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boot-design-patent-attorney-cardy-ugg-shoe.jpgLos Angeles, CA – UGG® boot manufacturer, Deckers Outdoor, filed a patent infringement and unfair competition lawsuit against Claire’s Stores and CBI Distributing. UGG® boots have set a fashion trend with young ladies wearing the lamb-skinned boots – to keep their feet and calves warm – with shorts, thereby allowing their knees and thighs to freeze. That’s not in the complaint, it’s just a personal observation. Now back to the regularly scheduled complaint: the UGG® line of boots includes the Classic Cardy™, which was introduced in 2007 and has a crochet upper with buttons on the lateral side. The Classic Cardy™ boot is the subject of U.S. Design Patent No. D582,650 (“the ‘650 Patent”).

Deckers alleges that Defendants sell allegedly infringing boots under the “Claire’s Botts” mark at significantly lower price points, thereby diminishing the market place for the genuine Cardy Boots™. Plaintiff’s Lanham Act claim derives from the alleged sales of infringing boots creating a false association or affiliation with Deckers’ UGG® line of boots.

It’s unclear from the complaint whether Plaintiff is asserting a trade dress infringement claim, but at least they obtained a design patent for the boot – which is not a work protectable by copyright. By doing so, they avoid some costs and expenses in having to conduct surveys to establish trade dress rights and, further, a likelihood of confusion among consumers. The following Federal Circuit opinion provides a great comparison of the level of proof needed for each:

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UPDATE 1/27/2010: Upper Deck settles Yu Gi Oh! counterfeiting case. Details here.

trademark-attorney-yu-gi-oh-counterfeit-upper-deck.pngLos Angeles, CA – Yu Gi Oh! owner Konami sued Upper Deck, its former distributor, for selling counterfeit trading cards. (Details here) After hearing both parties’ motions for summary judgment, the Court found that Konami had “presented evidence to establish every element of liability [for] counterfeit activity and violation of federal unfair competition law, pursuant to the Lanham Act, on the part of the [Upper Deck] Defendants.” (Order available here) The Court also found that Upper Deck was liable for common law trademark infringement and California unfair competition under Business & Professions Code § 17200. On the copyright infringement claim, the Court partially found that Upper Deck infringed the “Reverse Art” copyright, which refers to the text that appears on the back of the trading cards. The statement of undisputed facts is available here.

In another order, available here, the Court ruled in Konami’s favor because the “reproduction and/or manufacture of unauthentic cards does not fall within the ‘Approval’ clause of the 2006 Letter of Intent.” Conversely, the Court denied Upper Deck’s motion to limit its liability. In yet more bad news for Upper Deck, in another order that’s available here, the Court found for Konami on Upper Deck’s counterclaims for breach of contract and slander per se.

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copyright-music-bmi-ringback-t-mobile.jpgLos Angeles, CA – Broadcast Music, Inc. (“BMI”), a music performing rights organization that licenses public performance of over 6.5 million copyrighted songs, sued T-Mobile for copyright infringement over use of songs in ringback tones. A ringback tone is a customer selected song that is heard by a caller instead of a regular ring. The ringback tones are stored on T-Mobile’s servers and are streamed to the caller’s phone. T-Mobile sells its Ringback tone services to its users for $1.49/month and the songs are purchased for $1.99 each. The complaint lists at least fifty-six songs that were allegedly infringed, but contends that the true number could be in the thousands. BMI alleges that despite its demands that T-Mobile cease its infringing conduct, T-Mobile has refused to do so. Thus, BMI demands statutory damages for the willful infringement of each copyrighted song.

With BMI’s prediction that U.S. ringback tone sales surpassed $235 million, it’s not surprising that they’re trying to cash in on that market. Of course, BMI has to avoid Section 110(4) of the Copyright Act that silenced ASCAP’s royalties claim for musical ringtones. The case is Broadcast Music, Inc. et al. v. T-Mobile USA, Inc., CV09-09316 RSWL (C.D. Cal. 2009).

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christmas-patent-design-patent-christmas-ornament.jpgSince Christmas is a mere four days away, I wanted to discover a “new and useful” method (35 USC § 101) to relay my Christmas greetings in a novel (35 USC § 102) and non-obvious (35 USC § 103) manner. To make sure that my Christmas wishes did not infringe on any other wishes, I decided to conduct a quick patent search. To my chagrin, due to U.S. Patent No. D472,182, I cannot – without infringing – impart my birthday wishes upon Jesus. And my licensing negotiations having fallen through, I figured I would just wish “Merry Christmas To All.” I wanted to make sure, however, that I didn’t infringe on any third-party trademark rights. Quickly running a search on the USPTO database, I thought my Christmas wishes would once again be thwarted by trademark application number 74/455073 for the “Merry Christmas To All” trademark. But my worries quickly dissipated because the application has long been abandoned. Thus, hoping that Santa does not bring me a common-law trademark lawsuit, “Merry Christmas To All and To All A Goodnight.” Note to self: copyright clearance.

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trademark-attorneys-fees-larry-flynt-collection-3344-rights-publicity.jpgLos Angeles, CA – Larry Flynt sued his former employees and nephews, Jimmy Flynt, Jr. and Dustin Flynt, for trademark infringement for using the family name in their upstart pornography company. Details blogged here. Larry Flynt also made a claim for violation of his rights of publicity under California Civil Code § 3344. On January 9, 2009, the Court preliminarily enjoined the nephews from using the “FLYNT” mark alone with the distribution of adult material, but allowed the nephews to use their first names in association with their family name on the same products. Details blogged here.

