photograph-copyright-attorney-playboy-kate-moss-le-book.jpgFor its sixtieth anniversary issue, Playboy commissioned noted fashion photographers Marcus Pigott and Mert Atlas to photograph Kate Moss to grace its cover. The photos have received widespread critical acclaim and praise as instant classics, and Playboy sought to timely register the pictures with the U.S. Copyright Office.

Defendant Le Book’s website bills itself as a leading provider, curator and portal for photography, film, video production and event-related services” for over 50,000 creative professionals, including “the most famous famed photographers, art directors, stylists and model agencies; the most lauded producers, locational finders, photo labs, rental studios, event spaces and caterers; the pre-eminent record labels, magazines, advertising agencies, fashion designers and PR firms.” Playboy alleges that despite Le Book’s sophistication on copyright matters in the industry, Le Book has violated federal copyright laws by posting the infringing Kate Moss photos to its website:

[Le Book has] reproduced, distributed and publicly displayed high-resolution copies of the Playboy cover with Kate Moss and the entire 18 page-spread featuring the photos of Kate Moss in toto, including the entire text and interview with Kate Moss…The brazenness of the infringement is further magnified by the fact that the infringement appears to be the product of direct, high resolution reproduction/scanning of Playboy’s magazine, as even the page numbers therefrom appear in the infringing images…Defendants have not just willfully and directly infringed Playboy’s copyrights; they have also enabled and facilitated countless act of infringement by third parties.

trademark-attorney-lawsuit-mexican-food-poquito-mas-taco-bell.jpgPoquito Mas Mexican restaurant is going mano-a-mano against Taco Bell over the latter’s use of the “Live Mas” trademark and service marks on its restaurants, food, and beverages. Founded in 1984, Poquito Mas has more than ten restaurants in California and differentiates itself by selling high quality food, always using the freshest ingredients and freshly made salsas. It also has several USPTO registered for its family of MAS trademarks including Poquito Mas, The Mas, and Mucho Mas, among others. Because most of its trademarks have been registered for over five years, the trademarks have become incontestable per 15 U.S.C. § 1065.

Plaintiff alleges that in January of 2012, Taco Bell contacted Poquito Mas in an attempt to license the “Mas” trademark to use in its “Live A Little Mas” advertising campaign. After some discussion, however, Poquito Mas declined to license the trademark because it believed Taco Bell’s slogan would diminish the Poquito Mas brand and confuse customers. Shortly thereafter, Taco Bell is accused of launching the “Live Mas” campaign despite its knowledge of the extraordinary fame and strength of the Mas trademarks: “Taco Bell is still actively using, promoting, and otherwise marketing the ‘Live Mas” trademarks with the knowledge and intent that this may cause consumer confusion between Taco Bell and Poquito Mas.” In addition to the trademark infringement claim, Poquito Mas asserts causes of action for false designation of origin and unfair competition under both federal and California law.

Poquito Mas seeks unspecified damages, attorneys’ fees, and costs in addition to preliminary and permanent injunctions prohibiting Taco Bell’s use of the Live Mas marks in its advertising. Further, because Taco Bell’s knowingly infringed the trademarks, Poquito Mas asks the court to triple the damages under the Lanham Act and award punitive damages under state law.

copyright-attorney-trademark-infringement-lawsuit-hello-kitty-sanrio.jpgThe Hello Kitty character has been around for more than fifty years and numerous other related characters and designs have been copyrighted by Sanrio. In fact, Sanrio’s website has a page listing all of its copyrights. Sanrio aggressively protects both its copyrights and trademarks related to the Hello Kitty characters, even suing a children’s beauty pageant organizer for copyright infringement for using the Hello Kitty doll on its tiaras and trophies. Maybe that’s a good thing if you’ve seen how much these beauty pageants charge parents for the illusion of their kid’s success and to prevent exploitation. But more importantly, to prevent the next Honey Booboo from being thrust upon society. To protect myself from such a lawsuit, the image to the right displays some of the characters at issue in this lawsuit and was taken from Sanrio’s website.

Defendants Blink & Blink, Inc. and its officers are accused of selling jewelry and other products that incorporate a cast of Hello Kitty characters: “This case concerns the concerted, systematic and wholesale theft of various world-famous intellectual properties owned by Plaintiff. Defendants are engaged in the manufacture, importation, distribution, promotion, sale and/or offer for sale of bracelets, rings, earrings, necklaces, and other personal accessories, which incorporate unauthorized likenesses of animated or live action characters owned by Plaintiff, including, but not necessarily limited to, Hello Kitty (collectively “Infringing Product”).” The suit seeks unspecified damages, but requests that actual damages be trebled pursuant to 15 U.S.C. § 1117.

