Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – EABO, Inc. sued Huntington Beach, CA based Mimic Skateboards, Inc. for copyright infringement, trademark infringement, trademark dilution, trade dress infringement and unfair competition. Plaintiff manufactures various sized disc shaped wooden boards that rest upon a cylinder shaped roller, which were originally designed by surfers for training purposes. The IndoBoard has now evolved into its own sport where individuals stand on the board and rock it back and forth to balance on the roller and perform various tricks. If a picture is worth 1,000 words, then moving pictures are priceless:

Plaintiff is the exclusive licensee of a registered Indo Board design trademark and the common law rights to the word mark. Plaintiff is also the copyright owner in an instructional DVD created in 2004. The complaint alleges that beginning in 2001, Plaintiff entered into a manufacturing agreement with Mimic to manufacture its boards, which relationship terminated in 2008 when Mimic informed Plaintiff that it was going to only manufacture skateboards.

A few months later, Plaintiff alleges that it discovered Mimic offering for sale a similar product under the “Orbit Board” mark, but purchase of the Orbit product included an unauthorized copy of the instructional DVD. In addition, Mimic allegedly used the Indo Board trademark to route customers to websites where the Indo Board was “sold out,” but offered its Orbit Board as an equivalent replacement. Plaintiff further alleges that the unique shape and color of the Indo Boards function as its trade dress, which is recreated in the Orbit Board. The case is Eabo, Inc. v. Mimic Skateboards, Inc., CV09-04208 RSWL (C.D. Cal. 2009).

Posted by Milord A. Keshishian | Permalink | Email This Post

Posted In: 17200 Unfair Competition , Copyright Litigation , Lanham Act 43(a) - 15 USC 1125 , Trade Dress , Trademark Litigation

Bookmark:

Los Angeles, CA – ELVH, Inc., a company owned by musician Eddie Van Halen, filed a copyright infringement lawsuit, in the Central District Of California (Los Angeles Division), against sports-giant Nike, Inc. Van Halen created three striped designs which he used on his “Frankenstein” guitars. And he registered the works with the US Copyright Office.

Van Halen accuses Nike of copying his designs and using them on its “Dunk Lows” line of shoes. In addition to its copyright infringement claim, ELVH seeks a constructive trust and an accounting. Plaintiff seeks either actual or statutory damages under 17 U.S.C. § 504, in addition to their costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is ELVH, Inc. v. Nike, Inc., CV09-04219 CAS (C.D. Cal. 2009).

Posted by Milord A. Keshishian | Permalink | Email This Post

Posted In: Copyright Litigation

Bookmark:

Los Angeles, CA – Oskar Systems, LLC has a registered copyright in a software program that is designed to operate every aspect of a go-kart racing business. The registration certificate is attached as Exhibit D to its complaint (copy of the complaint is available here). The software is adapted for a wide range of functions, from record keeping all the way to individual driver timing and statistical analysis. The software is licensed to several customers, on an annual basis, and Plaintiff charges an annual fee for maintaining the software system.

In 2005, Oskar alleges that it licensed the software to Pole Position Raceway, Inc., an indoor go-kart racing business located in Corona, California. Pole Position terminated its use of the software two years later. Then, Oskar learned that Pole Position switched to “Speed Sheet” software produced by co-defendant Club Speed, Inc., which is alleged to perform almost exactly the same way that Oskar’s software does, “producing almost identical graphs and reports.” Also, the customer liability waiver agreement is alleged to be identical. A screen capture of Club Speed's software display, which is at issue in the lawsuit and was obtained from its website, is presented herein.

Plaintiff alleges that Club Speed and Pole Position, and their respective principals, have been aggressively marketing the Speed Sheet software and have successfully lured away Plaintiff’s existing customers. The case is Oskar Systems, LLC v. Club Speed, Inc. et al., CV 09-03854 AHM (C.D. Cal. 2009).

PRACTICE NOTE: To establish copyright infringement, Oskar must prove (1) ownership of a valid copyright and (2) unauthorized copying of protected elements of the copyrighted work. See Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1174 (9th Cir. 2003). "Infringement is shown by a substantial similarity of protectible [sic] expression, not just an overall similarity between the works." 4 Nimmer on Copyright § 13.03[F]. To establish infringement, Oskar must "show[] that the works in question 'are substantially similar in their protected elements.'" Metcalf v. Bochco, 294 F.3d 1069, 1072 (9th. Cir. 2002).

