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Los Angeles, CA – Santa Monica copyright attorney files a copyright infringement, contributory copyright infringement, and vicarious copyright infringement lawsuit on behalf of musician Christopher Swann against Anna Kournikova for using his music on her entertainment DVD titled “A Date With Anna.” Swann alleges that in 1999 he wrote, produced and recorded a full-length music album and in February of 2003 the United States Copyright Office issued a copyright registration for the compositions. In April of 2003, Swann learned that score/soundtrack music was need for the Kournikova project and Swann submitted his copyrighted music for synchronization with the “A Date With Ana” video. Swann was provided a licensing agreement by a production company involved in the project which Swann rejected after meeting with his copyright attorney. The copyright licensing agreement was not executed and Swann believed that his music was not going to be used on the Kournikova project.

anna-copyright-lawsuit-music.jpgIn February of 2006, Swann purchased a DVD of “A Date With Anna” and discovered that twenty two minutes of his copyrighted music was used in Kournikova’s DVD. Swann alleges that because he expressly rejected the licensing agreement offer, no agreement was ever reached and the use of the copyrighted material without license, or other consideration constitutes copyright infringement. Swann alleges that “as early as April 2003, defendants, and each of them, without Plaintiff’s permission, license, and without remuneration to Plaintiff, adapted, used, reproduced, marketed, distributed and sold Plaintiff’s copyrighted material in the defendants’ video production, a digital video disc (DVD) entitled, ‘A DATE WITH ANNA.'” Swann continues that the infringement by the defendants was intentional and knowing and seeks preliminary and permanent injunctions against the distribution of the video. The case is titled Christopher Jerry Swann v. Anna Kournikova et al., CV08-01477 R (C.D. California).

PRACTICE NOTE: In order to recover statutory damages, attorneys’ fees, and costs, the copyright in the work must have been registered before the commencement of the infringement. 17 U.S.C. § 412.

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Los Angeles, CA – A trademark, trade dress, and unfair competition complaint was filed in the Central District of California by Torrance based Virco, through its Pasadena trademark attorneys. Virco is a furniture manufacturer and has manufactured a chair with three parallel slots that extend from the seat to the backrest. Virco filed a trademark application for the “three slot” design feature with the USPTO and it became a registered trademark on June 10, 1997. Virco asserts that in the furniture industry, the three slot design trademark is well recognized as a product manufactured by Virco and since 1997, its sales of the three slot chairs have averaged in excess of $10,000,000 per year.

virco-trademark-chair-lawsuit.jpgVirco alleges that in late 2007, it discovered that defendant “was manufacturing, selling, advertising, and distributing two versions of a children’s plastic chair that used [Virco three slot design trademark]. The goods sold by defendants are confusingly similar copies of the [Virco’s trademark].” Virco continues that defendant’s use of the three slot trademark “creates a likelihood that Plaintiff’s customers, potential customers, members of the trade, and the public generally will be misled as to the source of goods or services in that they are likely to believe that Defendant’s business and products are affiliated with or sponsored by Plaintiffs. The complaint sets forth the following seven causes of action: (1) Registered trademark infringement, (2) False designation of origin 15 U.S.C. 1125, (3) Trade dress infringement, (4) Common law trademark infringement, (5) Common law unfair competition, (6) Statutory unfair competition, § 17200, (7) Trademark Dilution. The case is titled Virco MFG. Corp, v. Jonti-Craft, Inc., CV08-01332 PSG (C.D. California).

PRACTICE NOTE: Because Virco’s trademark has been registered for over five years, it has become incontestable under 15 U.S.C. § 1065. A defendant in a trademark lawsuit cannot challenge an incontestable trademark on the following grounds: descriptiveness, deceptive misdescriptiveness, geographic descriptiveness, and primarily merely a surname. Another important reason to register trademarks is that a prior user of an unregistered mark cannot contest a registered mark after five years based on prior use.

