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

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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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Los Angeles, CA – Jennifer Lopez and Marc Anthony’s lawyers filed suit at the Federal District Court in Los Angeles against high-end baby carriage maker Silver Cross. The complaint alleges that Silver Cross “knowingly and intentionally misappropriated and used the names, images, likenesses and photographs of Lopez and Anthony to market and sell Defendants’ line of high-end baby carriages throughout the world.” The offending picture – which can still be obtained from Defendants’ website and is reproduced herein – was allegedly shown on Defendants’ website and other marketing and promotional materials.

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In addition to the right of publicity claim, Jennifer Lopez makes a Lanham Act § 43(a) trademark infringement claim because she uses “J-Lo” and “Jennifer Lopez” as trademarks on a variety of goods. And she alleges that Defendants’ use of her name to promote their products is likely to cause confusion as to the source or sponsorship of Defendants’ goods. Also, Nuyorican – the picture’s copyright holder – is named as an additional plaintiff and asserts a copyright infringement claim for unauthorized use of the subject picture. Plaintiffs are demanding at least $5,000,000 in damages for each of their six causes of action. The case is titled Jennifer Lopez, et al. v. Silver Cross (UK) Ltd. et al., CV 09-01345 AHM (C.D. Cal. 2009).

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trade-dress-infringement-lawsuit-type-65-coupe-factory-five-kit-carroll-shelby.jpgLos Angeles, CA – In response to Carroll Shelby’s trademark and trade dress infringement lawsuit (details blogged here), Defendant Factory Five’s attorneys filed a motion to either dismiss the case or transfer venue to the District of Massachusetts (details blogged here). Co-defendant Internet Community Partners, LLC, dba ffcobra.com, joined in Factory Five’s motion.

On February 23, 2009, after the parties’ oral arguments, the Honorable Christina A. Snyder granted Factory Five’s motion and transferred the case to the District of Massachusetts (read the order here), the location of the parties’ previous trademark and trade dress dispute in 2000.

In deciding a motion to transfer, the Court must consider the following three factors: (1) the convenience of the parties; (2) the convenience of the witnesses; and (3) the interests of justice. 28 U.S.C. § 1404(a); see Los Angeles Mem’l Coliseum Comm’n v. NFL, 89 F.R.D. 497, 499 (C.D. Cal. 1981).

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Los Angeles, CA – Godzilla’s trademark lawyers previously devoured Subway’s “Five Dollar Footlong” Commercial (blogged here) and are now endangering Pink Godzilla’s existence with a trademark infringement and Lanham Act § 43(a) unfair competition lawsuit filed at the Federal District Court in Los Angeles. Godzilla was reawakened by the detonation of an atomic bomb and since 1956, it has starred in twenty-seven sequel films. Godzilla’s USPTO registered trademark has been used and licensed for use on a wide range of merchandise, whereby the mark has become famous.

trademark-attorney-godzilla-pink.jpgDefendant allegedly operates a retail sales operation called “Pink Godzilla,” which sells Japanese-related games, toys and other merchandise online at www.pinkgodzillagames.com. Godzilla claims that Pink Godzilla is using the infringing mark on similar merchandise, including t-shirts, stuffed animals, card games, video games and posters. “Toho is informed and believes, and based thereon alleges, that Defendant chose Pink Godzilla for the name of its business and elected to affix the words ‘Pink Godzilla’ on much of its merchandise after the Godzilla Mark became famous and because it wanted to trade on the good will associated with Toho’s famous Godzilla Mark. The case is titled Toho Co., Ltd. v. Pink Gozilla LLC, CV 09-0830 FMC (C.D. Cal. 2009).

PRACTICE NOTE: I wonder if sushi is next on Godzilla’s menu: www.pinkgodzilla.com.

