaintiff further alleges that the unique shape and color of the Indo Boards function as its trade dress, which is recreated in the Orbit Board. The case is Eabo, Inc. v. Mimic Skateboards, Inc., CV09-04208 RSWL (C.D. Cal. 2009).

Posted On: June 22, 2009

Van Halen’s Company Sues Nike For Copyright Infringement

Los Angeles, CA – ELVH, Inc., a company owned by musician Eddie Van Halen, filed a copyright infringement lawsuit, in the Central District Of California (Los Angeles Division), against sports-giant Nike, Inc. Van Halen created three striped designs which he used on his “Frankenstein” guitars. And he registered the works with the US Copyright Office.


Van Halen accuses Nike of copying his designs and using them on its “Dunk Lows” line of shoes. In addition to its copyright infringement claim, ELVH seeks a constructive trust and an accounting. Plaintiff seeks either actual or statutory damages under 17 U.S.C. § 504, in addition to their costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is ELVH, Inc. v. Nike, Inc., CV09-04219 CAS (C.D. Cal. 2009).

Posted On: June 18, 2009

Rockstar Files Trademark and Trade Dress Infringement Suit Over Energy Drink Trademark And Container

Los Angeles, CA – Energy drink manufacturer Rockstar, Inc. licenses its trademarks from its founder and CEO, Russell G. Weiner. The Rockstar family of trademarks includes Rockstar Energy Drink®, Rockstar®, Party Like a Rockstar®, and the pending Rockstar Energy Shot™. In addition, Rockstar’s promotional materials for its drinks use the tagline “So grab it, shoot it, and Rock ON!” Rockstar alleges that it has sold over one billion cans of its energy drinks and has annual sales of several hundred million dollars. The energy drinks have been sold in containers having the alleged distinctive trade dress depicted below.


Defendant Rock On Energy, LLC is accused of using the confusingly similar trademark ROCK ON for a competing energy drink, which is sold by at least one mutual retailer. Also, Defendant is accused of using the confusingly similar “Live Loud. Play Hard. Rock On” tag line for its energy drinks. Further, Defendant allegedly uses a beverage container and product packaging that is confusingly similar to Rockstar’s trade dress. Defendant’s container is mostly black with lettering that is similar in fonts and colors to that of Rockstar’s. The case is Rockstar, Inc. v. Rock On Energy, LLC, CV 09-04017 GAF (C.D. Cal. 2009).

Posted On: June 15, 2009

Trademark Infringement and Trade Secret Misappropriation Lawsuit Filed by Tommy’s Original World Famous Hamburgers

trademark-attorney-tommys-original-hamburgers.jpgLos Angeles, CA – Tomdan Enterprises, Inc., which does business under the more recognizable “Tommy’s Original World Famous Hamburgers” name and trademark, filed a trademark and trade dress infringement, Lanham Act unfair competition, and trade secret misappropriation lawsuit against Tommy’s Original Chili Factory, Inc., and several individual defendants. Plaintiff has been in the restaurant business for the last fifty years, serving up hamburgers, cheeseburgers, hot dogs, and – my favorite – chili cheese fries, among other food items. Plaintiff alleges that it adopted the Tommy’s trademark in 1960 and registered the trademark with the California Secretary of State in 1978.

Plaintiff’s burgers and dogs are always served with chili, except when a patron specifically requests it be excluded. I have heard that consumption of a Tommy’s burger with a side of chili-cheese fries in the wee hours of the morning, after a night of libations with college friends, are warranted to reduce any morning-after negative side-effects. A side of extra pickles is believed to further suppress any hang-over symptoms. For those not familiar with the structure of a Tommy’s cheese burger, an element by element depiction is provided herein.


Plaintiff alleges that Defendants were aware of Plaintiff’s Tommy’s mark and trade dress, but adopted a mark, logo, and trade dress that are confusingly similar to Plaintiff’s. Plaintiff alleges that Defendants have misappropriated Plaintiffs proprietary and trade secret information in the form of its recipes, including, but not limited to, its chili. Plaintiff allegedly sent a cease and desist letter – through counsel – to Defendants in December of 2008. But Defendants have allegedly refused to stop their activities. The case is Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).

Posted On: June 11, 2009

Fitness Anywhere Sues Gofit OverTrademarks Used on Exercise Equipment

trademark-attorney-exercise-fitness-trx.bmpLos Angeles, CA – Fitness Anywhere, Inc. filed a trademark infringement and Lanham Act § 43(a) unfair competition lawsuit against Gofit, LLC. Plaintiff’s founder is a former U.S. Navy SEAL and created the exercise equipment to allow his team to exercise while in the field and without access to traditional exercise equipment. The equipment, which later became known as the TRX device, is manually operated and a variety of exercise routines can be performed with the user’s own body weight providing resistance. Plaintiff also provides a website to support the TRX device by designing and offering various exercise routines.

Plaintiff has registered its “Suspension Training” and “Make Your Body Your Machine” trademarks with the USPTO, for both fitness equipment and physical fitness educational services. Plaintiff alleges that Gofit has used the “Suspension Training” and “Suspension Training At Home” trademarks to advertise and sell its rival product. Gofit received a cease and desist letter from Fitness Anywhere’s counsel and allegedly agreed to stop using the objectionable marks by May 1, 2009. Gofit, however, is accused of continuing to use the “Suspension Training” marks and exacerbating the situation by adopting a “Make Your Body Your Gym” mark. The case is Fitness Anywhere, Inc. v. Gofit, LLC, CV 09-03828 SJO (C.D. Cal. 2009).

