Articles Posted in Lanham Act 43(a) – 15 USC 1125

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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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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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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-lawsuit-mexican-food-poquito-mas-taco-bell.jpgPoquito Mas Mexican restaurant is going mano-a-mano against Taco Bell over the latter’s use of the “Live Mas” trademark and service marks on its restaurants, food, and beverages. Founded in 1984, Poquito Mas has more than ten restaurants in California and differentiates itself by selling high quality food, always using the freshest ingredients and freshly made salsas. It also has several USPTO registered for its family of MAS trademarks including Poquito Mas, The Mas, and Mucho Mas, among others. Because most of its trademarks have been registered for over five years, the trademarks have become incontestable per 15 U.S.C. § 1065.

Plaintiff alleges that in January of 2012, Taco Bell contacted Poquito Mas in an attempt to license the “Mas” trademark to use in its “Live A Little Mas” advertising campaign. After some discussion, however, Poquito Mas declined to license the trademark because it believed Taco Bell’s slogan would diminish the Poquito Mas brand and confuse customers. Shortly thereafter, Taco Bell is accused of launching the “Live Mas” campaign despite its knowledge of the extraordinary fame and strength of the Mas trademarks: “Taco Bell is still actively using, promoting, and otherwise marketing the ‘Live Mas” trademarks with the knowledge and intent that this may cause consumer confusion between Taco Bell and Poquito Mas.” In addition to the trademark infringement claim, Poquito Mas asserts causes of action for false designation of origin and unfair competition under both federal and California law.

Poquito Mas seeks unspecified damages, attorneys’ fees, and costs in addition to preliminary and permanent injunctions prohibiting Taco Bell’s use of the Live Mas marks in its advertising. Further, because Taco Bell’s knowingly infringed the trademarks, Poquito Mas asks the court to triple the damages under the Lanham Act and award punitive damages under state law.

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Trademark-litigation-attorney-surname-golf-cleveland-callaway.jpgIn another example of the problems caused by using your own name as a trademark (e.g., Van Halen trademark lawsuit and Joseph Aboud trademark injunction), Roger Cleveland Golf Company, Inc. and Dunlop Sports Co. Ltd. filed a trademark infringement, unfair competition, and trademark dilution case against Callaway Golf Company. In 1990, Mr. Roger Cleveland, the individual, sold all shares and ownership interest in his eponymous company but remained an employee until 1996, when he joined Callaway. Everything proceeded like a long, straight drive on the fairway until July 2013 when Callaway started using Mr. Cleveland’s name to promote its golf clubs. The picture to the right, taken from Callaway’s website, shows the placement of Mr. Cleveland’s name on the club-head. Even though the clubs may indeed be designed by Mr. Cleveland, the use of the “Roger Cleveland” name may create a false association with or an endorsement by Roger Cleveland Golf Company.

Click here for a copy of the complaint.

Plaintiffs allege that they are the owners of several federally registered trademarks for Cleveland, Trademark Registration Nos. 2,070,054 and 2,070,051, and Cleveland Golf, Trademark Registration No. 3,286,218. Plaintiffs allege:

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Trademark-attorney-preliminary-injunction-adidas-soccer-dilution.jpgAdidas is suing numerous apparel, clothing, and shoe sellers for trademark infringement, unfair competition, trademark dilution, and counterfeiting, including two defendants that previously settled similar allegations and are now accused of breaching the settlement agreement by continuing to sell allegedly infringing sportswear. Adidas is the owner of numerous U.S. Patent & Trademark Office registrations for its famous Three-Stripe trademark including Trademark Reg. No. 2,058,619 for shirts, Trademark Reg. No. 3,029,127 for sweatshirts, jackets and coats, Trademark Reg. No. 2,278,591 for shorts, and Trademark Reg. No. 1,815,956 for shoes, which consumers readily associate with Adidas. The complaint alleges:

adidas recently learned that Defendants are offering for sale and selling apparel bearing counterfeit and confusingly similar imitations of adidas’s Three- Stripe Mark. Specifically, Defendants blatantly have copied adidas’s Three-Stripe Mark to trade off of the goodwill and commercial magnetism adidas has built up in its mark. Defendants’ actions are misleading and confusing the public, diluting adidas’s famous mark, and irreparably harming adidas’s goodwill and reputation. Accordingly, this Court should issue a preliminary injunction.

