Articles Posted in 17200 Unfair Competition

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Los Angeles, CA – Purse and handbag designer Linea Pelle, Inc. filed a trade dress infringement and unfair competition lawsuit against Sabina Handbags & Accessories, Inc. In 2006, Plaintiff alleges that it created the “Dylan Collection” of handbags that “incorporates certain unique and distinctive designs, ornamentation and embellishments that, as a whole, have become the iconic and signature look of the Dylan Collection,” which it defines as follows:

trade-dress-attorney-trade-dress-lawyer-purse-handbag-linea-pelle.jpgSound like a square peg in a round hole? Assuming Plaintiff can establish secondary meaning before the infringement began, the definition sounds like a constrained extension of trade dress law. Why not seek design patent protection and avoid the challenges of establishing trade dress rights? But I digress. Plaintiff’s purse incorporating the alleged trade dress is pictured below.

trade-dress-purse-handbag-linea-pelle.jpgDefendant’s accused product is pictured below.

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trademark-rorion-gracie-jiu-jitsu-trademark-infringement.jpgLos Angeles, CA – Rorion Gracie, the patriarch of the famed Gracie family from Brazil, filed a trademark infringement, Lanham Act § 43(a) unfair competition, and dilution lawsuit against Black Silver Enterprises and Un Mi Lee. Gracie is a 9th degree Red Belt in Brazilian Jiu-Jitsu and has been an owner of the “Gracie Jiu Jitsu” commercial endeavors since opening the first location in Southern California in 1978. In 1997, Plaintiff’s Gracie Gear trademark was registered with the USPTO for use on clothing and related merchandise. On September 20, 2005, Plaintiff received another registration for the mark Gracie for use on clothing.

Ten days after the Gracie trademark registered, Defendant Black Silver filed an application with the USPTO to register its GRACIE mark for use on clothing. The USPTO issued an Office Action refusing to register Black Silver’s proposed mark due to a likelihood of confusion with Plaintiff’s registered trademarks. In October of 2006, Defendant filed petitions to cancel Plaintiff’s trademarks at the Trademark Trial and Appeal Board (“TTAB”), which proceedings are still continuing. Plaintiff alleges that in mid-2009 Defendants demanded payment of $250,000 as a license fee to use the Gracie trademark. As a result, Plaintiff filed the instant action. The case is Rorion Gracie v. Black Silver Enterprises, Inc. et al., CV 09-8273 GW (C.D. Cal. 2009).

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trademark-lawyer-copyright-lawsuit-settlement-agreement-chrome-hearts.jpgLos Angeles, CA – Chrome Hearts, LLC sued clothing and accessories designer Affliction, Inc. for trademark infringement, Lanham Act § 43(a) unfair competition, copyright infringement, and breach of settlement agreement. Chrome Hearts is also in the clothing and accessories business and has registered the “CH Plus” design trademark – depicted herein – with the USPTO for use on several goods and services, including clothing and headwear. Chrome Hearts has also obtained a copyright registration for the cross design as used on jewelry.

In March of 2009, Plaintiff alleges that it discovered Affliction was selling and distributing headwear that had a confusingly similar CH PLUS design trademark. But instead of filing a lawsuit, the parties entered into a settlement agreement in which Affliction agreed to cease and desist from using the CH Plus design mark. In October of 2009, however, Chrome Hearts allegedly discovered that Affliction had not ceased its use of the CH Plus design mark and was continuing to sell products under the infringing mark. The case is Chrome Hearts, LLC v. Affliction, Inc. , CV 09-7780 AHM (C.D. Cal. 2009).

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trademark-attorney-toy-tag-toys-leapfrog-trademark-infringement.jpgLos Angeles, CA – Tag Toys, Inc. (“BBI”) sued LeapFrog Enterprises, Inc. for trademark infringement, trademark dilution, and unfair competition under the Lanham Act § 43(a). Tag designs and manufactures infant and children’s toys that are sold throughout the U.S. under its TAG and/or “TAG THINK & GROW” trademarks, which marks have allegedly been used since 1979. Tag Toys has registered its trademarks with the U.S. Patent & Trademark Office and, because they have been registered for over five years, they have become incontestable.

Tag Toys accuses LeapFrog of using confusingly similar “Tag” trademarks on children’s toys that are marketed through the same channels. Tag alleges that LeapFrog filed a trademark application with the USPTO for its own “TAG” trademark, which application was refused registration by the Trademark Examining Attorney due to the existence of a likelihood of confusion with Tag Toys’ previously registered trademarks. Thus, Tag Toys alleges, LeapFrog was aware of Tag’s senior rights in the mark. The case is Tag Toys, Inc. v. LeapFrog Enterprises, Inc., CV 09-07528 GHK (C.D. Cal. 2009).

