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patent-attorney-headrest-monitor-tmi.jpgRiverside, CA – TMI Products, Inc. is the exclusive licensee of U.S. Patent Number 7,040,697 (“the ‘697 patent”) and U.S. Patent Number 7,407,227 (“the ‘227 patent”) both entitled “Headrest Having an Integrated Video Screen.” The ‘227 patent is a continuation of the ‘697 patent, having the same specification but with varying claim scope. The patents generally relate to video display units that are pivotally mounted within the back of a headrest such that the plane of the video monitor can be pivoted about both a horizontal and vertical axis.

TMI accuses Rosen’s “Dual DVD Headrest Replacement Systems” sold as the AV7000 and AV75000 models of infringing both patents. TMI alleges that Rosen’s infringement is willful and intentional and demands treble damages and attorneys’ fees under 35 U.S.C. § 285. The case is TMI Products, Inc. v. Rosen Entertainment Systems, L.P., EDCV 09-01300 SGL (C.D. Cal. 2009).

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Los Angeles, CA – Akar Studios is an architecture and interior design firm contracted by Defendant Foreign Exchange to develop a general design scheme, architectural designs and construction drawings for three of its clothing stores. Pursuant to a written agreement, Akar allegedly retained ownership of all copyrights in the works. Indeed, Akar states that “Foreign Exchange made no attempt, in the course of the negotiation of the contract, to secure rights to use Akar’s copyrighted works in connection with any other store.”

architectural-copyright-architecture-attorney-lanham-act-akar.jpgAfter the initial three stores were built, Akar alleges that Defendant requested and was provided with proposals by Akar for the design of two additional stores. But the proposals were not accepted. After receiving the proposals, however, Akar asserts that Defendant provided Akar’s copyrighted architectural drawings to other architectural firms, Shubin+Donaldson Architects and Lee+Kim Design, to modify the designs and prepare derivative works for the two additional stores. In addition, Akar alleges that Defendants “affixed their logos and/or stamps to Akar’s Architectural Works and Technical Drawings, passing such documents as their own work, despite knowledge that such documents were prepared by Akar.”

Akar further alleges that after the work had been copied, Foreign Exchange’s representative had Akar execute a “Lien Release” in exchange for final payment. But buried in the release – unbeknownst to Akar – was a transfer of intellectual property rights. In addition to the copyright infringement and Lanham Act claims, Akar asserts breach of contract, fraud, rescission, and §17200 unfair competition claims. The case is Akar, Inc. v. Foreign Exchange, Inc., et al., CV 09-4940 GAF (C.D. Cal. 2009).

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trademark-attorney-rolex-trademark-counterfeiting-trademark-infringement.jpgLos Angeles, CA – Rolex Watch USA, Inc. sued Aaron Gallagher, doing business as rplwatches.com, replwatches.com, and watchreps.com, for trademark counterfeiting, trademark infringement and unfair competition under the Lanham Act § 43(a). Rolex manufactures high-end watches, watch bracelets and related products for men and women, which are sold under the Rolex family of trademarks and several other registered marks.

Rolex alleges that in May of 2006 it discovered Defendant’s watchreps.com website and it was able to shut it down through the website’s Internet Service Provider. Defendant then contacted Rolex’s counsel and attempted to reactivate the website, but Rolex did not receive a response to its settlement demands in return for reactivation. In April of 2009, while Rolex was investigating sales of infringing watches on craigslist.org, it discovered that pictures in the classified ads linked to Defendant’s reactivated watchreps.com website. In response to Rolex’s cease and desist letter, Defendant allegedly stated that Rolex “will have no further problems regarding this issue.” Rolex’s investigator, however, responded to an ad on craigslist.org and received an email from replwatches.com allegedly signed by Aaron. Upon Rolex’s request, the ISP identified the registrant of the website as Aaron Gallagher. When the investigator called to purchase the watch, Defendant allegedly stated that Rolex “was after me…they’re watching me like a hawk.” The investigator received a watch that is allegedly counterfeit and infringes on Rolex’s trademarks. Thus, Rolex determined it was time to file suit. The case is Rolex Watch USA, Inc. v. Aaron Gallagher, et al., CV 09-4646 R (C.D. Cal. 2009).

