August 23, 2013

Chinese Copyright Enforcement In The United States – Chinese Copyright Owner Sues U.S. TV Stations

chinese-copyright-attorney-sue-television-series-lawsuit-license-beijing-ciwen.jpgBeijing Ciwen Film and Television Production Co., Ltd. is the owner of a Chinese copyright registration for forty episodes of the Chinese language television series, whose title translates to “Fox Volant of the Snowy Mountain,” which was created and filmed in China. When filing a copyright infringement lawsuit in the U.S., a U.S. copyright registration is a prerequisite for works created in the U.S. But when the U.S. joined the Berne Convention on March 1, 1989, the Copyright Act was revised to allow the copyright owner in any foreign work of a country that is also a signatory to the Berne Convention to file suit in a United States District Court without proof of a U.S. copyright registration. Cambridge Univ. Press v. Becker, 863 F. Supp. 2d 1190, 1245 (N.D. Ga. 2012).

Beijing Ciwen alleges that it signed a Copyright Sale Agreement with Bright Media granting it licenses and exclusive rights to the series in territories outside of China for a five-year term, without the right of renewal. The complaint states that Bright Media then entered into an exclusive copyright license agreement with Woodward Management for a non-renewable five-year term for the U.S. and Canadian territories. Beijing Ciwen contends that after the license expired on January 19, 2012, That Woodward Dynasty’s affiliated companies, Defendant U2 Entertainment and Tai Sang Entertainment, entered into a copyright licensing agreement with Dynasty Group to improperly distribute and telecast episodes one through forty of the series. Beijing Ciwen allegedly sent a cease-and-desist letter to defendants that the telecast of the series was without license or authorization and constituted copyright infringement. But to date, defendants have refused to cease broadcasts of the series. The copyright infringement lawsuit seeks unspecified damages against the defendants and an award of Plaintiff’s reasonable attorneys’ fees and costs of the litigation pursuant to 17 U.S.C. § 505.

The case is Beijing Ciwen film and Television Production Co., Ltd., v. New Tang Dynasty, et al., CV13-05978 SVW (C.D. Cal. 2013).

November 6, 2011

Paris Hilton Sued For Copying Watch Design In Patent Infringement Lawsuit

watch-design-patent-lawsuit-infringement-paris-hilton-sued.jpgSince she blew onto the scene and gained notoriety from her 2004 sex tape, Paris Hilton has become a trademark licensing phenomenon, lending her name to a wide range of products, from shoes to perfumes. Her latest watch design, however, may not be as successful after being sued for patent infringement. Fine jewelry and watch designer de Grisogono has manufactured and sold the Novantatre watch since 2007. The term “Novantatre” is Italian for “93”, referring to the prominently displayed “9” and “3” on the watch’s face.

To protect the watch’s design, Plaintiff applied for and was granted U.S. Patent Nos. D596,052 (“the ‘052 patent”) and D627,673 (“the ‘673 patent”). The ‘052 patent covers the square-shaped casing design of the watch and the ‘673 patent relates to the ornamental design of the watch dial, including the positioning of the “9” and the “3”. Plaintiff is accusing the Paris Hilton-branded “Coussin” wristwatch of copying the same protected design elements covered by the two patents.

Plaintiff alleges that it sent multiple cease and desist letters to the defendants, which were ignored. Thus, Plaintiff contends that the infringement is willful and intentional and is requesting not only for disgorgement of Defendants’ profits under 35 U.S.C. § 289, but also for the court to triple the award under 35 U.S.C. § 284.

design-patent-watch-paris-hilton-wristwatch.jpgIn addition to suing Paris Hilton Entertainment, Plaintiff is also suing the manufacturer Parlux as the exclusive licensee of the Paris Hilton trademark used on the watch, and Crossbow International and Mr. Pascal Savoy because they have possession and/or control of the Paris Hilton websites where the watches are sold.

The 9th Circuit’s recent Louis Vuitton v. Akanoc Solutions ruling affirmed a web host’s liability for failing to close down websites that were selling counterfeit goods. A jury trial resulted in a $32.4 million award, where the web hosts were jointly liable with the web site operators selling counterfeit goods that infringed Louis Vuitton’s trademarks and copyrights. The trial court then reduced the damages award by approximately $10 million. The 9th Circuit agreed that the web host was jointly liable, but further reduced the damages award because the verdict form improperly allowed multiple awards of statutory damages for willful copyright and trademark infringement against each infringer. “[W]hen statutory damages are assessed against one defendant or a group of defendants held to be jointly and severally liable, each work infringed may form the basis of only one award, regardless of the number of separate infringements of that work.” Columbia Pictures Television v. Krypton Broad. of Birmingham, Inc., 106 F.3d 284, 294 (9th Cir. 1997), rev’d on other grounds, Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998)). Thus, the 9th Circuit vacated the damages award and ordered an award of approximately $10.8 million jointly and severally against all of the defendants.

