Posted On: July 20, 2011

Sonya Ooten Files Jewelry Patent & Copyright Infringement Lawsuit Against Soixante Neuf

jewelry-patent-copyright-infringement-sonya-ooten.pngJewelry designer Sonya Frisina does business as Sonya Ooten and has a retail store in Los Angeles. Ooten owns U.S. Design Patent No. D544,389, titled “Metal Crochet Earring,” covering the ornamental jewelry design. There is often overlap with different forms of intellectual property and Ootent, to maximize protection, also registered the “Cosmos” earring design with the U.S. Copyright Office.

Ooten alleges that Soixante Neuf’s “Oval Woven Beaded Earrings” infringe both its design patent and copyright. To prove design patent infringement, Ooten must meet both the ordinary observer test and points of novelty test. The design as a whole is examined in the ordinary observer test and the individual elements of the design are examined in the points of novelty test. To prove copyright infringement, unlike design patent infringement, Ooten must show that Soixante Neuf had access to Ooten’s design and copied it. Also, unlike utility patents, a successful design patent plaintiff can recover the infringer’s profits, plaintiff’s lost profits, or a combination of lost profits and reasonable royalty.

The case is Sonya Frisina v. Soixane Neuf, Inc. et al., CV11-5705 VBF (C.D. Cal. 2011).

Posted On: July 14, 2011

Spearmint Rhino Sues Chiappa Firearms Because Guns Likely To Be Confused With Strippers

Trademark-attorney-spearmint-rhino-chiappa-gun-firearms.jpgSpearmint Rhino provides adult entertainment services, namely, it owns a large number of strip joints. In its sanitized complaint, however, “Rhino’s principal business is the development and licensing of its trademarks and the maintenance of control of the quality of goods and services offered in connection with Rhino’s marks.” As a side note, Rhino probably receives numerous applications for the position of quality control supervisor, but I digress.

Rhino owns several federally registered trademarks for its Rhino Outline logo, here, here, and here, that were filed on February 3, 2006. Thus, Rhino contends that its “registrations give it and its authorized licensees priority throughout the United States over any use in commerce of the Rhino Outline marks that had not commenced by February 3, 2006.”

Although the registrations cover goods and services in the adult entertainment industry, e.g. cabarets and “panties, g-strings, brassieres and corsets for semi-nude and erotic dancers,” Rhino sued Chiappa Firearms for allegedly using a confusingly similar Rhino design on its handguns: “Chiappa’s use of the Rhino Outline marks is likely to cause confusion, or to cause mistake, or to deceive because, among other reasons, consumers are likely to believe that there is an affiliation, connection, or association between” Rhino and Chiappa. Seriously? Maybe I’m a bit daft, but will consumers really confuse panties and guns?

Whatever Rhino’s belief, counsel should’ve advised that this is a very difficult case to prove because guns and strip clubs are unrelated . . . wait, except when Stephen Jackson's involved. If Rhino owned a copyright on the work, there would be more of a case. But where the goods or services are so unrelated, confusion among consumers is highly unlikely. Even the Trademark Examining Attorney did not believe that there would be a likelihood of confusion between the parties' marks because Chiappa's own rhino logo registered without a bump. Marco Randazza, in his own delicate way, always asks that clients show restraint before sending cease and desist letters or filing lawsuits with nebulous trademark claims.

The case is Spearmint Rhino Companies Worldwide, Inc. v. Chiappa Firearms, Ltd., et al., CV11-05682 R (C.D. Cal. 2011)

Posted On: July 4, 2011

Tacori Loses Crescent Jewelry Design Preliminary Injunction Bid Against Scott Kay

copyright-preliminary-injunction-jewelry-rings-scott-kay-tacori.jpgTacori suffered another loss in its continuing copyright and trade dress infringement lawsuit against rival jewelry designer Scott Kay. The Court previously denied Tacori’s ex-parte application for a temporary restraining order, but that did not deter Tacori’s attempts to prevent Scott Kay’s sales of its Heaven’s Gate jewelry collection. Not surprisingly, the Court denied Tacori’s preliminary injunction bid, which was now focused solely on the copyright issue.

“A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Winter v. Natural Res. Def. Council, 129 S. Ct. 365, 374 (2008). Although a plaintiff must make a showing on each factor, the Ninth Circuit employs a sliding scale approach where “a stronger showing of one element may offset a weaker showing of another.” Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131-35 (9th Cir. 2011). Thus, a preliminary injunction may still issue where there are “serious questions going to the merits and a balance of hardships that tips sharply towards the plaintiff . . . , so long as the plaintiff also shows that there is a likelihood of irreparable injury and that the injunction is in the public interest.” Id. at 1135 (internal quotation marks omitted).

The Court found that Tacori may be able to meet “its low burden of establishing copyright ownership” because the “requisite level of creativity is extremely low.” In order to show copying, Tacori had to establish Scott Kay’s access to its reverse crescent design and that the Heaven’s Gates rings were substantially similar. Scott Kay admitted that it was aware of Tacori’s design, but the Court found that the parties’ respective designs were not substantially similar.

In applying the extrinsic test, the court compared the two designs and found that neither the repeating reverse crescent design nor the diamond set in the triangular spaces between the openings is original. In addition, the Court found that Tacori “failed to provide competent expert testimony for this test” as its expert did not examine the parties' rings. For the intrinsic test, the Court found it unlikely that the ordinary audience for these very expensive rings “would find Defendant’s rings so similar in total concept and feel to Plaintiff’s rings that they infringe Plaintiff’s copyrights.” Further, the Court that Tacori failed to establish irreparable harm “absent injunctive relief, that the balance of the equities tips in its favor, or that an injunction would be in the public’s interest.”

The case is Tacori Enterprises v. Scott Kay, Inc., CV11-1565 DSV (C.D. Cal. 2011).