Posted On: February 28, 2010

TMZ Sued For Copyright Infringement Over Video Interview With Michael Jackson’s Ex-Wife

copyright-attorney-tmz-michael-jackson-copyright-infringement.jpegLos Angeles, CA – Celebrity gossip and news website TMZ is being sued by Marc Schaffel Productions for using copyrighted video footage of Michael Jackson’s ex-wife, Debbie Rowe, without authorization. (Here's a copy of the copyright infringement complaint). Schaffel interviewed Rowe in 2003, portions of which were publicly aired in the same year. On January 31, 2004, the Santa Barbara County Sheriff’s office obtained the entire footage – including confidential, never released outtakes – from Schaffel’s house pursuant to a court order issued in the molestation trial.

On July 20, 2009, after Michael Jackson’s death, TMZ is accused of broadcasting confidential outtakes of the interview with Rowe where she jokes about using sedation to combat stage fright. “Schaffel and Rowe were stunned and distressed that TMZ, in a misguided attempt at gallows humor, broadcast the Confidential Outtakes, attempting to tie a 2003 joke by Rowe about drug use to Mr. Jackson’s tragic 2009 death from a drug overdose.” Four days later, TMZ removed the footage upon Schaffel and Rowe’s request and allegedly identified the Sheriff's office as the source of the confidential footage. The Sheriff’s office denied the accusation and TMZ then refused to identify the source of the footage: “TMZ asserts that its status as a ‘news’ provider exempts it from respecting copyrights, permits it to broadcast purloined material, and insulates it from liability for lying about sources of illicitly obtained materials.”

Schaffel asserts causes of action for copyright infringement and conversion under California law. The case is F. Marc Schaffel Productions, LLC v. TMZ Productions, Inc. et al., CV10-01306 GHK (C.D. Cal. 2010).

Posted On: February 24, 2010

Court: NBC's "My Name Is Earl" Does Not Infringe Mark Gable's "Karma!" Copyright

copyright-lawyer-copyright-infringement-my-name-is-earl.jpgLos Angeles, CA - The District Court granted NBC’s motion for summary judgment of non-infringement in the “My Name Is Earl” copyright infringement lawsuit. (Order available here). Mark Gable filed a copyright infringement lawsuit (details blogged here) claiming that the “My Name Is Earl” television show was based on his copyrighted “Karma!” screenplay. (Details blogged here). Gable complained that he and his girlfriend sent his screenplay to The Gersh Agency in 1995, and that Ken Neisser, one of the Gersh agents who later represented Gergory Garcia, the subsequent creator of Earl, at another agency provided Garcia with a copy of Gable's screenplay.

To show copyright infringement, Plaintiff had to show Defendants had access to the “Karma!” screenplay and that the works were substantially similar. The Court found that Plaintiff failed to show that Garcia had access to “Karma!”:

In sum, even generously assuming that Plaintiff’s submission of Karma! actually reached Gersh, the record is insufficient to allow a reasonable jury to infer that Garcia had access to Karma. Thus, summary judgment for Defendants is appropriate. Finally, even if the weak evidence of access were sufficient to create a triable issue of fact, Plaintiff would still have to present evidence allowing reasonable minds to conclude that Karma! and Earl are substantially similar.

To determine whether the two works were substantially similar, the Court applied the Ninth Circuit’s two-part test consisting of extrinsic and intrinsic components. In the extrinsic test, the Court considered whether the works share a similarity of ideas and expression as measured by external, objective criteria that includes “the articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.” On summary judgment, the intrinsic test is inapplicable because it requires a lay person – the juror – to determine whether the “total concept and feel” of the two works is substantially similar – without the aid of expert testimony.

Although Plaintiff had hired David Nimmer – a copyright law expert – to provide an analysis of the objective criteria, the Court found that Nimmer’s report was not admissible under FRE 702 because he was not qualified to render an expert opinion on the issue of substantial similarity between two literary works, even though his expertise and education in copyright law is beyond reproach.

