Los Angeles Intellectual Property Trademark Attorney Blog

New 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).

LA, CA – Dr. Dre, whose real name is Andre Young, sued the new Death Row records for trademark infringement, breach of contract, violation of the right of publicity, and unfair competition. The complaint claims that nothing has changed at Death Row: “meet the new boss, same as the old boss” and alleges:

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).

New York -- Major League Baseball Properties sued the Upper Deck Company for trademark infringement, trademark dilution, unfair competition, and breach of contract because Upper Deck continues to print baseball trading cards after its license was terminated. A copy of the complaint is available here. MLBP pulls no punches and extensively refers to the recent Court ruling that Upper Deck counterfeited hundreds of thousands of Yu-Gi-Oh! trading cards, its agreement to a multi-million dollar settlement and permanent injunction (details here).

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).

UPDATE 1/27/2010: Upper Deck settles Yu Gi Oh! counterfeiting case. Details here.

Los Angeles, CA – Yu Gi Oh! owner Konami sued Upper Deck, its former distributor, for selling counterfeit trading cards. (Details here) After hearing both parties’ motions for summary judgment, the Court found that Konami had “presented evidence to establish every element of liability [for] counterfeit activity and violation of federal unfair competition law, pursuant to the Lanham Act, on the part of the [Upper Deck] Defendants.” (Order available here) The Court also found that Upper Deck was liable for common law trademark infringement and California unfair competition under Business & Professions Code § 17200. On the copyright infringement claim, the Court partially found that Upper Deck infringed the “Reverse Art” copyright, which refers to the text that appears on the back of the trading cards. The statement of undisputed facts is available here.

In another order, available here, the Court ruled in Konami’s favor because the “reproduction and/or manufacture of unauthentic cards does not fall within the ‘Approval’ clause of the 2006 Letter of Intent.” Conversely, the Court denied Upper Deck’s motion to limit its liability. In yet more bad news for Upper Deck, in another order that’s available here, the Court found for Konami on Upper Deck’s counterclaims for breach of contract and slander per se.

The case is scheduled for trial on January 26, 2010. The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

Santa Ana, CA – Quest Software, Inc. sued DIRECTV Operations, LLC for copyright infringement and breach of software license agreement. Quest creates smart systems management software that allow its customers to detect, diagnose to the root cause, and resolve performance and availability problems in their information technology environment. The software is sold under the Foglight trademark and all of the different versions of the Foglight software are registered with the U.S. Copyright Office.

Quest contends that in December of 2002, Directv signed a software license agreement for the Foglight Server, Foglight Base, and Foglight Siebel software. On April 29, 2005, the parties allegedly executed an agreement for additional licenses for the software products. In 2006, the parties’ representatives met to convert the licenses from server-based Windows NT to CPU-based licenses that could be used on any operating system, including UNIX. Before making the conversion, however, Quest sought to confirm that DIRECTV was in compliance with the license agreement.

In February of 2008, Quest received a statement of work from DIRECTV that allegedly showed significant over-deployment of the Foglight products. According to Quest’s calculations, DIRECTV owes $2,947,450 in licensing fees for the alleged over-deployment of the software. Over the next several months, the parties met to discuss the alleged over-deployment and additional reports were produced by DIRECTV. One of those reports allegedly showed that DIRECTV had been using the Foglight products on non-Windows NT operating systems in further breach of the license agreement. As a result, the conversion process did not take place.

Quest alleges that in December of 2008 a new issue arose when the “maintenance services” portion of the agreement automatically renewed; however, DIRECTV has allegedly failed to make the required payment of $196,356.31 therefor. Further, in early 2009, DIRECTV allegedly uninstalled Quest’s software from its servers and issued a new report claiming that there was no over-deployment of the software. Thus, this lawsuit followed. The case is Quest Software, Inc. v. DIRECTV Operations, LLC, SACV09-01232 JVS (C.D. Cal. 2009).

