Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – Summit Entertainment is the producer and distributor of the highly successful Twilight motion picture franchise, including The Twilight Saga: New Moon, and the soon to be released Eclipse. The movies are about a teenage girl, Isabella (Bella”) Swan, who falls in love with a vampire, Edward Cullen. Bella’s other suitor in the film is Jacob Black, a werewolf, which love triangle always makes for a good motion picture franchise. Summit is the owner of several federally registered trademarks for “TWILIGHT” and also owns the trademark for “BELLA”, which trademarks have been used for clothing. Summit is also the copyright owner in the promotional image (shown below) depicting the character Bella from the Twilight movies.

Defendants B.B. Dakota, Modcloth, and Metropark are accused of selling jackets using the “Twilight” and “Bella” trademarks in conjunction with the Bella image without authorization. Summit not only seeks Defendants’ profits from the sales of the allegedly infringing products, but also asks the Court to treble the damages because Defendants are accused of intentional infringement. The case is Summit Entertainment, LLC, v. B.B. Dakota, Inc., CV10-4328 GAF (C.D. Cal. 2010).

Los Angeles, CA – Humphrey Bogart appeared in more than seventy motion pictures, including classics such as Casablanca, The Maltese Falcon, and The African Queen. Bogart, LLC, the plaintiff in the case, is the successor-in-interest of all intellectual property rights and assets associated with Humphrey Bogart, which rights were acquired from his children. Bogart owns a USPTO trademark registration for the trademark “BOGART” for use in connection with the sale of furniture. Bogart has previously licensed the trademark to Thomasville for a line of furniture products using the name and the trademark “Bogart.”

Defendants Plummers, Inc., Scandinavian Desings, Inc. and Dania , Inc. are allegedly affiliated companies that are accused of using the name and trademark “Bogart” without authorization in connection with a line of furniture. Plaintiff claims that Defendants advertising used the “Bogart” trademark along with copy referencing a “great retro design” and in a “deco style” to create a false association because it conjures up memories of the “style in the 1940’s and 50’s when Humphrey Bogart was the world’s most popular, acclaimed and sought-after motion picture actor.” Plaintiff asserts causes of action for misappropriation of right of publicity (Cal. Civ. Code §3344.1), trademark infringement, unfair competition under the Lanham Act, and trademark dilution. The case is Bogart, LLC v. Plummers, Inc. et al., CV10-4151 GAF (C.D. Cal. 2010).

Los Angeles, CA – Dr. Dre sued the new Death Row records for breach of contract, trademark infringement, false advertising, violation of the right of publicity, and unfair competition. Details blogged here, and read the complaint here. Dr. Dre alleged that he’s owed royalties on his music album “The Crhonic,” and others, and that defendants have released a “remastered” version of the album, “The Chronic Re-Lit & From the Vault”, as well as a “Greatest Hit” album without his permission.

The Court denied the motion as to the breach of contract and constructive trust causes of action. The Court, however, dismissed the Lanham Act causes of action because the Court noted that Dr. Dre did not plead that the alterations made to the work were substantial enough to trigger the “Monty Python” rule. Gilliam v. American Broadcasting Cos., Inc., 538 F.3d 14, 18 (2d Cir. 1976) (editing of “Monty Python” show for television broadcast constituted authorship or endorsement of a substantially modified version of the work to constitute trademark infringement). The Court continued:

As to plaintiff’s allegation that defendants have used his name and likeness, including the original photograph from the jacket cover of “The Chronic,” the Court finds that these allegations fail to state a claim that defendants have over-represented plaintiff’s contribution to “Re-Lit,” given that defendants accurately identify plaintiff as the author of the original masters and that defendant used a substantially same photograph from the original album jacket cover, and did not use a current picture so to imply that plaintiff recently contributed to the re-issued album.

Similarly, the Court dismissed the right of publicity claim because “plaintiff has failed to sufficiently allege that defendants’ use of his name and likeness is more than incidental to the protected publication of his albums, and thus defendants’ use is protected by the First Amendment. See Page v. Something Weird Video, 960 F. Supp. 1438, 1442-43 (C.D. Cal. 1996) (finding that defendant’s use of plaintiff’s likeness was protected by the First Amendment because the advertisement was incidental to the protected publication of the film videos).”

The unfair competition claim was also dismissed because the elements are similar to a trademark infringement claim under the Lanham Act. See Acad. of Motion Picture Arts & Scis. v. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir. 1991) (“An action for unfair competition under Cal. Bus. & Prof. Code §§ 17200 et seq. is substantially congruent to a trademark infringement claim under the Lanham Act.”). Order available here.

The dismissal was without prejudice subject to an amended complaint being filed within 30 days. The case is Andre Young v. Wideawake Death Row Entertainment, LLC et al., CV10-01019 CAS (C.D.Cal. 2010).

Los Angeles, CA – Randles Films is the owner of the copyright registrations in the original “Torture Room” screenplay and the revisions thereto. Randles also produced the movie and also registered the copyright therefor. Defendants Quantum, Moviebank, and Bridge Entertainment are accused of wrongfully copying and distributing the movie. Randles also accuses the Defendants of infringing its unregistered “Torture Room” and “Cerebral Experiment” trademarks by applying them to the packaging. The case is Randle Films, LLC v. Quantum Releasing, LLC, et al., CV10-3909 SJO (C.D. Cal. 2010).

