|

idea-submission-attorney-implied-in-fact-contract-copyright-ea-sports-gillette-voss-knotts.jpgSan Diego, CA – Ron Voss is suing Gillette and EA Sports for copyright infringement and unfair competition, but judging from the facts of the case, he should have asserted an idea submission or an implied in fact contract claim. People mistakenly believe that a copyright registration protects the “idea” contained therein, instead of the particular expression. In fact, §102 of the Copyright Act specifically states that copyright protection does not extend to any “idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”

Voss alleges that he wrote and copyrighted a treatment entitled “Cyber Sports Championship Challenge,” which concept involves televising video game tournaments that pit gamers against celebrities and famous sports stars as contestants. Voss contends that co-defendant Jerry Knotts “misappropriated [the copyrighted work] and delivered it to EA. Afterward, EA and other defendants infringed Mr. Voss’ copyright by creating and distributing on commercial television (via the Spike Channel) and the World Wide Web “Gillette®-EA Sports™ Present Champions of Gaming powered by Xbox 360 LIVE” (the “program”).” The complaint, however, fails to specify how the expression of the copyrighted work was copied, separate and apart from the alleged “misappropriation” of the general idea. Plaintiff’s §17200 unfair competition claim is based on the copyright infringement facts and is preempted. 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 9th Circuit has yet to rule after the en banc rehearing of the “Ghost Hunters” case, Montz v. Pilgrim Films & Television, Inc. The three-judge panel affirmed the district court’s order that Montz’s implied in fact contract claim was preempted by the Copyright Act. Montz v. Pilgrim Films & Television, Inc., 606 F.3d 1153 (9th Cir. 2010) (non-citable). The Court sua sponte ordered an en banc rehearing of the case and withdrew the three-judge panel’s published opinion. Based on the en banc panel’s questioning, I – as a non-clairvoyant – predict a reversal of the district court’s ruling and a finding that Montz’s idea submission claim is not preempted by the Copyright Act, in line with Grosso v. Miramax Film Corp., 383 F.3d 965 (9th Cir.2004) and Desny v. Wilder, 46 Cal.2d 715, 299 P.2d 257 (1956). Watch the video of the Ninth Circuit’s en banc rehearing:

Continue reading ›

|

ttab-trademark-attorney-examining-likelihood-of-confusion-ez-gro-eezy-gro.jpgThe Trademark Examining Attorney refused registration of Gardenlife, Inc.’s application for the trademark EZ GRO for “living flowers and plants and plant seeds” in light of the previously registered EEZY-GRO trademark for “flower pots and planters” under 15 U.S.C. §1052(d). The examining attorney also required a disclaimer of the word “GRO.” On appeal, applicant capitulated and included a disclaimer of the word “GRO.” As a procedural matter, the Board excluded materials attached to applicant’s brief from consideration on appeal because they were untimely under 37 C.F.R. § 2.142(d). Thus, the sole remaining issue on appeal was whether there was a likelihood of confusion between the two trademarks.

The Board considered the du Pont factors of (1) the similarity/dissimilarity of the trademarks, and (2) the similarities of the goods. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). As to the first factor:

We find the marks EZ GRO and EEZY-GRO substantially similar in terms of appearance, both comprised of two terms; the second in each being the identically misspelled word GRO (“grow”), the first in each being different fanciful spellings of the word “easy,” respectively EZ and EEZY. Although registrant’s mark contains two additional letters, they are not likely to be recognized and do not serve as distinguishing features because of their imbedded placement within the overall structure of registrant’s mark. In addition, and contrary to applicant’s contention, the hyphen in registrant’s mark is not a distinguishing feature and serves mainly as spacing between the two terms. See Goodyear Tire & Rubber Co. v. Dayco. Corp., 201 USPQ 485, 489 n.4 (TTAB 1978) (difference of hyphen insignificant).

(Side Note: It’s generally not a good idea to misspell common words in your trademarks, see #4 in trademark selection article here.)

