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trademark-attorney-website-registrar-identity-stihl-chainsaw.jpgLos Angeles, CA – Plaintiffs Stihl companies filed a trademark infringement, Lanham Act § 43(a) unfair competition, and dilution lawsuit at the Federal District Court in Los Angeles against the unknown owner of the domain name chainsawsnow.com. Plaintiffs own several trademark registrations for the trademark “Stihl” in various forms that are used on different classes of goods. Defendant’s website acts as an online auction site where it allegedly uses Stihl trademarks in a manner that creates an impression that the site is associated or sponsored by Plaintiffs.

Plaintiffs sent cease and desist letters to the email addresses located on the website, but received no response. The name of the registrant and administrator were hidden because the domain owner had subscribed to WhoIsGuard’s identity blocking service, which is owned by NameCheap, Inc. Plaintiffs sent correspondence to NameCheap requesting the contact information of the registrant or its administrator and received no response. “Despite the warnings and demands, Defendants have continued to use and maintain the Website and withhold the identity of the true registrant and administrator of it.” As a result, NameCheap was also named as a defendant in the complaint. The case is Stihl Incorporated v. chainsawsnow.com, CV 09-7171 RGK (C.D. Cal. 2009).

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copyright-attorney-movie-script-buggs-dreamworks.jpgLos Angeles, CA – Screenwriter Yolanda Buggs sued Dreamworks and Paramount Pictures for copyright infringement over the release of the animated feature “Flushed Away.” Buggs was enrolled in the American Film Institute’s screenwriting program in 1999 when she met Chris Kuser, a fellow student who was also an intern at Dreamworks. During her time at AFI, Buggs developed an idea for an animated picture and wrote a screenplay, which she entitled “Critter Island,” about a roach that is flushed down the toilet in N.Y. and must navigate the sewers to get back to the high society home in which he lived. Buggs, like all screenwriters should, registered two versions of her screenplay with the U.S. Copyright Office – and fortunately not the WGA. “Aware of Mr. Kuser’s employment at Defendant Dreamworks and in light of his encouraging support for her idea, Ms. Buggs gave Mr. Kuser a copy of each version of Critter Island to read and comment on,” according to the complaint.

After graduation from AFI, Buggs alleges that she contacted Kuser to set up a meeting for presenting Critter Island at Dreamworks, but instead of his past enthusiasm, Kuser discouraged her attempts and told her to hire an attorney to present the script. In 2003, Plaintiff alleges that she made an animated short film and sent a DVD to Kuser in a further attempt to garner interest, but she heard nothing.

Then in the fall of 2006, she saw a trailer for Flushed Away, a movie about a high society rodent who gets flushed down the toilet into the sewers of London and has to find his way home. The film credits Kuser as “Creative Executive,” which means that the “original concept” for the movie originated with him. Buggs alleges, however, that Kuser “stole that ‘original concept’ for the project from the Plaintiff.” Plaintiff alleges that Flushed Away bears substantial similarity to Critter Island, including the plot, characterization, theme, mood, sequence of events, and setting. The animated feature allegedly grossed in excess of $160 million in theatrical and video distribution, excluding video games, spin-off DVDs and other works based on Flushed Away. The case is Yolanda Buggs v. Dreamworks, Inc. et al., CV09-7070 SJO (C.D. Cal. 2009).

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trademark-attorney-copyright-attorney-bump-babies.jpgLos Angeles, CA – Fund Babeez, LLC and its exclusive licensee Bump Babies, Inc. sued Defendants Baby the Bump, Inc., Eve Maternity, and Velva Lyn Stricker for trademark and copyright infringement over competing sales of maternity clothing. Plaintiff Fund Babeez owns a USPTO registered “[Bump] Baby Under Manufacturing Process” trademark and uses several other [Bump] composite marks. A third plaintiff, the individual owner of the companies, has a copyright registration for text and graphics used on maternity clothing.

In 2007, Defendants filed an “intent to use” trademark application to register the allegedly confusingly similar “B.U.M.P…Baby Under Mommy’s Protection.” Plaintiffs sent a cease and desist letter to Defendants putting them on notice of their prior use of the [BUMP] marks. Defendants then amended their application to a “use based” application, allegedly falsely claiming a date of first use in 1996. Also, Defendants allegedly claimed to be “the original BUMP” on their website. Defendants are also accused of copying Plaintiffs’ copyrighted designs. Plaintiffs have also sued Defendants for libel for the purported statement to Plaintiffs’ retail customers that “She [individual plaintiff] had copied [Defendant] only changing the phrase a little.” The case is Fund Babeez, LLC v. Baby The Bump, Inc. et al,, CV 09-6747 GHK (C.D. Cal. 2009).

