Los Angeles Intellectual Property Trademark Attorney Blog

Marc Jacobs Sues Christian Audigier’s Company For Trade Dress and Trademark Infringement

2010-02-08T07:28:55Z

Los Angeles, CA – Designer Christian Audigier’s Nervous Tattoo, Inc. is being sued by Marc Jacobs’ company for trade dress and trademark infringement over purse designs. Marc Jacobs designs apparel and accessories, including purses, and has a pending application for its random “Marc Jacobs” scrambled trademark. Marc Jacobs has applied the scrambled trademark to the inside lining of the “Marc Jacobs Pretty Nylon” tote bag. And the tote bag’s “size, shape, color or color combinations, product design, texture, and selection and arrangement of materials and accessories” are claimed to serve as its trade dress.

Plaintiffs accuse Defendants of selling tote bags that “bear trade dress that unlawfully copies or imitates Plaintiffs’ unique, distinctive, and non-functional Marc Jacobs Pretty Nylon Tote Trade Dress and/or that unlawfully bear marks confusingly similar to the Marc Jacobs Scrambled Trademark.” In addition, Plaintiffs assert claims for unfair competition under Cal. Bus. & Prof. Code § 17200 and constructive trust.

Since the parties’ products apparently bear their respective trademarks, it will be interesting to see if customers are confused about the source of the products. See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1045-46 (2nd Cir. 1992) (holding that prominently displayed trade names on the respective products "weigh[ed] heavily against a finding of consumer confusion resulting from the overall look of the packaging") (preliminary injunction denied).

The case is Marc Jacobs Trademarks, LLC et al. v. Eagles Clubs International, Inc., et al., CV10-00456 CBM (C.D. Cal. 2010).

Major League Baseball Sues Upper Deck For Trademark Infringement And Unfair Competition Over Baseball Trading Cards

2010-02-03T04:12:15Z

New York -- Major League Baseball Properties sued the Upper Deck Company for trademark infringement, trademark dilution, unfair competition, and breach of contract because Upper Deck continues to print baseball trading cards after its license was terminated. A copy of the complaint is available here. MLBP pulls no punches and extensively refers to the recent Court ruling that Upper Deck counterfeited hundreds of thousands of Yu-Gi-Oh! trading cards, its agreement to a multi-million dollar settlement and permanent injunction (details here).

MLBP ended its twenty-year relationship with Upper Deck and entered into an exclusive agreement with Topps "to use the MLB trademarks on trading cards for retail distribution beginning on January 1, 2010." MLBP also alleges that Upper Deck failed to pay in excess of $2 Million under its prior licensing agreement. "Notwithstanding the expiration of the Upper Deck License Agreements as of October 31, 2009, and the absence of any new license from MLBP authorizing the use of the MLB Marks, Upper Deck has begun manufacturing, distributing, offering for sale, and selling at least three trading card sets featuring cards using the MLB Marks, including, without limitation, the MLB Uniform Trade Dress and MLB Caps and Helmet Logos." In addition to monetary damages, MLBP seeks to enjoin Upper Deck's manufacture and sale of the 2009 Signature Stars Series, 2009 Ultimate Collection Series, and 2010 Unauthorized Series I trading cards.

All may not be lost for Upper Deck, however, because it could rely on the denial of preliminary injunction ruling in the similarly situated Pacific Trading Card case. The case is Major League Baseball Properties, Inc. v. The Upper Deck Company, LLC, 10-cv-732-RWS (SDNY 2010).

Who Dat? Who Dat Say Dey'll Sue For Trademark Infringement? Duuhh NFL, Dat's Who!

2010-01-31T22:28:07Z

During Super Bowl week, the NFL is usually busy cracking down on church congregations showing the game in violation of the league's copyrights. After not caring about the New Orleans Saints for over the last forty years (aka, the "Ain'ts" years), the NFL thought it would be a good public relations boost to send numerous cease and desist letters to merchants that were selling "Who Dat?" t-shirts and memorabilia. Who Dat? Who Dat trying to jump on Da Who Dat bandwagon?

