Posted On: June 29, 2013

Otterbox Trademark Infringement Lawsuits Filed In Los Angeles Against eBay Sellers

los-angeles-trademark-attorney-infringement-ebay-seller-otterbox.jpgLos Angeles, CA – The Otterbox trademark owner filed four trademark infringement lawsuits against several defendants for allegedly selling Smartphone and tablet cases bearing counterfeit Otterbox trademarks. Plaintiff manufactures protective cases, peripherals and accessories for the iPhone, iPad, iPod, Samsung, HTC and other electronic device and computer manufacturers. Plaintiff is the owner of U.S. Patent and Trademark Office registered Otterbox trademarks, “We’ve Got Technology Covered” trademark, and the “Defender Series” trademark. Plaintiff contends that it has spent millions of dollars in advertising to obtain consumer recognition of its trademarks as a symbol of quality.

Particularly in light of the success of Plaintiffs products, as well as the outstanding reputation they have gained, Plaintiff and its products have become targets for unscrupulous individuals and entities who wish to take a "free ride" on the goodwill, reputation and fame Plaintiff has spent considerable effort and resources to build up in their products and trademarks.

Plaintiff alleges that Defendants own and operate eBay storefronts advertising and selling unauthorized products that infringe its trademarks or bear counterfeit trademarks. One defendant is accused of selling at least $88,000 worth of infringing products.

To dissuade counterfeiters and intentional infringers, the Lanham Act allows a court to triple plaintiff’s damages or defendant’s profits and award attorneys’ fees and costs. 15 U.S.C. §1117(a). One of the advantages afforded an USPTO registered trademark owner is the ability to recover statutory damages where proving actual damages or defendant’s profits would be difficult or untenable. 17 U.S.C. §1117(d). The award of statutory damages can range, as the court considers just, from $1,000 to $200,000 per counterfeit trademark for innocent infringement and not more than $2,000,000 per counterfeit mark for willful infringement.

Attorneys’ fees and costs in trademark infringement cases are not automatically recoverable and are instead awarded in “exceptional” cases. There’s currently a split in the circuits as to what constitutes an “exceptional” case, including different standards for victorious plaintiffs and defendants. A relatively recent 7th Circuit case surveys and summarizes the varying rules of the federal circuits. Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC, 626 F.3d 958, 960–961 (7th Cir. 2010). A word of caution to trademark plaintiffs in the 9th Circuit is warranted when considering election of actual damages or statutory damages. The 9th Circuit has held that attorney’s fees are not available to plaintiffs that elect statutory damages. K and N Engineering, Inc. v. Bulat, 510 F.3d 1079, 85 U.S.P.Q.2d 1372 (9th Cir. 2007) (“Section 1117(c) makes no provision for attorney's fees; nor does § 1117(b) authorize such fees for a plaintiff seeking statutory damages under § 1117(c). Section 1117(b)'s attorney's fees provision applies only in cases with actual damages under § 1117(a).”)

The cases are:
Otter Products, LLC v. TJEDIRECT, Inc. et al., CV13-04472 CAS (C.D. Cal. 2013);
Otter Products, LLC v. Pebble Holt et al., CV13-04470 CAS (C.D. Cal. 2013);
Otter Products, LLC v. Angel Luis Berrios, Jr. et al., CV13-04384 CAS (C.D. Cal. 2013); and
Otter Products, LLC v. Jared Hansen et al., CV13-03712 PA (C.D. Cal. 2013).

Posted On: June 12, 2013

Trey Songz Sued For Copyright Infringement Over “Heart Attack” Song

LA-copyright-attorney-music-infringement-trey-songz.jpgLos Angeles, CA – Plaintiffs Brandon Hale, David Biagas, and Marcus Boyd filed a copyright infringement lawsuit against Atlantic Recording Corp. and singer Trey Songz, real name Tremaine Aldon Neverson, among others. Plaintiffs claim writing a musical composition entitled “Boomerang”, which was registered with the US Copyright Office. Thereafter, Plaintiff Boyd was hired as a writer for Defendant Atlantic, but he allegedly had to submit his entire music catalog to Atlantic for evaluation. Plaintiffs then contend that Boomerang was provided to Trey Songz and/or his co-authors, who then proceeded to make a derivative work “by changing the musical key of the song and remix[ing] the song to create the infringing work ‘Heart Attack.’”

Plaintiffs contend that infringement was willful and intentional because even though the Defendants attempted to “hide their obvious use of [Plaintiffs’] composition in the infringing work by making minor changes,” the “title of the infringing work was taken from the chorus of Plaintiffs’ composition.” Based on the estimated 500,000 copies sold, Plaintiffs are demanding an accounting of Defendants’ profits and/or Plaintiffs’ actual damages or statutory damages under Section 504 of the Copyright Act, which can be as high as $150,000 per copyrighted work in cases of willful infringement.

In addition to their copyright infringement claims, Plaintiffs assert state law misappropriation and unfair competition claims based essentially on their copyright claim:

Defendants' conduct as alleged constitutes and continues to constitute an unlawful misappropriation of property under the laws of the State of California with respect to the exploitation and use of the Composition and Musical Work.

Upon information and belief, Defendants were aware that Plaintiff has a reasonable economic expectation arising from the Infringing Work... The conduct of each defendant as described above was unlawful, unfair or fraudulent within the meaning of California Business & Professions Code Section 17200.

The Plaintiffs should dismiss their unfair competition and misappropriation claims because they are preempted by the Copyright Act. 17 U.S.C. § 301. Where a plaintiff fails to establish that these claims are separable from his or her copyrightable work or that the state law causes of action "protect rights which are qualitatively different from the copyright rights," the state law claims are preempted by the Copyright Act. Del Madera Prop. v. Rhodes and Gardner, Inc., 820 F.2d 973, 977 (9th Cir. 1987).

The case is Hale, et al. v. Atlantic Recording Corp. et al., CV13-03500 PSG (C.D. Cal. 2013).