Articles Posted in 17200 Unfair Competition

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Los Angeles, CA – Medieval Times USA, Inc. unsheathed its sword and commenced a trademark infringement, Lanham Act false advertising, and unfair competition battle against Alcatraz Media, Inc. Since 1983, Medieval Times has operated Medieval-style castles where it hosts dinner tournaments, complete with a king, a princess, and jousting knights. Although the knights nobly protect the castle, Plaintiff has turned to the USPTO to protect its Medieval Times® trademark through registration.

trademark-attorney-medieval-times-dinner-tournament.jpgDefendant Alcatraz Media is accused of operating numerous websites, including www.medievaltickets.com and www.viptickets.com, which are used to sell tickets to Plaintiffs’ dinner and tournament events. The websites are allegedly designed to confuse consumers into believing they are purchasing tickets directly from Plaintiffs. For example, the websites allegedly have links to separate webpages for each of Plaintiffs’ castles, including images and textual descriptions thereof.

Also, the complaint accuses Defendants of advertising tickets for Plaintiff’s events at artificially inflated prices, and then providing artificial “discounts” from the inflated prices. Including the discount, Plaintiffs allege that consumers are charged more than they would have been charged by Plaintiffs for the same tickets. As a result, Plaintiffs allege that irate customers have demanded – and received from Plaintiffs – refunds after attending the show and realizing they were overcharged. Further, Plaintiffs contend that consumers were sold “upgrades” by Defendants without Plaintiffs’ knowledge or receipt of payment, which Plaintiffs were forced to honor. Additionally, when Defendants no longer have tickets to Plaintiffs’ shows, they have allegedly falsely advertised that the shows were “sold out,” even though tickets were directly available from Plaintiffs. Plaintiffs allege that Defendants know that their conduct is unlawful because they were found liable in a civil action entitled Maid of the Mist Corporation v. Alcatraz Media, LLC, 06-CV-714 ODE (N.D. Ga. 2006), involving Defendants’ similar misconduct. Order available here.

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hair-care-products-trademark-toppik-megathik-lawsuit.jpgLos Angeles, CA – Spencer Forrest sells hair products for balding men and women, which includes the Toppik® product lines and the Xfusion® Keratin Hair Fibers products. Plaintiff claims it has trade dress protection in its product packaging, which trade dress is defined as having “a distinctive white product name on a dark brown cylindrical container about 4 ¾” in height and about 1 11/16″ in diameter, with white lettering and narrow colored band at the bottom of the cap, which features separately and together serve to uniquely identify that Plaintiff’s said products sold in that Trade Dress are from a single source.” Assuming that the features can “separately” function as the product’s trade dress, the defendant’s product does not appear to incorporate the alleged color scheme, both in the script and product’s package color.

Plaintiff’s trademark infringement claim is based on Defendant’s imbedding into meta tags and other uses of the Toppik® mark on Defendant’s website. The use of Plaintiff’s trademark is alleged to surreptitiously drive traffic to Defendant’s website, which increases sales for Defendant’s products. The case is Spencer Forrest, Inc. v. Megathik, Inc., CV09-1876 PSG (C.D. Cal. 2009).

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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. Legaljiffy’s website has provided self-help legal documents since 2008 and is attorney-owned and operated. Defendant allegedly began its website in December of 2005, but has recently changed the look and feel of its website by copying “Legaljiffy’s website, both in look, feel and by content.” Defendant is alleged to have modified its website after Plaintiff declined to enter into a partnership, which partnership offer was intended to add an attorney to Defendant’s ownership group.

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).

PLAINTIFF’S WEBSITE FRONT PAGE:

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Santa Ana, CA – Gun suppressor manufacturer SureFire, LLC filed a false advertising lawsuit, in the Central District of California (Santa Ana Division), against Advanced Armament Corp. (“AAC”), details blogged here. Returning fire, AAC then filed its own false advertising counterclaim (copy available here) alleging that SureFire’s representation that its suppressors could withstand the continuous firing of 1,5000 rounds without failure is false and no tests were conducted to support the statements.

false-advertising-lawyer-silencer-advertisement-surefire-gun.jpgAllegedly on December 23, 2008, AAC agreed not to run its advertisement in exchange for SureFire’s agreement not to seek preliminary injunctive relief. AAC also allegedly agreed to provide SureFire’s counsel with copies of modifications to the advertisement for approval prior to publication. But AAC began running a modified version of the allegedly offensive advertisement without seeking SureFire’s prior approval. As a result, SureFire filed an application for preliminary injunction to prevent publication of the modified version of the advertisement. (Preliminary injunction application is available here).