The case is Sanrio, Inc. v. Blink & Blink, Inc., et al., CV13-08948 PJW (C.D. Cal. 2013).

trademark-attorney-application-office-action-uspto-refusal-block-register-linsanity.jpgWith Jeremy Lin’s return to New York this week, the epicenter of the 2012 LINSANITY craze, Grantland published an article regarding Linsanity 2.0 and his basketball career with his new Houston Rockets team. Thus, I thought it was a good idea to revisit the status of the Linsanity trademark applications that flooded the U.S. Patent & Trademark Office after Lin’s meteoric rise to pro-basketball fame. A Linsanity documentary chronicling his life has been made for goodness’ sake.

Out of the eleven filed applications, nine have been abandoned because the applicants could not overcome the USPTO trademark attorneys’ refusal to register the name or nickname of a living individual without his consent (15 U.S.C. §1052(c)) or because it creates a false connection with Jeremy Lin (15 U.S.C. §1052(a)). One pending trademark application belongs to Jeremy Lin, who despite his quickness on the court was the last to file a trademark application. The other currently pending application belongs to Andrew Slayton, the proud owner of www.linsanity.com, which he registered two years before the Linsanity craze erupted.

Because Slayton clairvoyantly registered the linsanity.com domain name in July of 2010, almost two years before Linsanity rocketed into the Knicks’ lexicon, he claims that his use predates Lin’s use of the trademark and the Section 2(a) false connection refusal is improper. Good argument, except Slayton bricks – worse than a Dwight Howard free-throw – the next argument by admitting that he registered the domain name and coined the term “to characterize fan Enthusiasm about Mr. Lin” while Lin was playing at Harvard. Slayton’s next argument is an air-ball – worse than a Dwight Howard free-throw – because he claims that “Mr. Lin is not so famous that consumers are likely to associate [Linsanity] uniquely and exclusively with Mr. Lin.” Before he hurt his knee, Linsanity and Lin were synonymous and even sports-averse media and individuals were discussing Lin and Linsanity ubiquitously.

how-to-protect-jewelry-trdemark-patent-copyright-attorney-chan-luu.jpgChan Luu, Inc.’s jewelry trademark infringement, copyright infringement, and unfair competition lawsuit arises from Victoria Emerson’s sales of wrap bracelets. Just this week two different jewelry designers inquired, after receiving cease-and-desist letters, whether jewelry designs were entitled to trademark and copyright protection. After explaining not only are jewelry designs entitled to copyright, trademark and trade dress protection, but also entitled to design patent and possibly utility patent protection, the enlightened jewelry designers recognized the value of obtaining intellectual property protection for their own designs. And now we return to our regularly scheduled programming.

Plaintiff contends that because of its extensive use of the Chan Luu trademark on jewelry, clothing, and accessories, consumers recognize the mark as a source of high quality products. Plaintiff also has several USPTO registered Chan Luu trademarks. In addition, Plaintiff allegedly owns the exclusive trademark rights to its purportedly distinctive curved oval button that serves as the closure for many of the bracelets, which it has used since 2002. Defendants are accused of using the curved oval button trademark in addition to using the Chan Luu trademark, including buying the word mark as an Adword.

The copyright infringement claim, however, is based on Chan Luu’s registration of collections of photographs instead of copyright registrations for the jewelry pieces themselves. Defendants are accused of copying Chan Luu’s product photographs and using the photographs on defendant’s website www.victoriaemerson.com. Plaintiff seeks unspecified monetary damages in addition to preliminary and permanent injunction preventing Defendants’ use of the copyrighted images and the Chan Luu word mark and the oval button trademark.

copyright-attorney-infringement-jewelry-necklace-halloween-von-erickson.jpgPlaintiff, Von Erickson Laboratories LLC, has conjured up a copyright infringement lawsuit that is sure to terrify numerous defendants for allegedly infringing its Halloween themed jewelry. Plaintiff is the owner of several U.S. Copyright Registrations for several pieces of jewelry, including a “stitches necklace,” a “blood drip necklace,” and their derivative works. Plaintiff makes the jewelry by hand by creating a mold from the structure and pouring molten vinyl into the mold, which vinyl can be dyed to any desired color. Plaintiff asserts that none of the defendants had any jewelry pieces remotely resembling Plaintiff’s products prior to Plaintiff’s creation, publication, and distribution of its products.

Defendants M&J Trimming Company and Papillon Accessories allegedly had access to Plaintiff’s designs because they previously ordered the stitches necklace from Plaintiff. Plaintiff contends that defendants’ stitches necklace are identical except for the functional closures. Functional features are not relevant in a copyright infringement analysis because they generally cannot be copyrighted.

jewelry-copyright-attorney-necklace-stitches.jpgFurther, although not identical, Plaintiff asserts that defendants’ blood drip necklace is substantially similar to Plaintiff’s blood drip necklaces.

