Articles Posted in 17200 Unfair Competition

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PRACTICE NOTE: It would have been interesting to see how the Court would have ruled on a motion to dismiss Plaintiff’s trade dress claim. Unfortunately, it was not part of Defendant’s motion. (Read BNA article regarding the viability of website trade dress claims).

Los Angeles, CA – Legaljiffy.com sued rival website based legal document preparation company Legalcpu.com, Inc. for copyright infringement, trade dress infringement, and state unfair competition (details blogged here). Defendant moved to dismiss the copyright infringement claim and the § 17200 unfair competition claim (“UCL”) because Plaintiff did not have a copyright registration and had failed to plead an injury in fact. Further, Defendant moved to strike Plaintiff’s demand for statutory damages and attorneys’ fees under the copyright act (17 U.S.C. § 412). Order available here.

PLAINTIFF’S WEBSITE FRONT PAGE:

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trademark-attorney-kitt-David-Hasselhoff-Knight-Rider.jpgLos Angeles, CA – Wanderlust Media files a trademark infringement and breach of contract lawsuit to prevent a former licensee, Mio Technology, from using KITT’s voice and other deliverables in personal navigation devices (“PND”). Wanderlust licenses and sells certain customized celebrity voices for use in GPS and PND systems. Wanderlust has obtained rights from Universal Studios of certain elements associated with the classic live-action television series entitled “Knight Rider,” including the voice of William Daniels as “K.I.T.T.” – the true star of the show. Sorry David Hasselhoff, but K.I.T.T.’s got the talent, America.

Wanderlust licensed to Mio the navigation voices and other deliverables associated with Knight Rider, including K.I.T.T.’s voice and images. The license was terminated in March 2009 due to alleged non-payment of fees. Wanderlust alleges that Mio did not deny that it owed the fees, but it attempted to negotiate a reduced payment. But after the negotiations failed, Mio was obligated to terminate all use of the licensed deliverables. Mio, however, has allegedly not ceased use of the deliverables, resulting in the instant suit. The case is Wanderlust Media, LLC v. Mio Technology USA Ltd., et al., CV 09-06163 AHM (C.D. Cal. 2009).

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trademark-attorney-budget-blinds-trademark-lawsuit.jpgSanta Ana, CA – Budget Blinds, Inc. (“BBI”) sued Kenneth James, owner of Budget Blinds and Shutters, for trademark infringement and unfair competition under the Lanham Act § 43(a). BBI franchises mobile window covering business in the U.S. and Canada and currently has almost 900 franchised businesses operating under the “Budget Blinds” trade name and service mark. BBI has registered its “Budget Blinds” word mark and stylized mark with the USPTO.

Defendant operates a home décor and windo covering business that competes with BBI and its franchisees. Defendant uses the “Budget Blind” trade name on its website www.budgetblindsandshutters.com. BBI alleges that it sent a letter to Defendant demanding that it cease and desist any further use of the name “Budget Blinds and Shutters,” but Defendant failed to respond. BBI followed up with a second cease and desist letter, but Defendant allegedly also failed to respond to the second letter. The case is Budget Blinds, Inc. v. Budget Blinds and Shutters et al., SACV 09-0933 AG (C.D. Cal. 2009).

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trademark-attorney-restaurant-el-pollo-loco.jpgSanta Ana, CA – El Pollo Loco, Inc. (“EPL”) sued Jacinto & Corona Enterprises, Inc. for trademark infringement, dilution and unfair competition under the Lanham Act § 43(a). EPL operates and franchises restaurants, specializing in pretty tasty grilled chicken, in California, Nevada, Arizona, Texas, Colorado and Illinois. With locations in only six states, EPL may have difficulty showing that its marks are nationally famous, as required by the Trademark Dilution Revision Act of 2006.

