Posted On: July 30, 2009

Costco’s P90X® Sales Triggers Copyright And Trademark Infringement Lawsuit

copyright-attorney-trademark-lawyer-p90x.jpgLos Angeles, CA – Product Partners, LLC sued Costco Wholesale Corporation for copyright and trademark infringement and Lanham Act § 43(a) unfair competition over sales of fitness and weight loss products. Plaintiff sells a P90X® home exercise kit that includes workout routine DVDs featuring a technique called muscle confusion, “which prevents exercise plateauing by varying exercises over days and weeks such that the body has difficulty adapting.” Plaintiff uses its federally registered and incontestable P90X® and Beachbody® trademarks on its DVDs, which are sold on its website. Further, Plaintiff owns several copyright registrations for its variety of DVDs.

Plaintiff purchased allegedly infringing P90X® DVDs from several Costco stores across the country. Plaintiff complains that “despite receiving notice of its infringing activities, Costco has continued to market, sell and distribute counterfeit P90X® DVDs in violation of Plaintiff’s federal copyright” registrations and registered trademarks. The case is Product Partners, LLC v. Costco Wholesale Corporation, CV 09-04990 GW (C.D. Cal. 2009).

Posted On: July 27, 2009

TMI Sued Rosen Entertainment For Patent Infringement Over Headrest Mounted Video Screens/DVD Players

patent-attorney-headrest-monitor-tmi.jpgRiverside, CA – TMI Products, Inc. is the exclusive licensee of U.S. Patent Number 7,040,697 (“the ‘697 patent”) and U.S. Patent Number 7,407,227 (“the ‘227 patent”) both entitled “Headrest Having an Integrated Video Screen.” The ‘227 patent is a continuation of the ‘697 patent, having the same specification but with varying claim scope. The patents generally relate to video display units that are pivotally mounted within the back of a headrest such that the plane of the video monitor can be pivoted about both a horizontal and vertical axis.

TMI accuses Rosen’s “Dual DVD Headrest Replacement Systems” sold as the AV7000 and AV75000 models of infringing both patents. TMI alleges that Rosen’s infringement is willful and intentional and demands treble damages and attorneys’ fees under 35 U.S.C. § 285. The case is TMI Products, Inc. v. Rosen Entertainment Systems, L.P., EDCV 09-01300 SGL (C.D. Cal. 2009).

Posted On: July 23, 2009

Architecture Design Firm Files Copyright Infringement And Lanham Act Claims Against Foreign Exchange Clothing Stores

Los Angeles, CA – Akar Studios is an architecture and interior design firm contracted by Defendant Foreign Exchange to develop a general design scheme, architectural designs and construction drawings for three of its clothing stores. Pursuant to a written agreement, Akar allegedly retained ownership of all copyrights in the works. Indeed, Akar states that “Foreign Exchange made no attempt, in the course of the negotiation of the contract, to secure rights to use Akar’s copyrighted works in connection with any other store.”

architectural-copyright-architecture-attorney-lanham-act-akar.jpgAfter the initial three stores were built, Akar alleges that Defendant requested and was provided with proposals by Akar for the design of two additional stores. But the proposals were not accepted. After receiving the proposals, however, Akar asserts that Defendant provided Akar’s copyrighted architectural drawings to other architectural firms, Shubin+Donaldson Architects and Lee+Kim Design, to modify the designs and prepare derivative works for the two additional stores. In addition, Akar alleges that Defendants “affixed their logos and/or stamps to Akar’s Architectural Works and Technical Drawings, passing such documents as their own work, despite knowledge that such documents were prepared by Akar.”

Akar further alleges that after the work had been copied, Foreign Exchange’s representative had Akar execute a “Lien Release” in exchange for final payment. But buried in the release – unbeknownst to Akar – was a transfer of intellectual property rights. In addition to the copyright infringement and Lanham Act claims, Akar asserts breach of contract, fraud, rescission, and §17200 unfair competition claims. The case is Akar, Inc. v. Foreign Exchange, Inc., et al., CV 09-4940 GAF (C.D. Cal. 2009).

PRACTICE NOTE: When Lanham Act claims are asserted in a copyright case, the issue of preemption under Dastar must be evaluated. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). In Dastar, the Supreme Court explained that claims about the misdesignation of the authorship of such copyrighted works did not fall within the purview of the Lanham Act – precisely because this sort of claim falls within the purview of copyright law. In architectural copyright cases, Courts addressing the issue have held that Dastar applies with equal force to architectural works. See Moser Pilon Nelson Architects, LLC v. HTNB Corporation, 2006 U.S. Dist. LEXIS 58334 (D. Conn. Aug. 8, 2006) (holding that Lanham Act claim in copied architectural works was preempted by copyright law). The Moser Court, however, distinguished its facts from Johnson v. Jones, 149 F.3d 494 (6th Cir. 1998), wherein the defendant physically "took the [original] drawings and site plan that he had obtained from the city inspector, removed [plaintiff architect's] name and seal, and replaced them with his own name and seal." In Johnson, the Lanham Act claims were not preempted. However, in Francois v. Jack Ruch Quality Homes, Inc., 2006 U.S. Dist. LEXIS 57062 (C.D. Ill. Aug. 14, 2006), a case with facts similar to Johnson's, the Court held that the Lanham Act claims were preempted and questioned the applicability and viability of Johnson, a case which preceded the Supreme Court’s Dastar ruling.