The Court then proceeded to analyze the two works and first found that although the two works share similar unprotectable themes, i.e. karma and redemption, the expression of those themes is markedly different. Beyond the general plot idea that both protagonists win the lottery, the Court found little in common. The Court also found that the sequence of events, excluding the karmic realization followed by the main character making amends for previous bad acts, were considerably different. Further, the Court found that the characters were dissimilar, other than the unprotectable general themes of karma and redemption. The setting for each work is different, Earl taking place in the suburban town of Camden and Karma! set in the slums of New York city. The mood and pace were also different because Earl is paced for half-hour long episodes, whereas Karma! is paced as a full-length feature film. The dialogue is also dissimilar in that Karma! is full of hard-core street vernacular that is unique to plaintiff’s work and has no counterpart in “Earl.” As a result, the Court granted NBC’s summary judgment of non-infringement finding that “even assuming arguendo that there is a triable issue regarding access, no reasonable jury could conclude that Karma! and Earl are substantially similar.” The case is Mark Gable v. National Broadcasting Company (“NBC”) and Gregory Thomas Garcia, CV08-04013 SVW (C.D. Cal. 2008).

Posted On: February 21, 2010

Red, Red Wine Trademark Infringement Goes To My Head

trademark-attorney-wine-winery-santa-barbara.jpgLos Angeles, CA – Santa Barbara Winery sued Foster’s Wine Estates for trademark infringement, unfair competition and cancellation of trademark registration. Plaintiff alleges that it has used the “Santa Barbara Winery” trademark since 1962, but has not – for almost 50 years – sought to register its trademark with the USPTO. Plaintiff should have read our article. The Defendant, on the other hand, has immediately sought to register its “Santa Barbara Wine Company” trademark with the USPTO, which mark shall shortly register on the Supplemental Register. Defendants would have also benefited from our article by selecting a strong trademark that would immediately register on the Principal Register.

Plaintiff alleges that “in using the mark and label ‘Santa Barbara Wine Company’ in connection with wine offered for sale in commerce, Defendant has intentionally sought to infringe upon Plaintiff’s Santa Barbara Winery trademark, to cause confusion and mistake amongst consumers, the trade, and those who come into post-purchase contact with its goods, as to whether its goods are connected, affiliated or associated with Plaintiff, and to re-direct confused consumers to products Defendants are selling that are not affiliated with Plaintiff.”

I only recently learned that the UB40 “Red Red Wine” song was actually written by Neil Diamond. Here’s Neil Diamond’s version:

I enjoy UB40’s version more:

The case is Santa Barbara Winery, Inc. v. Foster’s Wine Estates Americas Company, CV10-1026 JHN (C.D. Cal. 2010).

Posted On: February 19, 2010

Court Dismisses Carroll Shelby’s Trademark and Trade Dress Lawsuit Against Factory Five Racing

trade-dress-infringement-lawsuit-type-65-coupe-factory-five-kit-carroll-shelby.bmpCar racing legend Carroll Shelby sued Factory Five Racing in California last year for trademark and trade dress infringement (details here). The District Court in Los Angeles granted Factory Five’s motion and transferred the case to Massachusetts (details here and here). The Massachusetts District Court has now dismissed Shelby’s Daytona Coupe trade dress action with prejudice (it cannot be re-filed) and has dismissed the rest of the complaint without prejudice. The Court, however, declined to dismiss Shelby’s lawsuit against co-defendant Internet Community Partners, LLC – doing business as (Order is available here).

With respect to the Daytona Coup trade dress infringement claim, the Court held that it was barred by doctrine of res judicata and the terms of the settlement agreement:

In this case, the settlement agreement resolved the Type 65 trade dress claims and did not bar FFR from using the Type 65 kits, which have apparently not broadened or changed in the intervening years. Under the settlement agreement, “Shelby dismisse[d] with prejudice all claims that have been asserted or could have been asserted relative to the trade dress or designs of FFR’s kits, including but not limited to the kits known as the 427 Roadster and the Type 65 Coupe.” (FFR’s Mem., Ex. B ¶ 9 (emphasis added).) Shelby’s argument that the first suit only involved the 427 S/C contradicts the plain language of the settlement, which dismissed all claims “relative to the trade dress or designs of FFR’s kits” involving Factory Five’s Type 65 Coupe, not merely those relating to the trade dress of the 427 S/C. Moreover, the Final Judgment included numerous, specific references to both the name and design of the Daytona Coupe.

As to the rest of Shelby’s trademark and unfair competition claims, the Court dismissed them because Shelby failed to provide proper notice and opportunity to cure as mandated by the settlement agreement, but because Factory Five alleges that it has removed all hyperlinks and metatags complained of, refiling should be futile:

In light of Shelby’s failure to comply with the notice and cure provision of the settlement agreement, the remaining claims against it will be dismissed without prejudice to provide the requisite thirty day opportunity to cure and allow the parties a chance to resolve this dispute in accordance with it.

