Articles Posted in Trademark Litigation

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Infringement & DMCA Takedown Notices on E-Commerce Platforms Like Amazon

Presented by Milord A. Keshishian, Esq.

Course Description:

Live Webcast – April 30, 2021  (also available on-demand)

  • 10:00-11:00am PT / 11:00-12:00pm MT / 12:00-1:00pm CT / 1:00-2:00pm ET

E-commerce’s rise to dominance has resulted in enforcement of patent, copyright, and trademark rights against sellers on different storefront platforms like amazon.com and walmart.com. To enforce these rights effectively and remove infringing content, an infringement analysis should be performed to avoid lawsuits by the accused.ProLawCLE-e1619636118888-300x82
In such competitive marketplaces, competitors have engaged in frivolous takedown notices to remove the competitors’ listings and effective measures should be instituted to have falsely accused listings and content restored.

 

Click HERE to register*

 

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fortnite-copyright-orange-shirt-kid-trademark-lawsuit-300x229The Orange Shirt Kid sued Fortnite’s creator for copyright and trademark infringement for using his signature “Random” dance moves and catchphrase “It’s also a great exercise move!” in the wildly popular videogame.  The Kid shot to YouTube stardom in 2018 after posting his Random dance video and catchphrase.  Fortnite is a free-to-play video game that generates income from in-game purchases, including avatars performing dances.  The complaint alleges:

Like selling a cheap knockoff, Defendants sold the Random dance in-game and simply renamed it to “Orange Justice.”  However, the Orange Justice and the Random are one and the same.  Indeed, this is made plain by the caption text that accompanies the Orange Justice that is the same as the Orange Shirt Kid’s Catchphrase “It’s also a great exercise move” as well as the name of the emote—“Orange Justice” is an obvious reference to “Orange Shirt Kid.”  Defendants did not credit Orange Shirt Kid nor seek his consent to use, display, reproduce, sell, or create a derivative work based upon Orange Shirt Kid’s Random dance or likeness in Fortnite. Defendants also did not seek his consent to use the Catchphrase in Fortnite.

The Orange Shirt Kid’s lawsuit is the latest in a string of similar suits alleging Fortnite creators copied other people’s dance moves for sale in the videogame.  The complaint references Epic Games, Inc.’s alleged copying of “the Backpack Kid’s ‘Floss’ dance (which is known by the same name in-game)…Alfonso Ribeiro’s performance of his famous dance on The Fresh Prince of Bel-Air television show (named the “Fresh” emote)…and 2 Milly’s ‘Milly Rock’ dance (named the ‘Swipe It’ emote).”

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On August 10, 2018, I have the pleasure of speaking at CLE-picture-300x105Bridgeport Continuing Education’s “What Makes Jurors Tick?” seminar at Hotel Indigo LA Downtown.  I will discuss how to successfully communicate complex and technical information to jurors.  Click here for more information and to register for the seminar.

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House of Lashes is a Southern California beauty company that sells eyelashes, beauty products, and accessories, and is well known in the beauty and eyelash industry.  House of Lashes owns the federally registered ICONIC trademark (Reg. No. 4.839,324) for false eyelashes, adhesives for affixing eyelashes, and artificial eyelashes.  Additionally, House of Lashes has a federal copyright registration for a photograph of its “Iconic” lashes (Copyright Reg. No. VA 1-996-524).  House of Lashes’ ICONIC brand of lashes is one of its most popular products and designs on the market and is sold online as well as in many stores nationwide.  Additionally, House of Lashes alleges that its product’s packaging is inherently distinctive because it is unique in the eyelash industry, and combines elements making it recognizable to consumers without accompanying words.Final-image-273x300

Kiss Nail Products is a competitor in the beauty industry that began selling “Iconic” brand eyelashes on websites and in stores.  On April 24, 2018, House of Lashes sent Kiss Nail Products a cease and desist letter, and the latter responded that it would not be complying with the cease and desist letter and would continue to make and sell “Iconic” branded eyelashes.  Thus, House of Lashes is suing Kiss Nail Products for (1) infringement of registered trademarks (15 U.S.C. § 1114), (2) unfair competition (15 U.S.C. § 1114), (3) false designation of origin (15 U.S.C. § 1125(a)), (4) trade dress infringement (15 U.S.C. § 1125(a)), (5) copyright infringement (17 U.S.C. § 501), (6) registered trademark infringement (Cal. Bus. & Prof. Code § 14335), (7) unfair competition and false designation of origin (Cal. Bus. & Prof. Code § 17200 et seq. and § 17500), and (8) declaratory judgment.

