Articles Posted in 17200 Unfair Competition

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Los Angeles, CA – Trademark and copyright attorneys for Bagdasarian Productions, LLC filed a trademark infringement, copyright infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles to stop sales of allegedly infringing music CDs. “Alvin and the Chipmunks” was originally a music group created by Plaintiff’s predecessor, Ross Bagdasarian, Sr., consisting of three singing animated chipmunks: Alvin, Simon and Theodore. In 1958, Ross authored and copyrighted the words and music to the original musical composition, “The Chipmunk Song,” aka “Christmas, Don’t Be Late.” Also, since 1961, the members of the music group were portrayed as animated characters, first in cartoons and later in CGI form. Plaintiff also owns several USPTO registered “ALVIN AND THE CHIPMUNKS” marks for use on entertainment services, products and a variety of merchandise.

copyright-attorney-in-los-angeles-alvin-chipmunks.jpgIn 2007, a live-action/CGI comedy film entitled “Alvin and the Chipmunks” was released and generated over $350 million in theatrical motion picture box office revenues worldwide, and sold more than 12 million DVDs worldwide. The soundtrack form the film was released as a CD on November 20, 2007, and sold over 880,000 copies. Plaintiff alleges that after the success of the film and music CD, Defendant “St. Clair embarked upon a plan to fabricate a cheap knockoff of the Authorized CD containing 10 recordings, each of which is the exact composition found on the Authorized CD.” The complaint continues, “in order to further [Defendant’s] scheme to deceive the public into believing that its unlicensed album was authorized, endorsed by, associated or affiliated with plaintiff or its licensees, St. Clair entitled the album ‘A Tribute to Alvin and the Chipmunks,’ and . . . used artwork and CD packaging prominently featuring images closely approximating Alvin, Simon, and Theodore and using the Alvin and the Chipmunks trademark (and de-emphasizing the ‘Tribute’) in the same size, color, and typeface of the Authorized CD. The St. Clair CD cover is pictured herein. The case is titled Bagdasarian Productions, LLC v. St. Clair Entertainment Group, Inc., CV 08-07525 FMC (C.D. Cal. 2008).

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Los Angeles, CA – Copyright and trademark infringement lawsuit was filed at the Federal District Court in Los Angeles to prevent sales of allegedly unauthorized sales of Betty Boop merchandise by numerous defendants. Plaintiff Fleischer Studios, Inc. is owned by the heirs of Max Fleischer, the creator of famous cartoon characters – including the well-known fictional Betty Boop character. Plaintiff Hearst Holdings, Inc., through its King Features Syndicate Division, produces and distributes cartoon features and characters in the merchandising business. In 1986, Fleischer entered into an agreement with King Features granting it the exclusive rights to reproduce, distribute and/or license the Betty Boop character in the United States and throughout the world.

copyright-lawyer-trademark-cartoon-betty-boop.jpgBetty Boop first appeared in a “talkartoon” in 1930 titled “Dizzy Dishes” – she is very spry for being almost 80 years old – when the character was known as Betty. A year later, she became known as Betty Boop in the talkartoon titled “Minding the Baby,” which drawings of the character and cartoons – including several others – are all subjects of several U.S. Copyright Registrations. In addition, the character and name are subject to trademark protection and the U.S. Patent & Trademark Office has granted four federal trademark registrations for the Betty Boop word mark on a wide array of merchandise.

Plaintiffs allege that the numerous named defendants – that do not appear to be related in any way – have been selling and distributing merchandise bearing unauthorized depictions of the Betty Boop character and name. The complaint alleges that the infringement is “carried out with Defendants’ full knowledge that such elements are protected by copyright. In doing the acts complained of herein, the Defendants have willfully and intentionally infringed Plaintiffs’ copyrights” and trademark rights. The case is titled Hearst Holdings, Inc. v. Roger Lalwani, et al., CV08-06932 FMC (C.D. Cal. 2008).

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Los Angeles, CA – In a complaint that is filled with as many twists and turns of a spy novel, CJ Environmental filed a trademark infringement lawsuit, at the Federal District Court in Los Angeles, over the use of the term “Cash 4 Gold” by a competing business. CJ alleges that it has operated as a precious metal recycling company since 2005 and has used the mark “Cash for Gold” on its website, which site was created by web designer Michael Scherenberg. Also, CJ alleges use of the “Cash for Gold” and “Cash 4 Gold” marks in various newspaper and media advertisements across the country.

los-angeles-trademark-lawyers-cash-4-gold.jpgThe complaint asserts that Defendant, long after CJ’s first use, created the www.cash4gold.com website using the same designer that CJ had used for its website, Mr. Scherenberg. “At the time Mr. Scherenberg created Defendant’s website, he still had access and control over Plaintiff’s website. On or about August 10, 2007, it is believed that Mr. Scherenberg was instructed by Defendant to remove the ‘Cash for Gold’ link and related image files from the Plaintiff’s website.” After months of back and forth letters among the parties’ lawyers, including take down notices to domain name registrants, this lawsuit was filed. The case is titled CJ Environmental, Inc. v. Cash4Gold, LLC, CV08-06689 R (C.D. Cal. 2008).

