Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – A copyright and trademark infringement lawsuit was filed against Warner Bros. and 5th Cell Media, the creators of the Scribblenauts videogame, by attorneys for Charles Schmidt – creator of the Keyboard Cat meme – and Christopher Orlando Torres – creator of Nyan Cat meme.

Keyboard Cat is a video of Schmidt’s cat, Fatso, wearing a shirt and playing an electronic keyboard with its paws. The meme, which is a communication of ideas or information, has gone viral, receiving over thirty million YouTube hits. Schmidt has registered the video’s copyright with the US Copyright and has two pending trademark applications for the term “Keyboard Cat”, click to see the first trademark application and the second trademark application. Keyboard Cat’s stardom has led to numerous appearances in commercials, including a feature role in a national Starburst candy television commercial.

Nyan Cat is a cartoon character with a cat’s face with a Pop Tarts body, basically a pink frosting sprinkled horizontal breakfast bar with glitter and a rainbow flowing therefrom. The GIF animation has also gone viral and it was the fifth most-watched video on YouTube in 2011, winning the 2012 Webbys’ “Meme of the Year” award. Torres also registered the copyright in the animated GIF with the US Copyright Office, but the complaint incorrectly repeats Keybaord Cat's copyright registration number. Torres has also filed a trademark application to register the “Nyan Cat” word mark with the US Patent & Trademark Office.

Plaintiffs accuse Warner Bros and 5th Cell of including, without any licenses or authorizations, the Keyboard Cat character in their original Scribblenauts videogame released in 2009, the 2010 Super Scribblenauts, 2011 Scribblenauts Remix, and including both Keyboard Cat and Nyan Cat in 2012 Scribblenauts Unlimited. Defendants are accused of shamelessly using “Nyan Cat” and “Keyboard Cat” by name to promote and market their games. Plaintiffs claim that Warner Bros and 5th Cell’s trademark infringement was willful and intentional and are requesting an award of treble damages and requesting the case be deemed exceptional under 15 U.S.C. § 1117(a), thereby entitling Plaintiffs to an award of reasonable attorneys’ fees.

CORRECTION TO COPYRIGHT DAMAGES BELOW: Nyan Cat first appeared in Scribblenauts Unlimited in 2012, a year after Nyan Cat's copyright registration date. Thus, Nyan Cat is entitled to statutory damages, enhancement thereof, and attorneys' fees and costs. The follwing paragraph only applies to Keyboard Cat.

Plaintiffs, however, mistakenly demand statutory damages and an enhancement of damages under 17 U.S.C. § 504, and mistakenly believe that they are entitled to attorneys’ fees and costs of suit under 17 U.S.C. § 505. Defendants are accused of infringing both copyrights in their initial 2009 release of the video games and neither copyright was registered until 2010. Thus, neither Plaintiff is entitled to statutory damages or attorney’s fees, a prerequisite of which – per 17 U.S.C. § 412 – is either registration before (1) commencement of any infringement or (2) within three months after the first publication of the copyrighted work. Further, the Keyboard Cat video was published over five years before the application to register the copyright was filed, thus it is not entitled to a presumption of validity afforded by 17 U.S.C. § 410(c).

A copy of the complaint is available here.

The case is Schmidt, et al. v. Warner Bros. Entertainment, Inc., CV13-02824 JFW (C.D. Cal. CV13-02824).

Although the “ACM Awards” trademark is prominently featured on the Academy of Country Music’s website, I was shocked to learn that the Academy only last month filed a trademark application with the US Patent & Trademark Office to register the ACM and the ACM Awards trademarks. Obviously someone has not been reading my article on advantages afforded to USPTO registered trademarks.

Without the benefits of a trademark registration certificate establishing its priority rights, the Academy alleges and must now spend resources proving that it has been using the ACM trademark and ACM derivative marks since at least 1974 in association with services and goods in the country music industry. The Academy also alleges incurring, along with its media partners, expenditures of over $30,000,000.00 over the last 22 years in advertising and marketing the ACM marks, making the trademarks famous.

ACM Records, like a good trademark owner should, filed and obtained a USPTO trademark registration for the “ACM Records” trademark in 2008. If the Academy had previously filed and registered its ACM trademarks, Defendant’s trademark application would probably have been refused registration by the USPTO examining attorney. Instead, the Academy claims that ACM Records filed an opposition with the Trademark Trial & Appeal Board (“TTAB”) in February of 2013, asserting a likelihood of confusion and dilution would arise from the Academy’s application to register “The ACM Experience.” Thus the Academy seeks declaratory judgment to its rights to register and expand the use its ACM family of trademarks.