"It is settled that computer programs are entitled to copyright protection." General Universal Systems, Inc. v. Lee, 379 F.3d 131, 142 (5th Cir. 2004). "A computer program is made up of several different components, including the source and object code, the structure, sequence and/or organization of the program, the user interface, and the function, or purpose, of the program. Whether a particular component of a program is protected by a copyright depends on whether it qualifies as an 'expression' of an idea, rather than the idea itself." Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173, 1175 (9th Cir. 1989). "[Copyright] protection extends not only to the 'literal' elements of computer software -- the source code and object code -- but also to a program's nonliteral elements, including its structure, sequence, organization, user interface, screen displays, and menu structures." Importantly, "[t]he 'non-literal components' of a computer program, including its user interface, are protectable if, 'on the particular facts of each case, the component in question qualifies as an expression of an idea [not] an idea itself.'" Apple Computer v. Microsoft Corporation, 799 F.Supp. 1006, 1020 (N.D. Cal. 1992) (quotation omitted)). Thus, Oskar must prove that the reports are copyrightable and defendants have copied protectable elements of its copyrighted software.

"Copyrighted software ordinarily contains both copyrighted and unprotected or functional elements." Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 599 (9th Cir. 2000). Compilations of individually unprotectable elements, however, may be afforded copyright protection: the "collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in a way that the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. § 101. Thus, "even if the constituent elements of a work are not protected, protection may extend to the 'selection, coordination, or arrangement' of such elements in the work as a whole." O.P. Solutions, 1999 U.S. Dist. LEXIS 979 at *9; Metcalf, 294 F.3d at 1074 ("[A] particular sequence in which an author strings a significant number of unprotectable elements can itself be a protectable element. Each note in a scale, for example, is not protectable, but a pattern of notes in a tune may earn copyright protection.").

As for computer software, "if constituent elements of a screen display or user interface lack requisite originality, or are outside the scope of copyrightable material under 102(b), or are otherwise unprotectable, the selection, coordination, and arrangement of such elements may be protectable, even though those individual elements are not." O.P. Solutions, 1999 U.S. Dist. LEXIS 979 at *9 (citing Apple, 799 F.Supp. at 1023). More importantly, however, "a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship." Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003) (citing Feist, 499 U.S. at 358 ("[T]he principle focus should be on whether the selection, coordination, and arrangement are sufficiently original to merit protection.")).

Posted by Milord A. Keshishian | Permalink | Email This Post

Posted In: Copyright Litigation

Bookmark:

Los Angeles, CA – The late Evel Knievel was a motorcycle daredevil whose crashes made him more famous than his successful jumps. And now, less than two years after his death, lawsuits continue regarding ownership of the copyrights in his pictures and film clips and infringement thereof. In 2005, Gary Schreiber sued Knievel in Nevada District Court for a declaration of validity of a 1982 written transfer of copyrights to pictures and films made by Knievel (story about the suit is here). While the Nevada lawsuit is still pending, Schreiber has now filed a copyright infringement suit, in the Central District Of California (Los Angeles Division), against American Broadcasting Company, ABC Television Network, Inc. and ESPN, Inc.

Plaintiff alleges that when Evel was in need to capital to resurrect interest in his career, Plaintiff purchased the rights to the film and the films themselves in 1982 via written agreement executed by Knievel. Plaintiff then produced two compilation films entitled “Evel Knievel’s Specacular Jumps” and “The Last of the Gladiators.” Schreiber alleges that at some time, Knievel once again sold or licensed the same rights – previously granted to Schreiber – to Defendants. Schreiber alleges that Defendant ABC used the copyrighted work in “David Blaine’s Drowned Alive” television show and Defendant ESPN used the copyrighted work during the “Impossible Jump by Mike Metzger” television show. The Defendants are accused of intentional and willful infringement because Defendants’ parent, The Walt Disney Company, has previously paid Schreiber to use the copyrighted Evel Knievel works. The case is Raymond Gary Schreiber v. American Broadcasting Company et al., CV09-03205 AHM (C.D. Cal. 2009).

Posted by Milord A. Keshishian | Permalink | Email This Post

Posted In: Copyright Litigation

Bookmark:

Los Angeles, CA – Harkham Industries, Inc. filed a copyright infringement lawsuit, in the Central District Of California (Los Angeles Division), against Bizz, Inc. and Modcloth, Inc. Harkham designs and manufactures women’s apparel and its art department creates prints and designs which are applied to fabrics. In April of 2006, Plaintiff allegedly created an original work of art which it titled the “Shadow Fern” design. Plaintiff immediately registered its design with the US Copyright Office. Plaintiff applied the design to two dresses and tops, which are sold at high end retailers for approximately $200.00 a piece.

In March of 2009, Plaintiff discovered that Modcloth was selling an allegedly infringing garment under the name “After the Rain Dress” pictured herein. Plaintiff’s lawyer sent a cease and desist letter to Modcloth and was informed that the source of the garment was Bizz, dba Ark & Co. Plaintiff’s lawyer sent two letters to Bizz, but allegedly received no response. Thus, Plaintiff filed suit and now seeks either actual or statutory damages under 17 U.S.C. § 504, in addition to its costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is Harkham Industries, Inc. v. Bizz, Inc. et al., CV09-02970 VBF (C.D. Cal. 2009).