Internet Community Partners did not fare as well at this early stage of litigation, but it appears that the Court indicated that defendants have a valid First Amendment and fair use defense:

To be sure, use of a name in a forum may be in good faith or protected by the First Amendment. However, when all reasonable inferences are drawn in Shelby’s favor, dismissal on that basis is not warranted at this early stage of the litigation.

The case is Carrol Shelby et al. v. Factory Five Racing, Inc. et al., 09-CV-10281-PBS (D.Mass. 2009).

Posted On: February 18, 2010

Trivitis Sues Ocean Spray For Patent Infringement, Twombly and Iqbal Loom

patent-attorney-cranergy-twombly-iqbal.pngSan Diego, CA – Trivitis, Inc. sued Ocean Spray for patent infringement alleging that its Cranergy™ drink infringes U.S. Patent No. 6,562,864. Read the complaint here. The ‘864 Patent is entitled “Catechin Multimers as Therapeutic Drug Delivery Agents” and was issued on May 13, 2003. Catechin is an antioxidant or flavonoid and is found in tea leaves. The patent basically covers the treatment of heart and valve disease by administration of these antioxidants, sometimes in combination with other drugs.

The complaint, however, does not appear to provide sufficient information to pass a Rule 12 motion to dismiss. In 2007, the Supreme Court’s Twombly decision stated that under Rule 8(a)(2) a plaintiff’s obligation to provide the grounds for relief “requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007). In 2009, the Supreme Court’s Iqbal decision expanded the application of Twombly to all civil cases. Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009). Thus, a complaint will be dismissed under Rule 12(b)(6) if it fails to meet the Twombly pleading standard. See e.g. Anticancer, Inc. v. Xenogen Corp., 248 F.R.D. 278 (S.D. Cal. 2007)

The case is Trivitis, Inc. v. Ocean Spray Cranberries, Inc., 10CV0316 JM (S.D. Cal. 2009).

Posted On: February 15, 2010

Dr. Dre Sues Death Row Records, Now Owned By A Trademark Attorney – That’s Gangsta

trademark-attorney-dr-dre-death-row-records-world-class-wreckin-cru.jpgLA, CA – Dr. Dre, whose real name is Andre Young, sued the new Death Row records for trademark infringement, breach of contract, violation of the right of publicity, and unfair competition. The complaint claims that nothing has changed at Death Row: “meet the new boss, same as the old boss” and alleges:

Whether you get thugged or the check just doesn't come, it's all the same -- someone else has your money. And whether it's a platitude-spouting, self-proclaimed soccer mom or a supposed gangster who isn't paying you, it doesn't change the fact that you're not getting paid. Read the complaint here.

The rap star and record producer co-founded Death Row records in 1991 with Marion “Suge” Knight and began the gangsta rap movement. Few, however, remember Dr. Dre’s “less Gangsta” side when he was on the turntables for the World Class Wreckin Cru – but I digress. The parties verbally agreed that in exchange for payment of royalties to Dr. Dre, Death Row received a non-exclusive license to release sound recordings that he produced, composed and/or performed on. Dr. Dre’s first record release under the Death Row label was “The Chronic” in 1992, which was a huge success.

By 1996, Dr. Dre wanted to "escape" Death Row and entered into a written agreement where Dr. Dre would relinquish his 50% ownership interest in Death Row and assign all copyrights in his recordings. However, the copyrights were assigned to the extent that the “master recordings shall only be distributed in the manners heretofore distributed.” In return, Death Row agreed to pay royalties to Dr. Dre from the sales of the sound recordings that he wrote, produced, or performed on. The transfer included other smash hits such as Doggystyle, Murder Was the Case, and Above the Rim.

In 2006, Death Row filed for Chapter 11 bankruptcy protection and at the bankruptcy auction in January of 2009, Wideawake Entertainment, whose CEO is a trademark attorney, purchased Death Row’s assets. The complaint alleges that in the Spring of 2009, Defendants were put on notice that the “1996 Agreement prohibited defendants from releasing The Chronic in any manner in which it was not distributed prior to the 1996 Agreement.” Dr. Dre further alleges that defendants brazenly ignored the agreement and released an album and DVD entitled The Chronic Re-Lit & From the Vault. The release of “Re-Lit” is “a calculated breach of the 1996 Agreement; a willful violation of plaintiff’s rights to his name and likeness, and his trademark, “Dr. Dre”…; and a fraud on the public…”

Dr. Dre also claims that Defendants have breached the agreements by failing to pay him royalties since 1996, by digitally distributing The Chronic, and including his recordings in a compilation album entitled “Death Row’s Greatest Hits.”

