Posted On: June 25, 2010

True Religion On the Wrong End Of A Horseshoe Trademark Cancellation & Infringement Lawsuit

trademark-true-religion-horseshoe-duff-lawsuit-cancellation.jpgPlaintiff Philip Duff is suing True Religion jeans for copying his horseshoe pocket design that he registered with the U.S. Patent & Trademark Office in 1995, long before True Religion began using the horseshoe design on its jeans. According to the complaint filed in the U.S. District Court in Los Angeles, Duff began using the horseshoe design trademark on jeans in the mid 80’s.

Duff alleges that while True Religion was developing its jeans in September of 2002, its CEO received a copy of Duff’s trademark registration record from the USPTO and was fully aware of Duff’s senior rights. Also, on December 10, 2003, its COO allegedly received another copy of Duff’s trademark registration record. “Despite such knowledge, Defendants proceeded to use in commerce on their jeans a ‘horseshoe’ design that is confusingly similar to Plaintiffs’ mark.” Defendants are also accused of describing their trademark as a modified “U” in their USPTO trademark applications and failing to disclose to the trademark examining attorney that they were fully aware of Duff’s prior registration.

Duff is asking the Court to cancel True Religion’s “horseshoe” design trademark because it was obtained by fraud. In addition, Duff seeks undisclosed monetary damages for the infringement and a permanent injunction preventing True Religion’s continued use of the horseshoe design. The case is Philip Andrew Duff, et al. v. Guru Denim, Inc. et al., CV10-4611 ODW (C.D. Cal. 2010).

PRACTICE NOTE: I always found it odd that in its counterfeiting lawsuits (here and here) True Religion always mentioned its design patent for the horseshoe design, but would never assert a cause of action for patent infringement. Now that it appears True Religion was allegedly aware of prior art that was not disclosed to the Patent Office, its decision to forego patent infringement claims becomes lucid.

Posted On: June 23, 2010

Odd Rods Cartoon Trading Cards And Stickers In Copyright and Trademark Dispute

trademark-copyright-lawyer-odd-rods-infringement-invalidity.jpgLos Angeles, CA – Cartoonist/illustrator B.K. Taylor created the Odd Rods group of trading cards and sticker series in 1969 for the Donruss company. The theme for the cartoons was monsters driving cars, hot rods, and motorcycles. Around 2006, Plaintiff DZ Hart allegedly acquired the copyright and trademark rights to the collection. Subsequently, DZ Hart and Taylor entered into a consulting agreement for Taylor to design artwork for DZ. Plaintiff alleges that no products were created as a result of the agreement and it was terminated in January of 2009.

DZ then contracted a third-party to work on the project, which third party was contacted by Taylor’s attorney in June of this year and notified of Taylor’s claim of ownership in the Odd Rods intellectual property. Taylor allegedly sent the third-party a discussion draft of a proposed cooperation agreement between Taylor and EZ, which EZ claims is unenforceable because it was not executed. DZ alleges that Taylor never had exclusive rights to the disputed intellectual property and, if Taylor ever had any, the rights have lapsed due to abandonment and/or termination of all such rights and are now in the public domain. DZ has filed the declaratory judgment action asking the Court to rule that Taylor has no intellectual property rights in the Odd Rods characters. A copy of the complaint is available here. The case is DZ Hart Ltd. Liability Co., v. B.K. Taylor, CV10-4489 PSG (C.D. Cal. 2010).

Here's the promotional video that also provides a history of "Odd Rods" narrated by Scott Baio:

Posted On: June 21, 2010

Forever 21 Sues Forever 26 For Trademark Infringement and 15 USC § 1125 Unfair Competition

lanham-act-15-usc-1125-unfair-competition-trademark-forever-21-26.jpgLos Angeles, CA – Forever 21 is the ubiquitous clothing and accessories retailer that began doing business in 1989. Forever 21 is the owner of numerous USPTO registrations for its “21” family of trademarks, including “Forever 21”, “XXI” and “XXI forever”.

