Guru Denim owns a USPTO registered trademark for the “True Religion Brand Jeans World Tour Fashion for the Senses Section Row Seat.” Also, Guru Denim “owns registered United States trademarks in the pocket stitching pattern that appears on True Religion Brand Jeans pants and the overall stitching pattern on the front of True Religion Brand Jeans pants.” Guru Denim has also registered 4 USPTO registered trademarks for “True Religion Brand Jeans” with assorted designs. Finally, Guru Denim has registered its “True Religion” word marks with the USPTO . Guru Denim’s “line of ‘super-premium’ denim wear, which ranges in retail price from $170.00 to in excess of $300.00, is acclaimed in the fashion industry due to its famous name recognition which represents quality and distinguished craftsmanship. Each piece of clothing or pair of denim distributed under the Mark bears an emblem of a smiling Buddha strumming a guitar and, in some occasions, is elaborately embroidered.”

Guru Denim discovered that numerous defendants were selling allegedly fake and counterfeit jeans on their Websites. The complaint asserts that Guru Denims investigator purchased a True Religion pair of jeans from the denimbutt.com website for $129.00 plus a shipping cost of $1.95, where the defendant causes confusion by claiming that it is “committed to selling only first-quality, genuine designer fashions (sic) items, clothes and accessories.” The complaint continues that Guru Denim’s “inspection of the purchased item using security measures confirmed that the item Defendants sold to the investigator was in fact a counterfeit pair of True Religion Brand Jeans denim pants.”

The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. §1114; (2) Federal copyright infringement under 17 U.S.C. §501; (3) False designation of origin under 15 U.S.C. §1125(a); (4) Trademark dilution under 15 U.S.C. §1125(c) and California Business & Professions Code §14330; (5) Common law copyright infringement under California Civil Code §980; (6) Unfair business practices under California Business & Professions Code §17200; and (7) Unjust enrichment. The case is titled Guru Denim, Inc. v. Simon Halwani, et al., CV 08-02803 FMC (C.D. Cal. 2008).

PRACTICE NOTE: Guru Denim has used different forms of intellectual property to provide broadest protection to its business and products. Patent, trademark and copyright protection can overlap and protect different aspects of the product and business and prevent unfair competition and infringing conduct.

The complaint lists the following additional defendants: thedenimbutt.com, Jeans & Company, Joymic Corp., Digitally Discovered, Joseph Barsano, thedenimspa.com, denimliquidators.com, denimbuys.com, Denim Buy Liquidators, Jizzle Tech, and lovebubbleclothing.com.

Plaintiff asserts that Defendant “Rangefinder intends to use the designation World Imaging Expo for tradeshows in the field of professional photography” and that Plaintiff became aware of the competing tradeshow when it discovered a copy of the World Imaging Expo convention program guide. Professional Photographers also discovered that Rangefinder had filed an intent-to-use trademark application with the USPTO. Professional Photographers asserts that it sent a cease and desist letter to Rangefinder over the use of the World Imaging Expo trademark, but Rangefinder refused to withdraw its pending trademark application or stop using the trademark. Thus the complaint was filed asserting causes of action for federal trademark infringement under 15 U.S.C. § 1114, false designation of origin and false representation under 15 U.S.C. § 1125(a), and unfair competition under California common law and statutes. The case is titled Professional Photographers of America, Inc. v. Rangefinder Publishing Co., CV08-02324 SVW (C.D. Cal. 2008).

PRACTICE NOTE: A proposed trademark does not have to be identical to another party’s previously registered or used trademark in order to prove infringement. If there is going to be a “likelihood of confusion” between the two trademarks, a Court will enjoin the junior trademark owner’s use of the “confusingly similar” trademark. For example, the trademark Red Shield for insurance services was held to be confusingly similar with the previously registered Blue Shield® trademark.