Posted by Milord A. Keshishian | Permalink | Email This Post

Posted In: Copyright Litigation

Bookmark:

Los Angeles, CA – Skycam manufactures the Emmy award winning aerial camera system that is used to obtain above the action camera shots at sporting events such as the Super Bowl®. Skycam filed suit against Patrick Bennett and Actioncam, LLC for trademark and copyright infringement and trade secret misappropriation.

Plaintiff alleges it hired Bennett as its chief engineer and provided him with engineering and design documents to work on the next generation of aerial cameras. Although Bennett developed new stabilization algorithms and hardware he was testing, Skycam states that it has not yet publically disclosed or the displayed the innovations. Skycam also alleges that in his position as chief engineer, Bennett was provided access to Skycam’s customer and vendor lists.

In 2006, Bennett and Skycam entered into a Separation Agreement and Release when his employment with Skycam ended, which agreement included a provision for maintaining the confidentiality of all proprietary information. Skycam alleges that “under Bennett’s guidance and with full knowledge of Bennett’s obligation to keep information learned during his prior employment with Skycam confidential, Actioncam utilized the confidential information provided by Bennet to develop” a competing aerial camera system which is marketed to Skycam’s customers. Defendants allegedly posted Skycam’s copyrighted works on their website and used Skycam’s trademark without authorization. The case is Skycam, LLC v. Actioncam, LLC, CV09-02409 PA (C.D. Cal. 2009).

Posted by Milord A. Keshishian | Permalink | Email This Post

Posted In: 17200 Unfair Competition , Copyright Litigation , Lanham Act 43(a) - 15 USC 1125 , Trade Secrets , Trademark Litigation

Bookmark:

Los Angeles, CA – Legaljiffy.com sued rival website based legal document preparation company Legalcpu.com, Inc. for copyright infringement, trade dress infringement, and state unfair competition. Legaljiffy’s website has provided self-help legal documents since 2008 and is attorney-owned and operated. Defendant allegedly began its website in December of 2005, but has recently changed the look and feel of its website by copying “Legaljiffy’s website, both in look, feel and by content.” Defendant is alleged to have modified its website after Plaintiff declined to enter into a partnership, which partnership offer was intended to add an attorney to Defendant’s ownership group.

PLAINTIFF’S WEBSITE FRONT PAGE:

DEFENDANT’S WEBSITE FRONT PAGE:

Although the complaint asserts a copyright infringement claim, it does not plead the prerequisite ownership of a copyright registration. Further, Plaintiff also claims that its website is distinctive in support of its trade dress cause of action. However, the complaint fails to identify which features are immediately distinctive without requiring a showing of secondary meaning. The case is Legaljiffy.com, Inc. v. Legalcpu.com, Inc., CV 09-01867 AHM (C.D. Cal. 2009).

PRACTICE NOTE: Reviewing the front page of Plaintiff’s website, nothing in its design immediately strikes me as being distinctive. Courts have not yet determined whether website “look and feel” qualifies as product packaging – which may be inherently distinctive – or product design – which requires secondary meaning. Indeed, the Supreme Court in Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000), noted that “[t]o the extent there are close cases, we believe that the courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.” Based on the recent creation of Plaintiff’s website, it would be difficult to illustrate secondary meaning. Also, although a recent District Court case in the Ninth Circuit denied a motion to dismiss a trade dress cause of action for “look and feel” of a website as preempted by the Copyright Act, Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240 (W.D. Wash., 2007), another granted summary judgment of non-infringement on Plaintiff’s trade dress infringement claim because Plaintiff had not shown secondary meaning in its website pink color or two phrases posted thereon. SG Servs. v. God's Girls Inc., 2007 U.S. Dist. LEXIS 61970 (C.D. Cal. May 9, 2007).

Posted by Milord A. Keshishian | Permalink | Email This Post

Posted In: 17200 Unfair Competition , Copyright Litigation , Lanham Act 43(a) - 15 USC 1125 , Trade Dress

Bookmark:

Los Angeles, CA – Clothing designer Christian Audigier was sued by Bryan Callan for unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and breach of their licensing agreement (details blogged here). Audigier answered the complaint and counterclaimed (copy available here) alleging he entered into an agreement to purchase Callan’s original artworks and copyright thereto for use on Audigier’s eponymous product line. Audigier alleges that Callan breached the agreement by failing to provide a minimum of ten original pieces of artwork each and every month. In addition, Audigier claims that despite the transfer of ownership of the copyrights to Audigier, Callan requested that Audigier loan him some of the artwork to show in Callan’s gallery. By failing to return the artwork, it’s alleged that Callan intended to convert the artwork to his own possession and use under the guise of “borrowing” the same. Audigier seeks a declaration of copyright ownership because Callan allegedly applied for federal copyright registration wherein Callan falsely represented that he is the owner copyrights despite assigning the rights to Audigier. The case is Bryan Callan v. Christian Audigier, Inc. et al., CV 08-08072 GW (C.D. Cal. 2008).

