Posted On: April 28, 2010

InStyler® Hair Brush Products Subject of Copyright and Trademark Infringement Lawsuits

copyright-attorney-trademark-instyler-hair-beauty-product.jpgLos Angeles, CA – Tre Milano is the owner of the InStyler® trademark and several copyrights used in the sale and advertising of its hair styling product, including a copyright registration for its www.getinstyler.com website. You may have seen one of its infomercials for its “rotating iron” hair brush, a hair product that combines a hair brush and rotating hot iron to curl, straighten, and style hair. Since its first sale in June of 2008, Plaintiff contends that it has spent $30,000,000.00 to air its television infomercials and $5,000,000.00 on print and internet advertising. As a result, Plaintiff asserts that its trademark has become famous.

Plaintiff asserts that its investigator purchased an “InStyler” rotating hot iron from Defendants’ eBay listing for $65.99, which was charged to the investigator's PayPal account. In advertising and selling the "InStyler" products, Plaintiff further contends that Defendants use images that infringe on Plaintiff’s copyrights and use trademarks that are confusingly similar to Plaintiff’s. In addition to the trademark and copyright infringement causes of action, Plaintiff also asserts Lanham Act and § 17200 unfair completion, trademark dilution, accounting, and unjust infringement causes of action. The case is Tre Milano, Inc. v. Daryl Ewald et al., CV10-2849 SVW (C.D. Cal. 2010).

Posted On: April 26, 2010

Automotive Racing Sues Procomp Motorsports for Trademark Infringement

trademark-attorney-car-automotive-bolts-infringement.jpgLos Angeles, CA - Automotive Racing Products manufactures a wide range of bolts, fasteners, and other parts and accessories for automobiles. In 1975, Plaintiff began using the ARP trademark, which was registered with the USPTO on January 19, 1988. Plaintiff is also the owner of the "2000" trademark, which was registered with the U.S. Patent and Trademark Office on February 10, 2004. Plaintiff alleges that its 2000 and ARP trademarks have become well-known in the automotive industry.

Beginning in 2008, Defendants are accused of selling bolts marked with a "2000" label and the bolts were made to look like Plaintiff's products. Plaintiff also alleges that Defendants falsely represented that their infringing bolts were ARP bolts. Plaintiff contends that Defendants were fully aware of Plaintiff's trademarks and have intentionally infringed the marks to unjustly benefit from Plaintiff's reputation. Plaintiff asserts causes of action for trademark infringement, unfair competition under both the Lanham Act and Cal. Bus. & Prof. Code 17200, and unjust enrichment. The case is Automotive Racing Products, Inc. and Procomp Electronics, Inc., CV10-02884 MRP (C.D. Cal. 2010).

Posted On: April 19, 2010

Tour Edge Golf Sued For Infringing Golf Club Head Design Patent

golf-patent-attorney-infringement-tour-edge-v25-driver.jpgLos Angeles, CA – Plaintiff Anthony J. Antonious is the inventor of the “Metalwood Type Golf Club Head,” which is the subject of U.S. Design Patent D499,157. Simply put, a design patent covers the ornamental design or aesthetic configuration of a depicted product. Whereas a utility patent covers the way a product works or is manufactured, e.g. a new club head manufactured to have a larger sweet spot. But I digress. In this design patent case, Plaintiff alleges that Tour Edge’s golf club heads, including the Tour Edge V25, Tour 9 Proto, and Tour Edge Bazooka, incorporate the patented design and infringe the ‘157 patent. Plaintiff further alleges inducement of and contributory patent infringement. The case is Trust of Anthony J. Antonious v. Tour Edge Golf Manufacturing, Inc., CV10-02636 RGK (C.D. Cal. 2010).

