During the holidays, Coca Cola sells its beverages in spherical bottles shaped to be Christmas tree ornaments. Coca Cola’s bottle shape, however, was itself the subject of a prior claim of infringement by O-Company and OGO USA. In response, Coca Cola filed an opposition proceeding at the TTAB and also filed a declaratory judgment lawsuit in the Middle District of Tennessee. It appears that the parties resolved the dispute by assigning the disputed application and the resultant trademark registration – which is the subject of the instant lawsuit – to Coca Cola.

BT alleges that in September of 2009, Coca Cola sent a cease and desist letter charging infringement of the trade dress bottle design and Design Patent No. D554,523. BT responded by using Coca Cola’s previous stance against it by denying that Coca Cola had an exclusive right to round shaped bottles for beverage products. The parties’ inability to resolve the dispute resulted in this lawsuit. The case is GT Beverage Company, LLC v. The Coca Cola Company, SACV10-00209 JVS (C.D. Cal. 2010).

It appears that Upper Deck learned from its long and drawn out court battle with Konami. Only after the California District Court ruled that Upper Deck counterfeited hundreds of thousands of Yu-Gi-Oh! trading cards, did Upper Deck decide to settle on the first day of trial. Details here. Conversely, by settling early with MLB, Upper Deck can avoid possible adverse rulings and focus on reviving its business.

The case is Major League Baseball Properties, Inc. v. The Upper Deck Company, LLC, 10-cv-732-RWS (SDNY 2010).

On July 20, 2009, after Michael Jackson’s death, TMZ is accused of broadcasting confidential outtakes of the interview with Rowe where she jokes about using sedation to combat stage fright. “Schaffel and Rowe were stunned and distressed that TMZ, in a misguided attempt at gallows humor, broadcast the Confidential Outtakes, attempting to tie a 2003 joke by Rowe about drug use to Mr. Jackson’s tragic 2009 death from a drug overdose.” Four days later, TMZ removed the footage upon Schaffel and Rowe’s request and allegedly identified the Sheriff's office as the source of the confidential footage. The Sheriff’s office denied the accusation and TMZ then refused to identify the source of the footage: “TMZ asserts that its status as a ‘news’ provider exempts it from respecting copyrights, permits it to broadcast purloined material, and insulates it from liability for lying about sources of illicitly obtained materials.”

Schaffel asserts causes of action for copyright infringement and conversion under California law. The case is F. Marc Schaffel Productions, LLC v. TMZ Productions, Inc. et al., CV10-01306 GHK (C.D. Cal. 2010).

To show copyright infringement, Plaintiff had to show Defendants had access to the “Karma!” screenplay and that the works were substantially similar. The Court found that Plaintiff failed to show that Garcia had access to “Karma!”:

In sum, even generously assuming that Plaintiff’s submission of Karma! actually reached Gersh, the record is insufficient to allow a reasonable jury to infer that Garcia had access to Karma. Thus, summary judgment for Defendants is appropriate. Finally, even if the weak evidence of access were sufficient to create a triable issue of fact, Plaintiff would still have to present evidence allowing reasonable minds to conclude that Karma! and Earl are substantially similar.

To determine whether the two works were substantially similar, the Court applied the Ninth Circuit’s two-part test consisting of extrinsic and intrinsic components. In the extrinsic test, the Court considered whether the works share a similarity of ideas and expression as measured by external, objective criteria that includes “the articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.” On summary judgment, the intrinsic test is inapplicable because it requires a lay person – the juror – to determine whether the “total concept and feel” of the two works is substantially similar – without the aid of expert testimony.

Although Plaintiff had hired David Nimmer – a copyright law expert – to provide an analysis of the objective criteria, the Court found that Nimmer’s report was not admissible under FRE 702 because he was not qualified to render an expert opinion on the issue of substantial similarity between two literary works, even though his expertise and education in copyright law is beyond reproach.