The Board also rejected applicant’s argument that the two marks are pronounced differently because “it is settled Continue reading ›

|

San Diego, CA – Brighton Collectibles designs and manufactures fashion accessories, including a watch sold under the Laguna trademark. Brighton registered the copyright in its Laguna watch design in March of 2000.

copyright-watch-brigthon-collectibles-infringement-lawsuit.jpg

Defendant Pedre Watch Company is accused of making a less expensive imitation. As a result, Brighton claims that “the Infringing Watch has been advertised, marketed and/or sold to a substantial number of consumers, thus lessening the uniqueness of Plaintiff’s Laguna Watch. The case is Brighton Collectibles, Inc. v. Pedre Watch Co., Inc., CV11-0637 BEN (S.D. Cal. 2011).

|

copyright-bratz-mattel-trade-secret-jury-verdict-lose-win.pngSanta Ana, CA — The jury in the Mattel v. MGA battle over the Bratz dolls determined that MGA did not infringe any copyrights and did not steal the idea or concept from Mattel. Instead, the jury has awarded at least $88.5 million to MGA for Mattel’s misappropriation of MGA’s trade secrets. The verdict form is available here.

This second round is in stark contrast to the first trial where the jury found for Mattel, which was overturned on appeal. I wouldn’t be going out on a limb by predicting that Mattel will appeal the verdict, after it’s post trial motions to set it aside, of course.

The case is Bryant v. Mattel, SACV 04-09049 (C.D. Cal. 2004).

|

patent-infringement-biotech-glaxo-genentech-Cabilly.jpgLos Angeles, CA – Genentech and City of Hope are the owners of U.S. Patent No. 7,923,221 (“the Cabilly III patent”), entitled “Methods of Making Antibody Heavy and Light Chains Having Specificity for a Desired Antigen,” issued on April 12, 2011. Plaintiffs wasted no time suing GlaxoSmithKline, Human Genome Sciences, and Lonza Biologics for patent infringement, which suit was filed on the patent’s issue date. The ‘221 patent claims priority to the Cabilly II patent, filed in 1988, which in turn claims priority to the Cabilly I patent, filed in 1983. The Cabilly III patent is the most recent arsenal introduced into years of patent lawsuits, appeals, and USPTO re-examination proceedings. Details here. The Cabilly II patent was the subject of the landmark U.S. Supreme Court decision in MedImmune v. Genentech, 549 U.S. 118 (2007), which eliminated the “reasonable apprehension of suit” test for establishing declaratory judgment jurisdiction.

The Cabilly patents relate to methods for producing antibodies using recombinant DNA. Plaintiffs allege that HGS and GSK have entered into a co-development and commercialization agreement for the development and sale of Benlysta®. Plaintiffs further allege that Lonza Biologics manufactures ofatumumab in the United Kingdom and supplies it to GSK, with knowledge that GSK incorporates ofatumumab into the final Arzerra™ product.

The case is Genentech, Inc. et al. v. Glaxo Group Limited, et al., CV11-03065 SVW (C.D. Cal. 2011).

|

removal-federal-court-jurisdiction-preemption-starclipz-stargreetz.pngLos Angeles, CA – Starclipz sued Stargreetz and its principals in Los Angeles Superior Court for unfair competition, trade secrets misappropriation, interference with prospective advantage, conversion and other causes of action, none of which specifically included a federal cause of action. Starclipz alleges that it conceived and developed a business that allows consumers to personalize greeting messages by including celebrity clips from their favorite movies. Plaintiffs claim that they had numerous meetings with Eric Frankel, Lucy Hood, and Linda Abrams to fund and develop a business, but Defendants “misappropriated Plaintiffs’ ideas and creative materials for their own unauthorized use and pecuniary benefit” by developing www.stargreetz.com.

In removing the case to federal court, Defendants assert that the state causes of action are merely disguised claims for copyright infringement that are preempted by the Copyright Act. Thus, although Defendants concede that there’s no basis for removal under the “well-pleaded complaint rule,” they claim that removal is proper under the complete preemption doctrine, wherein the existence of a preemption defense to a state-law claim gives rise to federal question jurisdiction.

