If you believed that the “French Dip” sandwich was invented in France, you’d be incorrect. Also, should we stop saying “as American as apple pie” because apple pies were invented elsewhere? Watch the video below (skip the advertisement after five seconds) to learn about the origin of foods that sound foreign, but are not.
Beijing Ciwen Film and Television Production Co., Ltd. is the owner of a Chinese copyright registration for forty episodes of the Chinese language television series, whose title translates to “Fox Volant of the Snowy Mountain,” which was created and filmed in China. When filing a copyright infringement lawsuit in the U.S., a U.S. copyright registration is a prerequisite for works created in the U.S. But when the U.S. joined the Berne Convention on March 1, 1989, the Copyright Act was revised to allow the copyright owner in any foreign work of a country that is also a signatory to the Berne Convention to file suit in a United States District Court without proof of a U.S. copyright registration. Cambridge Univ. Press v. Becker, 863 F. Supp. 2d 1190, 1245 (N.D. Ga. 2012).
Beijing Ciwen alleges that it signed a Copyright Sale Agreement with Bright Media granting it licenses and exclusive rights to the series in territories outside of China for a five-year term, without the right of renewal. The complaint states that Bright Media then entered into an exclusive copyright license agreement with Woodward Management for a non-renewable five-year term for the U.S. and Canadian territories. Beijing Ciwen contends that after the license expired on January 19, 2012, That Woodward Dynasty’s affiliated companies, Defendant U2 Entertainment and Tai Sang Entertainment, entered into a copyright licensing agreement with Dynasty Group to improperly distribute and telecast episodes one through forty of the series. Beijing Ciwen allegedly sent a cease-and-desist letter to defendants that the telecast of the series was without license or authorization and constituted copyright infringement. But to date, defendants have refused to cease broadcasts of the series. The copyright infringement lawsuit seeks unspecified damages against the defendants and an award of Plaintiff’s reasonable attorneys’ fees and costs of the litigation pursuant to 17 U.S.C. § 505.
The case is Beijing Ciwen film and Television Production Co., Ltd., v. New Tang Dynasty, et al., CV13-05978 SVW (C.D. Cal. 2013).
Paris Hilton has teamed up with Parlux Fragrances to release her own perfume line and to also sue Perfection Perfume for trademark, trade dress, and patent infringement, in addition to unfair competition. Paris claims to be a worldwide owner of several trademarks used in connection with clothing, footwear, cosmetics, fragrances and watches. Speaking about watches, Paris was recently sued for patent infringement for allegedly copying watch designer de Grisogono’s patented Novantatre watch design. Back to Paris’ current case, she also claims to be an international celebrity, actress, fashion designer, musician and socialite, which has resulted in sales of millions of bottles of her fragrances. She also owns an incontestable US Patent & Trademark Office trademark registration for her Paris Hilton trademark for fragrances.
Paris contends that she has established a distinctive trade dress in the fragrances’ bottle, namely: “(i) cylindrical-shaped bottles; (ii) clear pink bottles for the women’s fragrance and clear blue for the men’s fragrance; (iii) a vertical black wave design overlaid on the bottle; and (iv) the brand name Paris Hilton written in black, lower case, and cursive font against a silver background.” She also contends to own trade dress rights in beauty products, consisting of (i) black tubes and (ii) the brand name Paris Hilton written in cursive lettering and displayed vertically in metallic pink (for women) or metallic blue (for men).” But we’re not done yet. The complaint also alleges trade dress rights for individual fragrances which includes: “(i) metallic pink (for women) or metallic blue (for men) boxes; (ii) a vertical black wave design overlaid on the box; (iii); and the brand name Paris Hilton written in metallic silver, lower case, and cursive font running vertically up the right side of the box.” Almost finished. And finally, she also claims trade dress rights in the packaging for boxed gift sets comprising: “(i) metallic pink (for women) or metallic blue (for men) boxes; (ii) a vertical black wave design overlaid on the box; (iii); and the brand name Paris Hilton written in silver, lower case, and cursive font running vertically up the right side of the box.”
