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trademark-san-francisco-giants-major-league-mlb-gogo-lawsuit-clothing.jpgThe MLB champion San Francisco Giants not only failed to make the playoffs, but, to add insult to injury, their failure to register their stylized “San Francisco” logo is forcing them to defend a trademark lawsuit filed by a junior user, Gogo Sports. Gogo is an apparel manufacturer that sells customized and private labeled products according to its customer’s orders. Although Gogo is alleged to have adopted its San Francisco logo after the Giants, Gogo filed an application to register the trademark at the U.S. Patent & Trademark Office, whereas the Giants – surprisingly – did not, until only recently. On August 8, 2011, the Trademark Examining Attorney refused registration of the Giants’ later filed application for “clothing, namely, shirts and jackets; headwear” in light of Gogo’s previously registered – although on the Supplemental Register – trademark for “Caps; Hats; Headwear; Jackets; Shirts; Sweat shirts; Tops” because:

Here, the marks are virtually identical. Both share the same large wording SAN FRANCISCO in a stylized cursive font sloping upwards from left to right and with the same underline shape extending from the O under the wording. The only difference is the applicant did not include the geographically descriptive wording CALIFORNIA in small letters in the underline portion of the registrant’s mark.

Less than a month after the refusal, Major League Baseball Properties (“MLBP”) sent Gogo correspondence asserting superior rights in the design mark and demanding Gogo “immediately and expressly abandon the Supplemental Registration for the [mark], and immediately cease and desist from manufacturing, advertising, marketing, distribution, offering for sale and/or selling the Unlicensed Clothing and any other unlicensed product bearing any of the MLB Marks and/or any mark or graphic confusingly similar to and/or dilutive of any of the MLB Marks.”

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Copyright-video-game-trademark-temporary-restraining-order-fallout-bethesda-masthead.jpgBethesda Softworks and Interplay Entertainment have waged a long-running, real world copyright and trademark battle over the virtual-world Fallout video game. The Bethesda v. Interplay Maryland lawsuit apparently arose over an ambiguity in the scope of a license back to Interplay in developing future Fallout video games. In 2007, Bethesda and Interplay entered into an asset purchase agreement that assigned all rights in the Fallout trademarks and copyrights to Bethesda. And, in a simultaneously executed trademark license agreement, Bethesda granted a license back to Interplay that provides:

Subject to the terms and conditions set forth in this Agreement, Bethesda grants to Interplay an exclusive, non-transferable license an right to use the Licensed Marks on and in connection with Interplay’s FALLOUT-branded [Massively Multiplayer Online Game] MMOG (the “FALLOUT MMOG” or “Licensed Product”) and for no other purpose. The conditional license herein does not grant Interplay any right to sublicense any of the licensed rights without Bethesda’s prior written approval.

In its initial filings, Bethesda claimed that Interplay failed to meet other contractual requirements, including securing required financing and complying with commercial launch deadlines. Later, Bethesda claimed that the trademark license applied only to the Fallout mark and not to any of the elements or characters in the game. Interplay countered that Bethesda’s interpretation cannot be harmonized with the rest of the agreement that provides for Interplay’s right to use “non-FALLOUT MMOG, inter alia, any or all locations, graphic representations, creatures, monsters, names, likenesses, [etc.]” should the agreement terminate prior to commercial launch. The Maryland court appears to have initially agreed with Interplay’s interpretation by denying, without much analysis, Bethesda’s motion for preliminary injunction.

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design-patent-shoes-trade-dress-steven-madden-skechers.jpgSkechers is suing Steven Madden for allegedly copying Skechers’ Twinkle Toes shoe designs. The U.S. Patent & Trademark Office granted U.S. Patent No. D571,095 to Skechers covering its Twinkle Toes toe cap design for shoes. In addition to patent protection, Skechers claims that it is the owner of an inherently distinctive trade dress in its Twinkle Toes footwear designs. Skechers defines its trade dress as the combination of the following design elements: “a vulcanized canvass sneaker; a toe cap adorned with crystals, rhinestones, sequins or a plurality of other similar shiny elements; and, canvass uppers distinguished by colorful art designs or patterns.” For trade dress to be protectable, it must be non-functional. And Skechers asserts that the Twinkle Toes design is non-functional and simply conveys a distinctive appearance that is a source indicator.