Does “fear for your life” excuse a thirteen-year delay in filing a breach of contract lawsuit and overcome the statute of limitations issue? Subpoena Vanilla Ice regarding negotiations with Mr. Knight.

The case is Andre Young v. Wideawake Death Row Entertainment, LLC et al., CV10-01019 CAS (C.D.Cal. 2010).

Posted On: February 7, 2010

Marc Jacobs Sues Christian Audigier’s Company For Trade Dress and Trademark Infringement

trademark-trade-dress-attorney-tote-bags-marc-jacobs-ed-hardy.jpgLos Angeles, CA – Designer Christian Audigier’s Nervous Tattoo, Inc. is being sued by Marc Jacobs’ company for trade dress and trademark infringement over purse designs. Marc Jacobs designs apparel and accessories, including purses, and has a pending application for its random “Marc Jacobs” scrambled trademark. Marc Jacobs has applied the scrambled trademark to the inside lining of the “Marc Jacobs Pretty Nylon” tote bag. And the tote bag’s “size, shape, color or color combinations, product design, texture, and selection and arrangement of materials and accessories” are claimed to serve as its trade dress.

Plaintiffs accuse Defendants of selling tote bags that “bear trade dress that unlawfully copies or imitates Plaintiffs’ unique, distinctive, and non-functional Marc Jacobs Pretty Nylon Tote Trade Dress and/or that unlawfully bear marks confusingly similar to the Marc Jacobs Scrambled Trademark.” In addition, Plaintiffs assert claims for unfair competition under Cal. Bus. & Prof. Code § 17200 and constructive trust.

Since the parties’ products apparently bear their respective trademarks, it will be interesting to see if customers are confused about the source of the products. See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1045-46 (2nd Cir. 1992) (holding that prominently displayed trade names on the respective products "weigh[ed] heavily against a finding of consumer confusion resulting from the overall look of the packaging") (preliminary injunction denied).

The case is Marc Jacobs Trademarks, LLC et al. v. Eagles Clubs International, Inc., et al., CV10-00456 CBM (C.D. Cal. 2010).

Posted On: February 2, 2010

Major League Baseball Sues Upper Deck For Trademark Infringement And Unfair Competition Over Baseball Trading Cards

trademark-attorney-major-league-baseball-sues-upper-deck-infringement-contract-license.pngNew York -- Major League Baseball Properties sued the Upper Deck Company for trademark infringement, trademark dilution, unfair competition, and breach of contract because Upper Deck continues to print baseball trading cards after its license was terminated. A copy of the complaint is available here. MLBP pulls no punches and extensively refers to the recent Court ruling that Upper Deck counterfeited hundreds of thousands of Yu-Gi-Oh! trading cards, its agreement to a multi-million dollar settlement and permanent injunction (details here).

MLBP ended its twenty-year relationship with Upper Deck and entered into an exclusive agreement with Topps "to use the MLB trademarks on trading cards for retail distribution beginning on January 1, 2010." MLBP also alleges that Upper Deck failed to pay in excess of $2 Million under its prior licensing agreement. "Notwithstanding the expiration of the Upper Deck License Agreements as of October 31, 2009, and the absence of any new license from MLBP authorizing the use of the MLB Marks, Upper Deck has begun manufacturing, distributing, offering for sale, and selling at least three trading card sets featuring cards using the MLB Marks, including, without limitation, the MLB Uniform Trade Dress and MLB Caps and Helmet Logos." In addition to monetary damages, MLBP seeks to enjoin Upper Deck's manufacture and sale of the 2009 Signature Stars Series, 2009 Ultimate Collection Series, and 2010 Unauthorized Series I trading cards.

All may not be lost for Upper Deck, however, because it could rely on the denial of preliminary injunction ruling in the similarly situated Pacific Trading Card case. The case is Major League Baseball Properties, Inc. v. The Upper Deck Company, LLC, 10-cv-732-RWS (SDNY 2010).