Articles Posted in Trademark Litigation

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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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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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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 – 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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trademark-attorney-coach-handbags-purse.jpgLos Angeles, CA – Trademark attorneys for Coach, Inc. filed a trademark infringement, dilution and unfair competition lawsuit at the Federal District Court in Los Angeles, which also seeks to cancel the trademark registration of the alleged infringer (15 U.S.C. § 1064). Coach, which started as a family-run workshop in Manhattan over sixty years ago, is the owner of the Coach® mark and the “CC Design” mark (pictured herein) and sells handbags, purses, apparel, and accessories under said marks. Coach has expended over a hundred million dollars in advertising of products bearing the marks and has sales of over two billion dollars annually.

The complaint states that on May 27, 2008, the U.S. Customs and Border Protection informed Coach that it had seized goods being imported from China by YH Forever, Inc. The seized goods allegedly used a mark confusingly similar to that of the “CC Design.” Coach then discovered that the Defendant had registered its “MW” mark with the USPTO. Coach contends that when the M and W are shown in solid colors, as with the seized goods, it essentially imitates the CC Design used by coach. The case is titled Coach, Inc. v. YH Forever, Inc., CV 09-00771 R (C.D. Cal. 2008).

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Although Cash4Gold.com is a defendant in a trademark infringement lawsuit (details here), its Super Bowl ad was the best this year:

 
https://www.youtube.com/watch?v=F66nURf8TBQ
 

Although Cash4Gold’s commercial was amusing, according to these sites (here and here) Cash4Gold’s business practices are not.