Friday, November 20, 2009

Los Angeles Trademark Lawyers for Sublime File Ex Parte Temporary Restraining Order

Looks like the long-awaited comeback of the remaining Sublime band members isn’t going to go as expected. In a preliminary injunction early this month, on November 3, 2009, Judge A. Howard Matz of the US District Court of the Central District of California granted an injunction against surviving band members, Bud Gaugh and Eric Wilson, to play publically with a new singer under the well-recognized name, “Sublime.” The Plaintiff is the estate of Bradley Nowell, the band’s now deceased lead-singer, objected to the use of “Sublime,” arguing that Wilson and Gaugh aren’t the rightful owners of the name. Judge Matz agreed with Nowell’s lawyers that Gaugh and Wilson didn’t have the right to use the name without permission from Nowell’s estate – at least until the breach-of-contract/trademark infringement civil case between the parties reaches a settlement.

The injunction arose after the surviving band members performed as “Sublime” at the Cypress Hill Smokeout festival. Both parties claim their actions are motivated as part of an effort to preserve Nowell’s legacy. It remains to be seen how the rest of this dispute will unfold.

Monday, October 12, 2009


A complaint and later filed Ex Parte Application for Temporary Restraining Order (TRO) was filed against Chris Rock and HBO to prevent the release of Rock’s film, Good Hair, in the Central District of Los Angeles. Plaintiff Regina Kimbell, has already written and produced a documentary entitled My Nappy Roots, which explores the social and cultural issues surround black hair care.

Kimbell claims that Rock invited her to the Paramount lot and asked her to bring a copy of her film with the intention helping her with it. But rather, Rock was really looking for research and help himself with his own film. Kimbell’s copyright lawyers claim copyright infringement of the work. The TRO describes a side by side analysis of the similarities of the two works, namely, the similarity of the people interviewed, and the places visited in both movies.

On October 8, 2009, the Judge denied the TRO on the basis that Kimbell’s motion was untimely and in any event lacks merit. It seem that the deciding factor was that Rock’s version was comedic and not a serious documentary. The Judge’s order states “My Nappy Roots, in contrast, takes a serious and holistic view of Black hair care throughout its history…This is nothing in the record to suggest the world of academia has accorded Rock similar status.” The Judge did however, allow Kimbell’s request for expedited discovery. So it appears for now, that Kimbell will not get her preliminary injunction, but the case will proceed on, so she is not out of the game yet. Rock’s Good Hair is slated to be released nationwide on October 23, 2009.

Tuesday, September 15, 2009

Annie Leibovitz Is Having Copyright Issues

Celebrity photographer Annie Leibovitz nearly lost the copyrights to her famous photography as a result of her default on a $24 million loan. Art Capital Group (“ACG”), the lender, sued Leibovitz back in July due to breach of contract of their agreement. As collateral, Leibovitz used her real estate assets and the copyright to every photograph she has ever taken.

ACG estimated that the value of her intellectual property is approximately at $40 million in addition to $40 million in her real estate.

Luckily for her, she was granted an extension to repay the $24 million and ACG seems to be in agreement and is cooperating with Ms. Leibovitz.

However, her intellectual property issues don’t stop there, earlier this month she was sued in the US Southern District of New York for copyright infringement. An Italian photographer named Paolo Pizzetti, claims that Leibovitz took the same or similar photographs as he. As the complaint states “…the water falling from the rocks is falling in exactly the same place and in the same manner in both. It is clear that the Leibovitz Defendants copies the Trevi work authored by Pizzetti and edited it by superimposing models in post production, creating an infringing derivative work.”

Hopefully she will get herself out this one so we can see more of her great work.

Thursday, August 27, 2009


We have all heard the power of an Oprah Winfrey product endorsement, or the financial windfall that occurs when Oprah puts you on her booklist. So of course having Ms. Winfrey endorse or even review your product, book, or service is a coveted position by any entrepreneur. Oprah is fully aware of the power of her endorsements, so she is making sure that who she endorses must be accurate, protected, and not diluted by fakes claiming that their products were endorsed by her when they were in fact not.

So Oprah is getting tough and has filed a federal complaint against 50 firms for false association, misrepresentation, trademark infringement, and other claims. After Dr. Memhet Oz touted the benefits of acai berry products, many firms used Oprah and Dr. Oz’s name and image in their advisement creating the impression that Oprah and Dr. Oz endorsed their products when the actually did not.

