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).

Car racing legend Carroll Shelby sued Factory Five Racing in California last year for trademark and trade dress infringement (details here). The District Court in Los Angeles granted Factory Five’s motion and transferred the case to Massachusetts (details here and here). The Massachusetts District Court has now dismissed Shelby’s Daytona Coupe trade dress action with prejudice (it cannot be re-filed) and has dismissed the rest of the complaint without prejudice. The Court, however, declined to dismiss Shelby’s lawsuit against co-defendant Internet Community Partners, LLC – doing business as ffcobra.com. (Order is available here).

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).

Los Angeles, CA – Designer Christian Audigier’s Nervous Tattoo, Inc. is being sued by Marc Jacobs’ company for trade dress and trademark infringement over purse designs. Marc Jacobs designs apparel and accessories, including purses, and has a pending application for its random “Marc Jacobs” scrambled trademark. Marc Jacobs has applied the scrambled trademark to the inside lining of the “Marc Jacobs Pretty Nylon” tote bag. And the tote bag’s “size, shape, color or color combinations, product design, texture, and selection and arrangement of materials and accessories” are claimed to serve as its trade dress.

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).

Los Angeles, CA – UGG® boot manufacturer, Deckers Outdoor, filed a patent infringement and unfair competition lawsuit against Claire’s Stores and CBI Distributing. UGG® boots have set a fashion trend with young ladies wearing the lamb-skinned boots – to keep their feet and calves warm – with shorts, thereby allowing their knees and thighs to freeze. That’s not in the complaint, it’s just a personal observation. Now back to the regularly scheduled complaint: the UGG® line of boots includes the Classic Cardy™, which was introduced in 2007 and has a crochet upper with buttons on the lateral side. The Classic Cardy™ boot is the subject of U.S. Design Patent No. D582,650 (“the ‘650 Patent”).

Deckers alleges that Defendants sell allegedly infringing boots under the “Claire’s Botts” mark at significantly lower price points, thereby diminishing the market place for the genuine Cardy Boots™. Plaintiff’s Lanham Act claim derives from the alleged sales of infringing boots creating a false association or affiliation with Deckers’ UGG® line of boots.

It’s unclear from the complaint whether Plaintiff is asserting a trade dress infringement claim, but at least they obtained a design patent for the boot – which is not a work protectable by copyright. By doing so, they avoid some costs and expenses in having to conduct surveys to establish trade dress rights and, further, a likelihood of confusion among consumers. The following Federal Circuit opinion provides a great comparison of the level of proof needed for each:

[T]he difference in weight given to empirical evidence is fully understandable in light of the stark differences between the elements required to show design patent infringement and trademark and trade dress infringement. ... [P]urchasers' likelihood of confusion as to the source of a good is a necessary factor for determining trademark and trade dress infringement. ... To show infringement, the holder of a trademark or trade dress therefore must have progressed to the manufacture and distribution of a 'purchasable' product. As a result, consumer behavior in the marketplace is a highly relevant factor in determining trademark and trade dress infringement. Since surveys and other empirical studies are ordinarily probative evidence of consumer behavior in the marketplace, such evidence has significance in determining trademark and trade dress infringement. In contrast, ... a different quantum of proof applies to design patent infringement, which does not concern itself with the broad issue of consumer behavior in the marketplace. ... The single element here required to show design patent infringement involves a much narrower field of inquiry. In short, a design patentee may prove infringement simply by showing that an ordinary observer would be deceived by reason of an accused device's ornamental design. ... Therefore, in showing design patent infringement there is ordinarily no compelling need for empirical evidence. Braun Inc. v. Dynamics Corporation of America, 975 F.2d 815, 828 (Fed. Cir. 1992)

The case is Deckers Outdoor Corp. v. Claire’s Stores, Inc., et al., CV09-09498 CBM (C.D. Cal. 2009).

Los Angeles, CA – Purse and handbag designer Linea Pelle, Inc. filed a trade dress infringement and unfair competition lawsuit against Sabina Handbags & Accessories, Inc. In 2006, Plaintiff alleges that it created the “Dylan Collection” of handbags that “incorporates certain unique and distinctive designs, ornamentation and embellishments that, as a whole, have become the iconic and signature look of the Dylan Collection,” which it defines as follows:

Sound like a square peg in a round hole? Assuming Plaintiff can establish secondary meaning before the infringement began, the definition sounds like a constrained extension of trade dress law. Why not seek design patent protection and avoid the challenges of establishing trade dress rights? But I digress. Plaintiff’s purse incorporating the alleged trade dress is pictured below.