The Court then proceeded to analyze the two works and first found that although the two works share similar unprotectable themes, i.e. karma and redemption, the expression of those themes is markedly different. Beyond the general plot idea that both protagonists win the lottery, the Court found little in common. The Court also found that the sequence of events, excluding the karmic realization followed by the main character making amends for previous bad acts, were considerably different. Further, the Court found that the characters were dissimilar, other than the unprotectable general themes of karma and redemption. The setting for each work is different, Earl taking place in the suburban town of Camden and Karma! set in the slums of New York city. The mood and pace were also different because Earl is paced for half-hour long episodes, whereas Karma! is paced as a full-length feature film. The dialogue is also dissimilar in that Karma! is full of hard-core street vernacular that is unique to plaintiff’s work and has no counterpart in “Earl.” As a result, the Court granted NBC’s summary judgment of non-infringement finding that “even assuming arguendo that there is a triable issue regarding access, no reasonable jury could conclude that Karma! and Earl are substantially similar.” The case is Mark Gable v. National Broadcasting Company (“NBC”) and Gregory Thomas Garcia, CV08-04013 SVW (C.D. Cal. 2008).

Plaintiff alleges that “in using the mark and label ‘Santa Barbara Wine Company’ in connection with wine offered for sale in commerce, Defendant has intentionally sought to infringe upon Plaintiff’s Santa Barbara Winery trademark, to cause confusion and mistake amongst consumers, the trade, and those who come into post-purchase contact with its goods, as to whether its goods are connected, affiliated or associated with Plaintiff, and to re-direct confused consumers to products Defendants are selling that are not affiliated with Plaintiff.”

I only recently learned that the UB40 “Red Red Wine” song was actually written by Neil Diamond. Here’s Neil Diamond’s version:

I enjoy UB40’s version more:

The case is Santa Barbara Winery, Inc. v. Foster’s Wine Estates Americas Company, CV10-1026 JHN (C.D. Cal. 2010).

With respect to the Daytona Coup trade dress infringement claim, the Court held that it was barred by doctrine of res judicata and the terms of the settlement agreement:

In this case, the settlement agreement resolved the Type 65 trade dress claims and did not bar FFR from using the Type 65 kits, which have apparently not broadened or changed in the intervening years. Under the settlement agreement, “Shelby dismisse[d] with prejudice all claims that have been asserted or could have been asserted relative to the trade dress or designs of FFR’s kits, including but not limited to the kits known as the 427 Roadster and the Type 65 Coupe.” (FFR’s Mem., Ex. B ¶ 9 (emphasis added).) Shelby’s argument that the first suit only involved the 427 S/C contradicts the plain language of the settlement, which dismissed all claims “relative to the trade dress or designs of FFR’s kits” involving Factory Five’s Type 65 Coupe, not merely those relating to the trade dress of the 427 S/C. Moreover, the Final Judgment included numerous, specific references to both the name and design of the Daytona Coupe.

As to the rest of Shelby’s trademark and unfair competition claims, the Court dismissed them because Shelby failed to provide proper notice and opportunity to cure as mandated by the settlement agreement, but because Factory Five alleges that it has removed all hyperlinks and metatags complained of, refiling should be futile:

In light of Shelby’s failure to comply with the notice and cure provision of the settlement agreement, the remaining claims against it will be dismissed without prejudice to provide the requisite thirty day opportunity to cure and allow the parties a chance to resolve this dispute in accordance with it.

Internet Community Partners did not fare as well at this early stage of litigation, but it appears that the Court indicated that defendants have a valid First Amendment and fair use defense:

To be sure, use of a name in a forum may be in good faith or protected by the First Amendment. However, when all reasonable inferences are drawn in Shelby’s favor, dismissal on that basis is not warranted at this early stage of the litigation.

The case is Carrol Shelby et al. v. Factory Five Racing, Inc. et al., 09-CV-10281-PBS (D.Mass. 2009).