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Los Angeles, CA – Jim Brown, one of the greatest football players of all time, sued Electronic Arts (“EA”) over use of his likeness in the popular “Madden NFL” videogames. Details blogged here. Brown asserted a cause of action for unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), under a theory of false endorsement. He also asserted California common law and Cal. Civ. Code §3344 invasion of privacy claims, in addition to a Cal. Bus. & Prof. Code 17200 unfair competition claim. EA filed a Motion to Dismiss all counts and a concurrent Motion to Strike the three non-federal causes of action. Court’s order available here.

jim-brown-lanham-act-attorney-lawsuit-electronic-arts-madden-football.jpgEA maintained that it did not use Jim Brown’s celebrity persona or likeness in the “Madden NFL” game, but also argued that the First Amendment provides a complete defense to the alleged Lanham Act violation. The Court, citing E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1101 (9th Cir. 2008), agreed that the First Amendment does indeed provide a complete defense to a Lanham Act false endorsement claim. Video games have been found to be a form of expression protected by the First Amendment; thus, the Court used the Rogers’ two prong test to determine if the Lanham Act claim was precluded. Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989).

“The first prong requires that the defendant’s use of plaintiff’s trademark be relevant to the underlying work: ‘the level of relevance must merely be above zero.’ . . . If the first prong is satisfied, the Lanham Act claim is still precluded unless the use explicitly misleads consumers about the source or content of the work.” The Court found that the first prong was met because the games are about NFL football and use of a legendary NFL player’s likeness in a game about NFL football is clearly relevant. The second prong also favored EA because use of Brown’s likeness would not explicitly mislead consumers “into thinking that Brown is somehow behind the game or sponsors the product.” The Court based its analysis on the fact that the video game character doesn’t have Brown’s name on the jersey, nor is Brown’s name or character depicted on the games’ packaging or advertising.

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copyright-attorney-universal-nbc-temporary-restraining-order.jpgLos Angeles, CA – Screenwriters Greg D. Crowder and Tony Freitas sued (complaint available here) NBC Universal and sought a temporary restraining order against the release of the movie “Love Happens,” starring Jennifer Aniston. Since the movie was released last weekend, you can probably guess that Plaintiffs were unsuccessful. Plaintiffs alleged that in 2006 a copy of their screenplay “Truth Tells No Lies” was given to Scott Bernstein, the Vice President of Production for Universal Pictures. Bernstein met with Plaintiff Crowder and allegedly stated that the screenplay was well written but “it was a little dark in tone, and that, if it were rewritten to be a romantic drama or a romantic comedy with a budget in the range of $25-$40 Million, Universal would be interested in producing the film.” On August 2, 2009, Plaintiff Crowder was accused of stealing the “Love Happens” project when he contacted another production company to review the “Truth” screenplay. On August 20, 2009 Plaintiffs registered their screenplay with the U.S. Copyright Office, but waited until a few days before the movie’s release date before moving ex-parte for a temporary restraining order.

Defendants’ opposition to the ex-parte application (copy available here) summed up the eleventh hour filing as follows: “In what can only be described as classic sandbagging, plaintiffs opportunistically waited until the very last moment the day that Love Happens had its premiere, and only three days before its scheduled release in some 1,900 theaters to ambush Universal with a massive set of moving papers, replete with expert declarations and hundreds of pages of exhibits. The gamesmanship evident in this TRO Application filed months after defendant NBC Universal first began advertising the film, and more than six weeks after plaintiffs admit they became aware of facts they cite as the basis for their claim is reason enough for its denial.” Defendants presented evidence of independent creation of the script by two other authors in 2006 that did not have access to the Plaintiffs’ script or have any contact with Bernstein.

The Court’s order (copy available here) sided with the NBC Universal defendants and found that the defendants’ evidence “cast serious doubt on Plaintiffs’ ability to succeed on the merits. . . Indeed, upon careful examination of the competing screenplays at issue, it appears that the two are not at all similar, let alone substantially or strikingly similar. . . Furthermore, while Plaintiffs have based their application for temporary restraining order solely on their copyright claim, their remaining claims appear to similarly lack merit.” After the Court’s candid opinion of the Plaintiffs’ case, the Plaintiffs – not surprisingly – immediately dismissed their complaint before Defendants could file an answer. The case was Crowder v. NBC Universal, Inc. et al., CV09-6681 ODW (C.D. Cal. 2009).

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trademark-attorney-nutritional-supplement-longevinex-resveratrol.jpgLos Angeles, CA – Dietary supplement manufacturer Resveratrol Partners sued Jon Mayne, the operator of the www.resveratrolbenefits.com website, for trademark infringement, unfair competition, and trade libel. Plaintiff manufactures a resveratrol dietary supplement sold under the Longevinex trademark. Resveratrol is a well-known phytoalexin (antibiotic produced by plants) that is found in the skin of red grapes and also in red wine. Resveratrol has been shown in scientific studies to extend the lifespan of laboratory animals and demonstrated anti-cancer activity therein. Studies have begun and are continuing with humans, but it’s already being marketed in pill-form as a dietary supplement with those health benefits.

