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trademark-attorney-drink-beverage-energy-killer-buzz-monster.jpgLos Angeles, CA – In a buzz worthy turn of events, Hansen Beverage Company filed a declaratory judgment action against PBEV, seeking a ruling that its use of the term “buzz” and “Killer-B” on its Monster Energy® drinks does not infringe PBEV’s “Killer Buzz” trademark.

Hansen alleges that in July 2009, it launched a new line of soft drinks under the mark Nitrous Monster Energy, where one product bears the mark Killer-B as a flavor designation. A year later, Hansen received a cease-and-desist letter alleging trademark infringement. Hansen’s complaint maintains that its Killer-B mark is not confusingly similar to the Killer Buzz mark, including the dissimilarity in packaging on which the marks appear. The case is Hansen Beverage Company v. PBEV, LLC, CV10-07594 CAS (C.D. Cal. 2010).

KILLER BUZZ PHOTO CREDIT & PRODUCT REVIEW FROM EDJUNKIE.COM

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trademark-attorney-tacos-chronic-infringement-lawsuit.jpgSanta Ana, CA – Chronic Tacos Enterprises (“CTE”) is a franchisor of Mexican food restaurants under its Chronic® and Chronic Tacos® trademarks. Defendants are alleged to be former temporary licensees at the Huntington Beach location, which license was terminated when CTE’s founders ceased being shareholders in the Huntington Beach location. CTE alleges that Defendants have failed to execute a franchise agreement to operate the location, thus necessitating the lawsuit. The case is Chronic Tacos Enterprises, Inc. v. Chronic Tacos Huntington Beach, Inc. et al., SACV10-01414 DOC (C.D. Cal. 2010).

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US-trademark-attorney-gray-market-manzanita-sol-pepsi-USA-mexico.jpgLos Angeles, CA – Pepsi’s subsidiary owns the Manzanita Sol® trademark that is used on apple flavored soft drinks. Manzanita Sol® is Pepsi’s second most popular brand in Mexico. Pepsi has sold in the U.S. millions of dollars worth of Manzanita Sol® sodas through its authorized bottlers.

Pepsi accuses SPE Trading of importing soft drinks manufactured in Mexico bearing the Pepsi® and Manzanita Sol® trademarks that Pepsi does not authorize for sale in the U.S. Pepsi alleges that the Mexican product sold by SPE is materially different in many respect from authorized products sold in the U.S., e.g. the Mexican product does not comply with the labeling regulations of the Food and Drug Administration. Pepsi alleges that in response to a cease and desist letter, SPE had previously agreed to stop importing and selling the gray market product. But based upon alleged recent purchases of the gray market Manzanita Sol® product, Pepsi filed the instant trademark infringement and dilution action. The case is Pepsico, Inc. et al. v. SPE Trading, Inc., CV10-6833 DDP (C.D. Cal. 2010).

PRACTICE NOTE: U.S. trademark owners can prevent the importation and/or sale of gray goods that are “materially different” from those sold in the U.S. In determining what is considered “materially different,” 19 C.F.R. § 133.2(e) provides the following non-exclusive considerations: “(1) The specific composition of both the authorized and gray market product(s) (including chemical composition); (2) Formulation, product construction, structure, or composite product components, of both the authorized and gray market product; (3) Performance and/or operational characteristics of both the authorized and gray market product; (4) Differences resulting from legal or regulatory requirements, certification, etc.; [and] (5) Other distinguishing and explicitly defined factors that would likely result in consumer deception or confusion as proscribed under applicable law.” Also, PepsiCo, Inc. v. Pacific Produce, Ltd., 2000 U.S. Dist. LEXIS 12085 (D. Nev. 2000) cites cases where failure to comply with FDA labeling regulations constituted a material difference.

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copyright-lawsuit-sims-plumbbob-electronics-technologies.jpgSanta Ana, CA – Electronic Arts’ 2009 release of its Sims 3 virtual reality game sequel was to be accompanied by a promotional PlumbBob USB flash drive, which design and prototype has resulted in a real world copyright lawsuit. Plaintiff Design Technologies (“DT”) alleges that Lithomania, a broker that specializes in promotional items called swag, was retained by EA to develop promotional materials for the Sims 3 release. Lithomania then engaged DT to turn the two dimensional PlumbBob – a green jewel that identifies the computer character being controlled – into a three-dimensional USB flash drive.