Although this concept seems commonplace today, the complaint alleges that when the inventions were made in 1986, “personal computers were in their infancy; the Internet was virtually unheard of.” The Complaint asserts that “LoopNet has infringed, and continues to infringe, the Patents by using the patented methods to display on zoom-enabled maps on its website the locations of millions of available commercial real estate property listings. LoopNet enables property owners and commercial real estate agents – on behalf of property owners and landlords – to list properties for sale or for lease and submit detailed information on property listings, such as qualitative descriptions, financial and tenant information, photographs, and key property characteristics, in order to find a buyer or tenant. Commercial real estate agents, buyers, and tenants use the LoopNet online marketplace to search for available property listings.” In addition to preliminary and permanent injunctions, the complaint seeks monetary judgments against both defendants. The case is titled Real Estate Alliance, Ltd., v. Loopnet, Inc., CV 08-02321 CAS (PLAx) (C.D. Cal. 2008).

Plaintiff alleges that Defendant’s website, www.wowdb.com, “essentially replicated the appearance, design, as well as certain other unique features of Plaintiff’s WOWHEAD website, in order to launch with the creation of an original website. Defendant’s website . . . like the WOWHEAD website, also caters to individuals who participate in the World of Warcraft on-line video game.” The complaint alleges that “defendant has therefore engaged in an intentional and systematic patter of trade dress infringement in violation of the Lanham Act, 15 U.S.C. Section 1125(a), trade dress dilution, and unfair competition in that” the defendant’s website caters to the same class of consumers, the confusingly similar website design, which has resulted in actual confusion among a substantial customer confusion. The complaint also asserts causes of action for common law unfair competition and statutory unfair competition under Bus. & Prof. Code Section 17200.

The case is titled Zam Network, LLC, v. Curse, Inc., CV08-02224 PSG (C.D. Cal. 2008).

The Air Jordan® VII shoe, which Jordan wore during the 1992 Olympics, was awarded U.S. Patent No. Design 325,291. The Air Jordan® XI shoe, considered one of the most popular shoes of all-time, was awarded U.S. Patent No. Design 371,898. The Air Jordan® XII shoe, which Jordan wore against the Jazz when he was ill with the flu, was awarded U.S. Patent No. Design 380,082. The Air Jordan® XIII shoe, which has sold more than 2 million pairs in the U.S., was awarded U.S. Patent No. Design 387,591 and U.S. Patent No. Design 387,850. Nike alleges that the Defendant “has sought to make a name for itself not through its own innovation, strategic investment, and design, but by explicitly appropriating the patented design and trade dress of not one, but four separate models of Air Jordan® shoes.” The complaint asserts that the Defendant “has copied the design and trade dress of the entire “upper” of each of these shoes, including the unique shape of the leather on the inside and outside of the shoe . . . the iconic lacing with exterior webbing on the shoe upper . . . the sunburst design . . . and the unique shape of the leather on the inside and outside of the shoe upper…”

The case is titled Nike, Inc. v. Not For Noth’N LLC, aka Gourment, CV 08-1894 RGK (C.D. Cal. 2008).

PRACTICE NOTE: Nike has used both design patents and trade dress rights to protect its shoes’ designs. Trade dress protection continues in the design so long as the trade dress is being used by the owner; whereas, design patents expire after fourteen years. Thus, although one of Nike’s design patents has actually expired and is unenforceable, Nike can still prevent the copying of the Air Jordan® VII design by asserting its trade dress rights therein.

“Defendants’ conduct, together with that of currently unknown civil and criminal co-conspirators, is causing T-Mobile to suffer millions of dollars in losses and has caused immediate and irreparable injury to T-Mobile and T-Mobile’s trademarks,” the complaint states. T-Mobile subsidizes the price of the cellular telephone and sells it below cost, but recoups the subsidy from profits earned on the sale of the prepaid airtime cards. Thus, the complaint asserts, if the phones purchased by defendants are not activated on the T-Mobile wireless network, T-Mobile is unable to recoup its costs. The T-Mobile phones are also sold subject to terms and conditions which restrict and limit the sale and use of the phones. By unlocking the phones and not activating them on the T-Mobile network, the defendants are allegedly breaching the contractual terms of purchase. The case is titled T-Mobile USA, Inc. v. All Pro Distributing, Inc., et al., CV08-02691 GW (C.D. Cal. 2008).

