Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – Larry Flynt sued his former employees and nephews, Jimmy Flynt, Jr. and Dustin Flynt, for trademark infringement for using the family name in their upstart pornography company. Details blogged here. Larry Flynt also made a claim for violation of his rights of publicity under California Civil Code § 3344. On January 9, 2009, the Court preliminarily enjoined the nephews from using the “FLYNT” mark alone with the distribution of adult material, but allowed the nephews to use their first names in association with their family name on the same products. Details blogged here.

After a three day jury trial, Larry Flynt may have won the battle, but lost the war. LA Time article, here. The jury agreed that the use of the last name FLYNT alone was likely to confuse consumers as to the source of the adult related material and a permanent injunction will issue against the nephews. No monetary damages were sought for the trademark infringement claim. The jury, however, sided with the nephews on Larry’s rights of publicity claim, which contains a mandatory attorneys’ fees provision for the prevailing party. Thus, it looks like Larry will have to pay the nephews’ attorneys’ fees incurred in their defense of the §3344 claim, which they are likely to pursue since Larry allegedly fired their father in retaliation for the sons’ use of the family name. The case is Larry C. Flynt v. Flynt Media Corporation, et al., CV 09-00048 AHM, CV09-8796 JC (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 – Purse and handbag designer Linea Pelle, Inc. filed a trade dress infringement and unfair competition lawsuit against Sabina Handbags & Accessories, Inc. In 2006, Plaintiff alleges that it created the “Dylan Collection” of handbags that “incorporates certain unique and distinctive designs, ornamentation and embellishments that, as a whole, have become the iconic and signature look of the Dylan Collection,” which it defines as follows:

Sound like a square peg in a round hole? Assuming Plaintiff can establish secondary meaning before the infringement began, the definition sounds like a constrained extension of trade dress law. Why not seek design patent protection and avoid the challenges of establishing trade dress rights? But I digress. Plaintiff’s purse incorporating the alleged trade dress is pictured below.

Defendant’s accused product is pictured below.

The case is Linea Pelle, Inc. v. Sabina Handbags & Accessories, Inc., CV 09-8450 JSL (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).

During this Thanksgiving week, I would like to thank the readers of my two-cents (if it’s worth that) and intellectual property law for providing interesting – at least to me – topics to blog. How does intellectual property apply to Thanksgiving? Well, the first invention applies to how my turkey will be prepared . . . in a deep fryer of course. It may sound strange and greasy, but deep fried turkeys are moist, crispy, and delicious. U.S. Patent No. 5,896,810 covers the turkey frying apparatus that I’ve come to appreciate. After you’ve tasted a deep-fried turkey, you won’t go back to oven roasted. Also, when you realize you can cook a 14 pound turkey in about 45 minutes, your oven will thank you for going green.

Now, the next invention I will probably pass on. U.S. Patent No. D397,955 relates to a turkey decoration in general. More specifically, the invention allows you to dress up a pumpkin to look like a turkey. It’s a good thing Benjamin Franklin didn’t get his way or the pumpkin turkey may have been the national bird.

Los Angeles, CA – Rorion Gracie, the patriarch of the famed Gracie family from Brazil, filed a trademark infringement, Lanham Act § 43(a) unfair competition, and dilution lawsuit against Black Silver Enterprises and Un Mi Lee. Gracie is a 9th degree Red Belt in Brazilian Jiu-Jitsu and has been an owner of the “Gracie Jiu Jitsu” commercial endeavors since opening the first location in Southern California in 1978. In 1997, Plaintiff’s Gracie Gear trademark was registered with the USPTO for use on clothing and related merchandise. On September 20, 2005, Plaintiff received another registration for the mark Gracie for use on clothing.

Ten days after the Gracie trademark registered, Defendant Black Silver filed an application with the USPTO to register its GRACIE mark for use on clothing. The USPTO issued an Office Action refusing to register Black Silver’s proposed mark due to a likelihood of confusion with Plaintiff’s registered trademarks. In October of 2006, Defendant filed petitions to cancel Plaintiff’s trademarks at the Trademark Trial and Appeal Board (“TTAB”), which proceedings are still continuing. Plaintiff alleges that in mid-2009 Defendants demanded payment of $250,000 as a license fee to use the Gracie trademark. As a result, Plaintiff filed the instant action. The case is Rorion Gracie v. Black Silver Enterprises, Inc. et al., CV 09-8273 GW (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).

Los Angeles, CA – Chrome Hearts, LLC sued clothing and accessories designer Affliction, Inc. for trademark infringement, Lanham Act § 43(a) unfair competition, copyright infringement, and breach of settlement agreement. Chrome Hearts is also in the clothing and accessories business and has registered the “CH Plus” design trademark – depicted herein – with the USPTO for use on several goods and services, including clothing and headwear. Chrome Hearts has also obtained a copyright registration for the cross design as used on jewelry.

In March of 2009, Plaintiff alleges that it discovered Affliction was selling and distributing headwear that had a confusingly similar CH PLUS design trademark. But instead of filing a lawsuit, the parties entered into a settlement agreement in which Affliction agreed to cease and desist from using the CH Plus design mark. In October of 2009, however, Chrome Hearts allegedly discovered that Affliction had not ceased its use of the CH Plus design mark and was continuing to sell products under the infringing mark. The case is Chrome Hearts, LLC v. Affliction, Inc. , CV 09-7780 AHM (C.D. Cal. 2009).