Although the Academy claims it is the senior user of the “ACM” mark by almost twenty years, its failure to register the trademark may result in a complete bar to its federal and state dilution claims, merely because ACM Records obtained a prior USPTO trademark registration. 15 U.S.C. § 1125(c)(6) provides that the “ownership by a person of a valid registration ... on the principal register ... shall be a complete bar to an action against that person, with respect to that mark, that is brought by another person under the common law or a statute of a State; and seeks to prevent dilution by blurring or dilution by tarnishment...”

No matter the outcome, the lesson to be learned is to register your trademarks with the USPTO because a certificate of registration provides prima facie evidence of validity, ownership of the mark, and the owner’s exclusive right to use the registered trademark. 15 U.S.C. § 1057(b). The registration basically shifts the burden to the defendant to prove that the claims in the certificate of registration are not correct.

The case is Academy of Country Music v. ACM Records, Inc., et al., CV13-02448 DDP (C.D. Cal. 2013).

Brandi Passante appears on A&E Network’s Storage Wars reality show, as a result of which she has achieved notoriety and claims to be a worldwide celebrity and developed trademark rights in her name. Defendant Hunter Moore has been anointed the Internet’s most hated man for publishing unauthorized pornographic pictures of men and women, often submitted by jilted lovers, and linking the pictures to the individual’s Facebook page. Although he reportedly sold the website to an anti-bullying entity, he appears to be posting similar material to his tumblr account and new website.

After numerous unsolicited posts on her Twitter account stating that users wanted to see more of her pictures and video, Passante discovered that Moore had posted images of someone portraying her in a pornographic video to his tumblr account. Passante alleges that she never made any such video and Moore has fabricated the video for the purpose of trading on her fame and celebrity to draw traffic to his site. Moore is also accused of posting defamatory comments related to the video by falsely representing that Passante made the video for him. The complaint states that “Moore posted the video knowing that the images were not of Passante and did so maliciously, and with reckless disregard to Passante’s reputation, privacy, and well-being. He did so with the false and fraudulent intent to mislead the public into believing he was somehow affiliated with Passante.”

The Judge immediately issued a temporary restraining order preventing Moore's posting, publishing, or linking to the Video, and ordering its immediate removal from Moore's sites. The Judge also ordered Moore to appear on November 9th to argue why a preliminary injunction should not be entered preventing the dissemination of the video or why "all of Moore's computers, servers and other electronic storage devices that contain copies of the Video should not be impounded by the United States Marshall's offices." The Judge relied on Passante's likelihood of success on her trademark infringement and Lanham Act claims in issuing the TRO because Moore's "use of Passante's name and likeness in commerce in connection with a video and associated images thereof or therefrom (collectively "Video"), and his false and misleading claims that the Video originated with Passante were intended to deceive the public into believing that Passante was in some way affiliated with Moore, thereby driving web traffic to his illicit website." Because there is no adequate remedy at law, injunctive relief is the “remedy of choice” in trademark cases. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. Cal. 1988).

Liability for some of Passante’s claims could be uncertain because website operators that allow user generated content (e.g. pictures, videos, or comments) can avoid copyright infringement liability under the Digital Millennium Copyright Act (“DMCA”), if the safe harbor provisions are followed, and are also protected against tort liability (e.g. defamation, slander, libel) by the Communications Decency Act. To enjoy the safe harbors of the DMCA, a website operator must designate a copyright agent on a form submitted to the Copyright Office along with the corresponding fee, provide terms of use that outline take down notice procedures to report allegedly infringing content, have no actual knowledge of the infringement, and expeditiously remove accused content. Moore, however, could be liable for defamation if he falsely claimed that Passante made the video for him or sent it to him.

The case is Brandi Passante v. Hunter Moore, SACV12-01866 JVS (C.D. Cal. 2012).

I 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.

The popular Christian Louboutin (CL) shoes’ red sole trademark is readily recognized by the consuming public. But when CL sued Yves Saint Laurent (YSL) for making red soled shoes, the district court disagreed. Finding CL’s red sole trademark unenforceable, the court denied CL’s motion for a preliminary injunction to prevent YSL’s sales of shoes with lacquered red soles.

The Court of Appeals for the Second Circuit concluded that the district court incorrectly held that a single color can never serve as a trademark in the fashion industry. The Court, however, proceeded to then modify CL’s trademark registration for any shoe with a red sole to only apply with red, lacquered outsole with a contrasting upper of the shoe. In other words, the trademark excludes any red shoe with a red sole.

