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

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Los Angeles, CA – Larry Flynt took a break from seeking a $5 Billion Government porn bailout to file a trademark infringement and unfair competition lawsuit at the Federal District Court in Los Angeles against his nephews, Dustin Flynt and Jimmy Flynt, II, and Flynt Media Corporation – the company founded by the nephews. The First Amended Complaint alleges that the nephew’s were terminated from their position at Larry Flynt’s company, after which they started a rival company to produce and distribute pornography using a “Flynt” trademark “to trade off and usurp the famous FLYNT name and mark of their uncle.”

los-angeles-trademark-attorney-larry-flynt-surname-family-name-lawsuit.jpgLarry Flynt filed an ex parte application for a Temporary Restraining Order and is requesting a preliminary injunction preventing Defendants’ use of the mark. Defendants have filed their opposition setting forth several arguments, which are not likely to succeed. Defendants first argue technical defects in Plaintiff’s moving papers for failing to comply with the Central District’s Local Rules. The next argument attacks the Plaintiff’s lack of standing to bring federal trademark claims because Larry Flynt has not used the stand-alone FLYNT mark in commerce – as opposed to “Flynt Publications” or “Larry Flynt.” Defendants’ argument ignores the fact that a likelihood of confusion can arise even if the competing marks are not exactly alike. Defendants further argue that Flynt is their family name and they have a right to use it in their business. If your family name is McDonald, do not use your name as a mark for your hamburger joint. Defendants also argue that Plaintiff will not suffer irreparable harm because Larry Flynt’s declaration states that “he will have to help out his nephews when [they fail]” because they are selling substandard products. Thus, Defendants deduce, if no one buys their products because they are bad, there will be no realistic irreparable harm. Finally, Defendants argue that the balance of hardships tips in their favor because they will lose their personal investments in the company and will not be able to raise additional funds with an injunction issued against them. Thus, they ask for a bond of at least $1,000,000 should an injunction issue. An update on the court’s ruling will be provided. The case is titled Larry C. Flynt v. Flynt Media Corporation, et al., CV 09-00048 AHM (C.D. Cal. 2008).

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clothing-copyright-christian-audigier-lawsuit.jpgLos Angeles, CA – Bryan Callan filed a lawsuit at the Federal District Court in Los Angeles against clothing designer Christian Audigier and Nervous Tattoo, Inc. and Shop On State, Inc. Callan is an artist and graphic designer whose style draws from his background as a tattoo artist. Callan also goes by his “Mr. Lucky” nickname and uses a Mr. Lucky logo on his artwork, which consists of text and four-leaf clover motif. The complaint alleges that in 2006, Callan and Audigier executed a licensing agreement which allowed the use of Callan’s art work subject to agreed-upon material terms:

The Agreement required that Defendants accompany each and every use of Callan’s artwork, or any part thereof, with a clearly visible Mr. Lucky logo…The Agreement also required that Defendants use commercially best efforts and act in good faith to market and advertise the Mr. Lucky logo and/or Callan’s name in each and every marketing, public relations and advertising effort made in connection with their use of Callan’s artwork. The Agreement also required that Defendants provide Callan with the right of first refusal if Defendant makes the decision to sell, lease, license, or in any way provide a third party to utilize Callan’s work in any way.

The complaint alleges that Defendants have failed to use the Mr. Lucky logo on the clothing products and have granted sub-licenses to numerous other companies, which have produced unauthorized products such as wines, cars, air fresheners, handbags and shoes. The expansion of rights beyond the agreement is alleged to constitute copyright infringement, in addition to breach of contract. By failing to place the Mr. Lucky logo on the products, Callan alleges that Defendants have engaged in unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The case is titled Bryan Callan v. Christian Audigier, Inc. et al., CV 08-08072 GW (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for Kirby Morgan Dive Systems, Inc. filed a trademark infringement, Lanham Act § 43(a) unfair competition, and anti-cybersquatting lawsuit at the Federal District Court in Los Angeles against Universal Scuba Distributors. Click Here To Read The Complaint. Kirby Morgan sells diving equipment including helmets, full face masks, and air control systems under its USPTO registered Kirby Morgan® and Kirby Morgan Dive Systems, Inc.® trademarks. In addition, Kirby Morgan owns five trademark registrations for the designs of its dive helmets. Kirby Morgan has also registered the www.kirbymorgan.com domain name, where its Website is located.

trademark-infringement-kirby-morgan-dive-systems.jpgThe Plaintiff alleges that Universal Scuba Distributors registered the domain name www.kirbymorgandivers.com and used images of Kirby Morgan’s registered helmets, which pictures also included the Kirby Morgan® word mark. Defendant’s “webpage then automatically resolves and/or has links to Universal Distributors’ other website at www.universaldistributors.us where it sells dive products. On [that website], Universal Distributors uses another image of Kirby Morgan’s registered helmet designs under a link to ‘commercial’ products.” The case is titled Kirby Morgan Dive Systems, Inc. v. Universal Scuba Distributors, CV 08-08258 JSL (C.D. Cal. 2008).