Posted On: July 20, 2009

Rolex Files Trademark Counterfeiting & Infringement Suit Against and

trademark-attorney-rolex-trademark-counterfeiting-trademark-infringement.jpgLos Angeles, CA – Rolex Watch USA, Inc. sued Aaron Gallagher, doing business as,, and, for trademark counterfeiting, trademark infringement and unfair competition under the Lanham Act § 43(a). Rolex manufactures high-end watches, watch bracelets and related products for men and women, which are sold under the Rolex family of trademarks and several other registered marks.

Rolex alleges that in May of 2006 it discovered Defendant’s website and it was able to shut it down through the website’s Internet Service Provider. Defendant then contacted Rolex’s counsel and attempted to reactivate the website, but Rolex did not receive a response to its settlement demands in return for reactivation. In April of 2009, while Rolex was investigating sales of infringing watches on, it discovered that pictures in the classified ads linked to Defendant’s reactivated website. In response to Rolex’s cease and desist letter, Defendant allegedly stated that Rolex “will have no further problems regarding this issue.” Rolex’s investigator, however, responded to an ad on and received an email from allegedly signed by Aaron. Upon Rolex’s request, the ISP identified the registrant of the website as Aaron Gallagher. When the investigator called to purchase the watch, Defendant allegedly stated that Rolex “was after me…they’re watching me like a hawk.” The investigator received a watch that is allegedly counterfeit and infringes on Rolex’s trademarks. Thus, Rolex determined it was time to file suit. The case is Rolex Watch USA, Inc. v. Aaron Gallagher, et al., CV 09-4646 R (C.D. Cal. 2009).

Posted On: July 16, 2009

Joe’s Jeans Sues Brixton Ltd. For Trademark Infringement

trademark-attorney-joes-jeans-brixton.jpgLos Angeles, CA – In a case that may go down in the “OOPS” department, Joe’s Jeans sued Brixton Ltd. for trademark infringement and unfair competition under the Lanham Act § 43(a). Apparently, Defendant was not even on Joe’s Jeans’ radar until Defendant’s counsel sent a cease and desist letter accusing Joe’s of infringing on the Brixton trademark.

Upon receipt of the letter, Joe’s investigated the claims and determined that it allegedly began using the Brixton trademark approximately one year before Defendant’s date of first use. And because neither party registered the trademark with the USPTO, the case is going to boil down to which party used the mark first. Joe’s alleges that it responded to Defendant’s counsel and put Defendant on notice that Joe’s was the senior user of the mark and, in an instant, the hunter became the hunted. As a result, Joe’s now alleges that Defendant’s use of the Brixton trademark constitutes willful and intentional infringement. Pamela Chestek blogs here about other parties battling over senior use and ownership of the Protech mark. The case is Joe’s Jeans, Inc. v. Brixton Ltd, LLC, CV 09-04753 DSF (C.D. Cal. 2009).

Posted On: July 13, 2009

Los Angeles Court Dismisses K-Swiss’ Trademark Declaratory Judgment Lawsuit Against Puma

trademark-attorney-puma-kswiss-dolton.jpgLos Angeles, CA – K-Swiss won the race to the courthouse – by two business days – and filed a trademark declaratory judgment lawsuit against Puma. (Details here.) K-Swiss wanted a ruling that its Dolton shoe design did not infringe Puma’s “Formstrip Trademarks,” which run along the side of the shoe. Two business days after K-Swiss’ filing, Puma filed its own trademark infringement lawsuit in the District of Massachusetts and filed a motion to dismiss, transfer, or stay the Los Angeles action.

The Los Angeles District Court declined to exercise jurisdiction over the matter (order available here) even though under the “first to file” rule, K-Swiss’ action preceded Puma’s MA lawsuit: “the rule is a flexible one and the Court may, in its discretion, rely on equitable grounds, such as ‘when the filing of the first suit evidences bad faith, anticipatory suit, or forum shopping,’ to determine whether to depart from the first to file rule.” Xoxide, Inc. v. Ford Motor Co., 448 F. Supp. 2d 1188, 1192 (C.D. Cal. 2006). The Court deemed K-Swiss’ action to be anticipatory in nature and “when, as here, a declaratory judgment action has been triggered by a cease and desist letter, equity militates in favor of allowing the second-filed action brought by the true plaintiff in the dispute to proceed to judgment rather than the first. See Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 219 (2d Cir. 1978). Thus, K-Swiss will now be forced to file its causes of action as counterclaims in the District of Massachusetts. The case is K-Swiss, Inc. v. Puma AG Rudolf Dassler Sport, CV09-03022 GAF (C.D. Cal. 2009).

Posted On: July 6, 2009

PWP’s Tamper Resistant Food Storage Containers Don’t Infringe Inline Plastic’s Patent

los-angeles-patent-attorney-pwp-inline-plastics-product.jpgLos Angeles, CA – PWP Industries filed a complaint for declaratory judgment that its food storage containers do not infringe Inline Plastic’s U.S. Patent No. 7,118,003 (“the ‘003 Patent”). PWP manufactures tamper-resistant plastic packaging for a variety of foods, from vegetables to bakery goods. The ‘003 Patent relates to a plastic container having a hinged cover that engages the base container. The tamper-resistant indicator is a strip that spans from the cover to the base; thereby, preventing access to the interior of the container without breaking the strip. After being accused of infringement, PWP filed the instant action because “an actual controversy existed between [Inline] and [PWP] concerning the alleged infringement of the ‘003 patent. See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (rejecting the “reasonable apprehension of suit” test). The case is PWP Industries v. Inline Plastics Corp., CV09-4417 ODW (C.D. Cal. 2009).