The complaint alleges that ASCAP, on behalf of the copyright owners, warned the defendants that a copyright license was needed in order to publicly perform the copyrighted music at the restaurant/bar. The defendants, however, allegedly refused to pay for the license and continued to play the songs at issue. Plaintiffs request statutory damages under 17 U.S.C. § 504(c)(1), of not more than $ 30,000.00 and not less than $ 750.00 for each copyrighted song. Plaintiffs also request that the court order the defendants to pay the costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: WB Music Corp., v. Corner Pockets, Inc. , CV08-01955 SVW (C.D. Cal. 2008).

PRACTICE NOTE: 17 U.S.C. 504(c)(2) provides an increase in the statutory damages to $150,000.00 per infringement if it is deemed to be intentional. Also, if a restaurant or public establishment unreasonably believed that it was exempt from licensing requirements under 17 U.S.C. § 110(5), the copyright plaintiff, in addition to other damages under section 504, will be entitled to two times the license fee which it should have paid for the preceding period of up to 3 years. Because of the varying affiliations between record companies and the licensing society, a license from each of the following licensing societies must be obtained to cover the music owned by the various recording companies:
ASCAP: 1-800-505-4052
BMI: 1-800-925-8451
SESAC: 1-800-826-9996

The complaint alleges that defendants are selling lower quality imitations of Chanel’s handbags and wallets, which bear counterfeit Chanel trademarks. The complaint asserts that the Defendants are offering the counterfeit goods on their websites: www.gqbags.com and www.ultimatehandbags.com. The websites offer handbags for sale that are substantially less expensive than authentic Chanel products. “The net effect of the Defendants’ actions will be to result in the confusion of consumers who will believe the Defendants’ Counterfeit Goods are genuine goods originating from and approved by Chanel.” Chanel believes that the defendants are engaging in the sale of counterfeit goods intentionally and willfully. The complaint alleges causes of action for trademark infringement and counterfeiting under section 32 of the Lanham Act, 15 U.S.C. § 114, and false designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The case is titled: Chanel, Inc. v. Kimberli Hunter, et al., CV08-02226 GHK (C.D. Cal. 2008).

The case is titled Datasec Corporation v. DirecTV Corporation, et al., CV 08-02345 CAS (C.D. Cal. 2008).

The case is titled Starlume, Inc. v. Angela Adams Licensing, LLC, et al., CV 08-02489 PA (C.D. Cal. 2008)

CAA alleges that the defendants commenced business as CAA-Media in 2003 and “began using the website www.caa-media.com in connection with media buying and media consulting, which is closely related to the services offered by CAA. CAA also continues that defendants “use the designation ‘CAA’ in stylized red lettering, which is nearly identical to CAA’s distinctive mark.” CAA discovered defendant’s use of the allegedly infringing trademark when a CAA employee was informed by a friend that they were hired by defendants CAA-Media. CAA sent a cease and desist letter to defendants which also requested the transfer of the defendants’ CAA domain names. The complaint alleges that instead of ceasing the infringing use, the defendants filed a trademark application with the USPTO for the CAA trademark. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) Federal trade name infringement and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Federal trademark dilution, 15 U.S.C. § 1125(c); (4) Cyberpiracy under 15 U.S.C. § 1125(d); (5) California common law unfair competition; (6) Unfair competition under Cal. Bus. & Prof. Code § 17200; (7) Injunctive relief; and, (8) Declaratory relief. The case is titled Creative Artists Agency, LLC v. Chessen & Associates, Inc. et al., CV08-02309 SVW (C.D. Cal. 2008).