Los Angeles, CA – Wanderlust Media files a trademark infringement and breach of contract lawsuit to prevent a former licensee, Mio Technology, from using KITT’s voice and other deliverables in personal navigation devices (“PND”). Wanderlust licenses and sells certain customized celebrity voices for use in GPS and PND systems. Wanderlust has obtained rights from Universal Studios of certain elements associated with the classic live-action television series entitled “Knight Rider,” including the voice of William Daniels as “K.I.T.T.” – the true star of the show. Sorry David Hasselhoff, but K.I.T.T.’s got the talent, America.

Wanderlust licensed to Mio the navigation voices and other deliverables associated with Knight Rider, including K.I.T.T.’s voice and images. The license was terminated in March 2009 due to alleged non-payment of fees. Wanderlust alleges that Mio did not deny that it owed the fees, but it attempted to negotiate a reduced payment. But after the negotiations failed, Mio was obligated to terminate all use of the licensed deliverables. Mio, however, has allegedly not ceased use of the deliverables, resulting in the instant suit. The case is Wanderlust Media, LLC v. Mio Technology USA Ltd., et al., CV 09-06163 AHM (C.D. Cal. 2009).

Los Angeles, CA – Plaintiffs Twentieth Television, Inc. and Twentieth Century Fox Film Corporation sued Roberts Brother Properties, LLC and several related “Roberts” companies, which operate the following television stations: WAZE-TV, WRBU, WZRB, and WRBJ. The stations broadcast, under license from the FCC, television programs in Evansville, Indiana; Jackson, Mississippi; Saint Louis, Missouri; and Columbia, South Carolina. Twentieth is the licensing agent for the free broadcast television rights in the following programs: King of the Hill, Malcolm in the Middle, Judge Alex, Divorce Court, Cristina’s Court, Family Guy, The Bernie Mac Show, Century Premiere, Boston Legal, Texas Justice, Still Standing, and Century 20 (collectively the “Fox Television Series”). Plaintiff Fox owns the copyrights to said programs.

Plaintiffs allege that since 1998, Defendants have entered into twenty-four written television syndication agreements for the television programs listed above, which agreements provided exclusive broadcast rights in the geographic regions. Some of the agreements required monetary payment and some others had “barter” terms, wherein the TV station licensee provides advertising time on the station in exchange for the licensed rights. The agreements allegedly have a “cross-default provision,” wherein a breach of one agreement constitutes a breach of all other licenses. Plaintiffs accuse the Roberts Defendants of failing to pay licensing fees beginning in August of 2008, after which Plaintiffs terminated all of the syndication agreements. Plaintiffs have demanded payment of the alleged outstanding balance of $1,272,241.77, but Defendants have failed to make payment or cease broadcasts of the programs. The case is Twentieth Television, Inc. et al. v. Roberts Brothers Properties, LLC et al., CV 09-5992 RSWL (C.D. Cal. 2009).

Los Angeles, CA – Clothing designer Christian Audigier was sued by Bryan Callan for unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and breach of their licensing agreement (details blogged here). Audigier answered the complaint and counterclaimed (copy available here) alleging he entered into an agreement to purchase Callan’s original artworks and copyright thereto for use on Audigier’s eponymous product line. Audigier alleges that Callan breached the agreement by failing to provide a minimum of ten original pieces of artwork each and every month. In addition, Audigier claims that despite the transfer of ownership of the copyrights to Audigier, Callan requested that Audigier loan him some of the artwork to show in Callan’s gallery. By failing to return the artwork, it’s alleged that Callan intended to convert the artwork to his own possession and use under the guise of “borrowing” the same. Audigier seeks a declaration of copyright ownership because Callan allegedly applied for federal copyright registration wherein Callan falsely represented that he is the owner copyrights despite assigning the rights to Audigier. The case is Bryan Callan v. Christian Audigier, Inc. et al., CV 08-08072 GW (C.D. Cal. 2008).

UPDATE 1/10/2010: Court rules that Upper Deck counterfeited Yu Gi Oh! cards. Details here.

