Los Angeles Intellectual Property Trademark Attorney Blog

Lamont Dozier Sues Rapper D-Sisive For Music Copyright Infringement

2010-08-30T09:05:17Z

Los Angeles, CA – In 1977, Singer/Songwriter Lamont Dozier composed a song entitled “Peddlin’ Music on the Side” and registered the copyright therein. He further renewed the copyright registration in January of 2005.

In 2009, Derek Christoff (pka “D-Sisive”) recorded a rap song entitled “(I’m A) Nobody With a Notepad. Plaintiff accuses D-Sisive of copying substantial portion of On the Side, including a complete verse of Dozier’s singing taken directly from the original master recording. Dozier also claims that the rest of the son uses his lyrics and recording as a musical hook, “Notepad is simply a rap version of On the Side with lyrics spoken over it to a ‘rap beat’.” Urbnet Records, Fontana Distribution, and Universal Music Group are also accused of marketing, distributing, selling and licensing the Notepad song.

D-Sisive’s Video:

Dozier’s Peddlin’ Song:

The case is Dozier v. Christoff et al., CV10-6320 R (C.D. Cal. 2010).

Food Network Sued For Stealing Idea For Private Chefs Of Beverly Hills & Trademark Infringement

2010-08-22T09:46:25Z

Los Angeles, CA – Private Chefs, Inc. is suing Food Network for stealing the recipe for the successful show “Private Chefs of Beverly Hills” in an idea submission, trademark infringement, and unfair competition case. Plaintiff is the owner of a USPTO registration for its design mark “PCI Private Chefs, Inc.”, which registered in 2006. Plaintiff alleges that in April of 2002 its president pitched a show idea to Food Network titled “Celebrity Dish”, which premise involved private chefs that worked for celebrities and wealthy individuals explaining recipes on air along with the celebrities and individuals.

Although Food Network declined Plaintiff’s concept, it’s alleged that in April 2010 Defendants began broadcasting “Private Chefs of Beverly Hills.” Plaintiff alleges that the “concept of the Show is close to if not exactly the same as ‘Celebrity Dish.’” The complaint continues, “[t]he Show also blatantly infringes on Plaintiff’s federally registered trademark ‘Private Chefs’ and this infringement has caused substantial consumer confusion, particularly in light of the fact that Plaintiff’s principal office is in Beverly Hills.” The case is Private Chefs, Inc. v. Food Network, Inc. et al., CV10-6159 CBM (C.D. Cal. 2010).

Sports Trademark & Logo Coalition Sued For Trademark Declaratory Relief

2010-08-16T09:30:26Z

San Diego, CA – The Coalition to Advance the Protection of Sports logos (“CAPS”) protects and enforces the trademarks and logos owned by the NBA, MLB, NFL, NHL, and Collegiate Licensing Company. CAPS sent a cease and desist letter to Plaintiff James Simpson informing him that the CAPS members “maintain the exclusive right, title and interest in the names, trademarks, copyrights, symbols, emblems, designs, logos, photographs, uniforms, team colors and identification of their corresponding organizations and collegiate institutions.” CAPS further accused Simpson of selling unauthorized jerseys bearing the CAPS members’ trademarks and logos on his website.

Simpson, in response to the letter, filed a declaratory judgment action seeking the Court’s ruling that Simpson’s jerseys do not infringe on CAPS members’ trademarks and logos and that CAPS is not the exclusive licensee of any of the trademarks. The case is Simpson v. Coalition to Advance the Protection of Sports Logos, CV10-1637 JLS (S.D. Cal. 2010).

Burton Snowboards Sued For Patent Infringement

2010-08-12T10:04:09Z

Santa Ana, CA – Peter Van Bregmann is suing Burton Snowboards for infringing on a snowboard binding patent. Plaintiff alleges that in 1996 he met with Burton and after signing a confidentiality agreement, Plaintiff showed his invention to Burton, but it was not interested. On March 2, 1999, Plaintiff was issued U.S. Patent No. 5,876,045, entitled “Angularly Adjustable Snowboard Boot Binding,” which generally relates to a lever system that allows for convenient adjustment of boot bindings, whereby the use of tools is eliminated.