The lawsuit is Oz. v. FWM Laboratories, Inc. 1:09-cv-07297-DAB; was filed in the Southern District of New York, on August 19, 2009. The complaint states "[t]hese defendants are willfully capitalizing on plaintiffs' valuable reputation and intellectual property rights to lure consumers into ordering their infringing products on the false premise that they have been tested or recommended by Ms. Winfrey and/or Dr. Oz when they have not.”

Oprah is also assisting the Illinois Attorney General in a larger array of investigations which is cracking down on acai berries dietary supplement makers. So far the Attorney General has filed three other lawsuits. Oprah’s lawsuit shows her power of branding and trademark influence.

As a Los Angeles trademark lawyer, I see also several state claims that could be included. As such, Oprah’s New York attorney included claims of trademark infringement, false endorsement, dilution, rights of privacy and publicity under New York and Illinois law, copyright infringement, false advertising under New York and Illinois Uniform Deceptive Trade Practices Act, cybersquatting (to get back various domain names that includes Oprah’s trademarks), unfair competition, and unjust enrichment. So essentially they threw in the kitchen sink of claims, and rightfully so. Oprah is keeping her name and trademarks strong by zealous and diligent enforcement.

Wednesday, August 5, 2009

Pitching Your Invention to Toy Companies

Patenting toys is a hot area for many inventors, and can be very lucrative as well. You should always have a patent issued prior to pitching it to the toy reps otherwise you have no protection. In the very least you should have a pending patent application filed. In some rare cases, a toy company, typically smaller toy companies, will sign your non-disclosure agreement (NDA), but don't count on it.

When it comes to pitching and selling, and who to go to, it just really depends what industry you are in and if you have a winner of a product. I recently counseled one of my clients into a great patent licensing deal with a well established toy company, and she just recently filed her patent.

Here is a great Youtube link by Mike Mozart with advice about who to approach at toy companies when pitching your product:

Sunday, July 19, 2009

Now is the Time to Invent and Patent

Companies have started to change their attitudes about accepting outside idea submissions from lone inventors. In the past, many companies instituted policies rejecting any outside idea submissions and instead relied on their internal R&D departments to come up with new products. Many of these companies did so to avoid potential patent infringement or other IP claims.

However, with the change in the economy, many companies are cutting back in their R&D budgets, so they are realizing that accepting outside ideas to buy or license is more cost effective. A prime example is Procter & Gamble, where Greg Swartz of Arizona, a lone inventor invented a battery-operated odor-eliminating device called the “Hang ‘n’ Fresh” that hooks inside garbage cans. Swartz took the approach of simply emailing P&G and received a response in 24 hours, in which the company took the invention under consideration. If approved, Swartz may have a large royalty license agreement or assignment (total sale of the invention) to P&G. In fact P&G established an external-ideas program in 2001. In 2008 P&G received 3,740 submissions, and has about 1,000 contracts under the program.

Patenting your invention, or in the very least filing the patent application now, and doing the proper homework as to the right contacts at the right companies, can land you a similar royalty or a million dollar assignment of your invention.

Tuesday, June 30, 2009

Michael Jackson the Inventor had a Patent.

Who knew? Michael Jackson held a registered patent for anti-gravity footwear. Do you remember his incredible dance moves from the “Smooth Criminal” video when he would lean forward at extreme angles without falling? Turns out his magic moves were assisted by his anti-gravity shoes as patented in United States Patent Reg. No. 5,255,452 for a “Method and Means for Creating Anti-Gravity Illusion.”

Method and means for creating anti-gravity illusion Michael J. Jackson et al: "United States Patent 19 Jackson et al ii 45 "
In the actual video of Smooth Criminal, his dancers had to be restrained with harnesses in order to achieve the nearly 45-degree angle lean. But for live performances, Michael didn’t want the visibility of harness. So presto, his inventive mind along with co-inventors Michael Bush and Dennis Tompkins came up with the patent which would allow the shoe to lock and release into a hook on the stage to create the great effect.

Tuesday, June 16, 2009

Domain Name Escrow Service

The Law Office of Michael N. Cohen, PC offers domain name escrow services. Most parties prefer the use of an experienced domain name attorney for the transfer of an important domain name to reduce the likelihood of fraud. Please visit our website for more information regarding our domain name escrow service.

