Posted On: April 30, 2013

Keyboard Cat and Nyan Cat’s Attorneys Sue Scribblenauts Videogame For Copyright and Trademark Infringement

copyright-attorney-trademark-sue-nyan-cat-keyboard-cat-Scribblenauts.jpgLos Angeles, CA – A copyright and trademark infringement lawsuit was filed against Warner Bros. and 5th Cell Media, the creators of the Scribblenauts videogame, by attorneys for Charles Schmidt – creator of the Keyboard Cat meme – and Christopher Orlando Torres – creator of Nyan Cat meme.

Keyboard Cat is a video of Schmidt’s cat, Fatso, wearing a shirt and playing an electronic keyboard with its paws. The meme, which is a communication of ideas or information, has gone viral, receiving over thirty million YouTube hits. Schmidt has registered the video’s copyright with the US Copyright and has two pending trademark applications for the term “Keyboard Cat”, click to see the first trademark application and the second trademark application. Keyboard Cat’s stardom has led to numerous appearances in commercials, including a feature role in a national Starburst candy television commercial.

Nyan Cat is a cartoon character with a cat’s face with a Pop Tarts body, basically a pink frosting sprinkled horizontal breakfast bar with glitter and a rainbow flowing therefrom. The GIF animation has also gone viral and it was the fifth most-watched video on YouTube in 2011, winning the 2012 Webbys’ “Meme of the Year” award. Torres also registered the copyright in the animated GIF with the US Copyright Office, but the complaint incorrectly repeats Keybaord Cat's copyright registration number. Torres has also filed a trademark application to register the “Nyan Cat” word mark with the US Patent & Trademark Office.

Plaintiffs accuse Warner Bros and 5th Cell of including, without any licenses or authorizations, the Keyboard Cat character in their original Scribblenauts videogame released in 2009, the 2010 Super Scribblenauts, 2011 Scribblenauts Remix, and including both Keyboard Cat and Nyan Cat in 2012 Scribblenauts Unlimited. Defendants are accused of shamelessly using “Nyan Cat” and “Keyboard Cat” by name to promote and market their games. Plaintiffs claim that Warner Bros and 5th Cell’s trademark infringement was willful and intentional and are requesting an award of treble damages and requesting the case be deemed exceptional under 15 U.S.C. § 1117(a), thereby entitling Plaintiffs to an award of reasonable attorneys’ fees.

CORRECTION TO COPYRIGHT DAMAGES BELOW: Nyan Cat first appeared in Scribblenauts Unlimited in 2012, a year after Nyan Cat's copyright registration date. Thus, Nyan Cat is entitled to statutory damages, enhancement thereof, and attorneys' fees and costs. The follwing paragraph only applies to Keyboard Cat.

Plaintiffs, however, mistakenly demand statutory damages and an enhancement of damages under 17 U.S.C. § 504, and mistakenly believe that they are entitled to attorneys’ fees and costs of suit under 17 U.S.C. § 505. Defendants are accused of infringing both copyrights in their initial 2009 release of the video games and neither copyright was registered until 2010. Thus, neither Plaintiff is entitled to statutory damages or attorney’s fees, a prerequisite of which – per 17 U.S.C. § 412 – is either registration before (1) commencement of any infringement or (2) within three months after the first publication of the copyrighted work. Further, the Keyboard Cat video was published over five years before the application to register the copyright was filed, thus it is not entitled to a presumption of validity afforded by 17 U.S.C. § 410(c).

A copy of the complaint is available here.

The case is Schmidt, et al. v. Warner Bros. Entertainment, Inc., CV13-02824 JFW (C.D. Cal. CV13-02824).

Posted On: April 24, 2013

A’lor Loses Cable Motif Jewelry Copyright And Trade Dress Infringement Lawsuit

Jewelry-copyright-attorney-trade-dress-sued-court-los-angeles-alor.jpgLos Angeles, CA - A’lor International sued numerous jewelry designers, producers and retailers for copyright and trade dress infringement over sales various nautical twisted cable motif jewelry. A’lor filed a summary adjudication motion asking the Court to deem Defendants liable for copyright and trade dress infringement. Defendant Lau filed a motion for partial summary judgment that it did not infringe A’lor’s copyrights and Defendant Miami Lakes filed a motion regarding the trade dress infringement claims, which motions were joined by several defendants.