Defendant is accused of willfully infringing the patent by manufacturing a snowboard boot binding marketed under the “Burton Progression Custom Rental Binding” mark. The case is Bregmann v. Burton Snowboards North America, SACV-10-1199 DOC (C.D. Cal. 2010).

Court Denies GT’s Motion To Dismiss Coca Cola’s Trademark Infringement Counterclaims

2010-08-09T17:23:37Z

Santa Ana, CA – GT Beverage Company sued The Coca Cola Company seeking Court judgment that its sports-themed shaped bottles did not infringe Coke’s trademark and design patent. Details blogged here. Coke filed counterclaims for trademark infringement and GT moved to dismiss them based on the doctrine of judicial estoppel, which prevents a party from assuming a contrary position after that party “assumes a certain position in a legal proceeding, and succeeds in maintaining that position.” New Hampshire v. Maine, 532 U.S. 742, 756 (2001).

Coke obtained its USPTO trademark registration for a sphere bottle design via a global settlement of several legal proceedings (two in Belgium, one in The Netherlands, one in Spain, and two in the U.S.) with a third-party, O-Company N.V. In those cases, Coke asserted arguments of invalidity, non-infringement, and fair use in response to O-Company’s allegations. Based on Coke’s prior litigation stance, GT filed the motion to dismiss on the grounds that judicial estoppel precludes Coke from asserting its trademark infringement claims against GT.

The Supreme Court outlined three factors to consider when applying judicial estoppel: (1) whether a party’s current position is clearly inconsistent with its previous position; (2) whether the court accepted the party’s previous position, such that there is the perception that either the first or second court was misled; and (3) whether the party would gain an unfair advantage or impose an unfair detriment on the opposing party by asserting its inconsistent position. New Hampshire, 532 U.S. at 750-51.

The Court held that Coke’s secondary meaning arguments were not inconsistent because Coke argued that O-Company had not established secondary meaning, not that another company could not establish secondary meaning. Likewise, the likelihood of confusion position is not inconsistent because “whether GT’s use of the sphere bottle is likely to cause confusion with [Coke’s] bottle requires considering facts that are specific to GT’s use of the mark. The likelihood of confusion between GT and [Coke’s] sphere bottles is an issue that is independent of whether consumers are likely to confuse O-Company with [Coke’s] sphere bottles.”

GT raised three arguments regarding the judicial acceptance factor. First, GT argued that Coke’s favorable settlement with O-Company constitutes judicial reliance. Second, the Commercial Court of Brussels’ decision satisfies the judicial acceptance prong. Third, GT argued that judicial estoppel may apply even without judicial acceptance of a prior inconsistent position.

The Court was not moved. Regarding the settlement argument, the Court distinguished GT’s cases because they involved court-approved settlements. The Court gave some hope to GT regarding the Brussels Court’s decision of invalidity; however, at this early stage it declined to decide whether the Brussels Court could serve as a basis for judicial estoppel. GT’s third argument was rejected by the Court because the case relied upon involved the same parties that had previously litigated royalty claims over a 13 year period.

The Court also held that the unfair advantage prong did not favor GT at the pleading stage because GT still “has the opportunity to refute and disprove these claims.”

A copy of the order is available here.

The case is GT Beverage Company, LLC v. The Coca Cola Company, SACV10-00209 JVS (C.D. Cal. 2010).

Moroccanoil Sues For Trademark Infringement Over Hair Care Products

2010-08-05T09:05:08Z

Los Angeles, CA – Moroccanoil manufactures “salon only” hair care products under its Moroccanioil®, “M Moroccanoil Design” and “Vertical Moroccanoil M Design” trademarks, which are all registered with the USPTO. Through its distribution arrangements Moroccanoil restricts the sale of its products to professional salons and licensed cosmetologists.

Defendant Beauty Encounter is accused of selling counterfeit Moroccanoil products through the www.beautyencounter.com and www.perfumeshop.com websites. Plaintiffs allege that they conducted chemical testing of Defendant’s products and determined that they had “distinctly different chemical and physical properties that do not match genuine Moroccanoil Oil Treatment.” Further, the complaint states that because Defendants cannot legitimately obtain genuine products from authorized distributors, “Defendants encourage Moroccanoil distributors and salons to cheat Plaintiffs by encouraging the distributors to order more Moroccanoil Products than the distributor or any salon needs. The excess Moroccanoil Products are then sold, directly or indirectly, to Defendants.” Thus, in addition to the trademark related claims, Plaintiffs assert interference with contractual relations and prospective advantage claims. The case is Moroccanoil, Inc. v. Beauty Encounter, Inc., CV10-5696 SVW (C.D. Cal. 2010).

