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Los Angeles, CA – Godzilla knocked over buildings and stomped its way to the Federal District Court in Los Angeles to file suit against Subway because it’s furious over the use of its image in Subway restaurant commercials, which sandwiches it apparently doesn’t enjoy or endorse. Maybe Megalon, Godzilla’s nemesis, is interested in the gig? Toho Co., the owner of the Godzilla franchise, sued Doctor’s Associates, Inc., the owner of the Subway sandwich empire, for trademark infringement and copyright infringement for use of the Godzilla character in its “Five Dollar Footlong” sandwich commercials. “The commercial at issue, which was created for Subway by advertising agency McCarthy Mambro Bertino, LLC in support of Subway’s ‘Five Dollar Footlong’ sandwich promotion, features Godzilla attacking a Japanese city and then endorsing the sandwich by spreading his hands a foot apart.” The advertising agency is also sued as a defendant.

“At no time did Defendants seek or obtain Toho’s permission or consent to use or feature the Godzilla Character or any substantially or confusingly similar character in the Commercial.” Apparently, when Toho learned of the commercial, it demanded the defendants cease airing the commercial. “Rather, defendants have continued airing the Commercial on popular television programs, including the NCAA Basketball Tournament semi-final and Championship games” and American Idol. The Complaint estimates that the defendants have spent at least $20 million in TV-air-time alone. Toho alleges that Subway has made millions of dollars as a result of the unauthorized commercial use of the Godzilla character and seeks the disgorgement of Subway’s profits and its costs and attorneys’ fees.

WATCH THE COMMERCIAL:

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San Francisco, CA – Trademark attorneys file trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit, on behalf of Levi Strauss & Co., in the Northern District of California, alleging infringement of Levis’ USPTO registered trademarks. Among Levis’ numerous registered trademarks is the famous Arcuate Stitching Design Trademark, which is a distinctive pocket stitching design and “is the oldest known apparel trademark in the United States.” The Arcuate Stitching Design Trademark was first used in interstate commerce in 1873 on clothing products. Levis also owns the Tab Device Trademark “which consists of a small marker of textile or other material sewn into one of the regular structural seams of the garment.” Levis first used the Tab Device Trademark in 1936 on the rear pocket of its pants when a sales manager suggested it to distinguish Levis’ clothing and jeans from those of competitors.

levis-trademark-jeans-attorney.jpgLevis alleges that defendant Jeans City manufactures, sources, markets and/or sells “jeans that diplay designs on the rear pockets that are confusingly similar to [Levis’] Arcuate and Tab trademarks.” The complaint alleges that “Jeans City’s actions have caused and will cause [Levis] irreparable harm for which money damages and other remedies are inadequate. Unless Jeans City is restrained by this Court, Jeans City will continue and/or expand the illegal activities alleged in this Complaint and otherwise continue to cause great and irreparable damage and injury to Levis.” Levis claims that it will be harmed by not being able to use and control use of its trademarks, a likelihood of confusion, mistake and deception created in the minds of consumers, false association between Levis and Jeans City, and loss of goodwill. The complaint alleges the following causes of action: (1) Trademark infringement under 15 U.S.C. § 1114; (2) Federal unfair competition, false designation of origin, and false description under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Federal trademark dilution under the Lanham Act section 43(c), 15 U.S.C. § 1125(c); (4) California dilution and trademark infringement under Cal. Bus. & Prof. Code §§ 14320, 14330, 14335, 14340; and, (5) Unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled Levis Strauss & Co. v. Jeans City USA, Inc., CV08-01639 WHA (N.D. California).

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Irvine, CA – Patent attorneys file patent infringement lawsuit in Los Angeles Federal District Court (Santa Ana Division) to protect Uniloc USA and Singapore’s patent titled “System For Software Registration.” “Uniloc researches, develops, manufactures and sells technology security solutions, including solutions for securing software and other forms of media such as DVD and audio files.” The U.S. Patent & Trademark Office issued U.S. Patent No. 5,490,216 to Uniloc Singapore. “The ‘216 Patent is generally directed to novel systems and methods for securely registering software and other digital media to prevent software piracy.”

The complaint alleges that defendant “Macrovision, without license or permission from Uniloc, makes, uses, offers to sell and/or sells software security products and services that infringe one or more claims of the ‘216 Patent. These products and services include, but are not limited to, certain versions of InstallShield and InstallShield Activation Service.” Uniloc alleges that it placed Macrovision on Notice of the ‘216 Patent by correspondence commencing in June of 2004. The case is titled Uniloc USA, Inc., v. Macrovision Corporation, SACV08-00203 DOC (Central District of California).

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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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Glendale, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit to protect Nike, Inc.’s footwear and shoe related trademarks in Los Angeles Federal District Court. Nike has registered numerous trademarks with the USPTO for footwear and clothing. The complaint states that “Nike uses these trademarks on shoes and apparel as trademarks of Nike’s high quality products. Nike sells in excess of $4,500,000,000 a year in merchandise bearing distinctive trademarks.”

air-jordan-trademark-attorney-glendale.jpgNike alleges that the two defendants own and transact business on the www.airjordanstore.com and www.air-jordan-store.com websites. Upon determination that the products sold by the defendants were allegedly unlicensed and counterfeit products, Nike filed the lawsuit to “combat the willful sale of unlicensed and counterfeit products (“Infringing Product”), specifically including its core product of sports shoes, bearing Nike’s exclusive trademarks.” The complaint asserts the following causes of action: (1) Trademark infringement 15 U.S.C. § 1114 and 15 U.S.C. § 1125; (2) Unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Lanham Act dilution of famous trademark under 15 U.S.C. § 1125(c); (4) Unfair competition under Cal. Bus. & Prof. Code § 17200 ; and, (5) Dilution California law Cal. Bus. & Prof. Code § 14330. The case is titled Nike, Inc. v. Michael Masjuan, et al., CV08-01889 JFW (C.D. California).