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UPDATE 1/10/2010: Court rules that Upper Deck counterfeited Yu Gi Oh! cards. Details here.

Los Angeles, CA – Konami Digital Entertainment, through its trademark attorneys, commenced litigation for trademark infringement, Lanham Act 43(a) unfair competition, and copyright infringement lawsuit against Vintage Sports Cards, Inc. at the Los Angeles Federal District Court. Since 1973, Konami has developed and published popular trading cards, card games, interactive entertainment software products, collectibles and toys. Konami has registered numerous trademarks with the U.S. Patent & Trademark Office, including its word mark and numerous logos.

trademark-litigation-attorney-los-angeles-konami-yu-gi-oh.jpgKonami has created Yu-Gi-Oh!, a Japanese Manga (a form of comics), animation television series and card games. Konami has filed for and received numerous copyright registrations from the U.S. Copyright Office. The game’s rules ascribe a range of powers and relative values to specific cards, wherein “Rare Cards” are highly sought after by players and collectors and have the greatest commercial value. In the United States, Konami sells the game cards through its exclusive distributor, The Upper Deck Company.

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Los Angeles, CA – Trademark attorneys for Mexico’s Club De Futbol America filed a trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit at the Los Angeles Federal District Court against operators of a soccer club using the Club America trademark in the United States. Club America is a professional soccer club formed in 1916 and is one of the most popular soccer teams playing in Mexico’s Primera Division. It has registered with the U.S. Patent & Trademark Office the words “Club America” and its design trademark of a ball with the letters “C” and “A” on either side of the continents of North and South America. Club America also runs a soccer school under its word and design trademarks.

trademark-attorney-mexico-futbol-soccer-club-america.jpgClub Amercia accuses the Defendants of using the Club America trademarks in operating competing soccer training schools, whereby to “the average consumer, there is no way to distinguish promotion or advertising of the Counterfeit Schools from the Authentic Schools.” Defendants are accused of using the website www.clubamericaschool.com to promote the competing soccer training schools under the additional names of “Casa De Deportes,” “Centro De Formacion Club America,” “Club America,” “Club America School,” and/or “America School Professional Soccer Academy.” Defendants are accused of the deliberately infringing and causing confusion by using Plaintiff’s logo on their website, by displaying the team’s official eagle mascot, and having a prominent hyperlink to Plaintiff’s official website. Plaintiff alleges that defendants have failed to comply with three cease and desist letters, thereby forcing the filing of the instant lawsuit. The case is titled Club De Futbol America v. Mike Ochoa, et al., CV08-06563 MRP (C.D. Cal. 2008).

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Los Angeles, CA – Copyright attorneys for Tokyo Broadcasting System (“TBS”) filed a copyright infringement lawsuit at the Los Angeles Federal District Court, accusing American Broadcasting Companies, Inc. (“ABC”) of copyright infringement over its “Wipeout” television show. TBS created and aired its Japanese reality television shows “Takeshi’s Castle,” “Most Extreme Elimination Challenge” (“MXC”), “Sasuke,” “Kunoichi,” “Ninja Warrior” and “Women of Ninja Warrior.” TBS began airing “Takeshi’s Castle” in Japan from 1986 to 1989, which “involves laymen contestants who compete in a variety of silly physical challenges consisting of huge obstacle courses that most of the contestants are expected to fail. The contestants’ failed attempts to complete the challenges often look painful or ridiculous, but mostly they are comical in nature.” In 2003, “Takeshi’s Castle” was aired in the United States under the “MXC” name on the Spike television network.

los-angeles-copyright-attorneys-Takeshis-Castle-mxc.jpgTBS alleges that “Defendants had knowledge of and were familiar with the Shows before Defendants created – using that term loosely – ‘Wipeout.’ Indeed, it is a common custom and practice in the United States television industry to obtain copies of and view television programs (especially popular programs) airing in other countries, including Japan, and several of the Shows were and are broadcast in the United States.” The complaint continues by asserting that “before airing ‘Wipeout’ for the first time, Defendants took steps to ensure that a Google search of the terms ‘Takeshi’s Castle,’ ‘Ninja Warrior’ or ‘MXC’ would result in the Google Searcher being directed to ‘Wipeout on ABC’ as a Sponsored Link.” In addition to the copyright infringement claim, TBS asserts causes of action for California Statutory Unfair Competition under Cal. Bus. & Prof. Code § 17200 and common law unfair competition. The case is titled: Tokyo Broadcasting System, Inc. v. American Broadcasting Companies, Inc., CV08-06550 SJO (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for Asics filed a trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit against Dolce & Gabbana at the Los Angeles Federal District Court. Asics has registered numerous trademarks with the U.S. Patent & Trademark Office for its stripe design having two relatively parallel vertical stripes intersected by two curving stripes connected at one end. Asics has used the stripe design trademark on shoes and apparel – for over forty years – since 1966.

los-angeles-trademark-attorney-shoes-asics-dolce-gabbana.jpgAsics also asserts that it has widely advertised and promoted its products with the stripe design trademark through numerous and diverse advertising media, including print, television and the Internet. Asics’ print advertising is alleged to have the following “look for” advertising: “The stripe design featured on the sides of ASICS shoes is a trademark of ASICS Corporation and is a registered trademark in most countries of the world.”