Posted On: April 13, 2010

FarmVille, Zynga Poker & Mafia Wars Maker Sues PlayerAuctions.com For Trademark & Copyright Infringement

zynga-farmville-trademark-attorney-copyright.jpgLos Angeles, CA – Zynga Game Network is a social gaming company and provides numerous games, such as Zynga Poker, Mafia Wars, FarmVille, YoVille, Cafe World and Word Twist, that are available on Facebook, MySpace, Friendster, iPhone and iPod Touch, among others. Zynga has several pending USPTO trademark applications for its Mafia Wars, Farmville and Yoville trademarks and several copyright registrations for the games as well. Zynga asserts that its games have been a runaway success, with an increase from 1.3 million daily users in July of 2008 to 9.5 million daily users in May of 2009.

When players sign up with Zynga to play the games, they receive a certain amount of virtual currency, which amount can increase through continued play and purchased directly from Zynga. The virtual currency is then used to purchase virtual goods that are used in the games. The “Terms of Service” prohibit the use of virtual currency or goods for real-world money and Zynga does not authorize any third party to sell virtual currency or virtual goods.

In the lawsuit, Zynga accuses Defendant of allowing users to post and sell virtual currency or virtual goods to be used in Znyga’s games on its playerauctions.com website. Zynga claims that in addition to using Zynga’s trademarks without authorization, Defendant profits from the sale of virtual currency and goods by selling them for real-world money in violation of the “Terms of Service” agreement. Further, Defendant is accused of using images of Zynga’s games without authorization, which use infringes its copyrights. The case is Zynga Game Network, Inc. v. Playerauctions.com, CV10-2576 CBM (C.D. Cal. 2010).

Posted On: April 11, 2010

MGA Sues QVC and Brookstone For Copyright Infringement of its Land Sea RC® Toy

copyright-attorney-mga-entertainment-land-sea-rc-copyright-infringement-qvc.jpgLos Angeles, CA – A copyright infringement lawsuit was filed by MGA Entertainment against QVC, Brookstone, and Rooftop Group USA. MGA claims that it created the Land Sea RC® amphibious vehicle that kids can remotely control. MGA is the owner of two copyright registrations covering the toy designs. MGA alleges that Rooftop “arranged for the manufacture and sale of a product entitled RC Land-and-Sea Mobile” that are sold through retailers such as QVC and Brookstone.

In addition to the copyright infringement claims, MGA asserts unfair competition claims under both Cal. Bus. & Prof. Code § 17200 and California common law. The state causes of action, however, seem to be preempted as they arise from the same operative facts as the copyright claim. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 US 23 (2003); Fractional Villas, Inc. v. Tahoe Clubhouse, 2009 U.S. Dist. Lexis 39522 (S.D. Cal. 2009)(dismissing § 17200 claim because it was preempted by the Copyright Act). The case is MGA Entertainment, Inc. v. Brookstone, Inc., et al., CV10-2463 GW (C.D. Cal. 2010).

Posted On: April 7, 2010

HBO Executives Bitten By TrueBlood Trademark Lawsuit

trademark-attorney-trueblood-true-blood-trademark-lawsuit-hbo.jpgLos Angeles, CA – TI Beverage Group, owner of the www.truebloodwine.com website, sued retailer Hot Topic and HBO executives Sophia Chang and James Costas for trademark infringement and unfair competition. TI makes both alcoholic and non-alcoholic beverages and has used Vampire® as its trademark, in addition to other vampire related marks such as Vamp® and Dracola®. In 2009, TI purchased Trueblood Winery, LLC, which had been in business since 2002.

In 2008, HBO televised the True Blood television show in which the characters drink a fictional drink called Tru Blood. TI alleges that Omni Consumer Products entered into a licensing agreement with HBO to manufacture and sell a blood orange drink labeled Tru Blood in September of 2009. TI previously filed suit and notified the defendants of the alleged infringement and after not discovering the products on the shelves, believed that the product had been scrapped. TI alleges that it recently found the Tru Blood products at Hot Topic and filed the instant trademark infringement lawsuit. The case is TI Beverage Group, Ltd v. Hot Topin, Inc. et al., CV10-02089 RGK (C.D. Cal. 2010).