Nutritional Dietary Supplement Trademark & False Designation Lawsuit

2010-08-02T18:35:30Z

Santa Ana, CA - Nutrivita is a dietary supplement distributor, including the Arthro-7 nutraceutical supplement which is advertised as alleviating joint pain. The Arthro-7 trademark registered with the USPTO on October 24, 2000.

Plaintiff alleges that in July of 2010 it began receiving inquiries from customers and retailers regarding the relationship between an "Arthri 7.1" product and Plaintiff's Arthro-7 product. Nutrivita discovered that "Arthri 7.1" was being marketed and distributed by M V Cosmetic. Nutrivita alleges that "Arthri 7.1 is clearly an attempt to imitate the Arthro-7 trademark by altering the 'o' to an 'i', and changing '7' to '7.1'." In addition to the trademark infringement claim, Nutrivita asserts causes of action for unfair competition under the Lanham Act and the California Business and Professions Code § 17200, false description under the Lanham Act, and common law injury to business reputation. The case is Nutrivita Laboratories, Inc. v. M V Cosmetic et al., SACV 10-1142 JVS (C.D. Cal. 2010).

Red Light Photo Evidence Inadmissible - Conviction Overturned

2010-07-26T09:09:29Z

Orange, CA - This post is off topic, but these traffic cameras are popping up everywhere and some research shows that they cause more accidents than they prevent. The Appellate Division in the County of Orange recently ruled that the red light photo evidence was inadmissible because it lacked foundation, was hearsay, and violated the Defendant's confrontation rights. The Court held that the only person to testify, i.e. the officer, could not establish the time in question, the method of retrieval of the photographs, or the technology used.

We hold that the trial court erred in admitting the photographs and the accompanying declaration over the appellant’s hearsay and confrontation clause objections. Absent the photographs and content in the declaration, there is insufficient evidence to support the violation. Accordingly we reverse the judgment.

A copy of the ruling is here.

Aunt Joy’s Cakes Sued For Infringing See’s Candy Trademark

2010-07-22T08:42:39Z

Los Angeles, CA – Columbia Insurance Company owns the See’s Candy trademarks and exclusively licenses the marks back to See’s Candy Shops, Inc. The See’s Candy trademarks were first used in 1921 and have been registered with the USPTO and in other countries.

Aunt Joy’s sells cakes, cookies and chocolate-based confections from its Burbank store and website. Defendant is accused of selling cakes using the See’s trademarks, which cakes purportedly incorporated See’s Candy products. Defendant allegedly advertised its cakes as being “filled with Sees candy chips” and “dripping in Sees dark chocolate.” Plaintiff asserts causes of action for trademark infringement, Lanham Act unfair competition and dilution. The case is Columbia Insurance Company v. Aunt Joy’s Cakes, Inc., CV10-5164 RGK (C.D. Cal. 2010).

Car Manufacturers Sued For Infringing Patent On Combustion Engine

2010-07-19T07:05:29Z

Santa Ana, CA – Kruse Technology has filed a patent infringement suit against Defendants Daimler AG; Mercedes-Benz USA, LLC; Detroit Diesel Corporation; Freightliner Corporation; Western Star Truck Sales, Inc.; Volkswagen AG; Volkswagen Group of America, Inc., Audi of America, Inc.; Ford Motor Company; Cummins Inc.; and Chrysler Group LLC. The Defendants are accused of manufacturing engines that infringe U.S. Patent Nos. 5,265,562, 6,058,904, and 6,405,704. The ‘562, ‘904, and ‘704 patents are all entitled “Internal Combustion Engine With Limited Temperature Cycle”, but have different claims.