EPL owns, amongst others, the following trademarks: (1) a word mark registration for “El Pollo Loco,” which translates to “The Crazy Chicken,” with “Pollo” disclaimed; (2) a word mark registration for “El Pollo Loco Flame-Grilled Mexican Chicken,” with “Flame-Grilled Mexican Chicken” disclaimed; and (3) a composite mark consisting of a chicken head and flames with the words “El Pollo Loco Flame-Grilled Mexican Chicken,” with the words “Pollo” and “Flame-Grilled Mexican Chicken” disclaimed, as shown to the right.

trademark-attorney-el-pollo-loco-mexican-grill.jpgDefendant Jacinto operates a restaurant under the name “El Pollo Mexican Grill” in Santa Ana, California. Jacinto also uses the logo pictured to the left in operating and promoting its restaurant, including on its signs, menus, website and other advertisements. EPL alleges that it has nine of its own restaurants within a five mile radius of Jacinto’s restaurant. EPL has allegedly asked Jacinto to cease its use of the “El Pollo Mexican Grill” mark, but Jacinto has refused. With the words “Pollo” and “Flame-Grilled Mexican Chicken” disclaimed, it will be interesting to see the scope of protection afforded EPL’s trademarks. The case is El Pollo Loco, Inc. v. Jacinto & Corona Enterprises, Inc., SACV 09-959 CJC (C.D. Cal. 2009).

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copyright-lawsuit-invasion-of-privacy-dustin-lance-black.jpgLos Angeles, CA – Oscar® winner Dustin sued starzlife.com (details blogged here) and several individuals for copyright infringement and invasion of privacy over distribution of his sexually intimate photos and video. The Court issued a temporary restraining order against the distribution of the photos and the video. And now, after initially opposing a preliminary injunction, the Defendants have stipulated to the entry of the order (copy available here), which enjoins them from showing or distributing the material. The case is Dustin Lance Black v. Starzlife, Inc. et al., CV 09-05380 RGK (C.D. Cal. 2009).

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UPDATE August 4, 2009: The Court entered a temporary restraining order (copy available here) preventing exhibition or distribution of the photos and video until the preliminary injunction hearing on August 10, 2009.

Los Angeles, CA – In a complaint that reads like a tabloid article (available here), Dustin Lance Black – Oscar® winner for best original screenplay for “Milk” – sued starzlife.com and several individuals for copyright infringement and invasion of privacy over distribution of his sexually explicit pictures and video. Black alleges that in November of 2006, he was in a relationship with Jeffrey Delancy and he observed Delancy holding a small camera and taking photographs during their intimate moment. When Black realized that the photos were of an explicit nature, he asked Delancy to delete the images from the camera, and Delancy complied. Black, however, was unaware that Delancy had also captured their intimate moments on video and downloaded the same onto his computer. The relationship ended soon thereafter.

copyright-lawsuit-invasion-of-privacy-dustin-lance-black.jpgNearly three years after the encounter with Delancy, Black learned of the existence of the sexually explicit video and photos when sample pictures were posted on starzlife.com and perezhilton.com. Black alleges that in 2007, Delancy was living with his boyfriend defendant Michael Lawrence when Lawrence accessed Delancy’s computer and stole an electronic copy of the photos and video. Lawrence then allegedly, out of jealousy, demanded that Delancy delete the photos and video from his computer and stood watch as Delancy did so.

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copyright-attorney-trademark-lawyer-p90x.jpgLos Angeles, CA – Product Partners, LLC sued Costco Wholesale Corporation for copyright and trademark infringement and Lanham Act § 43(a) unfair competition over sales of fitness and weight loss products. Plaintiff sells a P90X® home exercise kit that includes workout routine DVDs featuring a technique called muscle confusion, “which prevents exercise plateauing by varying exercises over days and weeks such that the body has difficulty adapting.” Plaintiff uses its federally registered and incontestable P90X® and Beachbody® trademarks on its DVDs, which are sold on its beachbody.com website. Further, Plaintiff owns several copyright registrations for its variety of DVDs.

Plaintiff purchased allegedly infringing P90X® DVDs from several Costco stores across the country. Plaintiff complains that “despite receiving notice of its infringing activities, Costco has continued to market, sell and distribute counterfeit P90X® DVDs in violation of Plaintiff’s federal copyright” registrations and registered trademarks. The case is Product Partners, LLC v. Costco Wholesale Corporation, CV 09-04990 GW (C.D. Cal. 2009).