Asics alleges that Dolce & Gabbana is “selling shoes under its D&G line bearing a mark that infringes ASICS’ famous Stripe Design mark at retail shoe stores and via the Internet.” The complaint continues, on information and belief, that Dolce & Gabbana has “engaged in intentional infringement by designing shoes that include a stripe design that is confusingly similar to ASICS’ famous Stripe Design.” The complaint identifies five different Dolce & Gabbana shoes which bear the allegedly confusingly similar stripe design. The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. § 1114 [Lanham Act §32(1)]; (2) Federal 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) Trademark infringement under California law [Cal. Bus. & Prof. Code § 14320]; (5) Trademark infringement under California common law; (6) Trademark dilution under California law [Cal. Bus. & Prof. Code § 14330]; (7) False advertising under California law [Cal. Bus. & Prof. Code §§ 17500, 17535]; and, (8) Unfair competition under state law [Cal. Bus. & Prof. Code §17200 and §17203]. The case is titled Asics Corporation v. Dolce & Gabbana, CV08-06407 AHM (C.D. Cal. 2008).

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los-angeles-trademark-attorney-playboy.jpgLos Angeles, CA – Trademark attorneys for Playboy commenced trademark infringement litigation, at the Central District Court of California, over the sale of costume jewelry and accessories bearing its trademarks. Playboy magazine has been continuously published since 1953 and is now available in approximately 47 countries. Playboy has registered its trademarks with the U.S. Patent & Trademark Office, and the trademark is used on over 1,500 products that are sold in more than 125 countries, ranging from apparel and jewelry to slot machines and video games.

Playboy has also used its Rabbit Head Design since 1954 and owns at least 1862 trademark registrations in approximately 170 countries. The complaint alleges that “long after Playboy’s adoption and use of Playboy’s Trademarks in connection with products and long after federal registration of Playboy’s Trademarks, Defendants commenced the importation, distribution, advertising, offering for sale and sale of merchandise bearing counterfeits of Playboy’s Trademarks.” In addition to preliminary and permanent injunctions, the complaint seeks unspecified monetary damages. The case is titled Playboy Enterprises International, Inc. v. Axcess, Inc., SACV08-994 JVS (C.D. Cal. 2008).

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copyright-attorney-cards-figurines-los-angeles.jpgLos Angeles, CA – Plaintiffs San Francis Imports and Basevi, through their attorney, filed a copyright infringement, Section 17200 unfair competition, and trade dress infringement lawsuit at the Federal District Court in Los Angeles against NG Figurine Wholesale, WG Trading Corp., and Gary Ngo. The complaint alleges that from 1935 to 1950, Cromo, N.B., an Italian corporation, created artwork with the assistance of numerous artists, which copyrights in the artwork were transferred to and registered by Cromo. In turn, Cromo assigned licensing rights in the United States to Basevi, which license was executed with San Francis.

The complaint alleges that “Defendants, and each of them through its (sic.) employees copied Plaintiff’s (sic.) Holy Cards and caused to be manufactured and offered for sale to the public Holy Cards which is (sic.) not only substantially similar, but is strikingly similar to Plaintiffs’ Holy Cards.” The case is titled San Francis Imports v. NG Figurine Wholesale, CV08-06252 RGK (C.D. Cal. 2008).

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Los Angeles, CA – Plaintiff Stonefire Grill’s trademark attorneys filed a trademark infringement, Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125), and trademark dilution complaint at the Federal District Court for the Central District of California (Los Angeles Division). Stonefire Grill alleges that it began using its “Stonefire Grill” trademarks in 2002 and has obtained a USPTO registration for one of its trademarks and has other applications pending, all of which are for use with bar and restaurant services.

los-angeles-trademark-attorney-restaurant-pizza-08.jpgPlaintiff alleges that Defendants began using the dominant words “Stone Fire” for its business name long after Plaintiff had adopted its Stonefire trademark. Although the trademarks are not exactly the same, Plaintiff alleges that “Defendants’ name and mark are substantially identical in appearance, sound, and connotation to Plaintiff’s STONEFIRE Mark; and, in particular, the dominant words ‘STONEFIRE’ are identical to Plaintiff’s STONEFIRE Mark.” As a result, the complaint continues, “Defendants’ Mark so resembles Plaintiff’s STONEFIRE Mark as to be likely to cause confusion, to cause mistake, or to deceive the consuming public.” The case is titled Stonefire Grill, Inc. v. Stone Fire Pizza, et al., CV 08-06223 AHM (C.D. Cal. 2008).

PRACTICE NOTE: Plaintiff’s website lacks the registered trademark notice (i.e. the “R” in the circle symbol ®) or any notice that it has a USPTO registered trademark for “Stonefire Grill.” It is highly advisable to display the ® symbol with registered trademarks because under 15 U.S.C. § 1111, no damages and no profits shall be recovered unless and until the defendant had actual notice of the registration.