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 three-dimensional skull covered by its copyright registration. 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).

los-angeles-patent-attorney-yoga-mat-towel-lawsuit-yogitoes-v-lululemon.jpgYogitoes LLC is a Los Angeles based developer of yoga related inventions, including Skidless® yoga mats and absorbent yoga towels and mats. Yogitoes is the owner of U.S. Patent No. 6,961,969 (“the ‘969 Patent”) for an invention titled “Absorbent Towel With Projections.” Yogitoes’ patent covers a mat or towel with a liquid-absorbing base created with projections, which projections are made of a material to increase the gripping quality to stop the mat/towel from skidding on the floor. The patent also covers the process of making a mat/towel with these qualities.

In a patent infringement lawsuit filed in Los Angeles, Lululemon Athletica, Inc., the Vancouver-based yoga gear maker, is accused of infringing the ‘969 Patent by making and selling products, including “The Towel Mat,” that fall within the scope of at least Claim 1 of the patent. Just like the metes and bounds describe the property lines of a piece of land, the claims of a patent “define the invention and notify the public of the patent’s scope.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (U.S. 1997). Claim 1 of the ‘969 Patent provides:

A towel for use on a surface, the towel comprising:

trade-dress-attorney-purse-bag-design-patent-hammitt.jpgSeveral purse trade dress infringement lawsuits have been filed in Los Angeles over the last couple of years (see Linea Pelle lawsuit, Marc Jacobs lawsuit, and Givenchy lawsuit) as designers try to protect their handbag designs from being copied. With a little bit of careful planning and foresight, designers can avoid having to provide constrained definitions for the non-functional and protectable features of their designs, in addition to proving consumer’s recognition of the trade dress as an indicator of source, i.e., capable of distinguishing one company’s product from another’s. Although the purse’s structural design is not entitled to copyright protection, designers may obtain design patents to protect the aesthetic design features of their purses.

Hammitt appears to have no design patent protection and is attempting to assert an ambiguous trade dress infringement and unfair competition claim against TJ Maxx, designer Patricia Nash and her company Me & You Accessories, Inc. Judging from the absence of some crucial information from the complaint, including a picture of the accused infringing purse, the length of time the purported trade dress has been used, sales volume, etc., the complaint appears ripe for a motion to dismiss. Indeed, the definition of the trade dress itself appears to be overbroad and ambiguous:

HAMMIT® products are easily identified by its unique silhouettes and use of hardware, one of the most well recognized of which features Hammitt’s signature rivets, which appear in linear patterns along the sides, trimmings, and/or handles of the product (hereinafter “Signature Rivet Trade Dress”). The rivets of Hammitt’s Signature Rivet Trade Dress are the same size and each rivet is separated with the same amount of space on all goods with which said trade dress is utilized.

fashion-apparel-trademark-attorney-infringement-design-hermes-homies.jpgFashion designer brotherly love – or hate – is demonstrated through a trademark infringement, trade secret misappropriation, unfair competition, intentional interference with contractual relations, defamation, libel, and slander lawsuit between brothers Brian Lictenberg and Christopher Lichtenberg and their respective companies. Brian alleges to be a successful designer and his designer parodies, substituting “Homiés” for “Hermés” and “Bucci” for “Gucci,” have become his claim to fame. Besides being possibly offensive to residents of South Central, depicting a man standing next to a broken down pick-up truck, it’s surprising that he hasn’t been sued for at least trademark dilution by these famous brands. Back to the regularly scheduled programming, this is not the first intra-family trademark infringement and trade secret misappropriation lawsuit.

This lawsuit, however, appears to be less about trademark infringement – which claim appears to weak – and more about vitriol. Brian claims that Christopher “continues to struggle with alcoholism, depression and various other psychological disorders, that have contributed to Christopher’s actions which have given rise to the causes of action set forth in this Complaint.” What Brian doesn’t realize is that slapping a word and design on the front of a t-shirt does not establish trademark rights. Indeed, this is such a major misconception among clothing designers that the U.S. Patent & Trademark Office has published an advice page on how to avoid merely ornamental refusals: “For example, a slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use. That is, most purchasers of the t-shirts would not automatically think the slogan identified the source of the goods but would view the slogan only as a decoration on the goods.” In other words, if you want the slogan to function as a trademark, put it on the neck label or a hang tag. Thus, judging from the pictures herein, Brian’s trademark – as applied to the neck label – is BLTEE and not “BALLIN PARIS” which appears to be merely decorative. The Homies artwork, on the other hand, may be copyrightable but that’s an issue for another lawsuit, amended complaint, or counterclaim. But if Brian insists that his “Homies” parody is indeed his trademark, he may be opening himself up to a third-party trademark infringement lawsuit by the owner of the USPTO registered Homies apparel trademark.

