Corporate officer can be held personally liable for corporation’s infringement

 Motor Works, LLC v. Safer Technologies, Inc., 2010 U.S.Dist. LEXIS 56515 (N.D. Cal. 2010)

The court held that a corporate officer who is the “central figure” or “guiding spirit” behind trademark infringement by a corporation can be held personally liable notwithstanding that he acted as an agent of the corporation and not on his own behalf.

The court also ruled on other issues fact specific to the case.

No summary judgment on the geographic scope of an unregistered trademark

Optimal Pets, Inc. v. Nutri-Vet, LLC et al., 2010 U.S. Dist. LEXIS 55774 (C.D. Cal. 2010)

Plaintiff started selling “Optimal Pet” pet vitamins in 2004.  Plaintiff never registered the mark but used it continuously and as of December 2008, had sold $35,000 worth of product in 34 states.  In 2008, defendants began selling pet vitamins under the name “Optimal Pets.” Defendant applied for registration of “Optimal Pets” for pet viatamins in May 2008.

Plaintiff opposed registration and the lawsuit ensued.  Defendant filed for summary judgment on the grounds that plaintiff “‘cannot establish market recognition or market penetration sufficient to establiosh enforceable… trademark rights [in the name “Optimal Pets”] either nationally or in any specific geographical area.’” (Pages 3-4)  The court held that while the gross ssales may be low, there is evidence that OPI’s Optimal Pets products were at least some sales in 34 states and it was regularly sold in at least 14 stores in at least 2 states.  As such the court could not grant summary judgment.

The court also denied summary judgment on defendant’s good faith adoption, based on facts that could support plaintiff’s argument that defendants knew of plaintiff’s prior use and denied summary judgment on likelihood of confusion as the marks were  identical and used to sell virutally identical products.

Trademark plaintiff sanctioned with dismissal for failure to prosecute

Guru Denim, Inc. v. Hayes, 2010 U.S.Dist. LEXIS 52992 (C.D. Cal. 2010)

Plaintiff filed suit against defendant for allegedly selling a counterfeit “hoodie” bearing plaintiff’s trademark.  Plaintiff failed to prosecute the case diligently- letting it linger for 16 months before seeking a default (which defendant overcame based on questions of appropriate service) and then, at the pretrial conference, complained for the first time of defendant’s failure to participate in discovery and sought a continuance.  The court issued an order to show cause why plaintiff should not be sanctioned.  Plaintiff then informed the court that plaintiff’s counsel had misplaced the allegedly infringing hoodie.  As sanctions, the court dismissed the case with prejudicie, awarded defendant costs as the prevailing party, and sanctioned plaintiff’s counsel for the expenses incurred by defendant in attending the pretrial conference and sanctions hearing (defendant could not be awarded attorneys fees because he appeared pro se).

The bar for an “exceptional case” for attorneys fees awards is not high

Cyclone USA, Inc. v. LL&C Dealer Services, LLC, 2010 US.Dist.LEXIS 51193 (C.D. Cal. 2010); 2010 US.Dist.LEXIS 51172 (C.D. Cal. 2010)

Cyclone USA prevailed in its Lanham Act actions and defense of counterclaims against LL&C (et al.). The court awarded attorneys fees to Cyclone for both the main action and defense costs and for general (non-trademark) counsel. (more…)

Preliminary injunction preventing sale of website granted in cybersquatting case

Super-Krete International, Inc. v. Sadleir, 2010 U.S.Dist. LEXIS 50090 (C.D. Cal, 2010)

Plaintiff owns the registered trademark for “Super-Krete,” “Super-Krete Products” and “Super-Crete.”  Defendant, plaintiff’s competitor, registered the domain “supercrete.com” which redirected to defendant’s website.  Plaintiff filed a complaint under the cybersquatting act (ACPA) and sought a preliminary injunction to prevent defendant from carrying out its threat to sell the domain to a third party. (more…)

Court rules firm may have committed malicious prosecution by arguing trademark rights in Princess Diana name

Franklin Mint Company v. Manatt, Phelps & Phillips, LLP (2010) 184 Cal.App.4th 313

Court of Appeal says that the defendant lawfirm’s claims based on trademark rights in the name Princess Diana lacked probable cause under a malicious prosecution anaylsis because her name is so clearly descriptively associated with her as a person that the lawfirm should never have argued her name acted as a trademark for her charitable services.

(more…)

No liability where internet service provider removes allegedly infringing material (or “why pro se complaints are a bad idea”)

Williams v. Life’s Rad and Cafepress.com, 2010 U.S.Dist. LEXIS 46763 (N.D. Cal. 2010)

It’s not often you see a motion to dismiss granted without leave to amend.  But apparently it does happen.

Cafepress operates a website where vendors can upload designs to be printed on t-shirts and other items.  Vendors can set up “shops” within the website.  Plaintiff and defendant, Life’s Rad, both are vendors on cafepress.com.  Life’s Rad informed Cafepress that plaintiff was selling “Life is Rad” t-shirts which infringed on its federal copyright.  Pursuant to the cafepress.com terms of use, Cafepress removed plaintiff’s shirts.  Plaintiff sued alleging that cafepress had violated the DMCA, the Lanham Act, plaintiff’s due process rights under the Constitution, and interfered with Plaintiff’s prospective economic advantage.  The court dismissed all causes of action against Cafepress without leave to amend. (more…)

Copyright Act can preempt Trade Dress claims

 Sleep Science Partners v. Lieberman and Sleeping Well, LLC, 2010 U.S.Dist LEXIS 45385 (N.D. Cal. 2010)

Plaintiff sued Sleeping Well, LLC for misappropriating its online sales method and its advertising.  Sleeping Well filed a motion to dismiss primarily based on lack of specificity and preemption by Copyright Act and California Uniform Trade Secrets Act (CUTSA).  The court commented in depth on each cause of action challenged. (more…)

Trade Association Certification is not Protected Speech

All One God Faith, Inc. v. Organic and Sustainable Industry Standards, Inc. (2010) 183 Cal.App.4th 1186

Plaintiff, (trade name “Dr. Bonner”) sells organic health and beauty products that comply with the voluntary standards of the USDA National Organic Program (NOP).  Defendant (”OASIS”) is a mutual benefit trade group who is designing its own organic standard to be used as a certification on member products.  Dr. Bonner filed suit seeking an injunction against OASIS based on unfair competition and misleading advertising because Dr. Bonner alleges the OASIS standards do not meet the NOP standards.  OASIS filed a anti-slapp motion claiming the complaint attacks its free speech activitie.  The trial court denied the motion and the Court of Appeal affirmed. (more…)

First Sale Defense Doesn’t Fly When Post-Consumer Confusion is Likely

Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 2010 U.S.App. LEXIS 9277 (9th Cir. 2010)

Au-Tomotive Gold (”Auto Gold”) sells marquee license plates which have the Volkswagen VW symbol attached.  Auto Gold purchased the VW symbols from an authorized Volkswagen distributor and sold the marquees with packaging that disclosed no relationship between Auto Gold and Volkswagen.  Auto Gold therefore claimed that the First Sale doctrine meant that there was no trademark infringement.  The Court disagreed, holding that where non-purchaser confusion is likely post purchase, the doctrine does not apply.  (more…)