PRACTICE NOTE: In an attempt to not trigger insurance coverage under the Defendant’s Commercial General Liability Insurance policy, the complaint conspicuously asserts: “At this time Kirby Morgan is not seeking monetary damages on its trademark infringement claims to prevent Universal from receiving a defense of its claims from any insurance carrier and the amount of economic damages is not known.” The reservation of Plaintiff’s right for a future monetary demand should trigger coverage and a duty to defend, especially in view of Plaintiff’s “Prayer for Relief” which seeks: “a judgment that Universal Distributors has willfully and deliberately infringed Kirby Morgan’s rights and that this is an exceptional case entitling Kirby Morgan to enhanced damages under the Trademark Laws of the United States” and “a judgment awarding to Kirby Morgan prejudgment and post-judgment interest until the award is fully paid.” See Gray v. Zurich Ins. Co., 65 Cal. 2d 263, 276 (Cal. 1966) (“Since modern procedural rules focus on the facts of a case rather than the theory of recovery in the complaint, the duty to defend should be fixed by the facts which the insurer learns from the complaint, the insured [e.g. cease and desist letter demanding damages], or other sources.”)

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Los Angeles, CA – Trademark attorneys for F.C. Kingston LLC and Storm Manufacturing Group, Inc. (“Kingston”) filed a trademark infringement, unfair competition, and trade secret misappropriation complaint, at the Central District of California (Los Angeles Division), against Kingtech LLC – a company operated by Daniel Marshall and Reed Ferguson, two former Kingston employees. Kingston designs and manufactures “metal valves and custom fittings serving many industries including compressed air, floor cleaning, automotive, medical/dental, industrial flow control, and food service.” Since 1908, Kingston has used the “Kingston” trademark and has obtained a USPTO trademark registration. And starting in 1970 it began stamping its products with a “K” in a circle mark, a trademark application for which is currently pending at the USPTO.

Kingston alleges that Marshall was hired in 2000 as a Quality Engineer and became a Senior Brand Manager in 2005, where, through his job duties, “Marshall had a close relationship with all of Kingston’s suppliers and customers, and was intimately familiar with all of Kingston’s suppliers and customers, and was intimately familiar with the branding of Kingston’s goods and its extensive use of the Kingston Marks.” Plaintiff alleges that Ferguson was hired in 2005 as the national sales manager and worked closely with Marshall “regarding customer acquisition, pricing, promotion, new product development and target market selection.” Both Marshall and Ferguson signed employment agreements in which they agreed that they would not disclose Kingston’s “confidential or proprietary information, including information concerning customer lists, pricing, drawings, and marketing data.” Marshall was allegedly terminated in January of 2008 and Ferguson resigned last June.

Kingston alleges that a few months before resigning, Ferguson asked for and received an Excel spreadsheet providing detailed information about every sale that Kingston had made in the past five years. “Such a compilation of information is obviously not available to the public, and permits its user to know not only who every one of Kingston’s almost 2,000 customers are, but exactly what they have ordered, when they ordered it, and the precise price paid…Ferguson then proceeded to email the entire spreadsheet from his work email account to his personal email account.” The complaint alleges that Ferguson shared the stolen spread sheet with Marshall, who had set up the competing Kingtech business.

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Riverside, CA – Trademark attorneys for Optimal Pets, Inc. filed a trademark infringement and unfair competition complaint in the Central District of California (Riverside Division). Optimal Pets sells pet products, such as vitamins and other dietary supplements, grooming products, and other items. Optimal Pets has marketed and sold the products on the Internet under its common law Optimal Pets trademark, but does not have a trademark registration. (Read Advantages of Registered Trademarks)

trademark-infringement-optimal-pets-unfair-competition.jpgThe complaint alleges that Plaintiff’s principal met with Defendant Vitamin Shoppe after learning of Defendant’s search for suppliers of its new line of vitamins and dietary supplements. Optimal Pets’ proposal to Vitamin Shoppe was not accepted. Instead, in August of 2008, Vitamin Shoppe began marketing and selling a new line of pet vitamins and dietary supplements which were allegedly supplied by Defendant Nutri-Vet. The complaint alleges “that Defendants were aware, at the time they made the decision to use the mark or designation ‘OPTIMAL PET’ in connection with their products, that [Plaintiff] had made prior use of the trade name and mark ‘OPTIMAL PETS’ in commerce in connection with the sale of similar products.” The case is titled Optimal Pets, Inc. v. Nutri-Vet, LLC et al., EDCV 08-1795 SGL (C.D. Cal. 2008).

