Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – Celebrity gossip and news website TMZ is being sued by Marc Schaffel Productions for using copyrighted video footage of Michael Jackson’s ex-wife, Debbie Rowe, without authorization. (Here's a copy of the copyright infringement complaint). Schaffel interviewed Rowe in 2003, portions of which were publicly aired in the same year. On January 31, 2004, the Santa Barbara County Sheriff’s office obtained the entire footage – including confidential, never released outtakes – from Schaffel’s house pursuant to a court order issued in the molestation trial.

On July 20, 2009, after Michael Jackson’s death, TMZ is accused of broadcasting confidential outtakes of the interview with Rowe where she jokes about using sedation to combat stage fright. “Schaffel and Rowe were stunned and distressed that TMZ, in a misguided attempt at gallows humor, broadcast the Confidential Outtakes, attempting to tie a 2003 joke by Rowe about drug use to Mr. Jackson’s tragic 2009 death from a drug overdose.” Four days later, TMZ removed the footage upon Schaffel and Rowe’s request and allegedly identified the Sheriff's office as the source of the confidential footage. The Sheriff’s office denied the accusation and TMZ then refused to identify the source of the footage: “TMZ asserts that its status as a ‘news’ provider exempts it from respecting copyrights, permits it to broadcast purloined material, and insulates it from liability for lying about sources of illicitly obtained materials.”

Schaffel asserts causes of action for copyright infringement and conversion under California law. The case is F. Marc Schaffel Productions, LLC v. TMZ Productions, Inc. et al., CV10-01306 GHK (C.D. Cal. 2010).

Los Angeles, CA - The District Court granted NBC’s motion for summary judgment of non-infringement in the “My Name Is Earl” copyright infringement lawsuit. (Order available here). Mark Gable filed a copyright infringement lawsuit (details blogged here) claiming that the “My Name Is Earl” television show was based on his copyrighted “Karma!” screenplay. (Details blogged here). Gable complained that he and his girlfriend sent his screenplay to The Gersh Agency in 1995, and that Ken Neisser, one of the Gersh agents who later represented Gergory Garcia, the subsequent creator of Earl, at another agency provided Garcia with a copy of Gable's screenplay.

To show copyright infringement, Plaintiff had to show Defendants had access to the “Karma!” screenplay and that the works were substantially similar. The Court found that Plaintiff failed to show that Garcia had access to “Karma!”:

In sum, even generously assuming that Plaintiff’s submission of Karma! actually reached Gersh, the record is insufficient to allow a reasonable jury to infer that Garcia had access to Karma. Thus, summary judgment for Defendants is appropriate. Finally, even if the weak evidence of access were sufficient to create a triable issue of fact, Plaintiff would still have to present evidence allowing reasonable minds to conclude that Karma! and Earl are substantially similar.

To determine whether the two works were substantially similar, the Court applied the Ninth Circuit’s two-part test consisting of extrinsic and intrinsic components. In the extrinsic test, the Court considered whether the works share a similarity of ideas and expression as measured by external, objective criteria that includes “the articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.” On summary judgment, the intrinsic test is inapplicable because it requires a lay person – the juror – to determine whether the “total concept and feel” of the two works is substantially similar – without the aid of expert testimony.

Although Plaintiff had hired David Nimmer – a copyright law expert – to provide an analysis of the objective criteria, the Court found that Nimmer’s report was not admissible under FRE 702 because he was not qualified to render an expert opinion on the issue of substantial similarity between two literary works, even though his expertise and education in copyright law is beyond reproach.

The Court then proceeded to analyze the two works and first found that although the two works share similar unprotectable themes, i.e. karma and redemption, the expression of those themes is markedly different. Beyond the general plot idea that both protagonists win the lottery, the Court found little in common. The Court also found that the sequence of events, excluding the karmic realization followed by the main character making amends for previous bad acts, were considerably different. Further, the Court found that the characters were dissimilar, other than the unprotectable general themes of karma and redemption. The setting for each work is different, Earl taking place in the suburban town of Camden and Karma! set in the slums of New York city. The mood and pace were also different because Earl is paced for half-hour long episodes, whereas Karma! is paced as a full-length feature film. The dialogue is also dissimilar in that Karma! is full of hard-core street vernacular that is unique to plaintiff’s work and has no counterpart in “Earl.” As a result, the Court granted NBC’s summary judgment of non-infringement finding that “even assuming arguendo that there is a triable issue regarding access, no reasonable jury could conclude that Karma! and Earl are substantially similar.” The case is Mark Gable v. National Broadcasting Company (“NBC”) and Gregory Thomas Garcia, CV08-04013 SVW (C.D. Cal. 2008).

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)

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)

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).

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).

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).

Los Angeles, CA – Conan Properties International, LLC filed a copyright infringement lawsuit against Prion Books Ltd., Carlton Publishing Group, and HarperCollins UK for the sale of “Conan the Barbarian” book. The fictional “Conan” character was created by the late Robert E. Howard, a prolific writer of fantasy stories published in the day’s popular “pulp fiction” magazines. Plaintiff now owns all of Howard’s copyrights in the “Conan” works.

Plaintiff alleges that in May of 2009, Defendants published a book entitled “Conan the Barbarian” in the United Kingdom, which book is now also available in the United States. Defendants’ book contains stories that allegedly infringe Plaintiff’s copyrights. Plaintiff also asserts causes of action for vicarious and contributory copyright infringement. The case is Conan Properties International, LLC v. Prion Books, Ltd. et al., CV09-08369 DDP (C.D. Cal. 2009).

Los Angeles, CA – Breakdown Services, Ltd. prepares script analyses and summaries, commonly known as “breakdowns,” to the entertainment community. The breakdowns are distributed via the Internet to authorized theatrical and other talent agencies and management companies. Plaintiff has applied for copyright registration of the material and alleges that all of the breakdowns prominently display the following warning: “This confidential information is the property of Breakdown Services, Ltd. – DO NOT COPY!!!”

Netxplosion is accused of copying Plaintiff’s breakdowns in their entirety and infringing Plaintiff’s copyrights by selling unauthorized copies of the breakdowns. Plaintiff allegedly demanded that Defendants cease infringing on Plaintiff’s works, but Defendants continued to willfully and knowingly copy Plaintiff’s breakdown. The case is Breakdown Services, Ltd. v. Netxplosion et al., CV09-8179 DSF (C.D. Cal. 2009).

Los Angeles, CA – Jewelry designer David Rasnick sued Jewelry and Minerals of Las Vegas for copyright infringement. Rasnick has been designing jewelry for over 20 years and designed a teardrop shaped humpback whale loop earring. Rasnick registered the work with the Copyright Office on May 22, 1989. Rasnick alleges that “Defendant has sold unauthorized and infringing copies of the humpback whale earring, which bear a design that is substantially similar to the humpback whale earring at retail, at wholesale and through retailers.” Rasnick alleges that his damages cannot yet be determined and he may elect between the profits generated by the defendant or statutory damages under 17 U.S.C. § 504. Plaintiff also requests that the damages be enhanced because the Defendant’s alleged infringement is willful and intentional. Plaintiff also requests his attorneys’ fees and other costs pursuant to 17 U.S.C. § 505. The case is David Rasnick v. Jewelry and Minerals of Las Vegas, CV09-08072 MMM (C.D. Cal. 2009).