Skechers further alleges that it has expended many millions of dollars promoting and advertising its trade dress and, based on extensive, frequent, and ongoing advertising, marketing, sales and distribution, the trade dress has acquired distinctiveness, which indicates that the shoes emanate from a single source. In other words, consumers recognize and associate the shoe design with Skechers.

Steve Madden’s “Stevies” brand shoes are accused of including “a vulcanized canvas sneaker, a toe cap adorned with crystal, rhinestones, sequins or a plurality of other similar shiny elements, and canvas uppers distinguished by colorful art designs or patterns” that infringe the subject patent. Further, Skechers contends that the Stevies footwear line so closely resembles the Twinkle toes trade dress that it is likely to cause confusion, mistake, and deception as to an affiliation, connection, or association of Steve Maddens’ footwear with Skechers. Skechers also contends that “Defendants have acted willfully, in bad faith and with the intent to confuse and mislead the public and unfairly trade on the substantial and valuable goodwill associated with Skechers’ Twinkle Toes® Trade Dress and to capitalize on Skechers’ highly respected reputation as a stylish, high quality footwear company.”

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computer-fraud-abuse-trade-secrets-copyright-lukasian.jpgLukasian House supplies major retail chains with hand-made storage and organization products made of wood and fibers. Lukasian alleges that for over ten years it has built a database of “mom and pop” factories in rural China that reliably provide well-designed, high-quality hand-woven products. Major retail chains choose to work with Lukasian because it has a dependable source of products for timely delivery. Lukasian, naturally, keeps the identity of its suppliers a closely guarded secret by limiting disclosure to certain employees, maintaining it on a secure computer network, and instructing employees of the confidential nature of the information. Lukasian has also filed several copyright registration applications for photographs of samples of storage baskets and a hamper that it never published.

Aprille Vergara and Chen “Jane” Chen were former employees that allegedly had access to Lukasian’s trade secrets in performing their duties. In May of 2010, Vergara and Chen and other defendants allegedly accessed Lukasian’s server to download trade secrets to use in establishing a competing business. Shortly thereafter, Vergara and Chen resigned and allegedly falsely stated that the former intended to go back to school and the latter was to work with in her husband’s real estate business. Relying on the provided reasons, Plaintiff allowed Defendants to continue working and they’re accused of acquiring “knowledge of Lukasian’s suppliers, its customers, its best-selling items, the prices at which it buys and sells those items, and its profit margins on those items.” Defendants are accused of selling competing products to Lukasian’s customers and undercutting its prices.

Lukasian brings causes of action for copyright infringement (17 U.S.C. § 501(a)), computer fraud and abuse act violation (18 U.S.C. § 1030(g)), California comprehensive computer data access and fraud act (Cal. Penal Code § 502(c)), trade secret misappropriation (Cal. Civ. Code § 3426), unfair competition (Cal. Bus. & Prof. Code § 17200), intentional interference with prospective economic advantage, and conversion.

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judgment-pleadings-pixar-cars-disney.jpgThe race for Mandeville-Anthony was over before it even began. In March of this year, Plaintiff sued Disney and Pixar alleging that the Cars and Cars 2 animated motion pictures infringed his copyrights. Also, Plaintiff claimed that Disney and Pixar stole his idea for the motion pictures from his work that he submitted to Disney and Pixar employees.

Disney and Pixar quickly filed a motion for judgment on the pleadings under FRCP 12(c), which means after the complaint, answer, counterclaims and reply, if any, are filed, a defendant can seek early judgment that – based on the pleadings alone – a plaintiff cannot meet its burden of proof. In a short one page opinion, the Court dismissed the copyright infringement claim because the parties’ works are not substantially similar as a matter of law: “[a]mong other things, the protectable elements of the parties’ respective works are dissimilar in plot, sequence of events, pace, themes, dialogue, mood, setting, and characters.” As to the second cause of action for breach of implied contract (aka idea submission), the Court found that the claim was untimely because it was filed after the applicable two-year statute of limitations. Cal. Code Civ. Pro. 339(1).

