|
|
| Description
|
Download
|
Perfetti Van Melle USA v. Cadbury Adams USA LLC
--- F. Supp. 2d ---, Case No., 2:10-cv-00035-DLB-CJS (Aug. 18, 2010)
On behalf of our client Cadbury Adams USA LLC--maker of the famous DENTYNE brand of chewing gum--we defeated a motion for a preliminary injunction brought by Perfetti Van Melle USA in the United States District Court for the Eastern District of Kentucky. The motion sought to block the launch of Cadbury's new breath purifying gum, DENTYNE PURE, on the grounds that the name DENTYNE PURE was confusingly similar to Perfetti's MENTOS PURE FRESH and MENTOS PURE WHITE names used for Perfetti's breath freshening gum. Perfetti also owned federal trademark registrations for MENTOS PURE FRESH and PURE WHITE. After a two day evidentiary hearing the Court denied the motion, holding that Perfetti was "unlikely to prevail on the merits of its claims."
|
|
Superman Copyright Termination Litigation
view case history
The firm was part of the defense team for clients Time Warner Inc., Warner Communications, Inc., Warner Bros. Entertainment Inc., Warner Bros. Television Production Inc. and DC Comics in the ongoing litigation in the U.S. District Court for the Central District of California over the copyright termination interest in certain works featuring the Superman and Superboy characters allegedly owned by the heirs of co-creator Jerry Siegel. The decisions in which the firm was involved resulted in a number of significant decisions in the complex area of copyright termination and in other areas, including res judicata, jury trial rights, the fair market value of copyright rights in the entertainment arena, among others. Summaries of decisions and links can be found by clicking through "view case history" above.
|
|
UMG Recordings, Inc. v. O'Rourke
92 U.S.P.Q.2d 1042 (T.T.A.B. 2009)
On behalf of UMG Recordings, Inc., owner of the world-famous MOTOWN mark and music label, we successfully opposed the applicant’s attempt to register MTOWN CLOTHING (and design) as a trademark for clothing.
|
|
Crown Awards, Inc. v. Discount Trophy & Co., Inc.
564 F.Supp.2d 290 (S.D.N.Y. 2008), aff'd, No. 08-1674-CV, 2009 WL 1054109 (2d. Cir. Apr. 21, 2009).
Following a trial, the court held that the defendant infringed the copyrights in our client’s popular Spin Trophy, by selling a trophy that court found “strikingly similar” to the Spin Trophy. The judgment permanently enjoins the defendant from selling the infringing trophy and orders it to pay Crown its profits from the infringement. In July, 2008, the Court granted our motion to recover attorneys' fees. The Court said that Crown and the Firm "prevailed in every stage of the litigation" and that Crown was entitled to recover its legal fees in full. The Court went on to write that "Fross Zelnick hourly rates for legal services have repeatedly been found to be fair by courts evaluating them," and that "as a result of Fross Zelnick's expertise in the field of copyright law, it does not expend extra time to understand the issues involved in a copyright case, and therefore spends only a reasonable number of hours to litigate the case." On April 21, 2009, the U.S. Court of Appeals for the Second Circuit affirmed the district court ruling on infringement and damages, as well as the award of Crown’s attorneys’ fees.
|
|
Copp v. Rayner Ramirez, John Hockenberry, Stone Phillips, NBC-Universal, Inc., Leslie Linthicum, John Grace, and Mike Miller
874 N.Y.S.2d 52 (App. Div., 1st Dep't 2009)
On behalf of documentary filmmaker defendants, the Firm successfully defended appeal of lower court's dismissal of plaintiffs' defamation claims for lack of personal jurisdiction. The appellate court also affirmed lower court's dismissal on merits of plaintiffs' claims against codefendants arising out of allegedly defamatory statements in Dateline NBC telecast entitled “Rescue or Ripoff,” which investigated whether plaintiff Doug Copp was a hero or had sought to capitalize on the 9/11 tragedy by gaining access to Ground Zero under false pretenses and by obtaining $600,000 payment from 9/11 Victim Compensation Fund for illnesses supposedly caused by exposure to toxic chemicals at Ground Zero.
|
|
Kam Hing Enterprises, Inc. v. Wal-Mart Stores, Inc. et al.
Case No. 07 CV 2316 (S.D.N.Y. Feb. 18, 2009)
The Firm prevailed after trial, winning in excess of $2 million dollars for a copyright infringement claim brought on behalf of client Kam Hing Enterprises, Inc. Prior to trial on damages, in what the Court noted was a rare instance of granting summary judgment to a plaintiff on liability in a copyright infringement case, the Court found the copyrighted works at issue (quilts) strikingly similar, and defendants liable for copyright infringement. The Court rejected defendants' motion for summary judgment seeking a finding that Plaintiff's quilt design was not subject to copyright protection. An appeal is currently pending before the U.S. Court of Appeals for the Second Circuit.
|
|
Entrepreneur Media, Inc. v. EYGN Ltd., Ernst & Young LLP and Ernst & Young Advisory, Inc.,
Case No.: Slip. Op., No. SA-CV-08-0608 DOC(MLGx) (C.D. Cal. Dec. 17, 2008)
In trademark case concerning the ENTREPRENEUR OF THE YEAR mark, the Firm won a motion to dismiss declaratory judgment action against one Ernst & Young ("E&Y") party for lack of personal jurisdiction, and won motion to transfer the action against the remaining E&Y parties and consolidate with E&Y's infringement action in New York, ultimately leading to a favorable settlement for our clients.
|
|
Payne v. Anvil Knitwear, Inc.,
No. CV 06-8100 SVW SSX, 2007 WL 1953438 (C.D. Cal. June 27, 2007), aff'd, 293 Fed. Appx. 475 (9th Cir. 2008)
We represented Anvil Knitwear, Inc. in a successful motion for summary judgment dismissing claims for copyright infringement brought by Reva and Lucretia Payne in the U.S. District Court for the Central District of California. The Paynes contended that they owned rights under copyright to certain anvil designs which were infringed by similar designs owned by Anvil. On its motion for summary judgment, Anvil provided the court with incontrovertible evidence that Anvil's designs were created years before the Paynes' designs were created, thus precluding the Paynes from proving a key element of their claim, namely, access by Anvil to the allegedly infringed works. The Court agreed, granting Anvil's motion in its entirety and dismissing the case, as well as awarding a substantial amount of attorneys' fees. The U.S. Court of Appeals for the Ninth Circuit affirmed the decision in its entirety.
|
|
Polar Bear Productions, Inc. v. Timex Corp.,
No. 05-35811, 2007 WL 2193541 (9th Cir. July 31, 2007); 384 F.3d 700 (9th Cir. 2004).
The firm successfully concluded its representation of Timex Corporation in its defense against copyright and trademark infringement claims brought against it by Polar Bear Productions, Inc. In 2002, when our firm first became involved in the case, Polar Bear had been awarded a $2.415 million jury verdict for Timex's copyright infringement of a kayaking video entitled "PaddleQuest." We took over the appeal, and, in 2004, the Ninth Circuit vacated the entire $2.1 million award under Section 504(b) of the Copyright Act of Timex's profits allegedly attributable to the copyright infringement as unduly speculative and cut the damage award from $315,000 to $115,000 on the same grounds. The case was then remanded to the district court on Polar Bear's remaining trademark claims. Upon Timex's motion the court dismissed all of Polar Bear's remaining trademark claims, and Polar Bear appealed the dismissal of its claims to the Ninth Circuit. The Ninth Circuit, in an unpublished opinion dated July 21, 2007, affirmed final dismissal of the case.
|
|
Troll Company A/S v. Uneeda Doll Company, Ltd.,
400 F. Supp. 2d 601 (S.D.N.Y. 2005), aff’d, 483 F.3d 150 (2d Cir. 2007).
In a case of first impression, the U.S. Court of Appeals for the Second Circuit affirmed a preliminary injunction we secured on behalf of Troll Company A/S of Denmark, copyright owner of the famous fuzzy-haired Good Luck Troll doll, preventing distribution of “Wish-nik” dolls by Uneeda Doll Co., Ltd. The U.S. copyright for the Good Luck Troll had been invalidated in 1965, but was resuscitated 30 years later by the Uruguay Round Agreements Act (“URAA”) (codified in Section 104A of the U.S. Copyright Act), which restored copyrights of foreign authors lost for failure to comply with statutory formalities. The Court ruled that Uneeda, which sold Wish-nik dolls when the Good Luck Troll was in the public domain, was not a “reliance party” entitled to notice and a one-year sell-off period under the URAA because there had been “more than trivial interruption” in its sale of the dolls after Troll Co.’s rights were restored.
|
|
Overbeck Corp. v. Overbeck GmbH,
No. 03-CV-0844 (DRH) (ETB), 2007 WL 1029025 (E.D.N.Y. Mar. 30, 2007).
The firm prevailed a motion to strike a jury verdict against its clients, the German grinding machine company Overbeck GmbH, its parent, the Spanish cooperative Danobat S. Coop., and its U.S. affiliate Danobat Machine Tool Co., Inc., in the U.S. District Court for the Eastern District of New York. After a full trial, in which plaintiff was forced to drop most of its nine causes of action, and defendants successfully moved in limine to dismiss all of plaintiff’s claims for monetary damages because of its discovery abuses, the jury nevertheless found for plaintiff, a local company. Prior to the verdict, defendants timely moved to strike plaintiff’s jury demand, and they renewed this motion thereafter. The court granted the motion, deeming the jury decision against defendants merely advisory.
|
|
Milne v. Stephen Slesinger, Inc.,
430 F.3d 1036 (9th Cir. 2005), cert. denied, 126 S. Ct. 2969 (2006).
In the first judicial treatment of the new termination right enacted in the U.S. Copyright Term Extension Act of 1998, the U.S. Court of Appeals for the Ninth Circuit affirmed the District Court’s decision rejecting an attempt by Disney and Clare Milne to cut off our client Stephen Slesinger, Inc.'s right to receive royalties relating to Winnie the Pooh. The firm also represented Slesinger in successfully opposing Milne's Petition for a Writ of Certiorari filed in the U.S. Supreme Court. In February 2007, we successfully obtained a dismissal for Slesinger of a second termination notice served by the granddaughter of an illustrator of the Pooh works.
|
|
Video-Cinema-Films, Inc. v. The Lloyd E. Rigler–Lawrence E. Deutsch Foundation,
No. 04 CV 5332 (S.D.N.Y., Oct. 6, 2006).
We were brought in after the liability phase to represent the defendant in a rare jury trial on statutory damages for copyright infringement. Before we became involved in the case, our client, a nonprofit charitable foundation, was found liable for copyright infringement based on the defendant’s use of a clip from the 1947 movie Carnegie Hall. The plaintiff sought a finding of willful infringement, which would have permitted an award up to $150,000.00. But we persuaded the jury that our client did not act willfully, and the jury awarded only $6,700.00 to the plaintiff. This judgment was cut in half by an award of costs to our client because the judgment did not exceed the Rule 68 Offer of Judgment we made on our client’s behalf immediately upon entering the case.
|
|
Creative Arts by Calloway, LLC v. Brooks,
82 U.S.P.Q.2d 1319 (S.D.N.Y. 2007); No. 01 Civ. 3192 (CLB) (S.D.N.Y. Dec. 11, 2001), aff’d, 2002 WL 31303241 (2d Cir. Oct. 11, 2002).
Our firm successfully defended Cab Calloway’s grandson, Christopher Brooks, against multiple attempts by his step-grandmother, her family, and their company to prevent him from performing his grandfather’s music under the name “The Cab Calloway Orchestra.” Most recently, we obtained a dismissal on res judicata grounds of the plaintiffs’ copyright infringement claims against Mr. Brooks for his use of Cab Calloway’s songs. Judge Richard Owen held the claims should have been brought in an action the plaintiffs filed against Mr. Brooks in 2001 concerning use of the CAB CALLOWAY trademark. In the 2001 action, we obtained summary judgment for Mr. Brooks, which was affirmed by the U.S. Court of Appeals for the Second Circuit.
|
|
Rhino Entertainment Co. v. DomainSource.com, Inc. and Rhino Entertainment Co. v. Suk Min Jun,
Case Nos. D2006-0968 (WIPO Oct. 18, 2006); Case No. D2006-0948 (WIPO Oct. 25, 2006).
On behalf of Rhino Entertainment and members of the BeeGees music group, we recovered the BEEGEE.COM and BEEGEES.COM domain names in Uniform Domain Name Dispute Resolution Policy (“UDRP”) proceedings, from owners that were using the names for websites linking to BeeGees-related sites (and other sites) of third parties to generate advertising or “click through” revenue for the registrants.
|
|
Tea Board of India v. Republic of Tea, Inc.,
Opp. No. 91118587 (T.T.A.B. 2006).
The firm secured a decision in favor of The Tea Board of India, owner of the DARJEELING geographic certification mark for tea, in its opposition against a trademark application for DARJEELING NOUVEAU, covering tea, of Republic of Tea. In a 61-page decision, the Trademark Trial and Appeal Board upheld the opposition and denied Republic of Tea’s counterclaim for cancellation in which it argued that our client’s DARJEELING mark was generic.
|
|
De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc.
440 F. Supp. 2d 249 (S.D.N.Y. 2006)
The firm won a trial before the United States District Court for the Southern District of New York on behalf of plaintiffs De Beers LV Limited and De Beers LV Trademark Limited, owners of rights in the famous DE BEERS mark. Calling the DE BEERS mark "one of the most famous brands in the world," the District Court ruled that the defendants' attempt to use the DE BEERS name to sell diamonds over the Internet was "entirely in bad faith" and accordingly found the defendants liable for trademark infringement, trademark dilution and unfair competition.
|
|
|