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Los Angeles, CA – In Wham-O’s trademark and trade dress trial in October of 2007, a jury awarded Wham-O six-million-dollars in damages for willful trademark infringement of its registered trademarks, willful trademark dilution, and willful false advertising in connection with Toyquest’s use of the yellow color of Wham-O’s Slip-n-Slide toys, which color functions as a trademark. Toyquest is a dba of SLB Toys USA. The Court also entered a permanent injunction against the infringers and ordered that the infringer, including its officers, agents, servants and employees, forever refrain “from using the color yellow on the sliding surface of water slide toys, or packaging or advertising depicting the same, or any mark similar thereto or likely to cause confusion therewith.” The Court, however, denied WhamO’s request to order destruction of infringing articles and denied Wham-O’s request to order compliance reporting by the infringers.

wham-o-slip-n-slide.jpgIn a newly filed trademark infringement, trademark dilution, false advertising, unfair competition (17200), contributory infringement, contributory trademark dilution, and judgment debtor’s interest (Cal. Civ. Proc. Code § 708.210) lawsuit, Wham-O alleges that SLB Toys initiated an elaborate scheme designed to evade judgment and deprive Wham-O of its monetary award through an assignment for benefit of creditors. Wham-O alleges that the individual defendants, who were officers of the defendant SLB Toys, have “flagrantly disregarded the terms of this Court’s injunction by continuing to sell and distribute to retailers unauthorized slides bearing” the yellow waterslide trademark and to advertise the same. Wham-O asserts that SLB Toys was merely an undercapitalized shell corporation that failed to follow corporate formalities and the individual officers and other companies which are owned by the officers are SLB Toys’ alter egos.

Through the creditor’s suit against Wal-Mart, Target, TRU, and Kmart, Wham-O attempts to recover from the retailers several million dollars in funds that are payable to the true judgment debtor, Manley Toys – which was allegedly set up by the same individual defendants that were officers in SLB Toys. The case is titled: WHAM-O, Inc. v. Manley Toys, LTD., CV08-01281 PSG (C.D. California).

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Glendale, CA – Copyright lawsuit was filed by Glendale, CA copyright attorneys representing Burbank based Disney Enterprises, Inc. The copyright infringement lawsuit, filed in Los Angeles Federal District Court, itemizes several motion pictures which have been produced by Disney and registered with the US Copyright Office. Disney alleges that the defendant does business on eBay and has “copied, reproduced, distributed, advertised and/or sold and continue to copy, reproduce, distribute, advertise and/or sell unauthorized copies of motion pictures owned by Disney,” which copies are counterfeit.

Disney-trademark-logo.jpgDisney states that its damages cannot yet be determined and it may elect between the profits generated by the defendants or statutory damages under 17 U.S.C. § 504. Because Disney claims not to have an adequate remedy at law, it “seeks preliminary and permanent injunctive relief pursuant to 17 U.S.C. § 502 and seizure of the Unauthorized Media Product, including the means of production as provided by 17 U.S.C. § 503.” Disney also requests that its attorneys’ fees and other costs in connection with the prosecution of its claims be paid by defendant pursuant to 17 U.S.C. § 505.

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Los Angeles, CA – A complaint was filed in the Central District Court of California for violations of the Lanham Act 43(a), 15 U.S.C. 1125(a) and unfair competition under Section 17200 over labeling of sushi grade tuna. Plaintiff King Tuna advertises and offers sashimi grade processed seafood products for sale which it imports into the United States. During transport and storage of frozen tuna, carbon monoxide (“CO”) gas is used to treat the tuna to retain its initial red color. To generate CO, it is more favorable and expensive to employ filtered natural wood smoke than synthetic CO, and it is sometimes required by government regulation. “Synthetic CO, particularly at high concentrations, can sometimes be used to induce a more intense color ‘bloom’ in lower-grade tuna,” which can be used by unscrupulous vendors to pass off the lower-grade tuna as higher-grade tuna. Only tuna that is transported by “filtered wood smoke” technique of creating CO can bear such labeling. If “synthetic CO” or “chemical CO” is used to treat the tuna – produced by the chemical reaction of sulfuric acid and formic acid, such packaging cannot have the “filtered wood smoke” label.

king-tuna.jpgKing Tuna alleges that competing Defendants use “chemical CO” to treat their tuna during transport and not “filtered wood smoke.” Thus, plaintiff alleges that defendants’ filtered wood smoke “labeling is literally false as in actual practice and likely to mislead customers, as [defendants] misrepresent the nature, characteristics and qualities of its tuna products by presenting its raw tuna products as treated with filtered wood smoke and not chemical CO.” Plaintiff alleges that such mislabeling violates the Lanham Act because it constitutes misrepresentation in commercial advertising, which is likely to influence purchasing decisions of consumers. Also, as the complaint alleges, by mislabeling their products, defendants are engaging in unlawful business practices and unfair competition in violation of Cal. Bus. & Prof. Code § 17200.