The complaint, however, does not appear to provide sufficient information to pass a Rule 12 motion to dismiss. In 2007, the Supreme Court’s Twombly decision stated that under Rule 8(a)(2) a plaintiff’s obligation to provide the grounds for relief “requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007). In 2009, the Supreme Court’s Iqbal decision expanded the application of Twombly to all civil cases. Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009). Thus, a complaint will be dismissed uner Rule 12(b)(6) if it fails to meet the Twombly pleading standard. See e.g. Anticancer, Inc. v. Xenogen Corp., 248 F.R.D. 278 (S.D. Cal. 2007)

The case is Kruse Technology Partnership v. Daimler AG, et al., SACV-10-1066 AG (C.D. Cal. 2010).

Endeavor Talent Agency Sued For Copyright Infringement Over Television Show Concept

2010-07-12T09:04:16Z

Los Angeles, CA – Brian Everett filed a copyright infringement lawsuit against Endeavor Talent Agency, LLC, alleging that his treatment “El Royale” was used to create CBS’s “Welcome to the Captain” television show. Everett claims that he developed the “El Royale” television concept in 2005 and early 2006. In addition, he claims to have written the script and shot key concept segments to assist in the sale of the program concept to third parties.

Everett alleges that in March of 2006 he sent the concept shots and script to a director’s agent at Endeavor, but heard nothing. He again claims to have sent the script to the same agent in 2007, and this time it made it to a television agent, but Endeavor declined to represent Everett because of its representation of other talent working on a similar concept. Everett alleges that “Endeavor provided Everett’s ‘El Royale’ concept to the creators of ‘Welcome to the Captain’ – and they thereafter used Everett’s script, visuals, story and character concepts in developing ‘Welcome to the Captain,’ with Endeavor’s knowledge and consent.” The case is Brian Everett v. Endeavor Talent Agency, LLC, CV10-4895 AHM (C.D. Cal. 2010).

Rapper Mack 10 Sued For Copyright Infringement By Producer/Composer Ervin Pope

2010-07-08T09:18:18Z

Los Angeles, CA – Rapper Mack 10, real name Dedrick Rolison, is being sued for copyright infringement for allegedly using Ervin “EP” Pope’s musical compositions. (Read the complaint here). Pope is a music producer who creates, mixes, and remixes audio recordings for various music recording artists and record companies. He alleges that in 2009, he produced and composed underlying musical compositions at the request of Mack 10 and record companies for a total of $60,000.00. The complaint contends that because there was no written agreement and Pope was not paid, he remained the copyright owner in the compositions, which he has registered with the U.S. Copyright Office.

Mack 10 is accused of using the underlying musical compositions in his songs “Big Balla” and “It’s Your Life,” which are on his latest “Soft White” album. “Plaintiff EP was credited on the Infringing Album with authoring the Infringing Songs, however, as stated, Plaintiff EP never signed an agreement authorizing any of the Defendants to sell or exploit the Infringing Songs embodying Plaintiff’s Musical Compositions for commercial gain.” The case is Ervin Pope v. Fontana Distribution, LLC, et al., CV10-4907 MRP (C.D. Cal. 2010).

PRACTICE NOTE: In addition to the federal copyright infringement cause of action, Pope asserts a common law copyright infringement cause of action, which appears to be preempted by the Copyright Act. Mention v. Gessell, 714 F.2d 87, 90 (9th Cir. 1983) (“The Copyright Act of 1976 preempts common law copyright claims, unless the claims arose from undertakings commenced before January 1, 1978."). Because Pope asserts that he composed the music in 2009, the common law copyright infringement cause of action is preempted. See 17 U.S.C. § 301(a).

“Big Balla” video:

The Wine Group Sues Diageo Over Savannah Trademark

2010-07-06T10:42:15Z

San Francisco, CA – The Wine Group has filed a trademark infringement lawsuit in the Northern District Court of California against Diageo PLC. Plaintiff sells a wine-based beverage that contains tea flavors under its Olde Savannah Southern Style Sweet Tea trademark, which it started using in December of 2009. According to the complaint, Plaintiff has sold over 29,000 cases of the beverage since December and plans on expanding the use of the mark to vodka-based beverages. In November of 2009, Plaintiff wisely filed an intent-to-use application with the USPTO prior to launching its product.

