February 5, 2014

Facebook Sued For Patent Infringement Over Its “Facebook Ads” Advertising Services

sued-patent-infringement-lawsuit-facebook-morsa.jpgSteve Morsa filed a patent infringement lawsuit yesterday against social networking giant Facebook regarding its “Facebook Ads” advertising services. Morsa alleges he is the inventor and owner of two U.S. Patents, i.e. 7,904,337 and 8,341,020, both entitled “Match Engine Marketing.” The patents generally cover a computer system and method for presenting advertisements based on the user’s geographic location and interaction with a website, and matching the user’s conduct with criteria selected by advertisers. In July of 2010, while his patent applications were pending at the Patent Office, Morsa claims to have contacted Facebook, including Mark Zuckerberg, and advised them that Facebook’s advertising platforms are covered by Morsa’s intellectual property rights in the ‘337 patent. Morsa received no response to his cease and desist letter or his other letters informing Facebook of his start-up company and seeking a business arrangement.

Click here for a copy of the complaint.

Morsa also alleges that Facebook was aware of his ‘040 patent because Facebook’s patent application for an invention titled “Sponsored-Stories-Unit Creation From Organic Activity Stream” refers to and cites Morsa’s patent application titled “Match Engine Marketing: System and Method For Influencing Positions on Product/service/benefit Result Lists Generated by a Computer Network Match Engine.”

Morsa is seeking unspecified damages for the infringement, but references Section 284 of the patent statute allowing “damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention.” In addition to monetary damages, Morsa wants a permanent injunction prohibiting Facebook’s use of the advertisement platform.

The case is Steve Morsa v. Facebook, Inc., CV14-0161 (C.D. Cal. 2014)

January 6, 2014

Sig Sauer Guns Sued For Infringing Patent On Handgun Grip Extender

patent-attorney-gun-grip-handgun-designs-sig-sauer-lawsuit-infringement.jpgFreed Designs has filed a patent infringement lawsuit against gun manufacturer Sig Sauer alleging infringement of U.S. Patent No. 6,928,764, titled Grip Extender For Handgun. Freed Designs contends that Sig Sauer has infringed its patent by making and selling magazine extenders covered by one or more of the patent’s claims, including magazine extenders for Sig Sauer models P238, P938, and P290.

Freed Designs’ patent covers a grip extender (reference numeral 11 to the right) invention that has a collar configuration so that the bullet magazine can be inserted through the grip extender and locked into the handgun. The bottom portion of the magazine firmly engages the grip extender and is locked into place once the magazine attaches to the handgun. The lower portion of the grip extender is also contoured to provide a comfortable grip for the hand of the user. In its description of one preferred embodiment, the inventor reveals that the grip extender can be made of any hard plastic and easily molded in a single piece.

Freed Designs seeks unspecified monetary damages, but it contends that it is entitled to “damages adequate to compensate for this infringement in an amount no less than a reasonable royalty, together with interest and costs” as provided by 35 U.S.C. § 284. Plaintiff also seeks preliminary and permanent injunctions prohibiting Sig Sauer’s further infringement of the grip extender patent.

The case is Freed Designs, Inc. v. Sig Sauer, Inc., 2:13-CV-9570 JFW (C.D. Cal. 2013).

October 4, 2013

Lululemon Sued For Patent Infringement Over Absorbent Yoga Towels In Los Angeles

los-angeles-patent-attorney-yoga-mat-towel-lawsuit-yogitoes-v-lululemon.jpgYogitoes LLC is a Los Angeles based developer of yoga related inventions, including Skidless® yoga mats and absorbent yoga towels and mats. Yogitoes is the owner of U.S. Patent No. 6,961,969 (“the ‘969 Patent”) for an invention titled “Absorbent Towel With Projections.” Yogitoes’ patent covers a mat or towel with a liquid-absorbing base created with projections, which projections are made of a material to increase the gripping quality to stop the mat/towel from skidding on the floor. The patent also covers the process of making a mat/towel with these qualities.

In a patent infringement lawsuit filed in Los Angeles, Lululemon Athletica, Inc., the Vancouver-based yoga gear maker, is accused of infringing the ‘969 Patent by making and selling products, including “The Towel Mat,” that fall within the scope of at least Claim 1 of the patent. Just like the metes and bounds describe the property lines of a piece of land, the claims of a patent “define the invention and notify the public of the patent's scope.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (U.S. 1997). Claim 1 of the ‘969 Patent provides:

A towel for use on a surface, the towel comprising: a base layer having (i) a first side and (ii) a second side that is substantially opposite the first side; and a plurality of raised first projections that are each separately secured to the first side, the first projections having a higher coefficient of static friction than the base layer so that the first projections inhibit relative movement between the towel and the surface when the first projections are in contact with the surface.