YSL claimed this was not the first time it had designed monochrome footwear with red soles, which it created in the 1970’s prior to CL’s 1992 adoption of the red sole trademark. Thus, YSL filed counterclaims seeking cancellation of CL’s trademark registration because it was ornamental and functional and sought monetary damages for CL’s interference with YSL’s business relations and for unfair competition because many retailers returned YSL’s shoes after receiving CL’s cease and desist letters.

On appeal, Louboutin argues that the District Court erred in (1) holding, based on the doctrine of “aesthetic functionality,” that the Red Sole Mark was not entitled to legal protection; (2) applying the doctrine of aesthetic functionality to hold that a single color on a fashion item could not act as a trademark; (3) failing to give weight to the statutory presumption of validity deriving from the Red Sole Mark’s registration; (4) applying an improper analysis of trademark infringement and dilution; (5) ignoring allegedly undisputed proof of likelihood of confusion and irreparable harm; and (6) announcing a per se rule of functionality in a manner that violated Federal Rule of Civil Procedure 52.

First, the Court, relying on the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995), found that the red sole color is protectable as a trademark because it “acts as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.” Indeed, Qualitex concluded that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.”

Next, the Court addressed the functionality defense, which has two forms “utilitarian” and “aesthetic”. Utilitarian functionality can be shown if the feature is “essential to the use or purpose of the article” or if it “affects the cost or quality of the article.” Aesthetic functionality is established by demonstrating that providing the markholder the right to use the feature exclusively would put competitors at a significant non-reputation-related disadvantage. The Court held nothing in the fashion world allowed the lower court’s creation of a per se rule that a single color cannot serve as a trademark in that field.

Then, the Court turned to the red sole trademark and found that secondary meaning had been established, which is required to show that a single color has become distinctive, and the red sole was a protectable trademark. “We hold that the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand, Qualitex, 514 U.S. at 163, and is therefore a distinctive symbol that qualifies for trademark protection.” The Court, however, also found that CL had not established secondary meaning in the red sole as applied to a red shoe and, under 15 U.S.C. § 1119, ordered the USPTO to limit the registration to exclude monochromatic red shoes.

The Court affirmed the denial of the preliminary injunction because YSL’s use of a red sole on a red shoe is not a trademark use and not confusingly similar to CL’s mark. The Court, however, punted on whether the red sole mark as modified was functional and remanded the case for further proceedings on YSL’s counterclaims.

In what appears to be another instance of trademark overreaching, Anheuser-Busch (“AB”) is being sued for sending a tenuous trademark cease and desist letter to San Antonio Winery (“SAW”) accusing SAW’s Bow Tie word mark and Bow Tie slogan of infringing AB’s U.S.P.T.O. design mark registrations for a solid polygon, a striped polygon, and the term “Budweiser” in a polygon. SAW, a trademark infringement lawsuit veteran that previously sued Banfi for trademark and trade dress infringement, wants the court to rule that its use of the Bow Tie word mark and the Bow Tie Slogan (“Bow Tie – the best dressed wine in the class”) does not infringe the Budweiser Design Marks or constitute unfair competition.

At the heart of every trademark dispute is prevention of consumer confusion and “the synonymous right of a trademark owner to control his product’s reputation.” James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 274 (7th Cir. 1976). SAW “contends that its use of the BOW TIE word Mark will not cause consumers to be confused or deceived into believing that San Antonio’s BOW TIE wine comes from Anheuser-Busch or that San Antonio’s BOW TIE wine is affiliated with, connected with or sponsored or licensed by Anheuser-Busch.”

For potential consumers and readers that may be confused by the parties’ respective marks, I have taken the liberty to label SAW’s product as “WINE” and AB’s product as “BEER” to quell any befuddlement. Because the last time I ordered a beer at a game I was asked whether I wanted the beer with a bow tie and predicted the need for the labeling clarification. Seriously though, I was unaware that Budweiser’s label was even meant to represent a bowtie and I think the same can be said for a great number of consumers. And yes, I know that wine and beer are related in a likelihood of confusion analysis and finding, but the marks here – when compared in context – are so completely dissimilar when viewed under marketplace conditions that AB will not be able to establish that consumers are likely to be confused. Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240, 1245-46 (9th Cir. 1984) (even where marks were identical when viewed in isolation, determination of likely confusion required consideration "in light of the way the marks are encountered in the marketplace and the circumstances surrounding the purchase of the pens," which sufficed to distinguish the two marks except in context of telephone solicitation, where such distinctions were not evident).