Los Angeles, CA – In October of 2008, Konami sued Vintage Sports Cards, Inc. in the Central District of California for sales of allegedly counterfeit Yu-Gi-Oh! trading cards (details blogged here). The Court entered a permanent injunction against Vintage and, after taking expedited discovery, Konami discovered that Upper Deck – Konami’s exclusive distributor – was the alleged source of the infringing cards distributed by Vintage.

Upper Deck allegedly was the source of “at least 531,240 counterfeit Rare Cards” provided to Vintage. And in October of 2008, Konami’s attorneys discussed Upper Deck’s role in the distribution of allegedly infringing cards with Upper Deck’s lawyers. During counsels’ communications, Upper Deck’s lawyers allegedly threatened Konami with “mutual assured destruction” through litigation.

Konami then provided Upper Deck with access to the seized cards and subpoenaed records from Upper Deck to determine the scope of the alleged counterfeiting and infringement. One day before responses were due, Upper Deck refused to comply with the subpoena raising an objection of improper service on its California office.

On December 10, 2008, Upper Deck filed suit in the District of Nevada alleging Konami breached its agreements and committed fraud. The complaint also contained causes of action for slander and civil conspiracy arising from Konami’s communications to third parties that Upper Deck provided counterfeit cards to Vintage. In response, on the very next day, Konami terminated its distribution agreement with Upper Deck. Upper Deck then raised the stakes by filing suit in Amsterdam on December 16, “seeking an interim order requiring specific performance of the European version of the parties’ distribution agreement.” Konami then alleged that Upper Deck misrepresented the holdings of the Dutch proceedings in that “the five-page interim order did not decide any issue in this action,” despite Upper Deck’s assertion to the Central District of California.

Konami amended its complaint to add Upper Deck as a co-defendant and moved for preliminary injunction against Upper Deck, which motion was denied without prejudice (details blogged here). Konami then renewed its motion for preliminary injunction against Upper Deck (read here), which injunction was granted.

On February 26, 2009, the Central District of California granted Konami’s preliminary injunction application enjoining Upper Deck from manufacturing, advertising and distributing the Yu-Gi-Oh! cards (read order here). In response, Upper Deck filed suit, in the District of Nevada, against Konami alleging trademark infringement of its hologram mark, in addition to Nevada unfair competition and deceptive trade practices claims. (Ryan Gile blogged here)

And now, as the cherry bomb on top of the “mutual assured destruction” sundae, Upper Deck has filed its counterclaims in the Central District of California (copy available here), wherein it asserts eleven causes of action including breach of contract, breach of implied covenant of good faith and fair dealing, fraud, slander per se, and civil conspiracy. Updates to the fireworks are sure to follow. The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008).

Los Angeles, CA – A copyright infringement and breach of contract lawsuit was filed at the Federal District Court in Los Angelesover the film “The Listening.” Echo Film, an Italian movie making company, produced the English-language feature motion picture which is about classified global audio surveillance of private citizens. The film was allegedly well received at film festivals and was believed to be an Oscar® contender.

In September of 2006, Defendant DigiWorld contracted to purchase certain rights in The Listening for $3 million. After the film was not selected for the Oscar® list, however, DigiWorld allegedly defaulted on its agreement and did not pay the $3 million nor did it return the film. Instead, Plaintiff alleges, Digiworld and its co-defendants distributed the film in the U.S. and internationally. Also, the complaint continues, Defendants “made unauthorized edits to the film and falsely listed Armas and Reynolds as producers of the film.” The case is titled Echo film S.r.l. v. DigiWorld Studios, Inc. et al., CV09-01455 JFW (C.D. Cal. 2009).

PRACTICE NOTE: I wonder if Rob Spence -- a filmmaker who wants to embed a camera in his eye -- saw the movie:

EYEBORG-- The Two Week Trial from eyeborg on Vimeo.

Read the Wired article here and visit the filmmaker's website here.