Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – Zumba Fitness has filed several lawsuits accusing eBay sellers of counterfeiting its fitness DVDs and infringing its trademarks and copyrights. Zumba® Fitness is a Latin-inspired dance-fitness program that combines international music with dance steps to create an aerobic exercise regimen. Plaintiff alleges that over 10 million people take weekly Zumba classes worldwide. Plaintiff owns numerous copyright registrations and USPTO trademark registrations for Zumba related products and services.

Plaintiff alleges that in its ongoing investigation of counterfeit sales of Zumba products, its private investigator purchased an allegedly counterfeit “Zumba 4 DVD Box Set” from the Defendants. “The inspection of the purchased item confirmed that the item Defendants sold to the investigator was in fact a counterfeit and an unauthorized Zumba 4 DVD Box Set.” Plaintiff also asserts claims for unfair competition, trademark dilution, and unjust enrichment.

The case is Zumba Fitness, LLC v. Brenda Buxton, CV11-02135 CAS (C.D. Cal. 2011).

Los Angeles, CA – Speck Products manufactures carrying cases for electronic devices, including the iPad, iPhone, iPod, and Blackberry. The products are sold bearing the Speck® or Candyshell® trademarks. Last week, Speck filed numerous trademark infringement and unfair competition lawsuits against numerous eBay sellers alleging sales of counterfeit electronic device cases. Plaintiff alleges that “Defendants use images and names confusingly similar or identical to Plaintiff’s Marks to confuse consumer and aid in the promotion and sales of its unauthorized and counterfeit product.”

One of the numerous cases is Speculative Product Design, Inc. v. PPG Enterprize, CV1100160 VBF (C.D. Cal. 2011).

Los Angeles, CA – Trademark bully Monster Cable, as it has been anointed by others here and here, seems to be on a trademark infringement lawsuit rampage against eBay sellers of monster products. Maybe the slew of trademark lawsuits is in response to the court’s denial of the temporary restraining order in its and Beats Electronics’ design patent lawsuit against Fanny Wang Headphone company.

Whatever the reason, it’s interesting that among the six causes of action for trademark infringement, dilution, etc., there is no cause of action for trademark counterfeiting. Even more so when the complaint alleges that Monster Cable’s private investigator purchased the items on eBay, they were tested, and deemed to be counterfeit: “Defendant has, without the consent of Plaintiff, offered to sell and sold within the United States (including within this judicial district) goods that were neither made by Plaintiff nor by a manufacturer authorized by Plaintiff (such goods are hereafter referred to as “Counterfeit Goods”).” Maybe Monster Cable’s perplexing strategy will crystallize as the cases proceed to trial, assuming the eBay sellers can afford to mount a defense against this alleged trademark bully.

The case is Monster Cable Products, Inc. v. Wireovia, LLC et al., CV10-10010 DSF (C.D. Cal. 2010).

Los Angeles, CA – Pepsi’s subsidiary owns the Manzanita Sol® trademark that is used on apple flavored soft drinks. Manzanita Sol® is Pepsi’s second most popular brand in Mexico. Pepsi has sold in the U.S. millions of dollars worth of Manzanita Sol® sodas through its authorized bottlers.

Pepsi accuses SPE Trading of importing soft drinks manufactured in Mexico bearing the Pepsi® and Manzanita Sol® trademarks that Pepsi does not authorize for sale in the U.S. Pepsi alleges that the Mexican product sold by SPE is materially different in many respect from authorized products sold in the U.S., e.g. the Mexican product does not comply with the labeling regulations of the Food and Drug Administration. Pepsi alleges that in response to a cease and desist letter, SPE had previously agreed to stop importing and selling the gray market product. But based upon alleged recent purchases of the gray market Manzanita Sol® product, Pepsi filed the instant trademark infringement and dilution action. The case is Pepsico, Inc. et al. v. SPE Trading, Inc., CV10-6833 DDP (C.D. Cal. 2010).

PRACTICE NOTE: U.S. trademark owners can prevent the importation and/or sale of gray goods that are “materially different” from those sold in the U.S. In determining what is considered “materially different,” 19 C.F.R. § 133.2(e) provides the following non-exclusive considerations: "(1) The specific composition of both the authorized and gray market product(s) (including chemical composition); (2) Formulation, product construction, structure, or composite product components, of both the authorized and gray market product; (3) Performance and/or operational characteristics of both the authorized and gray market product; (4) Differences resulting from legal or regulatory requirements, certification, etc.; [and] (5) Other distinguishing and explicitly defined factors that would likely result in consumer deception or confusion as proscribed under applicable law." Also, PepsiCo, Inc. v. Pacific Produce, Ltd., 2000 U.S. Dist. LEXIS 12085 (D. Nev. 2000) cites cases where failure to comply with FDA labeling regulations constituted a material difference.

