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appeal-trademark-attorney-vw-automotive-gold-9th-circuit.jpgThe Ninth Circuit affirmed (copy here) the district court’s trademark infringement ruling in favor of Volkswagon by denying Auto Gold’s “first sale” defense. Auto Gold purchased genuine VW badges from Volkswagon and then mounted the badges on its marquee license plates, which were sold to Auto Gold’s customers.

Despite Auto Gold’s prominent disclaimer on its packaging that the marquee plate was not manufactured by VW, the Court held that “the ‘first sale’ doctrine does not provide a defense because the plates create a likelihood of confusion as to their origin. We do not base our holding on a likelihood of confusion among purchasers of the plates. Rather, we base it on the likelihood of post-purchase confusion among observers who see the plates on purchasers’ cars.”

The Court relied on refurbishment cases where purchasers of refurbished products with non-genuine parts, e.g. Rolex, were purchasing the product for the “Rolex” trademark displayed to others who did not know that the product was re-furbished. Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704 (9th Cir. 1999). Further, the Court ruled that three-year statue of limitations applied to the laches defense. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., No. 08-16005 (9th Cir. 2010).

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trademark-attorney-unfair-competition-lawyer-clothing-designer-shades-of-greige.jpgLos Angeles – Fashion Designer Micah A. Cohen has been sued by his former employer, Swarm, LLC. Cohen apparently started the clothing company as a young designer and launched the “Shades of Greige” apparel line. Swarm alleges that Cohen was employed as a fashion designer until November 13, 2009, when he “quit his job with Plaintiff.”

Plaintiff contends that three weeks before Cohen left its employ, Cohen’s mother, Nancy Sidonie Cohen, filed an intent-to-use application with the USPTO to register the mark “Shades of Grey” for use on clothing. In March of 2010, Plaintiff did what it should have done a long time before, i.e. filed its own trademark application to register “Shades of Greige” with the USPTO.

Plaintiff contends that Defendants’ use of the mark “Shades of Grey by Micah Cohen” is likely to confuse customers. Further, “Defendants are utilizing the same designs, patterns, look, pricing, factories and sales representatives used by Plaintiff when Mr. Cohen was employed by Plaintiff, and Defendants are selling the Accused Goods to the same wholesale customers to which Plaintiff sells its goods and has developed valuable business relationships.” Thus, Plaintiff asserts causes of action for trademark infringement, unfair competition, intentional interference with economic relations, breach of duty of loyalty, and declaratory judgment for withdrawal of Defendants’ trademark application. The case is Swarm, LLC v. Micah A. Cohen, et al., CV10-3188 DDP (C.D. Cal. 2010).

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copyright-attorney-film-movie-europacorp-consolidated-pictures.jpgLos Angeles, CA – EuropaCorp is a French motion picture studio that produced the feature film “I Love You Phillip Morris,” starring Jim Carrey and Ewan McGregor. In a May 8, 2009 agreement, EuropaCorp licensed to Consolidated Pictures all domestic distribution rights in the movie, including all theatrical, home video, and television rights. In exchange, Consolidated Pictures was to pay a $3 million advance. After the licensing agreement was executed, EuropaCorp alleges that it delivered the movie and marketing materials; however, a dispute arose between the parties as to the timing of delivery. The dispute was addressed by the execution of an amendment to the license agreement in February of 2010.

EuropaCorp now contends that Defendants have breached the agreement by failing to make the installment payments towards the $3 million advance. As a result, EuropaCorp rescinded the agreement and sought return of the movie and marketing materials. EuropaCorp alleges that Defendants have refused to return the movie or acknowledge the rescission of the distribution rights. Thus, the instant copyright infringement and breach of contract suit was filed. The case is EuropaCorp v. Consolidated Pictures Group, Inc., et al., CV10-2917 DSF (C.D. Cal. 2010).

