Articles Posted in Uncategorized

Dog chew toys are in the middle of a design patent and trade dress infringement tug-of-war lawsuit filed by Benebone against Pet Qwerks.  The design patents cover a stick design with “Y” shaped ends.  Patent Nos. D870,400 and D871,686.  Benebone contends that Pet Qwerks, “rather than design its own product[,]…began selling a ‘BarkBone Stick’ that is a knock-off of Benebone’s patented design and the ‘Flavorit BarkBon’ that knocks off another popular Benebone design.”  The complaint admits, as it must, that Pet Qwerks’ ends have three prongs instead of the double prong “Y” shape claimed in the patents, but maintains that the accused product appears substantially the same to an ordinary observer and would deceive the observer to purchase the product supposing it to be Benebone’s patented product.

The trade dress design infringement claim, however, seems like a bit of a stretch, but the complaint is dogmatic in its trade dress definition and contentions.  “The Maplestick is a clear example of this design language; while its modern and clean design takes cues from sticks, it intentionally does not look like an actual stick. There are several key design features at work here. First, the main portion of the Maplestick is dead-straight, unlike a real stick.”  Commentary: I have seen straight sticks and distinctly remember one from Catholic boarding school.  “Second, it has equal branches at both ends, unlike a real stick.”  Commentary: it appears that someone has never fashioned a slingshot from a tree branch.  “Third, the branches at each end are terminated in a cylindrical way, which is not found in a natural stick.”  Commentary: sticks are usually cylindrically shaped, that’s why we count the “rings” to determine a tree’s age.  The complaint also lists similarities in the respective packaging, but makes the surprising allegations that both packages display “the American flag and Made in USA label,” as well as Pet Qwerks marking its packaging with “Real Bacon” while Benebone’s uses “Did somebody say Real Bacon?”  Those allegations in support of trade dress similarity are dubious and unprotectable.

Although design patents and trade dress both protect ornamental product designs and often overlap, the test for infringement under each discipline is different.  Design patents use the Ordinary Observer test: “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”  Gorham Manufacturing, Inc. v. White, 81 U.S. 511, 528 (1871).  The Federal Circuit then tweaked the test to account for prior art and the modified test becomes: ““whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design.”  Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 681 (Fed. Cir. 2008).

On September 27, 2019, I will be speaking at Bridgeport Continuing Education’s

“Mastering the Deposition” seminar at the L.A. Grand Hotel. I will be discussing how to depose expert technical witnesses. Click here for more information and to register for the seminar.

Sugarfina sells premium gourmet candy, including alcohol flavored gummy bears, including luxurious gift packages sold in stores, hotels, and food retailers.  Sugarfina started in 2012 and because of early popularity, federally registered many intellectual property rights, including design patents, copyrights, and trade dress protection for its products and packaging.  Sugarfina’s trade dress protection includes its products’ designs, appearance, and packaging, including features like the square and rectangular shapes, the color combinations, the clear top cubes with a patterned band and shapes, and the bottom container holding a series of cube wells or trays.  Its copyrights cover the box for its clear candy cubes, spaced arrangements, spaced cube receiving wells, and the distinctive boxes use for the clear cubes (Reg. Nos. VA00019663482 and VA0001963483).  Lastly, Design Patent No. D763,684 protects Sugarfina’s “Candy Bento Box” packaging design.  

Bouquet Bar and its owners are sued for federal trade dress infringement, federal false designation of origin and unfair competition, federal patent infringement, federal copyright infringement, and state unfair competition.  Defendants began in 2017 selling gummy bears and other candy products in square and rectangular shaped packaging.  Bouquet Bar appeared on an ABC show called Shark Tank, where they presented their products to a group of wealthy investors.  During the course of the TV show, one investor specifically mentioned that “[t]his looks just like Sugarfina” and advised the owners that they need to pursue something different or more unique.  Additionally, defendants had worked events as a flower vendor where Sugarfina products were present, making them aware of the Sugarfina’s brand and intellectual property rights.

In October 2017 and January 2018, Sugarfina sent Bouquet Bar cease and desist letters and attempted face-to-face meetings to settle the issue to no avail.  Thus, Sugarfina alleges that Bouquet Bar is intentionally copying its trade dress with the intent to cause consumer confusion, despite advice from entrepreneur experts and cease and desist letters.  The Supreme Court held that product design trade dress could not be inherently distinctive and required secondary meaning.  Wal-Mart Sores v. Samara Bros., 529 U.S. 205, 211 (2000).  However, product packaging can be inherently distinctive if it is arbitrary, fanciful, or suggestive.  Id.  Because Sugarfina does not have a federally registered trade dress in its product packaging, it would have to prove that its product packaging is inherently.

The U.S. music sub-publisher of Korean music publishers has filed copyright infringement lawsuits against several karaoke bars in Los Angeles and Korea town. I’m not sure how popular the 80’s glam-metal-hair-band Ratt is in Korean karaoke bars, but it is also suing for infringement of its “Round and Round” song. The complaints allege that Defendants charge customers money for access to the karaoke machines, the primary feature of the bars for which customers pay Defendants, and illegally publicly perform the musical compositions covered by copyright registrations and embodied in the karaoke recordings.