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 under 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 Trivitis, Inc. v. Ocean Spray Cranberries, Inc., 10CV0316 JM (S.D. Cal. 2009).

Whether you get thugged or the check just doesn't come, it's all the same -- someone else has your money. And whether it's a platitude-spouting, self-proclaimed soccer mom or a supposed gangster who isn't paying you, it doesn't change the fact that you're not getting paid. Read the complaint here.

The rap star and record producer co-founded Death Row records in 1991 with Marion “Suge” Knight and began the gangsta rap movement. Few, however, remember Dr. Dre’s “less Gangsta” side when he was on the turntables for the World Class Wreckin Cru – but I digress. The parties verbally agreed that in exchange for payment of royalties to Dr. Dre, Death Row received a non-exclusive license to release sound recordings that he produced, composed and/or performed on. Dr. Dre’s first record release under the Death Row label was “The Chronic” in 1992, which was a huge success.

By 1996, Dr. Dre wanted to "escape" Death Row and entered into a written agreement where Dr. Dre would relinquish his 50% ownership interest in Death Row and assign all copyrights in his recordings. However, the copyrights were assigned to the extent that the “master recordings shall only be distributed in the manners heretofore distributed.” In return, Death Row agreed to pay royalties to Dr. Dre from the sales of the sound recordings that he wrote, produced, or performed on. The transfer included other smash hits such as Doggystyle, Murder Was the Case, and Above the Rim.

In 2006, Death Row filed for Chapter 11 bankruptcy protection and at the bankruptcy auction in January of 2009, Wideawake Entertainment, whose CEO is a trademark attorney, purchased Death Row’s assets. The complaint alleges that in the Spring of 2009, Defendants were put on notice that the “1996 Agreement prohibited defendants from releasing The Chronic in any manner in which it was not distributed prior to the 1996 Agreement.” Dr. Dre further alleges that defendants brazenly ignored the agreement and released an album and DVD entitled The Chronic Re-Lit & From the Vault. The release of “Re-Lit” is “a calculated breach of the 1996 Agreement; a willful violation of plaintiff’s rights to his name and likeness, and his trademark, “Dr. Dre”…; and a fraud on the public…”

Dr. Dre also claims that Defendants have breached the agreements by failing to pay him royalties since 1996, by digitally distributing The Chronic, and including his recordings in a compilation album entitled “Death Row’s Greatest Hits.”

Does “fear for your life” excuse a thirteen-year delay in filing a breach of contract lawsuit and overcome the statute of limitations issue? Subpoena Vanilla Ice regarding negotiations with Mr. Knight.

The case is Andre Young v. Wideawake Death Row Entertainment, LLC et al., CV10-01019 CAS (C.D.Cal. 2010).

Plaintiffs accuse Defendants of selling tote bags that “bear trade dress that unlawfully copies or imitates Plaintiffs’ unique, distinctive, and non-functional Marc Jacobs Pretty Nylon Tote Trade Dress and/or that unlawfully bear marks confusingly similar to the Marc Jacobs Scrambled Trademark.” In addition, Plaintiffs assert claims for unfair competition under Cal. Bus. & Prof. Code § 17200 and constructive trust.

Since the parties’ products apparently bear their respective trademarks, it will be interesting to see if customers are confused about the source of the products. See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1045-46 (2nd Cir. 1992) (holding that prominently displayed trade names on the respective products "weigh[ed] heavily against a finding of consumer confusion resulting from the overall look of the packaging") (preliminary injunction denied).

The case is Marc Jacobs Trademarks, LLC et al. v. Eagles Clubs International, Inc., et al., CV10-00456 CBM (C.D. Cal. 2010).

