music-copyright-song-sampling-pitbull-kesha-timber.jpgSeeking at least $3 million in damages, songwriters Lee Oskar Levitin, Greg Errico, and Keri Oskar are suing Sony Music and Pitbull’s company for copyright infringement over his smash hit “Timber,” featuring Kesha. The duo’s popular song with a country twang is accused of unabashedly sampling the melody and harmonica riff from Plaintiffs’ 1978 hit “San Francisco Bay.”

Listen to the songs below and you be the judge.

San Francisco Bay

trademark-infringement-counterfeit-manolo-blahnik-restraining-order.jpgIn a trademark infringement and counterfeiting lawsuit, Manolo Blahnik is asking the court to transfer control of websites selling counterfeit Manolo Blahnik shoes and accessories and to freeze Defendants’ assets and bank accounts. The identities of the defendants and the websites are currently sealed to prevent advanced notice to the accused defendants, who may use the information to transfer or conceal assets. The complaint alleges that Defendants create internet stores by the hundreds and design them to appear to be selling genuine products, while actually selling low-quality counterfeit Manolo Blahnik products to unknowing consumers. “Internet websites like the Defendant Internet Stores are estimated to receive tens of millions of visits per year and to generate over $135 billion in annual online sales.” Manolo Blahnik claims it is forced to file these actions to combat Defendants’ counterfeiting of its numerous USPTO registered trademarks, as well as to protect unknowing consumers from purchasing counterfeit products over the Internet.

Manolo Blahnik asserts that its trademarks are so famous that it has become a fabric of pop culture, whereby its shoes have been featured on many television shows including Sex and the City where Carrie Bradshaw begged a mugger to “take my Fendi handbag, my ring and my watch, but please don’t take my Manolo Blahniks!” Accordingly, Plaintiff does not wish defendants’ websites to steal Manolo Blahnik’s goodwill created over the years with its consumers and requests the Court – without prior notice to defendants – to issue:

(1) a temporary restraining order against Defendants temporarily enjoining the manufacture, importation, distribution, offer for sale and sale of Counterfeit Manolo Blahnik Products; (2) an order temporarily transferring Defendants’ Domain Names to Manolo Blahnik so they can be disabled; (3) an order temporarily restricting transfer of Defendants’ assets to preserve Manolo Blahnik’s rights to an equitable accounting; (4) an order for expedited discovery allowing Manolo Blahnik to inspect and copy Defendants’ records relating to the manufacture, distribution, offer for sale and sale of Counterfeit Manolo Blahnik Products and Defendants’ financial accounts; and (5) an order allowing service by electronic mail and electronic publication at the Defendant Domain Names.

trademark-registration-attorney-ttab-opposition-e-cigarette-flavor-hershey-starbuzz-tobacco.jpgThere’s no smoke, but a federal trademark lawsuit fire is burning between Starbuzz Tobacco and The Hershey Chocolate Company. The trademark lawsuit is in response to Hershey’s Trademark Trial & Appeal Board (“TTAB”) opposition to Starbuzz’s trademark application for Citrus Mist for use on e-cigarette flavored liquids. In the TTAB opposition, Hershey contends that Starbuzz’s Citrus Mist trademark is likely to cause consumer confusion with Hershey’s Citrus Mist® trademark registration covering breath mints and candy. Hershey alleges that “consumers are highly likely to associate [Starbuzz’s] chemical flavorings with the flavors of Hershey’s CITRUS MIST brand candy and mints, and make purchasing decisions based on that association.”

Starbuzz’s lawsuit seeks the court’s determination that its Citrus Mist trademark for e-cig flavoring does not infringe or dilute Hershey’s similar trademark. Starbuzz is already the owner of a federally registered Citrus Mist® trademark for pipe tobacco and flavored tobacco, which it has been using since 2008. Starbuzz reasons that the absence of any instances of actual confusion over the last six years between the parties’ respective Citrus Mist trademarks supports its conclusion that expansion into the related e-liquid market for e-cigarettes would not result in confusion and, thereby, infringement. Additionally, Starbuzz argues that labels of the respective products are “completely different” and easily allow consumers to differentiate between the two products and would not lead to confusion.

Regarding the dilution claim, Hershey would have to show that its Citrus Mist trademark was famous before Starbuzz’s adoption of its Citrus Mist trademark. Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002) (holding that dilution protection extends only to those whose mark is a – nationally recognize household name); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1014 (9th Cir. 2004) (ruling that survey evidence of sixty-five percent of the attitude of people who intended to purchase a new car recognized the NISSAN trademark coupled with promotional expenditures of $898 million during the period 1985–91 were not conclusive to support – as a matter of law – at summary judgment that the NISSAN trademark was famous as of 1991). Starbuzz contends Hershey’s Citrus Mist trademark is not widely recognized by the general consuming public, which in comparison to Hershey’s Kisses® trademark, I would have to agree.

