Articles Posted in Trademark Litigation

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Los Angeles, CA – The Wild Wild West. A trademark lawsuit gun fight, a duel, if you will, has ensued between John Rigby & Co. (Gunmakers), Inc. of California and John Rigby & Co. (Gunmakers), Ltd. of United Kingdom. Plaintiff makes rifles, shotguns and ammunition which it markets under the following USPTO registered trademarks: John Rigby & Co., Rigby’s, and JR Est. 1735. Plaintiff has also registered its trademarks in the United Kingdom. Plaintiff and its predecessors have made guns since the 1700’s and allege that “Rigby’s quality and reliability has been such that John Rigby & Co. has received Royal Warrants from five British Monarchs dating from the Eighteenth Century to the present day.” A copy of the complaint is available here.

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Some of Plaintiff’s guns are priced as “Starting at $47,500.” Defendant allegedly sells custom made rifles and shotguns under the John Rigby & Co. and JNO. Rigby & Co marks and have registered the domain name www.johnrigbylondon.com. Plaintiff alleges that Defendants were aware of Plaintiff’s marks, but “deliberately, willfully, and maliciously used the John Rigby & Co. Marks in order to trade on the goodwill that Plaintiff has attained.” The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) False designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) California trademark infringement; (4) Federal and California trademark dilution; and (5) Unfair competition under California Bus. & Prof. Code § 17200. The case is John Rigby & Co. (Gunmakers), Inc. v. John Rigby & Co. (Gunmakers), Ltd., et al., CV09-06429 VBF (C.D. Cal. 2009).

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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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louis-vuitton-v-akanoc-trademark-contributory-infringement-copyright.jpgSan Jose, CA – A jury awarded Louis Vuitton $32.4 million in its contributory trademark and copyright infringement lawsuit against web hosting companies, Akanoc Solutions and Manged Solutions, and their individual owner. A copy of the jury’s verdict is available here. Defendants hosted third party websites that were accused of selling counterfeit Louis Vuitton products. A copy of the complaint is available here. Louis Vuitton sent notice to the Defendants demanding that the accused websites be taken down by the hosting companies. The Ninth Circuit has previously extended contributory infringement liability to flea market or swap-meet operators that knew vendors were selling counterfeit goods. Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir.1996). This verdict seems to be an extension of that liability standard to the internet in that the jury found that Defendants knew that websites they hosted were selling counterfeit goods. The jury rejected the Defendants’ “safe harbor” defense under the Digital Millennium Copyright Act (“DMCA”). The case is Louis Vuitton Malletier, S.A., v. Akanoc Solutions, Inc., et al., CV07-03952 JW (N.D. Cal. 2007).

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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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trade-dress-attorney-trademark-lawyer-opi-nail-polish.jpgLos Angeles, CA – OPI Products sued Beauty Treats International Co. for trademark and trade dress infringement and unfair competition over its sale of nail care products. Plaintiff has registered its OPI word mark and its bottle design mark with the USPTO. Plaintiff alleges that it began using the word mark in 1981 and the subject bottle design mark in 1992. Plaintiff claims that Defendants adopted their “OBT” trademark and an identical bottle shape in an “attempt to confuse and decive consumers and nail technicians into believing that the Accused Products are OPI Products or are affiliated with or authorized by OPI. The case is OPI Products, Inc. v. Beauty Treats International Co., Inc., CV 09-05383 PSG (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).