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Los Angeles, CA – Attorney files copyright infringement lawsuit on behalf of Forestweb – an information and industry intelligence provider – for infringement of its copyrights in its published newsletter. Forestweb uses proprietary software and technology to collect and analyze data regarding the wood, pulp, paper and forest product industries worldwide. Subscribers are provided access to its newsletter pursuant to a written license agreement, where the licensing fee is based upon the number of readers employed by the business. Forestweb routinely registers its copyright with the U.S. Copyright Office.

Defendant Stora Enso Timber entered into a license agreement and identified ten users with a corresponding annual license fee. Forestweb alleges that Stora breached the license agreement by distributing electronic copies of the copyrighted content to a larger number of its employees without paying the increased licensing fee. The unauthorized distribution of the copyrighted newsletters is the basis for the copyright infringement claim under 17 U.S.C. §§ 106 and 501. Forestweb also asserts a cause of action for the breach of the licensing agreement. Forestweb asks for attorneys’ fees and costs, as provided for in the licensing agreement, and also under 17 U.S.C. § 505. The case is titled: Forestweb, Inc. v. Stora Enso Timber, CV08-01306 SVW (C.D. California).

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Los Angeles, CA – A copyright infringement lawsuit was filed by attorneys on behalf of several recording companies against a restaurant for having a band perform live music without obtaining a copyright license. The complaint lists five songs which are copyrighted by their individual authors with the U.S. Copyright Office, and the rights are owned by the record companies. The complaint alleges that on one night, presumably when their investigator was at the restaurant, the five copyrighted musical compositions were publicly performed “for the entertainment and amusement of the patrons attending said premises, and defendants threaten to continue such infringing performances.”

The complaint alleges that the defendants’ copyright infringement was intentional and willful because, despite numerous letters and contacts about the required copyright licenses, “defendants have not sought or obtained a license agreement from plaintiffs or the American Society of Composers, Authors and Publishers (ASCAP).” Plaintiffs request statutory damages under 17 U.S.C. § 504(c)(1), of not more than $ 30,000.00 and not less than $ 750.00 for each copyrighted song. Plaintiffs also request that the court order the defendants to pay the costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: Warner Bros. Inc., v. Gagner Corporation, SACV08-00215 JVS (C.D. California).

PRACTICE NOTE: 17 U.S.C. 504(c)(2) allows the statutory damages to be raised to $150,000.00 per infringement if it is deemed to be intentional. Also, if a restaurant or public establishment unreasonably believed that it was exempt from licensing requirements under 17 U.S.C. § 110(5), the copyright plaintiff, in addition to other damages under section 504, will be entitled to two times the license fee which it should have paid for the preceding period of up to 3 years. In some cases, business establishments that play hold music on their telephone system need to obtain copyright licenses. To obtain a music licensing agreement, and to cover all your bases, you should obtain a license from each of the following licensing societies:

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Los Angeles, CA – Copyright infringement and breach of contract lawsuit was filed by Fox against Warner Bros over “The Watchmen” motion picture that is currently under production. Fox alleges that it has “exclusive copyright and contract rights in the motion picture property entitled ‘The Watchmen,’ including Fox’s exclusive rights to produce and develop the picture and to distribute the work throughout the world.” Fox acquired all motion picture rights to The Watchmen, between 1986 to 1990, through a series of contracts with the author of the comic book or graphic novel, and subsequent screenplays by authors Charles McKeown and Sam Hamm. Certificates of Registration for the Copyrighted work were received from the U.S. Copyright Office. The case is titled Twentieth Century Fox Film Corp. v. Warner Bros. Entertainment, Inc., CV08-889DDP (C.D. California).

watchmen-pic.jpgIn 1991, Fox entered into an agreement with Largo International, whereby Fox quitclaimed certain of its rights in The Watchmen, but “expressly preserved, reserved and/or granted to Fox various rights, including exclusive rights to distribute the first motion picture based on The Watchmen.” Producer Lawrence Gordon was a joint venturer in Largo, and when he withdrew in 1993, Largo assigned, transferred and conveyed to Golar all of its rights in The Watchmen. In 1994, Fox and Gordon entered another agreement which required Fox to be paid a buy-out amount if The Watchmen movie was produced, in addition for profit participation of 2.5 percent of 100 percent of net profits on each motion picture, remake or sequel.