Plaintiff Dennis Morris is a renowned photographer and artist well known for his photographs of musicians and cultural icons. Morris is the owner of all copyrights in photographs he took of musicians Sid Vicious and John Lydon of The Sex Pistols band. Morris filed a copyright infringement lawsuit against artist Elizabeth Peyton and retailer Target for unauthorized use of the photographs in creating derivative artwork reproduced on merchandise sold throughout the United States. A side by side comparison of Morris’ photographs and the accused artwork is provided below:

copyright-infringement-photograph-morris-artist-elizabeth-peyton-sex-pistols.jpgThe complaint seeks unspecified damages, but seeks “disgorgement of each Defendant’s profits directly and indirectly attributable to said Defendant’s infringement of the Subject Photographs” in addition to attorneys’ fees and costs.

To establish copyright infringement, Morris must prove (1) ownership of a valid copyright, and (2) copying by defendants of protectable elements of the work. Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000). Where, there is no direct evidence of copying, the second element requires plaintiff to prove both that the defendants had access to the plaintiffs copyrighted work and that there is substantial similarity of protected expression between the copyrighted work and defendants work. Three Boys Music Corp., 212 F.3d at 481. Morris’ photographs are ubiquitous and a Google image search for “The Sex Pistols” produces the subject photographs in the results. Further, where the accused works are strikingly similar – e.g., reproduction of the artwork from the photographed shirt in the accused work, access may be automatically established. Three Boys Music Corp., 212 F.3d at 485 (even where there is no proof of access, the copyright holder may prove copying by showing that the copyright holder’s and alleged infringer’s works are “strikingly similar.”)

trade-dress-handbag-attorney-trademark-purse-hermes-sued-lawsuit.jpgHermès is a French luxury goods manufacturer whose handbags and purses are highly coveted. Its “Birkin” handbag has become immediately recognizable to millions of consumers (I know because seven out of seven ladies in our office immediately identified the pictured bag as a Birkin) and therefore distinctive, thereby its shape is a registered trademark with the U.S. Patent & Trademark Office. While Birkin Bags have been manufactured using various leather types and textures, its trade dress is defined by “(a) a distinctive three lobed flap design with keyhole shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.” Because each handbag is handcrafted by artisans using the finest leather, prices start at about $6,000 and reach the price of a finely engineered sports car.

Despite the high price of the Birkin Bag, it is generally recognized by consumers due to considerable coverage by the press and its inclusion in story lines of several television shows, including HBO’s Sex and the City. Because of the enormous sales, extensive advertising and promotion, and media coverage, the Birkin Bag’s shape has acquired secondary meaning and developed into a famous trademark. Even the strap/turn and lock/padlock closure is independently famous and the subject of another U.S. trademark registration.

Defendants Emperia, Inc., Anne-Sophie, Inc. and Top’s Handbag, Inc. are accused of being related sister companies in the business of importing and distributing women’s handbags. Defendants are accused of selling infringing knockoff bags to Charming Charlie and JustFab. Despite allegedly receiving cease and desist letters, Defendants continued to expand and sell additional knockoff designs. The suit seeks unspecified damages, but requests that actual damages be trebled, pursuant to 15 U.S.C. § 1117, because defendants intentionally and willfully continued their infringement despite receiving notice of their infringing activity.

copyright-toy-attorney-trade-dress-fairy-spin-master.jpgFlying toy manufacturer, Spin Master, is suing its former technology company and its new business affiliates for allegedly infringing Spin Master’s Flutterbye flying toy fairy’s copyrights and trade dress by selling the competing Starfly fairy. Indeed, the two companies are no strangers to litigation and are currently engaged in a patent infringement lawsuit in Illinois involving remote controlled airplanes and helicopters. Here, Spin Master claims to have introduced the Flutterbye toy in 2013, which fairy doll incorporates a new technology that allows a customer to control the flying fairy using only one’s palm. Spin Master asserts that the Flutterbye received numerous top toy awards and has been a commercial success. The Flutterbye fairy figurine has been copyrighted and several other copyright applications are pending for the flower designs, stardust, and packaging.

