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UPDATE 1/10/2010: Court rules that Upper Deck counterfeited Yu Gi Oh! cards. Details here.

UPDATE: Court grants preliminary injunction (details here).

trademark-litigation-attorney-los-angeles-konami-yu-gi-oh.jpgLos Angeles, CA – Konami Digital Entertainment filed a trademark and copyright infringement lawsuit (details here) against Vintage Sports Cards, Inc. over sales of Yu-Gi-Oh! trading cards. Konami then discovered that Upper Deck Company allegedly supplied the the infringing cards to Vintage. Konami amend its complaint to add Upper Deck and moved for preliminary injunction while the case was pending, preventing further sales of allegedly unauthorized cards by Upper Deck.

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Los Angeles, CA – Copyright lawyers for Stussy, Inc. filed a copyright infringement lawsuit, at the Central District Of California, against Defendants Shoes And Tees99 and If Investments. In 1980, Shawn Stussy, a local cult surfboard designer, applied his scrawled signature logo to tee-shirts and sold them in Laguna Beach, California. Since that time, the clothing line has grown to an internationally recognized brand which is promoted and sold on its websites www.stussy.com and www.stussydirect.com. The websites and the photographs thereon have been registered with the US Copyright Office.

copyright-lawyer-infringement-stussy.jpgThe complaint alleges that Defendants reproduced and copied the copyrighted photographs without Stussy’s permission. “Specifically, Defendants have used the copyrighted photographs in connection with auctions on www.ebay.com. Stussy notified eBay, Inc. that Defendants were using infringing copies of Stussy’s Copyrighted Works. eBay terminated the Defendants’ auctions because of the infringement. Yet, Defendants continue to make further and additional use of the photographs contained in the Copyrighted Works.” The case is titled: Stussy, Inc. v. ShoesAndTees99, et al., SACV08-01435 AG (C.D. Cal. 2008).

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Los Angeles, CA – Larry Flynt had sued (click here for details) his nephews and their company for trademark infringement and unfair competition and was seeking a temporary restraining order to prevent the use of the word “FLYNT” in the business name and the domain names www.flyntdistribution.com and www.flyntcorp.com. The Federal District Court in Los Angeles granted the temporary restraining order (click here) because Larry FLynt had demonstrated a probability of success on the merits of the lawsuit and irreparable harm. Pending hearing on the application for preliminary injunction on January 21, 2009, the Court restrained the defendants from:

1. Advertising, selling and distributing adult-themed motion pictures, videos, and DVDs, as well as other adult-themed goods, which contain “FLYNT” in any typographical format and phrase, including “Flynt Media Corporation” and “FlyntCorp Distribution;”

2. promoting such goods and services on Internet websites, including but not limited to www.flyntdistribution.com and www.flyntcorp.com; and

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Los Angeles, CA – Larry Flynt took a break from seeking a $5 Billion Government porn bailout to file a trademark infringement and unfair competition lawsuit at the Federal District Court in Los Angeles against his nephews, Dustin Flynt and Jimmy Flynt, II, and Flynt Media Corporation – the company founded by the nephews. The First Amended Complaint alleges that the nephew’s were terminated from their position at Larry Flynt’s company, after which they started a rival company to produce and distribute pornography using a “Flynt” trademark “to trade off and usurp the famous FLYNT name and mark of their uncle.”

los-angeles-trademark-attorney-larry-flynt-surname-family-name-lawsuit.jpgLarry Flynt filed an ex parte application for a Temporary Restraining Order and is requesting a preliminary injunction preventing Defendants’ use of the mark. Defendants have filed their opposition setting forth several arguments, which are not likely to succeed. Defendants first argue technical defects in Plaintiff’s moving papers for failing to comply with the Central District’s Local Rules. The next argument attacks the Plaintiff’s lack of standing to bring federal trademark claims because Larry Flynt has not used the stand-alone FLYNT mark in commerce – as opposed to “Flynt Publications” or “Larry Flynt.” Defendants’ argument ignores the fact that a likelihood of confusion can arise even if the competing marks are not exactly alike. Defendants further argue that Flynt is their family name and they have a right to use it in their business. If your family name is McDonald, do not use your name as a mark for your hamburger joint. Defendants also argue that Plaintiff will not suffer irreparable harm because Larry Flynt’s declaration states that “he will have to help out his nephews when [they fail]” because they are selling substandard products. Thus, Defendants deduce, if no one buys their products because they are bad, there will be no realistic irreparable harm. Finally, Defendants argue that the balance of hardships tips in their favor because they will lose their personal investments in the company and will not be able to raise additional funds with an injunction issued against them. Thus, they ask for a bond of at least $1,000,000 should an injunction issue. An update on the court’s ruling will be provided. The case is titled Larry C. Flynt v. Flynt Media Corporation, et al., CV 09-00048 AHM (C.D. Cal. 2008).

