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Los Angeles, CA – A copyright infringement, trademark infringement, Lanham Act unfair competition, and section 17200 complaint was filed in United States District Court, Los Angeles, by Hong Kong based Funrise Toys, Inc. over sales of allegedly infringing toys by defendants doing business as Aahs stores. Funrise Toys has federally registered trademarks for its “Gazillion Bubbles” word mark, bottle design trade dress, wand design trade dress, and machine design trade dress. Funrise Toys also claims to have trade dress and copyrights in the box packaging, in addition to the wand, machine, and bottle, for which it has received several copyright registration certificates. Funrise Toys also asserts that it has registered trademark rights in the green and purple colors used in the toys.

Funrise-toys-gazillion-bubbles.jpgThe complaint alleges that the Aahs defendants manufacture and sell bubble machines which are substantially copied from the plaintiff’s “Gazillion Bubble Machine and box packaging and Defendants Aahs’ bubble bottle and wand is substantially copied from and contains the same physical appearance and features as the trade dress of” Plaintiff’s products or is a reproduction, counterfeit, copy, or colorable imitation thereof. Plaintiff further alleges that that defendants’ infringing product “is likely to, was intended to, and did cause confusion or mistake or to deceive the relevant trade and the public into believing that the” infringing product is “sponsored by, authorized by, associated with, originates from, and/or is in some way connected with or licensed by Plaintiff.” Plaintiff continues that the infringement was willful and intentional to trade upon plaintiff’s goodwill and reputation and asks for enhanced damages and attorneys’ fees. Plaintiff also asserts causes of action for Lanham Act unfair competition Section 43(a), and unfair competition under California Business and Professions Code § 17200. The case is titled: Funrise, Inc. v. Bhasin Enterprises, Inc., CV08-01117 DSF (C.D. California February 20, 2008).

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Los Angeles, CA – A copyright infringement, Lanham Act unfair competition, and section 17200 complaint was filed in United States District Court by Med-Legal, a service provider to professionals and companies in the workers’ compensation field. The complaint alleges that Med-Legal created a “Work Comp Directory” which a resource volume and compilation of directories of vendors, various services and professionals. Med-Legal alleges that it invested “substantial time, resources, and research to compile, edit, and organize the listings” even though the information is available in public sources, the compilation directory is entitled to copyright protection because of the research and judgment expended in the selection and organization of the information to include in the directory. The compilation work is registered with the U.S. Copyright Office and has received a Certificate of Registration.

Med-Legal alleges that defendant Matrix Document Imaging, Inc. is also in the business of providing services to professionals and companies in the workers’ compensation area. And that in 2006, “Matrix began copying reproducing and repackaging the copyrighted material” contained in the Work Comp Directory without editing or revision. These alleged copies were then distributed to businesses and potential clients to compete with Med-Legal. Med-Legal alleges that there has been actual confusion amongst customers where defendant’s directory was believed to be Med-Legal’s Work Comp Directory. The case is titled: Med-Legal, Inc. v. Matrix Document Imaging, Inc., CV08-1004 JSL (C.D. California).

PRACTICE NOTE: In directory compilations, the creator usually lists and keeps track of fictional entries and/or intentional typographical errors to deem whether they are copied into a competitor’s work. Even though Med-Legal does not have to prove actual confusion amongst consumers to win on its Lanham Act claim, actual confusion amongst a significant numbers of consumers provides strong support for the likelihood of confusion. Playboy Enterprises v. Netscape Communications, 354 F.3d 1020, 1026 (9th Cir. 2004).

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Watching the Cubs play at Wrigley Field is a nostalgic indication of summer (except for the playoffs), especially when cameras pan out to the bleachers and the rooftop spectators overlooking the field. The Chicago Cubs filed a trademark infringement and unfair competition lawsuit on February 15, 2008 to prevent rooftop facility owners from charging patrons to watch the game from the rooftops that overlook Wrigley Field. The Cubs sued numerous rooftop operators in 2002 for copyright infringement and several state causes of action. The previous lawsuit settled with the rooftop operators agreeing to give the Cubs 17% of their gross revenue. Last year, the rooftops reportedly raked in $18 million dollars, resulting in a windfall of about $3 million for the Cubs.

cubs%20-%20rooftop%20pic.jpgTom Gramatis was one of the original defendants in the 2002 lawsuit and settlement agreement and he has recently built two additional buildings with rooftop seating. The Cubs allege that Gramatis breached their settlement agreement by not paying the agreed upon royalties and has not paid any royalties for the new buildings. Interestingly, the Cubs have dropped their dubious copyright infringement claim from this lawsuit – undoubtedly a lesson learned from 2002 – and only assert that Gramatis is infringing on the Cubs’ trademarks and falsely advertising an association with the team in his promotional material and website. The Cubs allege that “Defendants’ marketing efforts are, and have been, likely to cause confusion, to cause mistake or to deceive as to, inter alia, the affiliation, association or connection between Defendants and the Cubs and the Cubs’ approval or sponsorship of Defendants’ business activities.” Chicago National League Ball Club, LLC v. Wrigley Rooftops III, LLC, 08-cv-968 (N.D. Illinois).

