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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 – T-Mobile’s trademark attorneys filed a trademark infringement, Lanham Act unfair competition, and breach of contract lawsuit in Federal District Court in Los Angeles. T-Mobile accuses the defendants of acquiring large quantities of T-Mobile prepaid phones from retail stores such as Wal-Mart and Target, not intending to activate the phones for use on the T-Mobile wireless network. Instead, the complaint continues, the cellular phones are computer-hacked in order to unlock the phones and disable the installed software and then the phones are shipped overseas and sold as new T-Mobile phones which are operable on other cellular telephone networks. Also, T-Mobile alleges that the defendants – in order to overcome the limits imposed by retailers on the number of telephones which may be purchased by one customer – employ “runners” to make multiple purchases of the telephones at different locations.

t-mobile-logo.jpg“Defendants’ conduct, together with that of currently unknown civil and criminal co-conspirators, is causing T-Mobile to suffer millions of dollars in losses and has caused immediate and irreparable injury to T-Mobile and T-Mobile’s trademarks,” the complaint states. T-Mobile subsidizes the price of the cellular telephone and sells it below cost, but recoups the subsidy from profits earned on the sale of the prepaid airtime cards. Thus, the complaint asserts, if the phones purchased by defendants are not activated on the T-Mobile wireless network, T-Mobile is unable to recoup its costs. The T-Mobile phones are also sold subject to terms and conditions which restrict and limit the sale and use of the phones. By unlocking the phones and not activating them on the T-Mobile network, the defendants are allegedly breaching the contractual terms of purchase. The case is titled T-Mobile USA, Inc. v. All Pro Distributing, Inc., et al., CV08-02691 GW (C.D. Cal. 2008).

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A Brea, CA restaurant/bar was sued for copyright infringement in Federal District Court in Los Angeles by copyright attorneys for several recording companies for publicly playing copyrighted music at the restaurant without a license from ASCAP, BMI, or SESAC. The complaint alleges that on January 11, 2008, presumably when their investigator was at Bar 330 in Brea, the three copyrighted musical compositions were publicly played and performed. Plaintiffs assert that the Brea Bar 330 will continue to publicly play and perform these songs unless they are enjoined by the Court.

The complaint alleges that ASCAP, on behalf of the copyright owners, warned the defendants that a copyright license was needed in order to publicly perform the copyrighted music at the restaurant/bar. The defendants, however, allegedly refused to pay for the license and 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 defendants to pay the costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: WB Music Corp., v. Corner Pockets, Inc. , CV08-01955 SVW (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 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 – Patent attorneys for Branan Medical filed a declaratory judgment of invalidity, non-infringement, and unenforceability lawsuit, under 28 U.S.C. § 2201, in Federal District Court in Los Angeles, against Sun Biomedical Laboratories. Sun Biomedical sent a cease and desist letter to Branan Medical accusing its Oratect III Oral Fluid Drug Screen Device, OratectPlus Oral Fluid Drug & Alcohol Screen Device, and Fastect II Drug Screen Dipstick of infringing on US Patent Nos. 6,046,058 and 6,372,516. Branan Medical, fearing that it would be sued for patent infringement, filed the instant declaratory relief action seeking the Court’s ruling on the patents at issue. The case is titled Branan Medical Corporation v. Sun Biomedical Laboratories, Inc., CV 08-01944 MMM (C.D. Cal. 2008)

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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).

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Glendale patent attorneys for Datasec filed a patent infringement lawsuit in Federal District Court in Los Angeles, against DirecTV and Dish Network for allegedly infringing on one or more claims of U.S. Patent No. 6,075,969 (“the ‘969 Patent”). The USPTO issued the ‘969 Patent on June 13, 2000, and is titled “Method for Receiving Signals from a Constellation of Satellites in Close Geosynchronous Orbit.” The patent generally relates to a design for a receiving antenna with nulls in orbital locations where potentially interfering satellites would be located, whereby the small antenna avoids any interference. The complaint alleges that defendants DirecTV and Dish have “infringed the ‘969 patent by practicing the methods claimed in the ‘969 patent in this judicial district and elsewhere in the United States. On information and belief, this infringement will continue unless enjoined by this court.” In addition to the preliminary and permanent injunctions under 35 U.S.C. § 283, the complaint seeks monetary damages and attorneys’ fees.

