Posted On: January 31, 2011

eForCity Sues Apple For Design Patent, Trademark, And Copyright Declaratory Judgment of Non-Infringement

design-patent-trademark-copyright-apple-headset-eforcity-infringement.jpgLos Angeles, CA – eForCity Corporation has sued Apple, Inc. seeking the Court’s declaration that its sales of various earphones do not infringe Apple’s Patent Nos. D589,491, D469,753, D596,616, and D515,070. The lawsuit was filed after Apple’s attorneys sent a cease and desist letter accusing eForcity of also infringing Apple’s copyrights by using iPad images allegedly copied from Apple’s website. Further, the letter accused eForCity of infringing Apple’s iPad, iPhone, iPod and Mac trademarks in product descriptions with the ® or ™ symbols and without attribution to Apple. The case is eForCity Corp, et al. v. Apple, Inc., CV11-00808 SVW (C.D. Cal. 2011).

Posted On: January 25, 2011

Solid 21 Sues Rolex Over Red Gold Trademark On Watches & Jewelry

watch-trademark-jewelry-lawsuit-infringement-red-gold-rolex.jpgLos Angeles, CA – Rolex must be seeing red after being sued by Solid 21 for trademark infringement for using “red gold” on, you’ll never guess, red gold jewelry. But Rolex isn’t alone and can commiserate with the other 13 or so other defendants that Solid 21 is simultaneously suing for using what appears to be a generic term. Red gold, also known as rose gold, is made by alloying gold with copper. Although Solid 21’s trademark registration (see here) discloses that “red gold” is used on “fine jewelry made of a special alloying of gold with a distinct color made into fine jewelry”, it does not disclose that red gold is used on red gold jewelry. I don’t think Solid 21 can beat the Egyptian mummies’ first use date for “red gold” jewelry. See here.

The case is Solid 21, Inc. v. Rolex Watch USA, Inc., CV11-0449 GAF (C.D. Cal. 2011).

Posted On: January 18, 2011

Domain Name Registration Lapse Results In Headaches And Trademark Infringement Lawsuit

domain-name-registration-trademark-cancel-toms-famous-family.gifSanta Ana, CA – This case should serve as a warning to all domain name owners: TIMELY RENEW YOUR DOMAIN NAME REGISTRATION AND DON’T LET IT LAPSE! The Valaskantjis family trust, owner of the Tom’s Famous Family Restaurants since 1968, unfortunately allowed its domain name registration to lapse without timely renewal. The domain name,, was then allegedly registered by defendant Katz Global Media, LLC.

Katz is accused of establishing a website using Tom’s trademarks and copyrights to publish false reports regarding Tom’s use of illegal alien labor to operate its restaurants. The website also claims that plaintiffs don’t pay the required taxes or workers compensation insurance. Further, Defendant is accused of soliciting the public to report plaintiffs to the IRS and Customs and Immigration Enforcement. On top of the problems created by the new website, Plaintiffs have also allowed their trademark registration to lapse: see here.

It appears that the defendant has researched First Amendment and fair use defenses. Courts have previously found for plaintiffs in bad faith registrations of lapsed domain names where the subsequent registrant attempted to sell the domain back to the prior registrant. See BroadBridge Media, L.L.C. v., 106 F. Supp. 2d 505, 511-512 (S.D.N.Y. 2000). In this case, however, it appears that a sophisticated defendant is using the domain name for what appears to be protected speech. It will be interesting to see how this case unfolds.

The case is Tom’s No. 18, LLC v. Katz Global Media, LLC, SACV11-00044 JST (C.D. Cal. 2011).

Posted On: January 12, 2011

Bel Air Lighting Sues For Declaratory Relief Of Copyright Invalidity and Non-Infringement Of Light Fixture

light-fixture-copyright-lighting-crystal-shade-infringement.jpgLos Angeles, CA – Bel Air Lighting is suing Schonbek over the sales of Bel Air’s Portfolio light fixture. Schonbek previously sued Lowe’s Home Centers for copyright infringement for selling the Portfolio light fixture. Bel Air claims that there is an actual case or controversy between the parties and it can seek declaratory relief of copyright invalidity and non-infringement. Bel Air alleges that Schonbeks are invalid because the light fixtures are outside the scope of subject matter entitled to copyright protection in that they merely include placement of preexisting elements around a fixture, are useful articles, lack artistic features aside from utilitarian functions, and/or lack originality. The case is Bel Air Lighting, Inc. v. Schonbek Worldwide Lighting, Inc., CV10-10069 MMM (C.D. Cal. 2010).

Posted On: January 7, 2011

Monster Cable Files Numerous Trademark Lawsuits Against eBay Sellers Of Monster Electronic Products

monster-cable-trademark-infringement-lawsuit-los-angeles-california-court.jpgLos Angeles, CA – Trademark bully Monster Cable, as it has been anointed by others here and here, seems to be on a trademark infringement lawsuit rampage against eBay sellers of monster products. Maybe the slew of trademark lawsuits is in response to the court’s denial of the temporary restraining order in its and Beats Electronics’ design patent lawsuit against Fanny Wang Headphone company.