Right-On filed applications to register as trademarks on the Principal Register the pocket-stitching designs shown to the right for various apparel and garment goods. The focus of the appeal to the TTAB was restricted to jeans only. All three applications were based on a request for extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a) or, in other words, extension to the United States was sought from an international registration. The Examining Attorney refused registration of the pocket-stitching designs because they are “decorative or [] ornamental feature[s] of the goods that are not inherently distinctive and thus would not be perceived as [] mark[s] by the purchasing public without further evidence of acquired distinctiveness.” The applicant, surprisingly, “elected not to attempt a claim of acquired distinctiveness under section 2(f)” but instead appealed the final refusal to the TTAB.

The TTAB judges were not persuaded by the applicant’s argument that other stitching-designs on jeans have been held inherently distinctive and registerable, noting that each case must be decided on its own set of facts. Applicant’s arguments and citations to other allowed trademarks “provides little insight other than to indicate that pocket stitching designs have sometimes been found to be inherently distinctive and sometimes found not to be inherently distinctive.”

In considering the facts of the instant applications and the designs, the TTAB judges ruled that “Applicant’s argument that its designs are not common is not supported by the record. There are a multitude of variations of arches, checks, swoops, waves and other linear designs registered or in use on jeans pockets. They are in no way ‘elaborate and unique.’” The TTAB, however, did indicate that the applicant may have been able to register it’s stitching trademark based upon acquired distinctiveness, which it chose not to do.

PRACTICE NOTE: If you intend to use pocket-stitching on jeans as a trademark, it is highly unlikely that adopting geometric shapes and lines will qualify as an inherently distinctive trademark. Thus, it is better to use elaborate and unique designs that are inherently distinctive and entitled to immediate registration, which designs may also be protectable through copyright registration. I previously posted here about a jean pocket-stitching design which was both trademarked and copyrighted.

“At no time did Defendants seek or obtain Toho’s permission or consent to use or feature the Godzilla Character or any substantially or confusingly similar character in the Commercial.” Apparently, when Toho learned of the commercial, it demanded the defendants cease airing the commercial. “Rather, defendants have continued airing the Commercial on popular television programs, including the NCAA Basketball Tournament semi-final and Championship games” and American Idol. The Complaint estimates that the defendants have spent at least $20 million in TV-air-time alone. Toho alleges that Subway has made millions of dollars as a result of the unauthorized commercial use of the Godzilla character and seeks the disgorgement of Subway’s profits and its costs and attorneys’ fees.

WATCH THE COMMERCIAL:

The complaint asserts the following causes of action: (1) Unfair competition and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (2) Federal anti-dilution law violation, 15 U.S.C. § 1125(c); (3) State anti-dilution law, California Business & Professions Code § 14330; (4) Common law unfair competition; (5) Unjust enrichment; and, (6) copyright infringement. The case is titled Toho Co., Ltd., v. Doctor’s Associates, Inc., d/b/a Subway, et al., CV08-02511 GPS (C.D. Cal. 2008).

Levis alleges that defendant Jeans City manufactures, sources, markets and/or sells “jeans that diplay designs on the rear pockets that are confusingly similar to [Levis’] Arcuate and Tab trademarks.” The complaint alleges that “Jeans City’s actions have caused and will cause [Levis] irreparable harm for which money damages and other remedies are inadequate. Unless Jeans City is restrained by this Court, Jeans City will continue and/or expand the illegal activities alleged in this Complaint and otherwise continue to cause great and irreparable damage and injury to Levis.” Levis claims that it will be harmed by not being able to use and control use of its trademarks, a likelihood of confusion, mistake and deception created in the minds of consumers, false association between Levis and Jeans City, and loss of goodwill. The complaint alleges the following causes of action: (1) Trademark infringement under 15 U.S.C. § 1114; (2) Federal unfair competition, false designation of origin, and false description under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Federal trademark dilution under the Lanham Act section 43(c), 15 U.S.C. § 1125(c); (4) California dilution and trademark infringement under Cal. Bus. & Prof. Code §§ 14320, 14330, 14335, 14340; and, (5) Unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled Levis Strauss & Co. v. Jeans City USA, Inc., CV08-01639 WHA (N.D. California).