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copyright-license-photo-contract-oral-agreement-ben-hogan-image-lawsuit.jpgLos Angeles, CA – An oral agreement is usually not the greatest way to memorialize the parties’ duties and rights for copyrighted material, and this is certainly not the first or last such dispute. See here. Plaintiff JanKris Vineyards entered into an oral copyright license agreement with photographer Jules Alexander to use six photographs of golfer Ben Hogan on wine labels for six years. JanKris contends that the oral license did not limit the use of the photographs other than on wine labels and in marketing of such wines. Also, JanKris alleges that the parties agreed that JanKris could make a derivative work of one of the photographs by replacing a cigarette in Ben Hogan’s hand with a glass of wine.

JanKris then used the licensed photographs on its wines and marketing, which included agreements with PGA Magazine to run advertisements and a licensing agreement with Calloway for Ben Hogan’s publicity rights. JanKris alleges that in an attempt to renegotiate the terms of the license, Alexander asserted copyright infringement claims against PGA Magazine and Calloway, which included assertions that JanKris did not have the right to use the photograph of Hogan holding a wine glass. Based on Alexander’s alleged threats, JanKris claims that Calloway denied a license to use Ben Hogan’s name in the Far East, resulting in damages of more than $1 million a year.

In addition to monetary damages, JanKris seeks declaratory relief of copyright non-infringement because the works allegedly fell into the public domain. JanKris contends that because the photographs were taken in the 1950’s, the works fell into the public domain when they were first published without proper copyright notification prior to the 1976 Amendments to the Copyright Act. And, defendant did not seek a copyright registration until 1998. The case is Veris Management Co. v. Jules Alexander, CV11-01962 VBF (C.D. Cal. 2011).

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tacori-crescent-copyright-trade-dress-tro-jewelry-temporary-restraining-order.pngLos Angeles, CA – Tacori Enterprises sued Scott Kay for copyright and trade dress infringement over sales of jewelry incorporating a repeating crescent design. Tacori filed an ex parte application for a temporary restraining order to prevent further sales of Scott Kay’s Heaven’s Gate Collection that allegedly infringes Tacori’s purported copyrights and trade dress.

Although the Court found that Tacori is likely – because of the “extremely low burden” – to establish copyright ownership, Tacori had not shown that “it is likely to pass either the extrinsic or intrinsic test” to prove infringement. The extrinsic test “requires a court to examine the similarities between the copyrighted and challenged works and then determine whether the similar elements are protectable or unprotectable.” “The intrinsic test is a subjective comparison that focuses on whether the ordinary, reasonable audience would find the works substantially similar in the total concept and feel of the works.”

The Court relied on Scott Kay’s submission of third-party evidence having similar elements of the crescent design at issue to find that many of the design elements were likely not protectable. As for the intrinsic test, the Court found it unlikely that a reasonable audience for the rings “would find them substantially similar in total concept and feel in light of their differences.”

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trademark-sue-ebay-sellers-candyshell-speck-speculative-design-cases.pngLos Angeles, CA – Speck Products manufactures carrying cases for electronic devices, including the iPad, iPhone, iPod, and Blackberry. The products are sold bearing the Speck® or Candyshell® trademarks. Last week, Speck filed numerous trademark infringement and unfair competition lawsuits against numerous eBay sellers alleging sales of counterfeit electronic device cases. Plaintiff alleges that “Defendants use images and names confusingly similar or identical to Plaintiff’s Marks to confuse consumer and aid in the promotion and sales of its unauthorized and counterfeit product.”

One of the numerous cases is Speculative Product Design, Inc. v. PPG Enterprize, CV1100160 VBF (C.D. Cal. 2011).

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design-patent-trademark-copyright-apple-headset-eforcity-infringement.jpgLos Angeles, CA – eForCity Corporation has sued Apple, Inc. seeking the Court’s declaration that its sales of various earphones do not infringe Apple’s Patent Nos. D589,491, D469,753, D596,616, and D515,070. The lawsuit was filed after Apple’s attorneys sent a cease and desist letter accusing eForcity of also infringing Apple’s copyrights by using iPad images allegedly copied from Apple’s website. Further, the letter accused eForCity of infringing Apple’s iPad, iPhone, iPod and Mac trademarks in product descriptions with the ® or ™ symbols and without attribution to Apple. The case is eForCity Corp, et al. v. Apple, Inc., CV11-00808 SVW (C.D. Cal. 2011).

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watch-trademark-jewelry-lawsuit-infringement-red-gold-rolex.jpgLos Angeles, CA – Rolex must be seeing red after being sued by Solid 21 for trademark infringement for using “red gold” on, you’ll never guess, red gold jewelry. But Rolex isn’t alone and can commiserate with the other 13 or so other defendants that Solid 21 is simultaneously suing for using what appears to be a generic term. Red gold, also known as rose gold, is made by alloying gold with copper. Although Solid 21’s trademark registration (see here) discloses that “red gold” is used on “fine jewelry made of a special alloying of gold with a distinct color made into fine jewelry”, it does not disclose that red gold is used on red gold jewelry. I don’t think Solid 21 can beat the Egyptian mummies’ first use date for “red gold” jewelry. See here.

