Defendant Imagination filed a motion to dismiss arguing that Plaintiff was asserting a false designation of authorship claim (i.e. who was the first to come up with the idea for the game) precluded by Dastar Corp. v. Twentieth Century Fox Film Corp., 539 US 23 (2003). In Dastar, the Supreme Court stated that “reading the phrase ‘origin of goods’ in the Lanham Act in accordance with the Act's common-law foundations (which were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were), we conclude that the phrase refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” Dastar, 539 U.S. at 37 (italics in original).

The district court disagreed (order available here) and found that Dastar was inapplicable because the complaint focuses on who was the first to manufacture a “would you rather” board game, not the first to come up with the idea for the game:

Here, there is no conflation with copyright (or patent) law inherent in Zobmondo’s claim. The issue for determination is whether Imagination’s title inappropriately conveys that the game is the first “would you rather” board game. This relies, in part, on determining the alleged falsity of the premise, i.e., that Imagination’s game is not the first “would you rather” board game. Making this determination requires no examination as to who came up with the idea for the board game, or who may have any copyrights in the game. The only question is who physically manufactured the first such board game.

As Rebecca Tushnet will probably agree, the court properly construed Dastar. The case will ultimately turn on whether the term “original,” taken in context, means first in time – instead of “original” meaning the same game that was originally produced by Justin and Dave. The case is Zobmondo Entertainment, LLC v. Imagination International Corporation, CV 09-2235 ODW (C.D. Cal. 2009).

By filing a patent application for the “Method and Means for Creating Anti-Gravity Illusion,” Michael Jackson let the cat out of the bag. The heel of the shoe is designed to detachably engage a hitch that retractably projects through the stage floor. By anchoring the heel to the floor, the dancer can lean forward and the illusion of defying gravity is achieved. His untimely death has subjected Michael Jackson’s personal choices to debate, but his dedication to creating and protecting his art is unquestionable.

Plaintiff is the exclusive licensee of a registered Indo Board design trademark and the common law rights to the word mark. Plaintiff is also the copyright owner in an instructional DVD created in 2004. The complaint alleges that beginning in 2001, Plaintiff entered into a manufacturing agreement with Mimic to manufacture its boards, which relationship terminated in 2008 when Mimic informed Plaintiff that it was going to only manufacture skateboards.

A few months later, Plaintiff alleges that it discovered Mimic offering for sale a similar product under the “Orbit Board” mark, but purchase of the Orbit product included an unauthorized copy of the instructional DVD. In addition, Mimic allegedly used the Indo Board trademark to route customers to websites where the Indo Board was “sold out,” but offered its Orbit Board as an equivalent replacement. Plaintiff further alleges that the unique shape and color of the Indo Boards function as its trade dress, which is recreated in the Orbit Board. The case is Eabo, Inc. v. Mimic Skateboards, Inc., CV09-04208 RSWL (C.D. Cal. 2009).

Van Halen accuses Nike of copying his designs and using them on its “Dunk Lows” line of shoes. In addition to its copyright infringement claim, ELVH seeks a constructive trust and an accounting. Plaintiff seeks either actual or statutory damages under 17 U.S.C. § 504, in addition to their costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is ELVH, Inc. v. Nike, Inc., CV09-04219 CAS (C.D. Cal. 2009).

Defendant Rock On Energy, LLC is accused of using the confusingly similar trademark ROCK ON for a competing energy drink, which is sold by at least one mutual retailer. Also, Defendant is accused of using the confusingly similar “Live Loud. Play Hard. Rock On” tag line for its energy drinks. Further, Defendant allegedly uses a beverage container and product packaging that is confusingly similar to Rockstar’s trade dress. Defendant’s container is mostly black with lettering that is similar in fonts and colors to that of Rockstar’s. The case is Rockstar, Inc. v. Rock On Energy, LLC, CV 09-04017 GAF (C.D. Cal. 2009).

Plaintiff’s burgers and dogs are always served with chili, except when a patron specifically requests it be excluded. I have heard that consumption of a Tommy’s burger with a side of chili-cheese fries in the wee hours of the morning, after a night of libations with college friends, are warranted to reduce any morning-after negative side-effects. A side of extra pickles is believed to further suppress any hang-over symptoms. For those not familiar with the structure of a Tommy’s cheese burger, an element by element depiction is provided herein.

Plaintiff alleges that Defendants were aware of Plaintiff’s Tommy’s mark and trade dress, but adopted a mark, logo, and trade dress that are confusingly similar to Plaintiff’s. Plaintiff alleges that Defendants have misappropriated Plaintiffs proprietary and trade secret information in the form of its recipes, including, but not limited to, its chili. Plaintiff allegedly sent a cease and desist letter – through counsel – to Defendants in December of 2008. But Defendants have allegedly refused to stop their activities. The case is Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).