PRACTICE NOTE: In essence, the Cubs are trying to assert a copyright claim that they don’t have. It is highly unlikely that the Cubs would settle the lawsuit if Gramatis agreed to market his rooftop facilities as “a high perch with a view of a game played with a ball, a bat, no steroids or HGH, a diamond field, where the team’s logo incorporates a hibernating mammal.” On second thought, he might be dragged before Congress with a false advertising charge for the “no steroids or HGH” quip.

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Los Angeles, CA – Patent infringement and copyright litigation complaint over toy helicopters was filed in Central District Court of California, Los Angeles, by Hong Kong based Silverlit Toys Manufactory, LTD. and its Canadian distributor. Plaintiffs design, manufacture, develop, and market toy product for children and sell the toy under its federally registered trademark Air Hogs® Havoc Heli™ Helicopters, in addition to track racing systems, robot toys, and water toys. Plaintiffs have issued United States Patents on the toy helicopter: U.S. Design Patent No. 546,269; U.S. Design Patent No. 552,531; U.S. Design Patent No. 554, 040, and U.S. Design Patent No. 544,825. They also have a registered copyright certificate with the U.S. Copyright Office, Copyright Registration No. VAu694-351. Plaintiffs claim that “the Air Hogs® Havoc Heli™ Helicopters is an original decorative design that is easily distinguishable from traditional remote control toy helicopters” and has been recognized by “the Guinness Book of World Records as the world’s smallest commercial toy remote control helicopter.” Plaintiffs further allege that Air Hogs® Havoc Heli™ Helicopter was the number one best selling remote control toy of 2007.

Helicopter%20Pic.jpgThe defendants, Soft Air USA, Inc. and a subsidiary of Sports Authority, are accused of copying and selling toy helicopters that infringe on Plaintiffs’ Air Hogs® Havoc Heli™ Helicopter’s patents and copyrights. Plaintiffs allege that Defendants’ helicopters are identical to the Air Hogs® Havoc Heli™ Helicopter that “Defendants’ knock off helicopters were recently recalled after an investigation by the Consumer Product Safety Commission in response to consumer complaints that the rechargeable battery packs were catching fire.” Plaintiffs continue that they were “bombarded with calls from customers who mistakenly believed that Defendants’ inferior and dangerous knock off product was made by Silverlit.” Plaintiffs allege that customers believed that the Defendants’ voluntarily recall included the Air Hogs® Havoc Heli™ Helicopter and returned the genuine product to Plaintiffs. The case is styled as: Silverlit Toys Manufactoy, LTD v. Soft Air USA, Inc., CV08-01053 JFW (C.D. California).

PRACTICE NOTE: In order to preserve their good will and reputation with their customers and the public, it is important for intellectual property owners to immediately enforce their rights against infringers to stop the influx of unauthorized product of inferior quality.

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Los Angeles, CA – On February 20, 2008, Chanel, Inc., the luxury goods company, filed a complaint for counterfeiting, trademark infringement, and Lanham Act 43(a) unfair competition against numerous individuals in the California Central District Court – Eastern Division, in Riverside. Chanel asserts that it is the owner of the USPTO registered trademarks CHANEL and the CC MONOGRAM for use on necklaces and costume jewelry, including earrings, rings, bracelets, and pendants in International Classes 14 and 28. Chanel asserts that its trademarks are “symbols of Plaintiff’s quality, reputation, and goodwill” and customers “readily identify merchandise bearing the Chanel Marks as being high quality merchandise sponsored and approved by Chanel.”

chanel-monogram.gifChanel alleges that Defendants are “promoting, and or otherwise advertising, distributing, selling, and/or offering for sale counterfeit products, including at least necklaces and costume jewelry bearing trademarks which are exact copies of Chanel Marks” and are counterfeit, lower quality goods that also incorporate Chanel’s trade dress. The complaint further alleges that the “net effect of Defendants’ actions is to confuse consumers who will believe Defendants’ Counterfeit Goods are genuine goods originating from and approved by Chanel.” In addition to preliminary and permanent injunctive relief, Chanel seeks three times its actual damages under 15 U.S.C. § 1117, or, at its election, seeks statutory damages of $1,000,000.00 (one million dollars) from each defendant under 15 U.S.C. § 1117(c)(2) of the Lanham Act. The case is styled as Chanel, Inc. v. Kin Fung Poon et al., EDCV08-0224 VAP (CD CA 2008).