The case is De Grisogono, S.A., v. Paris Hilton Entertainment, et al., CV11-9022 SVW (C.D. Cal. 2011).

September 22, 2011

Court Denies Fallout Video Game Temporary Restraining Order Against Masthead Studios

Copyright-video-game-trademark-temporary-restraining-order-fallout-bethesda-masthead.jpgBethesda Softworks and Interplay Entertainment have waged a long-running, real world copyright and trademark battle over the virtual-world Fallout video game. The Bethesda v. Interplay Maryland lawsuit apparently arose over an ambiguity in the scope of a license back to Interplay in developing future Fallout video games. In 2007, Bethesda and Interplay entered into an asset purchase agreement that assigned all rights in the Fallout trademarks and copyrights to Bethesda. And, in a simultaneously executed trademark license agreement, Bethesda granted a license back to Interplay that provides:

Subject to the terms and conditions set forth in this Agreement, Bethesda grants to Interplay an exclusive, non-transferable license an right to use the Licensed Marks on and in connection with Interplay’s FALLOUT-branded [Massively Multiplayer Online Game] MMOG (the “FALLOUT MMOG” or “Licensed Product”) and for no other purpose. The conditional license herein does not grant Interplay any right to sublicense any of the licensed rights without Bethesda’s prior written approval.

In its initial filings, Bethesda claimed that Interplay failed to meet other contractual requirements, including securing required financing and complying with commercial launch deadlines. Later, Bethesda claimed that the trademark license applied only to the Fallout mark and not to any of the elements or characters in the game. Interplay countered that Bethesda’s interpretation cannot be harmonized with the rest of the agreement that provides for Interplay’s right to use “non-FALLOUT MMOG, inter alia, any or all locations, graphic representations, creatures, monsters, names, likenesses, [etc.]” should the agreement terminate prior to commercial launch. The Maryland court appears to have initially agreed with Interplay’s interpretation by denying, without much analysis, Bethesda’s motion for preliminary injunction.

Undeterred, and possibly seeking a change of scenery, Bethesda has filed a new copyright infringement lawsuit against Masthead Studios in Los Angeles. Bethesda alleges that Interplay has, in violation of the trademark license, entered into a product development agreement with Masthead for the development of a Fallout video game called Project V:13 by improperly sublicensing Bethesda’s intellectual property. This time, Bethesda wastes no time in alleging that under the Interplay trademark license, in “plain, clear and unambiguous” terms, Bethesda “granted Interplay a conditional license to use only the ‘FALLOUT’ trademark and nothing more relative to a Fallout-branded MMOG. Bethesda did not provide Interplay with any license to use any copyrighted materials relating to Fallout -- all copyrighted materials were retained exclusively by Bethesda.” Bethesda claims that Masthead’s performance of its duties under the Interplay agreement is both a direct and contributory infringement of its copyrights and filed for a temporary restraining order.

The Hon. John F. Walter, without even the benefit of an opposition from Masthead, denied Bethesda’s ex parte application for a temporary restraining order:

Plaintiff has not demonstrated that it will be irreparably prejudiced if the requested ex parte relief is not granted, or that it is without fault in creating the crisis that requires ex parte relief. Indeed, Plaintiff was aware as early as February 2011 that Masthead was potentially infringing its copyrights. . . . Bethesda Softworks LLC v. Interplay Entertainment Corp., Case No. 09 CV 2357, D. Maryland, Memorandum in Support of Plaintiff’s Motion for Preliminary Injunction at p. 7 (“According to Interplay, pursuant to this purported development agreement, Masthead Studios is assisting Interplay in developing its Fallout MMOG using the copyrighted Fallout works.”). Yet, Plaintiff waited seven months to apply for ex parte relief. The Court finds that Plaintiff unreasonably delayed in seeking relief, and that the emergency that allegedly justifies a TRO is self-created. Accordingly, Plaintiff’s Ex Parte Application for Temporary Restraining Order and Order to Show Cause Re: Preliminary Injunction is DENIED. If Plaintiff wishes to pursue its request for injunctive relief, it may do so by way of regularly noticed motion after complying with Local Rule 7-3.

Further, the Court denied Bethesda’s ex parte application for substituted service on Masthead, a Bulgarian software company.