In order to infringe a patent’s claim, the accused product must contain “each and every element of a patent claim." Callicrate v. Wadsworth Mfg., 427 F.3d 1361, 1372 (Fed. Cir. 2005). Yogitoes alleges that it had notified Lululemon of its infringement, but the infringement has not discontinued and is now willful and deliberate. The complaint does not provide the amount of damages suffered, but will seek to treble the damages once established per 35 U.S.C. § 284 and for attorneys’ fees per 35 U.S.C. § 285.

Here's Lululemon's video for the accused towel mat:

Lululemon is not a new comer to the patent infringement arena, having previously sued and settled a design patent infringement case against Calvin Klein over yoga pant’s design.

The case is Yogitoes LLC v. Lululemon Athletica, Inc., CV13-07234 BRO (C.D. Cal. 2013).

August 16, 2013

Paris Hilton Sues Perfection Perfume For Trademark, Trade Dress, & Design Patent Infringement Over Perfume Bottle Packaging

attorney-trademark-trade-dress-design-patent-paris-hilton.jpgParis Hilton has teamed up with Parlux Fragrances to release her own perfume line and to also sue Perfection Perfume for trademark, trade dress, and patent infringement, in addition to unfair competition. Paris claims to be a worldwide owner of several trademarks used in connection with clothing, footwear, cosmetics, fragrances and watches. Speaking about watches, Paris was recently sued for patent infringement for allegedly copying watch designer de Grisogono’s patented Novantatre watch design. Back to Paris’ current case, she also claims to be an international celebrity, actress, fashion designer, musician and socialite, which has resulted in sales of millions of bottles of her fragrances. She also owns an incontestable US Patent & Trademark Office trademark registration for her Paris Hilton trademark for fragrances.

Paris contends that she has established a distinctive trade dress in the fragrances’ bottle, namely: “(i) cylindrical-shaped bottles; (ii) clear pink bottles for the women's fragrance and clear blue for the men's fragrance; (iii) a vertical black wave design overlaid on the bottle; and (iv) the brand name Paris Hilton written in black, lower case, and cursive font against a silver background.” She also contends to own trade dress rights in beauty products, consisting of (i) black tubes and (ii) the brand name Paris Hilton written in cursive lettering and displayed vertically in metallic pink (for women) or metallic blue (for men).” But we’re not done yet. The complaint also alleges trade dress rights for individual fragrances which includes: “(i) metallic pink (for women) or metallic blue (for men) boxes; (ii) a vertical black wave design overlaid on the box; (iii); and the brand name Paris Hilton written in metallic silver, lower case, and cursive font running vertically up the right side of the box.” Almost finished. And finally, she also claims trade dress rights in the packaging for boxed gift sets comprising: “(i) metallic pink (for women) or metallic blue (for men) boxes; (ii) a vertical black wave design overlaid on the box; (iii); and the brand name Paris Hilton written in silver, lower case, and cursive font running vertically up the right side of the box.”

Paris’ manufacturer, Parlux, is the owner of U.S. Patent No. D518,382, covering the ornamental features of the fragrance bottle, i.e. the transparent cylindrical bottle and cap with a helical pattern continuing around the surface of the bottle. The complaint alleges that defendant’s Los Angeles retail location sold a perfume that infringed the trademarks, trade dress, and design patent. The suit seeks unspecified damages.

PRACTICE NOTE: Trade dress is becoming a more ubiquitous form of intellectual property claim. Product packaging, for example the color and layout of the box enclosing the product, may be inherently distinctive and subject to immediate protection. A product design trade dress, which covers a product’s shape or configuration, usually requires a showing of secondary meaning to become protectable, i.e. the product design has been used and promoted sufficiently to form an association in the mind of consumers to denote the source of the product. Indeed, the Supreme Court noted, in Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000), that “[t]o the extent there are close cases, we believe that the courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.”

The case is Paris Hilton et al. v. Perfection Perfume, CV13-05852 MRW (C.D. Cal. 2013).

