Articles Posted in License-Licensing

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clothing-copyright-christian-audigier-lawsuit.jpgLos Angeles, CA – Bryan Callan filed a lawsuit at the Federal District Court in Los Angeles against clothing designer Christian Audigier and Nervous Tattoo, Inc. and Shop On State, Inc. Callan is an artist and graphic designer whose style draws from his background as a tattoo artist. Callan also goes by his “Mr. Lucky” nickname and uses a Mr. Lucky logo on his artwork, which consists of text and four-leaf clover motif. The complaint alleges that in 2006, Callan and Audigier executed a licensing agreement which allowed the use of Callan’s art work subject to agreed-upon material terms:

The Agreement required that Defendants accompany each and every use of Callan’s artwork, or any part thereof, with a clearly visible Mr. Lucky logo…The Agreement also required that Defendants use commercially best efforts and act in good faith to market and advertise the Mr. Lucky logo and/or Callan’s name in each and every marketing, public relations and advertising effort made in connection with their use of Callan’s artwork. The Agreement also required that Defendants provide Callan with the right of first refusal if Defendant makes the decision to sell, lease, license, or in any way provide a third party to utilize Callan’s work in any way.

The complaint alleges that Defendants have failed to use the Mr. Lucky logo on the clothing products and have granted sub-licenses to numerous other companies, which have produced unauthorized products such as wines, cars, air fresheners, handbags and shoes. The expansion of rights beyond the agreement is alleged to constitute copyright infringement, in addition to breach of contract. By failing to place the Mr. Lucky logo on the products, Callan alleges that Defendants have engaged in unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The case is titled Bryan Callan v. Christian Audigier, Inc. et al., CV 08-08072 GW (C.D. Cal. 2008).

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Los Angeles, CA – Copyright attorneys for HighDefinition.net, Inc. (“HDNI”), owned by award-winning broadcast reporter Robert Tur, filed a copyright infringement and breach of contract lawsuit, at the Los Angeles Federal District Court, which seeks to enjoin further usage of its footage. The complaint states that Mr. Tur pioneered the use of helicopters in covering live news events, which, at least in Los Angeles, provides for at least one car chase per day. HDNI has registered its copyrights for its aerial footage with the U.S. Copyright Office.

los-angeles-copyright-attorney-video-television.jpgIn 2007, the complaint alleges that HDNI and Rive Gauche Entertainment Television (“RGET”) entered into an agreement, whereby HDNI produced and RGET distributed a television program about police car chases, titled “Why They Run,” which aired on MSNBC. Shortly thereafter, the parties entered into an agreement for the production and distribution of “Nowhere to Run,” under which agreement RGET was to pay HDNI $450,000, in addition to licensing fees for the use of news clips from its library. The complaint alleges that “RGET has breached the March 7, 2008 Agreement by, among other things, failing to pay HDNI at least $400,000 owed under the agreement. In addition, RGTV has licensed and/or delivered to third parties [the] copyrighted material without [Plaintiff’s] consent, much less its written consent.” Plaintiff requests either actual or statutory damages under 17 U.S.C. § 504, in addition to their costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: HighDefinition.net, Inc. v. Rive Gauche Entertainment Television, Inc., CV08-05795 GHK (C.D. Cal. 2008).

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Los Angeles, CA – Copyright attorneys for Arter Neon & LED Sign, Inc. filed a copyright infringement lawsuit in the Central District Of California (Los Angeles Division) to prevent sales of infringing products imported from China. Arter is a designer, manufacturer and importer of neon and LED signs and artwork, whose products are displayed on its website. Certain of its works have been registered with the U.S. Copyright Office, including its “Scissors” LED design, and others are pending.