The case is Bethesda Softworks, LLC v Masthead Studio, Ltd., CV11-7534 JFW (C.D. Cal. 2011).

June 15, 2011

“Warhammer 40,000” Game-Based Movie Trapped In Copyright Infringement & Breach of Contract Battle

copyright-license-ultramarines-warhammer-40000-lawsuit-contract-breach-movie.jpgThe “Ultramarines: A Warhammer 40,000 Movie” is based on the popular “Warhammer 40,000” table-top war game. The movie is a science-fantasy action thriller set in the future where genetically enhanced super-warriors battle aliens to protect mankind. But in the present, a legal battle has commenced regarding distribution rights to the movie involving the production company and the distributor.

The scene opens with Anchor Bay Entertainment, Codex Pictures and BF1 Films entering into a series of agreements relating to the distribution of the movie. The picture was to be produced by Codex with financing from Aramid Entertainment. The agreements between Anchor Bay and BF1 allegedly granted Anchor Bay “the exclusive, irrevocable, worldwide home video and digital/electronic rights (among other rights) to eight” motion pictures. Anchor Bay selected Ultramarines as one of the pictures and advanced $495,000 to BF1.

Then, for a $200,000 advance, BF1 and Codex executed a North American distribution agreement (“NA Agreement”) for the exclusive right to exploit the movie in all home-video formats, which agreement is alleged to have been made expressly for Anchor Bay’s benefit and with Codex’s knowledge of the Anchor Bay and BF1 agreement. Later, Codex and BF1 also executed a rest of the world distribution agreement (“ROW Agreement”) for the same exclusive rights and referring specifically to Anchor Bay’s sub-licensee status. Anchor Bay and the rest of the parties also signed a deed of undertaking that was allegedly required by Aramid in order for it to finance the film.

By the time the movie was almost completed, Anchor Bay and Codex allegedly discovered that BF1 may have made misrepresentations regarding the movie, including failing to disclose a “holdback” provision in the distribution agreement granting Codex the right to simultaneously distribute a special edition DVD with different packaging and extras. Codex thus terminated the distribution agreements with BF1. But Anchor Bay contends that it still has the rights to distribute the movie because the agreements require Codex to honor all sublicenses despite BF1’s termination. Anchor Bay alleges that Codex and Aramid are seeking a more profitable distribution agreement and not honoring its enforceable agreement.

Anchor Bay is seeking the Court’s declaratory judgment that it has the right to distribute the movie under the Copyright Act as the worldwide licensee, in addition to asserting claims for breach of contract and unjust enrichment.

The case is Anchor Bay Entertainment LLC v. Codex Pictures, Ltd., CV11-4891 DDP (C.D. Cal. 2011).

March 14, 2011

Oral Copyright License Of Ben Hogan Photographs Predictably Ends In Lawsuit

copyright-license-photo-contract-oral-agreement-ben-hogan-image-lawsuit.jpgLos Angeles, CA – An oral agreement is usually not the greatest way to memorialize the parties’ duties and rights for copyrighted material, and this is certainly not the first or last such dispute. See here. Plaintiff JanKris Vineyards entered into an oral copyright license agreement with photographer Jules Alexander to use six photographs of golfer Ben Hogan on wine labels for six years. JanKris contends that the oral license did not limit the use of the photographs other than on wine labels and in marketing of such wines. Also, JanKris alleges that the parties agreed that JanKris could make a derivative work of one of the photographs by replacing a cigarette in Ben Hogan’s hand with a glass of wine.

JanKris then used the licensed photographs on its wines and marketing, which included agreements with PGA Magazine to run advertisements and a licensing agreement with Calloway for Ben Hogan’s publicity rights. JanKris alleges that in an attempt to renegotiate the terms of the license, Alexander asserted copyright infringement claims against PGA Magazine and Calloway, which included assertions that JanKris did not have the right to use the photograph of Hogan holding a wine glass. Based on Alexander’s alleged threats, JanKris claims that Calloway denied a license to use Ben Hogan’s name in the Far East, resulting in damages of more than $1 million a year.

In addition to monetary damages, JanKris seeks declaratory relief of copyright non-infringement because the works allegedly fell into the public domain. JanKris contends that because the photographs were taken in the 1950’s, the works fell into the public domain when they were first published without proper copyright notification prior to the 1976 Amendments to the Copyright Act. And, defendant did not seek a copyright registration until 1998. The case is Veris Management Co. v. Jules Alexander, CV11-01962 VBF (C.D. Cal. 2011).

August 5, 2010

Moroccanoil Sues For Trademark Infringement Over Hair Care Products

trademark-attorney-hair-care-beauty-salon-oil-conditioner.jpgLos 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).

