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trademark-rorion-gracie-jiu-jitsu-trademark-infringement.jpgLos Angeles, CA – Rorion Gracie, the patriarch of the famed Gracie family from Brazil, filed a trademark infringement, Lanham Act § 43(a) unfair competition, and dilution lawsuit against Black Silver Enterprises and Un Mi Lee. Gracie is a 9th degree Red Belt in Brazilian Jiu-Jitsu and has been an owner of the “Gracie Jiu Jitsu” commercial endeavors since opening the first location in Southern California in 1978. In 1997, Plaintiff’s Gracie Gear trademark was registered with the USPTO for use on clothing and related merchandise. On September 20, 2005, Plaintiff received another registration for the mark Gracie for use on clothing.

Ten days after the Gracie trademark registered, Defendant Black Silver filed an application with the USPTO to register its GRACIE mark for use on clothing. The USPTO issued an Office Action refusing to register Black Silver’s proposed mark due to a likelihood of confusion with Plaintiff’s registered trademarks. In October of 2006, Defendant filed petitions to cancel Plaintiff’s trademarks at the Trademark Trial and Appeal Board (“TTAB”), which proceedings are still continuing. Plaintiff alleges that in mid-2009 Defendants demanded payment of $250,000 as a license fee to use the Gracie trademark. As a result, Plaintiff filed the instant action. The case is Rorion Gracie v. Black Silver Enterprises, Inc. et al., CV 09-8273 GW (C.D. Cal. 2009).

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copyright-attorney-entertainment-breakdowns.jpgLos Angeles, CA – Breakdown Services, Ltd. prepares script analyses and summaries, commonly known as “breakdowns,” to the entertainment community. The breakdowns are distributed via the Internet to authorized theatrical and other talent agencies and management companies. Plaintiff has applied for copyright registration of the material and alleges that all of the breakdowns prominently display the following warning: “This confidential information is the property of Breakdown Services, Ltd. – DO NOT COPY!!!”

Netxplosion is accused of copying Plaintiff’s breakdowns in their entirety and infringing Plaintiff’s copyrights by selling unauthorized copies of the breakdowns. Plaintiff allegedly demanded that Defendants cease infringing on Plaintiff’s works, but Defendants continued to willfully and knowingly copy Plaintiff’s breakdown. The case is Breakdown Services, Ltd. v. Netxplosion et al., CV09-8179 DSF (C.D. Cal. 2009).

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copyright-lawyer-jewelry-attorney-humpbacks-earrings.jpgLos Angeles, CA – Jewelry designer David Rasnick sued Jewelry and Minerals of Las Vegas for copyright infringement. Rasnick has been designing jewelry for over 20 years and designed a teardrop shaped humpback whale loop earring. Rasnick registered the work with the Copyright Office on May 22, 1989. Rasnick alleges that “Defendant has sold unauthorized and infringing copies of the humpback whale earring, which bear a design that is substantially similar to the humpback whale earring at retail, at wholesale and through retailers.” Rasnick alleges that his damages cannot yet be determined and he may elect between the profits generated by the defendant or statutory damages under 17 U.S.C. § 504. Plaintiff also requests that the damages be enhanced because the Defendant’s alleged infringement is willful and intentional. Plaintiff also requests his attorneys’ fees and other costs pursuant to 17 U.S.C. § 505. The case is David Rasnick v. Jewelry and Minerals of Las Vegas, CV09-08072 MMM (C.D. Cal. 2009).

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trademark-lawyer-copyright-lawsuit-settlement-agreement-chrome-hearts.jpgLos Angeles, CA – Chrome Hearts, LLC sued clothing and accessories designer Affliction, Inc. for trademark infringement, Lanham Act § 43(a) unfair competition, copyright infringement, and breach of settlement agreement. Chrome Hearts is also in the clothing and accessories business and has registered the “CH Plus” design trademark – depicted herein – with the USPTO for use on several goods and services, including clothing and headwear. Chrome Hearts has also obtained a copyright registration for the cross design as used on jewelry.