Defendant’s accused product is pictured below.

The case is Linea Pelle, Inc. v. Sabina Handbags & Accessories, Inc., CV 09-8450 JSL (C.D. Cal. 2009).

Los Angeles, CA – Legaljiffy.com sued rival website based legal document preparation company Legalcpu.com, Inc. for copyright infringement, trade dress infringement, and state unfair competition (details blogged here). Defendant moved to dismiss the copyright infringement claim and the § 17200 unfair competition claim (“UCL”) because Plaintiff did not have a copyright registration and had failed to plead an injury in fact. Further, Defendant moved to strike Plaintiff’s demand for statutory damages and attorneys’ fees under the copyright act (17 U.S.C. § 412). Order available here.

PLAINTIFF’S WEBSITE FRONT PAGE:

DEFENDANT’S WEBSITE FRONT PAGE:

After Plaintiff had filed the complaint and nine months after commencement of the alleged infringement, it filed a copyright application with the U.S. Copyright Office. The Court noted that although the Copyright Office had yet to issue the registration, district courts in the Ninth Circuit were split as to whether a plaintiff could maintain its infringement claim while the application was pending: “Compare Loree Rodkin Mgmt. v. Ross-Simons, Inc., 315 F. Supp. 2d 1053 (C.D. Cal. 2004) (Rea, J.) (registration required), and Blackledge v. Cummings, CV 05-7782 PA (Ex) (C.D. Cal. Jan. 6, 2006) (Anderson, J.) (same) with Dielsi v. Falk, 916 F. Supp. 985, 994 n.6 (C.D. Cal. 1996) (Collins, J.) (registration not required) and Gable-Leigh, Inc. v. North Am. Miss, CV 07-1019 MMM (SHx), 2001 WL 521695, at *4 (C.D. Cal. April 13, 2001) (Morrow, J.) (relying on out-of-circuit authority and Dielsi footnote).” The Court agreed with the latter line of reasoning and denied the motion to dismiss the copyright claim. The Court, however, did strike the request for statutory damages and attorney’s fees because Plaintiff held no registration prior to commencement of the alleged infringement.

Defendant asserted that the UCL claim is barred by Proposition 64’s requirement of an injury in fact, as opposed to a disgorgement of a defendant’s profits, and no injunctive relief was sought. The Court agreed and dismissed the UCL claim, also striking Plaintiff’s request for “exemplary damages” under the UCL. The case is Legaljiffy.com, Inc. v. Legalcpu.com, Inc., CV 09-01867 AHM (C.D. Cal. 2009).

PRACTICE NOTE: It would have been interesting to see how the Court would have ruled on a motion to dismiss Plaintiff’s trade dress claim. Unfortunately, it was not part of Defendant’s motion. I was quoted in a BNA article (available here) regarding the viability of website trade dress claims.

Los Angeles, CA – EABO, Inc. sued Huntington Beach, CA based Mimic Skateboards, Inc. for copyright infringement, trademark infringement, trademark dilution, trade dress infringement and unfair competition. Plaintiff manufactures various sized disc shaped wooden boards that rest upon a cylinder shaped roller, which were originally designed by surfers for training purposes. The IndoBoard has now evolved into its own sport where individuals stand on the board and rock it back and forth to balance on the roller and perform various tricks. If a picture is worth 1,000 words, then moving pictures are priceless:

Plaintiff is the exclusive licensee of a registered Indo Board design trademark and the common law rights to the word mark. Plaintiff is also the copyright owner in an instructional DVD created in 2004. The complaint alleges that beginning in 2001, Plaintiff entered into a manufacturing agreement with Mimic to manufacture its boards, which relationship terminated in 2008 when Mimic informed Plaintiff that it was going to only manufacture skateboards.

A few months later, Plaintiff alleges that it discovered Mimic offering for sale a similar product under the “Orbit Board” mark, but purchase of the Orbit product included an unauthorized copy of the instructional DVD. In addition, Mimic allegedly used the Indo Board trademark to route customers to websites where the Indo Board was “sold out,” but offered its Orbit Board as an equivalent replacement. Plaintiff further alleges that the unique shape and color of the Indo Boards function as its trade dress, which is recreated in the Orbit Board. The case is Eabo, Inc. v. Mimic Skateboards, Inc., CV09-04208 RSWL (C.D. Cal. 2009).