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trademark-attorney-joes-jeans-brixton.jpgLos Angeles, CA – In a case that may go down in the “OOPS” department, Joe’s Jeans sued Brixton Ltd. for trademark infringement and unfair competition under the Lanham Act § 43(a). Apparently, Defendant was not even on Joe’s Jeans’ radar until Defendant’s counsel sent a cease and desist letter accusing Joe’s of infringing on the Brixton trademark.

Upon receipt of the letter, Joe’s investigated the claims and determined that it allegedly began using the Brixton trademark approximately one year before Defendant’s date of first use. And because neither party registered the trademark with the USPTO, the case is going to boil down to which party used the mark first. Joe’s alleges that it responded to Defendant’s counsel and put Defendant on notice that Joe’s was the senior user of the mark and, in an instant, the hunter became the hunted. As a result, Joe’s now alleges that Defendant’s use of the Brixton trademark constitutes willful and intentional infringement. Pamela Chestek blogs here about other parties battling over senior use and ownership of the Protech mark. The case is Joe’s Jeans, Inc. v. Brixton Ltd, LLC, CV 09-04753 DSF (C.D. Cal. 2009).

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trademark-attorney-puma-kswiss-dolton.jpgLos Angeles, CA – K-Swiss won the race to the courthouse – by two business days – and filed a trademark declaratory judgment lawsuit against Puma. (Details here.) K-Swiss wanted a ruling that its Dolton shoe design did not infringe Puma’s “Formstrip Trademarks,” which run along the side of the shoe. Two business days after K-Swiss’ filing, Puma filed its own trademark infringement lawsuit in the District of Massachusetts and filed a motion to dismiss, transfer, or stay the Los Angeles action.

The Los Angeles District Court declined to exercise jurisdiction over the matter (order available here) even though under the “first to file” rule, K-Swiss’ action preceded Puma’s MA lawsuit: “the rule is a flexible one and the Court may, in its discretion, rely on equitable grounds, such as ‘when the filing of the first suit evidences bad faith, anticipatory suit, or forum shopping,’ to determine whether to depart from the first to file rule.” Xoxide, Inc. v. Ford Motor Co., 448 F. Supp. 2d 1188, 1192 (C.D. Cal. 2006). The Court deemed K-Swiss’ action to be anticipatory in nature and “when, as here, a declaratory judgment action has been triggered by a cease and desist letter, equity militates in favor of allowing the second-filed action brought by the true plaintiff in the dispute to proceed to judgment rather than the first. See Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 219 (2d Cir. 1978). Thus, K-Swiss will now be forced to file its causes of action as counterclaims in the District of Massachusetts. The case is K-Swiss, Inc. v. Puma AG Rudolf Dassler Sport, CV09-03022 GAF (C.D. Cal. 2009).

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los-angeles-patent-attorney-pwp-inline-plastics-product.jpgLos Angeles, CA – PWP Industries filed a complaint for declaratory judgment that its food storage containers do not infringe Inline Plastic’s U.S. Patent No. 7,118,003 (“the ‘003 Patent”). PWP manufactures tamper-resistant plastic packaging for a variety of foods, from vegetables to bakery goods. The ‘003 Patent relates to a plastic container having a hinged cover that engages the base container. The tamper-resistant indicator is a strip that spans from the cover to the base; thereby, preventing access to the interior of the container without breaking the strip. After being accused of infringement, PWP filed the instant action because “an actual controversy existed between [Inline] and [PWP] concerning the alleged infringement of the ‘003 patent. See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (rejecting the “reasonable apprehension of suit” test). The case is PWP Industries v. Inline Plastics Corp., CV09-4417 ODW (C.D. Cal. 2009).