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Los Angeles, CA – Akar Studios is an architecture and interior design firm contracted by Defendant Foreign Exchange to develop a general design scheme, architectural designs and construction drawings for three of its clothing stores. Pursuant to a written agreement, Akar allegedly retained ownership of all copyrights in the works. Indeed, Akar states that “Foreign Exchange made no attempt, in the course of the negotiation of the contract, to secure rights to use Akar’s copyrighted works in connection with any other store.”

architectural-copyright-architecture-attorney-lanham-act-akar.jpgAfter the initial three stores were built, Akar alleges that Defendant requested and was provided with proposals by Akar for the design of two additional stores. But the proposals were not accepted. After receiving the proposals, however, Akar asserts that Defendant provided Akar’s copyrighted architectural drawings to other architectural firms, Shubin+Donaldson Architects and Lee+Kim Design, to modify the designs and prepare derivative works for the two additional stores. In addition, Akar alleges that Defendants “affixed their logos and/or stamps to Akar’s Architectural Works and Technical Drawings, passing such documents as their own work, despite knowledge that such documents were prepared by Akar.”

Akar further alleges that after the work had been copied, Foreign Exchange’s representative had Akar execute a “Lien Release” in exchange for final payment. But buried in the release – unbeknownst to Akar – was a transfer of intellectual property rights. In addition to the copyright infringement and Lanham Act claims, Akar asserts breach of contract, fraud, rescission, and §17200 unfair competition claims. The case is Akar, Inc. v. Foreign Exchange, Inc., et al., CV 09-4940 GAF (C.D. Cal. 2009).

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trademark-attorney-rolex-trademark-counterfeiting-trademark-infringement.jpgLos Angeles, CA – Rolex Watch USA, Inc. sued Aaron Gallagher, doing business as rplwatches.com, replwatches.com, and watchreps.com, for trademark counterfeiting, trademark infringement and unfair competition under the Lanham Act § 43(a). Rolex manufactures high-end watches, watch bracelets and related products for men and women, which are sold under the Rolex family of trademarks and several other registered marks.

Rolex alleges that in May of 2006 it discovered Defendant’s watchreps.com website and it was able to shut it down through the website’s Internet Service Provider. Defendant then contacted Rolex’s counsel and attempted to reactivate the website, but Rolex did not receive a response to its settlement demands in return for reactivation. In April of 2009, while Rolex was investigating sales of infringing watches on craigslist.org, it discovered that pictures in the classified ads linked to Defendant’s reactivated watchreps.com website. In response to Rolex’s cease and desist letter, Defendant allegedly stated that Rolex “will have no further problems regarding this issue.” Rolex’s investigator, however, responded to an ad on craigslist.org and received an email from replwatches.com allegedly signed by Aaron. Upon Rolex’s request, the ISP identified the registrant of the website as Aaron Gallagher. When the investigator called to purchase the watch, Defendant allegedly stated that Rolex “was after me…they’re watching me like a hawk.” The investigator received a watch that is allegedly counterfeit and infringes on Rolex’s trademarks. Thus, Rolex determined it was time to file suit. The case is Rolex Watch USA, Inc. v. Aaron Gallagher, et al., CV 09-4646 R (C.D. Cal. 2009).

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trademark-attorney-joes-jeans-brixton.jpgLos Angeles, CA – In a case that may go down in the “OOPS” department, Joe’s Jeans sued Brixton Ltd. for trademark infringement and unfair competition under the Lanham Act § 43(a). Apparently, Defendant was not even on Joe’s Jeans’ radar until Defendant’s counsel sent a cease and desist letter accusing Joe’s of infringing on the Brixton trademark.

Upon receipt of the letter, Joe’s investigated the claims and determined that it allegedly began using the Brixton trademark approximately one year before Defendant’s date of first use. And because neither party registered the trademark with the USPTO, the case is going to boil down to which party used the mark first. Joe’s alleges that it responded to Defendant’s counsel and put Defendant on notice that Joe’s was the senior user of the mark and, in an instant, the hunter became the hunted. As a result, Joe’s now alleges that Defendant’s use of the Brixton trademark constitutes willful and intentional infringement. Pamela Chestek blogs here about other parties battling over senior use and ownership of the Protech mark. The case is Joe’s Jeans, Inc. v. Brixton Ltd, LLC, CV 09-04753 DSF (C.D. Cal. 2009).