Los Angeles Intellectual Property Trademark Attorney Blog

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).

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).

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).

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).

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).

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).

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).

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.

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).

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).