Paris’ manufacturer, Parlux, is the owner of U.S. Patent No. D518,382, covering the ornamental features of the fragrance bottle, i.e. the transparent cylindrical bottle and cap with a helical pattern continuing around the surface of the bottle. The complaint alleges that defendant’s Los Angeles retail location sold a perfume that infringed the trademarks, trade dress, and design patent. The suit seeks unspecified damages.
Photo agency BWP Media has recently filed over fifty copyright infringement lawsuits against numerous websites alleging posting of infringing photographs. In one case, its attorneys filed a copyright infringement complaint against Crowdgather, the owner of the www.iswintercoming.com website (actually more of a discussion board), where users generate topics and content relating to HBO’s “Game of Thrones” series and/or George R.R. Martin’s novels on which the series is based. The photograph at issue appears to be uploaded by a user to a forum discussing Emilia Clarke’s (Daenerys Targaryen, queen of dragons) love life with Seth MacFarlane, actor/creator of Family Guy and Ted. A screenshot of the discussion forum with the post of the allegedly infringing photograph is shown to the right.
BWP alleges that it is the copyright owner in the subject photograph, although a search of the Copyright Office database shows Pacific Coast News is the owner. Nevertheless, assuming BWP can establish standing to file suit, the complaint is devoid of any allegation that a DMCA takedown notice, pursuant to 17 U.S.C. § 512(c)(3), was sent to Crowdgather’s copyright agent. Under Section 512, a website operator is not liable for copyright infringement if (1) it did not have knowledge of the user-generated infringing content, and (2) as long as it designated a copyright agent to receive takedown notices on a form submitted to the Copyright Office. Even after the website operator receives a takedown notice identifying infringing content, it can avoid liability if it “acts expeditiously to remove, or disable access to, the material.” UMG Recordings, Inc. v. Veoh Networks, Inc., 718 F.3d 1006 (9th Cir. 2013).
Because BWP does not allege that it sent a takedown notice, it instead baldly contends that based on the “totality of circumstances, CROWDGATHER, INC. cannot claim that it is not aware of the widespread infringing activities, including the Infringement(s), on the Website. Such a claim would amount to willful blindness to the Infringement(s) on the part of CROWDGATHER, INC.” The complaint, however, does not appear to provide sufficient information to pass a Rule 12(b)(6) motion to dismiss by baldly claiming “widespread infringing activities” when it can only identify one allegedly infringing picture or accusing Crowdgather of direct infringement when the screen shot shows that a user generated the post bearing the picture. In 2007, the Supreme Court’s Twombly decision stated that under Rule 8(a)(2) a plaintiff’s obligation to provide the grounds for relief “requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007). In 2009, the Supreme Court’s Iqbal decision expanded the application of Twombly to all civil cases. Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009). Thus, a complaint will be dismissed under Rule 12(b)(6) if it fails to meet the Twombly pleading standard. See e.g. Xcentric Ventures, LLC v. Mediolex Ltd., 2012 U.S. Dist. LEXIS 152781, *18-21 (D. Ariz. Oct. 24, 2012) (dismissing copyright infringement claim with leave to amend where defendants likely entitled to safe harbor protection).
Writers and artists Christopher Dickens and Philip Morgenthaler are suing Chill, Inc. for copyright and trademark infringement over release of Chill’s “Vigilante Diaries” web based live action show. Plaintiffs claim they created a dark, graphic comic book story and distinct character titled “Vigilante Project,” wherein the protagonist is a young African American male named Alvin Gentry. No, not the basketball coach Alvin Gentry. This Gentry wears a hoodie and a skull mask covering the lower half of his face and camouflage attire with a sleeveless black undershirt along with fingerless gloves and military gear. Plaintiffs claim to have created a unique alternative to the classic superhero characters of conventional comic books because Gentry lacks any superhuman or preternatural powers.