In December of 2009, Plaintiff asserts that it demanded that Defendant immediately stop using Plaintiffs’ trademarks on clothing and to remove the Forever 26 sign from its retail outlet. Defendant allegedly agreed to do so, but Plaintiff claims that it recently obtained evidence of Defendant’s continued use of Plaintiff’s marks. Thus, the instant lawsuit was filed for trademark infringement, unfair competition under the Lanham Act § 43(a) (15 U.S.C. §1125(a)), and dilution.

This is not Forever 21’s first court rodeo, but it’s one of the few as a Plaintiff. As Stylist.com put it: “Forever 21 has been sued for copyright infringement so many times, we've lost count.” The case is Forever 21, Inc. v. Forever 26, CV10-4331 CBM (C.D. Cal. 2010).

Posted On: June 15, 2010

Twilight Saga: Bella And Twilight Clothing Unleashes Trademark And Copyright Infringement Lawsuit

Los Angeles, CA – Summit Entertainment is the producer and distributor of the highly successful Twilight motion picture franchise, including The Twilight Saga: New Moon, and the soon to be released Eclipse. The movies are about a teenage girl, Isabella (Bella”) Swan, who falls in love with a vampire, Edward Cullen. Bella’s other suitor in the film is Jacob Black, a werewolf, which love triangle always makes for a good motion picture franchise. Summit is the owner of several federally registered trademarks for “TWILIGHT” and also owns the trademark for “BELLA”, which trademarks have been used for clothing. Summit is also the copyright owner in the promotional image (shown below) depicting the character Bella from the Twilight movies.

twilight-bella-jacket-trademark-copyright-infringement-lawsuit-attorney.jpg

Defendants B.B. Dakota, Modcloth, and Metropark are accused of selling jackets using the “Twilight” and “Bella” trademarks in conjunction with the Bella image without authorization. Summit not only seeks Defendants’ profits from the sales of the allegedly infringing products, but also asks the Court to treble the damages because Defendants are accused of intentional infringement. The case is Summit Entertainment, LLC, v. B.B. Dakota, Inc., CV10-4328 GAF (C.D. Cal. 2010).

Posted On: June 14, 2010

Here’s Looking At Humphrey Bogart’s Right of Publicity and Trademark Infringement Lawsuit

trademark-right-publicity-humphrey-bogart-furniture.jpgLos Angeles, CA – Humphrey Bogart appeared in more than seventy motion pictures, including classics such as Casablanca, The Maltese Falcon, and The African Queen. Bogart, LLC, the plaintiff in the case, is the successor-in-interest of all intellectual property rights and assets associated with Humphrey Bogart, which rights were acquired from his children. Bogart owns a USPTO trademark registration for the trademark “BOGART” for use in connection with the sale of furniture. Bogart has previously licensed the trademark to Thomasville for a line of furniture products using the name and the trademark “Bogart.”

Defendants Plummers, Inc., Scandinavian Desings, Inc. and Dania , Inc. are allegedly affiliated companies that are accused of using the name and trademark “Bogart” without authorization in connection with a line of furniture. Plaintiff claims that Defendants advertising used the “Bogart” trademark along with copy referencing a “great retro design” and in a “deco style” to create a false association because it conjures up memories of the “style in the 1940’s and 50’s when Humphrey Bogart was the world’s most popular, acclaimed and sought-after motion picture actor.” Plaintiff asserts causes of action for misappropriation of right of publicity (Cal. Civ. Code §3344.1), trademark infringement, unfair competition under the Lanham Act, and trademark dilution. The case is Bogart, LLC v. Plummers, Inc. et al., CV10-4151 GAF (C.D. Cal. 2010).

Posted On: June 9, 2010

Court Dismisses Dr. Dre’s Lanham Act & Right Of Publicity Claims Against Death Row

lanham-act-right-publicity-dr-dre-chronic-relit-court-dismiss.jpgLos Angeles, CA – Dr. Dre sued the new Death Row records for breach of contract, trademark infringement, false advertising, violation of the right of publicity, and unfair competition. Details blogged here, and read the complaint here. Dr. Dre alleged that he’s owed royalties on his music album “The Crhonic,” and others, and that defendants have released a “remastered” version of the album, “The Chronic Re-Lit & From the Vault”, as well as a “Greatest Hit” album without his permission.