The modified advertisement contains the same pictures, but includes a statement in “fine print…that the SureFire suppressor was ‘FIRED 580 ROUNDS’ and that the AAC suppressor is ‘UNFINISHED/UNFIRED.'” SureFire contends that its suppressor must have been fired more than 580 times and appears to have been both abused and physically manipulated to create the false impression that it suffered a massive structural failure during normal use.” SureFire also asserts “the claim that SureFire’s suppressors use spot-welds is literally false,” as are claims regarding the strength of AAC’s welds compared to those used by SureFire. SureFire uses a series of redundant “tack” welds – which uses molten filler to strongly join seams between metal pieces – and not the weaker “spot” welds – where pressure and a strong electric current effectively melts two overlapping pieces of metal together at the “spot” of application. The AAC suppressor is produced by “fusion” welds, which do not use metal filler but draw metal from the two parts being joined together. According to SureFIre, “fusion” welds are generally weaker than “tack” welds, thereby rendering false AAC’s claims of greater durability.

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

Los Angeles, CA – In October of 2008, Konami sued Vintage Sports Cards, Inc. in the Central District of California for sales of allegedly counterfeit Yu-Gi-Oh! trading cards (details blogged here). The Court entered a permanent injunction against Vintage and, after taking expedited discovery, Konami discovered that Upper Deck – Konami’s exclusive distributor – was the alleged source of the infringing cards distributed by Vintage.

Upper Deck allegedly was the source of “at least 531,240 counterfeit Rare Cards” provided to Vintage. And in October of 2008, Konami’s attorneys discussed Upper Deck’s role in the distribution of allegedly infringing cards with Upper Deck’s lawyers. During counsels’ communications, Upper Deck’s lawyers allegedly threatened Konami with “mutual assured destruction” through litigation.

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UPDATE 9/25/2009: Court dismisses Jim Brown’s Lanham Act claim with prejudice.

jim-brown-lanham-act-attorney-lawsuit-electronic-arts-madden-football.jpgLos Angeles, CA – Jim Brown, one of the greatest running backs of all time, made a bee-line to the Federal District Court in Los Angeles to file a complaint against Electronic Arts over use of his likeness in the popular “Madden NFL” videogames. (Read the complaint.) Although many are aware of Brown’s achievements on the football field as a running back for the Cleveland Browns from 1957 to 1965, the complaint references Brown’s lesser known lacrosse talents and his induction into the Lacrosse Hall of Fame. Also, the lawsuit claims that Brown’s acting prowess, literary skills, and social activism, make him a widely recognized public figure.

Brown alleges that, unlike today’s NFL players, he never signed away his name and likeness to the NFL Player’s Union because the union didn’t exist during his career, same with videogames. Further, “Plaintiff has never entered into any agreement in which he signed away his rights of publicity and/or likeness to be used in connection with Madden NFL or any other video game produced by Defendant.” As a result of EA’s use of Brown’s likeness in the Madden football video game, Brown asserts causes of action for Lanham Act § 43(a) unfair competition, invasion of privacy, appropriation of likeness Cal. Civ. Code § 3344, and unfair competition in violation of Bus. & Prof. Code §17200. The case is James “Jim” Brown v. Electronic Arts, Inc., CV 09-1598 MMM (C.D. Cal. 2009).

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Los Angeles, CA – No love was lost when Toughlove America, LLC sued Drew Barrymore’s production company (Flower Films, Inc.) and MTV Networks for trademark infringement and Lanham Act § 43(a) unfair competition. In the lawsuit, filed at the Federal District Court in Los Angeles, Toughlove alleges that the Defendants’ new “Tough Love” reality show will infringe its registered Toughlove® trademark.

trademark-lawyer-tough-love-vh1-mtv-lawsuit.jpgPlaintiff complains that its licensor first began using the mark in 1979 and the “Toughlove trademark has grown to symbolize a distinct approach to peer-to-peer, self-help, and psychological counseling programs.” In addition, Plaintiff states that it began developing a Toughlove television show, which it described as a hybrid between “Dr. Phil” and “The View” in its Mach 2007 submission to the Directors Guild.

Defendants’ reality television series, entitled “Tough Love,” is set to air on March 15, 2009. The complaint alleges that the “reality show will be about individuals with romantic relationship problems – the very same types of relationships indicated in [Plaintiff’s] pending Toughlove trademark application and expressly set forth in Toughlove’s concept for its television programs.” Plaintiff alleges that Defendants were notified of Plaintiff’s prior rights, but Defendants have refused to change the name of their show. The case is titled Toughlove America, LLC v. MTV Networks Company et al., CV 09-1521 SJO (C.D. Cal. 2009).