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clothing-copyright-christian-audigier-lawsuit.jpgLos Angeles, CA – Bryan Callan filed a lawsuit at the Federal District Court in Los Angeles against clothing designer Christian Audigier and Nervous Tattoo, Inc. and Shop On State, Inc. Callan is an artist and graphic designer whose style draws from his background as a tattoo artist. Callan also goes by his “Mr. Lucky” nickname and uses a Mr. Lucky logo on his artwork, which consists of text and four-leaf clover motif. The complaint alleges that in 2006, Callan and Audigier executed a licensing agreement which allowed the use of Callan’s art work subject to agreed-upon material terms:

The Agreement required that Defendants accompany each and every use of Callan’s artwork, or any part thereof, with a clearly visible Mr. Lucky logo…The Agreement also required that Defendants use commercially best efforts and act in good faith to market and advertise the Mr. Lucky logo and/or Callan’s name in each and every marketing, public relations and advertising effort made in connection with their use of Callan’s artwork. The Agreement also required that Defendants provide Callan with the right of first refusal if Defendant makes the decision to sell, lease, license, or in any way provide a third party to utilize Callan’s work in any way.

The complaint alleges that Defendants have failed to use the Mr. Lucky logo on the clothing products and have granted sub-licenses to numerous other companies, which have produced unauthorized products such as wines, cars, air fresheners, handbags and shoes. The expansion of rights beyond the agreement is alleged to constitute copyright infringement, in addition to breach of contract. By failing to place the Mr. Lucky logo on the products, Callan alleges that Defendants have engaged in unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The case is titled Bryan Callan v. Christian Audigier, Inc. et al., CV 08-08072 GW (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for Kirby Morgan Dive Systems, Inc. filed a trademark infringement, Lanham Act § 43(a) unfair competition, and anti-cybersquatting lawsuit at the Federal District Court in Los Angeles against Universal Scuba Distributors. Click Here To Read The Complaint. Kirby Morgan sells diving equipment including helmets, full face masks, and air control systems under its USPTO registered Kirby Morgan® and Kirby Morgan Dive Systems, Inc.® trademarks. In addition, Kirby Morgan owns five trademark registrations for the designs of its dive helmets. Kirby Morgan has also registered the www.kirbymorgan.com domain name, where its Website is located.

trademark-infringement-kirby-morgan-dive-systems.jpgThe Plaintiff alleges that Universal Scuba Distributors registered the domain name www.kirbymorgandivers.com and used images of Kirby Morgan’s registered helmets, which pictures also included the Kirby Morgan® word mark. Defendant’s “webpage then automatically resolves and/or has links to Universal Distributors’ other website at www.universaldistributors.us where it sells dive products. On [that website], Universal Distributors uses another image of Kirby Morgan’s registered helmet designs under a link to ‘commercial’ products.” The case is titled Kirby Morgan Dive Systems, Inc. v. Universal Scuba Distributors, CV 08-08258 JSL (C.D. Cal. 2008).

PRACTICE NOTE: In an attempt to not trigger insurance coverage under the Defendant’s Commercial General Liability Insurance policy, the complaint conspicuously asserts: “At this time Kirby Morgan is not seeking monetary damages on its trademark infringement claims to prevent Universal from receiving a defense of its claims from any insurance carrier and the amount of economic damages is not known.” The reservation of Plaintiff’s right for a future monetary demand should trigger coverage and a duty to defend, especially in view of Plaintiff’s “Prayer for Relief” which seeks: “a judgment that Universal Distributors has willfully and deliberately infringed Kirby Morgan’s rights and that this is an exceptional case entitling Kirby Morgan to enhanced damages under the Trademark Laws of the United States” and “a judgment awarding to Kirby Morgan prejudgment and post-judgment interest until the award is fully paid.” See Gray v. Zurich Ins. Co., 65 Cal. 2d 263, 276 (Cal. 1966) (“Since modern procedural rules focus on the facts of a case rather than the theory of recovery in the complaint, the duty to defend should be fixed by the facts which the insurer learns from the complaint, the insured [e.g. cease and desist letter demanding damages], or other sources.”)

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Los Angeles, CA – Trademark attorneys for F.C. Kingston LLC and Storm Manufacturing Group, Inc. (“Kingston”) filed a trademark infringement, unfair competition, and trade secret misappropriation complaint, at the Central District of California (Los Angeles Division), against Kingtech LLC – a company operated by Daniel Marshall and Reed Ferguson, two former Kingston employees. Kingston designs and manufactures “metal valves and custom fittings serving many industries including compressed air, floor cleaning, automotive, medical/dental, industrial flow control, and food service.” Since 1908, Kingston has used the “Kingston” trademark and has obtained a USPTO trademark registration. And starting in 1970 it began stamping its products with a “K” in a circle mark, a trademark application for which is currently pending at the USPTO.