The case is San Antonio Winery, Inc. v. Anheuser-Busch, LLC, CV12-7067 MMM (C.D. Cal. 2012).

In a complaint that should have been written by quill on a wax-sealed scroll instead of pleading paper, Baron Philippe de Rothschild S.A. and Société Civile du Château Lafite Rothschild (you may now bow or curtsey), companies owned by the Rothschild Family (whose ancestors were ennobled by European monarchies), are suing an alleged commoner, Judson Rothschild, for trademark infringement and cybersquatting for using the surname and Coat of Arms to hock furniture and interior design services to both noblemen and commoners alike. As full disclosure, I am not ennobled by European monarchies. Instead, my father enjoyed reading Shakespeare, thus the name: Milord.

Plaintiffs allege that the family is engaged in numerous international businesses, including “two of the most famous wine enterprises in the world, and own the estates which produce the well-known ‘Chateau Mouton Rothschild’ and ‘Chateau Lafite Rothschild’ wines. These wines have become known as the finest of Bordeaux wines, and command a price appropriate to their quality.” Plaintiffs own several USPTO registered trademarks incorporating the surname, including Chateau Lafite-Rothschild, Chateau Mouton Rothschild, and Baron Philippe de Rothschild.

“As a result of the activities of the plaintiffs and their predecessor entities, and the well-known history of the Rothschild Family, the Rothschild name has become well known in the United States and throughout the world in connection with luxury goods.” Plaintiffs also allege that “because of the association of the Rothschild Family and their enterprises with opulent decoration, there are numerous literary references to ‘the Rothschild style’ or ‘the style Rothschild.’ The term has become part of interior decorators’ language.” Further, plaintiffs contend that the family’s coat-of-arms is famously associated with the Rothschild name and has developed secondary meaning in connection with products denoting luxury and comfort.

Defendant Judson is accused of establishing business entities that include the Rothschild name and operating the rothschildinteriors.com and therothschildcollection.com websites, which entities advertise luxury-style furniture and interior design services. Also, Judson is accused of using a confusingly similar coat-of-arms. Plaintiffs allege that defendants’ use of the infringing trademarks will mislead consumers into believing that Judson is a member of the world-famous Rothschild family and the goods and services he offers are approved or associated with the Rothschild family.

The case is Baron Philippe de Rothschild, S.A. v. Judson Rothschild, et al., CV12-3884 MMM (C.D. Cal. 2012).

Aevoe has filed a trademark infringement and false designation of origin lawsuit against numerous entities accused of selling iPad and iPhone accessories bearing its Moshi®, stylized M and iGlaze trademarks. Aevoe manufactures peripherals and accessories for portable electronic devices and computers that are sold through Apple, AT&T, and its own online retail store. It alleges that its Moshi® branded products have garnered extensive media coverage and Aevoe has built up and developed significant goodwill and trademark recognition in its entire product line. And in light of this success, it’s alleged that the Moshi® trademark and products have become targets for unscrupulous individuals and entities who wish to take a ‘free ride’ on Aevoe’s goodwill.

Aevoe is accusing numerous eBay sellers of selling counterfeit or imitation goods bearing its trademarks: “Defendants maintain and operate a storefront or webpage on eBay.com [through which] Defendants regularly and systematically advertised, marketed, distributed and sold products bearing unauthorized MOSHI® registered trademarks.” Regarding one defendant, E & D International Trade, Inc., Aevoe’s investigator purchased a “red Moshi iGlaze 4 back case cover for iPhone 4 4G” from E&D. Upon inspection, “security measures confirmed that the item defendants sold was in fact a counterfeit.” Thus, Aevoe contends, “Defendants’ actions have confused and deceived, or threatened to confuse and deceive, the consuming public concerning the source and sponsorship of the counterfeit ‘red Moshi iGlaze 4 back case cover for iPhone 4 4g’ sold and distributed by Defendants. By their wrongful conduct, Defendants have traded upon and diminished Plaintiff’s goodwill. Furthermore, the sale and distribution of counterfeit goods by Defendants have infringed upon Plaintiff’s federally registered trademarks.”

