Articles Posted in Lanham Act 43(a) – 15 USC 1125

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Los Angeles, CA – Trademark lawyers for rapper, actor, poet and musician Tupac Shakur’s estate filed a trademark infringement, Lanham Act unfair competition and a false advertising, and commercial appropriation of name and likeness lawsuit at the Federal District Court in Los Angeles. Although Tupac Shakur passed away over eleven years ago, he remains a popular hip-hop musician, artist, actor and poet. His intellectual property and publicity rights, according to Forbes magazine, ranked his estate’s earnings in the top nine for deceased celebrities. His estate licenses all of the intellectual property rights, “including rights to merchandise the trademarks and posthumous publicity rights” to the Plaintiff, Amaru-Awa Merchandising, Inc. Amaru owns a USPTO registered trademark for “Makaveli,” for use on recorded media and clothing.

merchandising-trademark-infringement-tupac.jpgDefendants own and operate a retail store named Rock Town, and a private investigator – acting on behalf of Plaintiffs – allegedly “purchased an unauthorized t-shirt bearing an image of Tupac Shakur and the trademark ‘Makaveli.'” Plaintiffs sent a cease and desist letter to the Defendants, to which there has been no response. Plaintiffs filed the instant lawsuit seeking monetary damages and injunctive relief. The case is titled Amaru Entertainment, Inc. v. Reza Falatoon, CV08-03317 DSF (C.D. Cal. 2008).

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Los Angeles, CA – A lawsuit was filed in the Los Angeles Superior Court alleging misappropriation of likeness/image for commercial purpose under Cal. Civ. Code § 3344 and unfair competition under the Lanham Act §43(a) (15 U.S.C. § 1125). Pamela Paulshock, an actress and model, alleged that defendant Heavenly Cosmetic used her photograph – without her authorization or compensation – in advertisements for its services in the field of cosmetic medical care and services published in L.A. Weekly Magazine. Based upon the federal cause of action under 15 U.S.C. § 1125, defendants filed a notice of removal under 28 U.S.C. § 1441(b) to move the case to the Federal District Court in Los Angeles, where the case is pending. The complaint alleges that “Plaintiff is the attractive female in the Defendant’s advertisement, is the focal point of the label, and is clearly visible and recognizable to the naked eye. At no time prior to or after the image was published, did Plaintiff consent to her image being published by the Defendant in this manner, nor to any agent or employee of the Defendant.” The complaint also asserts causes of action for invasion of common law right of privacy (unauthorized misappropriation of image/photograph) and unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled Shamshock v. Heavenly Cosmetic Medical SPA, CV08-03347 R (C.D. Cal. 2008).

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Oxnard, CA – A trademark infringement and Lanham Act §43(a) unfair competition (15 U.S.C. 1125) lawsuit was filed by attorneys for Athena Cosmetics, Inc., at the Federal District Court in Santa Ana. Athena is the owner of USPTO trademark registrations for the Revitalash, Athena, and Athena Cosmetics trademarks.

cosmetics-trademark-lanham-act-athena.jpgThe complaint alleges that Defendants incorporated under the confusingly similar name of Athena Bioscience, also using it as a trademark, in addition to using the confusingly similar trademark of Athena Lash Serum. The complaint further asserts causes of action for unfair completion under Cal. Bus. & Prof. Code §17200, intentional interference with prospective economic advantage, intentional interference with contract, and declaratory relief under 28 U.S.C. §2201 as to the ownership of the trademarks. The case is titled Athena Cosmetics, Inc. v. Athena Bioscience, SACV08-0532 AG (C.D. 2008).

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Santa Ana, CA – Trademark and anti-cybersquatting attorneys for Buy.com filed a trademark infringement, Lanham Act unfair competition, cyberquatting, and California Business and Professions Code §17200 lawsuit in Federal District Court in Santa Ana against an alleged cybersquatter of the buys.com domain name. Buy.com has been an e-commerce company since 1997 and has operated the website buy.com to market and sell products since at least 1998. Buy.com owns three relevant trademarks related to its business, which marks are registered on the Principal Register of the USPTO. Buy.com alleges that “throughout the past 10 years, Plaintiff has used the buy.com trademarks to build and establish considerable goodwill in the online retail industry. In fact, through the use of these trademarks, Plaintiff is universally recognized as a leader in e-commerce and as a provider of superior goods and services, and is visited by over 5 million US shoppers each month.”