DT alleges that it spent hundreds of hours developing several designs and provided a prototype to EA. “What began as a project that would involve only a few thousand PlumbBob USB’s that would be given away for free to promote the new game morphed into a program under which EA would sell hundreds of thousands of the PlumbBob USB’s in the collector’s edition of the new Sims 3 game.” DT alleges that after its prototype had been approved, EA and Lithomania asked it to sign an assignment agreement, which it did not sign. Lithomania is accused of then passing DT’s prototype – with EA’s knowledge – to a third party to mass produce. DT seeks a declaration from the Court that it is a joint author of the copyrighted work and seeks an accounting from EA for its profits, alleged to be in the neighborhood of $6,000,000. The case is Direct Technologies, LLC v. Electronic Arts, Inc., SACV10-1336 MLG (C.D. Cal. 2010).

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software-copyright-lawsuit-club-speed-oskar.jpgOskar Systems sued Club Speed, Pole Position, P2R Karting, and individuals for allegedly infringing its copyright in source code for a computer program used in the operation of go-kart tracks. Details blogged here. In late 2001-early 2002, the software was initially developed and owned by Contemporary Systems, Inc. (“CSI”). In 2005, Defendants licensed the software from CSI for one year but then developed their own replacement software and did not renew the license. Oskar Systems is formed in December of 2006 and in October of 2007, CSI transfers “all of its business assets related to ‘Oskar’ business operations” to Oskar Systems. In February of 2009, seven years after the date of creation, Oskar Systems first registers a claim of copyright with the copyright office, but the source code submitted to the Copyright Office was the 2008 version – not the 2002 version.

The Court first found that Oskar Systems did not have standing to bring suit because the alleged infringement occurred before the CSI assets were assigned to Oskar and the assignment did not expressly include causes of action for infringement. “A grant of copyright, even if it purports to convey ‘all right, title and interest,’ is generally construed not to assign existing causes of action unless such causes of action are expressly included in the grant.” Lanard Toys Ltd. v. Novelty Inc., 511 F. Supp. 2d 1020, 1033 (C.D. Cal. 2007). A copy of the order is available here.

Additionally, the Court found that Oskar Systems lacked standing because it failed to deposit with the Copyright Office two copies of the original 2002 software, but instead submitted the software as it existed in the latter part of 2008. The day before filing its opposition, Oskar System attempted – fruitlessly – to correct the improper deposit by filing a supplemental registration and disclosing that the 2008 version is a derivative work of the 2002 software.

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Los Angeles, CA – In 1977, Singer/Songwriter Lamont Dozier composed a song entitled “Peddlin’ Music on the Side” and registered the copyright therein. He further renewed the copyright registration in January of 2005.

In 2009, Derek Christoff (pka “D-Sisive”) recorded a rap song entitled “(I’m A) Nobody With a Notepad. Plaintiff accuses D-Sisive of copying substantial portion of On the Side, including a complete verse of Dozier’s singing taken directly from the original master recording. Dozier also claims that the rest of the son uses his lyrics and recording as a musical hook, “Notepad is simply a rap version of On the Side with lyrics spoken over it to a ‘rap beat’.” Urbnet Records, Fontana Distribution, and Universal Music Group are also accused of marketing, distributing, selling and licensing the Notepad song.

D-Sisive’s Video:

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idea-submission-attorney-private-chefs-trademark-infringement.jpgLos Angeles, CA – Private Chefs, Inc. is suing Food Network for stealing the recipe for the successful show “Private Chefs of Beverly Hills” in an idea submission, trademark infringement, and unfair competition case. Plaintiff is the owner of a USPTO registration for its design mark “PCI Private Chefs, Inc.”, which registered in 2006. Plaintiff alleges that in April of 2002 its president pitched a show idea to Food Network titled “Celebrity Dish”, which premise involved private chefs that worked for celebrities and wealthy individuals explaining recipes on air along with the celebrities and individuals.