House of Lashes alleges money and time investment in building a loyal fan base and protecting its ICONIC trademark, including a strong social media presence with millions of followers, videos with 18 million views, and estimates over a billion impressions related to their ICONIC brand eyelashes.  House of Lashes argues that the defendant’s purpose in using the Iconic trademark and packaging trade dress is to cause confusion or to deceive customers.  Defendant is also accused of intentionally copying the design, layout, visual presentation, and arrangement in photographs displaying the eyelashes, thereby infringing House of Lashes’ copyright registrations for photographs.

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Morphe, a well-known makeup company, is suing Becca in response to threats Morphe’s new eyeshadow palette’s packaging constitutes trade dress infringement, false designation of origin, and palming off under the Lanham Act.  15 U.S.C. § 1051.  Becca also alleges that Morphe has tortiously interfered with Becca’s contract with Jaclyn Hill, a makeup artist that Morphe now works with.  The palette in question is also a project with Jaclyn Hill, in which she teamed up with Morphe to create a line of eyeshadow palettes.  The first palette was very popular and called “the Jaclyn Hill Palette.”  Morphe and Jaclyn Hill created a second set of palettes called the “Vault” collection.  The announcement generated lots of publicity for Morphe and on Jaclyn Hill’s Instagram, YouTube, and Twitter pages.

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Pictures taken from complaint.

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Morphe’s Vault collection’s packaging design features a white box with a silver background behind the logo and a confetti look with colors and shapes expanding from the center.  The logo features Morphe’s name and Hill’s signature.  More than six weeks after the announcement, Becca sent Morphe a cease and desist letter claiming common law trademark rights to the design.  Becca mentioned their previous contract with Jaclyn Hill and stated that their palette with Hill had extensive use giving them common law trademark rights.  However, Becca provided no federal registration for the packaging and allegedly had not sold, marketed or used the packaging in the U.S. for the last two years.  Becca allegedly is also unable to resume use of this mark due to contractual obligations.

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The Heroes Project is a charitable organization helping veterans with mental, physical, and emotional obstacles since 2009.  The Heroes Project is suing Operation Hero Project for federal trademark infringement (15 U.S.C. § 1114), federal unfair competition/false designation (15 U.S.C. § 1125(a)), common law trademark infringement, and common law unfair competition.  Because charitable organizations are geared to a certain cause, the names or trademarks will sound similar and it is important to distinguish and protect the marks to avoid confusion, especially among donors.

The Heroes Project provides veterans expedition opportunities, community support, and a voice to the world.  The Heroes Project doeslogo this through cycling events and mountain climbing expeditions to places such as, Mount Kilimanjaro, Mount Elbrus, Mount Aconcagua and more.  The Heroes Project’s efforts are featured on many news stations and are also supported by many well-known celebrities and musicians, increasing its popularity.  The Heroes Project has used its mark for charitable fundraising since at least May 2010, including through its website, www.heroesproject.org.  The Heroes Project filed a federal trademark application in 2013, which registered in 2017.

Defendant Operation Hero Project offers similar charitable activities and fundraisers aimed towards veterans.  Operation Hero Project operates a website, operationheroproject.org, as well as a Facebook page under the same trademark.  Operation Hero Project’s activities include climbing excursions, bike rides, golf tournaments and other fundraising events.  Before the lawsuit, Plaintiff alleges it sent a cease and desist letter to Defendant asserting its trademark rights, but Defendant refused to cease use of their mark in April 2018.

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An Instagram media influencer, Nita Batra, along with a class of other Instagram influencers are suing PopSugar for what could be millions of dollars.  Batra runs an Instagram account with over 214,000 followers and a connected lifestyle and fashion blog.  As with many other Instagram influencers, Batra generates revenue through a contract with LIKEtoKnow.it, an app and website that identifies and sells clothes based on screenshots.  The Influencers’ agreement with LIKEtoKNOW.it allows each influencer to monetize the pictures and information they post to their social media sites.  The photographs that they post are linked to LIKEtoKnow.it’s app and website, allowing users to find and buy outfits the influencers wear in their Instagram posts.  Each influencer receives a percentage of the sale price when users buy products through their links.  The profits earned by many influencers with hundreds of thousands of followers can be substantial.  Copyright-Lawsuit-Instagram-Photo-300x300

Batra claims that PopSugar illegally took pictures protected by copyrights of many Instagram influencers, removing the referral links from which they profited, and posting the pictures on PopSugar’s website with new links.  These new links deprived the media influencers of their profits by directing users to ShopStyle, a website then owned by PopSugar.