The complaint continues, “Defendant is the registrant of the Internet domain name buys.com [with an additional “s”]. Defendant uses the buys.com website to profit from the Buy.com trademarks. Specifically, Defendant’s buys.com website contains numerous advertisements for and/or hyperlinks to a variety of products and services that compete directly with Plaintiff, such as eBay and Dell. Upon information and belief, Defendant receives a payment when Internet users click on one or more links or advertisements on the buys.com website . . . By using the buys.com domain name that is confusingly similar to Plaintiff’s trademarks Defendant was and is creating, or attempting to create, an association between the buys.com domain name and Plaintiff, and has frustrated or diverted Internet traffic intended for Plaintiff.” The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) False designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Cybersquatting under the Lanham Act, 15 U.S.C. § 1125(d); (4) California common law unfair competition; (5) Unfair competition under California Bus. & Prof. Code § 17200; (6) Common law unfair competition; and (7) Declaratory Judgment under 28 U.S.C. §2201. The case is titled: Buy.com, Inc. v. Webmagic Ventures, LLC, SACV08-00510 JVS (C.D. Cal. 2008).

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Los Angeles, CA – Chiropractor Dr. Jeffrey James’ trademark attorneys filed a trademark infringement, Lanham Act unfair competition, and a false advertising lawsuit at the Federal District Court in Los Angeles, against rival chiropractor Dr. Michael Karr, dba West Los Angeles Chiropractic. Dr. James asserts that he has provided chiropractic services under his personal name and “Westside Spine and Injury Center” – which function as his trademarks – in the Los Angeles area for over 20 years. Dr. James has also maintained a website since 2004 to attract potential consumers of his services throughout the United States and the rest of the world. The complaint states that over “the past 10+ years, [Dr. James] has built a strong following and became (sic) famous for his services, and the name ‘Dr. Jeffrey James’ has acquired secondary meaning as a designation of source or origin of the high quality services the [Dr. James] provides under the name ‘Dr. Jeffrey James’ and ‘Westside Spine and Injury Center.'”

Dr. Karr operates a website on the Internet located at westlachiropractic.com to advertise his chiropractic services in competition with Dr. James. “In or about March 2008, [Dr. James] discovered [Dr. Karr’s] use of his name ‘Dr. Jeffrey James’, in order to attract potential customers to [Dr. Karr’s] website.” Dr. Karr allegedly also used “Dr. Jeffrey James” as a “keyword trigger on the Google website by affirmatively requesting that the Google AdWords program list [Dr. Karr’s] Website when a Google user inputs ‘Dr. Jeffrey James’ as a search request, using the name ‘Jeffrey James’ in the title of the advertisements so as to attract Internet users . . . and creating the false impression that [Dr. Karr was] related to [Dr. James] (“Palming Off”) in order to induce their business or cause initial interest confusion.” In addition to a preliminary and permanent injunction, Dr. James seeks monetary damages against Dr. Karr. The case is titled: Dr. Jeffrey James D.C. v. Michael Karr, CV08-02231 GPS (C.D. Cal. 2008).

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Los Angeles, CA – Trademark and copyright attorneys for Guru Denim, a subsidiary of True Religion Apparel, filed a trademark infringement, copyright infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles to stop copying of its jeans and sales of fakes and counterfeits. Guru Denim has sought copyright, patent, and trademark protection on its garments and jeans. Guru Denim owns U.S. Patent No. D547530 for the stitch pattern applied to True Religion Brand Jeans pants. Guru Denim owns two U.S. Copyright Registrations for the True Religion Brand Jeans Designs, Copyright Certificate of Registration numbers VA1-192-834 and VA1-301-845.