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mexico-trademark-attorney-lawsuit-camaronazo.jpgRiverside, CA – Vista Del Mar Food & Beverages, LLC filed a Lanham Act § 43(a) trade dress infringement, false advertising, and unfair competition lawsuit at the Federal District Court in Riverside. Vista has sold a shrimp tomato cocktail juice under the Camaronzazo trademark since 2006 and uses a label with “images of a glass of the juice surrounded by shrimp against a backdrop of ocean, sky and clouds.”

In 2009, Vista became aware that Defendants were selling Clamato brand shrimp tomato cocktail juice with an allegedly similar design and label. Vista also complains that Defendants’ label has the words “The Original” prominently placed thereon. Vista alleges that Defendants’ representatives informed Vista that the Camaronazo was a great idea, and subsequently began selling Defendants’ product in 2008. As a result, Vista claims that “The Original” statement on Defendants’ label “is false and misleading because Defendants’ product is not the original or the first shrimp tomato cocktail juice.” The case is titled Vista Del Mar Food & Beverages, LLC v. Compania Exportadora De Aguas Minerales, S.A. De C.V. and Distribuidora Anahuac, S.A. De C.V., EDCV 09-217 SGL (C.D. Cal. 2009).

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Los Angeles, CA – Patent attorneys for Minka Lighting shine a spotlight on Defendant’s alleged patent infringement with a lawsuit filed at the Central District of California. Minka is in the business of designing, manufacturing, and selling home products, including ceiling fans. Minka sells the subject ceiling fan under the Como trademark and the U.S. Patent & Trademark Office issued U.S. Patent No. D476,728, entitled “Combination Ceiling Fan And Light Fixture” for the subject design.

lighting-patent-attorney-ceiling-fan-patent-lawyer.jpgDefendant Regency Fans sells a lighted ceiling fan under the Spirit trademark, which is advertised on its website and elsewhere. The complaint alleges that “Defendant, without license from Minka, has sold and offered for sale and is selling ceiling fans to which the patented design of the ‘728 Patent or a colorable imitation thereof has been applied, including without limitation, Regency’s ceiling fan sold under the Spirit mark.” The complaint also incorporates by reference the patent infringement allegations as a basis for its California statutory (Cal. Bus. Prof. Code § 17200) and common law unfair competition causes of action. The case is titled Minka Lighting, Inc. v. Tacony Corporation d/b/a Regency Fan Corporation, EDCV 09-00234 SG: (C.D. Cal. 2009).

PRACTICE NOTE: It appears that the unfair competition claims are merely based on the patent infringement claim and should be dismissed as they are preempted. “Federal patent and copyright laws limit the states’ ability to regulate unfair competition.” Summit Mach. Tool Mfg. Corp. v. Victor CNC Systems, Inc., 7 F.3d 1434, 1439 (9th Cir. 1993). A plaintiff’s state law claim must be “qualitatively different from a copyright or patent infringement claim” or else it is preempted. Id. at 1440.

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Los Angeles, CA – In response to Carroll Shelby’s trademark lawsuit (details blogged here), Factory Five Racing’s attorneys filed a motion to dismiss and set out Factory Five’s version of events, because this isn’t the first lap around the track between the parties. Eight years ago, Shelby sued Factory Five in the District of Massachusetts over the sale of replica kits of the 427 Roadster and Type 65 Coupe. The Massachusetts case settled with an entry of a consent judgment and injunction, wherein Shelby dismissed his claims of trade dress infringement with prejudice with respect to Factory Five’s kit cars, including the 427 Roadster and Type 65 Coupe and Factory Five agreed to refrain from using certain word trademarks. In addition, to avoid future litigation based on trivial alleged violations, the consent judgment contained a thirty-day cure provision after receiving written notice of any alleged violation.

factory-five-carroll-shelby-lawsuit-trade-dress-daytona-cobra.jpgAfter the Factory Five lawsuit, Shelby sued another party, Superformance International, in Massachusetts asserting the Cobra trade dress. Unfortunately for Shelby, he lost on summary judgment and the court found that Shelby did not have any trade dress rights in the Cobra vehicle design.

Similarly, Factory Five’s motion first requests dismissal under the doctrine of res judicata, i.e. the matter has already been judged and cannot be relitigated, because the trade dress claims were dismissed with prejudice. Langton v. Hogan, 71 F.3d 930, 935 (1st Cir. 1995) (“A judgment that is entered with prejudice under the terms of a settlement, whether by stipulated dismissal, a consent judgment, or a confession of judgment, is not subject to collateral attack by a party or a person in privity, and it bars a second suit on the same claim or cause of action.”)

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