After local merchants complained, it became an issue ripe for Congress. Louisiana Senator David Vitter wrote the NFL Commissioner urging him to "drop this obnoxious and legally unsustainable position and instead agree that 'Who Dat' is in the public domain, giving no one exclusive trademark rights." Sen. Vitter makes valid trademark points. First, the NFL can't prove ownership via first use because "Who Dat" was "first heard in New Orleans minstrel shows well over 130 years ago" and "St. Augustine High School in New Orleans" used it prior to the NFL. Second, there's wide spread use by others and lack of enforcement because "Who Dat" "has become part of New Orleans and Louisiana popular culture." Finally, as for fair use, Sen. Vitter challenges the NFL to sue him because he's printing t-shirts with "WHO DAT say we Can't print Who Dat!" for widespread sale in commerce.

The NFL has only now -- apparently after Senators intervened -- realized the public relations blunder, chalking it all up to a "significant misunderstanding as to the scope of the [League's] trademark enforcement efforts."

Upper Deck Settles Yu Gi Oh! Counterfeiting Case

2010-01-27T18:42:35Z

UPDATE 2/2/2010: Major League Baseball sues Upper Deck for trademark infringement and quotes from Yu-Gi-Oh! counterfeiting case. Click here for details.

Los Angeles, CA – Instead of settling the case after it was caught selling counterfeit Yu Gi Oh! cards, Upper Deck fought a losing battle and the Court's summary judgment ruling found that Upper Deck counterfeited Yu Gi Oh! cards (details here). After the parties' opening statements were delivered to the jury yesterday, Upper Deck and Konami settled the case, wherein Upper Deck will pay an undisclosed sum to Konami and will enter into a permanent injunction -- which appears to be an adoption of the Court's previously issued preliminary injunction (details here). The Court's order regarding the settlement is available here.

The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

Jury Trial Begins In Upper Deck Yu Gi Oh! Counterfeiting Case

2010-01-27T17:24:13Z

UPDATE 1/27/2010: Upper Deck settles Yu Gi Oh! counterfeiting case. Details here.

Los Angeles, CA – Despite the Court’s finding that Upper Deck counterfeited Yu Gi Oh! cards (details here) and advising the parties to settle the damages phase through mediation, the jury trial to determine damages has commenced (Court’s calendar is here). If there ever was a case to settle early to avoid damage to a company’s reputation – which reputation and lifeline is founded on authenticating autographs and memorabilia, this would have been it.

The Cult-Stuff provides a chronology of events in the Konami v. Upper Deck Yu Gi Oh! counterfeiting battle here.

The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

Uncharitable Trademark Dispute Over Eagles Word and Design – Grand Aerie vs. Eagles Clubs

2010-01-25T06:54:40Z

Los Angeles, CA – Grand Aerie of the Fraternal Order of Eagles (FOE) sued Eables Clubs International, Inc. and Eagles Clubs International Foundation, Inc. for trademark infringement and unfair competition. FOE is a non-profit fraternal organization that has been engaged in social, civic and charitable activities since the 1890’s. FOE uses numerous “Eagles” trademarks, including logos, which have been registered with the U.S. Patent & Trademark Office.

Defendants are also a non-profit fraternal organization engaged in social, civic and charitable activities. Defendants use “Eagles” trademarks and logos incorporating an eagle design. FOE alleges that Defendants have registered the eaglesclubs.org domain name in bad faith in an effort to divert consumers from FOE’s online location. Defendants are accused of adopting the confusingly similar marks with prior knowledge of Plaintiff’s trademarks. The case is Grand Aerie of the Fraternal Order of Eagles v. Eagles Clubs International, Inc., et al., CV10-0357 RSWL (Cal. 2010).

Shaquille O’Neal Files “SHAQTUS” Trademark Infringement Lawsuit In Las Vegas

2010-01-17T21:25:22Z

Las Vegas, NV – Shaquille O’Neal has had numerous nicknames throughout his NBA basketball career. But his SHAQTUS nickname, which he assumed when he was traded to the Phoenix Suns in 2008, has become the prickly subject of a trademark infringement, cybersquatting, and right of publicity lawsuit. O’Neal has exclusively licensed his “Shaq” trademarks and his name, image, and likeness to his Mine O’Mine, Inc. corporation – the Plaintiff in the case.