The Court denied the motion as to the breach of contract and constructive trust causes of action. The Court, however, dismissed the Lanham Act causes of action because the Court noted that Dr. Dre did not plead that the alterations made to the work were substantial enough to trigger the “Monty Python” rule. Gilliam v. American Broadcasting Cos., Inc., 538 F.3d 14, 18 (2d Cir. 1976) (editing of “Monty Python” show for television broadcast constituted authorship or endorsement of a substantially modified version of the work to constitute trademark infringement). The Court continued:

As to plaintiff’s allegation that defendants have used his name and likeness, including the original photograph from the jacket cover of “The Chronic,” the Court finds that these allegations fail to state a claim that defendants have over-represented plaintiff’s contribution to “Re-Lit,” given that defendants accurately identify plaintiff as the author of the original masters and that defendant used a substantially same photograph from the original album jacket cover, and did not use a current picture so to imply that plaintiff recently contributed to the re-issued album.

Similarly, the Court dismissed the right of publicity claim because “plaintiff has failed to sufficiently allege that defendants’ use of his name and likeness is more than incidental to the protected publication of his albums, and thus defendants’ use is protected by the First Amendment. See Page v. Something Weird Video, 960 F. Supp. 1438, 1442-43 (C.D. Cal. 1996) (finding that defendant’s use of plaintiff’s likeness was protected by the First Amendment because the advertisement was incidental to the protected publication of the film videos).”

The unfair competition claim was also dismissed because the elements are similar to a trademark infringement claim under the Lanham Act. See Acad. of Motion Picture Arts & Scis. v. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir. 1991) (“An action for unfair competition under Cal. Bus. & Prof. Code §§ 17200 et seq. is substantially congruent to a trademark infringement claim under the Lanham Act.”). Order available here.

The dismissal was without prejudice subject to an amended complaint being filed within 30 days. The case is Andre Young v. Wideawake Death Row Entertainment, LLC et al., CV10-01019 CAS (C.D.Cal. 2010).

Posted On: June 7, 2010

Baby Products Maker Seeks Patent Declaratory Judgment For Snack Catcher

patent-infringement-declaratory-judgment-baby-products-munchkin-snack-catcher.gifLos Angeles, CA – Baby products maker, Munchkin, Inc., wants the Court to rule that its Snack Catcher product does not infringe U.S. Patent No. 6,656,514 (“the ‘514 patent”). It also seeks declaratory judgment of invalidity. The product at issue is a container with several flexible flaps that form the lid and allow a user's hand to be inserted through the flaps to pull out a snack. In the event that the container is tipped over, the flaps prevent the snacks from falling out.

The complaint alleges that Defendant Venita Tubbs has threatened, via her attorney’s cease and desist letter, Munchkin with a patent infringement lawsuit unless it stops selling the Snack Catcher product. Instead of operating under a cloud of uncertainty, Muchkin has taken matters into its own hands and filed suit to adjudicate this dispute. The case is Munchkin, Inc. v. Venita Tubbs, CV10-4074 RSWL (C.D. Cal. 2010).

Posted On: June 1, 2010

“Torture Room” Movie and Screenplay Copyright Infringement Lawsuit Filed

copyright-lawyer-movie-screenplay-torture-room.jpegLos Angeles, CA – Randles Films is the owner of the copyright registrations in the original “Torture Room” screenplay and the revisions thereto. Randles also produced the movie and also registered the copyright therefor. Defendants Quantum, Moviebank, and Bridge Entertainment are accused of wrongfully copying and distributing the movie. Randles also accuses the Defendants of infringing its unregistered “Torture Room” and “Cerebral Experiment” trademarks by applying them to the packaging. The case is Randle Films, LLC v. Quantum Releasing, LLC, et al., CV10-3909 SJO (C.D. Cal. 2010).