Posted On: September 26, 2009

Court Dismisses Jim Brown’s Lawsuit Against EA Sports For Madden Football Video Game

Los Angeles, CA – Jim Brown, one of the greatest football players of all time, sued Electronic Arts (“EA”) over use of his likeness in the popular “Madden NFL” videogames. Details blogged here. Brown asserted a cause of action for unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), under a theory of false endorsement. He also asserted California common law and Cal. Civ. Code §3344 invasion of privacy claims, in addition to a Cal. Bus. & Prof. Code 17200 unfair competition claim. EA filed a Motion to Dismiss all counts and a concurrent Motion to Strike the three non-federal causes of action. Court's order available here.

jim-brown-lanham-act-attorney-lawsuit-electronic-arts-madden-football.jpgEA maintained that it did not use Jim Brown’s celebrity persona or likeness in the “Madden NFL” game, but also argued that the First Amendment provides a complete defense to the alleged Lanham Act violation. The Court, citing E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1101 (9th Cir. 2008), agreed that the First Amendment does indeed provide a complete defense to a Lanham Act false endorsement claim. Video games have been found to be a form of expression protected by the First Amendment; thus, the Court used the Rogers’ two prong test to determine if the Lanham Act claim was precluded. Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989).

“The first prong requires that the defendant’s use of plaintiff’s trademark be relevant to the underlying work: ‘the level of relevance must merely be above zero.’ . . . If the first prong is satisfied, the Lanham Act claim is still precluded unless the use explicitly misleads consumers about the source or content of the work.” The Court found that the first prong was met because the games are about NFL football and use of a legendary NFL player’s likeness in a game about NFL football is clearly relevant. The second prong also favored EA because use of Brown’s likeness would not explicitly mislead consumers “into thinking that Brown is somehow behind the game or sponsors the product.” The Court based its analysis on the fact that the video game character doesn’t have Brown’s name on the jersey, nor is Brown’s name or character depicted on the games’ packaging or advertising.

As a result, the Court dismissed the Lanham Act claim. “Assuming that all material factual allegations in the Amended Complaint are true, and viewing them in the light most favorable to Brown, EA’s use of Brown’s likeness could not constitute an explicit attempt to signify that Brown endorsed the games. Thus, even if the games do use Brown’s likeness, that use is protected by the First Amendment.” Because the court dismissed the sole Federal cause of action with prejudice, it declined to exercise jurisdiction over the state causes of action and dismissed them without prejudice. The case is James “Jim” Brown v. Electronic Arts, Inc., CV 09-1598 MMM (C.D. Cal. 2009).

Posted On: September 24, 2009

“Love Happens” Movie Happened Because Court Denied TRO On Copyright Infringement And Lanham Act Claim

copyright-attorney-universal-nbc-temporary-restraining-order.jpgLos Angeles, CA – Screenwriters Greg D. Crowder and Tony Freitas sued (complaint available here) NBC Universal and sought a temporary restraining order against the release of the movie “Love Happens,” starring Jennifer Aniston. Since the movie was released last weekend, you can probably guess that Plaintiffs were unsuccessful. Plaintiffs alleged that in 2006 a copy of their screenplay “Truth Tells No Lies” was given to Scott Bernstein, the Vice President of Production for Universal Pictures. Bernstein met with Plaintiff Crowder and allegedly stated that the screenplay was well written but “it was a little dark in tone, and that, if it were rewritten to be a romantic drama or a romantic comedy with a budget in the range of $25-$40 Million, Universal would be interested in producing the film.” On August 2, 2009, Plaintiff Crowder was accused of stealing the “Love Happens” project when he contacted another production company to review the “Truth” screenplay. On August 20, 2009 Plaintiffs registered their screenplay with the U.S. Copyright Office, but waited until a few days before the movie’s release date before moving ex-parte for a temporary restraining order.

Defendants’ opposition to the ex-parte application (copy available here) summed up the eleventh hour filing as follows: “In what can only be described as classic sandbagging, plaintiffs opportunistically waited until the very last moment the day that Love Happens had its premiere, and only three days before its scheduled release in some 1,900 theaters to ambush Universal with a massive set of moving papers, replete with expert declarations and hundreds of pages of exhibits. The gamesmanship evident in this TRO Application filed months after defendant NBC Universal first began advertising the film, and more than six weeks after plaintiffs admit they became aware of facts they cite as the basis for their claim is reason enough for its denial.” Defendants presented evidence of independent creation of the script by two other authors in 2006 that did not have access to the Plaintiffs’ script or have any contact with Bernstein.