Here’s the trailer:

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copyright-attorney-trademark-instyler-hair-beauty-product.jpgLos Angeles, CA – Tre Milano is the owner of the InStyler® trademark and several copyrights used in the sale and advertising of its hair styling product, including a copyright registration for its www.getinstyler.com website. You may have seen one of its infomercials for its “rotating iron” hair brush, a hair product that combines a hair brush and rotating hot iron to curl, straighten, and style hair. Since its first sale in June of 2008, Plaintiff contends that it has spent $30,000,000.00 to air its television infomercials and $5,000,000.00 on print and internet advertising. As a result, Plaintiff asserts that its trademark has become famous.

Plaintiff asserts that its investigator purchased an “InStyler” rotating hot iron from Defendants’ eBay listing for $65.99, which was charged to the investigator’s PayPal account. In advertising and selling the “InStyler” products, Plaintiff further contends that Defendants use images that infringe on Plaintiff’s copyrights and use trademarks that are confusingly similar to Plaintiff’s. In addition to the trademark and copyright infringement causes of action, Plaintiff also asserts Lanham Act and § 17200 unfair completion, trademark dilution, accounting, and unjust infringement causes of action. The case is Tre Milano, Inc. v. Daryl Ewald et al., CV10-2849 SVW (C.D. Cal. 2010).
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trademark-attorney-car-automotive-bolts-infringement.jpgLos Angeles, CA – Automotive Racing Products manufactures a wide range of bolts, fasteners, and other parts and accessories for automobiles. In 1975, Plaintiff began using the ARP trademark, which was registered with the USPTO on January 19, 1988. Plaintiff is also the owner of the “2000” trademark, which was registered with the U.S. Patent and Trademark Office on February 10, 2004. Plaintiff alleges that its 2000 and ARP trademarks have become well-known in the automotive industry.

Beginning in 2008, Defendants are accused of selling bolts marked with a “2000” label and the bolts were made to look like Plaintiff’s products. Plaintiff also alleges that Defendants falsely represented that their infringing bolts were ARP bolts. Plaintiff contends that Defendants were fully aware of Plaintiff’s trademarks and have intentionally infringed the marks to unjustly benefit from Plaintiff’s reputation. Plaintiff asserts causes of action for trademark infringement, unfair competition under both the Lanham Act and Cal. Bus. & Prof. Code 17200, and unjust enrichment. The case is Automotive Racing Products, Inc. and Procomp Electronics, Inc., CV10-02884 MRP (C.D. Cal. 2010).

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golf-patent-attorney-infringement-tour-edge-v25-driver.jpgLos Angeles, CA – Plaintiff Anthony J. Antonious is the inventor of the “Metalwood Type Golf Club Head,” which is the subject of U.S. Design Patent D499,157. Simply put, a design patent covers the ornamental design or aesthetic configuration of a depicted product. Whereas a utility patent covers the way a product works or is manufactured, e.g. a new club head manufactured to have a larger sweet spot. But I digress. In this design patent case, Plaintiff alleges that Tour Edge’s golf club heads, including the Tour Edge V25, Tour 9 Proto, and Tour Edge Bazooka, incorporate the patented design and infringe the ‘157 patent. Plaintiff further alleges inducement of and contributory patent infringement. The case is Trust of Anthony J. Antonious v. Tour Edge Golf Manufacturing, Inc., CV10-02636 RGK (C.D. Cal. 2010).

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zynga-farmville-trademark-attorney-copyright.jpgLos Angeles, CA – Zynga Game Network is a social gaming company and provides numerous games, such as Zynga Poker, Mafia Wars, FarmVille, YoVille, Cafe World and Word Twist, that are available on Facebook, MySpace, Friendster, iPhone and iPod Touch, among others. Zynga has several pending USPTO trademark applications for its Mafia Wars, Farmville and Yoville trademarks and several copyright registrations for the games as well. Zynga asserts that its games have been a runaway success, with an increase from 1.3 million daily users in July of 2008 to 9.5 million daily users in May of 2009.