The case is Solid 21, Inc. v. Rolex Watch USA, Inc., CV11-0449 GAF (C.D. Cal. 2011).

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domain-name-registration-trademark-cancel-toms-famous-family.gifSanta Ana, CA – This case should serve as a warning to all domain name owners: TIMELY RENEW YOUR DOMAIN NAME REGISTRATION AND DON’T LET IT LAPSE! The Valaskantjis family trust, owner of the Tom’s Famous Family Restaurants since 1968, unfortunately allowed its domain name registration to lapse without timely renewal. The domain name, www.tomsfamousfamilyrestaurants.com, was then allegedly registered by defendant Katz Global Media, LLC.

Katz is accused of establishing a website using Tom’s trademarks and copyrights to publish false reports regarding Tom’s use of illegal alien labor to operate its restaurants. The website also claims that plaintiffs don’t pay the required taxes or workers compensation insurance. Further, Defendant is accused of soliciting the public to report plaintiffs to the IRS and Customs and Immigration Enforcement. On top of the problems created by the new website, Plaintiffs have also allowed their trademark registration to lapse: see here.

It appears that the defendant has researched First Amendment and fair use defenses. Courts have previously found for plaintiffs in bad faith registrations of lapsed domain names where the subsequent registrant attempted to sell the domain back to the prior registrant. See BroadBridge Media, L.L.C. v. Hypercd.com, 106 F. Supp. 2d 505, 511-512 (S.D.N.Y. 2000). In this case, however, it appears that a sophisticated defendant is using the domain name for what appears to be protected speech. It will be interesting to see how this case unfolds.

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light-fixture-copyright-lighting-crystal-shade-infringement.jpgLos Angeles, CA – Bel Air Lighting is suing Schonbek over the sales of Bel Air’s Portfolio light fixture. Schonbek previously sued Lowe’s Home Centers for copyright infringement for selling the Portfolio light fixture. Bel Air claims that there is an actual case or controversy between the parties and it can seek declaratory relief of copyright invalidity and non-infringement. Bel Air alleges that Schonbeks are invalid because the light fixtures are outside the scope of subject matter entitled to copyright protection in that they merely include placement of preexisting elements around a fixture, are useful articles, lack artistic features aside from utilitarian functions, and/or lack originality. The case is Bel Air Lighting, Inc. v. Schonbek Worldwide Lighting, Inc., CV10-10069 MMM (C.D. Cal. 2010).

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monster-cable-trademark-infringement-lawsuit-los-angeles-california-court.jpgLos Angeles, CA – Trademark bully Monster Cable, as it has been anointed by others here and here, seems to be on a trademark infringement lawsuit rampage against eBay sellers of monster products. Maybe the slew of trademark lawsuits is in response to the court’s denial of the temporary restraining order in its and Beats Electronics’ design patent lawsuit against Fanny Wang Headphone company.

Whatever the reason, it’s interesting that among the six causes of action for trademark infringement, dilution, etc., there is no cause of action for trademark counterfeiting. Even more so when the complaint alleges that Monster Cable’s private investigator purchased the items on eBay, they were tested, and deemed to be counterfeit: “Defendant has, without the consent of Plaintiff, offered to sell and sold within the United States (including within this judicial district) goods that were neither made by Plaintiff nor by a manufacturer authorized by Plaintiff (such goods are hereafter referred to as “Counterfeit Goods”).” Maybe Monster Cable’s perplexing strategy will crystallize as the cases proceed to trial, assuming the eBay sellers can afford to mount a defense against this alleged trademark bully.

The case is Monster Cable Products, Inc. v. Wireovia, LLC et al., CV10-10010 DSF (C.D. Cal. 2010).

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uniloc-cafc-federal-circuit-win-damages-patent-microsoft-infringe.pngWashington, D.C. – The Court of Appeals for the Federal Circuit (“CAFC”) overturned the district court’s finding of non-infringement. After Uniloc won a jury award of $388 million, the district court granted judgment as a matter of law (“JMOL”) of non-infringement and no willfulness on Microsoft’s post-trial motions. Details blogged here.

In reversing the district court’s decision, the CAFC found that “[b]ecause the jury’s verdict on infringement was supported by substantial evidence, this court reverses the district court’s grant of JMOL of non-infringement; this court also reverses the district court’s alternative grant of a new trial on infringement as an abuse of discretion.” The CAFC, however, affirmed the district court’s finding of no willful infringement because “the jury’s verdict on willfulness was not supported by substantial evidence.” The CAFC further affirmed the district court’s denial of Microsoft’s motion for JMOL of invalidity.

As to damages, the CAFC granted a new trial because “the jury’s damages award was fundamentally tainted by the use of a legally inadequate methodology.” In doing so, the CAFC disbanded the 25% rule of thumb (25%/75% royalty split between licensor/licensee) as a basis for royalties that it had previously “tolerated”: “This court now holds as a matter of Federal Circuit law that the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. Evidence relying on the 25 percent rule of thumb is thus inadmissible under Daubert and the Federal Rules of Evidence, because it fails to tie a reasonable royalty base to the facts of the case at issue.”

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