Posted On: May 26, 2010

Court Grants Preliminary Injunction In “I Love You Phillip Morris” Movie Copyright Case

copyright-attorney-preliminary-injunction-i-love-you-phillip-morris.jpgLos Angeles, CA – EuropaCorp, the motion picture studio behind the “I Love You Phillip Morris” movie, was granted a preliminary injunction in its copyright infringement and breach of contract lawsuit against the distributor Consolidated Pictures Group. Consolidated Pictures had been granted all U.S. domestic distribution rights in the movie, but had allegedly failed to make timely payments under the agreements. Details blogged here.

The Court enjoined Consolidated Pictures from publicly displaying or exhibiting any portion of the movie and attempting to negotiate agreements regarding the distribution, exhibition, or exploitation of the movie. Order available here.

The case is EuropaCorp v. Consolidated Pictures Group, Inc., et al., CV10-2917 DSF (C.D. Cal. 2010).

Posted On: May 24, 2010

Levi Strauss Sues Gardeur Over Pocket Stitching Designs On Jeans

San Francisco, CA – Clothing and jeans giant Levi Strauss owns several USPTO registered trademarks for its arcuate stitching design initially used in 1873, which it alleges is the oldest known clothing trademark in the United States. Based on this long and continued use, Levi Strauss alleges that its trademarks are famous and recognized in the U.S. and around the world.

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Levi Strauss alleges that Defendant Gardeur is manufacturing and selling “clothing that displays stitching designs that are confusingly similar to [Levi’s] Arcuate trademark.” The case is Levi Strauss & Co. v. Gardeur GmbH, CV10-2122 EMC (N.D. Cal. 2010).

Posted On: May 19, 2010

Adidas and Reebok Sue To Protect Their Three Stripe and Stripecheck Trademarks

Los Angeles, CA – adidas and Reebok have teamed up to sue three defendants for trademark infringement arising from the sale of shoes bearing adidas’ three stripe trademark and Reebok’s stripecheck trademark. Adidas alleges that it began using the three-stripe trademark on athletic shoes as early as 1952 and has registered several marks with the USPTO. Reebok alleges a 1975 date of first use for the stylized checkmark and intersecting stripes design mark used on athletic shoes. Reebok has also registered its trademarks with the USPTO.

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Defendants Twin Best, JCK Group, and Skywide International are accused of selling shoes with four stripes and others with an exact reproduction of Reebok’s Stripecheck mark. Plaintiffs allege that “Defendants intentionally designed and manufactured their footwear to mislead and deceive consumers into believing it was manufactured, sold, authorized, or licensed by Plaintiffs.” The case is Adidas AG, et al. v. Twin Best, Inc., et al., CV10-3608 MMM (C.D. Cal. 2010).

Michael Atkins has meticulously covered adidas’ 2 vs. 3 vs. 4 stripe trademark victory against Payless Shoes here.

Posted On: May 16, 2010

Asics Sues Skechers For Trademark Infringement Over Stripes On Shoes

Santa Ana, CA – Asics' trademark is comprised of two horizontal curved stripes intersected by two parallel vertical stripes, which trademark is registered with the U.S. Patent & Trademark Office. Asics has used the stripe design trademark on shoes and apparel – for over forty years – since 1966 and has previously sued Dolce & Gabbana and Steve Madden for using stripe designs that allegedly infringed the trademark.

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Skechers is accused of selling over sixty different shoe styles having the same stripe design as the common denominator. The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. § 1114 [Lanham Act §32(1)]; (2) Federal unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Lanham Act dilution of famous trademark under 15 U.S.C. § 1125(c); (4) Trademark infringement under California law [Cal. Bus. & Prof. Code § 14320]; (5) Trademark infringement under California common law; (6) Trademark dilution under California law [Cal. Bus. & Prof. Code § 14330]; (7) False advertising under California law [Cal. Bus. & Prof. Code §§ 17500, 17535]; and, (8) Unfair competition under state law [Cal. Bus. & Prof. Code §17200 and §17203]. The case is Asics Corporation, et al. v. Skechers U.S.A., Inc., SACV10-00636 AHM (C.D. Cal. 2010).