In March of 2009, Plaintiff alleges that it discovered Affliction was selling and distributing headwear that had a confusingly similar CH PLUS design trademark. But instead of filing a lawsuit, the parties entered into a settlement agreement in which Affliction agreed to cease and desist from using the CH Plus design mark. In October of 2009, however, Chrome Hearts allegedly discovered that Affliction had not ceased its use of the CH Plus design mark and was continuing to sell products under the infringing mark. The case is Chrome Hearts, LLC v. Affliction, Inc. , CV 09-7780 AHM (C.D. Cal. 2009).

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software-copyright-attorney-copyright-license-quest-directv.jpgSanta Ana, CA – Quest Software, Inc. sued DIRECTV Operations, LLC for copyright infringement and breach of software license agreement. Quest creates smart systems management software that allow its customers to detect, diagnose to the root cause, and resolve performance and availability problems in their information technology environment. The software is sold under the Foglight trademark and all of the different versions of the Foglight software are registered with the U.S. Copyright Office.

Quest contends that in December of 2002, Directv signed a software license agreement for the Foglight Server, Foglight Base, and Foglight Siebel software. On April 29, 2005, the parties allegedly executed an agreement for additional licenses for the software products. In 2006, the parties’ representatives met to convert the licenses from server-based Windows NT to CPU-based licenses that could be used on any operating system, including UNIX. Before making the conversion, however, Quest sought to confirm that DIRECTV was in compliance with the license agreement.

In February of 2008, Quest received a statement of work from DIRECTV that allegedly showed significant over-deployment of the Foglight products. According to Quest’s calculations, DIRECTV owes $2,947,450 in licensing fees for the alleged over-deployment of the software. Over the next several months, the parties met to discuss the alleged over-deployment and additional reports were produced by DIRECTV. One of those reports allegedly showed that DIRECTV had been using the Foglight products on non-Windows NT operating systems in further breach of the license agreement. As a result, the conversion process did not take place.

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trademark-attorney-toy-tag-toys-leapfrog-trademark-infringement.jpgLos Angeles, CA – Tag Toys, Inc. (“BBI”) sued LeapFrog Enterprises, Inc. for trademark infringement, trademark dilution, and unfair competition under the Lanham Act § 43(a). Tag designs and manufactures infant and children’s toys that are sold throughout the U.S. under its TAG and/or “TAG THINK & GROW” trademarks, which marks have allegedly been used since 1979. Tag Toys has registered its trademarks with the U.S. Patent & Trademark Office and, because they have been registered for over five years, they have become incontestable.

Tag Toys accuses LeapFrog of using confusingly similar “Tag” trademarks on children’s toys that are marketed through the same channels. Tag alleges that LeapFrog filed a trademark application with the USPTO for its own “TAG” trademark, which application was refused registration by the Trademark Examining Attorney due to the existence of a likelihood of confusion with Tag Toys’ previously registered trademarks. Thus, Tag Toys alleges, LeapFrog was aware of Tag’s senior rights in the mark. The case is Tag Toys, Inc. v. LeapFrog Enterprises, Inc., CV 09-07528 GHK (C.D. Cal. 2009).

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copyright-attorney-motion-picture-waiting-no-more-jacoby.jpgLos Angeles, CA – Jacoby Entertainment, Ltd. sued Netflix, Inc. and Tango Entertainment, Inc. over releas and distribution of “I Am Waiting No More” motion picture. Plaintiff is owned by Joseph Jacoby, a motion picture director-writer-producer. In 1971, he completed the screenplay for the motion picture “Hurry Up, Or I’ll be 30,” which was fortunately and correctly registered with the Copyright Office – and not the WGA. Cinematic production was completed soon thereafter and the movie was released in theatres in 1973.

Plaintiff alleges that Netflix has been renting unauthorized copies of the motion picture under the changed name of “I Am Waiting No More.” The copies distributed by Defendants are allegedly of poor quality because they are derived from a physically worn print of “Hurry Up, Or I’ll be 30.” Plaintiff contends that Defendants have also altered the picture’s opening main title and removed the copyright notice. Further, the DVD jacket has also been changed by substituting a picture of Danny DeVito in his 50’s in place of the original picture when he was in his 20’s. The case is Jacoby Entertainment, Ltd. v. Netflix, Inc. et al., CV09-7557 PA (C.D. Cal. 2009).