After a three day jury trial, Larry Flynt may have won the battle, but lost the war. LA Time article, here. The jury agreed that the use of the last name FLYNT alone was likely to confuse consumers as to the source of the adult related material and a permanent injunction will issue against the nephews. No monetary damages were sought for the trademark infringement claim. The jury, however, sided with the nephews on Larry’s rights of publicity claim, which contains a mandatory attorneys’ fees provision for the prevailing party. Thus, it looks like Larry will have to pay the nephews’ attorneys’ fees incurred in their defense of the §3344 claim, which they are likely to pursue since Larry allegedly fired their father in retaliation for the sons’ use of the family name. The case is Larry C. Flynt v. Flynt Media Corporation, et al., CV 09-00048 AHM, CV09-8796 JC (C.D. Cal. 2009).

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copyright-registration-infringement-randy-stratton-t-shirt-upper-playground.jpgLos Angeles, CA – Randy Stratton’s illustrations are featured in a book entitled “Build This Bong: Instructions and Diagrams for 40 Bongs, Pipes, and Hookahs.” Stratton registered his works with the U.S. Copyright Office. Stratton alleges that Defendant Upper Playground has, without Stratton’s authorization, copied Stratton’s works onto T-shirts sold to the public at large. “Plaintiff has demanded that some or all of the named Defendants cease and desist from all sales and manufacturing of garments incorporating Plaintiff’s copyright work, and cease and desist from printing the copyrighted work without Plaintiff’s consent.” Having allegedly not received a response to his demand that defendants cease their infringing conduct, Plaintiff was forced to file the instant lawsuit accusing defendants of willful and intentional infringement. The case is Randy Stratton V. Upper Playground Enterprises, Inc., CV09-8796 JC (C.D. Cal. 2009).

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copyright-attorney-copyright-lawyer-madea-goes-to-jail-tyler-perry.jpgLos Angeles, CA – Tyler Perry, whose numerous job titles seemingly take up most of the movie trailer (reciting: written by Tyler Perry, directed by Tyler Perry, starring Tyler Perry, produced by Tyler Perry, edited by Tyler Perry, etc.), was sued for copyright infringement by the estate of the late gospel singer Bertha V. James. Plaintiffs allege that James wrote the lyrics for the song “When I Think of the Goodness of Jesus” in 1950, a traditional gospel song, “which was published and copy written (sic.) in 1974 by Elma & Carl’s Publisher, Inc.”

Plaintiffs allege that Tyler Perry “incorporated an entire verse of Plaintiff’s work, willfully without a license within their audiovisual work in a major motion picture feature film entitled ‘Madea Goes to Jail,’ Lionsgate Studios 2008.” Plaintiffs may elect between the profits generated by the defendants or statutory damages under 17 U.S.C. § 504. Plaintiffs also requests that the damages be enhanced because the Defendant’s alleged infringement is willful and intentional. Plaintiffs also seek attorneys’ fees and other costs pursuant to 17 U.S.C. § 505. The case is Estate of Bertha V. The Tyler Perry Company, Inc., et al., CV09-08712 JFW (C.D. Cal. 2009).

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Los Angeles, CA – Purse and handbag designer Linea Pelle, Inc. filed a trade dress infringement and unfair competition lawsuit against Sabina Handbags & Accessories, Inc. In 2006, Plaintiff alleges that it created the “Dylan Collection” of handbags that “incorporates certain unique and distinctive designs, ornamentation and embellishments that, as a whole, have become the iconic and signature look of the Dylan Collection,” which it defines as follows:

trade-dress-attorney-trade-dress-lawyer-purse-handbag-linea-pelle.jpgSound like a square peg in a round hole? Assuming Plaintiff can establish secondary meaning before the infringement began, the definition sounds like a constrained extension of trade dress law. Why not seek design patent protection and avoid the challenges of establishing trade dress rights? But I digress. Plaintiff’s purse incorporating the alleged trade dress is pictured below.

trade-dress-purse-handbag-linea-pelle.jpgDefendant’s accused product is pictured below.

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copyright-lawyer-book-conan-the-barbarian.jpgLos Angeles, CA – Conan Properties International, LLC filed a copyright infringement lawsuit against Prion Books Ltd., Carlton Publishing Group, and HarperCollins UK for the sale of “Conan the Barbarian” book. The fictional “Conan” character was created by the late Robert E. Howard, a prolific writer of fantasy stories published in the day’s popular “pulp fiction” magazines. Plaintiff now owns all of Howard’s copyrights in the “Conan” works.

Plaintiff alleges that in May of 2009, Defendants published a book entitled “Conan the Barbarian” in the United Kingdom, which book is now also available in the United States. Defendants’ book contains stories that allegedly infringe Plaintiff’s copyrights. Plaintiff also asserts causes of action for vicarious and contributory copyright infringement. The case is Conan Properties International, LLC v. Prion Books, Ltd. et al., CV09-08369 DDP (C.D. Cal. 2009).

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patent-attorney-deep-fryer-turkey-patent-1109.jpgDuring this Thanksgiving week, I would like to thank the readers of my two-cents (if it’s worth that) and intellectual property law for providing interesting – at least to me – topics to blog. How does intellectual property apply to Thanksgiving? Well, the first invention applies to how my turkey will be prepared . . . in a deep fryer of course. It may sound strange and greasy, but deep fried turkeys are moist, crispy, and delicious. U.S. Patent No. 5,896,810 covers the turkey frying apparatus that I’ve come to appreciate. After you’ve tasted a deep-fried turkey, you won’t go back to oven roasted. Also, when you realize you can cook a 14 pound turkey in about 45 minutes, your oven will thank you for going green.

Now, the next invention I will probably pass on. U.S. Patent No. D397,955 relates to a turkey decoration in general. More specifically, the invention allows you to dress up a pumpkin to look like a turkey. It’s a good thing Benjamin Franklin didn’t get his way or the pumpkin turkey may have been the national bird.