MLBP ended its twenty-year relationship with Upper Deck and entered into an exclusive agreement with Topps "to use the MLB trademarks on trading cards for retail distribution beginning on January 1, 2010." MLBP also alleges that Upper Deck failed to pay in excess of $2 Million under its prior licensing agreement. "Notwithstanding the expiration of the Upper Deck License Agreements as of October 31, 2009, and the absence of any new license from MLBP authorizing the use of the MLB Marks, Upper Deck has begun manufacturing, distributing, offering for sale, and selling at least three trading card sets featuring cards using the MLB Marks, including, without limitation, the MLB Uniform Trade Dress and MLB Caps and Helmet Logos." In addition to monetary damages, MLBP seeks to enjoin Upper Deck's manufacture and sale of the 2009 Signature Stars Series, 2009 Ultimate Collection Series, and 2010 Unauthorized Series I trading cards.

All may not be lost for Upper Deck, however, because it could rely on the denial of preliminary injunction ruling in the similarly situated Pacific Trading Card case. The case is Major League Baseball Properties, Inc. v. The Upper Deck Company, LLC, 10-cv-732-RWS (SDNY 2010).

The NFL has only now -- apparently after Senators intervened -- realized the public relations blunder, chalking it all up to a "significant misunderstanding as to the scope of the [League's] trademark enforcement efforts."

Los Angeles, CA – Instead of settling the case after it was caught selling counterfeit Yu Gi Oh! cards, Upper Deck fought a losing battle and the Court's summary judgment ruling found that Upper Deck counterfeited Yu Gi Oh! cards (details here). After the parties' opening statements were delivered to the jury yesterday, Upper Deck and Konami settled the case, wherein Upper Deck will pay an undisclosed sum to Konami and will enter into a permanent injunction -- which appears to be an adoption of the Court's previously issued preliminary injunction (details here). The Court's order regarding the settlement is available here.

The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

Los Angeles, CA – Despite the Court’s finding that Upper Deck counterfeited Yu Gi Oh! cards (details here) and advising the parties to settle the damages phase through mediation, the jury trial to determine damages has commenced (Court’s calendar is here). If there ever was a case to settle early to avoid damage to a company’s reputation – which reputation and lifeline is founded on authenticating autographs and memorabilia, this would have been it.

The Cult-Stuff provides a chronology of events in the Konami v. Upper Deck Yu Gi Oh! counterfeiting battle here.

The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

Defendants are also a non-profit fraternal organization engaged in social, civic and charitable activities. Defendants use “Eagles” trademarks and logos incorporating an eagle design. FOE alleges that Defendants have registered the eaglesclubs.org domain name in bad faith in an effort to divert consumers from FOE’s online location. Defendants are accused of adopting the confusingly similar marks with prior knowledge of Plaintiff’s trademarks. The case is Grand Aerie of the Fraternal Order of Eagles v. Eagles Clubs International, Inc., et al., CV10-0357 RSWL (Cal. 2010).

Michael Calmese, Dan Mortensen, and their True Fan Logo, Inc. are the named defendants. On the day that Shaquille was traded to Phoenix, Mortensen registered the domain name and, shortly thereafter, the domain name. Defendants’ website features a cactus character that allegedly has O’Neal’s facial features and wears an orange number 32 basketball jersey – Shaq’s number with the Suns. Defendants sell clothing and other products bearing the SHAQTUS trademark and/or the character.

In 2008 and 2009, ESPN aired commercials featuring O’Neal and a cactus with O’Neal’s facial features. On December 4, 2009, Defendant Calmese allegedly sent a letter to ESPN claiming ownership of the SHAQTUS trademark and proposing a joint-development business arrangement to resolve the dispute. On December 29, 2009, Plaintiff’s counsel sent a cease and desist letter to Defendants demanding the transfer of the domain names. On January 4, 2010, Defendant Calmese responded and allegedly claimed that O’Neal consented to his use of the SHAQTUS mark when O’Neal agreed to take a picture with Calmese and autograph a T-shirt.

The case is Mine O’Mine, Inc. v. Calmese, et al., CV10-00043 KJD (D.Nev. 2010).