Los Angeles, CA – Moroccanoil manufactures “salon only” hair care products under its Moroccanioil®, “M Moroccanoil Design” and “Vertical Moroccanoil M Design” trademarks, which are all registered with the USPTO. Through its distribution arrangements Moroccanoil restricts the sale of its products to professional salons and licensed cosmetologists.

Defendant Beauty Encounter is accused of selling counterfeit Moroccanoil products through the www.beautyencounter.com and www.perfumeshop.com websites. Plaintiffs allege that they conducted chemical testing of Defendant’s products and determined that they had “distinctly different chemical and physical properties that do not match genuine Moroccanoil Oil Treatment.” Further, the complaint states that because Defendants cannot legitimately obtain genuine products from authorized distributors, “Defendants encourage Moroccanoil distributors and salons to cheat Plaintiffs by encouraging the distributors to order more Moroccanoil Products than the distributor or any salon needs. The excess Moroccanoil Products are then sold, directly or indirectly, to Defendants.” Thus, in addition to the trademark related claims, Plaintiffs assert interference with contractual relations and prospective advantage claims. The case is Moroccanoil, Inc. v. Beauty Encounter, Inc., CV10-5696 SVW (C.D. Cal. 2010).

Los Angeles, CA – Tre Milano is the owner of the InStyler® trademark and several copyrights used in the sale and advertising of its hair styling product, including a copyright registration for its www.getinstyler.com website. You may have seen one of its infomercials for its “rotating iron” hair brush, a hair product that combines a hair brush and rotating hot iron to curl, straighten, and style hair. Since its first sale in June of 2008, Plaintiff contends that it has spent $30,000,000.00 to air its television infomercials and $5,000,000.00 on print and internet advertising. As a result, Plaintiff asserts that its trademark has become famous.

Plaintiff asserts that its investigator purchased an “InStyler” rotating hot iron from Defendants’ eBay listing for $65.99, which was charged to the investigator's PayPal account. In advertising and selling the "InStyler" products, Plaintiff further contends that Defendants use images that infringe on Plaintiff’s copyrights and use trademarks that are confusingly similar to Plaintiff’s. In addition to the trademark and copyright infringement causes of action, Plaintiff also asserts Lanham Act and § 17200 unfair completion, trademark dilution, accounting, and unjust infringement causes of action. The case is Tre Milano, Inc. v. Daryl Ewald et al., CV10-2849 SVW (C.D. Cal. 2010).

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

Los Angeles, CA – Despite the Court’s finding that Upper Deck counterfeited Yu Gi Oh! cards (details here) and advising the parties to settle the damages phase through mediation, the jury trial to determine damages has commenced (Court’s calendar is here). If there ever was a case to settle early to avoid damage to a company’s reputation – which reputation and lifeline is founded on authenticating autographs and memorabilia, this would have been it.

The Cult-Stuff provides a chronology of events in the Konami v. Upper Deck Yu Gi Oh! counterfeiting battle here.

The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

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)

Los Angeles, CA – Rolex Watch USA, Inc. sued Aaron Gallagher, doing business as rplwatches.com, replwatches.com, and watchreps.com, for trademark counterfeiting, trademark infringement and unfair competition under the Lanham Act § 43(a). Rolex manufactures high-end watches, watch bracelets and related products for men and women, which are sold under the Rolex family of trademarks and several other registered marks.

Rolex alleges that in May of 2006 it discovered Defendant’s watchreps.com website and it was able to shut it down through the website’s Internet Service Provider. Defendant then contacted Rolex’s counsel and attempted to reactivate the website, but Rolex did not receive a response to its settlement demands in return for reactivation. In April of 2009, while Rolex was investigating sales of infringing watches on craigslist.org, it discovered that pictures in the classified ads linked to Defendant’s reactivated watchreps.com website. In response to Rolex’s cease and desist letter, Defendant allegedly stated that Rolex “will have no further problems regarding this issue.” Rolex’s investigator, however, responded to an ad on craigslist.org and received an email from replwatches.com allegedly signed by Aaron. Upon Rolex’s request, the ISP identified the registrant of the website as Aaron Gallagher. When the investigator called to purchase the watch, Defendant allegedly stated that Rolex “was after me…they’re watching me like a hawk.” The investigator received a watch that is allegedly counterfeit and infringes on Rolex’s trademarks. Thus, Rolex determined it was time to file suit. The case is Rolex Watch USA, Inc. v. Aaron Gallagher, et al., CV 09-4646 R (C.D. Cal. 2009).

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).