September 17, 2012

Understanding Intellectual Property Law Seminar for In-House Counsel and Non-IP Lawyers

intellectual-property-law-seminar-in-house-counsel-trademark-patent-copyright-trade-secrets.jpgI have the pleasure of speaking – along with an esteemed panel – at Bridgeport Continuing Education’s intellectual property law seminar on September 27, 2012 in Los Angeles. The seminar is titled “Understanding Intellectual Property Law for In-House Counsel and Other Non-IP Lawyers”. Topics will include:

* An Overview of IP Law with a focus on California

* Trademark, Copyright, Trade Secret and Patent law explained

* What every In-House Counsel Attorney needs to Know about Trade Secrets

* An Overview of Patent Law: When it Applies and What it Means

* Roundtable Discussion with Hypotheticals and Q&A

To learn more or to register for the seminar, please click here.

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 13, 2011

Skechers Sues Steven Madden For Patent and Trade Dress Infringement Over Twinkle Toes Shoes

design-patent-shoes-trade-dress-steven-madden-skechers.jpgSkechers is suing Steven Madden for allegedly copying Skechers’ Twinkle Toes shoe designs. The U.S. Patent & Trademark Office granted U.S. Patent No. D571,095 to Skechers covering its Twinkle Toes toe cap design for shoes. In addition to patent protection, Skechers claims that it is the owner of an inherently distinctive trade dress in its Twinkle Toes footwear designs. Skechers defines its trade dress as the combination of the following design elements: “a vulcanized canvass sneaker; a toe cap adorned with crystals, rhinestones, sequins or a plurality of other similar shiny elements; and, canvass uppers distinguished by colorful art designs or patterns.” For trade dress to be protectable, it must be non-functional. And Skechers asserts that the Twinkle Toes design is non-functional and simply conveys a distinctive appearance that is a source indicator.

Skechers further alleges that it has expended many millions of dollars promoting and advertising its trade dress and, based on extensive, frequent, and ongoing advertising, marketing, sales and distribution, the trade dress has acquired distinctiveness, which indicates that the shoes emanate from a single source. In other words, consumers recognize and associate the shoe design with Skechers.

Steve Madden’s “Stevies” brand shoes are accused of including “a vulcanized canvas sneaker, a toe cap adorned with crystal, rhinestones, sequins or a plurality of other similar shiny elements, and canvas uppers distinguished by colorful art designs or patterns” that infringe the subject patent. Further, Skechers contends that the Stevies footwear line so closely resembles the Twinkle toes trade dress that it is likely to cause confusion, mistake, and deception as to an affiliation, connection, or association of Steve Maddens’ footwear with Skechers. Skechers also contends that “Defendants have acted willfully, in bad faith and with the intent to confuse and mislead the public and unfairly trade on the substantial and valuable goodwill associated with Skechers' Twinkle Toes® Trade Dress and to capitalize on Skechers' highly respected reputation as a stylish, high quality footwear company.”

Design patents provide the owner with several competitive advantages. For example, design patents, during their fourteen year lifespan, can be used to legally prevent competing products from entering the market while the owner also establishes trade dress rights by attaining secondary meaning. Trade dress rights can then be used to perpetually protect the product configuration for as long as the trade dress is being used as a source identifier. Also, unlike utility patents, 35 USC § 289 allows a disgorgement of the defendants’ profits from any infringing sales. Design patents provide fashion designers protection for their clothing and shoe designs, which are considered useful articles that are not protectable by copyrights. Indeed, Steve Madden was recently sued by Jeffrey Campbell for design patent and trade dress infringement for allegedly copying the Lita shoe.

Additionally, a patented design may be infringed regardless of distinguishing trademarks or labels applied to the product that can defeat a trade dress claim. In L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993), the Federal Circuit affirmed the finding of design patent infringement but reversed the trade dress infringement claim because defendants’ conspicuous labels and trademarks applied to the shoes made confusion among consumers unlikely. Although the Lanham Act also provides for disgorgement of the infringer’s profits, a double recovery is not allowed for infringement of the same design patent and trade dress. See, e.g., Contour Chair Lounge Co. v. True-Fit Chair, Inc., 648 F. Supp. 704, 719, 1 U.S.P.Q.2D (BNA) 1353, 1364 (E.D. Mo. 1986) ("Plaintiff is also entitled to lost profits for [trade dress infringement]; however, plaintiff has already recovered these damages under its patent claim.").

The case is Skechers U.S.A., Inc. v. Steven Madden, Ltd. et al., CV11-07295 PA (C.D. Cal. 2011).