Reviewing Defendants’ motion shed’s light on the flimsy nature of Plaintiff’s allegations: “How Plaintiff can contend these characters [pictured here] are similar is mystifying. . . In short, the parties’ expressions of the general idea of animated, anthropomorphic cars are extremely different. Any suggestion that the parties’ characters are similar – let alone, substantially similar – would defy the Ninth Circuit’s exhortation that copyright law protects only the specific details of an author’s rendering of an idea, and not the idea itself.”

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jewelry-patent-copyright-infringement-sonya-ooten.pngJewelry designer Sonya Frisina does business as Sonya Ooten and has a retail store in Los Angeles. Ooten owns U.S. Design Patent No. D544,389, titled “Metal Crochet Earring,” covering the ornamental jewelry design. There is often overlap with different forms of intellectual property and Ootent, to maximize protection, also registered the “Cosmos” earring design with the U.S. Copyright Office.

Ooten alleges that Soixante Neuf’s “Oval Woven Beaded Earrings” infringe both its design patent and copyright. To prove design patent infringement, Ooten must meet both the ordinary observer test and points of novelty test. The design as a whole is examined in the ordinary observer test and the individual elements of the design are examined in the points of novelty test. To prove copyright infringement, unlike design patent infringement, Ooten must show that Soixante Neuf had access to Ooten’s design and copied it. Also, unlike utility patents, a successful design patent plaintiff can recover the infringer’s profits, plaintiff’s lost profits, or a combination of lost profits and reasonable royalty.  Read a jewelry patent lawyer‘s more detailed article on how to protect jewelry through both design patents and utility patents.

The case is Sonya Frisina v. Soixane Neuf, Inc. et al., CV11-5705 VBF (C.D. Cal. 2011).

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Trademark-attorney-spearmint-rhino-chiappa-gun-firearms.jpgSpearmint Rhino provides adult entertainment services, namely, it owns a large number of strip joints. In its sanitized complaint, however, “Rhino’s principal business is the development and licensing of its trademarks and the maintenance of control of the quality of goods and services offered in connection with Rhino’s marks.” As a side note, Rhino probably receives numerous applications for the position of quality control supervisor, but I digress.

Rhino owns several federally registered trademarks for its Rhino Outline logo, here, here, and here, that were filed on February 3, 2006. Thus, Rhino contends that its “registrations give it and its authorized licensees priority throughout the United States over any use in commerce of the Rhino Outline marks that had not commenced by February 3, 2006.”

Although the registrations cover goods and services in the adult entertainment industry, e.g. cabarets and “panties, g-strings, brassieres and corsets for semi-nude and erotic dancers,” Rhino sued Chiappa Firearms for allegedly using a confusingly similar Rhino design on its handguns: “Chiappa’s use of the Rhino Outline marks is likely to cause confusion, or to cause mistake, or to deceive because, among other reasons, consumers are likely to believe that there is an affiliation, connection, or association between” Rhino and Chiappa. Seriously? Maybe I’m a bit daft, but will consumers really confuse panties and guns?

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copyright-preliminary-injunction-jewelry-rings-scott-kay-tacori.jpgTacori suffered another loss in its continuing copyright and trade dress infringement lawsuit against rival jewelry designer Scott Kay. The Court previously denied Tacori’s ex-parte application for a temporary restraining order, but that did not deter Tacori’s attempts to prevent Scott Kay’s sales of its Heaven’s Gate jewelry collection. Not surprisingly, the Court denied Tacori’s preliminary injunction bid, which was now focused solely on the copyright issue.