The Court’s order (copy available here) sided with the NBC Universal defendants and found that the defendants’ evidence “cast serious doubt on Plaintiffs’ ability to succeed on the merits. . . Indeed, upon careful examination of the competing screenplays at issue, it appears that the two are not at all similar, let alone substantially or strikingly similar. . . Furthermore, while Plaintiffs have based their application for temporary restraining order solely on their copyright claim, their remaining claims appear to similarly lack merit.” After the Court’s candid opinion of the Plaintiffs' case, the Plaintiffs – not surprisingly – immediately dismissed their complaint before Defendants could file an answer. The case was Crowder v. NBC Universal, Inc. et al., CV09-6681 ODW (C.D. Cal. 2009).

Posted On: September 21, 2009

Resveratrol Partners Sues Website For Unfair Competition And Trademark Infringement

trademark-attorney-nutritional-supplement-longevinex-resveratrol.jpgLos Angeles, CA – Dietary supplement manufacturer Resveratrol Partners sued Jon Mayne, the operator of the website, for trademark infringement, unfair competition, and trade libel. Plaintiff manufactures a resveratrol dietary supplement sold under the Longevinex trademark. Resveratrol is a well-known phytoalexin (antibiotic produced by plants) that is found in the skin of red grapes and also in red wine. Resveratrol has been shown in scientific studies to extend the lifespan of laboratory animals and demonstrated anti-cancer activity therein. Studies have begun and are continuing with humans, but it’s already being marketed in pill-form as a dietary supplement with those health benefits.

Plaintiff alleges that Defendant maintains the website as a purported product review and evaluation service. Plaintiff contends, however, that the website is sponsored or funded by Plaintiff’s competitors, which competitors are fully aware of the false statements regarding the price or quality of Plaintiff’s Longevinex product. Plaintiff further contends that Defendant’s use of Plaintiff’s Longevinex trademark in the false comparisons constitutes trademark infringement. The case is Resveratrol Partners, LLC v. Jon Mayne, CV 09-6536 FMC (C.D. Cal. 2009).

Posted On: September 17, 2009

Gunmakers Shoot It Out Over John Rigby Trademark

Los Angeles, CA – The Wild Wild West. A trademark lawsuit gun fight, a duel, if you will, has ensued between John Rigby & Co. (Gunmakers), Inc. of California and John Rigby & Co. (Gunmakers), Ltd. of United Kingdom. Plaintiff makes rifles, shotguns and ammunition which it markets under the following USPTO registered trademarks: John Rigby & Co., Rigby’s, and JR Est. 1735. Plaintiff has also registered its trademarks in the United Kingdom. Plaintiff and its predecessors have made guns since the 1700’s and allege that “Rigby’s quality and reliability has been such that John Rigby & Co. has received Royal Warrants from five British Monarchs dating from the Eighteenth Century to the present day.” A copy of the complaint is available here.


Some of Plaintiff's guns are priced as "Starting at $47,500." Defendant allegedly sells custom made rifles and shotguns under the John Rigby & Co. and JNO. Rigby & Co marks and have registered the domain name Plaintiff alleges that Defendants were aware of Plaintiff’s marks, but “deliberately, willfully, and maliciously used the John Rigby & Co. Marks in order to trade on the goodwill that Plaintiff has attained.” The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) False designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) California trademark infringement; (4) Federal and California trademark dilution; and (5) Unfair competition under California Bus. & Prof. Code § 17200. The case is John Rigby & Co. (Gunmakers), Inc. v. John Rigby & Co. (Gunmakers), Ltd., et al., CV09-06429 VBF (C.D. Cal. 2009).

Posted On: September 14, 2009

Court Denies Copyright Infringement Dismissal Despite Lack Of Copyright Registration

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).

Los Angeles, CA – sued rival website based legal document preparation company, Inc. for copyright infringement, trade dress infringement, and state unfair competition (details blogged here). Defendant moved to dismiss the copyright infringement claim and the § 17200 unfair competition claim (“UCL”) because Plaintiff did not have a copyright registration and had failed to plead an injury in fact. Further, Defendant moved to strike Plaintiff’s demand for statutory damages and attorneys’ fees under the copyright act (17 U.S.C. § 412). Order available here.