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murad-trademark-attorney-perfecting-serum.jpgLos Angeles, CA – Trademark attorneys for Murad, Inc. filed a trademark infringement and 15 U.S.C. § 1125(a) unfair competition complaint, at the Federal District Court in Los Angeles, against Boots Retail USA. Murad registered the Perfecting Serum® trademark with the USPTO in 1998, but it was registered on the Supplemental Register because the mark was descriptive. It is not clear why Murad has not since applied to register the trademark on the Principal Register under §2(f), which affords prima facie evidence of acquired distinctiveness. Instead, Murad must now prove acquired distinctiveness in Court. See Commerce Bancorp, Inc. v. BankAtlantic, 285 F. Supp. 2d 475, 484 (D.N.J. 2003)

The complaint alleges that long after Murad used and registered the Perfecting Serum® trademark, Defendant began using “the trademark Intense Perfecting Serum despite the fact the identified trademark wrongfully appropriates Murad’s registered Perfecting Serum trademark and is confusingly similar thereto. . . Defendant’s use of trademark Intense Perfecting Serum as alleged above to designate, advertise and/or promote the sale of skin moisturizer is likely to cause confusion or mistake or to deceive the purchasers of its products as to the source of origin of defendant’s products and to cause defendant’s products to be passed off or viewed as those which are provided or authorized by Murad.” The case is titled Murad, Inc. v. Boots Retail USA, Inc., CV09-0246 SVW (C.D. Cal. 2009).

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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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Los Angeles, CA – Trademark and copyright infringement and Lanham Act § 43(a) unfair competition lawsuit was filed at the Federal District Court in Los Angeles by Perfect Pushup, LLC’s attorneys. Plaintiff sells its “Perfect Pushup” product through infomercials and direct response, where the conception of a swiveling pushup exercise device is attributed to a former platoon commander of the United States Navy SEALs. Plaintiff has registered its “Perfect Pushup” trademark with the U.S. Patent & Trademark Office. In addition, Plaintiff has registered its works with the U.S. Copyright Office, which works include its advertising photos, box designs and workout poster. Plaintiff also owns the www.perfectpushup.com domain name and website.

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The Plaintiff alleges that it purchased defendants’ products and upon closer examination “found it to contain counterfeit merchandise. The product appeared to be almost identical to Plaintiff’s Perfect Pushup product, and included a direct counterfeit Perfect Pushup workout poster and workout DVD.” Defendants had allegedly brazenly established a website at www.perfectpushups.com (with an extra “s”) to sell the infringing product. The case is titled Perfect Pushup, LLC v. Suzette White, CV 09-0243 CW (C.D. Cal. 2008).

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

UPDATE: Court grants preliminary injunction (details here).

trademark-litigation-attorney-los-angeles-konami-yu-gi-oh.jpgLos Angeles, CA – Konami Digital Entertainment filed a trademark and copyright infringement lawsuit (details here) against Vintage Sports Cards, Inc. over sales of Yu-Gi-Oh! trading cards. Konami then discovered that Upper Deck Company allegedly supplied the the infringing cards to Vintage. Konami amend its complaint to add Upper Deck and moved for preliminary injunction while the case was pending, preventing further sales of allegedly unauthorized cards by Upper Deck.

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Los Angeles, CA – Larry Flynt had sued (click here for details) his nephews and their company for trademark infringement and unfair competition and was seeking a temporary restraining order to prevent the use of the word “FLYNT” in the business name and the domain names www.flyntdistribution.com and www.flyntcorp.com. The Federal District Court in Los Angeles granted the temporary restraining order (click here) because Larry FLynt had demonstrated a probability of success on the merits of the lawsuit and irreparable harm. Pending hearing on the application for preliminary injunction on January 21, 2009, the Court restrained the defendants from:

1. Advertising, selling and distributing adult-themed motion pictures, videos, and DVDs, as well as other adult-themed goods, which contain “FLYNT” in any typographical format and phrase, including “Flynt Media Corporation” and “FlyntCorp Distribution;”

2. promoting such goods and services on Internet websites, including but not limited to www.flyntdistribution.com and www.flyntcorp.com; and

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