In addition to its trademark infringement and unfair competition claims, Aevoe asserts a claim for trademark dilution, which appears to be susceptible to a motion to dismiss. To establish a trademark dilution claim, Aevoe must allege that "(1) the mark is famous and distinctive; (2) the defendant is making use of the mark in commerce; (3) the defendant's use began after the mark became famous; and (4) the defendant's use of the mark is likely to cause dilution by blurring or dilution by tarnishment." Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008). Under the Trademark Dilution Revision Act of 2006, however, a dilution cause of action is reserved for only the most truly prominent brands, such as Coca Cola, Apple, AT&T, or Sony, and it does not appear that Moshi is such a prominent, household name to survive a motion to dismiss.

The case is Aevoe Corp. v. E&D International Trade, Inc., CV12-02928 SVW (C.D. Cal 2012).

K2 network sued Mgame in state court for breach of contract and fraud because K2 claimed overpayment of royalties in its distribution of the Knight Online 3D video game. Mgame then sued K2 in Federal Court seeking a temporary restraining order and a preliminary injunction for copyright infringement and violation of the Computer Fraud and Abuse Act. The Court denied the TRO and preliminary injunction because Mgame's complaint did not have a claim that conferred the Federal Court jurisdiction. Click here for details.

Mgame has now filed a new complaint alleging copyright infringement, trademark infringement, and violation of the Computer Fraud & Abuse Act. Once again, Mgame requested that the Court issue a Temporary Restraining Order and Preliminary Injunction against K2 pending submission of the dispute to arbitration, as provided in the parties' contracts.

The Court has once again denied Mgame's application for a temporary restraining order because Mgame's own conduct does not establish its entitlement to emergency relief:

Although Plaintiff implies that emergency relief is not available from the arbitral tribunal because of the length of time required to constitute the tribunal, Plaintiff has not yet initiated arbitration. Instead, Plaintiff merely states that it intends to initiate arbitration. Therefore, at least part of the reason that recourse to the arbitral tribunal is unavailable is that Plaintiff has failed to initiate arbitration. Furthermore, Plaintiff has been aware of a dispute with Defendant since at least the beginning of February, first responding with self-help, then terminating the agreement with Defendant on February 23, 2012. Only now, a month later, has Plaintiff sought a temporary restraining order. The Court concludes that this does not amount to an emergency requiring ex parte relief. Accordingly, Plaintiff’s request for a temporary restraining order is DENIED.

The Court did, however, provide Mgame with a glimmer of hope by issuing an order that K2 appear on April 30, 2012 and show cause why a preliminary injunction should not issue enjoining k2 from "either directly or indirectly, from continuing to operate, promote, publish, produce, distribute and service the Game; ordering Defendant to immediately transfer the Game Servers and Billing and User Databases to Plaintiff, including up-to-date billing and user data; ordering Defendant to provide Plaintiff with up-to-date sales information; and ordering Defendant to take any further steps necessary to transfer control of the Game to Plaintiff without disruption in its availability and continuity."

The new case is Mgame Corp. v. K2 Network, Inc., CV12-2525 JST (C.D. Cal. 2012).

Clipper Darrell has been a fixture at Clippers’ basketball games for the last decade, even when the team was horrible and I would go watch them solely because my friend would give me his season tickets. In fact, Staples Center was so empty during Clippers games that Clipper Darrell was the only person cheering. But now that the Clippers are winning, my friend has stopped giving away his tickets and the Clippers have apparently told Clipper Darrell he can no longer use “Clipper” in his name or sell merchandise that allegedly infringes the “Clippers” trademark.

Although the Clippers will surely resort to the canned response of “we have a duty to enforce and protect our trademark or risk losing our trademark”, some trademark professors believe the risk to be overstated. But to Clipper Darrell’s advantage, when he and I were at past Clippers games, the only other “fan” in attendance was team owner Donald Sterling, who was actually and inexplicably heckling his own players. There is no doubt that Mr. Sterling saw and/or heard his counterpart, Clipper Darrell in his trademark half-blue/half-red suit, actually cheering for the Clippers. Thus, it appears that Clipper Darrell may have a laches defense against the Clippers’ trademark infringement claim if he can show that the Clippers knew or should have known of his infringing activity and they unreasonably delayed in filing a lawsuit. Miller v. Glenn Miller Prods., 454 F.3d 975, 980 (9th Cir. Cal. 2006).

The practical approach from both a legal and PR perspective would be to license Clipper Darrell to use the trademark and not alienate Clippers’ fans that have been loyal during the lean years. The trademark license would allow Mr. Sterling to increase revenue and thereby extend Blake Griffin the maximum contract allowed under the new collective bargaining agreement. But that assumes the Clippers are now practical.