Plaintiff alleges that Defendants approached Plaintiff about a possible collaboration to distribute the toy outside of the United States, which Plaintiff declined. Plaintiff contends that “after seeing the success of Spin Master’s Flutterbye fairy toy, and rather than independently creating a distinct product, Defendants Brix, CYI and Rehco together engaged in a plan to create a look-alike flying fairy product in an attempt to unfairly capitalize on Spin Master’s success.” Aside from copying original elements of the toy itself, Plaintiff claims that Defendants use confusingly similar packaging and marketing channels, including similar YouTube commercials.

https://www.youtube.com/watch?v=xC3Som20tBE

DJ-trademark-attorney-music-register-application-name-deejay.jpgDisney’s trademark attorneys sought an extension of time at the U.S. Patent & Trademark Office’s Trademark Trial & Appeal Board while they review their options in legally challenging DJ Deadmau5’s application to register his mouse-head logo. Joel Zimmerman, better known by his Deadmau5 stage name, is a well-known music producer and DJ. For many years, the DJ has used his mouse-head logo on numerous album covers and also worn it as a headdress at his live performances and concerts.

The DJ filed a trademark application at the USPTO to register the mouse-head logo for use on a variety of goods and services including stereo turntables, DVDs featuring music, coffee, beer, clothing, entertainment services in the nature of performances by a musical artist, and even BMX bikes. After a trademark application is filed, if the examining attorney finds a lack of potential confusion with any previously registered or pending trademarks, the application is published for opposition for thirty days. During this opposition window, any person or company that believes it will be harmed by the registration may either file an opposition to the registration or seek an extension of time to oppose the registration. Disney has chosen the latter route while it evaluates its legal options in the next ninety days. Disney is the long time owner of the trademark in mouse ears depicted here, which are incorporated into the ubiquitous hats sold at Disney theme parks.

trade-secret-seminar-bridgeport-cle-milord-speaker.jpgI have the pleasure of speaking tomorrow at Bridgeport Continuing Education’s trade secret seminar, “Prosecuting and Defending Corporate Raiding, Customer Trade Secret, & Employee Mobility Cases.” For a list of the distinguished speakers and topics, click here. To register for the seminar, click here. I will be speaking about the intersection of trade secrets with other forms of intellectual property, including patent, trademarks, and copyrights.

sued-patent-infringement-lawsuit-facebook-morsa.jpgSteve Morsa filed a patent infringement lawsuit yesterday against social networking giant Facebook regarding its “Facebook Ads” advertising services. Morsa alleges he is the inventor and owner of two U.S. Patents, i.e. 7,904,337 and 8,341,020, both entitled “Match Engine Marketing.” The patents generally cover a computer system and method for presenting advertisements based on the user’s geographic location and interaction with a website, and matching the user’s conduct with criteria selected by advertisers. In July of 2010, while his patent applications were pending at the Patent Office, Morsa claims to have contacted Facebook, including Mark Zuckerberg, and advised them that Facebook’s advertising platforms are covered by Morsa’s intellectual property rights in the ‘337 patent. Morsa received no response to his cease and desist letter or his other letters informing Facebook of his start-up company and seeking a business arrangement.

Click here for a copy of the complaint.

Morsa also alleges that Facebook was aware of his ‘040 patent because Facebook’s patent application for an invention titled “Sponsored-Stories-Unit Creation From Organic Activity Stream” refers to and cites Morsa’s patent application titled “Match Engine Marketing: System and Method For Influencing Positions on Product/service/benefit Result Lists Generated by a Computer Network Match Engine.”

patent-attorney-gun-grip-handgun-designs-sig-sauer-lawsuit-infringement.jpgFreed Designs has filed a patent infringement lawsuit against gun manufacturer Sig Sauer alleging infringement of U.S. Patent No. 6,928,764, titled Grip Extender For Handgun. Freed Designs contends that Sig Sauer has infringed its patent by making and selling magazine extenders covered by one or more of the patent’s claims, including magazine extenders for Sig Sauer models P238, P938, and P290.

Freed Designs’ patent covers a grip extender (reference numeral 11 to the right) invention that has a collar configuration so that the bullet magazine can be inserted through the grip extender and locked into the handgun. The bottom portion of the magazine firmly engages the grip extender and is locked into place once the magazine attaches to the handgun. The lower portion of the grip extender is also contoured to provide a comfortable grip for the hand of the user. In its description of one preferred embodiment, the inventor reveals that the grip extender can be made of any hard plastic and easily molded in a single piece.

Freed Designs seeks unspecified monetary damages, but it contends that it is entitled to “damages adequate to compensate for this infringement in an amount no less than a reasonable royalty, together with interest and costs” as provided by 35 U.S.C. § 284. Plaintiff also seeks preliminary and permanent injunctions prohibiting Sig Sauer’s further infringement of the grip extender patent.