PRACTICE NOTE: The Ninth Circuit Court of Appeals recently held that if a trademark owner seeks counterfeiting statutory damages under 15 U.S.C. 1117(c) – instead of actual damages, then it is not entitled to attorneys’ fees under section 1117(b). K and N Engineering, Inc. v. Bulat, 510 F.3d 1079, 1081 (9th Cir. 2007). The Ninth Circuit vacated the trial court’s award of $100,000 to K and N, but let stand the $20,000 in statutory damages. In counterfeiting cases where the actual damages are low, Plaintiffs must weigh the option of receiving lower actual damages and their attorneys’ fees, against the award of higher statutory damages and no attorneys’ fees.

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Los Angeles, CA – On February 15, 2008, Star Fabrics, Inc. commenced copyright litigation in California Central District Court over textile/fabric design copyrights, which apparel bearing the design is allegedly sold at Ross department stores and were manufactured by US Textile Printing, Inc. and Uno Clothing, Inc. Star Fabrics claims to have purchased all rights in the design which it then transferred to fabric. Star Fabrics registered the design with the U.S. Copyright Office and received Copyright Registration No. VA 1-418-127.

The complaint alleges that Plaintiff sent cease and desist letters to all of the defendants – who refused to stop selling the garments and/or fabric. As a result, Star Fabrics’ lawsuit makes a claim for copyright infringement 17 U.S.C. § 101 et seq. It also adds a second claim for vicarious and/or contributory copyright infringement, alleging that defendants “knowingly induced, participated, aided and abetted in and resultantly profited from the illegal reproduction, importation, purchase and distribution and/or sales of product featuring” the copyrighted design.

PRACTICE NOTE: Although copyright laws currently protect patterns and designs printed on or stitched into the fabric, copyright protection is not currently available to protect fashion designs themselves (i.e. the cut, style, or dimensions of clothing). However, the Design Piracy Prohibition Act (H.R. 5055) bill is currently pending in congress that, if enacted into law, will provide three years of protection for the fashion design if certain conditions are met. Click Here To Read About The Bill.

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A jury awarded patent infringement damages of $41,083,853.00 to Rembrandt Vision Technologies, L.P. in its patent infringement trial against CIBA Vision Corporation. Rembrandt Vision Technologies, L.P. v. CIBA Vision Corporation, 2:05-CV-491 (E.D. Texas). The patent infringement lawsuit commenced in 2005 when Rembrandt originally accused both Bausch and Lomb – which settled before going to trial – and CIBA of infringing on U.S. Patent No. 5,712,327. The asserted patent relates to long-term extended wear contact lenses which are more gas permeable, allowing for oxygen exchange, and retain moisture.

ciba-logo.gifRembrandt is a non-practicing patent holding company – i.e. they don’t manufacture products, they merely file patent infringement lawsuits. As Forbes.com reports, Rembrandt’s parent “has raised $150 million to purchase patents and sue companies it claims infringe on them.” Forbes also reports that numerous patent assertion companies are being funded by institutional investors and hedge funds.

PRACTICE NOTE: Rembrandt’s strategy in settling with Bausch & Lomb raised concerns for co-defendant CIBA. In eBay, Inc. v. MercExchange, LLC, 126 S. Ct. 1837 (2006), the Supreme Court limited the ability of non-practicing patent holders from obtaining permanent injunctions. In an attempt to overcome the eBay decision, Rembrandt – because it is non-practicing patent holder – has reportedly given Bausch & Lomb – who manufactures the product – the right to seek a permanent injunction against infringers.