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Beverly Hills, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit against J&B Importers, Inc. to protect Mad Dogg Athletics’ exercise equipment trademark, in Los Angeles Federal District Court, alleging infringement of its USPTO registered trademarks. Mad Dogg Athletics registered its Spinning® trademark for use with “fitness education and traning program for use in connection with indoor cycling via stationary exercise bicycles. Mad Dogg Athletics also registered its Spintech® trademark for use on “stationary exercise bicycles and accessories related thereto, specifically, bicycle cleaning preparations and lubricants.”

The complaint alleges that J&B Importers has used Madd Dog Athletics’ Spintech® trademark on counterfeit bicycle lubricants. Plaintiff alleges that the activities of Defendant “constitute willful and intentional counterfeiting.” The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. §§ 1114; (2) Federal unfair competition and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Unfair competition under Cal. Bus. & Prof. Code § 17200 ; and, (4) Constructive Trust Under Cal. Civ. Code § 2224. The case is titled Mad Dogg Athletics, Inc. v. J & B Importers, Inc., CV08-01717 SVW (Central District Of California).

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Los Angeles, CA – Copyright attorney filed a copyright infringement lawsuit in Los Angeles Federal District Court to protect a song from allegedly being copied by musician, singer, actor and comedian Jamie Foxx. In 1999, Plaintiffs, Trace Augcomfar and Marvin Paige, obtained a copyright registration for a musical composition titled “Losing Me In You.” In December, 2005, Jamie Foxx provided the vocals on an album entitled “Unpreditable,” featuring the musical composition entitled “Do What It Do.” The complaint alleges that the “Do What It Do” composition is strikingly similar to the musical composition written by the Plaintiffs in 1999, and the chorus, or musical “hook”, is identical. Plaintiffs allege that Foxx gained access to Plaintiffs’ song through a mutual acquaintance, Conrad Hilton. Plaintiffs contend that Foxx’s infringement was knowing, willful and intentional. Plaintiffs are seeking compensatory damages of no less than $1 million, for an accounting of all gains, profits and advantages of Defendants, and attorneys fees and costs.

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Irvine, CA – Trademark attorneys file trademark infringement, Lanham Act 43(a) unfair competition, and declaratory judgment lawsuit, on behalf of home/garden products manufacturer, in Los Angeles Federal District Court (Santa Ana Division), regarding the Feng Shui USPTO registered trademark. Plaintiff Innovage received a cease and desist letter from the Defendant Style Asia regarding its use of the Feng Shui trademark on its line of home/garden fountains. Style Asia has registered its Feng Shui trademark with the USPTO and threatened Innovage with a lawsuit if it did not cease using the same trademark.

innovage-trademark-product-fountain-garden-home.jpgInnovage did not wait for Style Asia to disturb its harmonious, Zen like use of its Feng Shui trademark and instituted a lawsuit against Style Asia. Innovate alleges that it, and not Style Asia, was first to use the Feng Shui trademark and despite Style Asia’s trademark registration, Innovage sued for trademark infringement and unfair competition under section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)). The complaint alleges that Style Asia’s use of the Feng Shui trademark “is likely to cause confusion, mistake and deception of the public as to the identity and origin of its own and of Innovage’s goods, causing irreparable harm to Innovage.” The complaint also asserts a California common law unfair competition claim and alleges that Style Asia took advantage of Innovage’s goodwill in the trademark. Innovage also asks the Court to declare that it does not infringe on Style Asia’s trademark and requests the Court order cancellation of the registration at the USPTO. The case is titled Innovage LLC v. Style Asia, Inc., CV08-00310 JVS (Central District California).

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UPDATE 6/17/08: The District Court ordered dismissal of Defendants’ complaint for lack of subject matter jurisdiction, under Fed. R. Civ. Pro. 12(b)(1), because the U.S. Copyright Office had not issued a registration certification at the time the complaint was filed.  Click to learn how jewelry copyright registration protects jewelry designs.

Los Angeles, CA – Copyright attorneys filed a jewelry copyright infringement lawsuit, in Los Angeles Federal District Court, on behalf of Sweet Romance Jewelry Mfg. for copying of protected jewelry designs. In 1997, Sweet Romance authored, as an employer for hire, a jewelry design entitled “Lady Caroline Lorgnette” (the “Work”). The Work was first sold in 1999 through the defendants’ competitors. On March 12, 2008 – only recently – Plaintiff submitted the Work to the U.S. Copyright Office for registration.

jewelry-copyright-design-jewelry.jpgThe complaint alleges that defendants, which are various entities related to the Home Shopping Network, began manufacturing and selling copies of the Work, which are virtually identical to Plaintiff’s work, except for the name given to the jewelry piece. The complaint alleges that the Defendants’ copies are cheap imitations manufactured in China and instead of the stones being made of Czech crystal, as represented on the Home Shopping Channel, the “stones” appear to be plastic or other inferior materials. (SIDE NOTE: If that is the case, it’s puzzling why the Plaintiff does not include a false advertising/unfair competition claim under the Lanham Act). The complaint continues that the defendants’ copy of the work is allegedly not sold in California because the high concentration of lead violates California’s strict environmental and safety regulations. Also, plaintiff alleges that Defendants had access to copies of the Work because they were involved in negotiations to market plaintiff’s work. The complaint seeks damages under 17 U.S.C. § 504. The case is titled: Cosmetic Ideas, Inc. v. IAC/Interactivecorp, CV08-02074 R (C.D. California).

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