Articles Posted in Trademark Litigation

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zynga-farmville-trademark-attorney-copyright.jpgLos Angeles, CA – Zynga Game Network is a social gaming company and provides numerous games, such as Zynga Poker, Mafia Wars, FarmVille, YoVille, Cafe World and Word Twist, that are available on Facebook, MySpace, Friendster, iPhone and iPod Touch, among others. Zynga has several pending USPTO trademark applications for its Mafia Wars, Farmville and Yoville trademarks and several copyright registrations for the games as well. Zynga asserts that its games have been a runaway success, with an increase from 1.3 million daily users in July of 2008 to 9.5 million daily users in May of 2009.

When players sign up with Zynga to play the games, they receive a certain amount of virtual currency, which amount can increase through continued play and purchased directly from Zynga. The virtual currency is then used to purchase virtual goods that are used in the games. The “Terms of Service” prohibit the use of virtual currency or goods for real-world money and Zynga does not authorize any third party to sell virtual currency or virtual goods.

In the lawsuit, Zynga accuses Defendant of allowing users to post and sell virtual currency or virtual goods to be used in Znyga’s games on its playerauctions.com website. Zynga claims that in addition to using Zynga’s trademarks without authorization, Defendant profits from the sale of virtual currency and goods by selling them for real-world money in violation of the “Terms of Service” agreement. Further, Defendant is accused of using images of Zynga’s games without authorization, which use infringes its copyrights. The case is Zynga Game Network, Inc. v. Playerauctions.com, CV10-2576 CBM (C.D. Cal. 2010).

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copyright-attorney-mga-entertainment-land-sea-rc-copyright-infringement-qvc.jpgLos Angeles, CA – A copyright infringement lawsuit was filed by MGA Entertainment against QVC, Brookstone, and Rooftop Group USA. MGA claims that it created the Land Sea RC® amphibious vehicle that kids can remotely control. MGA is the owner of two copyright registrations covering the toy designs. MGA alleges that Rooftop “arranged for the manufacture and sale of a product entitled RC Land-and-Sea Mobile” that are sold through retailers such as QVC and Brookstone.

In addition to the copyright infringement claims, MGA asserts unfair competition claims under both Cal. Bus. & Prof. Code § 17200 and California common law. The state causes of action, however, seem to be preempted as they arise from the same operative facts as the copyright claim. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 US 23 (2003); Fractional Villas, Inc. v. Tahoe Clubhouse, 2009 U.S. Dist. Lexis 39522 (S.D. Cal. 2009)(dismissing § 17200 claim because it was preempted by the Copyright Act). The case is MGA Entertainment, Inc. v. Brookstone, Inc., et al., CV10-2463 GW (C.D. Cal. 2010).

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trademark-attorney-trueblood-true-blood-trademark-lawsuit-hbo.jpgLos Angeles, CA – TI Beverage Group, owner of the www.truebloodwine.com website, sued retailer Hot Topic and HBO executives Sophia Chang and James Costas for trademark infringement and unfair competition. TI makes both alcoholic and non-alcoholic beverages and has used Vampire® as its trademark, in addition to other vampire related marks such as Vamp® and Dracola®. In 2009, TI purchased Trueblood Winery, LLC, which had been in business since 2002.

In 2008, HBO televised the True Blood television show in which the characters drink a fictional drink called Tru Blood. TI alleges that Omni Consumer Products entered into a licensing agreement with HBO to manufacture and sell a blood orange drink labeled Tru Blood in September of 2009. TI previously filed suit and notified the defendants of the alleged infringement and after not discovering the products on the shelves, believed that the product had been scrapped. TI alleges that it recently found the Tru Blood products at Hot Topic and filed the instant trademark infringement lawsuit. The case is TI Beverage Group, Ltd v. Hot Topin, Inc. et al., CV10-02089 RGK (C.D. Cal. 2010).

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trademark-attorney-apple-ipad-bought-trademark-assign-fujitsu.jpgOnly days away from Apple’s launch of its new iPad product, it has purchased the iPad trademark from Fujitsu. When Apple announced the product’s iPad mark, Fujitsu quickly laid claim to the trademark, which was filed in 2003, but has yet to register. In order to avert any interruption in iPad’s distribution, Apple apparently believed it should just purchase the trademark instead of engaging in a protracted trademark battle.