San Francisco, CA – Clothing and jeans giant Levi Strauss owns several USPTO registered trademarks for its arcuate stitching design initially used in 1873, which it alleges is the oldest known clothing trademark in the United States. Based on this long and continued use, Levi Strauss alleges that its trademarks are famous and recognized in the U.S. and around the world.

Levi Strauss alleges that Defendant Gardeur is manufacturing and selling “clothing that displays stitching designs that are confusingly similar to [Levi’s] Arcuate trademark.” The case is Levi Strauss & Co. v. Gardeur GmbH, CV10-2122 EMC (N.D. Cal. 2010).

Los Angeles, CA – adidas and Reebok have teamed up to sue three defendants for trademark infringement arising from the sale of shoes bearing adidas’ three stripe trademark and Reebok’s stripecheck trademark. Adidas alleges that it began using the three-stripe trademark on athletic shoes as early as 1952 and has registered several marks with the USPTO. Reebok alleges a 1975 date of first use for the stylized checkmark and intersecting stripes design mark used on athletic shoes. Reebok has also registered its trademarks with the USPTO.

Defendants Twin Best, JCK Group, and Skywide International are accused of selling shoes with four stripes and others with an exact reproduction of Reebok’s Stripecheck mark. Plaintiffs allege that “Defendants intentionally designed and manufactured their footwear to mislead and deceive consumers into believing it was manufactured, sold, authorized, or licensed by Plaintiffs.” The case is Adidas AG, et al. v. Twin Best, Inc., et al., CV10-3608 MMM (C.D. Cal. 2010).

Michael Atkins has meticulously covered adidas’ 2 vs. 3 vs. 4 stripe trademark victory against Payless Shoes here.

Santa Ana, CA – Asics' trademark is comprised of two horizontal curved stripes intersected by two parallel vertical stripes, which trademark is registered with the U.S. Patent & Trademark Office. Asics has used the stripe design trademark on shoes and apparel – for over forty years – since 1966 and has previously sued Dolce & Gabbana and Steve Madden for using stripe designs that allegedly infringed the trademark.

Skechers is accused of selling over sixty different shoe styles having the same stripe design as the common denominator. The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. § 1114 [Lanham Act §32(1)]; (2) Federal unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Lanham Act dilution of famous trademark under 15 U.S.C. § 1125(c); (4) Trademark infringement under California law [Cal. Bus. & Prof. Code § 14320]; (5) Trademark infringement under California common law; (6) Trademark dilution under California law [Cal. Bus. & Prof. Code § 14330]; (7) False advertising under California law [Cal. Bus. & Prof. Code §§ 17500, 17535]; and, (8) Unfair competition under state law [Cal. Bus. & Prof. Code §17200 and §17203]. The case is Asics Corporation, et al. v. Skechers U.S.A., Inc., SACV10-00636 AHM (C.D. Cal. 2010).

The Ninth Circuit affirmed (copy here) the district court’s trademark infringement ruling in favor of Volkswagon by denying Auto Gold’s “first sale” defense. Auto Gold purchased genuine VW badges from Volkswagon and then mounted the badges on its marquee license plates, which were sold to Auto Gold’s customers.

Despite Auto Gold’s prominent disclaimer on its packaging that the marquee plate was not manufactured by VW, the Court held that “the ‘first sale’ doctrine does not provide a defense because the plates create a likelihood of confusion as to their origin. We do not base our holding on a likelihood of confusion among purchasers of the plates. Rather, we base it on the likelihood of post-purchase confusion among observers who see the plates on purchasers’ cars.”

The Court relied on refurbishment cases where purchasers of refurbished products with non-genuine parts, e.g. Rolex, were purchasing the product for the “Rolex” trademark displayed to others who did not know that the product was re-furbished. Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704 (9th Cir. 1999). Further, the Court ruled that three-year statue of limitations applied to the laches defense. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., No. 08-16005 (9th Cir. 2010).

Los Angeles – Fashion Designer Micah A. Cohen has been sued by his former employer, Swarm, LLC. Cohen apparently started the clothing company as a young designer and launched the “Shades of Greige” apparel line. Swarm alleges that Cohen was employed as a fashion designer until November 13, 2009, when he “quit his job with Plaintiff.”

Plaintiff contends that three weeks before Cohen left its employ, Cohen’s mother, Nancy Sidonie Cohen, filed an intent-to-use application with the USPTO to register the mark “Shades of Grey” for use on clothing. In March of 2010, Plaintiff did what it should have done a long time before, i.e. filed its own trademark application to register “Shades of Greige” with the USPTO.

Plaintiff contends that Defendants’ use of the mark “Shades of Grey by Micah Cohen” is likely to confuse customers. Further, “Defendants are utilizing the same designs, patterns, look, pricing, factories and sales representatives used by Plaintiff when Mr. Cohen was employed by Plaintiff, and Defendants are selling the Accused Goods to the same wholesale customers to which Plaintiff sells its goods and has developed valuable business relationships.” Thus, Plaintiff asserts causes of action for trademark infringement, unfair competition, intentional interference with economic relations, breach of duty of loyalty, and declaratory judgment for withdrawal of Defendants’ trademark application. The case is Swarm, LLC v. Micah A. Cohen, et al., CV10-3188 DDP (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).