Trademark Law Briefs

Symantec Corporation v. Logical Plus, Inc. et al., 2009 US Dist. 97447 (ND Cal. 2009)

The court granted plaintiff’s motion for summary judgment for trademark and copyright infringement against defendants who sold counterfeit Norton software products.  Court denied summary judgment against defendants who provided may have provided webhosting and e-mail addresses for defendant sellers use.  There was not sufficient evidence of contributory infringement for summary judgment.

Pythagoras Intellectual Holdings, LLC v. Stegall et al.  2009 U.S. Dist. LEXIS 97115 (CD Cal 2009)

Defendants were granted attorneys fees in part after case was dismissed without prejudice on all counts.  The court found that claims based on copyright and trademark were frivilous and therefore a grant of attorneys fees were warranted.  Defendant failed to show that this was an exceptional case (clear and convincing burden of proof) with regards to Plaintiff’s patent infringement claims and so denied fees on this portion of the representation.  Some of the factors leading to the award included Plaintiff’s failure to provide discovery responses, failure to provide sufficient evidence to continue, the number of defendants included in the suit, and three separate motions to withdraw by Plaintiff’s attorneys causing an increase in fees and a drawing out of the litigation.

City of Carlsbad v. Shah, 2009 US Dist.  96890 (SD Cal 2009)

Plaintiffs announced the name “The Crossings at Carlsbad” for a new community golf course in October 2006.  On November 21, 2006, Defendant registered a number of domain names featuring variations on “the Crossings at Carlsbad.”  Beginning on November 30, 2006 he filed for several intent to use trademark applications in the name for golf related items and a golf course itself.  Plaintiff’s filed for trademarks in the name and associated logo beginning on July 16, 2007.  Plaintiffs filed a partial motion for summary judgment for a declaratory judgment regarding trademark rights.  The court granted the motion for summary judgment and authorized the USPTO to register Plaintiffs’ pending applications and deny registration of Defendant’s applications. (more…)

Milne et al. v. Stephen Slesinger, Inc, 2009 U.S. Dist. LEXIS 94925 (C.D. Cal. 2009)

The court granted Disney’s motion for summary judgment and denied Stephen Slesinger, Inc.’s (SSI) motion for summary judgment related to SSI’s claims that Disney had infringed its trademark and copyrights in the Winnie the Pooh works.

At issue was whether SSI had assigned all of its rights in the Pooh works to Disney.  The terms of a contract are a matter of law which the court can interpret in response to a motion for summary judgment.  Therefore, competing interpretations by the parties do not create a dispute of a material fact.  After considering the assignment contract between SSI and Disney, the court determined that SSI had assigned all of its rights to Disney and therefore could not have a trademark infringement claim.  This was further supported by the fact that SSI never filed for trademarks itself nor objected when Disney filed at least 14 trademarks in the Pooh works.  Furthermore, prior state court proceedings in which SSI stated it had assigned all of its rights to Disney and supported Disney’s judicial estoppel claim.

Apple Inc. v. Psystar Corporation, 2009 U.S. Dist. LEXIS 94019 (N.D. Cal. 2009)

Defendant sought discovery of Plaintiff’s profits which Plaintiff refused to turn over.  The Court denied Defendant’s motion to compel, finding that Plaintiff’s profits were irrelevant to the underlying suit and counter claims, including Plaintiff’s cause of action seeking an injunction for trademark infringement. (more…)