china-copyright-attorney-led-sign-arter.jpgIn 2007, Arter entered into a non-exclusive license agreement with Defendant Touch of Asia, whereby Defendant was permitted to distribute certain of Arter’s copyrighted designs and was to forward all orders for products to Arter. Further, Defendant allegedly expressly agreed not to manufacture products containing the copyrighted designs itself or to obtain them from other sources. In June of 2008, when Arter’s representatives were delivering products to Defendant’s location, they allegedly noticed products on display that were not manufactured by Arter, but infringed on the copyrights. Defendant allegedly stated that it had the products manufactured in China because it was less expensive than buying them from Plaintiff. Arter terminated the licensing agreement immediately and asked Defendant to cease selling the allegedly infringing product. When Defendant refused, this lawsuit followed. Plaintiff requests either actual or statutory damages under 17 U.S.C. § 504, in addition to their costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: Arter Neon & LED Sign, Inc. v. Touch of Asia Spa Equipment, Inc., CV08-05446 DSF (Central District of California 2008).

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Los Angeles, CA – Copyright attorneys for Seoul Broadcasting Systems (“SBS”) filed a copyright infringement lawsuit in the Central District Of California (Los Angeles Division), accusing Korea International Satellite Broadcasting (“KISB”) of distributing infringing copyrighted works and sought a Temporary Restraining Order from the court. SBS’s parent company creates and produces Korean-language television programming which is initially exhibited in Korea and then provided to SBS for television and satellite distribution in the United States. In turn, SBS grants licenses to third-parties in the U.S. to distribute certain of the programs via satellite television.

los-angeles-copyright-attorney-tro-korean-kisb.jpgIn 2004, SBS and KISB entered into a series of written agreements whereby SBS agreed to supply KISB with copyrighted programs for distribution on KISB’s satellite channels. When the agreements terminated on May 31, 2008, SBS expressed to KISB its intent not to renew the distribution agreement and gave KISB until June 15, 2008 to cease distribution of the programs. KISB allegedly did not cease distribution of the programs and SBS filed suit seeking a TRO over six weeks later.

Federal Rule of Civil Procedure 65(b) provides that a TRO may be granted “without written or oral notice to the adverse party or its attorney only if: (A) specific facts in an affidavit or a verified complaint clearly show that immediate and irreparable injury, loss, or damage will result to the movant before the adverse party can be heard in opposition; and (B) the movant’s attorney certifies in writing any efforts made to give notice and the reasons why it should not be required.” The circumstances justifying the issuance of an ex parte TRO are extremely limited. See Reno Air Racing Ass’n v. McCord, 452 F.3d 1126, 1131 (9th Cir. 2006) (citing Granny Goose Foods, Inc. v. Bhd. of Teamsters, 415 U.S. 423, 438-39 (1974).

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Los Angeles, CA – Copyright attorneys for several plaintiffs, including Sony and Gwen Stefani, filed a copyright infringement lawsuit at the Federal District Court in Los Angeles accusing Alhambra based Havana House Cigars & Lounge of publicly performing copyrighted music without a license from ASCAP, BMI, or SESAC. The complaint alleges that on January 11, 2008, presumably when their investigator was at the Lounge, and on several occasions thereafter, the five copyrighted musical compositions were publicly played and performed. Plaintiffs assert that the Lounge will continue to publicly play and perform these songs unless it is enjoined by the Court.

los-angeles-copyright-attorney-alhambra-havana.jpgThe complaint alleges that ASCAP, on behalf of the copyright owners, contacted the defendant and informed him that a copyright license was needed in order to publicly perform the copyrighted music at the Lounge. The defendant, however, has allegedly not agreed to pay for the license and has continued to play the songs at issue. Plaintiffs request statutory damages under 17 U.S.C. § 504(c)(1), of not more than $30,000.00 and not less than $750.00 for each copyrighted song. Plaintiffs also request that the court order the defendant to pay the costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: Sony/ATV Harmony v. Alfred Campano, CV08-03947 PA (C.D. Cal. 2008).