Plaintiff has registered its “Suspension Training” and “Make Your Body Your Machine” trademarks with the USPTO, for both fitness equipment and physical fitness educational services. Plaintiff alleges that Gofit has used the “Suspension Training” and “Suspension Training At Home” trademarks to advertise and sell its rival product. Gofit received a cease and desist letter from Fitness Anywhere’s counsel and allegedly agreed to stop using the objectionable marks by May 1, 2009. Gofit, however, is accused of continuing to use the “Suspension Training” marks and exacerbating the situation by adopting a “Make Your Body Your Gym” mark. The case is Fitness Anywhere, Inc. v. Gofit, LLC, CV 09-03828 SJO (C.D. Cal. 2009).

In 2005, Oskar alleges that it licensed the software to Pole Position Raceway, Inc., an indoor go-kart racing business located in Corona, California. Pole Position terminated its use of the software two years later. Then, Oskar learned that Pole Position switched to “Speed Sheet” software produced by co-defendant Club Speed, Inc., which is alleged to perform almost exactly the same way that Oskar’s software does, “producing almost identical graphs and reports.” Also, the customer liability waiver agreement is alleged to be identical. A screen capture of Club Speed's software display, which is at issue in the lawsuit and was obtained from its website, is presented herein.

Plaintiff alleges that Club Speed and Pole Position, and their respective principals, have been aggressively marketing the Speed Sheet software and have successfully lured away Plaintiff’s existing customers. The case is Oskar Systems, LLC v. Club Speed, Inc. et al., CV 09-03854 AHM (C.D. Cal. 2009).

PRACTICE NOTE: To establish copyright infringement, Oskar must prove (1) ownership of a valid copyright and (2) unauthorized copying of protected elements of the copyrighted work. See Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1174 (9th Cir. 2003). "Infringement is shown by a substantial similarity of protectible [sic] expression, not just an overall similarity between the works." 4 Nimmer on Copyright § 13.03[F]. To establish infringement, Oskar must "show[] that the works in question 'are substantially similar in their protected elements.'" Metcalf v. Bochco, 294 F.3d 1069, 1072 (9th. Cir. 2002).

"It is settled that computer programs are entitled to copyright protection." General Universal Systems, Inc. v. Lee, 379 F.3d 131, 142 (5th Cir. 2004). "A computer program is made up of several different components, including the source and object code, the structure, sequence and/or organization of the program, the user interface, and the function, or purpose, of the program. Whether a particular component of a program is protected by a copyright depends on whether it qualifies as an 'expression' of an idea, rather than the idea itself." Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173, 1175 (9th Cir. 1989). "[Copyright] protection extends not only to the 'literal' elements of computer software -- the source code and object code -- but also to a program's nonliteral elements, including its structure, sequence, organization, user interface, screen displays, and menu structures." Importantly, "[t]he 'non-literal components' of a computer program, including its user interface, are protectable if, 'on the particular facts of each case, the component in question qualifies as an expression of an idea [not] an idea itself.'" Apple Computer v. Microsoft Corporation, 799 F.Supp. 1006, 1020 (N.D. Cal. 1992) (quotation omitted)). Thus, Oskar must prove that the reports are copyrightable and defendants have copied protectable elements of its copyrighted software.

"Copyrighted software ordinarily contains both copyrighted and unprotected or functional elements." Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 599 (9th Cir. 2000). Compilations of individually unprotectable elements, however, may be afforded copyright protection: the "collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in a way that the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. § 101. Thus, "even if the constituent elements of a work are not protected, protection may extend to the 'selection, coordination, or arrangement' of such elements in the work as a whole." O.P. Solutions, 1999 U.S. Dist. LEXIS 979 at *9; Metcalf, 294 F.3d at 1074 ("[A] particular sequence in which an author strings a significant number of unprotectable elements can itself be a protectable element. Each note in a scale, for example, is not protectable, but a pattern of notes in a tune may earn copyright protection.").

As for computer software, "if constituent elements of a screen display or user interface lack requisite originality, or are outside the scope of copyrightable material under 102(b), or are otherwise unprotectable, the selection, coordination, and arrangement of such elements may be protectable, even though those individual elements are not." O.P. Solutions, 1999 U.S. Dist. LEXIS 979 at *9 (citing Apple, 799 F.Supp. at 1023). More importantly, however, "a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship." Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003) (citing Feist, 499 U.S. at 358 ("[T]he principle focus should be on whether the selection, coordination, and arrangement are sufficiently original to merit protection.")).