Michael Calmese, Dan Mortensen, and their True Fan Logo, Inc. are the named defendants. On the day that Shaquille was traded to Phoenix, Mortensen registered the domain name and, shortly thereafter, the domain name. Defendants’ website features a cactus character that allegedly has O’Neal’s facial features and wears an orange number 32 basketball jersey – Shaq’s number with the Suns. Defendants sell clothing and other products bearing the SHAQTUS trademark and/or the character.

In 2008 and 2009, ESPN aired commercials featuring O’Neal and a cactus with O’Neal’s facial features. On December 4, 2009, Defendant Calmese allegedly sent a letter to ESPN claiming ownership of the SHAQTUS trademark and proposing a joint-development business arrangement to resolve the dispute. On December 29, 2009, Plaintiff’s counsel sent a cease and desist letter to Defendants demanding the transfer of the domain names. On January 4, 2010, Defendant Calmese responded and allegedly claimed that O’Neal consented to his use of the SHAQTUS mark when O’Neal agreed to take a picture with Calmese and autograph a T-shirt.

The case is Mine O’Mine, Inc. v. Calmese, et al., CV10-00043 KJD (D.Nev. 2010).

UGG® Competitor Sued For Patent Infringement & Lanham Act Unfair Competition Over Boots

2010-01-14T23:31:36Z

Los Angeles, CA – UGG® boot manufacturer, Deckers Outdoor, filed a patent infringement and unfair competition lawsuit against Claire’s Stores and CBI Distributing. UGG® boots have set a fashion trend with young ladies wearing the lamb-skinned boots – to keep their feet and calves warm – with shorts, thereby allowing their knees and thighs to freeze. That’s not in the complaint, it’s just a personal observation. Now back to the regularly scheduled complaint: the UGG® line of boots includes the Classic Cardy™, which was introduced in 2007 and has a crochet upper with buttons on the lateral side. The Classic Cardy™ boot is the subject of U.S. Design Patent No. D582,650 (“the ‘650 Patent”).

Deckers alleges that Defendants sell allegedly infringing boots under the “Claire’s Botts” mark at significantly lower price points, thereby diminishing the market place for the genuine Cardy Boots™. Plaintiff’s Lanham Act claim derives from the alleged sales of infringing boots creating a false association or affiliation with Deckers’ UGG® line of boots.

It’s unclear from the complaint whether Plaintiff is asserting a trade dress infringement claim, but at least they obtained a design patent for the boot – which is not a work protectable by copyright. By doing so, they avoid some costs and expenses in having to conduct surveys to establish trade dress rights and, further, a likelihood of confusion among consumers. The following Federal Circuit opinion provides a great comparison of the level of proof needed for each:

[T]he difference in weight given to empirical evidence is fully understandable in light of the stark differences between the elements required to show design patent infringement and trademark and trade dress infringement. ... [P]urchasers' likelihood of confusion as to the source of a good is a necessary factor for determining trademark and trade dress infringement. ... To show infringement, the holder of a trademark or trade dress therefore must have progressed to the manufacture and distribution of a 'purchasable' product. As a result, consumer behavior in the marketplace is a highly relevant factor in determining trademark and trade dress infringement. Since surveys and other empirical studies are ordinarily probative evidence of consumer behavior in the marketplace, such evidence has significance in determining trademark and trade dress infringement. In contrast, ... a different quantum of proof applies to design patent infringement, which does not concern itself with the broad issue of consumer behavior in the marketplace. ... The single element here required to show design patent infringement involves a much narrower field of inquiry. In short, a design patentee may prove infringement simply by showing that an ordinary observer would be deceived by reason of an accused device's ornamental design. ... Therefore, in showing design patent infringement there is ordinarily no compelling need for empirical evidence. Braun Inc. v. Dynamics Corporation of America, 975 F.2d 815, 828 (Fed. Cir. 1992)

The case is Deckers Outdoor Corp. v. Claire’s Stores, Inc., et al., CV09-09498 CBM (C.D. Cal. 2009).

Court Rules That Upper Deck Sold Counterfeit Yu Gi Oh! Cards

2010-01-11T00:48:08Z

UPDATE 1/27/2010: Upper Deck settles Yu Gi Oh! counterfeiting case. Details here.