Fox’s lawsuit alleges that neither Gordon nor Warner Bros has paid Fox the buy-out amount, nor advised Fox of additional terms required under the contract. Fox also alleges that it had a separate agreement with Warner Bros regarding The Watchmen motion picture, which is also being breached, and that Warner Bros is fully aware that it does not have clear title to the work. Warner Bros is denying that Fox has any rights in The Watchmen project and refused to cease development of the motion picture. The complaint sets for the following five causes of action: (a) Copyright Infringement, 17 U.S.C. §§ 101 et seq., (b) tortious interference with contract, (c) breach of contract, (d) accounting, and (e) declaratory relief.

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Los Angeles, CA – A mother-daughter team founded The Little Giraffe, Inc. to manufacture baby and adult accessories, apparel and giftware under the trademarks, registered with the USPTO, of “Little Giraffe” and “Giraffe at Home.” The mother, Marcia Brower, and the daughter, Sharyn Brower Newberg, were each a 50 percent owner of the shares of the corporation. The complaint alleges that the daughter breached her fiduciary duty to the company and used company checks to “pay personal expenses, wiring funds from the corporate account to pay her credit card bills, selling Little Giraffe inventory for her own account, purging vital information from her computer at company headquarters, and removing vital fabric samples and company property.” The complaint continues that the daughter, “with the help of her co-defendants, secretly took steps to set up a company to compete against Little Giraffe under the name ‘Votre Luxe,’ intentionally copying the distinctive look and feel of Little Giraffe’s products,” including the trade Dress, trade secrets, and proprietary business information.

little%20giraffe.jpgPlaintiff asserts that its trade dress includes the appearance of its products, including “the shape and dimensions of satin trim to plush fabric,” “the color combinations of various fabrications,” “the texture of its plush or luxury fabrics,” “the patterns of Little Giraffe’s robes,” color coordinated pieces to the colors of the products of Little Giraffe, and the placement location of the Little Giraffe logo. Plaintiff also asserts that its trade secrets include “vendors and suppliers of fabric and trim, its know-how concerning the manufacturing process,” “the cutting and sewing contractors” it uses in the manufacturing process, its vendor lists, customer lists, and proprietary financial documents. Plaintiff alleges that her daughter, in association with co-defendant “Rosalie & Friends, Inc. has displayed and offered for sale Votre Luxe’s line of products that are confusingly similar to the products Little giraffe manufactures and sells.”

The complaint sets forth the following six causes of action: (1) Breach of Fiduciary Duty, (2) Trade Dress Infringement Lanham Act 43(a), 15 U.S.C. § 1125, (3) Trade Secrets Misappropriation, (4) Conversion, (5) Unfair Competition Under Cal. Bus. & Prof. Code § 17200, and (6) Injunctive relief. The case is titled: Marcia Brower v. The Little Giraffe, Inc., CV08-01111 PSG (C.D. California).

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Los Angeles, CA – A class action complaint was filed against domain name registrar Network Solutions, LLC and ICANN for basically cybersqatting and frontrunning on customers’ domain name availability searches through Network Solutions. The case is titled, McElroy v. Network Solutions, LLC et al. The complaint alleges that when a customer searches for the availability of a domain name on Network Solutions, but does not purchase it, Network Solutions itself registers that exact domain name that was searched. Network Solutions then places a full page add on a website provided under the searched-for-domain-name indicating that the domain name may only be purchased from Network Solutions. If the same customer attempts to purchase the domain name from another competing registrar, godaddy.com for example, it receives an unavailability notice. When the customer returns to Network Solutions to purchase the domain, it is charged three and a half times more than registering it elsewhere.

The complaint charges that Network Solutions’ misconduct can only occur “through the acquiescence, tacit approval and participation of ICANN” and its Add Grace Period (AGP) agreement, which allows “a domain name registrar to avoid paying a registration fee for domain names canceled within five days of registration.” The complaint continues that “ICANN was, and is, aware of Network Solutions’ actions and continued to permit Network Solutions’ fraudulent abuse of the AGP for its own gain and to the detriment of consumers.” The complaint lists causes of action for fraudulent concealment, aiding and abetting fraudulent concealment, and unjust enrichment.