Batra is suing for violations of the Digital Millennium Copyright Act (17 U.S.C. § 1202) and the Lanham Act (15 U.S.C. § 1125(a)), copyright infringement, violations of the unfair competition law, infringement of the right of publicity, and intentional interference with contract.  This feature allegedly cut into the profits of the media influencers and improperly used their names and likenesses without their permission.  Instead of Batra and other class members receiving their commissions, PopSugar’s company at the time, ShopStyle, would receive the total profit from purchases made.

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trademark-attorney-infringement-vampire-wine-food-taco-yard-house.jpgTI Beverage Group and its attorney, trademark licensor, and co-plaintiff Michael Machat are not drinking at the Yard House and nothing seems to be merry despite the consumption of tacos and alcohol. Plaintiffs appear to have more of an affinity for Vampires than Bram Stoker himself, having registered numerous Vampire related trademarks for beverages, bars, and restaurant services, including Vampire® and Dracula® for wines and Vampire Lounge & Tasting Room® for restaurant and Bar Services. Even Bella Swan doesn’t think this amount of vampire love is healthy, said the star of the Twilight saga. Moreover, Sookie Stackhouse is upstaged by Plaintiffs’ undying love of vampires because Plaintiffs previously sued HBO for trademark infringement for selling TruBlood beverages.

Plaintiffs claim to have recently sniffed out Yard House’s sale of “VAMPIRE TACO” and use of “VAMPIRE STYLE” to excite potential customers about its food and/or beverage offerings. Yard House has also file trademark applications for Vampire Taco and Vampire Style, which are both pending. Plaintiff alleges that if Yard House “is not stopped from marketing food products and restaurants using Plaintiffs’ Vampire Mark or a mark confusingly similar to Vampire, then consumers will likely be confused about the source and origin of defendant’s products and services and mistakenly conclude that defendant’s products or services are produced by, or associated with Plaintiffs…As a result, Plaintiffs’ reputation and goodwill will be impaired.” The complaint seeks unspecified damages, but Plaintiffs intend to disgorge Yard House’s profits, request an award of attorneys’ fees in addition to an injunction prohibiting Yard House’s use of the Vampire trademark.

Click here for a copy of the complaint.

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super-bowl-trademark-attorney-cease-desist-infringement-fair-use.jpgEvery year the NFL’s trademark attorneys aggressively send cease and desist letters to business using the term “Super Bowl,” threatening them with the trademark law equivalent of traumatic brain injury. Even churches are not granted sanctuary from NFL’s trademark and copyright infringement tentacles. Instead of battling for immunity under trademark fair-use laws, many businesses and advertisers engage in vocabulary gymnastics, e.g. Big Game, Super Sunday, to avoid the NFL’s trademark onslaught. The NFL even tried to prevent use of “The Big Game” by filing a USPTO trademark application, but the NFL was forced to abandon its trick-play when numerous colleges and businesses opposed the application. Thus, to avoid legal expenses, many businesses choose to forego the battle. But not Stephen Colbert, whose Superb Owl moniker flies below the NFL’s trademark radar:

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grammy-tickets-unauthorized-trademark-attorney-infringement-copyright.jpgThis is not your ordinary trademark infringement case. It involves Grammy Awards ceremony tickets, allegedly sold by now ex-Recording Academy member and trademark attorney – Matthew Blakely – to alleged swindler and trademark infringer Craig Banaszewski.

The dispute stretches back to 2012 when the Academy informed defendants that tickets to the Grammy awards were private, invitation only events and any unauthorized transfer or sale of the tickets was unlawful, would automatically void the tickets, and the ticket-holders would be deemed trespassers. Defendants complied with the Academy’s take-down requests and the issue appeared resolved.

In 2013, however, attorney Blakely reportedly sold his non-transferable tickets for between $65,000 and $89,500. But when the purchasers were denied entry, they sued Blakely after he refused to refund their money. Blakely informed the Hollywood Reporter that Banaszewski claimed he was obtaining tickets to revive 80’s and 90’s rock bands’ careers and Grammy appearances would be helpful. According to the Hollywood Reporter, “Blakely says he initially declined but then reconsidered after the guy ‘reiterated interest in potentially funding the film projects for Blakely Legal clients.'”

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