PRACTICE NOTE: 17 U.S.C. 504(c)(2) provides an increase in the statutory damages to $150,000.00 per infringement if it is deemed to be intentional. Also, if a restaurant or public establishment unreasonably believed that it was exempt from licensing requirements under 17 U.S.C. § 110(5), the copyright plaintiff, in addition to other damages under section 504, will be entitled to two times the license fee which it should have paid for the preceding three-year period. Because of the varying affiliations between record companies and the licensing societies, a license from each of the following licensing societies must be obtained to cover the music owned by the various recording companies:

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In a case that illustrates the dangers of using your own name as a trademark, a court has issued a permanent injunction preventing fashion designer Joseph Abboud from using his own name to promote a new line of clothing – and all future goods and services. The unfortunate aspect of this ruling that hinders Abboud’s planned return to the fashion industry, is that a more careful drafting of the agreements that were part of the sale of his company in 2000 could have prevented his unintended loss of rights.

fashion-designer-trademark-joseph-abboud.jpgTrademark attorneys for the popular designer apparently believed that when he agreed to sell his company and trademarks – which included the USPTO registered Joseph Abboud trademark – it would not prevent him from later using his own name to promote his affiliation with a new clothing line. The Court disagreed and issued a permanent injunction preventing the designer from using his own name to promote his new “jaz” fashion line. CLICK HERE for the Court’s decision.

Use Caution When Assigning Trademark Rights

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Los Angeles, CA – Franchising law attorneys sue an Orange County Sizzler franchisee, in Los Angeles Federal District Court, for allegedly breaching the franchising agreement and for trademark infringement. Franchisor, Sizzler USA Franchise, Inc. has registered numerous trademarks with the USPTO which it licenses to franchisees under a franchising agreement. Under the franchising agreement, the franchisee is to pay the franchisor a royalty and advertising fees. The franchisee is also required to comply with quality standards in food and cleanliness. The complaint alleges that the Defendants have failed to pay any royalties or advertising fees since they acquired the franchised location in May of 2006. Also, the complaint continues, the Defendants were sent a notice of default stating that the location’s “level of cleanliness and quality in service and products failed to meet minimums set by Sizzler.”

The first cause of action is for trademark infringement of Sizzler’s USPTO registered trademarks because under the franchise/license agreement, the franchisee was granted a limited license to use the trademarks so long as the franchisee complied with the agreement: “The Defendant’s use of the [trademarks] post-termination constitutes service mark and trademark infringement within the meaning of 15 U.S.C. § 1114.” The second cause of action is for breach of the license/franchise agreement for Defendants’ alleged refusal to pay royalties and advertising fees and for refusing to cease use of the trademarks post termination. The third cause of action is for breach of written guaranty against the individual that is the shareholder of the corporation. The case is titled Sizzler USA Franchise, Inc., v. Advanced Home Care Medical Supply, Inc., CV08-01856 PSG (Central District of California).

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Los Angeles, CA – Garment industry copyright attorneys sought protection for United Fabrics’ registered copyrights in fabric/textile designs by filing a copyright infringement lawsuit in Los Angeles Federal District Court to prevent the copying of its fabric/textile designs copyrights. Plaintiff alleges that two of its designs registered with the Copyright Office are being copied. The first design was purchased from an Italian art studio and the multi-element floral design was converted for printing on textiles. After plaintiff applied for and received copyright registration for this first design with the U.S. Copyright Office, it provided samples of fabric to defendant Wraps. The complaint alleges that Wraps even ordered and received one shipment of fabric bearing the first design. But instead of purchasing additional fabric from United Fabrics, Wraps is alleged to have copied the fabric design through third parties and sold garments bearing the design protected by copyrights to numerous retailers.

Plaintiff also purchased source artwork from an Italian art studio and created a second design for printing on textiles. Once again plaintiff received a copyright registration from the U.S. Copyright Office and provided samples of the fabric to defendant Swat. Defendant Swat allegedly did not order any fabric from Plaintiff, but instead copied the design through third parties and manufactured and sold garments to various retailers. The complaint alleges a cause of action for copyright infringement for each of the fabric designs registered with the Copyright Office. It also alleges a cause of action for vicarious and/or contributory copyright infringement. Finally, a breach of contract claim is alleged against Wraps and Swat because they agreed that they were receiving Plaintiffs designs that were subject to copyright protection “with the express understanding and agreement that they were proprietary to Plaintiff, and if [either] wished to create product bearing said designs, it would have to do so through Plaintiff.” The case is titled United Fabrics International, Inc. v. J.C. Penney Corp., Inc. et al., CV08-01936 MMM (Central District Of California).