Halloween-copyright-infringement-attorney-skull-design-cup-spencer.jpgCool Gear filed a copyright infringement lawsuit against Spencer Gifts and Spirit Halloween Superstores for selling cups incorporating Cool Gear’s copyrighted three-dimensional skull. The skull qualifies as a three-dimensional work of visual art and is entitled to copyright protection and registration. Indeed, Cool Gear is the owner of U.S. Copyright Registration No. VA 1-876-232 for the work titled “Three Dimensional Representation of A Skull.” The complaint alleges:

Defendants, without the permission or consent of Plaintiff, have manufactured and sold, and continue to manufacture and sell, a plastic tumbler product with a three-dimensional skull insert that is substantially identical to the Copyrighted Work (the “Infringing Work”). . . In doing so, Defendants have violated Plaintiff’s exclusive rights of reproduction and distribution. Defendants’ actions constitute infringement of Plaintiff’s copyrights and exclusive rights under copyright law.

It seems like Halloween season scares up a new Halloween themed lawsuit every year, including 2011’s Power Rangers Halloween costume trademark and copyright infringement lawsuit. Plaintiff seeks preliminary and permanent injunctions preventing defendants’ sales of the accused cups, in addition to unspecified monetary damages, attorneys’ fees, and costs.

Trademark-litigation-attorney-surname-golf-cleveland-callaway.jpgIn another example of the problems caused by using your own name as a trademark (e.g., Van Halen trademark lawsuit and Joseph Aboud trademark injunction), Roger Cleveland Golf Company, Inc. and Dunlop Sports Co. Ltd. filed a trademark infringement, unfair competition, and trademark dilution case against Callaway Golf Company. In 1990, Mr. Roger Cleveland, the individual, sold all shares and ownership interest in his eponymous company but remained an employee until 1996, when he joined Callaway. Everything proceeded like a long, straight drive on the fairway until July 2013 when Callaway started using Mr. Cleveland’s name to promote its golf clubs. The picture to the right, taken from Callaway’s website, shows the placement of Mr. Cleveland’s name on the club-head. Even though the clubs may indeed be designed by Mr. Cleveland, the use of the “Roger Cleveland” name may create a false association with or an endorsement by Roger Cleveland Golf Company.

Click here for a copy of the complaint.

Plaintiffs allege that they are the owners of several federally registered trademarks for Cleveland, Trademark Registration Nos. 2,070,054 and 2,070,051, and Cleveland Golf, Trademark Registration No. 3,286,218. Plaintiffs allege:

surname-trademark-last-name-infringement-attorney-eponymous-van-halen.jpgEddie Van Halen’s company, ELVH, Inc., has filed suit in Los Angeles federal court seeking damages and a court order preventing Kelly Van Halen, Eddie’s ex sister-in-law, from using the Van Halen surname on her clothing line and merchandise. ELVH alleges that the brothers began using the Van Halen trademark as early as 1978 when they formed the band and have several United States Patent & Trademark Office registered trademarks for Van Halen as used on clothing, printed materials, musical sound recordings, and entertainment services.

The lawsuit appears to be an extension of ELVH’s 2010 opposition proceeding filed with the Trademark Trial & Appeal Board to prevent Kelly Van Halen’s registration of her name as a trademark used on furniture and building construction and management. In the opposition ELVH argues that although it does not provide those exact goods or services, Kelly’s use of the famous last name is likely to confuse consumers into believing there is a license or sponsorship from the famous surname. The lawsuit, however, appears to have been filed when Kelly expanded the use of the last name on clothing, which fashion goods ELVH contends are directly within its prior use domain.

The lawsuit seeks unspecified damages, attorneys’ fees, and costs.

Trademark-attorney-preliminary-injunction-adidas-soccer-dilution.jpgAdidas is suing numerous apparel, clothing, and shoe sellers for trademark infringement, unfair competition, trademark dilution, and counterfeiting, including two defendants that previously settled similar allegations and are now accused of breaching the settlement agreement by continuing to sell allegedly infringing sportswear. Adidas is the owner of numerous U.S. Patent & Trademark Office registrations for its famous Three-Stripe trademark including Trademark Reg. No. 2,058,619 for shirts, Trademark Reg. No. 3,029,127 for sweatshirts, jackets and coats, Trademark Reg. No. 2,278,591 for shorts, and Trademark Reg. No. 1,815,956 for shoes, which consumers readily associate with Adidas. The complaint alleges:

adidas recently learned that Defendants are offering for sale and selling apparel bearing counterfeit and confusingly similar imitations of adidas’s Three- Stripe Mark. Specifically, Defendants blatantly have copied adidas’s Three-Stripe Mark to trade off of the goodwill and commercial magnetism adidas has built up in its mark. Defendants’ actions are misleading and confusing the public, diluting adidas’s famous mark, and irreparably harming adidas’s goodwill and reputation. Accordingly, this Court should issue a preliminary injunction.

To obtain preliminary injunction in a trademark infringement case, the plaintiff must show that (1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm in the absence of preliminary relief, (3) the balance of equities tip in its favor, and (4) the injunction is in the public interest. Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 877 (9th Cir. 2009).