To obtain preliminary injunction in a trademark infringement case, the plaintiff must show that (1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm in the absence of preliminary relief, (3) the balance of equities tip in its favor, and (4) the injunction is in the public interest. Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 877 (9th Cir. 2009).

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los-angeles-trademark-attorney-infringement-ebay-seller-otterbox.jpgLos Angeles, CA – The Otterbox trademark owner filed four trademark infringement lawsuits against several defendants for allegedly selling Smartphone and tablet cases bearing counterfeit Otterbox trademarks. Plaintiff manufactures protective cases, peripherals and accessories for the iPhone, iPad, iPod, Samsung, HTC and other electronic device and computer manufacturers. Plaintiff is the owner of U.S. Patent and Trademark Office registered Otterbox trademarks, “We’ve Got Technology Covered” trademark, and the “Defender Series” trademark. Plaintiff contends that it has spent millions of dollars in advertising to obtain consumer recognition of its trademarks as a symbol of quality.

Particularly in light of the success of Plaintiffs products, as well as the outstanding reputation they have gained, Plaintiff and its products have become targets for unscrupulous individuals and entities who wish to take a “free ride” on the goodwill, reputation and fame Plaintiff has spent considerable effort and resources to build up in their products and trademarks.

Plaintiff alleges that Defendants own and operate eBay storefronts advertising and selling unauthorized products that infringe its trademarks or bear counterfeit trademarks. One defendant is accused of selling at least $88,000 worth of infringing products.

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Los-angeles-trademark-attorney-lawyer-sue-ACM-TTAB.jpgAlthough the “ACM Awards” trademark is prominently featured on the Academy of Country Music’s website, I was shocked to learn that the Academy only last month filed a trademark application with the US Patent & Trademark Office to register the ACM and the ACM Awards trademarks. Obviously someone has not been reading my article on advantages afforded to USPTO registered trademarks.

Without the benefits of a trademark registration certificate establishing its priority rights, the Academy alleges and must now spend resources proving that it has been using the ACM trademark and ACM derivative marks since at least 1974 in association with services and goods in the country music industry. The Academy also alleges incurring, along with its media partners, expenditures of over $30,000,000.00 over the last 22 years in advertising and marketing the ACM marks, making the trademarks famous.

ACM Records, like a good trademark owner should, filed and obtained a USPTO trademark registration for the “ACM Records” trademark in 2008. If the Academy had previously filed and registered its ACM trademarks, Defendant’s trademark application would probably have been refused registration by the USPTO examining attorney. Instead, the Academy claims that ACM Records filed an opposition with the Trademark Trial & Appeal Board (“TTAB”) in February of 2013, asserting a likelihood of confusion and dilution would arise from the Academy’s application to register “The ACM Experience.” Thus the Academy seeks declaratory judgment to its rights to register and expand the use its ACM family of trademarks.

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halloween-costumes-copyrightable-copyright-trademark-lawsuit-power-rangers-pink.jpgSaban Entertainment originally created the “Power Rangers” live action children’s television series in 1993, where several teenagers would morph from ordinary people into powerful superhero characters wearing color-coded battle suits. The colors also served as each character’s name, e.g. the Pink or Blue Rangers. Plaintiff alleges that the “television series has been immensely popular with young audiences all around the world. To date, it has been broadcast over 19 seasons, spawned two theatrical films, and become a highly valuable merchandising franchise.”

To protect its intellectual property, Plaintiff has copyrighted the artwork and design of the Power Rangers uniforms (“Uniform Copyrights”) and also owns the copyrights in the television series where they are depicted. In addition, Plaintiff has copyrighted the characters in a style guide that is provides to authorized licensees. Further, Plaintiff is the owner of numerous USPTO trademark registrations incorporating the “Power Rangers” word mark and several USPTO registered trademarks for the Power Rangers character images.

Plaintiff accuses Underdog Endeavors, Inc. of advertising and selling Halloween costumes (one image shown here) on its www.mypartyshirt.com site that infringe Plaintiff’s “intellectual property rights relating to the popular ‘Power Rangers’ television series, brand, and related products.” In addition to the copyright and trademark infringement claims, Plaintiff brings causes of action for trademark dilution and unfair competition under Section 43(a) of the Lanham Act.

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