attorneys-jeans-denim-apparel-copying-trademark-design-copyright-patent-true-religion.jpgGuru Denim owns a USPTO registered trademark for the “True Religion Brand Jeans World Tour Fashion for the Senses Section Row Seat.” Also, Guru Denim “owns registered United States trademarks in the pocket stitching pattern that appears on True Religion Brand Jeans pants and the overall stitching pattern on the front of True Religion Brand Jeans pants.” Guru Denim also has 4 USPTO registered trademarks for “True Religion Brand Jeans” with assorted designs. Finally, Guru Denim has registered its “True Religion” word marks with the USPTO. Guru Denim’s “line of ‘super-premium’ denim wear, which ranges in retail price from $170.00 to in excess of $300.00, is acclaimed in the fashion industry due to its famous name recognition which represents quality and distinguished craftsmanship. Each piece of clothing or pair of denim distributed under the Mark bears an emblem of a smiling Buddha strumming a guitar and, in some occasions, is elaborately embroidered.”

Guru Denim discovered that numerous defendants were selling allegedly fake and counterfeit jeans on their Websites. The complaint asserts that Guru Denim’s investigator purchased a True Religion pair of jeans from the denimbutt.com website for $129.00 plus a shipping cost of $1.95, where the defendant causes confusion by claiming that it is “committed to selling only first-quality, genuine designer fashions (sic) items, clothes and accessories.” The complaint continues that Guru Denim’s “inspection of the purchased item using security measures confirmed that the item Defendants sold to the investigator was in fact a counterfeit pair of True Religion Brand Jeans denim pants.”

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Los Angeles, CA – Trademark attorneys for Professional Photographers of America, Inc. filed a trademark infringement and unfair competition lawsuit at the Federal District Court in Los Angeles, alleging infringement of Professional Photographers’ USPTO registered trademarks for Imaging USA and Imaging Expo. The complaint states that since 1999, Professional Photographers has used the Imaging USA trademark for trade shows in the field of professional photography and has used the Imaging Expo trademark since 2004 for trade shows.

photograph-trademark-copyright-imaging.jpgPlaintiff asserts that Defendant “Rangefinder intends to use the designation World Imaging Expo for tradeshows in the field of professional photography” and that Plaintiff became aware of the competing tradeshow when it discovered a copy of the World Imaging Expo convention program guide. Professional Photographers also discovered that Rangefinder had filed an intent-to-use trademark application with the USPTO. Professional Photographers asserts that it sent a cease and desist letter to Rangefinder over the use of the World Imaging Expo trademark, but Rangefinder refused to withdraw its pending trademark application or stop using the trademark. Thus the complaint was filed asserting causes of action for federal trademark infringement under 15 U.S.C. § 1114, false designation of origin and false representation under 15 U.S.C. § 1125(a), and unfair competition under California common law and statutes. The case is titled Professional Photographers of America, Inc. v. Rangefinder Publishing Co., CV08-02324 SVW (C.D. Cal. 2008).

PRACTICE NOTE: A proposed trademark does not have to be identical to another party’s previously registered or used trademark in order to prove infringement. If there is going to be a “likelihood of confusion” between the two trademarks, a Court will enjoin the junior trademark owner’s use of the “confusingly similar” trademark. For example, the trademark Red Shield for insurance services was held to be confusingly similar with the previously registered Blue Shield® trademark.

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Los Angeles, CA – Copyright and trademark attorneys filed a lawsuit, at the Federal District Court in Los Angeles, to protect plaintiff’s website, www.wowhead.com, which is designed to assist gamers of the on-line video game known as World of Warcraft. According to Plaintiff, the wowhead.com website “is one of the most recognized and utilized websites of its kind accessed by tens of thousands of individuals each day. Plaintiff has filed for and received copyright registrations from the U.S. Copyright Office for its website and certain computer code used therein. Plaintiff claims that the “design and appearance/visual presentation of the WOWHEAD website are unique in the industry and therefore constitute an inherently distinctive trade dress respecting the presentation of Plaintiff’s services all of which have resulted in a non-functional trade dress which consumers identify with Plaintiff’s wowhead website.”

design-copyright-trade-dress-world-of-warcraft.jpgPlaintiff alleges that Defendant’s website, www.wowdb.com, “essentially replicated the appearance, design, as well as certain other unique features of Plaintiff’s WOWHEAD website, in order to launch with the creation of an original website. Defendant’s website . . . like the WOWHEAD website, also caters to individuals who participate in the World of Warcraft on-line video game.” The complaint alleges that “defendant has therefore engaged in an intentional and systematic patter of trade dress infringement in violation of the Lanham Act, 15 U.S.C. Section 1125(a), trade dress dilution, and unfair competition in that” the defendant’s website caters to the same class of consumers, the confusingly similar website design, which has resulted in actual confusion among a substantial customer confusion. The complaint also asserts causes of action for common law unfair competition and statutory unfair competition under Bus. & Prof. Code Section 17200.

