Since Christmas is a mere four days away, I wanted to discover a “new and useful” method (35 USC § 101) to relay my Christmas greetings in a novel (35 USC § 102) and non-obvious (35 USC § 103) manner. To make sure that my Christmas wishes did not infringe on any other wishes, I decided to conduct a quick patent search. To my chagrin, due to U.S. Patent No. D472,182, I cannot – without infringing – impart my birthday wishes upon Jesus. And my licensing negotiations having fallen through, I figured I would just wish “Merry Christmas To All.” I wanted to make sure, however, that I didn’t infringe on any third-party trademark rights. Quickly running a search on the USPTO database, I thought my Christmas wishes would once again be thwarted by trademark application number 74/455073 for the “Merry Christmas To All” trademark. But my worries quickly dissipated because the application has long been abandoned. Thus, hoping that Santa does not bring me a common-law trademark lawsuit, “Merry Christmas To All and To All A Goodnight.” Note to self: copyright clearance.
Jury Finds For Larry Flynt/Hustler On Trademark Infringement, But For Nephews On Rights Of Publicity
Los Angeles, CA – Larry Flynt sued his former employees and nephews, Jimmy Flynt, Jr. and Dustin Flynt, for trademark infringement for using the family name in their upstart pornography company. Details blogged here. Larry Flynt also made a claim for violation of his rights of publicity under California Civil Code § 3344. On January 9, 2009, the Court preliminarily enjoined the nephews from using the “FLYNT” mark alone with the distribution of adult material, but allowed the nephews to use their first names in association with their family name on the same products. Details blogged here.
After a three day jury trial, Larry Flynt may have won the battle, but lost the war. LA Time article, here. The jury agreed that the use of the last name FLYNT alone was likely to confuse consumers as to the source of the adult related material and a permanent injunction will issue against the nephews. No monetary damages were sought for the trademark infringement claim. The jury, however, sided with the nephews on Larry’s rights of publicity claim, which contains a mandatory attorneys’ fees provision for the prevailing party. Thus, it looks like Larry will have to pay the nephews’ attorneys’ fees incurred in their defense of the §3344 claim, which they are likely to pursue since Larry allegedly fired their father in retaliation for the sons’ use of the family name. The case is Larry C. Flynt v. Flynt Media Corporation, et al., CV 09-00048 AHM, CV09-8796 JC (C.D. Cal. 2009).
Los Angeles, CA – Randy Stratton’s illustrations are featured in a book entitled “Build This Bong: Instructions and Diagrams for 40 Bongs, Pipes, and Hookahs.” Stratton registered his works with the U.S. Copyright Office. Stratton alleges that Defendant Upper Playground has, without Stratton’s authorization, copied Stratton’s works onto T-shirts sold to the public at large. “Plaintiff has demanded that some or all of the named Defendants cease and desist from all sales and manufacturing of garments incorporating Plaintiff’s copyright work, and cease and desist from printing the copyrighted work without Plaintiff’s consent.” Having allegedly not received a response to his demand that defendants cease their infringing conduct, Plaintiff was forced to file the instant lawsuit accusing defendants of willful and intentional infringement. The case is Randy Stratton V. Upper Playground Enterprises, Inc., CV09-8796 JC (C.D. Cal. 2009).
Los Angeles, CA – Tyler Perry, whose numerous job titles seemingly take up most of the movie trailer (reciting: written by Tyler Perry, directed by Tyler Perry, starring Tyler Perry, produced by Tyler Perry, edited by Tyler Perry, etc.), was sued for copyright infringement by the estate of the late gospel singer Bertha V. James. Plaintiffs allege that James wrote the lyrics for the song “When I Think of the Goodness of Jesus” in 1950, a traditional gospel song, “which was published and copy written (sic.) in 1974 by Elma & Carl’s Publisher, Inc.”
Plaintiffs allege that Tyler Perry “incorporated an entire verse of Plaintiff’s work, willfully without a license within their audiovisual work in a major motion picture feature film entitled ‘Madea Goes to Jail,’ Lionsgate Studios 2008.” Plaintiffs may elect between the profits generated by the defendants or statutory damages under 17 U.S.C. § 504. Plaintiffs also requests that the damages be enhanced because the Defendant’s alleged infringement is willful and intentional. Plaintiffs also seek attorneys’ fees and other costs pursuant to 17 U.S.C. § 505. The case is Estate of Bertha V. The Tyler Perry Company, Inc., et al., CV09-08712 JFW (C.D. Cal. 2009).
Los Angeles, CA – Purse and handbag designer Linea Pelle, Inc. filed a trade dress infringement and unfair competition lawsuit against Sabina Handbags & Accessories, Inc. In 2006, Plaintiff alleges that it created the “Dylan Collection” of handbags that “incorporates certain unique and distinctive designs, ornamentation and embellishments that, as a whole, have become the iconic and signature look of the Dylan Collection,” which it defines as follows:
Sound like a square peg in a round hole? Assuming Plaintiff can establish secondary meaning before the infringement began, the definition sounds like a constrained extension of trade dress law. Why not seek design patent protection and avoid the challenges of establishing trade dress rights? But I digress. Plaintiff’s purse incorporating the alleged trade dress is pictured below.
Defendant’s accused product is pictured below.
The case is Linea Pelle, Inc. v. Sabina Handbags & Accessories, Inc., CV 09-8450 JSL (C.D. Cal. 2009).