Posted by Milord A. Keshishian | Permalink | Email This Post

Posted In: Copyright Litigation , License-Licensing

Bookmark:

Los Angeles, CA – In October of 2008, Konami sued Vintage Sports Cards, Inc. in the Central District of California for sales of allegedly counterfeit Yu-Gi-Oh! trading cards (details blogged here). The Court entered a permanent injunction against Vintage and, after taking expedited discovery, Konami discovered that Upper Deck – Konami’s exclusive distributor – was the alleged source of the infringing cards distributed by Vintage.

Upper Deck allegedly was the source of “at least 531,240 counterfeit Rare Cards” provided to Vintage. And in October of 2008, Konami’s attorneys discussed Upper Deck’s role in the distribution of allegedly infringing cards with Upper Deck’s lawyers. During counsels’ communications, Upper Deck’s lawyers allegedly threatened Konami with “mutual assured destruction” through litigation.

Konami then provided Upper Deck with access to the seized cards and subpoenaed records from Upper Deck to determine the scope of the alleged counterfeiting and infringement. One day before responses were due, Upper Deck refused to comply with the subpoena raising an objection of improper service on its California office.

On December 10, 2008, Upper Deck filed suit in the District of Nevada alleging Konami breached its agreements and committed fraud. The complaint also contained causes of action for slander and civil conspiracy arising from Konami’s communications to third parties that Upper Deck provided counterfeit cards to Vintage. In response, on the very next day, Konami terminated its distribution agreement with Upper Deck. Upper Deck then raised the stakes by filing suit in Amsterdam on December 16, “seeking an interim order requiring specific performance of the European version of the parties’ distribution agreement.” Konami then alleged that Upper Deck misrepresented the holdings of the Dutch proceedings in that “the five-page interim order did not decide any issue in this action,” despite Upper Deck’s assertion to the Central District of California.

Konami amended its complaint to add Upper Deck as a co-defendant and moved for preliminary injunction against Upper Deck, which motion was denied without prejudice (details blogged here). Konami then renewed its motion for preliminary injunction against Upper Deck (read here), which injunction was granted.

On February 26, 2009, the Central District of California granted Konami’s preliminary injunction application enjoining Upper Deck from manufacturing, advertising and distributing the Yu-Gi-Oh! cards (read order here). In response, Upper Deck filed suit, in the District of Nevada, against Konami alleging trademark infringement of its hologram mark, in addition to Nevada unfair competition and deceptive trade practices claims. (Ryan Gile blogged here)

And now, as the cherry bomb on top of the “mutual assured destruction” sundae, Upper Deck has filed its counterclaims in the Central District of California (copy available here), wherein it asserts eleven causes of action including breach of contract, breach of implied covenant of good faith and fair dealing, fraud, slander per se, and civil conspiracy. Updates to the fireworks are sure to follow. The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008).

Posted by Milord A. Keshishian | Permalink | Email This Post

Posted In: 17200 Unfair Competition , Copyright Litigation , Counterfeit , Lanham Act 43(a) - 15 USC 1125 , License-Licensing , Trademark Litigation

Bookmark:

Los Angeles, CA – A copyright infringement and breach of contract lawsuit was filed at the Federal District Court in Los Angelesover the film “The Listening.” Echo Film, an Italian movie making company, produced the English-language feature motion picture which is about classified global audio surveillance of private citizens. The film was allegedly well received at film festivals and was believed to be an Oscar® contender.

In September of 2006, Defendant DigiWorld contracted to purchase certain rights in The Listening for $3 million. After the film was not selected for the Oscar® list, however, DigiWorld allegedly defaulted on its agreement and did not pay the $3 million nor did it return the film. Instead, Plaintiff alleges, Digiworld and its co-defendants distributed the film in the U.S. and internationally. Also, the complaint continues, Defendants “made unauthorized edits to the film and falsely listed Armas and Reynolds as producers of the film.” The case is titled Echo film S.r.l. v. DigiWorld Studios, Inc. et al., CV09-01455 JFW (C.D. Cal. 2009).

PRACTICE NOTE: I wonder if Rob Spence -- a filmmaker who wants to embed a camera in his eye -- saw the movie:

EYEBORG-- The Two Week Trial from eyeborg on Vimeo.

Read the Wired article here and visit the filmmaker's website here.

Posted by Milord A. Keshishian | Permalink | Email This Post

Posted In: Copyright Litigation , License-Licensing

Bookmark: