Los Angeles Intellectual Property Trademark Attorney Blog

Los 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).

Los Angeles, CA – A copyright and trademark infringement lawsuit was filed against Warner Bros. and 5th Cell Media, the creators of the Scribblenauts videogame, by attorneys for Charles Schmidt – creator of the Keyboard Cat meme – and Christopher Orlando Torres – creator of Nyan Cat meme.

Keyboard Cat is a video of Schmidt’s cat, Fatso, wearing a shirt and playing an electronic keyboard with its paws. The meme, which is a communication of ideas or information, has gone viral, receiving over thirty million YouTube hits. Schmidt has registered the video’s copyright with the US Copyright and has two pending trademark applications for the term “Keyboard Cat”, click to see the first trademark application and the second trademark application. Keyboard Cat’s stardom has led to numerous appearances in commercials, including a feature role in a national Starburst candy television commercial.

Nyan Cat is a cartoon character with a cat’s face with a Pop Tarts body, basically a pink frosting sprinkled horizontal breakfast bar with glitter and a rainbow flowing therefrom. The GIF animation has also gone viral and it was the fifth most-watched video on YouTube in 2011, winning the 2012 Webbys’ “Meme of the Year” award. Torres also registered the copyright in the animated GIF with the US Copyright Office, but the complaint incorrectly repeats Keybaord Cat's copyright registration number. Torres has also filed a trademark application to register the “Nyan Cat” word mark with the US Patent & Trademark Office.

Plaintiffs accuse Warner Bros and 5th Cell of including, without any licenses or authorizations, the Keyboard Cat character in their original Scribblenauts videogame released in 2009, the 2010 Super Scribblenauts, 2011 Scribblenauts Remix, and including both Keyboard Cat and Nyan Cat in 2012 Scribblenauts Unlimited. Defendants are accused of shamelessly using “Nyan Cat” and “Keyboard Cat” by name to promote and market their games. Plaintiffs claim that Warner Bros and 5th Cell’s trademark infringement was willful and intentional and are requesting an award of treble damages and requesting the case be deemed exceptional under 15 U.S.C. § 1117(a), thereby entitling Plaintiffs to an award of reasonable attorneys’ fees.

CORRECTION TO COPYRIGHT DAMAGES BELOW: Nyan Cat first appeared in Scribblenauts Unlimited in 2012, a year after Nyan Cat's copyright registration date. Thus, Nyan Cat is entitled to statutory damages, enhancement thereof, and attorneys' fees and costs. The follwing paragraph only applies to Keyboard Cat.

Plaintiffs, however, mistakenly demand statutory damages and an enhancement of damages under 17 U.S.C. § 504, and mistakenly believe that they are entitled to attorneys’ fees and costs of suit under 17 U.S.C. § 505. Defendants are accused of infringing both copyrights in their initial 2009 release of the video games and neither copyright was registered until 2010. Thus, neither Plaintiff is entitled to statutory damages or attorney’s fees, a prerequisite of which – per 17 U.S.C. § 412 – is either registration before (1) commencement of any infringement or (2) within three months after the first publication of the copyrighted work. Further, the Keyboard Cat video was published over five years before the application to register the copyright was filed, thus it is not entitled to a presumption of validity afforded by 17 U.S.C. § 410(c).

A copy of the complaint is available here.

The case is Schmidt, et al. v. Warner Bros. Entertainment, Inc., CV13-02824 JFW (C.D. Cal. CV13-02824).

Los Angeles, CA - A’lor International sued numerous jewelry designers, producers and retailers for copyright and trade dress infringement over sales various nautical twisted cable motif jewelry. A’lor filed a summary adjudication motion asking the Court to deem Defendants liable for copyright and trade dress infringement. Defendant Lau filed a motion for partial summary judgment that it did not infringe A’lor’s copyrights and Defendant Miami Lakes filed a motion regarding the trade dress infringement claims, which motions were joined by several defendants.

To succeed on its copyright infringement claims, Plaintiff must show that (1) Plaintiff owns valid copyrights in the Subject Designs; and (2) Defendants infringed on Plaintiff’s copyright. Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140 (9th Cir. 2003). The Court held that A’lor’s copyright registration certificates constituted prima facie evidence of a valid copyright, which presumption of validity defendants were unable to rebut. 17 U.S.C. § 410(c). To rebut the presumption, Defendants argued that the copyrights were invalid because they lack originality. Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003). The Court, however, found that Defendants submitted evidence of pre-existing nautical twisted cable motif jewelry sold by third parties and to provide copyright protection to Plaintiff’s would improperly give Plaintiff a monopoly on nautical rope band jewelry. Nevertheless, the Court found that Plaintiff was entitled to a “thin” copyright in the style of the clasp or other ornaments and panther heads. But once the court subtracted the unoriginal elements and considered only Plaintiff’s original contributions, no copyright infringement could be found because virtually identical copying didn't exist, the proper infringement test for a “thin” copyright.

Regarding its trade dress infringement claim, A’lor had to show that (1) the trade dress is nonfunctional; (2) the trade dress has acquired secondary meaning, and (3) there is a substantial likelihood of confusion between the Accused Designs and the Subject Designs. See Art Attacks v. MGA Entertainment, Inc., 581 F.3d 1138, 1145 (9th Cir. 2009). “Trade dress” refers to the “total image of a product” and may include features such as size, shape, color, color combinations, texture or graphics. International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993). Because the scope of trade dress protection may be broad, courts exercise particular caution when extending protection to product designs, as granting trade protection to an ordinary product design would create a monopoly in the goods themselves. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir. 1997).

A’lor described its trade dress as “interwoven nautical cable threads composed of twisted stainless steel wire forming single- or juxtaposed multi-strand treated cable threading with soft-textured adornments and embellishments spaced through the cable.” The Court found the definition to be amoebic, namely “impermissibly general and overbroad...As such, extending protection to this trade dress would permit Plaintiff to exclude competition from functionally similar products that use stainless steel in nautical cable band jewelry...Therefore, the Court finds that the trade dress, as articulated by Plaintiff, is no more than a concept or idea.”

The case is A’lor International, Ltd. v. Tappers Fine Jewelry, Inc., CV12-02215 RGK (C.D. Cal. 2012).

Reality TV writer Henry Haraway filed a copyright infringement and breach of contract case against E! Entertainment Television and William Morris Endeavor talent agency, just to name a few. To see the rest of the defendants and to read the entire complaint, click here. Plaintiff alleges that he wrote a one page synopsis for a reality TV competition called “Opening Act”, described as “battle of the band type of competition local bands with dreams of big time recording contracts will battle it out for a chance to perform as the opening act for a major recording artist in their genre of music.”

As any prudent writer should do, Plaintiff registered the synopsis with the U.S. Copyright Office in 2003. He then submitted it to E! Entertainment and executed its submission agreement. It’s also alleged that William Morris and E! both executed an agreement confirming receipt of the synopsis and acknowledging that the material would not be used without compensating Plaintiff.

Unfortunately for Plaintiff, this appears to be an extremely tough case to win. Copyright law does not protect ideas, only the author’s expressions of that idea. For example, one cannot protect an idea for a reality TV show where contestants sing and are voted off by either judges or viewers, otherwise American Idol would sue America’s Got Talent. Similarly, the authors of the movie Tombstone could not sue the authors of Wyatt Earp, even though both movies told the story of Wyatt Earp and Doc Holliday and the shootout at the O.K. Corral. But if Wyatt Earp copied the script of Tombstone, a copyright infringement claim would arise.

Plaintiff’s breach of contract claim against E! does not look promising either. The “Submission Agreement” referenced is E!’s form agreement wherein the submitting party agrees and acknowledges “that no contract or obligation of any kind, other than those arising pursuant to the express terms of the Agreement, is assumed by [E!] or may be implied against [E!] by reason of [E!’s] review of the Material and/or discussions or negotiations we may have.” And it specifically states that the submission neither creates nor constitutes an implied-in-fact or implied-in-law contract regardless of industry norms.

The case is Haraway v. E! Entertainment Television, CV13-00628 FMO (C.D. Cal. 2013).

After months of shots across the bow, Craneballs Studios (an app and video game developer) has pulled the trigger on a copyright infringement lawsuit for alleged copying of its popular Overkill first-person shooter game. Craneballs accuses Feelingtouch’s Gun & Blood video game of being an Overkill knock-off and further accuses Feelingtouch of employing a game development strategy that “is based in whole or part on copying of successful games from other developers, sometimes ‘porting’ them to a different operating system before the original publisher.” Craneballs claims that its iOS version of the video game was extremely successful, but that its Android version did not reach the same number of downloads because Feelingtouch ported its copycat version to the Android platform and illicitly cut into Overkill’s success.

Not only did Feelingtouch’s Gun & Blood video game become a top twenty Android download, it was also awarded the $200,000 grand prize in Samsung’s Smart App Challenge, a competition intended to reward developers of “innovative apps” for Samsung’s Galaxy Note and Tab devices. The complaint cites an Appaddict.net article stating: “It is sickening to see Samsung Actively rewarding and promoting such behavior and calling it innovative...Instead you are just hurting a hard-working indie developer and sending the wrong message, saying that it’s alright to clone.” When Feelingtouch ignored Craneballs’ cease and desist letter and complaints to Samsung fell on deaf ears, Craneballs was left with no alternative but to file this copyright infringement lawsuit. Click here for a copy of the complaint.

To prevail on its copyright infringement claim, Craneballs must show that 1) it owns the copyright in the allegedly copied work; 2) defendants had access to the work; and 3) plaintiff's and defendant's works are substantially similar. Cooling Sys. and Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 491 (9th Cir. 1985). Craneballs can probably establish the first two factors fairly easily, but with respect to substantial similarity, it must show that defendants copied protectable components of its Overkill video game as opposed to the general ideas of a first-person shooter game, e.g. camouflage outfits, selecting different weapons, an artillery depot setting, etc. 17 U.S.C. § 102(b) ("In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work"). Also, when an idea for a game can be expressed in only a limited number of ways, the “merger” doctrine provides that the idea merges with its expression and receives no protection absent identical copying. Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 209 (9th Cir. 1998) (elements of karate video game including number of combatants, logistics of the match, common karate moves, and certain background scenes-not protectable because they resulted from "either constraints inherent in the sport of karate or computer restraints."). Thus the court will need to filter out all of the non-protectable elements of the two games to determine substantial similarity and infringement. To that end, Craneballs has produced the accompanying side by side comparison of the two games illustrating what it believes are copied elements.

The case is Craneballs Studios, LLC v. Feelingtouch, Inc., et al., SACV12-02196 (C.D. Cal. 2012).

Mystique, a shoe and sandal manufacturing company, filed a copyright infringement and unfair competition claim against Ivanka Trump for allegedly copying two sandal designs. Mystique created and registered with the US Copyright Office its ornamental designs affixed to sandals titled “By the Sea – Style 3323” and “Starry Eyed – Style 4179.” Mystique contends that Trump’s “Pia” and “Pandra” sandals are substantially identical copies of Mystique’s shoe designs: “Defendants’ acts are willful, deliberate and committed with prior notice and knowledge of Plaintiff’s copyrights. At a minimum, Defendants were willfully blind and in reckless disregard of Plaintiff’s copyrights.”

This isn’t the first time Trump’s been accused of pilfering another company’s shoe design. Fashionista covered Derek Lam’s scandalous sandal copying allegations against Ivanka Trump, but it appears the response to Lam’s cease and desist letter was to go pound sand because Lam did not have proper intellectual property protection and the shoe design had been previously produced by numerous third parties. My loyal readers will say: “Wait a minute, you’ve told us that copyright law views fashion products, for example pursues and shoes, as useful articles that cannot be copyrighted. So how was Derek Lam supposed to protect his sandal design.”

Other loyal readers will – I hope – respond with DESIGN PATENTS! Unlike UGG shoes, however, many fashion designers are unaware that fashion designs can be protected through design patents, which must be filed within one year of the design’s public disclosure. Without a design patent, it appears that Derek Lam was attempting the tougher climb of proving trade dress infringement against Trump.

Some loyal readers will now state: “Wait another minute, if sandals are useful articles not protectable through copyright law, how in the world is Mystique filing a copyright infringement complaint against Trump?” As you can see from the sandal pictures, the stars and sea horses are separable design elements that are copyrightable subject matter and form the basis of the copyright infringement complaint. See Chosun Int'l v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (2d Cir. 2005) (“individual design elements of useful articles are afforded some level of protection under the Copyright Act, so long as those design elements are physically or conceptually separable from the article itself.”)

The takeaway for new readers should be to patent clothing and shoe designs that lack separable design elements. And if you’ve failed to do so within one year from the date of public disclosure, your fallback position is a trade-dress infringement claim as filed by Givenchy v. BCBG and Marc Jacobs v. Christian Audigier.

In addition to the copyright infringement claims, Mystique asserts a cause of action for unfair competition under California law, which appears to be preempted by the Copyright Act because it is based on the same set of copyright infringement facts. Xerox Corp. v. Apple Computer, Inc., 734 F.Supp. 1542, 1550-51 (N.D.Cal.1990). Mystique is seeking unspecified monetary damages and a permanent injunction.

The case is Mystique, Inc. v. Ivanka Trump Marks, LLC et al., CV12-10217 RGK (C.D. Cal. 2012).

DuckHole, Inc. is the copyright assignee in a treatment for a television series entitled “Pets,” created by Paul J. Andre in 2010. Mr. Andre, however, did the unthinkable: he registered his treatment with the Writers Guild of America. WRITERS, repeat after me: I WILL NOT WASTE MY MONEY REGISTERING MY WRITTEN WORK WITH THE WGA or SAG. I WILL FILE A COPYRIGHT REGISTRATION APPLICATION INSTEAD.

Why pay for a WGA registration when it affords no significant protection in court? In fact, the WGA shreds your submission after five years and is absolutely useless if the infringement begins in the sixth year.

• To avail yourself of the advantages available under the law, you must register your screenplay, treatment, or script with the U.S. Copyright Office.


• In order to file a lawsuit to prevent copying of your work, you MUST have registered the work with the U.S. Copyright Office.


• In order to recover statutory damages and attorneys’ fees from infringers, the work must have been registered with the U.S. Copyright Office before the commencement of the infringement or within three months from the date of publication. 17 U.S.C. § 412.


• In order to establish evidence of ownership of the screenplay, treatment, or script, the work must have been registered with the U.S. Copyright Office.

I cannot emphasize the importance of filing your work of authorship with the U.S. Copyright Office. In fact, if you can only afford to register the work with one entity, it should be the U.S. Copyright Office in order to avail yourself to the advantages afforded by a copyright registration certificate.

Judging from the absence of a copyright registration number in the complaint, DuckHole probably only recently filed the copyright application in order to bring suit. DuckHole alleges that NBC’s Animal Practice TV series is “substantially identical and, at best, a derivative work of PETS, which is based on an original copyrighted PETS treatment owned and registered to Plaintiff.” For example, Plaintiff claims that Animal practice’s “concept of centering on a veterinarian that is good with animals but not so good with people, and the setting in a veterinarian clinic are substantially identical, and at least derivative of the concept and setting” in the treatment. The complaint continues:

The supporting characters in the copyrighted PETS treatment include: (i) David- the veterinarian's colleague and "best 'human' friend" who "is woefully inadequate at the dating scene," (ii) Peg- the "hard-as-nail" employee of the clinic, (iii) Brenda- a "clueless" assistant at the clinic, and (iv) Bud- the resident pet at the clinic. The supporting characters in the Series Animal Practice include: (i) Doug- the veterinarian's colleague and "closest 'human' friend" who is "hapless in matters of the heart," (ii) Juanita- the "take-charge" clinic employee, (iii) Angela- an "eccentric" assistant at the clinic, and (iv) Dr. Rizzo- the resident pet at the clinic. The Series supporting characters are substantially identical, and at least derivative of the supporting characters in PETS.

Assuming NBC had access, without reviewing the treatment and the series in their entirety, it is difficult to predict whether these references are unprotectable general themes of a veterinarian’s office or whether they share articulable similarities between plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.

The case is DuckHole, Inc. v. NBCUniversal Media LLC, et al., CV12-10077 JAK (C.D. Cal. 2012).

I have the pleasure of speaking – along with an esteemed panel – at Bridgeport Continuing Education’s intellectual property law seminar on September 27, 2012 in Los Angeles. The seminar is titled “Understanding Intellectual Property Law for In-House Counsel and Other Non-IP Lawyers”. Topics will include:

* An Overview of IP Law with a focus on California

* Trademark, Copyright, Trade Secret and Patent law explained

* What every In-House Counsel Attorney needs to Know about Trade Secrets

* An Overview of Patent Law: When it Applies and What it Means

* Roundtable Discussion with Hypotheticals and Q&A

To learn more or to register for the seminar, please click here.

National Photo Group (“NPG”) owns the copyrights to numerous celebrity photographs that it licenses to websites and magazines. NPG asserts ownership of registered copyrights and pending applications, but only provides a registration number for photographs of Isla Fisher and does not attach the copyright registration certificates to the complaint. Although it might seem tempting to file a motion for a more definite statement under FRCP 12(e), a district court recently denied a similar request. See General Sci. Corp. v. SheerVision, Inc., 2011 U.S. Dist. LEXIS 100216, 18-19 ( E.D. Mich. Sept. 2, 2011) (“According to the Supreme Court, two elements are required to assert a copyright claim: ownership of a valid copyright and copying of original parts of the protected work. Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361, 111 S. Ct. 1282, 1296, 113 L. Ed. 2d 358 (1991). Plaintiff's proposed Second Amended Complaint sufficiently pleads both elements. As a result, Plaintiff's copyright claim is not ‘so vague or ambiguous that [Defendants] cannot reasonably prepare a response.’”)

Defendant Emmis Communications operates numerous radio stations, including Power 106 KPWR in Los Angeles. Defendant also operates the radio stations’ respective websites, including the subject 1057thepoint.com website. NPG accuses Emmis of posting celebrity photographs on the website in a post entitled “More Celebrities with No Makeup”. The accused webpage appears to still be live, a partial screenshot of which is shown here. NPG alleges that Emmis received a financial benefit directly attributable to the infringement because “Emmis increased traffic to the Website and, in turns, its advertising revenues. In fact, Emmis saw a spike in traffic to the Website by over 10,000 unique visitors during the month it posted the Photographs.” The webpage at issue, however, only showed a single comment by visitors regarding the posted photographs, which stands to reason that other factors may have caused the spike in traffic. With the proliferation of celebrity gossip websites, copyright lawsuits featuring celebrity photographs are also becoming more common.

Website operators that allow users to post content on their website (e.g. pictures, videos, or comments) can avoid copyright infringement liability under the Digital Millennium Copyright Act (“DMCA”), if the safe harbor provisions are followed, and are also protected against tort liability (e.g. defamation, slander, libel) by the Communications Decency Act. To enjoy the safe harbors of the DMCA, a website operator must designate a copyright agent on a form submitted to the Copyright Office along with the corresponding fee, provide terms of use that outline take down notice procedures to report allegedly infringing content, have no actual knowledge of the infringement, and expeditiously remove accused content.

The case is National Photo Group, LLC, v. Emmis Communications Corp., CV12-05989 RSWL (C.D. Cal. 2012).

Having received two copyright infringement cease-and-desist letters, ThinkBronze filed a copyright declaratory judgment lawsuit against Wise Unicorn entities, which also includes offensive causes of action for misrepresentation of copyright infringement under 17 U.S.C. § 512(f) and trade libel. ThinkBronze imports from China bronze statues that it sells to customers via its own website and also through an online eBay store.

On July 18, 2011, Wise Unicorn’s counsel sent a cease-and-desist letter identifying fifty six items sold by Plaintiff that allegedly infringed Unicorn’s registered copyrights. Unicorn demanded Plaintiff immediately cease distribution and sale of the allegedly infringing statues, immediately remove the photos from its website, and surrender of the inventory for destruction. Plaintiff’s counsel responded and challenged Unicorn’s ownership claims because many of the sculptures were in the public domain and not entitled to copyright protection.

Unicorn withdrew its claims of infringement relating to several of the works and the parties engaged in settlement discussions. On June 7, 2012, however, Unicorn sent several takedown notices to eBay to remove listings for ThinkBronze’s statues. Among the items listed in the takedown notice was the Michelangelo figurine for which allegations of infringement were previously withdrawn.

As an Internet Service Provider (“ISP”), eBay is immune from copyright infringement for user generated content that contains copyrighted material by the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”). To benefit from the immunity, the DMCA requires ISPs to act promptly to remove allegedly infringing works upon receipts of notice of infringement. Plaintiff contends that Unicorn’s takedown notices were not issued in good faith, rather with the intent to damage and cause harm to Plaintiff.

The case is ThinkBronze, LLC v. Wise Unicorn Ind., Ltd., et al., CV12-5283 MMM (C.D. Cal. 2012).