Ratt’s single composition pales in comparison to Elohim’s assertion that 3,341 musical compositions have been infringed by the karaoke bars, but as explained below Ratt is afforded more remedies under the Copyright Act. Both plaintiffs allege that the bars have not been granted public performance licenses for the compositions under 17 U.S.C. § 106(4) of the Copyright Act.

Each of the Elohim Compositions constitutes copyrightable material and is protected under the Berne Convention for the Protection of Literary and Artistic Works (the “Berne Convention”). The Berne Convention affords the Elohim Compositions, which were published in Korea and are owned by Korean citizens, automatic copyright protection in the United States; in this regard, there is no requirement that the Elohim Compositions be registered with the U.S. Copyright Office prior to the initiation of this lawsuit.

Los Angeles, CA – DC Comics is the owner of the Batman franchise and has numerous copyright registrations for works ranging from comic books, action figures, toy Batmobiles, to movies and TV shows. It also owns numerous USPTO registered trademarks including the word marks Batmobile, Gotham City, and Batman; in addition to numerous design marks, including the Bat Emblem. Since Batman’s first introduction in a 1939 issue of “Detective Comics”, he was instantly popular and has become of one of DC Comics’ “most successful and world-famous comic book super heroes.”

Indeed, the Batman movie franchise has resulted in “domestic gross box office receipts in over a billion dollars, not to mention additional revenues from syndication rights and home video distribution.” Further, the “Batman motion pictures have proven to be among the most successful licensing and merchandising ventures of all time, with gross retail sales of associated licensed merchandise exceeding $1,000,000,000.” That sure is a large number of zeros, Batman!

With that much cash, Brue Wayne obviously needs to have the most advanced Batmobiles to cruise in. There have been several design iterations of the Batmobile vehicles over the years and DC Comics contends that they are all distinctive and original designs that are copyrightable subject matter. DC Comics also contends that all the designs and trademarks are either inherently distinctive or have acquired secondary meaning in the minds of consumers throughout the U.S. and the world. DC Comics’ copyrights and trademarks are the subject of numerous licensing agreements for use on Batman merchandise.

Orange, CA – This post is off topic, but these traffic cameras are popping up everywhere and some research shows that they cause more accidents than they prevent. The Appellate Division in the County of Orange recently ruled that the red light photo evidence was inadmissible because it lacked foundation, was hearsay, and violated the Defendant’s confrontation rights. The Court held that the only person to testify, i.e. the officer, could not establish the time in question, the method of retrieval of the photographs, or the technology used.

We hold that the trial court erred in admitting the photographs and the accompanying declaration over the appellant’s hearsay and confrontation clause objections. Absent the photographs and content in the declaration, there is insufficient evidence to support the violation. Accordingly we reverse the judgment.

A copy of the ruling is here.

UPDATE 2/2/2010: Major League Baseball sues Upper Deck for trademark infringement and quotes from Yu-Gi-Oh! counterfeiting case. Click here for details.

Los Angeles, CA – Instead of settling the case after it was caught selling counterfeit Yu Gi Oh! cards, Upper Deck fought a losing battle and the Court’s summary judgment ruling found that Upper Deck counterfeited Yu Gi Oh! cards (details here). After the parties’ opening statements were delivered to the jury yesterday, Upper Deck and Konami settled the case, wherein Upper Deck will pay an undisclosed sum to Konami and will enter into a permanent injunction — which appears to be an adoption of the Court’s previously issued preliminary injunction (details here). The Court’s order regarding the settlement is available here.

The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

Los Angeles, CA – T-Mobile’s trademark attorneys filed a trademark infringement, Lanham Act unfair competition, and breach of contract lawsuit in Federal District Court in Los Angeles. T-Mobile accuses the defendants of acquiring large quantities of T-Mobile prepaid phones from retail stores such as Wal-Mart and Target, not intending to activate the phones for use on the T-Mobile wireless network. Instead, the complaint continues, the cellular phones are computer-hacked in order to unlock the phones and disable the installed software and then the phones are shipped overseas and sold as new T-Mobile phones which are operable on other cellular telephone networks. Also, T-Mobile alleges that the defendants – in order to overcome the limits imposed by retailers on the number of telephones which may be purchased by one customer – employ “runners” to make multiple purchases of the telephones at different locations.

“Defendants’ conduct, together with that of currently unknown civil and criminal co-conspirators, is causing T-Mobile to suffer millions of dollars in losses and has caused immediate and irreparable injury to T-Mobile and T-Mobile’s trademarks,” the complaint states. T-Mobile subsidizes the price of the cellular telephone and sells it below cost, but recoups the subsidy from profits earned on the sale of the prepaid airtime cards. Thus, the complaint asserts, if the phones purchased by defendants are not activated on the T-Mobile wireless network, T-Mobile is unable to recoup its costs. The T-Mobile phones are also sold subject to terms and conditions which restrict and limit the sale and use of the phones. By unlocking the phones and not activating them on the T-Mobile network, the defendants are allegedly breaching the contractual terms of purchase. The case is titled T-Mobile USA, Inc. v. All Pro Distributing, Inc., et al., CV08-02691 GW (C.D. Cal. 2008).