When players sign up with Zynga to play the games, they receive a certain amount of virtual currency, which amount can increase through continued play and purchased directly from Zynga. The virtual currency is then used to purchase virtual goods that are used in the games. The “Terms of Service” prohibit the use of virtual currency or goods for real-world money and Zynga does not authorize any third party to sell virtual currency or virtual goods.

In the lawsuit, Zynga accuses Defendant of allowing users to post and sell virtual currency or virtual goods to be used in Znyga’s games on its playerauctions.com website. Zynga claims that in addition to using Zynga’s trademarks without authorization, Defendant profits from the sale of virtual currency and goods by selling them for real-world money in violation of the “Terms of Service” agreement. Further, Defendant is accused of using images of Zynga’s games without authorization, which use infringes its copyrights. The case is Zynga Game Network, Inc. v. Playerauctions.com, CV10-2576 CBM (C.D. Cal. 2010).

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copyright-attorney-mga-entertainment-land-sea-rc-copyright-infringement-qvc.jpgLos Angeles, CA – A copyright infringement lawsuit was filed by MGA Entertainment against QVC, Brookstone, and Rooftop Group USA. MGA claims that it created the Land Sea RC® amphibious vehicle that kids can remotely control. MGA is the owner of two copyright registrations covering the toy designs. MGA alleges that Rooftop “arranged for the manufacture and sale of a product entitled RC Land-and-Sea Mobile” that are sold through retailers such as QVC and Brookstone.

In addition to the copyright infringement claims, MGA asserts unfair competition claims under both Cal. Bus. & Prof. Code § 17200 and California common law. The state causes of action, however, seem to be preempted as they arise from the same operative facts as the copyright claim. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 US 23 (2003); 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 case is MGA Entertainment, Inc. v. Brookstone, Inc., et al., CV10-2463 GW (C.D. Cal. 2010).

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trademark-attorney-trueblood-true-blood-trademark-lawsuit-hbo.jpgLos Angeles, CA – TI Beverage Group, owner of the www.truebloodwine.com website, sued retailer Hot Topic and HBO executives Sophia Chang and James Costas for trademark infringement and unfair competition. TI makes both alcoholic and non-alcoholic beverages and has used Vampire® as its trademark, in addition to other vampire related marks such as Vamp® and Dracola®. In 2009, TI purchased Trueblood Winery, LLC, which had been in business since 2002.

In 2008, HBO televised the True Blood television show in which the characters drink a fictional drink called Tru Blood. TI alleges that Omni Consumer Products entered into a licensing agreement with HBO to manufacture and sell a blood orange drink labeled Tru Blood in September of 2009. TI previously filed suit and notified the defendants of the alleged infringement and after not discovering the products on the shelves, believed that the product had been scrapped. TI alleges that it recently found the Tru Blood products at Hot Topic and filed the instant trademark infringement lawsuit. The case is TI Beverage Group, Ltd v. Hot Topin, Inc. et al., CV10-02089 RGK (C.D. Cal. 2010).

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patent-attorney-liability-insurance-coverage-patent-infringement.jpgHyundai’s website had a “build your own vehicle” (“BYO”) feature and a parts catalogue feature. The BYO feature allowed users to build their own vehicle by responding to choices on a menu, including color, pricing, engine, options, etc. Orion IP, LLC sued Hyundai for infringing a patented method for generating customized product proposals for potential customers of an automobile dealer (U.S. Patent Nos. 5,615,342 and 5,367,627). Hyundai sought a defense under its commercial general liability policies, which was denied. Hyundai lost at trial and the jury awarded $34 million in damages to Orion.

Hyundai then sued its insurers National Union Fire Insurance and American Home Assurance Company in the Central District of California, where it lost on summary judgment because the district court ruled that patent infringement did not constitute “advertising injury” and was not covered under the liability policies. Further, the district court held that Hyundai was “unable to demonstrate a causal connection between its advertising[] and Orion’s alleged injury.”

The California Supreme Court has specified three required elements to establish a duty to defend for an “advertising injury” claim:

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