Posted On: December 17, 2010

Summary Judgment Win For Bong Copyright Plaintiff

book-copyright-illustration-summary-judgment-willful-bong.jpgLos Angeles, CA – In yet another case that should have settled quickly (see here), Defendant Upper Playground – who admitted to unabashedly copying the illustrations from Plaintiff’s book – instead attempted to challenge the validity of the copyright registrations. Randy Stratton authored and illustrated the book “Build This Bong: Instructions and Diagrams for 40 Bongs, Pipes and Hookahs”, and obtained separate copyright registrations for the book itself and the underlying illustrations. (Details here.) The Court granted summary judgment finding that Upper Playground willfully infringed the copyrights by providing the book to its T-shirt designer with instructions to copy the illustrations.

The Court then quickly dispensed with Defendant’s perplexing copyright invalidity arguments. Defendant first argued that the illustrations lacked originality because the “diagrams demonstrate various ways to construct a common smoking device without adding anything original to the construction of a bong.” The Court found Defendant’s argument “unavailing as it seemingly conflates copyright protection with patent protection...Originality, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity...It is only the work that need be original, not necessarily the subject of the work.”

Defendant’s second argument disappeared like a puff of smoke, created by use for medicinal purposes only. Defendant’s argued that because a bong is a “useful article”, illustrations thereof are not protected by copyright law. Defendants’ argument, if accepted, would have eviscerated the fashion photography industry because pictures of clothing – defined by the Copyright Act as useful articles – would not be copyrightable. The Court rejected the argument because “even assuming that a bong is a ‘useful article’ (which likely depends on who one asks), Plaintiff’s illustrations are nothing but drawn portrayals of that ‘useful article,’ lacking ‘intrinsic utilitarian function[s]’ of their own.”

Defendant’s third argument, which may have been formulated in a smoke filled room, claimed that Plaintiff committed fraud on the Copyright Office by not disclosing the copyright was to cover “useful articles” and, separately, that photographs of the bongs were photoshopped. The Court held the “useful articles” argument failed because the illustrations were not “useful articles” and because there was no evidence “that Plaintiff’s alleged omissions were made with knowledge and intent to defraud the Copyright Office.”

Defendant finally argued that the illustrations show “a method or procedure for assembling bongs” which cannot be copyrighted because “copyright protection does not extend to any ‘idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied.’” The Court rejected Defendants’ misapprehension of the law by providing the following example: “the process of making wine by crushing grapes is not entitled to copyright protection, but a painting of a person excitedly jumping up and down, barefoot, in a wooden barrel, located in the middle of a vineyard, under the Tuscan sun is.” Applied to the case at hand, the Court found that “Plaintiff did not seek and receive copyright protection for the process of making a bong. Nor is he entitled to sue those people who follow the recommendations in the book and build the bongs depicted. What Plaintiff is entitled to, however, is to seek legal remedies from those people who reproduce, verbatim, the original illustrations he created depicting those bongs. The concept of a bong and the process followed in making a bong are outside the reach of copyright law, but the artistic expression of the concept and process are not. Plaintiff sought protection for the latter, not the former.”

Having found willful infringement of valid copyrights, the only remaining issues are the amount of damages – enhanced for willful infringement – and attorneys’ fees. Read the Order here.

The case is Randy Stratton v. Upper Playground Enterprises, Inc., CV09-8796 PSG (C.D. Cal. 2009).

Posted On: December 13, 2010

Wine Trademark and Trade Dress Dispute – San Antonio Winery Sues Banfi Products

wine-trademark-attorney-bottle-label-san-antonio-banfi.jpgLos Angeles, CA – San Antonio Winery filed a trademark and trade dress declaratory judgment action against Banfi Products. San Antonio’s Stella Rosa Imperiale Brachetto d’Acqui wine is made from Brachetto grapes that are sourced from the D.O.C.G. region of Brachetto d’Acqui. San Antonio has registered its Stella Rosa design trademark with the USPTO. Banfi’s Rosa Regale Brachetto d’Acqui wine is also made from Brachetto grapes sourced from the same region.

Banfi’s cease and desist letter to San Antonio allegedly contended that Banfi had protectable rights in the “combination of the label design and placement, the color scheme, the bottle shape and color, and the wording on Banfi’s product is distinctive or has acquired distinctiveness through secondary meaning such that the designated combination of elements constitutes protectable trade dress and that the designated trade dress is not functional.”

San Antonio disagrees and seeks the Court’s ruling that its wine bottle “does not infringing any valid, enforceable trademark or trade dress rights of Banfi under any provisions of the Lanham Act or constitute unfair competition under any state unfair competition laws.” The case is San Antonio Winery, Inc. v. Banfi Products Corporation, CV10-9245 MMM (C.D. Cal. 2010).

Posted On: December 8, 2010

“Dance Your Ass Off” TV Show Copyright Infringement & Breach of Contract Lawsuit Filed

copyright-infringement-breach-of-contract-dance-your-ass-off.jpgLos Angeles, CA – Writers Jonas Larsen and Anthony Ross are suing Lisa Ann Walter and NBC Universal over the “Dance Your Ass Off” television show. Plaintiffs claim their agents introduced them to Walter, who was the third lead in the movie “Shall We Dance,” to develop a reality television series around Walter. Plaintiffs assert that they are experienced in developing reality shows, having been involved in programs such as America’s Next Top Model, MTV’s Fear, Temptation Island-International, and I Can’t Believe You Said That!

After meeting with Walter in 2005, Plaintiffs assert that they promptly created and pitched the concept of a reality television series where contestants would dance to lose weight and suggested the name “Dance Your Ass Off”. Plaintiffs assert that they created the series format and wrote the treatment and had pitch meetings with Bravo, Oxygen, VH1, Fox, and E!, with E! showing the most interest. The E! executive assigned to the project left her post, effectively extinguishing the possibility of E! ordering the series.

In December of 2008, Plaintiffs discovered that Oxygen Network had developed a show called “Dance Your Ass Off”, with Walter associated with the project. Plaintiffs allege that they attempted to resolve the dispute with Walter and NBC, but Defendants denied that Plaintiffs were the creators of the series. As a result, the instant copyright infringement and breach of contract case was filed. The case is Larsen, et al. v. Walter, et al. CV10-9325 GAF (C.D. Cal. 2010).

Posted On: December 5, 2010

Mavrix Photo Sues Daily Mail Of London For Copyright Infringement Of Celebrity Images

celebrity-photo-copyright-infringement-daily-mail-mavrix.jpgLos Angeles, CA – Mavrix is a celebrity photography agency that licenses its photos to newspapers, television programs and magazines. Associated Newspapers Limited publishes the Daily Mail print newspaper and an online version at www.dailymail.co.uk. Mavrix alleges that it offered pictures of actress Kate Hudson by the pool in a bikini to the Daily Mail upon payment of a fee. Daily Mail, however, allegedly used the picture without payment or authorization both in print and online format. Further, Mavrix contends that its pictures of Pamela Anderson, Robbie Williams, Devon James, Roger Daltrey, and Halley Berry and Olivier Martinez were also used by the Daily Mail without payment or authorization. Daily Mail is accused of willfully infringing the copyrights and Mavrix is demanding statutory damages of $150,000 per image per infringement – distinguishing between print and online usage. The case is Mavrix Photo, Inc. v. Daily Mail of London, et al. CV10-9045 PSG (C.D. Cal. 2010).