May 7, 2008

Copyright And Trademark Attorneys Filed A Copyright And Trade Dress Infringement Lawsuit Against Website That Provides World Of Warcraft On-Line Gaming Tips And Forum

Los Angeles, CA – Copyright and trademark attorneys filed a lawsuit, at the Federal District Court in Los Angeles, to protect plaintiff’s website, www.wowhead.com, which is designed to assist gamers of the on-line video game known as World of Warcraft. According to Plaintiff, the wowhead.com website “is one of the most recognized and utilized websites of its kind accessed by tens of thousands of individuals each day. Plaintiff has filed for and received copyright registrations from the U.S. Copyright Office for its website and certain computer code used therein. Plaintiff claims that the “design and appearance/visual presentation of the WOWHEAD website are unique in the industry and therefore constitute an inherently distinctive trade dress respecting the presentation of Plaintiff’s services all of which have resulted in a non-functional trade dress which consumers identify with Plaintiff’s wowhead website.”

design-copyright-trade-dress-world-of-warcraft.jpgPlaintiff 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).

May 6, 2008

Los Angeles Patent Attorneys For Nike Filed Design Patent Infringement, Trade Dress Infringement, and Lanham Act 43(a) Unfair Competition Lawsuit Over Sales Of Allegedly Copycat Air Jordans – 15 U.S.C. 1125

Los Angeles, CA – Nike’s patent attorneys filed a patent infringement, trade dress infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles. Nike’s complaint recounts the beginning of Nike’s relationship with Michael Jordan and his endorsement deal, which resulted in the creation of the most famous signature shoe of all time – the Air Jordan®. When the shoes first debuted in 1985, they were initially banned by the NBA for the bold styling and color, but Michael Jordan incurred fines of $5,000 per game and wore his famous shoes. Every year thereafter, Nike unveiled a new Air Jordan model, which models have become collectors’ items and fans often line up to purchase new designs and limited re-releases of previous styles. Nike has protected the new designs of the shoes by obtaining design patents, trademarks, and trade dress rights.

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…”
Shoe-design-patent-trade-dress-Air-Jordan-XI.jpg
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.

March 13, 2008

Torrance Based Virco Files Trademark, Trade Dress, And Unfair Competition Lawsuit Over Chairs Through Its Pasadena Trademark Attorneys

Los Angeles, CA – A trademark, trade dress, and unfair competition complaint was filed in the Central District of California by Torrance based Virco, through its Pasadena trademark attorneys. Virco is a furniture manufacturer and has manufactured a chair with three parallel slots that extend from the seat to the backrest. Virco filed a trademark application for the “three slot” design feature with the USPTO and it became a registered trademark on June 10, 1997. Virco asserts that in the furniture industry, the three slot design trademark is well recognized as a product manufactured by Virco and since 1997, its sales of the three slot chairs have averaged in excess of $10,000,000 per year.

virco-trademark-chair-lawsuit.jpgVirco alleges that in late 2007, it discovered that defendant “was manufacturing, selling, advertising, and distributing two versions of a children’s plastic chair that used [Virco three slot design trademark]. The goods sold by defendants are confusingly similar copies of the [Virco’s trademark].” Virco continues that defendant’s use of the three slot trademark “creates a likelihood that Plaintiff’s customers, potential customers, members of the trade, and the public generally will be misled as to the source of goods or services in that they are likely to believe that Defendant’s business and products are affiliated with or sponsored by Plaintiffs. The complaint sets forth the following seven causes of action: (1) Registered trademark infringement, (2) False designation of origin 15 U.S.C. 1125, (3) Trade dress infringement, (4) Common law trademark infringement, (5) Common law unfair competition, (6) Statutory unfair competition, § 17200, (7) Trademark Dilution. The case is titled Virco MFG. Corp, v. Jonti-Craft, Inc., CV08-01332 PSG (C.D. California).

PRACTICE NOTE: Because Virco’s trademark has been registered for over five years, it has become incontestable under 15 U.S.C. § 1065. A defendant in a trademark lawsuit cannot challenge an incontestable trademark on the following grounds: descriptiveness, deceptive misdescriptiveness, geographic descriptiveness, and primarily merely a surname. Another important reason to register trademarks is that a prior user of an unregistered mark cannot contest a registered mark after five years based on prior use.

March 12, 2008

Wham-O Files Trademark And Trade Dress Lawsuit Over Color Of Slip-n-Slide Toys

Los Angeles, CA – In Wham-O’s trademark and trade dress trial in October of 2007, a jury awarded Wham-O six-million-dollars in damages for willful trademark infringement of its registered trademarks, willful trademark dilution, and willful false advertising in connection with Toyquest’s use of the trademarked yellow color of Wham-O’s Slip-n-Slide toys. Toyquest is a dba of SLB Toys USA. The Court also entered a permanent injunction against the infringers and ordered that the infringer, including its officers, agents, servants and employees, forever refrain “from using the color yellow on the sliding surface of water slide toys, or packaging or advertising depicting the same, or any mark similar thereto or likely to cause confusion therewith.” The Court, however, denied WhamO’s request to order destruction of infringing articles and denied Wham-O’s request to order compliance reporting by the infringers.

wham-o-slip-n-slide.jpgIn a newly filed trademark infringement, trademark dilution, false advertising, unfair competition (17200), contributory infringement, contributory trademark dilution, and judgment debtor’s interest (Cal. Civ. Proc. Code § 708.210) lawsuit, Wham-O alleges that SLB Toys initiated an elaborate scheme designed to evade judgment and deprive Wham-O of its monetary award through an assignment for benefit of creditors. Wham-O alleges that the individual defendants, who were officers of the defendant SLB Toys, have “flagrantly disregarded the terms of this Court’s injunction by continuing to sell and distribute to retailers unauthorized slides bearing” the yellow waterslide trademark and to advertise the same. Wham-O asserts that SLB Toys was merely an undercapitalized shell corporation that failed to follow corporate formalities and the individual officers and other companies which are owned by the officers are SLB Toys’ alter egos.