To succeed on its copyright infringement claims, Plaintiff must show that (1) Plaintiff owns valid copyrights in the Subject Designs; and (2) Defendants infringed on Plaintiff’s copyright. Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140 (9th Cir. 2003). The Court held that A’lor’s copyright registration certificates constituted prima facie evidence of a valid copyright, which presumption of validity defendants were unable to rebut. 17 U.S.C. § 410(c). To rebut the presumption, Defendants argued that the copyrights were invalid because they lack originality. Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003). The Court, however, found that Defendants submitted evidence of pre-existing nautical twisted cable motif jewelry sold by third parties and to provide copyright protection to Plaintiff’s would improperly give Plaintiff a monopoly on nautical rope band jewelry. Nevertheless, the Court found that Plaintiff was entitled to a “thin” copyright in the style of the clasp or other ornaments and panther heads. But once the court subtracted the unoriginal elements and considered only Plaintiff’s original contributions, no copyright infringement could be found because virtually identical copying didn't exist, the proper infringement test for a “thin” copyright.

Regarding its trade dress infringement claim, A’lor had to show that (1) the trade dress is nonfunctional; (2) the trade dress has acquired secondary meaning, and (3) there is a substantial likelihood of confusion between the Accused Designs and the Subject Designs. See Art Attacks v. MGA Entertainment, Inc., 581 F.3d 1138, 1145 (9th Cir. 2009). “Trade dress” refers to the “total image of a product” and may include features such as size, shape, color, color combinations, texture or graphics. International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993). Because the scope of trade dress protection may be broad, courts exercise particular caution when extending protection to product designs, as granting trade protection to an ordinary product design would create a monopoly in the goods themselves. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir. 1997).

A’lor described its trade dress as “interwoven nautical cable threads composed of twisted stainless steel wire forming single- or juxtaposed multi-strand treated cable threading with soft-textured adornments and embellishments spaced through the cable.” The Court found the definition to be amoebic, namely “impermissibly general and overbroad...As such, extending protection to this trade dress would permit Plaintiff to exclude competition from functionally similar products that use stainless steel in nautical cable band jewelry...Therefore, the Court finds that the trade dress, as articulated by Plaintiff, is no more than a concept or idea.”

The case is A’lor International, Ltd. v. Tappers Fine Jewelry, Inc., CV12-02215 RGK (C.D. Cal. 2012).

Posted On: April 11, 2013

Academy of Country Music Sues ACM Records In Los Angeles After ACM’s Attorney Files TTAB Trademark Opposition

Los-angeles-trademark-attorney-lawyer-sue-ACM-TTAB.jpgAlthough the “ACM Awards” trademark is prominently featured on the Academy of Country Music’s website, I was shocked to learn that the Academy only last month filed a trademark application with the US Patent & Trademark Office to register the ACM and the ACM Awards trademarks. Obviously someone has not been reading my article on advantages afforded to USPTO registered trademarks.

Without the benefits of a trademark registration certificate establishing its priority rights, the Academy alleges and must now spend resources proving that it has been using the ACM trademark and ACM derivative marks since at least 1974 in association with services and goods in the country music industry. The Academy also alleges incurring, along with its media partners, expenditures of over $30,000,000.00 over the last 22 years in advertising and marketing the ACM marks, making the trademarks famous.

ACM Records, like a good trademark owner should, filed and obtained a USPTO trademark registration for the “ACM Records” trademark in 2008. If the Academy had previously filed and registered its ACM trademarks, Defendant’s trademark application would probably have been refused registration by the USPTO examining attorney. Instead, the Academy claims that ACM Records filed an opposition with the Trademark Trial & Appeal Board (“TTAB”) in February of 2013, asserting a likelihood of confusion and dilution would arise from the Academy’s application to register “The ACM Experience.” Thus the Academy seeks declaratory judgment to its rights to register and expand the use its ACM family of trademarks.

Although the Academy claims it is the senior user of the “ACM” mark by almost twenty years, its failure to register the trademark may result in a complete bar to its federal and state dilution claims, merely because ACM Records obtained a prior USPTO trademark registration. 15 U.S.C. § 1125(c)(6) provides that the “ownership by a person of a valid registration ... on the principal register ... shall be a complete bar to an action against that person, with respect to that mark, that is brought by another person under the common law or a statute of a State; and seeks to prevent dilution by blurring or dilution by tarnishment...”

No matter the outcome, the lesson to be learned is to register your trademarks with the USPTO because a certificate of registration provides prima facie evidence of validity, ownership of the mark, and the owner’s exclusive right to use the registered trademark. 15 U.S.C. § 1057(b). The registration basically shifts the burden to the defendant to prove that the claims in the certificate of registration are not correct.

The case is Academy of Country Music v. ACM Records, Inc., et al., CV13-02448 DDP (C.D. Cal. 2013).