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trademark-attorney-jeans-pocket-design-habitual.jpgLos Angeles, CA – Denimxworks, Inc. filed a trademark infringement, Lanham Act unfair competition, fraud, and breach of contract complaint against Laguna Beach Company and its owner, Steve Kim. Plaintiff alleges that it registered its Habitual plus cross design mark in August of 2007 and registered a cross design with the letter “H” used on jeans’ pockets in February of 2006. Although the marks have been registered for less than five years, Plaintiff incorrectly contends that the marks are incontestable under 15 USC § 1065. Plaintiff also asserts a cause of action for trademark dilution despite only spending $1 Million on advertising over the last seven years. It would be very difficult for Plaintiff to meet the requirements of the Trademark Dilution Revision Act of 2006, which limits dilution causes of action to nationally famous marks.

Plaintiff alleges that in 2008, it discovered Defendants were selling clothing bearing infringing trademarks. Plaintiff contacted the Defendants and asked that they cease use of the marks. In May of 2008, in order to avoid litigation, Defendants allegedly agreed in writing to cease use of the mark and Defendant Kim signed a declaration representing that all inventory bearing the marks had been destroyed. Plaintiff contends, however, that Defendants were allegedly exhibiting jeans bearing the infringing trademark at the Project Jean Show in Las Vegas only two months after the date of the declaration. Plaintiff further alleges that Defendants are secretively selling infringing product. The case is Denimxworks, Inc. v. J.L.J, Inc. et al., CV09-07207 SJO (C.D. Cal. 2009).

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trademark-attorney-copyright-attorney-bump-babies.jpgLos Angeles, CA – Fund Babeez, LLC and its exclusive licensee Bump Babies, Inc. sued Defendants Baby the Bump, Inc., Eve Maternity, and Velva Lyn Stricker for trademark and copyright infringement over competing sales of maternity clothing. Plaintiff Fund Babeez owns a USPTO registered “[Bump] Baby Under Manufacturing Process” trademark and uses several other [Bump] composite marks. A third plaintiff, the individual owner of the companies, has a copyright registration for text and graphics used on maternity clothing.

In 2007, Defendants filed an “intent to use” trademark application to register the allegedly confusingly similar “B.U.M.P…Baby Under Mommy’s Protection.” Plaintiffs sent a cease and desist letter to Defendants putting them on notice of their prior use of the [BUMP] marks. Defendants then amended their application to a “use based” application, allegedly falsely claiming a date of first use in 1996. Also, Defendants allegedly claimed to be “the original BUMP” on their website. Defendants are also accused of copying Plaintiffs’ copyrighted designs. Plaintiffs have also sued Defendants for libel for the purported statement to Plaintiffs’ retail customers that “She [individual plaintiff] had copied [Defendant] only changing the phrase a little.” The case is Fund Babeez, LLC v. Baby The Bump, Inc. et al,, CV 09-6747 GHK (C.D. Cal. 2009).

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Los Angeles, CA – Jim Brown, one of the greatest football players of all time, sued Electronic Arts (“EA”) over use of his likeness in the popular “Madden NFL” videogames. Details blogged here. Brown asserted a cause of action for unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), under a theory of false endorsement. He also asserted California common law and Cal. Civ. Code §3344 invasion of privacy claims, in addition to a Cal. Bus. & Prof. Code 17200 unfair competition claim. EA filed a Motion to Dismiss all counts and a concurrent Motion to Strike the three non-federal causes of action. Court’s order available here.

jim-brown-lanham-act-attorney-lawsuit-electronic-arts-madden-football.jpgEA maintained that it did not use Jim Brown’s celebrity persona or likeness in the “Madden NFL” game, but also argued that the First Amendment provides a complete defense to the alleged Lanham Act violation. The Court, citing E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1101 (9th Cir. 2008), agreed that the First Amendment does indeed provide a complete defense to a Lanham Act false endorsement claim. Video games have been found to be a form of expression protected by the First Amendment; thus, the Court used the Rogers’ two prong test to determine if the Lanham Act claim was precluded. Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989).

“The first prong requires that the defendant’s use of plaintiff’s trademark be relevant to the underlying work: ‘the level of relevance must merely be above zero.’ . . . If the first prong is satisfied, the Lanham Act claim is still precluded unless the use explicitly misleads consumers about the source or content of the work.” The Court found that the first prong was met because the games are about NFL football and use of a legendary NFL player’s likeness in a game about NFL football is clearly relevant. The second prong also favored EA because use of Brown’s likeness would not explicitly mislead consumers “into thinking that Brown is somehow behind the game or sponsors the product.” The Court based its analysis on the fact that the video game character doesn’t have Brown’s name on the jersey, nor is Brown’s name or character depicted on the games’ packaging or advertising.