Diageo is the world’s largest wine, beer, and spirits company and owns the Smirnoff, Johnnie Walker, Captain Morgan, Jose Cuervo, and Guinness brands. Plaintiff alleges that Diageo has recently introduced a vodka-based sweet tea beverage under the Savannah Tea trademark. Because Plaintiff allegedly has priority over Diageo in using the Savannah mark, it contends that “Diageo’s use of the Savannah Tea mark is likely to cause confusion among consumers in a variety of ways. For example, consumers are likely to believe, erroneously, (a) that Diageo’s alcohol-based sweet tea is somehow associated, affiliated, or connected with TWG’s alcohol-based sweet tea, or vice-versa or, (b) that Diageo’s alcohol-based sweet tea is sponsored, authorized, or approved by TWG, or vice-versa.” The case is The Wine Group LLC v. Diageo PLC, et al., CV10-2879 DMR (N.D. Cal. 2010).

On a related note, it appears that The Wine Group's Savannah trademark application is the subject of an opposition proceeding filed by Spier Wines before the TTAB. The parties, however, have filed a joint motion to suspend proceedings in furtherance of settlement discussions.

True Religion On the Wrong End Of A Horseshoe Trademark Cancellation & Infringement Lawsuit

2010-06-26T02:33:53Z

Plaintiff Philip Duff is suing True Religion jeans for copying his horseshoe pocket design that he registered with the U.S. Patent & Trademark Office in 1995, long before True Religion began using the horseshoe design on its jeans. According to the complaint filed in the U.S. District Court in Los Angeles, Duff began using the horseshoe design trademark on jeans in the mid 80’s.

Duff alleges that while True Religion was developing its jeans in September of 2002, its CEO received a copy of Duff’s trademark registration record from the USPTO and was fully aware of Duff’s senior rights. Also, on December 10, 2003, its COO allegedly received another copy of Duff’s trademark registration record. “Despite such knowledge, Defendants proceeded to use in commerce on their jeans a ‘horseshoe’ design that is confusingly similar to Plaintiffs’ mark.” Defendants are also accused of describing their trademark as a modified “U” in their USPTO trademark applications and failing to disclose to the trademark examining attorney that they were fully aware of Duff’s prior registration.

Duff is asking the Court to cancel True Religion’s “horseshoe” design trademark because it was obtained by fraud. In addition, Duff seeks undisclosed monetary damages for the infringement and a permanent injunction preventing True Religion’s continued use of the horseshoe design. The case is Philip Andrew Duff, et al. v. Guru Denim, Inc. et al., CV10-4611 ODW (C.D. Cal. 2010).

PRACTICE NOTE: I always found it odd that in its counterfeiting lawsuits (here and here) True Religion always mentioned its design patent for the horseshoe design, but would never assert a cause of action for patent infringement. Now that it appears True Religion was allegedly aware of prior art that was not disclosed to the Patent Office, its decision to forego patent infringement claims becomes lucid.

Odd Rods Cartoon Trading Cards And Stickers In Copyright and Trademark Dispute

2010-06-23T16:59:52Z

Los Angeles, CA – Cartoonist/illustrator B.K. Taylor created the Odd Rods group of trading cards and sticker series in 1969 for the Donruss company. The theme for the cartoons was monsters driving cars, hot rods, and motorcycles. Around 2006, Plaintiff DZ Hart allegedly acquired the copyright and trademark rights to the collection. Subsequently, DZ Hart and Taylor entered into a consulting agreement for Taylor to design artwork for DZ. Plaintiff alleges that no products were created as a result of the agreement and it was terminated in January of 2009.

DZ then contracted a third-party to work on the project, which third party was contacted by Taylor’s attorney in June of this year and notified of Taylor’s claim of ownership in the Odd Rods intellectual property. Taylor allegedly sent the third-party a discussion draft of a proposed cooperation agreement between Taylor and EZ, which EZ claims is unenforceable because it was not executed. DZ alleges that Taylor never had exclusive rights to the disputed intellectual property and, if Taylor ever had any, the rights have lapsed due to abandonment and/or termination of all such rights and are now in the public domain. DZ has filed the declaratory judgment action asking the Court to rule that Taylor has no intellectual property rights in the Odd Rods characters. A copy of the complaint is available here. The case is DZ Hart Ltd. Liability Co., v. B.K. Taylor, CV10-4489 PSG (C.D. Cal. 2010).

Here's the promotional video that also provides a history of "Odd Rods" narrated by Scott Baio: