Los Angeles Intellectual Property Trademark Attorney Blog

Copyright infringement litigation was filed against Miguel Naranjo by Warner Bros. Entertainment, Inc. and Disney Enterprises, Inc. on February 6, 2008 in the Central District of California, Los Angeles. The copyrighted movies at issue are Tim Burton’s Corpse Bride and Finding Nemo. The complaint alleges that since 2005, Mr. Naranjo, without plaintiffs’ permission, used the KaZaA online file sharing technology to distribute the movies in violation of the Copyright Act, 17 U.S.C. 101 et seq. The complaint alleges that the copyright infringement was willful and intentional and seeks preliminary and permanent injunctions, in addition to monetary damages and attorneys’ fees. Read The Warner Bros. Ent., Inc. v. Naranjo Complaint.

A lawsuit alleging trade secret and copyright infringement litigation was filed by Symantec security products subsidiary against Microsoft in 2006: Veritas Operating Corporation v. Microsoft Corporation, Case No. 2:06-CV-00703-JCC (W.D. Washington). The case arose from a 1996 agreement between Symantec and Microsoft, whereby Symantec had shared its source code in certain software products for Microsoft to uses in its operating systems and server software. Symantec alleged that Microsoft breached their agreement by modifying the software in ways that were exclusively reserved to Symantec and expressly prohibited, thereby running afoul of Symantec’s trade secret rights and copyrights. Microsoft filed for summary judgment of non-infringement of Symantec’s alleged trade secrets, copyrights, and other claims.

On February 4, 2008, the Court denied most of Microsoft’s requests. The Court ruled that it was not persuaded that Microsoft did not breach its agreement and that Veritas had presented enough evidence to establish its trade secret rights in the private interfaces and other information. The Court also noted that Veritas had provided credible evidence of bad faith, one in the form of an email summarizing a statement by one of Microsoft’s managers on the project, who admitted that:

his intention is to eventually get [Symantec] out of the box because he believes we should not rely on any 3rd party for core components. . . . He also says he doesn’t care a damn about the contract because he wasn’t involved, and we should just lie to [Symantec] that we are doing this for performance reasons[.]

Also, because the Court found that whether or not Microsoft’s actions were within the scope of the Agreement is a fact question that remains for the jury, it maintained Symantec’s copyright infringement claim – finding substantial similarity in Microsoft’s software. Accordingly, Symantec’s remaining claims will now proceed to trial.

An intellectual property lawsuit was filed on January 30, 2008 in Los Angeles Federal District Court, by Paige Premium Denim against Mervyn’s department store over the sale of allegedly infringing jeans which incorporated the plaintiff’s designs. Plaintiff was founded by Paige Adams-Geller, a former Miss California and a jeans industry model. Paige’s jeans bear original and distinctive stitched rear pocket designs, some of which have received copyright registrations and function as Paige’s trade dress. Paige’s jeans have been featured on nationally televised shows such as The Tyra Banks Show, Daily 10, and Inside Edition.

The complaint alleges that in disregard of Paige’s exclusive rights in the designs, Mervyn’s is copying the copyrighted stitching designs and confusingly similar designs. Paige also contends that Mervyn’s conduct was willful and intentional and that Mervyn’s products are of inferior quality. The lawsuit sets forth five causes of action and seeks a preliminary injunction and a permanent injunction of Defendants’ alleged conduct:

First, copyright infringement under 17 U.S.C. § 501, where Defendant’s access and copying is alleged based on the voluminous sales of Paige’s jeans and the stitch designs, and seeking full costs of suit pursuant to 17 U.S.C. § 505;

Second, false designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), for infringing on Paige’s trade dress rights by causing confusion among consumers that Paige “authorized, originated, sponsored, approved, licensed or participated in” defendant’s use of the stitch designs on defendant’s jeans;

Third, violation of state trademark dilution and injury to reputation, California Business & Professions Code § 14330, because Mervyn’s use of Pagie’s trademark and/or trade dress “is causing a likelihood of dilution because Paige’s trade dress is deprived of its exclusive capacity to identify Paige;”

Fourth, California unfair competition and unfair business practices in violation of the Cal. Bus. & Prof. Code, § 17200, et seq.; and

Firth, infringement of Paige’s California common law trademark and/or trade dress rights.

PRACTICE NOTE: Although copyright laws currently protect patterns and designs printed on or stitched into the fabric, copyright protection is not currently available to protect fashion designs themselves (i.e. the cut, style, or dimensions of clothing). However, the Design Piracy Prohibition Act (H.R. 5055) bill is currently pending in congress that, if enacted into law, will provide three years of protection for the fashion design if certain conditions are met. Click Here To Read About The Bill.

Patents, trademarks and copyrights and counterfeiting will be at the forefront at the WIPO’s Fourth Global Congress on Combating Counterfeiting and Piracy that meets in Dubai from February 3-5, 2008. The meeting is to focus on the following key themes:

• Health and Safety Risks Counterfeit Products Pose to Consumers;
• Raising Awareness of the Full Economic and Social Costs of Counterfeiting and Piracy;
• The Growing Problem of the Sale of Counterfeit and Pirated Products over the Internet; and,
• Strengthening Cooperation and Collaboration at the Global Level.

“The Congress will bring together policy makers and experts from more than 60 countries to explore and identify concrete measures and resources to counter the damaging effects of the illegal trade in counterfeit and pirated goods.” Click To Read The WIPO Announcement.

Every year as the Super Bowl approaches, the National Football League begins to use trademark law and copyright law to enforce its trademarks for the words “Super Bowl” and its copyrights of the broadcast. In years past, the NFL has prevented hotels from using its trademark “Super Bowl” in association with viewing parties. This year, the NFL has sent cease and desist letters to churches that intend to host “Super Bowl” viewing parties. The NFL has asserted that showing the game on television screens larger than 55 inches violates the NFL’s copyrights. Copyright Statute: 17 U.S.C. § 110(5)(B). The NFL argues that viewing parties slant its Nielsen Ratings downward, which are used to determine viewership and, in turn, the amount the NFL can charge advertisers, thereby decreasing advertising revenue. Click To Read Christian Post Article.

A federal complaint alleging (i) copyright infringement, (ii) unfair competition and false designation of origin under the Lanham Act § 43(a) (15 U.S.C. 1125), (iii) unlawful deceptive acts and practices, and (iv) unfair competition under New York law was filed against Target Corp., by well renowned fashion designer Diane von Furstenberg (“DVN”). DVN accuses Target of selling a dress with a print that is nearly identical to DVN’s fabric pattern and design for a “spotted frog” print, for which DVN owns copyright registration number VAu704-073. Click HERE to read the complaint.

DVN alleges that after her attorneys sent a cease and desist letter to Target, the infringing dress was quickly removed from Target's website. Target, however, is accused of continuing to sell the infringing dresses at its retail locations across the country. Thus, the complaint alleges that Target’s “infringement is willful, done with knowledge of and/or in reckless disregard of DVF’s rights in its Spotted Frog Design.” If the infringement is found to be willful, the Court may award punitive damages.


PRACTICE NOTE: Copyright laws currently protect patterns and designs printed on or stitched into the fabric. As we have previously discussed, however, copyright protection is not currently available to protect fashion designs themselves (i.e. the cut, style, or dimensions of clothing). But the Design Piracy Prohibition Act (H.R. 5055) bill is currently pending in congress that, if enacted into law, will provide three years of protection for the fashion design if certain conditions are met. Click Here To Read About The Bill.

Jay Leno, The Tonight Show comedian, had sued Judy Brown and her book publishers for copyright infringement for publishing his jokes without permission in several joke books. Other comics such as Rita Rudner and Bob Ettinger were also named as plaintiffs in the copyright lawsuit, which was filed in US District Court in Los Angeles. NBC Studios, which produces The Tonight Show and is the copyright owner under the work-for-hire doctrine, was also a plaintiff in the copyright infringement case.

Judy Brown was accused of publishing books with jokes from various comedians – although she did give credit to the authors of the jokes. Leno’s copyright attorney had argued that by naming the source of the material, Brown admitted that she was not the true author and had willfully infringed on the comedians’ copyrights.