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trademark-attorney-qvc-paula-deen-kitchen-chef.jpgSanta Ana, CA – The Southern-style chef Paula Deen has made “Hey Ya’ll!” her trademark phrase on the Food Network, while refusing to make anything remotely healthy that excludes her beloved butter, cheese, and fried foods. Maybe because of her love of butter, however, she has been sued for trademark infringement for selling cooking accessories under the “Butter Bell” trademark.

Plaintiff registered its Butter Bell® trademark with the U.S. Patent and Trademark Office in 2002, and has since become incontestable. Plaintiff initially used its Butter Bell® mark on ceramic crocks, but has since expanded its line of goods to include gourmet food related products. Plaintiff contends that its Butter Bell® products are sold through numerous channels, including on the Food Network and Paula Deen’s own “Cooking with Paula Deen” magazine.

Plaintiff alleges that QVC is a significant customer of its Butter Bell® products, where Paula Deen appeared to promote and market the infringing crock product. Plaintiff further contends that Defendants previously asked the Plaintiff to develop a Butter Bell® product which included a Paula Deen logo. Thus, Plaintiff alleges that Defendants’ infringement is willful and intentional.

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copyright-attorney-x-men-wolverine-incredible-hulk-comics-kirby-marvel-disney.jpgCentral District of California – Comic book author Jack Kirby’s heirs are suing Marvel and Disney (complaint available here) to terminate the copyrights in the popular Spider Man, Iron Man, X-Men, The Fantastic Four, The Incredible Hulk, The Avengers, Thor, Nick Fury and Ant-Man comics, which Kirby authored or co-authored between 1958 and 1963. Plaintiffs allege that during this period, Kirby was not an employee of any of Marvel’s predecessors and the works were not a work-for-hire because he was a freelancer without any written agreements. In 1972, Marvel’s predecessor, Magazine Management Co., entered into a written agreement with Kirby whereby the copyrights in Kirby’s works were assigned for additional compensation.

Because the works were created before 1978, Plaintiffs assert that they can terminate the transfer Kirby’s copyrights under 17 U.S.C. § 304(c). Thus, Plaintiffs provided Defendants with termination notices on September 16, 2009. The copyrights are scheduled to revert to the heirs beginning in 2014, which defendants expectedly refute. As a result, Plaintiffs request a declaration from the Court that the termination notices were proper and that the copyright interests will be recaptured. In addition, Plaintiffs ask the Court to determine the split of royalties from co-owned works moving forward. Further, Plaintiffs seek the return of Kirby’s original artwork that is currently in Defendants’ possession. Finally, Plaintiffs assert a Lanham Act cause of action for Defendants’ failure to accredit Kirby as the author or co-author of the underlying works on which X-Men Origins: Wolverine and The Incredible Hulk movies were based. The case is Kirby v. Marvel Entertainment, Inc., SACV10-00289 CJC (C.D. Cal. 2010).

Marvel Entertainment has also sued Kirby’s heirs in the Southern District of New York. Details here.

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patent-attorney-design-trademark-bottle-gt-beverages-coca-cola.jpgSanta Ana, CA – GT Beverage Company sued The Coca Cola Company for a declaration of no trademark or design patent infringement. BT sells beverages in bottles that are shaped like sports balls including baseballs, basketballs, soccer balls, and golf balls. BT has filed numerous trademark applications with the USPTO to register its various bottle designs.

During the holidays, Coca Cola sells its beverages in spherical bottles shaped to be Christmas tree ornaments. Coca Cola’s bottle shape, however, was itself the subject of a prior claim of infringement by O-Company and OGO USA. In response, Coca Cola filed an opposition proceeding at the TTAB and also filed a declaratory judgment lawsuit in the Middle District of Tennessee. It appears that the parties resolved the dispute by assigning the disputed application and the resultant trademark registration – which is the subject of the instant lawsuit – to Coca Cola.