Plaintiff alleges that BVDK’s jeans, in contrast, lack the reputation and quality that Hudson’s jeans enjoy. But in order to penetrate the premium denim market, defendant is accused of intentionally adopting and using a confusingly similar pocket flap. David Kahn, the owner of BVDK, is also named in the suit and is accused of selling the purportedly infringing jeans on the www.davidkahnjeanswear.com website. Plaintiff also learned that Defendants’ products, which are sold as the “Nikki” style, was available at the same retailer, Nordstrom. Although there is a false advertising cause of action, Plaintiff does not detail the allegedly false statements that were made with respect to the quality of the products. The case is Hudson Cothing, LLC v. BVDJ Design, Inc., CV 09-3275 R (C.D. Cal. 2009).

Unfortunately for Plaintiff, cups of bitter refills are sure to follow. Plaintiff never registered its trademark with the USPTO and only recently filed a word mark and a design mark application. Both applications, however, have been refused registration based on two 1995 registrations owned by Souper Salad, Inc. for Planet Coffee® and Planet Coffee® plus design. Plaintiff is now going to have an uphill battle establishing ownership of its alleged trademarks. The case is Planet Coffee Roasters, Inc. v. Planet Coffee, SACV 09-571 MLG (C.D. Cal. 2009).

Plaintiff alleges that when Evel was in need to capital to resurrect interest in his career, Plaintiff purchased the rights to the film and the films themselves in 1982 via written agreement executed by Knievel. Plaintiff then produced two compilation films entitled “Evel Knievel’s Specacular Jumps” and “The Last of the Gladiators.” Schreiber alleges that at some time, Knievel once again sold or licensed the same rights – previously granted to Schreiber – to Defendants. Schreiber alleges that Defendant ABC used the copyrighted work in “David Blaine’s Drowned Alive” television show and Defendant ESPN used the copyrighted work during the “Impossible Jump by Mike Metzger” television show. The Defendants are accused of intentional and willful infringement because Defendants’ parent, The Walt Disney Company, has previously paid Schreiber to use the copyrighted Evel Knievel works. The case is Raymond Gary Schreiber v. American Broadcasting Company et al., CV09-03205 AHM (C.D. Cal. 2009).

Plaintiffs allege that Defendants have recently manufactured swimwear, which they sell under the Ipanema trademark. Plaintiffs contend that they sent Quiksilver a cease and desist letter in August of 2004, but it has refused to stop use of the Ipanema trademark. In addition to the trademark cause of action, Jennifer assert a Lanham Act § 43(a) false designation of origin claim and a California Business and Professions Code §17200 unfair competition claim. The case is James W. Brady, et al. v. Quiksilver Americas, Inc. et al., SACV 09-553 MLG (C.D. Cal. 2009).

Four years ago, Manley created and sold a waterslide toy under the trademark “The Plunge,” which it alleges has been highly successful. The complaint also contends that Manley has “adopted a distinctive color scheme and appearance for its product which, taken together, form a protectable trade dress for The Plunge product.” The product is also marketed and sold under Manley’s Banzai trademark.

Manley alleges that Radco’s use of the mark “Pipeline Plunge” infringes its trademarks and that it was adopted in bad faith, “Defendants’ use of the term Pipeline in the name Pipeline Plunge is a transparent attempt to associate Defendants’ water slide with Plaintiff’s well-known Banzai brand by reference to the notorious and famous ‘Banzai Pipeline’ surf area off the north shore of Hawaii’s Oahu Island.” Defendants will probably argue that you’d have to, at the very least, be a Kamaaina to make that connection. Manley also claims that Defendants have used a color scheme “that is to all intents and purposes identical to Plaintiff’s The Plunge toy.” The case is Manley Toys Ltd v. Radco Ltd HK, et al., CV09-3129 VBF (C.D. Cal. 2009).

PRACTICE NOTE: Plaintiff has apparently named the companies’ officers as defendants in the lawsuit. A company's officers who authorize and direct infringing activities can be held personally liable. Committee for Idaho’s High Desert, Inc. v. Yost, 92 f.3d 814, 823 (9th Cir. 1996).

K-Swiss believes that Puma got its shoe laces in a knot because K-Swiss hired away Puma’s shoe designer and marketing employee. Thus, K-Swiss alleges that the lawsuit is retaliatory in nature and in bad faith. “K-Swiss avers that K-Swiss’ use of the Eyelet Strip is non-infringing, that K-Swiss’ use of the Eyelet Strip is dissimilar in shape and placement to Puma AG’s claimed Formstrip trademarks, that the Eyelet Strip is functional, that KSwiss’ use of the Eyelet Strip as an integral part of the lacing system for its footwear is a fair use, and that K-Swiss’ use of the Eyelet Strip does not create a likelihood of consumer confusion within the relevant purchasing public as to the source of the parties’ footwear.” The case is K-Swiss, Inc. v. Puma AG Rudolf Dassler Sport, CV09-03022 GAF (C.D. Cal. 2009).