July 20, 2011

Sonya Ooten Files Jewelry Patent & Copyright Infringement Lawsuit Against Soixante Neuf

jewelry-patent-copyright-infringement-sonya-ooten.pngJewelry designer Sonya Frisina does business as Sonya Ooten and has a retail store in Los Angeles. Ooten owns U.S. Design Patent No. D544,389, titled “Metal Crochet Earring,” covering the ornamental jewelry design. There is often overlap with different forms of intellectual property and Ootent, to maximize protection, also registered the “Cosmos” earring design with the U.S. Copyright Office.

Ooten alleges that Soixante Neuf’s “Oval Woven Beaded Earrings” infringe both its design patent and copyright. To prove design patent infringement, Ooten must meet both the ordinary observer test and points of novelty test. The design as a whole is examined in the ordinary observer test and the individual elements of the design are examined in the points of novelty test. To prove copyright infringement, unlike design patent infringement, Ooten must show that Soixante Neuf had access to Ooten’s design and copied it. Also, unlike utility patents, a successful design patent plaintiff can recover the infringer’s profits, plaintiff’s lost profits, or a combination of lost profits and reasonable royalty.

The case is Sonya Frisina v. Soixane Neuf, Inc. et al., CV11-5705 VBF (C.D. Cal. 2011).

June 28, 2011

Enovsys Sues AT&T Mobility For Infringing Cell Phone Location Patents

patent-infringement-att-telenav-enovsys.jpgEnovsys filed a patent infringement lawsuit in Los Angeles against AT&T Mobility for infringing two patents: (1) US Patent No. 6,560,461, titled “Authorized Location Reporting Paging System” (“the ‘461 patent”), and (2) US Patent No. 7,925,273, titled “Method and Apparatus for Updating the Location of a Mobile Device Within a Wireless Communication Network” (“the ‘273 patent”). The ‘273 patent is a continuation of the application that resulted in the ‘461 patent, which means the ‘273 patent has the same invention disclosure as the ‘461 patent but with different claimed subject matter or scope.

The ‘461 patent’s invention uses satellites and ground control stations to determine a subscriber’s cell phone location and allows the subscriber to select which users can obtain the subscriber’s whereabouts. The patent also covers relaying the names and locations of nearby stores, restaurants, etc. based on the location of the cell phone. The ‘273 patent relates to a method of controlling the time intervals between updates to the cell phone’s location. The complaint accuses several AT&T applications of infringing the patents, including AT&T FamilyMap, AT&T Navigator, TeleNav Track, and Xora GPS TimeTrack.

Enovsys also alleges that Sprint-Nextel is currently licensing the subject patents in addition to others. The earlier Enovsys v. Nextel-Sprint lawsuit resulted in a jury award of $2.78 million in damages and eliminated the lack of standing defense. In the Nextel case, the Federal Circuit – aside from rejecting Nextel’s invalidity and non-infringement arguments – affirmed the jury’s verdict that the inventor’s ex-wife did not have a community property interest in the patents and did not need to be a named plaintiff.

The case is Enovsys LLC v. AT&T Mobility LLC et al., CV11-05210 DDP (C.D. Cal. 2011).

June 12, 2011

Jeffrey Campbell Sues Steve Madden For Copying Lita Shoe Design

Los Angeles, CA – Jeffrey Campbell is taking an aggressive approach to protecting its shoe designs by recently suing Forever 21 for allegedly copying six of its shoe designs. Last week, Jeffrey Campbell filed a new design patent and trade dress infringement and unfair competition lawsuit against Steve Madden for allegedly copying Jeffrey Campbell’s “Lita” shoe design. Although Jeffrey Campbell did not have any patents for the six shoe designs in the Forever 21 lawsuit, it was granted Patent No. D634,532 for the Lita shoe design. Having a design patent provides greater protection for fashion designs than trade dress alone and the causes of action can always be combined, as Jeffrey Campbell has done here. Campbell claims that Steve Madden’s $169.95 Carnby-L shoe design “is believed to be a copy or knockoff of Jeffry Campbell’s Lita Shoe design.” Steve Madden is no stranger to trademark lawsuits involving shoes, having previously settled with Asics for allegedly copying its stripe design.

design-patent-jeffrey-campbell-lyta-shoe-steve-madden.jpg

The patent provides another advantage by keeping copycats away while the product’s configuration attains secondary meaning in the consumers’ minds. Plaintiff contends that since “the release of the Lita Shoe by Jeffrey Campbell in or about the summer of 2010, the internet has been ablaze with, and blogs have raved about,” the shoe design. The significant publicity and promotion of the Lita shoe design has allegedly led to significant sales and acclaim, and widespread public recognition of the Lita Shoe Trade Dress, which is defined as:

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