After Plaintiff had filed the complaint and nine months after commencement of the alleged infringement, it filed a copyright application with the U.S. Copyright Office. The Court noted that although the Copyright Office had yet to issue the registration, district courts in the Ninth Circuit were split as to whether a plaintiff could maintain its infringement claim while the application was pending: “Compare Loree Rodkin Mgmt. v. Ross-Simons, Inc., 315 F. Supp. 2d 1053 (C.D. Cal. 2004) (Rea, J.) (registration required), and Blackledge v. Cummings, CV 05-7782 PA (Ex) (C.D. Cal. Jan. 6, 2006) (Anderson, J.) (same) with Dielsi v. Falk, 916 F. Supp. 985, 994 n.6 (C.D. Cal. 1996) (Collins, J.) (registration not required) and Gable-Leigh, Inc. v. North Am. Miss, CV 07-1019 MMM (SHx), 2001 WL 521695, at *4 (C.D. Cal. April 13, 2001) (Morrow, J.) (relying on out-of-circuit authority and Dielsi footnote).” The Court agreed with the latter line of reasoning and denied the motion to dismiss the copyright claim. The Court, however, did strike the request for statutory damages and attorney’s fees because Plaintiff held no registration prior to commencement of the alleged infringement.

Defendant asserted that the UCL claim is barred by Proposition 64’s requirement of an injury in fact, as opposed to a disgorgement of a defendant’s profits, and no injunctive relief was sought. The Court agreed and dismissed the UCL claim, also striking Plaintiff’s request for “exemplary damages” under the UCL. The case is, Inc. v., Inc., CV 09-01867 AHM (C.D. Cal. 2009).

Posted On: September 10, 2009

Knight Rider’s KITT Sues To Stop Trademark Infringement And Use Of Its Voice In Navigation Devices

trademark-attorney-kitt-David-Hasselhoff-Knight-Rider.jpgLos Angeles, CA – Wanderlust Media files a trademark infringement and breach of contract lawsuit to prevent a former licensee, Mio Technology, from using KITT’s voice and other deliverables in personal navigation devices (“PND”). Wanderlust licenses and sells certain customized celebrity voices for use in GPS and PND systems. Wanderlust has obtained rights from Universal Studios of certain elements associated with the classic live-action television series entitled “Knight Rider,” including the voice of William Daniels as “K.I.T.T.” – the true star of the show. Sorry David Hasselhoff, but K.I.T.T.’s got the talent, America.

Wanderlust licensed to Mio the navigation voices and other deliverables associated with Knight Rider, including K.I.T.T.’s voice and images. The license was terminated in March 2009 due to alleged non-payment of fees. Wanderlust alleges that Mio did not deny that it owed the fees, but it attempted to negotiate a reduced payment. But after the negotiations failed, Mio was obligated to terminate all use of the licensed deliverables. Mio, however, has allegedly not ceased use of the deliverables, resulting in the instant suit. The case is Wanderlust Media, LLC v. Mio Technology USA Ltd., et al., CV 09-06163 AHM (C.D. Cal. 2009).

Posted On: September 2, 2009

Louis Vuitton Awarded $32.4 Million Against Web Host For Contributory Trademark Infringement

louis-vuitton-v-akanoc-trademark-contributory-infringement-copyright.jpgSan Jose, CA - A jury awarded Louis Vuitton $32.4 million in its contributory trademark and copyright infringement lawsuit against web hosting companies, Akanoc Solutions and Manged Solutions, and their individual owner. A copy of the jury's verdict is available here. Defendants hosted third party websites that were accused of selling counterfeit Louis Vuitton products. A copy of the complaint is available here. Louis Vuitton sent notice to the Defendants demanding that the accused websites be taken down by the hosting companies. The Ninth Circuit has previously extended contributory infringement liability to flea market or swap-meet operators that knew vendors were selling counterfeit goods. Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir.1996). This verdict seems to be an extension of that liability standard to the internet in that the jury found that Defendants knew that websites they hosted were selling counterfeit goods. The jury rejected the Defendants' "safe harbor" defense under the Digital Millennium Copyright Act ("DMCA"). The case is Louis Vuitton Malletier, S.A., v. Akanoc Solutions, Inc., et al., CV07-03952 JW (N.D. Cal. 2007).