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A Redondo Beach, CA restaurant was sued for copyright infringement by copyright attorneys for several recording companies for publicly playing music at the restaurant without a license from ASCAP, BMI, or SESAC. The complaint lists five songs which received copyright registrations by their individual authors with the U.S. Copyright Office, and the rights are owned by the record companies. The complaint alleges that on one night, presumably when their investigator was at Paulie’s Upper Deck Sports Grill, the five musical compositions covered by copyrights were publicly performed “for the entertainment and amusement of the patrons attending said premises, and defendants threaten to continue such infringing performances.”

The complaint alleges that plaintiff warned the defendant that a copyright license was needed in order to publicly perform the music at the restaurant. Because the defendant allegedly refused to pay for the license, the defendant’s copyright infringement was intentional and willful. Plaintiffs request statutory damages under 17 U.S.C. § 504(c)(1), of not more than $ 30,000.00 and not less than $ 750.00 for each registered song. Plaintiffs also request that the court order the defendants to pay the costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: Far Out Music v. Fratelli Brothers, Inc., CV08-01975 GPS (C.D. California).

PRACTICE NOTE: 17 U.S.C. 504(c)(2) allows the statutory damages to be raised to $150,000.00 per infringement if it is deemed to be knowingly conducted. Also, if a restaurant or public establishment unreasonably believed that it was exempt from licensing requirements under 17 U.S.C. § 110(5), the copyright plaintiff, in addition to other damages under section 504, will be entitled to two times the license fee which it should have paid for the preceding period of up to 3 years. Because of the varying affiliations between record companies and the licensing society, a license from each of the following licensing societies must be obtained to cover the music owned by the various recording companies:

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Los Angeles, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit, on behalf of Dell, in Los Angeles Federal District Court, alleging infringement of Dell’s USPTO registered trademarks against resellers. Dell has been selling personal computers since 1984 and has registered its Dell trademark and variations thereof in more than 180 countries worldwide, and has more than thirty United States federal trademark registrations containing the term Dell. Since its inception, Dell has primarily used a direct sales model to sell directly to consumers rather than through retail outlets, first through telephone and also the Internet. Dell, however, permits a limited number of authorized resellers, which have to abide by Dell’s reseller terms and conditions.

Dell-trademark-logo.jpgDell alleges that the four individual defendants enrolled in Dell’s reseller program and became bound by the resale terms, where “defendants agreed (1) to refrain from unauthorized use of Dell’s trademarks; (2) not to resell Dell product without first adding value through the addition of hardware, software, or services; (3) not to resell Dell product on auction-type websites [such as eBay]; and (4) to resell their Dell product to small and medium businesses.” The complaint alleges that the defendants have used aliases to purchase Dell products and sold them through unauthorized trade channels and on eBay in violation of the reseller agreement and have made misrepresentations and misused Dell’s trademarks. For example, the defendants have allegedly sold products on eBay as “new” when they were, in fact, refurbished. The complaint asserts that “Defendants have, through their scheme of deliberate misrepresentation and concealment, purchased millions of dollars worth of Dell products from Dell and resold such product in breach of their contractual obligations to Dell and in violation of Dell’s trademark rights.” The complaint alleges the following causes of action: (1) Trademark counterfeiting and infringement 15 U.S.C. §§ 1114; (2) Unfair competition and false advertising under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Trademark dilution under the Lanham Act section 43, 15 U.S.C. § 1125(c); (4) Unfair competition and false advertising under Cal. Bus. & Prof. Code §§ 17200 and 17500; (5) Unjust enrichment; (6) Breach of contract; (7) Fraud; and, (8) Civil conspiracy. The case is titled Dell, Inc. v. Kizun, et al., CV08-01821 JSL (C.D. California)