Monday, June 8, 2009

Top Trademark Attorneys US 2008

The Law Office of Michael N. Cohen, P.C. is proud to annouce that it was ranked amoung the top trademark firms in the United States in the April 2009 edition of Intellectual Property Today Magazine.

Intellectual Property Today Magazine is a promenient monthly publication focused on legal issues in patent, trademark and copyright law.

Saturday, June 6, 2009 Domain Name Sells for $3,000,000!

Is this about the power of candy or the power of domain name real estate? It was reported that was sold by the Florida based G&J Holdings for $3,000,000 to Melville Candy Company of Massachusetts. This is the same company runned by Rick Schwartz who sold to CNN for $750,000. After the sale of sold earlier this year for $5,100,000, the sale is the second largest domain name purchase for 2009.

Hopefully Schwartz had his domain name attorney draft a solid domain name sale agreement so that there are no disputes regarding the transaction.

Tuesday, June 2, 2009

Supreme Court to Review Patent Case Regarding Business Method and Software Patents

The fate of business method patents may be decided very soon since the US Supreme Court has decided to take on Bilski v. Doll. The case will set a significant precedent that will impact the validity of business method and even software patents. The Supreme Court will review the US Court of Appeals for the Federal Circuit’s decision of Bilski which upheld a rejection of a patent application of a method for managing risk in commodities trading.

As of now, there is much debate as to the patentability of business methods and software, like in the Bilski case. Typically the issue is whether these types of patents are just too broad and/or abstract. The Federal Circuit narrowed the standard by stating patent law only protects inventive processes that involve a “particular machine” or “transform an article from one state to another.” The result of this decision would lead to greater scrutiny of business method and software patents. This is a departure from the prior standard of Section 101 which states “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent…”

So what’s at stake? Typically the software, finance, and pharmaceutical industries want less scrutiny and broader patent eligibility because they rely heavily on these types of patents. Many companies in these industries could lose existing and future patents rights if the stricter machine/transformation test above stands. Will this lead to an increase of Section 101 challenges to a patent’s validity in patent litigation? Probably if the Supreme Court allows Bilski to stand.

Interestingly, remember my prior blog about Sonia Sotomayor and her background in IP law? If the timing is right, she may be involved in reviewing Bilski. Hopefully, the decision will be a thoughtful one given her expertise in IP litigation.

Friday, May 29, 2009

Domain Name Dispute of With Google’s Trademark

Google came out victorious in a cybersquatting case against the owner of Just who owned A 17-year-old boy named Herit Shah from Gujarat, India. Google filed the dispute through the World Intellectual Property Organization (“WIPO”), claiming that is confusingly similar to Google’s trademarks.

Further, Google uses ‘GOOG’ as their NASDAQ financial stock ticker since 2004. Google claims trademark rights to the term ‘Google’ as far back as 1997.

Google’s domain name dispute lawyer got Shah to admit “I was in a bad faith that i can legally keep the domain but when i kept myself in the place of google i understood i really did very unfair to google. since two weeks i have been trying to delete the domain, but i am unable to because godaddy has put my domain on hold, on your consent godaddy may delete the domain or unhold it. I sincerely apologise to Google for infringement, misuse of their intellectual property (GOOGBLOG.COM).”

Pre-litigation negotiations between the Google and Shah failed. Google was only victorious when it was forced to file the Complaint through WIPO. That’s why it’s critical to discuss domain name disputes early with your domain name dispute attorney. See Google Inc. v. Herit Shah
Case No. D2009-0405

Tuesday, May 26, 2009

Sonia Sotomayor an Intellectual Property Attorney?

It turns out President Obama’s nominee to the Supreme Court was a partner at a firm that handled intellectual property litigation. In fact she ruled on an important copyright case, Tasini vs. New York Times, while she served as a federal judge for the U.S. District Court of the Southern District of New York. However, the case was later reversed by the appellate court and was then appealed again by the U.S. Supreme Court, in New York Times Co v. Tasini 533 U.S. 483 (2001). The case involved a claim of copyright infringement brought by freelance journalists against the New York Times and other news organizations (the “publishers”), when the publishers distributed articles written by the journalist to Lexis/Nexis, a legal database, without the permission of the journalist. The publishers claimed a privilege accorded collective work copyright owners by §201(c) of the Copyright Act.

