Trademark Law Briefs

 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.

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…)

Dahl v. Swift Distribution, Inc., et al, 2010 US Dist LEXIS 35938 (C.D. Cal, 2010)

Plaintiff has patents on a multiple configuration cart sold under the registered trademark “multi-cart.”  Under a confidentiality agreement, plaintiff shared details with defendant who later began marketing a multiple configuration cart sold under the mark “ulti-cart.”  The court denied Plaintiff’s motion for a TRO because:

• Plaintiff delayed  17 days between filing the complaint and filing the TRO motion
• Plaintiff could not demonstrate likelihood of success on the merits of his trademark claim because “multi-cart” is a weak mark, plaintiff failed to show that the two marks are similar because Plaintiff’s mark includes a sytlized cart design that is not included in defendant’s mark, plaintiff offered no proof of actual confusion, consumers are likely to exercise a high degree of care because the goods cost over $100, and defendant proffered a valid reason for selecting “ulti-cart”- it’s DBA is Ultimate Support Systems and it affixes the term “ulti” to a number of its products.
• Plaintiff’s TRO on other claims were denied because Plaintiff failed to show likelihood or irreparable harm (which is presumed in trademark cases).

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., et al., 2010 U.S. Dist. LEXIS 34021 (N.D. Cal., 2010).

A jury awarded over 10 million in statutory damages and the court awarded a permanent injunction to plaintiff against defendants “for unlawfully contributing to infringement of plaintiff’s marks and copyrights through continued provision of internet hosting and routing services to direct infringers after receiving reasonable notice of the direct infringement and at all times having the power to terminate the provision of Internet hosting and routing service to the direct infringers without harm to legitimate subscribers.”

Freedman v. Brutzkus, 182 Cal.App.4th 1065 (9th Cir. 2010)

Where an attorney signs a contract approved “as to form and content,” the attorney is not making a representation to the other party or the other party’s attorney. (more…)