Posted On: June 8, 2009

Go-Kart Racing Software Copyright Lawsuit Filed By Oskar Systems

Los Angeles, CA – Oskar Systems, LLC has a registered copyright in a software program that is designed to operate every aspect of a go-kart racing business. The registration certificate is attached as Exhibit D to its complaint (copy of the complaint is available here). The software is adapted for a wide range of functions, from record keeping all the way to individual driver timing and statistical analysis. The software is licensed to several customers, on an annual basis, and Plaintiff charges an annual fee for maintaining the software system.

software-copyright-lawsuit-club-speed-oskar.jpgIn 2005, Oskar alleges that it licensed the software to Pole Position Raceway, Inc., an indoor go-kart racing business located in Corona, California. Pole Position terminated its use of the software two years later. Then, Oskar learned that Pole Position switched to “Speed Sheet” software produced by co-defendant Club Speed, Inc., which is alleged to perform almost exactly the same way that Oskar’s software does, “producing almost identical graphs and reports.” Also, the customer liability waiver agreement is alleged to be identical. A screen capture of Club Speed's software display, which is at issue in the lawsuit and was obtained from its website, is presented herein.

Plaintiff alleges that Club Speed and Pole Position, and their respective principals, have been aggressively marketing the Speed Sheet software and have successfully lured away Plaintiff’s existing customers. The case is Oskar Systems, LLC v. Club Speed, Inc. et al., CV 09-03854 AHM (C.D. Cal. 2009).

PRACTICE NOTE: To establish copyright infringement, Oskar must prove (1) ownership of a valid copyright and (2) unauthorized copying of protected elements of the copyrighted work. See Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1174 (9th Cir. 2003). "Infringement is shown by a substantial similarity of protectible [sic] expression, not just an overall similarity between the works." 4 Nimmer on Copyright § 13.03[F]. To establish infringement, Oskar must "show[] that the works in question 'are substantially similar in their protected elements.'" Metcalf v. Bochco, 294 F.3d 1069, 1072 (9th. Cir. 2002).

"It is settled that computer programs are entitled to copyright protection." General Universal Systems, Inc. v. Lee, 379 F.3d 131, 142 (5th Cir. 2004). "A computer program is made up of several different components, including the source and object code, the structure, sequence and/or organization of the program, the user interface, and the function, or purpose, of the program. Whether a particular component of a program is protected by a copyright depends on whether it qualifies as an 'expression' of an idea, rather than the idea itself." Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173, 1175 (9th Cir. 1989). "[Copyright] protection extends not only to the 'literal' elements of computer software -- the source code and object code -- but also to a program's nonliteral elements, including its structure, sequence, organization, user interface, screen displays, and menu structures." Importantly, "[t]he 'non-literal components' of a computer program, including its user interface, are protectable if, 'on the particular facts of each case, the component in question qualifies as an expression of an idea [not] an idea itself.'" Apple Computer v. Microsoft Corporation, 799 F.Supp. 1006, 1020 (N.D. Cal. 1992) (quotation omitted)). Thus, Oskar must prove that the reports are copyrightable and defendants have copied protectable elements of its copyrighted software.

"Copyrighted software ordinarily contains both copyrighted and unprotected or functional elements." Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 599 (9th Cir. 2000). Compilations of individually unprotectable elements, however, may be afforded copyright protection: the "collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in a way that the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. § 101. Thus, "even if the constituent elements of a work are not protected, protection may extend to the 'selection, coordination, or arrangement' of such elements in the work as a whole." O.P. Solutions, 1999 U.S. Dist. LEXIS 979 at *9; Metcalf, 294 F.3d at 1074 ("[A] particular sequence in which an author strings a significant number of unprotectable elements can itself be a protectable element. Each note in a scale, for example, is not protectable, but a pattern of notes in a tune may earn copyright protection.").

As for computer software, "if constituent elements of a screen display or user interface lack requisite originality, or are outside the scope of copyrightable material under 102(b), or are otherwise unprotectable, the selection, coordination, and arrangement of such elements may be protectable, even though those individual elements are not." O.P. Solutions, 1999 U.S. Dist. LEXIS 979 at *9 (citing Apple, 799 F.Supp. at 1023). More importantly, however, "a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship." Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003) (citing Feist, 499 U.S. at 358 ("[T]he principle focus should be on whether the selection, coordination, and arrangement are sufficiently original to merit protection.")).

Posted On: June 2, 2009

Supreme Court To Review In Re Bilski Business Method Patent Holding

Yesterday, the Supreme Court agreed to hear the In Re Bilski case (now renamed Bilski v. Doll), which is on appeal from the Federal Circuit. The Board of Patent Appeals and Interferences (BPAI) previously denied a business method patent for hedging in commodities trading. The Federal Circuit – largely overturning the 1998 State Street Bank case, which allowed business method patents – affirmed the BPAI ruling that the applicants’ invention did not meet the “machine-or-transformation” test. The Supreme Court’s agreement to hear the appeal is a rarity in patent law, leaving patent attorneys to ruminate whether the Supremes will curtail or expand the scope of business method patents. Bilski’s Petition for Certiorari can be viewed here and the Government’s Opposition to Certiorari can be viewed here.