Plaintiffs also contend that they have used a distinctive trademark as the title of the published comic books and t-shirts where the trademark is “denoted in bold, red letters that have a particular stylized look and feel, specifically all caps, red letters that have a distressed, worn and shredded appearance.” Plaintiffs have also described the character and the Vigilante Project, both through crowd-funding efforts and at comic book conventions, with the tagline “no cape, now cowl, now web, no problem.”
Chill is alleged to be funded by the venture capitalist firm of Kleiner Perkins and William Morris Endeavor talent agency, among others, and claims to be “the web’s premier video distribution platform for entertainment content direct from filmmakers, artists, and comedians.” Variety covered Chill’s crowd-funding approach to producing new episodes, where fans would pay to have the series continue production.
Los Angeles, CA – The Otterbox trademark owner filed four trademark infringement lawsuits against several defendants for allegedly selling Smartphone and tablet cases bearing counterfeit Otterbox trademarks. Plaintiff manufactures protective cases, peripherals and accessories for the iPhone, iPad, iPod, Samsung, HTC and other electronic device and computer manufacturers. Plaintiff is the owner of U.S. Patent and Trademark Office registered Otterbox trademarks, “We’ve Got Technology Covered” trademark, and the “Defender Series” trademark. Plaintiff contends that it has spent millions of dollars in advertising to obtain consumer recognition of its trademarks as a symbol of quality.
Particularly in light of the success of Plaintiffs products, as well as the outstanding reputation they have gained, Plaintiff and its products have become targets for unscrupulous individuals and entities who wish to take a “free ride” on the goodwill, reputation and fame Plaintiff has spent considerable effort and resources to build up in their products and trademarks.
Plaintiff alleges that Defendants own and operate eBay storefronts advertising and selling unauthorized products that infringe its trademarks or bear counterfeit trademarks. One defendant is accused of selling at least $88,000 worth of infringing products.
Los Angeles, CA – Plaintiffs Brandon Hale, David Biagas, and Marcus Boyd filed a copyright infringement lawsuit against Atlantic Recording Corp. and singer Trey Songz, real name Tremaine Aldon Neverson, among others. Plaintiffs claim writing a musical composition entitled “Boomerang”, which was registered with the US Copyright Office. Thereafter, Plaintiff Boyd was hired as a writer for Defendant Atlantic, but he allegedly had to submit his entire music catalog to Atlantic for evaluation. Plaintiffs then contend that Boomerang was provided to Trey Songz and/or his co-authors, who then proceeded to make a derivative work “by changing the musical key of the song and remix[ing] the song to create the infringing work ‘Heart Attack.'”
Plaintiffs contend that infringement was willful and intentional because even though the Defendants attempted to “hide their obvious use of [Plaintiffs’] composition in the infringing work by making minor changes,” the “title of the infringing work was taken from the chorus of Plaintiffs’ composition.” Based on the estimated 500,000 copies sold, Plaintiffs are demanding an accounting of Defendants’ profits and/or Plaintiffs’ actual damages or statutory damages under Section 504 of the Copyright Act, which can be as high as $150,000 per registered work in cases of willful infringement.
https://www.youtube.com/watch?v=4r3MZNCGzVY
Los Angeles, CA – A copyright and trademark infringement lawsuit was filed against Warner Bros. and 5th Cell Media, the creators of the Scribblenauts videogame, by attorneys for Charles Schmidt – creator of the Keyboard Cat meme – and Christopher Orlando Torres – creator of Nyan Cat meme.
Keyboard Cat is a video of Schmidt’s cat, Fatso, wearing a shirt and playing an electronic keyboard with its paws. The meme, which is a communication of ideas or information, has gone viral, receiving over thirty million YouTube hits. Schmidt has registered the video’s copyright with the US Copyright and has two pending trademark applications for the term “Keyboard Cat”, click to see the first trademark application and the second trademark application. Keyboard Cat’s stardom has led to numerous appearances in commercials, including a feature role in a national Starburst candy television commercial.