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Los Angeles, CA – Trademark lawyers for Carroll Shelby and his trust and licensing company filed a trademark and trade dress infringement, unfair competition, and violation of the right of publicity complaint at the Federal District Court in Los Angeles. Click to read complaint. Shelby is the legendary race car driver who broke the land speed record at the Bonneville Salt Flat and won the 24-hour Le Mans road race. After retiring from auto-racing, Shelby began designing some of the most highly prized race and production cars, including Shelby Cobras. The complaint alleges that the design of the Shelby cars, the Daytona specifically, has acquired distinctiveness and serves to identify Plaintiff as its source (the “Daytona Coupe Trade Dress”). The Daytona Coupe Trade Dress was registered with the USPTO as Registration No. 2,958,927. Plaintiff Shelby also owns the following USPTO issued trademark registrations: 289, 427 S/C, Shelby 427 S/C, and Shelby. Plaintiff Shelby is also the exclusive worldwide licensee of the COBRA trademark and logo, which are owned by Ford Motor Company.

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Defendant Factory Five Racing, Inc. (“FFR”) allegedly manufactures replicas of “Shelby Cobra vehicles, including kit cars bearing designs confusingly similar to the Daytona Coupe Trade Dress.” On FFR’s website, www.factoryfive.com, FFR allegedly uses trademarks owned by or licensed to Shelby in the metatags thereof to draw Internet traffic to the site, “these marks appear in the metatags but not in the posted content of the web pages, reflecting a design to conceal their use.” Further, the complaint alleges that links from FFR’s website directs traffic to LK Motorsports and Internet Community Partners, LLC’s websites, where further infringing use of the trade dress and trademarks occur. The case is titled Carroll Shelby v. Factory Five Racing, Inc. et al., CV 08-07881 CAS (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for Throttle Rocker, Inc. filed a trademark and trade dress infringement, counterfeiting, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles. Plaintiff manufactures motorcycle accessories, including a contoured throttle device which attaches to the throttle of a motorcycle and provides relief when the rider squeezes the throttle. Plaintiff has sold the devices under its Throttle Rocker trademark since 1995 and has registered a word mark and a logo with the U.S. Patent & Trademark Office. The complaint also asserts that the trade dress of the black device features “the following distinctive features: a velcro strap, an arcuate top portion and a concave-shaped base portion, which is approximately twice as wide as the top portion.”

los-angeles-trademark-attorney-trade-dress-throttle-rocker.jpgDefendant Eurodezigns, Inc. and several individual defendants are accused of selling a counterfeit product which allegedly uses the Throttle Rocker trademarks and infringes on Plaintiff’s trade dress. The complaint asserts that “Defendants’ use in commerce of THROTTLE ROCKER and its [sic.] sale of the counterfeit product, is likely to cause confusion, decpeiton and mistake in the minds of the public with respect to the source and origin of Plaintiff’s products.” The case is titled Throttle Rocker, Inc. v. Eurodezigns, Inc. et al., CV 08-07361 ODW (C.D. Cal. 2008).

PRACTICE NOTE: From the description of the alleged trade dress in the complaint and Plaintiff’s advertisement touting the comfort on the heal and palm of the hand imparted by the contoured shape of the device, it is going to be difficult to prove that the design is non-functional and entitled to trade dress protection.

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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 – Trademark and copyright attorneys for Guru Denim 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 counterfeit knock-offs of its True Religion® brand of jeans. Guru Denim has sought copyright, patent, and trademark protection on its garments and jeans. Guru Denim owns U.S. Patent No. D547530 for the stitch pattern applied to True Religion Brand Jeans pants. Guru Denim owns two U.S. Copyright Registrations for the True Religion Brand Jeans Designs, Copyright Certificate of Registration numbers VA1-192-834 and VA1-301-845.

attorneys-jeans-denim-apparel-copying-trademark-design-copyright-patent-true-religion.jpgGuru Denim owns a USPTO registered trademark in the pocket stitching pattern that appears on True Religion Brand Jeans pants and the overall stitching pattern on the front of True Religion Brand Jeans pants. Guru Denim also has 4 USPTO registered trademarks for “True Religion Brand Jeans” with assorted designs. Finally, Guru Denim has registered its “True Religion” word marks with the USPTO.

Guru Denim’s investigators discovered that numerous defendants were selling allegedly fake and counterfeit True Religion® jeans in their retail stores. The complaint states that the Los Angeles Police Department executed search warrants on some of the defendants’ premises and seized numerous allegedly counterfeit True Religion® apparel. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. §1114; (2) Federal copyright infringement under 17 U.S.C. §501; (3) False designation of origin under 15 U.S.C. §1125(a); (4) Trademark dilution under 15 U.S.C. §1125(c) and California Business & Professions Code §14330; and (5) Common law copyright infringement under California Civil Code §980. The case is titled Guru Denim, Inc. v. Hercel Zarrabian, et al., CV 08-07395 R (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).