At the District Court level, Sotomayor ruled in favor of the publishers, claiming that they were entitled to reproduce the articles within Lexis/Nexis under the protection of the collective work copyright. (The collective copyright entitles the copyright owner rights to the collection as whole, but not to the individual authored works which are separately copyrighted works). However, both the appellate court and the U.S. Supreme Court reversed Sotomayor’s decision ruling in favor of the freelance journalists.

The Supreme Court reasoned that as the articles appear in Lexis/Nexis, they do not appear as a collective work, rather “[w]hen the user conducts a search, each article appears as a separate item within the search result.” The Court further stated “the Database does not reproduce and distribute the article ‘as part of’ either the original edition or a ‘revision’ of that edition."

Friday, May 22, 2009

Obtaining Your Domain Name Back From Cybersquatters Through UDRP

A common scenario for established or new companies occurs when its primary domain name has been seized by a cybersquattor. For example, imagine your company name and trademark is “Sizaroma.” You were able to register but later,, and were registered by someone else, probably a guy in China who in bad faith, has no intention of ever using domains. Or worse, he later puts up a competing website in bad faith with similar goods and services feeding off the goodwill that you have worked so hard to create. That my friends is a cybersquatter. So what are your options? One of the best is a Uniform Domain Name Resolution Policy proceeding (“UDRP”). A UDRP is like a streamlined litigation done with an arbitration panel, usually with the National Arbitration Forum or WIPO. A complaint is filed, and the cybersquatter is allowed a chance to respond. You do not have to serve the defendant like in a typical lawsuit. Nor is there a trial or any discovery. Further, there is no jurisdictional issues, so if the defendant is in China, a claim can still be made against him.

The net result is a transfer of the domain name. No money damages or injunction from using the trademark can be issued in UDRP, rather it's strictly about getting your domain name back. So the beauty of UDRP is that it is straight to the point, and can be completed within a few months rather than a long dragged out litigation that could last for a year or longer.

There are however other means for domain name disputes, such as filing a federal lawsuit under the Anticybersquatting Consumer Protection Act ("ACPA"), or perhaps a traditional trademark infringement lawsuit. An IP attorney would have to evaluate each scenario to determine the most appropriate method.

Monday, May 18, 2009

No Trademark for Pussy

Certain things can be trademarked while other things cannot. Some of the “not” things are certain words or designs that are deemed to be immoral or scandalous under Section (2) of the Lanham Act. For example, remember when Damon Wayans tried to trademark “Nigga” for clothing? That got shut down by the examiner at the USPTO under Section (2).

In a recent 27-page decision, the Trademark Trial and Appeals Board (“TTAB” or “Board”) refused registration of the mark PUSSY NATURAL ENERGY in connection with energy drinks on the basis of it being scandalous.

Applicant’s attorney of course argued the predictable, that the mark has multiple meanings (meow!), and that nothing in the packaging is inherently or even suggestive of a vulgar connotation. Nonetheless the Board still stated that “the continually evolving meaning of the term ‘pussy’ has come to mean something more, (sic) than merely a cat…[s]pecifically, the term ‘pussy’ refers to the female genitalia…” Further, the Board concluded that based on the evidence the “attention-grabbing meaning is the only reasonable meaning to conclude the relevant public would perceived in this context.” Dare we ask what flavor the drink was?


American Apparel has had its share of lawsuits. More recently with Woody Allen after American Apparel posted billboards of Allen without his permission. Now, American Apparel is on the offense against an opposing attorney in an employment litigation.

Keith Fink has a reputation as an aggressive employment attorney, typically suing celebrities and others in the entertainment industry. One of Fink’s notable cases is against blogger queen Perez Hilton over the PerezRevenge domain name trademark litigation. Fink represents a former employee of America Apparel that is suing the company’s CEO Dov Charney for sexual harassment.

As a preemptive attack, American Apparel has taken out several ads in UCLA’s Daily Bruin newspaper attacking Fink (who is a professor at UCLA) for his allege misconduct. UCLA however, stopped placing the ads, so America Apparel has moved on to the L.A. Business Journal. The May 11th issue of the paper has an America Apparel ad blasting Fink

Thursday, May 14, 2009

Legalzoom Gets Sued

Legalzoom, the legal self-filing service is facing a hefty lawsuit from a Los Angeles attorney Kent Seton, whose speciality is in forming non-profit corporations. Seton sued Legalzoom on February 5, 2009 in Los Angeles Superior Court for breach of contract and misappropriation. The complaint alleges that Seton and Legalzoom entered into a joint venture in which customers of legalzoom would fill out forms on the Legalzoom website, and those forms would be sent to Seton to finalize the formation of a nonprofit entity.