Whatever the reason, it’s interesting that among the six causes of action for trademark infringement, dilution, etc., there is no cause of action for trademark counterfeiting. Even more so when the complaint alleges that Monster Cable’s private investigator purchased the items on eBay, they were tested, and deemed to be counterfeit: “Defendant has, without the consent of Plaintiff, offered to sell and sold within the United States (including within this judicial district) goods that were neither made by Plaintiff nor by a manufacturer authorized by Plaintiff (such goods are hereafter referred to as “Counterfeit Goods”).” Maybe Monster Cable’s perplexing strategy will crystallize as the cases proceed to trial, assuming the eBay sellers can afford to mount a defense against this alleged trademark bully.

The case is Monster Cable Products, Inc. v. Wireovia, LLC et al., CV10-10010 DSF (C.D. Cal. 2010).

Posted On: January 4, 2011

Appeals Court Finds Microsoft Infringed Uniloc’s Patent And Grants New Damages Trial

uniloc-cafc-federal-circuit-win-damages-patent-microsoft-infringe.pngWashington, D.C. – The Court of Appeals for the Federal Circuit (“CAFC”) overturned the district court’s finding of non-infringement. After Uniloc won a jury award of $388 million, the district court granted judgment as a matter of law (“JMOL”) of non-infringement and no willfulness on Microsoft’s post-trial motions. Details blogged here.

In reversing the district court’s decision, the CAFC found that “[b]ecause the jury’s verdict on infringement was supported by substantial evidence, this court reverses the district court’s grant of JMOL of non-infringement; this court also reverses the district court’s alternative grant of a new trial on infringement as an abuse of discretion.” The CAFC, however, affirmed the district court’s finding of no willful infringement because “the jury’s verdict on willfulness was not supported by substantial evidence.” The CAFC further affirmed the district court’s denial of Microsoft’s motion for JMOL of invalidity.

As to damages, the CAFC granted a new trial because “the jury’s damages award was fundamentally tainted by the use of a legally inadequate methodology.” In doing so, the CAFC disbanded the 25% rule of thumb (25%/75% royalty split between licensor/licensee) as a basis for royalties that it had previously “tolerated”: “This court now holds as a matter of Federal Circuit law that the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. Evidence relying on the 25 percent rule of thumb is thus inadmissible under Daubert and the Federal Rules of Evidence, because it fails to tie a reasonable royalty base to the facts of the case at issue.”

The CAFC opinion is available here.

The CAFC concluded: “For the foregoing reasons, this court reverses the district court’s grant of JMOL of non-infringement, affirms the district court’s grant of JMOL of no willfulness, affirms the district court’s grant of a new trial on damages, vacates the district court’s grant of an alternative motion for new trial on infringement, and affirms the district court’s denial of JMOL of invalidity of claim 19 of the ’216. The case is remanded for proceedings consistent with this opinion.”

Posted On: January 3, 2011

Court Grants Summary Judgment Of Copyright Non-Infringement In Flushed Away Movie Lawsuit

copyright-attorney-summary-judgment-flushed-away-movie-animated.jpgLos Angeles, CA – Yolanda Buggs accused Dreamworks’ animated movie “Flushed Away” of infringing her copyrighted screen play “Critter Island.” Details blogged here. On summary judgment, the Court applied only the “extrinsic test,” an objective comparison of specific expressive elements, because the “intrinsic test” is within the province of the jury. The Court examined the protectable, specific expressive elements, focusing “on articulable similarities between the plot, themes, dialogue, mood, setting, pace, character and sequence of events in two works."

The Court found that “the basic plot idea of pests with human attributes getting flushed and saving their communities is not protectable…Plaintiff must show similarities of expressions in more specific details rather than allege similarities of general plot ideas.” The Court also found that the male characters in the two works were substantially different, for example, “Roddy in ‘Flushed Away’ is an adult, dapper, clever, cautious, and lonely British rat living as a pet in the Kensington neighborhood of London. Roddy ultimately chooses to live with Rita in the sewer rather than to have a lonesome life of luxury above ground. In contrast, Mario in ‘Critter Island’ is an adolescent. He is not a loner, but rather, a leader of the Water Bugs, a son, and a prominent young member of the cockroach community at the retirement home.” The female characters, villains, and other characters were also found to be dissimilar.

The Court further found the themes were different, wherein Critter Island’s focus on racism and the importance of unity based on different species of cockroaches was absent in “Flushed Away.”

As to settings, pace, and mood, the Court determined that, apart from generalities, the Plaintiff was unable to point to any detailed indicia of substantial similarity between the two works. The dialogue and sequence of events were also found to be dissimilar.

Plaintiff relied on the "inverse ratio" rule, which lessens the level of proof required to show copying when the plaintiff can show that the defendant had a "high degree of access" to the protected work. “Even assuming, arguendo, that Defendants had a high degree of access to Plaintiff's work, the inverse ratio rule does not aid Plaintiff because ‘[n]o amount of proof of access will suffice to show copying if there are no similarities’ between the protected expressions in the two works.” Thus, the Court granted summary judgment of non-infringement.

A copy of the order is available here. The case is Yolanda Buggs v. Dreamworks, Inc. et al., CV09-7070 SJO (C.D. Cal. 2009).