Although Food Network declined Plaintiff’s concept, it’s alleged that in April 2010 Defendants began broadcasting “Private Chefs of Beverly Hills.” Plaintiff alleges that the “concept of the Show is close to if not exactly the same as ‘Celebrity Dish.'” The complaint continues, “[t]he Show also blatantly infringes on Plaintiff’s federally registered trademark ‘Private Chefs’ and this infringement has caused substantial consumer confusion, particularly in light of the fact that Plaintiff’s principal office is in Beverly Hills.” The case is Private Chefs, Inc. v. Food Network, Inc. et al., CV10-6159 CBM (C.D. Cal. 2010).

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trademark-attorney-logo-nba-sports.jpgSan Diego, CA – The Coalition to Advance the Protection of Sports logos (“CAPS”) protects and enforces the trademarks and logos owned by the NBA, MLB, NFL, NHL, and Collegiate Licensing Company. CAPS sent a cease and desist letter to Plaintiff James Simpson informing him that the CAPS members “maintain the exclusive right, title and interest in the names, trademarks, copyrights, symbols, emblems, designs, logos, photographs, uniforms, team colors and identification of their corresponding organizations and collegiate institutions.” CAPS further accused Simpson of selling unauthorized jerseys bearing the CAPS members’ trademarks and logos on his website.

Simpson, in response to the letter, filed a declaratory judgment action seeking the Court’s ruling that Simpson’s jerseys do not infringe on CAPS members’ trademarks and logos and that CAPS is not the exclusive licensee of any of the trademarks. The case is Simpson v. Coalition to Advance the Protection of Sports Logos, CV10-1637 JLS (S.D. Cal. 2010).

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patent-attorney-snowboard-bindings-burton-patent-infringement.jpgSanta Ana, CA – Peter Van Bregmann is suing Burton Snowboards for infringing on a snowboard binding patent. Plaintiff alleges that in 1996 he met with Burton and after signing a confidentiality agreement, Plaintiff showed his invention to Burton, but it was not interested. On March 2, 1999, Plaintiff was issued U.S. Patent No. 5,876,045, entitled “Angularly Adjustable Snowboard Boot Binding,” which generally relates to a lever system that allows for convenient adjustment of boot bindings, whereby the use of tools is eliminated.

Defendant is accused of willfully infringing the patent by manufacturing a snowboard boot binding marketed under the “Burton Progression Custom Rental Binding” mark. The case is Bregmann v. Burton Snowboards North America, SACV-10-1199 DOC (C.D. Cal. 2010).

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patent-attorney-design-trademark-bottle-gt-beverages-coca-cola.jpgSanta Ana, CA – GT Beverage Company sued The Coca Cola Company seeking Court judgment that its sports-themed shaped bottles did not infringe Coke’s trademark and design patent. Details blogged here. Coke filed counterclaims for trademark infringement and GT moved to dismiss them based on the doctrine of judicial estoppel, which prevents a party from assuming a contrary position after that party “assumes a certain position in a legal proceeding, and succeeds in maintaining that position.” New Hampshire v. Maine, 532 U.S. 742, 756 (2001).

Coke obtained its USPTO trademark registration for a sphere bottle design via a global settlement of several legal proceedings (two in Belgium, one in The Netherlands, one in Spain, and two in the U.S.) with a third-party, O-Company N.V. In those cases, Coke asserted arguments of invalidity, non-infringement, and fair use in response to O-Company’s allegations. Based on Coke’s prior litigation stance, GT filed the motion to dismiss on the grounds that judicial estoppel precludes Coke from asserting its trademark infringement claims against GT.

The Supreme Court outlined three factors to consider when applying judicial estoppel: (1) whether a party’s current position is clearly inconsistent with its previous position; (2) whether the court accepted the party’s previous position, such that there is the perception that either the first or second court was misled; and (3) whether the party would gain an unfair advantage or impose an unfair detriment on the opposing party by asserting its inconsistent position. New Hampshire, 532 U.S. at 750-51.

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