Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – This “Sonic The Hedgehog” video game copyright infringement claim appears to arise from an independent contractor’s contributions that were not properly acquired by or assigned to Sega. If you don’t have a written agreement with an independent contractor, for example your website designer, the independent contractor owns the copyrights, not you. Comic book artist, writer and designer Kenneth Penders was an independent contractor for Sega’s licensee Archie Comic Publications from 1993 until 2005. Penders claims that he “was given the reins of a nascent fictional universe and dramatically expanded it, creating new, vibrant, and fully developed characters, settings, stories and themes that continue to run throughout the Sonic the Hedgehog comic book series and spin-offs.” Even though he produced the work, Penders alleges that Archie did not pay him for several projects that he submitted for Sonic The Hedgehog, even after Archie gave Penders approval for further development of the Works.

Penders claims that he owns the copyright in the works that “include the substantial and fleshed out characters he created, including their physical traits, personality traits and back stories,” in addition to the dialogue, plots, themes, and settings. When Penders filed to register the copyrights, the U.S. Copyright Office “sent Sega written notice on April 21, 2010 of Penders’ filings for his [Sonic the Hedgehog] registrations” stating that the copyrights would not register if Sega objected within 30 days, which it allegedly failed to do.

Penders accuses the 2008 “Sonic Chronicles: The Dark Brotherhood” video game of infringing several of his purported copyrights. The complaint states that “reviewers and players have stated their belief that the Infringing Game was adapted from or heavily influenced by the Archie comic book series, including the Works and other creative works that Penders developed and produced.” In addition to the copyright infringement claims, Penders asserts a cause of action for unfair competition under California law, which is preempted by the Copyright Act. Xerox Corp. v. Apple Computer, Inc., 734 F.Supp. 1542, 1550-51 (N.D.Cal.1990). He is seeking unspecified monetary damages and a permanent injunction.

Los Angeles, CA – Marge Carson, Inc.’s furniture copyright infringement case, originally filed in North Carolina, has been transferred to the Central District of California via stipulation of the parties after a jurisdictional spat. Now that the procedural issues have been addressed, the focus can turn the substance of Marge’s purported copyrights in the furniture. Marge claims that as early as 2003, it has “offered furniture under one or more of its Bordeaux™, Les Marches™, Pacifica™, Palladian™, Perugia™, Segovia™, Umbria™ and Vouvray™ collections (the “Furniture Collections”).”

Defendant Philippe Langdon Furniture, Inc. is accused of selling “furniture collections that include items bearing designs substantially similar to the copyrighted designs existing upon Plaintiff’s Furniture Collections, which are the subject of currently pending federal copyright applications.” Unfortunately for Plaintiff, it waited until 2010 and after Defendant’s alleged infringement commenced to file copyright applications.

Despite its delay, Plaintiff seeks attorneys’ fees and costs that are only available – per 17 U.S.C. § 412 – if the copyright application was filed before the infringement began or within three months of first publication. As a further hurdle, which timely copyright registration would have avoided, Plaintiff is not entitled to prima facie evidence of copyright validity because its application was not filed within five years of first publication per 17 U.S.C. § 410(c). But even before getting to those hurdles, Plaintiff is going to have to establish that it is entitled to copyright protection because copyright protection does not extend to “useful articles”, such as furniture designs. Design patents, however, do protect furniture designs, but must be filed within one year from the date of public disclosure.

Los Angeles, CA – Inhale, Inc. filed a copyright infringement suit against Starbuzz Tobacco for allegedly copying Inhale’s hookah water pipe’s three-dimensional design. Smoking device designs are apparently a hotbed of intellectual property where, “as a result of its endeavors, Inhale has created and owns valuable intellectual property in the form of patents, trademarks, copyrights, and trade secrets. Inhale has grown to be known as a leading innovator of hookah designs.”

Inhale developed a three-dimensional design for a hookah water pipe and obtained a copyright registration for the sculptural work. Prior to the alleged infringing activity, Defendants were purchasing the subject design from Inhale for approximately one year. When the parties’ business relationship apparently went up in smoke in 2010, Defendants allegedly contracted a Chinese supplier to copy Inhale’s copyrighted design.

Luckily for Defendants, Inhale did not timely register its copyrights in order to recover statutory damages, attorneys’ fees, and costs, which requires that the copyright in the work to have been registered before the commencement of the infringement or within three months from the date of publication. 17 U.S.C. § 412. In this matter, however, it appears that the works were published many years before the copyright registration applications were filed in April of 2011, thereby preventing recovery of statutory damages and attorneys’ fees.