Brian claims that after an email exchange with Kanye West where the word “Ballin” was used, Brian came up with the idea to create the “Ballin Paris” artwork as a purported parody of the “Balmain” trademark, using a similar font. Brian allegedly disclosed this information to Christopher and because he had “felt sorry for his younger brother’s failing [Alex & Chloe] business,” Christopher had been allowed to sell Brian’s merchandise on consignment as a favor. Christopher is accused of breaching the agreement to pay Brian for the merchandise sold on the Alex & Chloe website. And it’s alleged that Christopher “was a failed fashion and jewelry designer overshadowed by the financial and creative success of Brian” and, as a result, Chris’ “desperation for money caused him to set out to steal the “Ballin” parody design from Brian” and to create various “knock-off merchandise and apparel that look and feel identical to that of Brian’s products and designs.”

copyright-dismiss-prejudice-lawsuit-tv-show-animal-practice-nbc-duckhole.jpgDefendants in questionable infringement cases should rejoice because another judge has dismissed – with prejudice – at the early stages of litigation a copyright infringement lawsuit filed against NBC’s Animal Practice television show. The litigation lasted longer than the seven weeks the show was on the air before being cancelled. Last year, Judge Real also dismissed with prejudice a questionable trademark infringement lawsuit filed by Spearmint Rhino against Chiappa guns for using a rhino logo on a gun, finding that there is no way consumers are likely to be confused by the respective rhino logos on disparate goods and services.

This time Judge O’Connell determined that Paul Andre’s seven-page treatment for PETS, a sitcom set in an after-hours veterinary clinic, could not maintain a copyright infringement claim despite despite an opportunity to file a First Amended Complaint. The Court took judicial notice of common elements of a veterinary hospital, including an operating room, examining room, a lobby, and pets, and also took judicial notice of the tone that is common to comedic television shows, such as the pace and romantic relationships. If “the copyrighted work and the alleged infringement are both before the court, capable of examination and comparison, non-infringement can be determined on a motion to dismiss.” Christianson v. West Pub. Co., 149 F.2d 202, 203 (9th Cir. 1945).

The Court found that the elements alleged by Andre were too generic to be protectable and are scenes a faire flowing from an animal hospital. Funky Films, v. Time Warner Ent., 462 F.3d 1072, 1081 (9th Cir. 2006) (holding that there was no protection for similar plots involving “the family-run funeral home, the father’s death, and the return of the ‘prodigal son,’ who assists his brother in maintaining the family business”). The Court found that Animal Practice and PETS had distinct plots without any similarity, “much less substantial similarity, between any expressive elements in the works.” In PETS, the characters worked in an after-hours clinic in L.A. that was always strapped for cash and had interwoven courtroom scenes describing how the pets were injured. In Animal Practice, the characters worked at a NY city hospital catering to the wealthy and focused more on the relationships of the staff and owners than the pets. Thus, the commonalities between the situations and incidents in the two works “flow naturally from [the] basic plot premise” of a television show about an animal hospital. Berkic v. Crichton, 761 F.2d 1289, 1293 (9th Cir. 1985). Even two similar story fragments of “a Halloween costume contest for pets at the clinic, and an issue about a pet eating chocolate,” did not provide a basis for substantial similarity because Animal Practice’s expressive details of the story idea was different.

trademark-attorney-selection-process-cars-strong-trademarks.jpgConsumer reports, through Yahoo, has an informative and interesting article on the trademark selection process for cars. It correlates well with my article on selecting a strong and enforceable trademark for your goods and services. The process begins with numerous proposals that are whittled down to the top few, which are then researched by a trademark attorney and clearance provided. Luckily for some car companies, however, some ill advised trademarks are still avoided – like Lafayette instead of the Ford Mustang. I don’t believe the “Lafayette” would evoke the same impression of freedom and speed as the “Mustang” associated with the pictured vehicle from Ford’s website. But then again, some companies did not read my advice and used the Nova trademark on cars, which means “it doesn’t go” in Spanish. Not a great trademark or message for a car, Chevrolet.

copyright-infringement-movie-bullet-film-funimation-lyon.jpgProducers of the “Bullet” movie will attempt to dodge a lawsuit filed by Nicholas Lyon for copyright infringement, breach of contract, breach of covenant of good faith and fair dealing, promissory fraud, intentional interference with contractual relations, and unfair competition. Lyon contends that he entered into an agreement with American United Media and SC Films International to develop and produce the Bullet motion picture based on a script written by him, which script he intelligently registered with the U.S. Copyright Office. Writers, do not, I repeat, DO NOT, file your script with the WGA instead of the Copyright Office. Click here for a detailed explanation. Venting aside, the complaint alleges that Lyon was to receive “A Nick Lyon Film” credit on all posters, DVD covers and advertisements for the motion picture, in addition to receiving 30% of net receipts.

Lyon alleges that merely two days after execution of his agreement, American United Media and FUNimation entered into a deal memo for AUM to “produce and deliver” the motion picture, without any mention of Lyon’s rights, and granting FUNimation 50% equity in the movie. After this purportedly secret agreement was signed, plaintiff alleges that he was falsely convinced to assign his script’s copyrights to Bullet Film Production LLC, which LLC is owned by AUM, FUNimation, and SC Films to the exclusion of Lyon. Lyon alleges that the LLC’s operating agreement violates his agreement which prohibited AUM from entering into any agreement which would impair, interfere, or conflict with the terms of his agreement.

Once shooting began, Lyon contends that he was provided an “Agreement for Directing Services” by the LLC and not afforded an opportunity to consult with an attorney before execution. Instead, he was informed that if he did not immediately sign the agreement, production would be terminated. Lyon also contends that he never received an explanation regarding why he was omitted from ownership of the LLC and was not compensated for his services. Further, Lyon has become aware that the motion picture is being edited by a third party and is being readied for distribution, despite assurances that it had been vaulted while the legal issues are pending. Lyon is seeking unspecified damages.