Posted On: April 5, 2010

Ninth Circuit: Hyundai Entitled To Insurance Defense In Patent Infringement Lawsuit Where Patent Covered Advertising Method

patent-attorney-liability-insurance-coverage-patent-infringement.jpgHyundai’s website had a “build your own vehicle” (“BYO”) feature and a parts catalogue feature. The BYO feature allowed users to build their own vehicle by responding to choices on a menu, including color, pricing, engine, options, etc. Orion IP, LLC sued Hyundai for infringing a patented method for generating customized product proposals for potential customers of an automobile dealer (U.S. Patent Nos. 5,615,342 and 5,367,627). Hyundai sought a defense under its commercial general liability policies, which was denied. Hyundai lost at trial and the jury awarded $34 million in damages to Orion.

Hyundai then sued its insurers National Union Fire Insurance and American Home Assurance Company in the Central District of California, where it lost on summary judgment because the district court ruled that patent infringement did not constitute “advertising injury” and was not covered under the liability policies. Further, the district court held that Hyundai was “unable to demonstrate a causal connection between its advertising[] and Orion’s alleged injury.”

The California Supreme Court has specified three required elements to establish a duty to defend for an “advertising injury” claim:

[I]n order for [Hyundai] to have a reasonable expectation of coverage under [Defendants’] policy for “advertising injury” [it] must show that: (1) [it] was engaged in “advertising” during the policy period when the alleged “advertising injury” occurred; (2) [Orion’s] allegations created a potential for liability under one of the covered offenses (i.e., misappropriation of advertising ideas); and (3) a causal connection existed between the alleged injury and the “advertising.”

There was no dispute whether the advertising occurred during the policy period. The Court found that Orion had alleged “advertising injury” in that Hyundai’s BYO feature constituted “marketing methods, marketing systems” that fit within the definition of advertising.

The Ninth Circuit then determined that Orion’s patent infringement claim constituted a “misappropriation of advertising ideas.”

Orion patented a method of displaying information to the public at large for the purpose of facilitating sales, i.e., a method of advertising. And Orion’s complaint alleged that Hyundai violated that method patent by using the patented techniques as part of its own “marketing method” or “marketing system.” In other words, Orion patented a “process or invention which could reasonably be considered an ‘advertising idea,’ ” Mez, 90 Cal. Rptr. 2d at 733, and Orion “allege[d] violation of a method patent involving advertising ideas,” Homedics, 315 F.3d at 1141. “In the context of the facts and circumstances of this case,” Mez, 90 Cal. Rptr. 2d at 733, Orion’s patent infringement claim alleged the “misappropriation of advertising ideas.”

With the final “causal connection” factor, there must be a link between the advertisement and the alleged advertising injury. Here, the Court analyzed whether the advertising itself caused the injury – where there is coverage, or the advertising merely displayed an infringing product – where there is no coverage.

Here, the use of the BYO feature in the website is itself an infringement of the patent because it is the use of the BYO feature that violates the patent (and not the design of the car, for instance, or the method of manufacturing the car, or the car’s engine, or anything related to the car for sale). Furthermore, and critically, it is that use that caused the injuries alleged by Orion. See Orion’s complaint (“Hyundai has been and now is directly infringing . . . the ’342 patent . . . by, among other things, methods practiced on its various websites . . . using . . . marketing methods [and] marketing systems . . . covered by one or more claims of the ’342 patent to the injury of Orion.”). Accordingly, there is a direct causal connection between the advertisement (i.e., the use of the BYO feature on the website) and the advertising injury (i.e., the patent infringement). Because the use of the patented method was itself an advertisement that caused the injuries alleged in the third-party complaint, Hyundai has established the requisite causal connection.

Thus, the Court reversed the district court’s grant of summary judgment to the insurers on all claims, and instructed the district court to grant summary judgment to Hyundai on its duty to defend cause of action and to conduct further proceedings on Hyundai’s three other claims. The case is Hyundai Motor America v. National Fire Insurance Company, Case No. 08-56527 (9th Cir. 2010). Copy of the ruling is here.