Los Angeles, CA – Yu Gi Oh! owner Konami sued Upper Deck, its former distributor, for selling counterfeit trading cards. (Details here) After hearing both parties’ motions for summary judgment, the Court found that Konami had “presented evidence to establish every element of liability [for] counterfeit activity and violation of federal unfair competition law, pursuant to the Lanham Act, on the part of the [Upper Deck] Defendants.” (Order available here) The Court also found that Upper Deck was liable for common law trademark infringement and California unfair competition under Business & Professions Code § 17200. On the copyright infringement claim, the Court partially found that Upper Deck infringed the “Reverse Art” copyright, which refers to the text that appears on the back of the trading cards. The statement of undisputed facts is available here.

In another order, available here, the Court ruled in Konami’s favor because the “reproduction and/or manufacture of unauthentic cards does not fall within the ‘Approval’ clause of the 2006 Letter of Intent.” Conversely, the Court denied Upper Deck’s motion to limit its liability. In yet more bad news for Upper Deck, in another order that’s available here, the Court found for Konami on Upper Deck’s counterclaims for breach of contract and slander per se.

The case is scheduled for trial on January 26, 2010. The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

T-Mobile Sued For Music Copyright Infringement Over Ringback Tones by Music Publishers

2010-01-04T09:57:56Z

Los Angeles, CA – Broadcast Music, Inc. (“BMI”), a music performing rights organization that licenses public performance of over 6.5 million copyrighted songs, sued T-Mobile for copyright infringement over use of songs in ringback tones. A ringback tone is a customer selected song that is heard by a caller instead of a regular ring. The ringback tones are stored on T-Mobile’s servers and are streamed to the caller’s phone. T-Mobile sells its Ringback tone services to its users for $1.49/month and the songs are purchased for $1.99 each. The complaint lists at least fifty-six songs that were allegedly infringed, but contends that the true number could be in the thousands. BMI alleges that despite its demands that T-Mobile cease its infringing conduct, T-Mobile has refused to do so. Thus, BMI demands statutory damages for the willful infringement of each copyrighted song.

With BMI's prediction that U.S. ringback tone sales surpassed $235 million, it's not surprising that they're trying to cash in on that market. Of course, BMI has to avoid Section 110(4) of the Copyright Act that silenced ASCAP's royalties claim for musical ringtones. The case is Broadcast Music, Inc. et al. v. T-Mobile USA, Inc., CV09-09316 RSWL (C.D. Cal. 2009).

Christmas Patents And Non-Infringing Christmas Wishes

2009-12-21T15:21:43Z

Since Christmas is a mere four days away, I wanted to discover a “new and useful” method (35 USC § 101) to relay my Christmas greetings in a novel (35 USC § 102) and non-obvious (35 USC § 103) manner. To make sure that my Christmas wishes did not infringe on any other wishes, I decided to conduct a quick patent search. To my chagrin, due to U.S. Patent No. D472,182, I cannot – without infringing – impart my birthday wishes upon Jesus. And my licensing negotiations having fallen through, I figured I would just wish “Merry Christmas To All.” I wanted to make sure, however, that I didn’t infringe on any third-party trademark rights. Quickly running a search on the USPTO database, I thought my Christmas wishes would once again be thwarted by trademark application number 74/455073 for the “Merry Christmas To All” trademark. But my worries quickly dissipated because the application has long been abandoned. Thus, hoping that Santa does not bring me a common-law trademark lawsuit, “Merry Christmas To All and To All A Goodnight.” Note to self: copyright clearance.

Jury Finds For Larry Flynt/Hustler On Trademark Infringement, But For Nephews On Rights Of Publicity

2009-12-12T18:42:57Z

Los Angeles, CA – Larry Flynt sued his former employees and nephews, Jimmy Flynt, Jr. and Dustin Flynt, for trademark infringement for using the family name in their upstart pornography company. Details blogged here. Larry Flynt also made a claim for violation of his rights of publicity under California Civil Code § 3344. On January 9, 2009, the Court preliminarily enjoined the nephews from using the “FLYNT” mark alone with the distribution of adult material, but allowed the nephews to use their first names in association with their family name on the same products. Details blogged here.