"I thought it was important to make it clear that jokes are protected like any other art form," Leno said in a statement. In fact, Compendium II of Copyright Office Practices § 420.02 provides for copyrighting jokes and comedy routines if they contain at least a certain minimum amount of original expression in tangible form. However, short quips and slang expressions consisting of no more than short phrases are not registrable. Further, the copyright protection in jokes only applies to the “expression” (i.e. the way the words are arranged) and not the “idea” itself. See Gibson v. CBS, Inc., 491 F. Supp. 583 (S.D.N.Y. 1980) (the court dismissed a copyright infringement lawsuit involving a comedy skit where the only similarity between the two routines involved people pretending to be eggs).

Under the out-of-court settlement, Brown and her publishers agreed to immediately cease the distribution, manufacture and sale of Brown's joke books and to pay an undisclosed monetary amount to plaintiffs.

PRACTICE NOTE: Copyright registration is a relatively inexpensive form of intellectual property protection that is often overlooked by businesses owners. For example, websites and marketing materials may be copyrighted by businesses in order to protect against infringers. Copyright protection extends to a broad range of materials - even the makeup designs applied to actors in the Broadway musical Cats were deemed to be copyrightable. See Carell v. Shubert Org., Inc., 104 F. Supp. 2d 236, 243, 247 (S.D.N.Y. 2000).

Luxury-goods maker Louis Vuitton sued Haute Diggity Dog, a small company, for trademark, trade dress and copyright infringement for selling “Chewy Vuiton” dog chew toys and beds. The trial court determined that Louis Vuitton’s trademark litigation stance had more bark than bite and ruled in Haute Diggity’s favor. “The fact that the real Vuitton name, [trademarks and trade dress] are strong and recognizable makes it unlikely that a parody – particularly one involving a pet chew toy and bed – will be confused with the real product,” stated the court, while addressing the likelihood of confusion factors.

As an amusing side-note, the company also spoofs other well known trademarks by selling products under the “Dog Perignon,” “Bark Jacobs,” “Chewnel # 5,” and “Sniffany & Co.” trademarks.

Louis Vuitton doggedly appealed the decision and the appellate court recently agreed with the trial court that Haute Diggity’s dog toys were a successful parody of the Louis Vuitton’s trademark, trade dress and copyright. The Fourth Circuit Court of Appeals stated:

We conclude that the [parody] criteria are amply satisfied in this case and that the “Chewy Vuiton” dog toys convey “just enough of the original design to allow the consumer to appreciate the point of parody, but stop well short of appropriating the entire marks that LVM claims.

The appeals court also examined the likelihood of confusion factors, and found that most of the factors favored the appellee:

In sum, the likelihood-of-confusion factors substantially favor Haute Diggity Dog. But consideration of these factors is only a proxy for the ultimate statutory test of whether Haute Diggity Dog’s marketing, sale, and distribution of "Chewy Vuiton" dog toys is likely to cause confusion. Recognizing that "Chewy Vuiton" is an obvious parody and applying the [likelihood of confusion] factors, we conclude that LVM has failed to demonstrate any likelihood of confusion. Accordingly, we affirm the district court’s grant of summary judgment in favor of Haute Diggity Dog on the issue of trademark infringement.

Louis Vuitton also appealed the trial court’s decision that its trademarks were not diluted under 15 USC 1125(c). Louis Vuitton had asserted claims for dilution by blurring (i.e. the “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark”) and dilution by tarnishment (i.e. “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark”). The appellate court stated that Haute Diggity created an association and a “simultaneous message that it was not in fact a source of LVM products. Rather, as a parody, it separated itself from the LVM marks in order to make fun of them.” The appellate court affirmed the lower court’s ruling that there was no dilution, either by blurring or tarnishment.

The appellate court also swiftly disposed of Louis Vuitton’s claims of counterfeiting, trade dress and copyright infringement because Haute Diggity’s products were not knock-offs, the trade dress issues were similar to the trademark issues, and the copyright claim was a disguised trademark and trade dress claim.

PRACTICE NOTE: Parody defenses are a costly risk and a play on famous trademarks should generally be avoided. For example, Haute Diggity reportedly incurred approximately $300,000.00 in legal fees and spent years in court. A carefully selected trademark will keep you out of litigation and allow you to use your financial resources to further your business goals. For suggestions in selecting an appropriate trademark, please CLICK HERE to read our article.