Plaintiff alleges that Defendant maintains the website as a purported product review and evaluation service. Plaintiff contends, however, that the website is sponsored or funded by Plaintiff’s competitors, which competitors are fully aware of the false statements regarding the price or quality of Plaintiff’s Longevinex product. Plaintiff further contends that Defendant’s use of Plaintiff’s Longevinex trademark in the false comparisons constitutes trademark infringement. The case is Resveratrol Partners, LLC v. Jon Mayne, CV 09-6536 FMC (C.D. Cal. 2009).

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Los Angeles, CA – The Wild Wild West. A trademark lawsuit gun fight, a duel, if you will, has ensued between John Rigby & Co. (Gunmakers), Inc. of California and John Rigby & Co. (Gunmakers), Ltd. of United Kingdom. Plaintiff makes rifles, shotguns and ammunition which it markets under the following USPTO registered trademarks: John Rigby & Co., Rigby’s, and JR Est. 1735. Plaintiff has also registered its trademarks in the United Kingdom. Plaintiff and its predecessors have made guns since the 1700’s and allege that “Rigby’s quality and reliability has been such that John Rigby & Co. has received Royal Warrants from five British Monarchs dating from the Eighteenth Century to the present day.” A copy of the complaint is available here.

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Some of Plaintiff’s guns are priced as “Starting at $47,500.” Defendant allegedly sells custom made rifles and shotguns under the John Rigby & Co. and JNO. Rigby & Co marks and have registered the domain name www.johnrigbylondon.com. Plaintiff alleges that Defendants were aware of Plaintiff’s marks, but “deliberately, willfully, and maliciously used the John Rigby & Co. Marks in order to trade on the goodwill that Plaintiff has attained.” The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) False designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) California trademark infringement; (4) Federal and California trademark dilution; and (5) Unfair competition under California Bus. & Prof. Code § 17200. The case is John Rigby & Co. (Gunmakers), Inc. v. John Rigby & Co. (Gunmakers), Ltd., et al., CV09-06429 VBF (C.D. Cal. 2009).

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PRACTICE NOTE: It would have been interesting to see how the Court would have ruled on a motion to dismiss Plaintiff’s trade dress claim. Unfortunately, it was not part of Defendant’s motion. (Read BNA article regarding the viability of website trade dress claims).

Los Angeles, CA – Legaljiffy.com sued rival website based legal document preparation company Legalcpu.com, Inc. for copyright infringement, trade dress infringement, and state unfair competition (details blogged here). Defendant moved to dismiss the copyright infringement claim and the § 17200 unfair competition claim (“UCL”) because Plaintiff did not have a copyright registration and had failed to plead an injury in fact. Further, Defendant moved to strike Plaintiff’s demand for statutory damages and attorneys’ fees under the copyright act (17 U.S.C. § 412). Order available here.

PLAINTIFF’S WEBSITE FRONT PAGE:

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trademark-attorney-kitt-David-Hasselhoff-Knight-Rider.jpgLos Angeles, CA – Wanderlust Media files a trademark infringement and breach of contract lawsuit to prevent a former licensee, Mio Technology, from using KITT’s voice and other deliverables in personal navigation devices (“PND”). Wanderlust licenses and sells certain customized celebrity voices for use in GPS and PND systems. Wanderlust has obtained rights from Universal Studios of certain elements associated with the classic live-action television series entitled “Knight Rider,” including the voice of William Daniels as “K.I.T.T.” – the true star of the show. Sorry David Hasselhoff, but K.I.T.T.’s got the talent, America.

Wanderlust licensed to Mio the navigation voices and other deliverables associated with Knight Rider, including K.I.T.T.’s voice and images. The license was terminated in March 2009 due to alleged non-payment of fees. Wanderlust alleges that Mio did not deny that it owed the fees, but it attempted to negotiate a reduced payment. But after the negotiations failed, Mio was obligated to terminate all use of the licensed deliverables. Mio, however, has allegedly not ceased use of the deliverables, resulting in the instant suit. The case is Wanderlust Media, LLC v. Mio Technology USA Ltd., et al., CV 09-06163 AHM (C.D. Cal. 2009).

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louis-vuitton-v-akanoc-trademark-contributory-infringement-copyright.jpgSan Jose, CA – A jury awarded Louis Vuitton $32.4 million in its contributory trademark and copyright infringement lawsuit against web hosting companies, Akanoc Solutions and Manged Solutions, and their individual owner. A copy of the jury’s verdict is available here. Defendants hosted third party websites that were accused of selling counterfeit Louis Vuitton products. A copy of the complaint is available here. Louis Vuitton sent notice to the Defendants demanding that the accused websites be taken down by the hosting companies. The Ninth Circuit has previously extended contributory infringement liability to flea market or swap-meet operators that knew vendors were selling counterfeit goods. Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir.1996). This verdict seems to be an extension of that liability standard to the internet in that the jury found that Defendants knew that websites they hosted were selling counterfeit goods. The jury rejected the Defendants’ “safe harbor” defense under the Digital Millennium Copyright Act (“DMCA”). The case is Louis Vuitton Malletier, S.A., v. Akanoc Solutions, Inc., et al., CV07-03952 JW (N.D. Cal. 2007).