After a three day jury trial, Larry Flynt may have won the battle, but lost the war. LA Time article, here. The jury agreed that the use of the last name FLYNT alone was likely to confuse consumers as to the source of the adult related material and a permanent injunction will issue against the nephews. No monetary damages were sought for the trademark infringement claim. The jury, however, sided with the nephews on Larry’s rights of publicity claim, which contains a mandatory attorneys’ fees provision for the prevailing party. Thus, it looks like Larry will have to pay the nephews’ attorneys’ fees incurred in their defense of the §3344 claim, which they are likely to pursue since Larry allegedly fired their father in retaliation for the sons’ use of the family name. The case is Larry C. Flynt v. Flynt Media Corporation, et al., CV 09-00048 AHM, CV09-8796 JC (C.D. Cal. 2009).

Illustrator Randy Stratton Sues Clothing Company For Copyright Infringement

2009-12-10T10:56:39Z

Los Angeles, CA – Randy Stratton’s illustrations are featured in a book entitled “Build This Bong: Instructions and Diagrams for 40 Bongs, Pipes, and Hookahs.” Stratton registered his works with the U.S. Copyright Office. Stratton alleges that Defendant Upper Playground has, without Stratton’s authorization, copied Stratton’s works onto T-shirts sold to the public at large. “Plaintiff has demanded that some or all of the named Defendants cease and desist from all sales and manufacturing of garments incorporating Plaintiff’s copyright work, and cease and desist from printing the copyrighted work without Plaintiff’s consent.” Having allegedly not received a response to his demand that defendants cease their infringing conduct, Plaintiff was forced to file the instant lawsuit accusing defendants of willful and intentional infringement. The case is Randy Stratton V. Upper Playground Enterprises, Inc., CV09-8796 JC (C.D. Cal. 2009).

Tyler Perry Sued For Copyright Infringement For Using Bertha V. James Song

2009-12-07T08:44:08Z

Los Angeles, CA – Tyler Perry, whose numerous job titles seemingly take up most of the movie trailer (reciting: written by Tyler Perry, directed by Tyler Perry, starring Tyler Perry, produced by Tyler Perry, edited by Tyler Perry, etc.), was sued for copyright infringement by the estate of the late gospel singer Bertha V. James. Plaintiffs allege that James wrote the lyrics for the song “When I Think of the Goodness of Jesus” in 1950, a traditional gospel song, “which was published and copy written (sic.) in 1974 by Elma & Carl’s Publisher, Inc.”

Plaintiffs allege that Tyler Perry “incorporated an entire verse of Plaintiff’s work, willfully without a license within their audiovisual work in a major motion picture feature film entitled ‘Madea Goes to Jail,’ Lionsgate Studios 2008.” Plaintiffs may elect between the profits generated by the defendants or statutory damages under 17 U.S.C. § 504. Plaintiffs also requests that the damages be enhanced because the Defendant’s alleged infringement is willful and intentional. Plaintiffs also seek attorneys’ fees and other costs pursuant to 17 U.S.C. § 505. The case is Estate of Bertha V. The Tyler Perry Company, Inc., et al., CV09-08712 JFW (C.D. Cal. 2009).

Purse & Handbag Designs Subject of Trade Dress Infringement Lawsuit

2009-12-03T06:30:00Z

Los Angeles, CA – Purse and handbag designer Linea Pelle, Inc. filed a trade dress infringement and unfair competition lawsuit against Sabina Handbags & Accessories, Inc. In 2006, Plaintiff alleges that it created the “Dylan Collection” of handbags that “incorporates certain unique and distinctive designs, ornamentation and embellishments that, as a whole, have become the iconic and signature look of the Dylan Collection,” which it defines as follows:

Sound like a square peg in a round hole? Assuming Plaintiff can establish secondary meaning before the infringement began, the definition sounds like a constrained extension of trade dress law. Why not seek design patent protection and avoid the challenges of establishing trade dress rights? But I digress. Plaintiff’s purse incorporating the alleged trade dress is pictured below.

Defendant’s accused product is pictured below.

The case is Linea Pelle, Inc. v. Sabina Handbags & Accessories, Inc., CV 09-8450 JSL (C.D. Cal. 2009).