Nyan Cat is a cartoon character with a cat’s face with a Pop Tarts body, basically a pink frosting sprinkled horizontal breakfast bar with glitter and a rainbow flowing therefrom. The GIF animation has also gone viral and it was the fifth most-watched video on YouTube in 2011, winning the 2012 Webbys’ “Meme of the Year” award. Torres also registered the copyright in the animated GIF with the US Copyright Office, but the complaint incorrectly repeats Keybaord Cat’s copyright registration number. Torres has also filed a trademark application to register the “Nyan Cat” word mark with the US Patent & Trademark Office.
Los Angeles, CA – A’lor International sued numerous jewelry designers, producers and retailers for copyright and trade dress infringement over sales various nautical twisted cable motif jewelry. A’lor filed a summary adjudication motion asking the Court to deem Defendants liable for copyright and trade dress infringement. Defendant Lau filed a motion for partial summary judgment that it did not infringe A’lor’s copyrights and Defendant Miami Lakes filed a motion regarding the trade dress infringement claims, which motions were joined by several defendants.
To succeed on its copyright infringement claims, Plaintiff must show that (1) Plaintiff owns valid copyrights in the Subject Designs; and (2) Defendants infringed on Plaintiff’s copyright. Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140 (9th Cir. 2003). The Court held that A’lor’s copyright registration certificates constituted prima facie evidence of a valid copyright, which presumption of validity defendants were unable to rebut. 17 U.S.C. § 410(c). To rebut the presumption, Defendants argued that the copyrights were invalid because they lack originality. Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003). The Court, however, found that Defendants submitted evidence of pre-existing nautical twisted cable motif jewelry sold by third parties and to provide copyright protection to Plaintiff’s would improperly give Plaintiff a monopoly on nautical rope band jewelry. Nevertheless, the Court found that Plaintiff was entitled to a “thin” copyright in the style of the clasp or other ornaments and panther heads. But once the court subtracted the unoriginal elements and considered only Plaintiff’s original contributions, no copyright infringement could be found because virtually identical copying didn’t exist, the proper infringement test for a “thin” copyright.
Regarding its trade dress infringement claim, A’lor had to show that (1) the trade dress is nonfunctional; (2) the trade dress has acquired secondary meaning, and (3) there is a substantial likelihood of confusion between the Accused Designs and the Subject Designs. See Art Attacks v. MGA Entertainment, Inc., 581 F.3d 1138, 1145 (9th Cir. 2009). “Trade dress” refers to the “total image of a product” and may include features such as size, shape, color, color combinations, texture or graphics. International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993). Because the scope of trade dress protection may be broad, courts exercise particular caution when extending protection to product designs, as granting trade protection to an ordinary product design would create a monopoly in the goods themselves. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir. 1997).
Although the “ACM Awards” trademark is prominently featured on the Academy of Country Music’s website, I was shocked to learn that the Academy only last month filed a trademark application with the US Patent & Trademark Office to register the ACM and the ACM Awards trademarks. Obviously someone has not been reading my article on advantages afforded to USPTO registered trademarks.
Without the benefits of a trademark registration certificate establishing its priority rights, the Academy alleges and must now spend resources proving that it has been using the ACM trademark and ACM derivative marks since at least 1974 in association with services and goods in the country music industry. The Academy also alleges incurring, along with its media partners, expenditures of over $30,000,000.00 over the last 22 years in advertising and marketing the ACM marks, making the trademarks famous.
ACM Records, like a good trademark owner should, filed and obtained a USPTO trademark registration for the “ACM Records” trademark in 2008. If the Academy had previously filed and registered its ACM trademarks, Defendant’s trademark application would probably have been refused registration by the USPTO examining attorney. Instead, the Academy claims that ACM Records filed an opposition with the Trademark Trial & Appeal Board (“TTAB”) in February of 2013, asserting a likelihood of confusion and dilution would arise from the Academy’s application to register “The ACM Experience.” Thus the Academy seeks declaratory judgment to its rights to register and expand the use its ACM family of trademarks.
Los Angeles Intellectual Property Trademark Attorney Blog