Los Angeles, CA – Tomdan Enterprises, Inc., which does business under the more recognizable “Tommy’s Original World Famous Hamburgers” name and trademark, filed a trademark and trade dress infringement, Lanham Act unfair competition, and trade secret misappropriation lawsuit against Tommy’s Original Chili Factory, Inc., and several individual defendants. Plaintiff has been in the restaurant business for the last fifty years, serving up hamburgers, cheeseburgers, hot dogs, and – my favorite – chili cheese fries, among other food items. Plaintiff alleges that it adopted the Tommy’s trademark in 1960 and registered the trademark with the California Secretary of State in 1978.

Plaintiff’s burgers and dogs are always served with chili, except when a patron specifically requests it be excluded. I have heard that consumption of a Tommy’s burger with a side of chili-cheese fries in the wee hours of the morning, after a night of libations with college friends, are warranted to reduce any morning-after negative side-effects. A side of extra pickles is believed to further suppress any hang-over symptoms. For those not familiar with the structure of a Tommy’s cheese burger, an element by element depiction is provided herein.

Plaintiff alleges that Defendants were aware of Plaintiff’s Tommy’s mark and trade dress, but adopted a mark, logo, and trade dress that are confusingly similar to Plaintiff’s. Plaintiff alleges that Defendants have misappropriated Plaintiffs proprietary and trade secret information in the form of its recipes, including, but not limited to, its chili. Plaintiff allegedly sent a cease and desist letter – through counsel – to Defendants in December of 2008. But Defendants have allegedly refused to stop their activities. The case is Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).

Los Angeles, CA – Hudson Clothing,LLC filed a trade dress, Lanham Act § 43(a) trademark infringement, and false advertising complaint against BVDK Design, Inc. Plaintiff designs high end denim jeans and alleges that, since 2002, it has used a distinctive back pocket flap design trademark, which it also claims functions as its trade dress. Plaintiff contends it occupies the “premium” denim market, which means – prepare yourself – jeans in excess of $150 a pair. “This market attracts consumers focused on value, style, fit and comfort.”

Plaintiff alleges that BVDK’s jeans, in contrast, lack the reputation and quality that Hudson’s jeans enjoy. But in order to penetrate the premium denim market, defendant is accused of intentionally adopting and using a confusingly similar pocket flap. David Kahn, the owner of BVDK, is also named in the suit and is accused of selling the purportedly infringing jeans on the www.davidkahnjeanswear.com website. Plaintiff also learned that Defendants’ products, which are sold as the “Nikki” style, was available at the same retailer, Nordstrom. Although there is a false advertising cause of action, Plaintiff does not detail the allegedly false statements that were made with respect to the quality of the products. The case is Hudson Cothing, LLC v. BVDJ Design, Inc., CV 09-3275 R (C.D. Cal. 2009).

Los Angeles, CA – Manley Toys Ltd filed a trademark and trade dress infringement lawsuit against Radco Ltd in the U.S. District Court for the Central District of California (Los Angeles Division). Manley designs and manufactures a variety of toys including the inflatable waterslide toys that are the subject of the lawsuit. Manley is no stranger to trade dress lawsuits involving waterslides, being previously sued by Wham-O (details here).

Four years ago, Manley created and sold a waterslide toy under the trademark “The Plunge,” which it alleges has been highly successful. The complaint also contends that Manley has “adopted a distinctive color scheme and appearance for its product which, taken together, form a protectable trade dress for The Plunge product.” The product is also marketed and sold under Manley’s Banzai trademark.

Manley alleges that Radco’s use of the mark “Pipeline Plunge” infringes its trademarks and that it was adopted in bad faith, “Defendants’ use of the term Pipeline in the name Pipeline Plunge is a transparent attempt to associate Defendants’ water slide with Plaintiff’s well-known Banzai brand by reference to the notorious and famous ‘Banzai Pipeline’ surf area off the north shore of Hawaii’s Oahu Island.” Defendants will probably argue that you’d have to, at the very least, be a Kamaaina to make that connection. Manley also claims that Defendants have used a color scheme “that is to all intents and purposes identical to Plaintiff’s The Plunge toy.” The case is Manley Toys Ltd v. Radco Ltd HK, et al., CV09-3129 VBF (C.D. Cal. 2009).

PRACTICE NOTE: Plaintiff has apparently named the companies’ officers as defendants in the lawsuit. A company's officers who 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).