Posted On: May 9, 2010

9th Circuit: Post Purchase Confusion Defeats “First Sale” Trademark Defense - Appeal

appeal-trademark-attorney-vw-automotive-gold-9th-circuit.jpgThe Ninth Circuit affirmed (copy here) the district court’s trademark infringement ruling in favor of Volkswagon by denying Auto Gold’s “first sale” defense. Auto Gold purchased genuine VW badges from Volkswagon and then mounted the badges on its marquee license plates, which were sold to Auto Gold’s customers.

Despite Auto Gold’s prominent disclaimer on its packaging that the marquee plate was not manufactured by VW, the Court held that “the ‘first sale’ doctrine does not provide a defense because the plates create a likelihood of confusion as to their origin. We do not base our holding on a likelihood of confusion among purchasers of the plates. Rather, we base it on the likelihood of post-purchase confusion among observers who see the plates on purchasers’ cars.”

The Court relied on refurbishment cases where purchasers of refurbished products with non-genuine parts, e.g. Rolex, were purchasing the product for the “Rolex” trademark displayed to others who did not know that the product was re-furbished. Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704 (9th Cir. 1999). Further, the Court ruled that three-year statue of limitations applied to the laches defense. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., No. 08-16005 (9th Cir. 2010).

Posted On: May 5, 2010

Clothing Company Sues Its Former Fashion Designer For Trademark Infringement & Unfair Competition

trademark-attorney-unfair-competition-lawyer-clothing-designer-shades-of-greige.jpgLos Angeles – Fashion Designer Micah A. Cohen has been sued by his former employer, Swarm, LLC. Cohen apparently started the clothing company as a young designer and launched the “Shades of Greige” apparel line. Swarm alleges that Cohen was employed as a fashion designer until November 13, 2009, when he “quit his job with Plaintiff.”

Plaintiff contends that three weeks before Cohen left its employ, Cohen’s mother, Nancy Sidonie Cohen, filed an intent-to-use application with the USPTO to register the mark “Shades of Grey” for use on clothing. In March of 2010, Plaintiff did what it should have done a long time before, i.e. filed its own trademark application to register “Shades of Greige” with the USPTO.

Plaintiff contends that Defendants’ use of the mark “Shades of Grey by Micah Cohen” is likely to confuse customers. Further, “Defendants are utilizing the same designs, patterns, look, pricing, factories and sales representatives used by Plaintiff when Mr. Cohen was employed by Plaintiff, and Defendants are selling the Accused Goods to the same wholesale customers to which Plaintiff sells its goods and has developed valuable business relationships.” Thus, Plaintiff asserts causes of action for trademark infringement, unfair competition, intentional interference with economic relations, breach of duty of loyalty, and declaratory judgment for withdrawal of Defendants’ trademark application. The case is Swarm, LLC v. Micah A. Cohen, et al., CV10-3188 DDP (C.D. Cal. 2010).

Posted On: May 3, 2010

EuropaCorp Sues Consolidated Pictures Over Distribution Of “I Love You Phillip Morris” Movie

copyright-attorney-film-movie-europacorp-consolidated-pictures.jpgLos Angeles, CA – EuropaCorp is a French motion picture studio that produced the feature film “I Love You Phillip Morris,” starring Jim Carrey and Ewan McGregor. In a May 8, 2009 agreement, EuropaCorp licensed to Consolidated Pictures all domestic distribution rights in the movie, including all theatrical, home video, and television rights. In exchange, Consolidated Pictures was to pay a $3 million advance. After the licensing agreement was executed, EuropaCorp alleges that it delivered the movie and marketing materials; however, a dispute arose between the parties as to the timing of delivery. The dispute was addressed by the execution of an amendment to the license agreement in February of 2010.

EuropaCorp now contends that Defendants have breached the agreement by failing to make the installment payments towards the $3 million advance. As a result, EuropaCorp rescinded the agreement and sought return of the movie and marketing materials. EuropaCorp alleges that Defendants have refused to return the movie or acknowledge the rescission of the distribution rights. Thus, the instant copyright infringement and breach of contract suit was filed. The case is EuropaCorp v. Consolidated Pictures Group, Inc., et al., CV10-2917 DSF (C.D. Cal. 2010).

Here's the trailer: