Articles Posted in Intellectual Property Litigation

Previously, we explored the merits of the summary judgment as a responsive pleading to a Complaint in trademark and copyright lawsuits.  Let’s look at the other side of the coin.  Why would you not file a summary judgment and instead opt for a rule 12b6 motion?  I think the main reason is if you have a client that is reticent about discovery.  However, even if that is the case, I could argue summary judgment is the way to go because a rule 56d request is tough and the plaintiff does not have a lot of time to put together such a motion.

Rule 56d provides in part that “if the non-moving party shows by declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may: defer considering the motion or deny it; allow time to take discovery; or issue any other appropriate order.”

Notice that discovery under rule 56d is not mandatory.  The requesting party must show:  that it has set forth in affidavit form the specific facts it hopes to elicit from further discovery; the facts sought exist and the sought after facts are essential to oppose summary judgment.  Grant v. Unifund CCR Partners, 842 F.Supp.2d 1234, 1242 (C.D.Cal.2012) (citing State of Cal. v. Campbell, 138 F.3d 772, 779 (9th Cir.1998).  This is a pretty tough hurdle to overcome on a legally deficient complaint.  Even if discovery is allowed, it is likely to be very narrow and eliminate much of the typical motion to compel practice.

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When representing a defendant responding to a Complaint in federal court, intellectual property attorneys are faced with many strategic choices.  For purposes of this post, we will assume that jurisdiction and venue are incontestable.  One tactic would be to simply file an Answer denying the allegations and engage in full blown discovery.  Another typical maneuver is to attack the pleadings by filing a motion to dismiss or Rule 12b6 as its known in the FRCP.  An often overlooked option is the summary judgment.

Of course, there is no one size fits all answer.  Assorted legal and factual scenarios call for different legal tools.  Every case has its own DNA.  That being said, I have found that the 12b6 motion tends to be overused while the summary judgment tends to be underused.  Many times, your defense clients are better served by a summary judgment motion rather than a 12b6 motion.

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One issue that often faces small to medium sized companies is whether or not to buy cyber liability insurance policies.  The need and market for such policies is developing.  In this post, I will provide an overview of the product and why I recommend that our clients obtain this coverage.

First, with rare exception, today every company is a tech company.  Obviously, social networks and electronic marketplaces are run from an internet platform but the same can be said for the auto body shop that interacts with insurance carriers via web portals.  Just as tech companies have a significant brick and mortar presence, traditional brick and mortar companies transact large amounts of business online.  Because of this simple fact, I advise my clients, large to small, to obtain cyber liability coverage.

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E-tail behemoth Amazon recently filed a lawsuit against Jay Gentile, a California resident offering positive Amazon reviews for a price, otherwise known as “astroturfing”.  Gentile offered his service via the domain name “”, among others.  Here is how the operation worked in a nutshell:  Mom and pop widget company desires four and five star reviews in order to increase consumer confidence and sales; Gentile’s service provides the widget seller with canned 4 and 5 star reviews over a period of months, so that the reviews appear legitimate and avoid Amazon’s review screening filter; and the reviews cost mom and pop about $20 per review.  Gentile’s company even went so far as to allegedly orchestrate phony baloney sales in order to achieve “verified” review status.

Quite naturally, Amazon isn’t too happy about all of this.  Consequently, Amazon deployed one of its go to law firms to attack Gentile in Court.  The problem is, I’m not too sure that Amazon’s lawsuit is legally viable, however, it does have significant strategic and practical value.  Because of this, I think it is likely to serve as an astroturfing deterrent.

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World Wrestling Entertainment (“WWE”) has serious problems at many of its events.  It seems that purveyors of WWE counterfeit merchandise set up shop at or near event locations. As such, the WWE loses a number of lucrative merchandise sales at events.  The problem facing the WWE has been how to stop such nameless, faceless counterfeiters who typically evade detection or enforcement consequences.  With scant resources, many local police departments are not willing or able to provide the type of “boots on the ground” enforcement required to stamp out sidewalk counterfeits.

So how does a brand owner succeed against shadowy, anonymous wrongdoers?  The WWE took the novel approach of seeking an ex parte temporary restraining order and seizure order against future, unnamed counterfeiters.  This is highly unusual in that most trademark enforcement actions are reactive and backward looking in that they seek to redress wrongs already committed.  Certainly, in the online trademark infringement context, relief is routinely granted against anonymous “John Doe” defendants. In such cases, however, there is existing admissible evidence of the infringements.  And typically such infringement is rectified easily via a seizure of the very domain names used to perpetrate the anonymous counterfeiting.

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Filmmaker Lionsgate has been in damage control mode since the July release of a high-quality copy of “The Expendables 3” through online torrent websites. Lionsgate raced to court requesting a temporary restraining order to force the half dozen torrent sites, including and, to halt the unreleased movie’s distribution. The film reportedly was downloaded globally over 2 million times — more than eight percent of the movie downloads were from Los Angeles.

A temporary restraining order was approved by a California judge against the unidentified torrent site operators, who apparently spurned demands to pull “The Expendables 3” off their sites. The order prohibits site operators from distributing the film and transferring site registrations. Lionsgate also was given the go ahead to make contact with the defendants’ financial and advertising providers.

According to, a second court order the following day gave the filmmaker permission to subpoena third parties, including and Google, to help track down the alleged Internet pirates. The third parties could be asked to hand over server logs and other confidential information about the torrent site operators.

The former director of the U.S. Patent and Trademark Office claims some intellectual property legislation is weak. The Economic Espionage Act of 1996 is a federal law that criminalizes trade secret violations. The law does not provide for civil actions against parties, like ex-employees who steal former employers’ intellectual recipes and use them to compete with theft victims.

Whether businesses can file civil claims over trade secret disputes comes down to a state level. The California Uniform Trade Secrets Act provides civil protections, as long as companies treat trade secrets like true secrets. Clear barriers must be set up to secure business data, whether a secret involves research and development or customer information.

The former patent office official feels American businesses are paying an enormous price for a federal government that puts trade secret protection on the back burner. Last year, the Department of Justice filed just 25 trade secret cases. Studies have found U.S. businesses are losing up to $480 billion every year to domestic and global trade secret violators.

A Los Angeles company does not have to steal a recipe, ingredient for ingredient, to be in legal trouble for selling a product similar to one manufactured by another business. Intellectual property law protections reach far beyond duplicating someone else’s product or service. The name of a product and the way it is marketed can violate laws.

A trademark is a product or service identifier and an outward sign that gives a first or lasting impression of the quality of a brand and company. Dilution is a legal term used to describe the “tarnishing” of a business’s image in the minds of consumers. The Hershey Company recently filed trademark infringement lawsuits against two companies, one in each of the states where recreational marijuana use is legal.

Hershey is a chocolate candy making institution, famous worldwide for popular, well-established products like Reese’s Peanut Butter Cups and Mr. Goodbar. The lawsuits allege the cannabis shops sell marijuana products in stores and online, with names and marks that mimic Hershey brands. The chocolate maker is worried “Reefer’s Peanut Butter Cups” and “Mr. Dankbar” will be misconstrued by consumers, particularly children, as candy.

Every Los Angeles author, musician and movie maker enjoys admiration for his or her work. Some people like others’ books, music and films so much that they draw inspiration for other works from it. Then, there are those who would like to capitalize on someone else’s property by copying it.

A screenwriter who holds the rights to the novel “Ham on Rye” by late author Charles Bukowski is suing actor James Franco. The California native and his production company are charged with lifting scenes and dialogue directly from the novel without permission. Franco is the director of a film called “Bukowski,” reportedly adapted from “Ham on Rye,” set for release later in 2014.

The copyright infringement lawsuit asks a federal judge to stop the release of Franco’s film. The complaint also requests damages or a $150,000 settlement. Settlements may include licensing agreements that satisfy copyright holders and defendants.

Ryan Seacrest, according to, is widely known for his Los Angeles morning radio show and his on-air and behind-the-scenes involvement in television shows like “American Idol” and “Keeping Up with the Kardashians.” Many of Seacrest’s ideas have paid off handsomely, but his ownership stake in Typo Keyboard may not be one of them.

It’s likely you’ve never heard of Typo Keyboard or Seacrest’s founding membership in the startup, but BlackBerry has. Typo makes a cover for iPhones that contains a keyboard, a feature to supplement Apple’s touchscreen product. BlackBerry is unhappy because Typo’s keyboard resembles its own.

BlackBerry filed a case against Seacrest’s company claiming the Typo’s snap-on keyboard violates copyright trade dress rules. Trade dress is how the appearance or packaging of a product helps make it identifiable to consumers. Products that look too much alike create marketplace confusion and detract from the original product’s rightful sales.