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The case is titled Datasec Corporation v. DirecTV Corporation, et al., CV 08-02345 CAS (C.D. Cal. 2008).

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Los Angeles, CA – Copyright attorneys for Illume Candles, Inc. filed a copyright declaratory relief of no infringement lawsuit, under 28 U.S.C. § 2201, in Federal District Court in Los Angeles, seeking declaratory judgment of non-infringement on Angela Adams Licensing, LLC’s copyrighted work. On March 31, 2008, Angela Adams’ attorneys sent a letter to Illume accusing copyright infringement of two copyrighted works registered with the U.S. Copyright Office. The accused infringing products are three of Illume’s candle packaging that have a link and chain graphic design. Illume denied that its packaging infringes on Angela Adams’ copyrighted works because it was independently developed and “the accused works lacked the requisite degree of similarity to the registered works to establish a claim of copyright infringement.” Angela Adams was dissatisfied with Illume’s response and enclosed a recent court decision that was favorable to Adams, which led Illume to believe that Adams would enforce its copyrights against Illume. As such, an actual controversy existed between the parties and Illume seeks a declaratory judgment of non-infringement of the copyrights.

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The case is titled Starlume, Inc. v. Angela Adams Licensing, LLC, et al., CV 08-02489 PA (C.D. Cal. 2008)

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Los Angeles, CA – Trademark attorneys for Creative Artists Agency (“CAA”) filed a trademark infringement lawsuit in Federal District Court in Los Angeles against a media/marketing company. CAA is a well known talent agency and has used the registered CAA trademarks for over thirty years. CAA also uses the www.caa.com and www.sports.caa.com as domain names. The trademark, “the logo and the domain names are all used in connection with talent agency services, literary agency services, sponsorship services, marketing and communication services and sports agency services.”

CAA.jpgCAA alleges that the defendants commenced business as CAA-Media in 2003 and “began using the website www.caa-media.com in connection with media buying and media consulting, which is closely related to the services offered by CAA. CAA also continues that defendants “use the designation ‘CAA’ in stylized red lettering, which is nearly identical to CAA’s distinctive mark.” CAA discovered defendant’s use of the allegedly infringing trademark when a CAA employee was informed by a friend that they were hired by defendants CAA-Media. CAA sent a cease and desist letter to defendants which also requested the transfer of the defendants’ CAA domain names. The complaint alleges that instead of ceasing the infringing use, the defendants filed a trademark application with the USPTO for the CAA trademark. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) Federal trade name infringement and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Federal trademark dilution, 15 U.S.C. § 1125(c); (4) Cyberpiracy under 15 U.S.C. § 1125(d); (5) California common law unfair competition; (6) Unfair competition under Cal. Bus. & Prof. Code § 17200; (7) Injunctive relief; and, (8) Declaratory relief. The case is titled Creative Artists Agency, LLC v. Chessen & Associates, Inc. et al., CV08-02309 SVW (C.D. Cal. 2008).

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The Trademark Trial And Appeal Board (“TTAB”) issued a ruling in In re Right-On Co., Ltd., affirming the examining attorney’s refusal to register Right-On’s three trademark applications, covering stitching on the back pockets of jeans, because they were a form of ornamentation and were not inherently distinctive to function as trademarks. Click HERE To Read The Opinion.

jeans-stitching.jpgRight-On filed applications to register as trademarks on the Principal Register the pocket-stitching designs shown to the right for various apparel and garment goods. The focus of the appeal to the TTAB was restricted to jeans only. All three applications were based on a request for extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a) or, in other words, extension to the United States was sought from an international registration. The Examining Attorney refused registration of the pocket-stitching designs because they are “decorative or [] ornamental feature[s] of the goods that are not inherently distinctive and thus would not be perceived as [] mark[s] by the purchasing public without further evidence of acquired distinctiveness.” The applicant, surprisingly, “elected not to attempt a claim of acquired distinctiveness under section 2(f)” but instead appealed the final refusal to the TTAB.

The TTAB judges were not persuaded by the applicant’s argument that other stitching-designs on jeans have been held inherently distinctive and registerable, noting that each case must be decided on its own set of facts. Applicant’s arguments and citations to other allowed trademarks “provides little insight other than to indicate that pocket stitching designs have sometimes been found to be inherently distinctive and sometimes found not to be inherently distinctive.”

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