May 26, 2010

Court Grants Preliminary Injunction In “I Love You Phillip Morris” Movie Copyright Case

copyright-attorney-preliminary-injunction-i-love-you-phillip-morris.jpgLos Angeles, CA – EuropaCorp, the motion picture studio behind the “I Love You Phillip Morris” movie, was granted a preliminary injunction in its copyright infringement and breach of contract lawsuit against the distributor Consolidated Pictures Group. Consolidated Pictures had been granted all U.S. domestic distribution rights in the movie, but had allegedly failed to make timely payments under the agreements. Details blogged here.

The Court enjoined Consolidated Pictures from publicly displaying or exhibiting any portion of the movie and attempting to negotiate agreements regarding the distribution, exhibition, or exploitation of the movie. Order available here.

The case is EuropaCorp v. Consolidated Pictures Group, Inc., et al., CV10-2917 DSF (C.D. Cal. 2010).

May 3, 2010

EuropaCorp Sues Consolidated Pictures Over Distribution Of “I Love You Phillip Morris” Movie

copyright-attorney-film-movie-europacorp-consolidated-pictures.jpgLos Angeles, CA – EuropaCorp is a French motion picture studio that produced the feature film “I Love You Phillip Morris,” starring Jim Carrey and Ewan McGregor. In a May 8, 2009 agreement, EuropaCorp licensed to Consolidated Pictures all domestic distribution rights in the movie, including all theatrical, home video, and television rights. In exchange, Consolidated Pictures was to pay a $3 million advance. After the licensing agreement was executed, EuropaCorp alleges that it delivered the movie and marketing materials; however, a dispute arose between the parties as to the timing of delivery. The dispute was addressed by the execution of an amendment to the license agreement in February of 2010.

EuropaCorp now contends that Defendants have breached the agreement by failing to make the installment payments towards the $3 million advance. As a result, EuropaCorp rescinded the agreement and sought return of the movie and marketing materials. EuropaCorp alleges that Defendants have refused to return the movie or acknowledge the rescission of the distribution rights. Thus, the instant copyright infringement and breach of contract suit was filed. The case is EuropaCorp v. Consolidated Pictures Group, Inc., et al., CV10-2917 DSF (C.D. Cal. 2010).

Here's the trailer:


April 13, 2010

FarmVille, Zynga Poker & Mafia Wars Maker Sues PlayerAuctions.com For Trademark & Copyright Infringement

zynga-farmville-trademark-attorney-copyright.jpgLos Angeles, CA – Zynga Game Network is a social gaming company and provides numerous games, such as Zynga Poker, Mafia Wars, FarmVille, YoVille, Cafe World and Word Twist, that are available on Facebook, MySpace, Friendster, iPhone and iPod Touch, among others. Zynga has several pending USPTO trademark applications for its Mafia Wars, Farmville and Yoville trademarks and several copyright registrations for the games as well. Zynga asserts that its games have been a runaway success, with an increase from 1.3 million daily users in July of 2008 to 9.5 million daily users in May of 2009.

When players sign up with Zynga to play the games, they receive a certain amount of virtual currency, which amount can increase through continued play and purchased directly from Zynga. The virtual currency is then used to purchase virtual goods that are used in the games. The “Terms of Service” prohibit the use of virtual currency or goods for real-world money and Zynga does not authorize any third party to sell virtual currency or virtual goods.

In the lawsuit, Zynga accuses Defendant of allowing users to post and sell virtual currency or virtual goods to be used in Znyga’s games on its playerauctions.com website. Zynga claims that in addition to using Zynga’s trademarks without authorization, Defendant profits from the sale of virtual currency and goods by selling them for real-world money in violation of the “Terms of Service” agreement. Further, Defendant is accused of using images of Zynga’s games without authorization, which use infringes its copyrights. The case is Zynga Game Network, Inc. v. Playerauctions.com, CV10-2576 CBM (C.D. Cal. 2010).

March 4, 2010

Upper Deck To Pay MLB To Settle Trademark Infringement Lawsuit

trademark-attorney-major-league-baseball-sues-upper-deck-infringement-contract-license.pngNew York -- Upper Deck will reportedly pay MLB a "substantial sum" in addition to $2.4 million to settle the trademark infringement and breach of contract lawsuit, according to Reuters. On January 31, 2010, Major League Baseball Properties sued the Upper Deck Company for trademark infringement, trademark dilution, unfair competition, and breach of contract because Upper Deck continued to print baseball trading cards after its license was terminated. Details blogged here.

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).