“A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Winter v. Natural Res. Def. Council, 129 S. Ct. 365, 374 (2008). Although a plaintiff must make a showing on each factor, the Ninth Circuit employs a sliding scale approach where “a stronger showing of one element may offset a weaker showing of another.” Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131-35 (9th Cir. 2011). Thus, a preliminary injunction may still issue where there are “serious questions going to the merits and a balance of hardships that tips sharply towards the plaintiff . . . , so long as the plaintiff also shows that there is a likelihood of irreparable injury and that the injunction is in the public interest.” Id. at 1135 (internal quotation marks omitted).

The Court found that Tacori may be able to meet “its low burden of establishing copyright ownership” because the “requisite level of creativity is extremely low.” In order to show copying, Tacori had to establish Scott Kay’s access to its reverse crescent design and that the Heaven’s Gates rings were substantially similar. Scott Kay admitted that it was aware of Tacori’s design, but the Court found that the parties’ respective designs were not substantially similar.

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patent-infringement-att-telenav-enovsys.jpgEnovsys filed a patent infringement lawsuit in Los Angeles against AT&T Mobility for infringing two patents: (1) US Patent No. 6,560,461, titled “Authorized Location Reporting Paging System” (“the ‘461 patent”), and (2) US Patent No. 7,925,273, titled “Method and Apparatus for Updating the Location of a Mobile Device Within a Wireless Communication Network” (“the ‘273 patent”). The ‘273 patent is a continuation of the application that resulted in the ‘461 patent, which means the ‘273 patent has the same invention disclosure as the ‘461 patent but with different claimed subject matter or scope.

The ‘461 patent’s invention uses satellites and ground control stations to determine a subscriber’s cell phone location and allows the subscriber to select which users can obtain the subscriber’s whereabouts. The patent also covers relaying the names and locations of nearby stores, restaurants, etc. based on the location of the cell phone. The ‘273 patent relates to a method of controlling the time intervals between updates to the cell phone’s location. The complaint accuses several AT&T applications of infringing the patents, including AT&T FamilyMap, AT&T Navigator, TeleNav Track, and Xora GPS TimeTrack.

Enovsys also alleges that Sprint-Nextel is currently licensing the subject patents in addition to others. The earlier Enovsys v. Nextel-Sprint lawsuit resulted in a jury award of $2.78 million in damages and eliminated the lack of standing defense. In the Nextel case, the Federal Circuit – aside from rejecting Nextel’s invalidity and non-infringement arguments – affirmed the jury’s verdict that the inventor’s ex-wife did not have a community property interest in the patents and did not need to be a named plaintiff.

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copyright-license-ultramarines-warhammer-40000-lawsuit-contract-breach-movie.jpgThe “Ultramarines: A Warhammer 40,000 Movie” is based on the popular “Warhammer 40,000” table-top war game. The movie is a science-fantasy action thriller set in the future where genetically enhanced super-warriors battle aliens to protect mankind. But in the present, a legal battle has commenced regarding distribution rights to the movie involving the production company and the distributor.

The scene opens with Anchor Bay Entertainment, Codex Pictures and BF1 Films entering into a series of agreements relating to the distribution of the movie. The picture was to be produced by Codex with financing from Aramid Entertainment. The agreements between Anchor Bay and BF1 allegedly granted Anchor Bay “the exclusive, irrevocable, worldwide home video and digital/electronic rights (among other rights) to eight” motion pictures. Anchor Bay selected Ultramarines as one of the pictures and advanced $495,000 to BF1.

Then, for a $200,000 advance, BF1 and Codex executed a North American distribution agreement (“NA Agreement”) for the exclusive right to exploit the movie in all home-video formats, which agreement is alleged to have been made expressly for Anchor Bay’s benefit and with Codex’s knowledge of the Anchor Bay and BF1 agreement. Later, Codex and BF1 also executed a rest of the world distribution agreement (“ROW Agreement”) for the same exclusive rights and referring specifically to Anchor Bay’s sub-licensee status. Anchor Bay and the rest of the parties also signed a deed of undertaking that was allegedly required by Aramid in order for it to finance the film.

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