Through the creditor’s suit against Wal-Mart, Target, TRU, and Kmart, Wham-O attempts to recover from the retailers several million dollars in funds that are payable to the true judgment debtor, Manley Toys – which was allegedly set up by the same individual defendants that were officers in SLB Toys. The case is titled: WHAM-O, Inc. v. Manley Toys, LTD., CV08-01281 PSG (C.D. California).

PRACTICE NOTE: Officers of corporations or LLCs that authorize and direct infringing activities can be held personally liable. Committee for Idaho’s High Desert, Inc. v. Yost, 92 f.3d 814, 823 (9th Cir. 1996).

March 5, 2008

Trade Secrets Misappropriation & Trade Dress Infringement Litigation Commenced In A Mother-Against-Daughter Lawsuit Over The Little Giraffe Trademark And Business

Los Angeles, CA – A mother-daughter team founded The Little Giraffe, Inc. to manufacture baby and adult accessories, apparel and giftware under the trademarks, registered with the USPTO, of “Little Giraffe” and “Giraffe at Home.” The mother, Marcia Brower, and the daughter, Sharyn Brower Newberg, were each a 50 percent owner of the shares of the corporation. The complaint alleges that the daughter breached her fiduciary duty to the company and used company checks to “pay personal expenses, wiring funds from the corporate account to pay her credit card bills, selling Little Giraffe inventory for her own account, purging vital information from her computer at company headquarters, and removing vital fabric samples and company property.” The complaint continues that the daughter, “with the help of her co-defendants, secretly took steps to set up a company to compete against Little Giraffe under the name ‘Votre Luxe,’ intentionally copying the distinctive look and feel of Little Giraffe’s products,” including the trade Dress, trade secrets, and proprietary business information.

little%20giraffe.jpgPlaintiff asserts that its trade dress includes the appearance of its products, including “the shape and dimensions of satin trim to plush fabric,” “the color combinations of various fabrications,” “the texture of its plush or luxury fabrics,” “the patterns of Little Giraffe’s robes,” color coordinated pieces to the colors of the products of Little Giraffe, and the placement location of the Little Giraffe logo. Plaintiff also asserts that its trade secrets include “vendors and suppliers of fabric and trim, its know-how concerning the manufacturing process,” “the cutting and sewing contractors” it uses in the manufacturing process, its vendor lists, customer lists, and proprietary financial documents. Plaintiff alleges that her daughter, in association with co-defendant “Rosalie & Friends, Inc. has displayed and offered for sale Votre Luxe’s line of products that are confusingly similar to the products Little giraffe manufactures and sells.”

The complaint sets forth the following six causes of action: (1) Breach of Fiduciary Duty, (2) Trade Dress Infringement Lanham Act 43(a), 15 U.S.C. § 1125, (3) Trade Secrets Misappropriation, (4) Conversion, (5) Unfair Competition Under Cal. Bus. & Prof. Code § 17200, and (6) Injunctive relief. The case is titled: Marcia Brower v. The Little Giraffe, Inc., CV08-01111 PSG (C.D. California).

PRACTICE NOTE: This case illustrates the importance of written agreements in business partnerships, even if you are doing business with a family member.

February 20, 2008

Copyright And Trade Dress Jewelry Design Infringement Filed Against Heidi Klum By Van Cleef & Arpels May Settle

A copyright infringement, trade dress infringement (Lanham Act 43(a), 15 U.S.C. 1125), and unfair competition lawsuit was filed by luxury jeweler Van Cleef & Arpels against supermodel Heidi Klum’s company and jewelry designer Mouawad USA, Inc. in Federal District Court in New York in December of 2007. The complaint alleges that for almost forty years, Van Cleef “has marketed the Alhambra collection of jewelry, which has become world renowned for its distinctive well-recognized design.” Van Cleef alleges that it is the owner of all copyrights in the subject designs and, through extensive advertising and promotion of the Alhambra collection, it has established secondary meaning and distinctiveness therein.

heidi-vancleef.bmpVan Cleef alleges that defendants intentionally and willfully copied the Alhambra designs, which mainly feature a four leaf clover. Van Cleef continues that defendants, by appropriating the goodwill built up by plaintiff are causing confusion in the market place, in that consumers are often confused between the plaintiff’s designs and those of defendants.

It now appears that the lawsuit is going to be settled even before the Defendants file an answer to Van Cleef’s allegations. On February 13, 2008, the parties asked the Court to adjourn the initial conference from February to April while they negotiate a settlement of the case.

PRACTICE NOTE: It is interesting that the case is settling so quickly because Van Cleef admits that one of its applications for copyright registration was refused registration by the U.S. Copyright Office. I would predict that it was refused registration because it was a mere depiction --without any elements of originality-- of a four leaf clover that appears in nature. Even if the copyright claim fails, however, Van Cleef appears to have acquired distinctiveness in its four leaf clover jewelry to assert its trade dress infringement and unfair competition claims, which exist outside of the copyright claims.