The case is titled Zam Network, LLC, v. Curse, Inc., CV08-02224 PSG (C.D. Cal. 2008).

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UPDATE 6/18/2008: The Court entered a consent judgment permanently enjoining the defendant from selling any shoes that infringe on Nike’s design patents, trade dress, and trademarks.

Los Angeles, CA – Nike’s patent attorneys filed a patent infringement, trade dress infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles. Nike’s complaint recounts the beginning of Nike’s relationship with Michael Jordan and his endorsement deal, which resulted in the creation of the most famous signature shoe of all time – the Air Jordan®. When the shoes first debuted in 1985, they were initially banned by the NBA for the bold styling and color, but Michael Jordan incurred fines of $5,000 per game and wore his famous shoes. Every year thereafter, Nike unveiled a new Air Jordan model, which models have become collectors’ items and fans often line up to purchase new designs and limited re-releases of previous styles. Nike has protected the new designs of the shoes by obtaining design patents, trademarks, and trade dress rights.

The Air Jordan® VII shoe, which Jordan wore during the 1992 Olympics, was awarded U.S. Patent No. Design 325,291. The Air Jordan® XI shoe, considered one of the most popular shoes of all-time, was awarded U.S. Patent No. Design 371,898. The Air Jordan® XII shoe, which Jordan wore against the Jazz when he was ill with the flu, was awarded U.S. Patent No. Design 380,082. The Air Jordan® XIII shoe, which has sold more than 2 million pairs in the U.S., was awarded U.S. Patent No. Design 387,591 and U.S. Patent No. Design 387,850. Nike alleges that the Defendant “has sought to make a name for itself not through its own innovation, strategic investment, and design, but by explicitly appropriating the patented design and trade dress of not one, but four separate models of Air Jordan® shoes.” The complaint asserts that the Defendant “has copied the design and trade dress of the entire “upper” of each of these shoes, including the unique shape of the leather on the inside and outside of the shoe . . . the iconic lacing with exterior webbing on the shoe upper . . . the sunburst design . . . and the unique shape of the leather on the inside and outside of the shoe upper…”

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Los Angeles, CA – Trademark attorneys for Chanel, Inc. filed a trademark infringement lawsuit in Federal District Court in Los Angeles alleging sales of counterfeit handbags and purses and asks the Court to stop the infringement. Chanel has used its Chanel and CC Monogram trademarks for many years on accessories, including handbags, purses, and wallets. Chanel owns numerous Chanel related trademarks and has federally registered them with the USPTO. Chanel’s brand/trademarks “are symbols of Chanel’s quality, reputation, and goodwill and have never been abandoned.”

chanel5.jpgThe complaint alleges that defendants are selling lower quality imitations of Chanel’s handbags and wallets, which bear counterfeit Chanel trademarks. The complaint asserts that the Defendants are offering the counterfeit goods on their websites: www.gqbags.com and www.ultimatehandbags.com. The websites offer handbags for sale that are substantially less expensive than authentic Chanel products. “The net effect of the Defendants’ actions will be to result in the confusion of consumers who will believe the Defendants’ Counterfeit Goods are genuine goods originating from and approved by Chanel.” Chanel believes that the defendants are engaging in the sale of counterfeit goods intentionally and willfully. The complaint alleges causes of action for trademark infringement and counterfeiting under section 32 of the Lanham Act, 15 U.S.C. § 114, and false designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The case is titled: Chanel, Inc. v. Kimberli Hunter, et al., CV08-02226 GHK (C.D. Cal. 2008).