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copyright-attorney-universal-nbc-temporary-restraining-order.jpgLos Angeles, CA – Screenwriters Greg D. Crowder and Tony Freitas sued (complaint available here) NBC Universal and sought a temporary restraining order against the release of the movie “Love Happens,” starring Jennifer Aniston. Since the movie was released last weekend, you can probably guess that Plaintiffs were unsuccessful. Plaintiffs alleged that in 2006 a copy of their screenplay “Truth Tells No Lies” was given to Scott Bernstein, the Vice President of Production for Universal Pictures. Bernstein met with Plaintiff Crowder and allegedly stated that the screenplay was well written but “it was a little dark in tone, and that, if it were rewritten to be a romantic drama or a romantic comedy with a budget in the range of $25-$40 Million, Universal would be interested in producing the film.” On August 2, 2009, Plaintiff Crowder was accused of stealing the “Love Happens” project when he contacted another production company to review the “Truth” screenplay. On August 20, 2009 Plaintiffs registered their screenplay with the U.S. Copyright Office, but waited until a few days before the movie’s release date before moving ex-parte for a temporary restraining order.

Defendants’ opposition to the ex-parte application (copy available here) summed up the eleventh hour filing as follows: “In what can only be described as classic sandbagging, plaintiffs opportunistically waited until the very last moment the day that Love Happens had its premiere, and only three days before its scheduled release in some 1,900 theaters to ambush Universal with a massive set of moving papers, replete with expert declarations and hundreds of pages of exhibits. The gamesmanship evident in this TRO Application filed months after defendant NBC Universal first began advertising the film, and more than six weeks after plaintiffs admit they became aware of facts they cite as the basis for their claim is reason enough for its denial.” Defendants presented evidence of independent creation of the script by two other authors in 2006 that did not have access to the Plaintiffs’ script or have any contact with Bernstein.

The Court’s order (copy available here) sided with the NBC Universal defendants and found that the defendants’ evidence “cast serious doubt on Plaintiffs’ ability to succeed on the merits. . . Indeed, upon careful examination of the competing screenplays at issue, it appears that the two are not at all similar, let alone substantially or strikingly similar. . . Furthermore, while Plaintiffs have based their application for temporary restraining order solely on their copyright claim, their remaining claims appear to similarly lack merit.” After the Court’s candid opinion of the Plaintiffs’ case, the Plaintiffs – not surprisingly – immediately dismissed their complaint before Defendants could file an answer. The case was Crowder v. NBC Universal, Inc. et al., CV09-6681 ODW (C.D. Cal. 2009).

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trademark-attorney-nutritional-supplement-longevinex-resveratrol.jpgLos Angeles, CA – Dietary supplement manufacturer Resveratrol Partners sued Jon Mayne, the operator of the www.resveratrolbenefits.com website, for trademark infringement, unfair competition, and trade libel. Plaintiff manufactures a resveratrol dietary supplement sold under the Longevinex trademark. Resveratrol is a well-known phytoalexin (antibiotic produced by plants) that is found in the skin of red grapes and also in red wine. Resveratrol has been shown in scientific studies to extend the lifespan of laboratory animals and demonstrated anti-cancer activity therein. Studies have begun and are continuing with humans, but it’s already being marketed in pill-form as a dietary supplement with those health benefits.

Plaintiff alleges that Defendant maintains the website as a purported product review and evaluation service. Plaintiff contends, however, that the website is sponsored or funded by Plaintiff’s competitors, which competitors are fully aware of the false statements regarding the price or quality of Plaintiff’s Longevinex product. Plaintiff further contends that Defendant’s use of Plaintiff’s Longevinex trademark in the false comparisons constitutes trademark infringement. The case is Resveratrol Partners, LLC v. Jon Mayne, CV 09-6536 FMC (C.D. Cal. 2009).

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Los Angeles, CA – The Wild Wild West. A trademark lawsuit gun fight, a duel, if you will, has ensued between John Rigby & Co. (Gunmakers), Inc. of California and John Rigby & Co. (Gunmakers), Ltd. of United Kingdom. Plaintiff makes rifles, shotguns and ammunition which it markets under the following USPTO registered trademarks: John Rigby & Co., Rigby’s, and JR Est. 1735. Plaintiff has also registered its trademarks in the United Kingdom. Plaintiff and its predecessors have made guns since the 1700’s and allege that “Rigby’s quality and reliability has been such that John Rigby & Co. has received Royal Warrants from five British Monarchs dating from the Eighteenth Century to the present day.” A copy of the complaint is available here.

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Some of Plaintiff’s guns are priced as “Starting at $47,500.” Defendant allegedly sells custom made rifles and shotguns under the John Rigby & Co. and JNO. Rigby & Co marks and have registered the domain name www.johnrigbylondon.com. Plaintiff alleges that Defendants were aware of Plaintiff’s marks, but “deliberately, willfully, and maliciously used the John Rigby & Co. Marks in order to trade on the goodwill that Plaintiff has attained.” The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) False designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) California trademark infringement; (4) Federal and California trademark dilution; and (5) Unfair competition under California Bus. & Prof. Code § 17200. The case is John Rigby & Co. (Gunmakers), Inc. v. John Rigby & Co. (Gunmakers), Ltd., et al., CV09-06429 VBF (C.D. Cal. 2009).