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patent-attorney-bird-repellent-spikes-patent-infringement.jpgSanta Ana, CA – Bird-B-Gone, Inc. (“BBG”) filed a patent infringement lawsuit against Bird Barrier America, Inc. (“BBA”) over the sale of spike strips used to repel birds. BBG is the owner of US Patent No. 7,596,910 entitled “Unitary configured Bird Repellant Apparatus,” which was issued on October 6, 2009, but was filed over ten years ago – a rather long pendency period. The invention generally relates to a unitary piece of injection molded plastic with different sets of sharp spikes having variable heights and an elongated base that is attached to a surface. When mounted to a ledge, for example, the invention prevents birds from landing or perching thereon. The picture to the right, courtesy of Plaintiff’s website, illustrates the invention at work. Defendant’s “Polly Spike” product is accused of infringing certain claims of the ‘910 patent. Plaintiff seeks an injunction and monetary damages in an amount to be determined at trial. The case is Bird-B-Gone, Inc. v. Bird Barrier America, Inc. et al., SACV09-01185 DOC (C.D. Cal. 2009).

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trademark-attorney-jeans-pocket-design-habitual.jpgLos Angeles, CA – Denimxworks, Inc. filed a trademark infringement, Lanham Act unfair competition, fraud, and breach of contract complaint against Laguna Beach Company and its owner, Steve Kim. Plaintiff alleges that it registered its Habitual plus cross design mark in August of 2007 and registered a cross design with the letter “H” used on jeans’ pockets in February of 2006. Although the marks have been registered for less than five years, Plaintiff incorrectly contends that the marks are incontestable under 15 USC § 1065. Plaintiff also asserts a cause of action for trademark dilution despite only spending $1 Million on advertising over the last seven years. It would be very difficult for Plaintiff to meet the requirements of the Trademark Dilution Revision Act of 2006, which limits dilution causes of action to nationally famous marks.

Plaintiff alleges that in 2008, it discovered Defendants were selling clothing bearing infringing trademarks. Plaintiff contacted the Defendants and asked that they cease use of the marks. In May of 2008, in order to avoid litigation, Defendants allegedly agreed in writing to cease use of the mark and Defendant Kim signed a declaration representing that all inventory bearing the marks had been destroyed. Plaintiff contends, however, that Defendants were allegedly exhibiting jeans bearing the infringing trademark at the Project Jean Show in Las Vegas only two months after the date of the declaration. Plaintiff further alleges that Defendants are secretively selling infringing product. The case is Denimxworks, Inc. v. J.L.J, Inc. et al., CV09-07207 SJO (C.D. Cal. 2009).

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copyright-attorney-copyright-law-chinese-software-cybersitter.pngLos Angeles, CA – Cybersitter, LLC filed a copyright infringement lawsuit against CBS Interactive, Inc. accusing it of software piracy, “wherein two Chinese companies, backed by the Chinese government, stole approximately 3,000 lines of code from [Cybersitter’s] software program, and disseminated it to tens of millions of end users in China and elsewhere with the willing participation of Internet sites such as [CBS’s] ZDNet China. CBS participated in this Chinese government-led initiative to proliferate the pirated program amongst the Chinese-speaking population by offering the program for free download on its website.”

CYBERsitter’s software is an Internet content filter program “designed to help parents protect their children from viewing inappropriate pornographic and violent content on the Web,” and was one of the first programs of its kind when introduced over 14 years ago. Plaintiff alleges that the Chinese government and software developers copied its code in their infringing filtering program known as “Green Dam Youth Escort.” The complaint contends that “unlike Cybersitter, the Green Dam program was found to contain filters to block political and religious content expressing views that differed from those of the Chinese government. The program was also found to have serious security vulnerabilities that would allow third parties to monitor or take control of the computers on which it was installed.”

Plaintiff alleges infringement under U.S. copyright laws, in addition to copyright infringement under the copyright laws of the People’s Republic of China: “The [PRC] is a signatory to the Berne Convention and has adopted laws that comply with the minimum standards set by the Berne Convention. Accordingly, because Plaintiff’s Copyrighted Works are foreign works under the Chinese copyright law, those works are entitled to full protection of the Chinese copyright laws from the moment they are created without and need for registration in China (or elsewhere).” Plaintiff alleges that its estimated damages are no less than $1.2 Million. The case is CYBERsitter, LLC v. CBS Interactive, Inc., CV09-7245 AHM (C.D. Cal. 2009).