BT alleges that in September of 2009, Coca Cola sent a cease and desist letter charging infringement of the trade dress bottle design and Design Patent No. D554,523. BT responded by using Coca Cola’s previous stance against it by denying that Coca Cola had an exclusive right to round shaped bottles for beverage products. The parties’ inability to resolve the dispute resulted in this lawsuit. The case is GT Beverage Company, LLC v. The Coca Cola Company, SACV10-00209 JVS (C.D. Cal. 2010).

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trademark-attorney-major-league-baseball-sues-upper-deck-infringement-contract-license.pngNew York — Upper Deck will reportedly pay MLB a “substantial sum” in addition to $2.4 million to settle the trademark infringement and breach of contract lawsuit, according to Reuters. On January 31, 2010, Major League Baseball Properties sued the Upper Deck Company for trademark infringement, trademark dilution, unfair competition, and breach of contract because Upper Deck continued to print baseball trading cards after its license was terminated. Details blogged here.

It appears that Upper Deck learned from its long and drawn out court battle with Konami. Only after the California District Court ruled that Upper Deck counterfeited hundreds of thousands of Yu-Gi-Oh! trading cards, did Upper Deck decide to settle on the first day of trial. Details here. Conversely, by settling early with MLB, Upper Deck can avoid possible adverse rulings and focus on reviving its business.

The case is Major League Baseball Properties, Inc. v. The Upper Deck Company, LLC, 10-cv-732-RWS (SDNY 2010).

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trademark-attorney-wine-winery-santa-barbara.jpgLos Angeles, CA – Santa Barbara Winery sued Foster’s Wine Estates for trademark infringement, unfair competition and cancellation of trademark registration. Plaintiff alleges that it has used the “Santa Barbara Winery” trademark since 1962, but has not – for almost 50 years – sought to register its trademark with the USPTO. Plaintiff should have read our article. The Defendant, on the other hand, has immediately sought to register its “Santa Barbara Wine Company” trademark with the USPTO, which mark shall shortly register on the Supplemental Register. Defendants would have also benefited from our article by selecting a strong trademark that would immediately register on the Principal Register.

Plaintiff alleges that “in using the mark and label ‘Santa Barbara Wine Company’ in connection with wine offered for sale in commerce, Defendant has intentionally sought to infringe upon Plaintiff’s Santa Barbara Winery trademark, to cause confusion and mistake amongst consumers, the trade, and those who come into post-purchase contact with its goods, as to whether its goods are connected, affiliated or associated with Plaintiff, and to re-direct confused consumers to products Defendants are selling that are not affiliated with Plaintiff.”

I only recently learned that the UB40 “Red Red Wine” song was actually written by Neil Diamond. Here’s Neil Diamond’s version:

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trade-dress-infringement-lawsuit-type-65-coupe-factory-five-kit-carroll-shelby.jpgCar racing legend Carroll Shelby sued Factory Five Racing in California last year for trademark and trade dress infringement (details here). The District Court in Los Angeles granted Factory Five’s motion and transferred the case to Massachusetts (details here and here). The Massachusetts District Court has now dismissed Shelby’s Daytona Coupe trade dress action with prejudice (it cannot be re-filed) and has dismissed the rest of the complaint without prejudice. The Court, however, declined to dismiss Shelby’s lawsuit against co-defendant Internet Community Partners, LLC – doing business as ffcobra.com. (Order is available here).

With respect to the Daytona Coup trade dress infringement claim, the Court held that it was barred by doctrine of res judicata and the terms of the settlement agreement:

In this case, the settlement agreement resolved the Type 65 trade dress claims and did not bar FFR from using the Type 65 kits, which have apparently not broadened or changed in the intervening years. Under the settlement agreement, “Shelby dismisse[d] with prejudice all claims that have been asserted or could have been asserted relative to the trade dress or designs of FFR’s kits, including but not limited to the kits known as the 427 Roadster and the Type 65 Coupe.” (FFR’s Mem., Ex. B ¶ 9 (emphasis added).) Shelby’s argument that the first suit only involved the 427 S/C contradicts the plain language of the settlement, which dismissed all claims “relative to the trade dress or designs of FFR’s kits” involving Factory Five’s Type 65 Coupe, not merely those relating to the trade dress of the 427 S/C. Moreover, the Final Judgment included numerous, specific references to both the name and design of the Daytona Coupe.

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