Kingston alleges that Marshall was hired in 2000 as a Quality Engineer and became a Senior Brand Manager in 2005, where, through his job duties, “Marshall had a close relationship with all of Kingston’s suppliers and customers, and was intimately familiar with all of Kingston’s suppliers and customers, and was intimately familiar with the branding of Kingston’s goods and its extensive use of the Kingston Marks.” Plaintiff alleges that Ferguson was hired in 2005 as the national sales manager and worked closely with Marshall “regarding customer acquisition, pricing, promotion, new product development and target market selection.” Both Marshall and Ferguson signed employment agreements in which they agreed that they would not disclose Kingston’s “confidential or proprietary information, including information concerning customer lists, pricing, drawings, and marketing data.” Marshall was allegedly terminated in January of 2008 and Ferguson resigned last June.

Kingston alleges that a few months before resigning, Ferguson asked for and received an Excel spreadsheet providing detailed information about every sale that Kingston had made in the past five years. “Such a compilation of information is obviously not available to the public, and permits its user to know not only who every one of Kingston’s almost 2,000 customers are, but exactly what they have ordered, when they ordered it, and the precise price paid…Ferguson then proceeded to email the entire spreadsheet from his work email account to his personal email account.” The complaint alleges that Ferguson shared the stolen spread sheet with Marshall, who had set up the competing Kingtech business.

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UPDATE April 15, 2009: Judge denies SureFire’s motion to stop Advanced Armament’s Silencer Advertising. Read details here.

Santa Ana, CA – SureFire, LLC manufactures gun silencers (suppressors) and other related products for use with firearms. SureFire filed a Lanham Act, 15 U.S.C. 1125(a), false advertising claim at the Central District of California (Santa Ana Division) against Advanced Armament Corp. (“AAC”). The lawsuit arises out of a comparative advertisement by AAC which features cutaway views of two side-by-side silencers. The advertisements have allegedly been published in magazines such as Combat Hanguns, Guns & Weapons for Law Enforcement, and Tactical Weapons.

CLICK TO READ COMPLAINT

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Riverside, CA – Trademark attorneys for Optimal Pets, Inc. filed a trademark infringement and unfair competition complaint in the Central District of California (Riverside Division). Optimal Pets sells pet products, such as vitamins and other dietary supplements, grooming products, and other items. Optimal Pets has marketed and sold the products on the Internet under its common law Optimal Pets trademark, but does not have a trademark registration. (Read Advantages of Registered Trademarks)

trademark-infringement-optimal-pets-unfair-competition.jpgThe complaint alleges that Plaintiff’s principal met with Defendant Vitamin Shoppe after learning of Defendant’s search for suppliers of its new line of vitamins and dietary supplements. Optimal Pets’ proposal to Vitamin Shoppe was not accepted. Instead, in August of 2008, Vitamin Shoppe began marketing and selling a new line of pet vitamins and dietary supplements which were allegedly supplied by Defendant Nutri-Vet. The complaint alleges “that Defendants were aware, at the time they made the decision to use the mark or designation ‘OPTIMAL PET’ in connection with their products, that [Plaintiff] had made prior use of the trade name and mark ‘OPTIMAL PETS’ in commerce in connection with the sale of similar products.” The case is titled Optimal Pets, Inc. v. Nutri-Vet, LLC et al., EDCV 08-1795 SGL (C.D. Cal. 2008).

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Los Angeles, CA – Trademark lawyers for Carroll Shelby and his trust and licensing company filed a trademark and trade dress infringement, unfair competition, and violation of the right of publicity complaint at the Federal District Court in Los Angeles. Click to read complaint. Shelby is the legendary race car driver who broke the land speed record at the Bonneville Salt Flat and won the 24-hour Le Mans road race. After retiring from auto-racing, Shelby began designing some of the most highly prized race and production cars, including Shelby Cobras. The complaint alleges that the design of the Shelby cars, the Daytona specifically, has acquired distinctiveness and serves to identify Plaintiff as its source (the “Daytona Coupe Trade Dress”). The Daytona Coupe Trade Dress was registered with the USPTO as Registration No. 2,958,927. Plaintiff Shelby also owns the following USPTO issued trademark registrations: 289, 427 S/C, Shelby 427 S/C, and Shelby. Plaintiff Shelby is also the exclusive worldwide licensee of the COBRA trademark and logo, which are owned by Ford Motor Company.

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Defendant Factory Five Racing, Inc. (“FFR”) allegedly manufactures replicas of “Shelby Cobra vehicles, including kit cars bearing designs confusingly similar to the Daytona Coupe Trade Dress.” On FFR’s website, www.factoryfive.com, FFR allegedly uses trademarks owned by or licensed to Shelby in the metatags thereof to draw Internet traffic to the site, “these marks appear in the metatags but not in the posted content of the web pages, reflecting a design to conceal their use.” Further, the complaint alleges that links from FFR’s website directs traffic to LK Motorsports and Internet Community Partners, LLC’s websites, where further infringing use of the trade dress and trademarks occur. The case is titled Carroll Shelby v. Factory Five Racing, Inc. et al., CV 08-07881 CAS (C.D. Cal. 2008).