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Litigation commenced in Central District Court of California, Santa Ana Division, alleging unfair competition under the Lanham Act 43(a), 15 U.S.C 1125. Plaintiffs, Orthopedic Development and MinSURG Corp., are the owners of a patent-pending TruFUSE® medical device product which is a spinal facet fusion system invented by Dr. David A. Petersen, M.D., “that offers a low-risk and minimally invasive surgical solution to back pain resulting from facet joint degeneration and from mild spinal instability.” The complaint alleges that the TruFUSE® surgery can be completed in less than an hour and the patient usually needs one night of hospital stay. Although the invention is patent-pending and cannot be currently asserted in a patent infringement lawsuit, Orthopedic Development currently owns a registered trademark with the USPTO for the TruFUSE® trademark.

us20060111782-fig3.jpgThe Plaintiffs discovered that one of their own distributors, Nutech Medical, Inc., was allegedly developing and marketing a “TruFUSE® knock-off” facet fusion product. The complaint alleges that Plaintiffs discovered that the infringing product was going to be marketed under a confusingly similar name of “NUFUZE” and that the product incorporates Plaintiffs’ proprietary information and trade secrets, which were provided under the Plaintiffs’ distribution agreement with NuTech. Upon learning of NuTech’s application to the USPTO to register the NUFUZE trademark, Plaintiffs filed an opposition to the application before the Trademark Trial And Appeal Board (“TTAB”). NuTech filed an answer in the TTAB proceeding and abandoned its NUFUZE and BIOFUZE trademarks, and allegedly began marketing the product under the “NuFix” trademark. The case is titled Orthopedic Development Corp. v. Vikingcraft Spine, SACV08-01888 (C.D. California)

The complaint alleges that numerous surgeons that use Plaintiffs’ TruFUSE® product began receiving solicitations from NuTech and its distributor, Vikingcraft, offering the NuFix product at a reduced price. Plaintiff filed suit against NuTech and other defendants in Florida and sent notice to Vikingcraft, putting it on notice of the patent application and the Plaintiffs’ unfair competition and false advertising claims. Plaintiff claims that Defendant falsely asserts “that (a) the TruFUSE® Allograft has a tendency to pop out after it is implanted and that the ridge design of NuFix reduces this occurrence; and that (b) NuFix is designed to be used with TruFUSE® Instruments held on consignment by hospitals.”

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Trademark litigation, including Anti-Cybersquatting Consumer Protection Act violations and Section 17200 unfair competition, was filed by Beverly Hills based Hollywood Network, Inc. against its former independent contractor of ten years, Chris Davies. Hollywood Network alleges that Davies was intimately involved in Plaintiff’s annual Hollywood Film Festival and Hollywood Awards gala celebration. Plaintiff is a licensee of numerous trademarks registered with the USPTO, including Hollywood Film Festival, Hollywood Awards, and Hollywood Movie Awards. Plaintiffs also own numerous domain names that incorporate their trademarks.

Plaintiffs allege that Defendant Davies registered the “awardshollywood.com” and “hollywoodmobileawards.com” domain name using a fictitious pseudonym or dba. Plaintiffs alleged that they made a good-faith attempt to resolve the dispute by having the domain names transferred voluntarily. However, Defendant offered to sell the disputed domain names to Plaintiffs. Plaintiffs thus filed the instant complaint alleging cybersquatting under 15 U.S.C. § 1125(d), requesting statutory damages under 15 U.S.C. § 1117(d) in an amount not less than $1,000.00 and not more than $100,000.00 per domain name. Also, Plaintiffs allege infringement of USPTO registered trademarks under 15 U.S.C. 1114(1) and False Designation of Origin under 15 U.S.C. § 1125(a). Further, Plaintiffs allege California Common Law Trademark Infringement and unfair competition under Business and Professions Code § 17200. The case is titled Hollywood Network, Inc. v. Chris Davies, CV08-01035 (CD CA 2008).

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Patent infringement litigation commenced against The DIRECTV Group, Inc. in Los Angeles District Court on February 14, 2008. The patent holder, Phoenix Solutions, Inc., is accusing DIRECTV of infringing four of its patents (Patent Nos. 6,615,172, 7,139,714, 7,050,977, and 7,225,125). The patents relate to computer-based speech recognition technology and allow for “virtual customer service agent” responses to incoming phone calls from a live person.

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The complaint alleges that DIRECTV’s customer support lines and website, “including movie and/or event ordering lines and installer activation lines, that employ a natural language interactive voice response (IVR) system that includes a virtual agent” infringes on the four patents. The complaint asserts that customers/installers can speak with DIRECTV’s ordering system in a conversational manner, which ability has saved DIRECTV $9.2 million over touch-tone answering devices. The complaint states that Plaintiff contacted DIRECTV almost a year ago in an attempt to settle the dispute, but DIRECTV did not provide the requested information. Plaintiff alleges that the patent infringement is willful and seeks treble damages and attorneys’ fees and costs under 35 U.S.C. §§ 284 and 285.