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false-advertising-attorney-would-you-rather-imagination.jpgLos Angeles, CA – Zobmondo filed a Lanham Act § 43(a) false advertising lawsuit over the phrase “Justin and Dave’s Original Would You Rather…? Board Game.” Zobmondo asserted that the term “original” falsely connoted that Defendant’s product was first in time. Details here.

Defendant Imagination filed a motion to dismiss arguing that Plaintiff was asserting a false designation of authorship claim (i.e. who was the first to come up with the idea for the game) precluded by Dastar Corp. v. Twentieth Century Fox Film Corp., 539 US 23 (2003). In Dastar, the Supreme Court stated that “reading the phrase ‘origin of goods’ in the Lanham Act in accordance with the Act’s common-law foundations (which were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were), we conclude that the phrase refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” Dastar, 539 U.S. at 37 (italics in original).

The district court disagreed (order available here) and found that Dastar was inapplicable because the complaint focuses on who was the first to manufacture a “would you rather” board game, not the first to come up with the idea for the game:

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Michael Jackson undeniably lived a troubled life, but he was also a music icon that left his mark on popular culture through his dance moves and videos. People often incorrectly credit him with inventing the moonwalk. Although he made it famous, he copied the move from other break-dancers. Michael Jackson, however, did invent a dance move for which he was awarded U.S. Patent No. 5,255,452, thereby also contributing to intellectual property culture. In his “Smooth Criminal” video, MJ and his backup dancers lean forward in a gravity-defying manner to an impossible angle.

michael-jackson-patent-dance-lean-smooth-criminal-gravity-shoe.jpgBy filing a patent application for the “Method and Means for Creating Anti-Gravity Illusion,” Michael Jackson let the cat out of the bag. The heel of the shoe is designed to detachably engage a hitch that retractably projects through the stage floor. By anchoring the heel to the floor, the dancer can lean forward and the illusion of defying gravity is achieved. His untimely death has subjected Michael Jackson’s personal choices to debate, but his dedication to creating and protecting his art is unquestionable.

Here’s video of MJ live in concert using the patented shoes to perform the lean and one of the backup dancer’s shoe getting stuck:

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Los Angeles, CA – EABO, Inc. sued Huntington Beach, CA based Mimic Skateboards, Inc. for copyright infringement, trademark infringement, trademark dilution, trade dress infringement and unfair competition. Plaintiff manufactures various sized disc shaped wooden boards that rest upon a cylinder shaped roller, which were originally designed by surfers for training purposes. The IndoBoard has now evolved into its own sport where individuals stand on the board and rock it back and forth to balance on the roller and perform various tricks. If a picture is worth 1,000 words, then moving pictures are priceless:

https://www.youtube.com/watch?v=DIhYjiytQPk

Plaintiff is the exclusive licensee of a registered Indo Board design trademark and the common law rights to the word mark. Plaintiff is also the copyright owner in an instructional DVD created in 2004. The complaint alleges that beginning in 2001, Plaintiff entered into a manufacturing agreement with Mimic to manufacture its boards, which relationship terminated in 2008 when Mimic informed Plaintiff that it was going to only manufacture skateboards.

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Los Angeles, CA – ELVH, Inc., a company owned by musician Eddie Van Halen, filed a copyright infringement lawsuit, in the Central District Of California (Los Angeles Division), against sports-giant Nike, Inc. Van Halen created three striped designs which he used on his “Frankenstein” guitars. And he registered the works with the US Copyright Office.

copyright-lawsuit-van-halen-nike.jpg

Van Halen accuses Nike of copying his designs and using them on its “Dunk Lows” line of shoes. In addition to its copyright infringement claim, ELVH seeks a constructive trust and an accounting. Plaintiff seeks either actual or statutory damages under 17 U.S.C. § 504, in addition to their costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is ELVH, Inc. v. Nike, Inc., CV09-04219 CAS (C.D. Cal. 2009).