The case is Starclipz, LLC v. Stargreetz, et al., CV11-2779 CAS (C.D. Cal. 2011).

|

childrens-music-copyright-lawsuit-dragon-tales-17-usc-410c.jpgLos Angeles, CA – Jose-Luis Orozco is accusing Sesame Workshop of using his copyrighted song in its Dragon Tales television program without authorization. According to the complaint, Orozco wrote the music and lyrics to the children’s song El Chocolate in 1971, which was based on his travels and experience to Sonora, Mexico in 1958. In 1981, Orozco recorded the song on an album, which song was also included in the companion song book. The song was not copyrighted, however, until 1996.

Orozco alleges that his El Chocolate song was performed in the “Super Snowy Day” episode of Dragon Tales. Orozco also claims that the song was also included on a Dragon Tales DVD. The song is very catchy, so don’t click play below if you don’t want an earworm.

https://www.youtube.com/watch?v=S12hoquBIFs

Continue reading ›

|

fitness-dvd-copyright-trademark-attorney-ebay-zumba.jpgLos Angeles, CA – Zumba Fitness has filed several lawsuits accusing eBay sellers of counterfeiting its fitness DVDs and infringing its trademarks and copyrights. Zumba® Fitness is a Latin-inspired dance-fitness program that combines international music with dance steps to create an aerobic exercise regimen. Plaintiff alleges that over 10 million people take weekly Zumba classes worldwide. Plaintiff owns numerous copyright registrations and USPTO trademark registrations for Zumba related products and services.

Plaintiff alleges that in its ongoing investigation of counterfeit sales of Zumba products, its private investigator purchased an allegedly counterfeit “Zumba 4 DVD Box Set” from the Defendants. “The inspection of the purchased item confirmed that the item Defendants sold to the investigator was in fact a counterfeit and an unauthorized Zumba 4 DVD Box Set.” Plaintiff also asserts claims for unfair competition, trademark dilution, and unjust enrichment.

https://www.youtube.com/watch?v=A314kZAOCdw

Continue reading ›

|

copyright-infringement-attorney-idea-submission-cars-movie.jpgLos Angeles, CA – Screenwriter Jake Mandeville-Anthony is suing Disney and Pixar for allegedly infringing his copyrights through their release of the animated motion picture “Cars”. Plaintiff claims that beginning in 1992, he drafted screenplays, treatments, synopses, and character lists documenting his cartoon car characters’ stories. His “Cookie & Co.” work was based on the true-life stories of two racers in the “London to Sydney vintage Car Endurance Rally.” And his second work, also titled “Cars”, included a treatment, sample screenplay, synopses, ten character sketches, and a marketing/merchandising plan.

Plaintiff claims that Disney had access to his works because he mailed copies to Disney in ’92, ’94, and ’96. He also claims that Pixar had access to the works because he personally presented them to employees of Lucasfilm, which employees later left to join Pixar.

The complaint alleges several similarities between Plaintiff and Defendants’ works: “Plaintiff’s oldest cartoon car character was named ‘Stanley.’ Defendants used the identical name, ‘Stanley,’ for one of their oldest car characters, with a visual appearance substantially similar to Plaintiff’s. Both characters are drawn as a Model T Ford.”

Continue reading ›

|

Los Angeles, CA – The late Evel Knievel was a motorcycle daredevil whose crashes made him more famous than his successful jumps. Lawsuits continue regarding ownership of the copyrights in his pictures and film clips. In 2005, Gary Schreiber sued Knievel in Nevada District Court for a declaration of validity of a 1982 written transfer of copyrights to pictures and films made by Knievel (story about the suit is here). While the Nevada lawsuit is still pending, Schreiber has now filed a copyright infringement and right of publicity lawsuit against Madame Tussauds, the leisure/tourist attraction featuring wax sculptures and figurines of celebrities.

copyright-attorney-evel-knievel-abc-espn-lawsuit.jpg

Plaintiff Schrieber alleges that Evel was in need of capital to resurrect his career and Schrieber purchased the rights to Evel’s films and the films themselves via written agreement in 1982. Plaintiff then produced two compilation films entitled “Evel Knievel’s Specacular Jumps” and “The Last of the Gladiators.” Schreiber alleges that at some time, Knievel once again sold or licensed the same rights – previously granted to Schreiber – to Madame Tussauds without Schrieber’s knowledge. The case is Raymond Gary Schreiber v. Tussauds Attractions Ltd., et al., CV11–2115 DSF (C.D. Cal. 2011).