The complaint further alleges that Legalzoom stopped sending Seton the forms and stopped sharing any profits earned, yet Legalzoom retained the proprietary system, that Seton claims he created, on the Legalzoom website.

Legalzoom was paying Seton a fixed fee of $350 per completed application. In total, Seton received $1.6 million from Legalzoom since the venture.

Legalzoom claims there was never a written agreement between them and Seton and that "there is no rational basis for the lawsuit" according to Legalzoom co-founder Brian Liu.

Wednesday, May 13, 2009

More Fake Celebrity Twitter Profiles

Fake celebrity Twitter profiles are getting out of control, see my previous post regarding the topic. Now Kanye West is the latest celebrity to be subject to a fake Twitter profile. Some cases regarding the use of a celebrity's likeness involved the claim of Right of Publicity. California Civil Code Section 3344 prohibits "Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of products, merchandise, goods or services, without such person's prior consent..." Putting the law aside, we can always count on Kanye's supersensitivity for great entertainment value. Here is what he wrote from his blog:

Tuesday, May 12, 2009

Google Faces Class Action Lawsuit for Trademark Infringement Over Adwords

On May 11, 2009, a Texas trademark litigation attorney initiated a class action lawsuit against Google, Youtube, AOL, and Turner Broadcasting System for trademark infringement. The Class Representative is a small software company in Marshall, Texas, called Firepond. The jist of Plaintiff's Complaint alleges that Defendants are infringing Plaintiff's trademarks by selling Plaintiff's trademark words in Adwords. For example, “Firepond” is one of the terms that were bid upon by Plaintiff’s competitors. When an individual searches for the term “Firepond” in a Google search, an Adword advertisement of one of Plaintiff’s competitor’s appears at the top of the search. This is not the first time Google has been sued for trademark infringement because of its Adwords sales. However, this is the first time it’s been in the context of a class action lawsuit.

Thursday, May 7, 2009

How Can I Protect My Idea?

"How can I protect my idea?" This is the most common question I get from new clients. Whether it's a new online software, an interesting baby product, some type of new apparel with unusual patterns, or a new method of business for example, the question is always the same. How do I protect it?

So what is the answer? You can't! Well, maybe you can...It depends...Don't you hate this? The truth is you cannot protect vague, broad, conceptual ideas such as, "I want to protect the concept of having a guitar placed within a piece of furniture." That is an example of a broad concept, not an actual invention.

Patents are for inventions, so if you have a prototype or actually mapped out how your invention works, and you have the ability to explain all the parts of the invention and how the parts interact with each other. And also you can explain why your invention is better or solves problem that the prior inventions or patents failed to solve, then you may have a utility patent.

As for the guy that has a guitar within a piece of furniture, that can be protected too, by "design patent" if he actually developed it or has a picture of the exact look he wants protected.

Each invention is a case by case determination of whether it is patentable. See for more information.

Tuesday, May 5, 2009

Octomom in Trademark Dispute!

"Octomom" Nadya Suleman has filed a trademark application with the USPTO for the term "Octomom" in connection the goods and service of a reality television show and also disposable diapers. (See U.S. Serial Nos 77/711852 and 77/711827). But not everyone is happy about it. It turns out a Texas company not affiliated with Suleman has already filed a federal application for Octomom in connection with an iPhone game. "You press on her belly and she has babies," says CEO Mark Pierce of Super Happy Fun Fun, Inc. SHFF was able to file its "intent to use" trademark application on March 12, 2009, Suleman filed her intent to use application after on April 10, 2009, so Suleman may have been beaten to the punch. However, Suleman's attorney will most likely have to argue that the goods and services are different enough to avoid a rejection. As of today, the USPTO has not issued an office action (rejection) yet of Suleman's trademark application. Stay tuned!

Trademarks and Clothing Lines

Having your attorney file a trademark application with the United States Patent and Trademark Office (“USPTO”), is the way to gain protection of the brand, as it can protect the name, logo, or slogan of the apparel brand. To better understand what is protectable, let’s look at the classic example of Nike. Nike, Inc. has several trademark registrations for the word “Nike” under different classes of goods and services. One registration is filed in connection with their goods of shoes, while a different application is for sporting equipment, and another for backpacks. Further, Nike has several design registrations as well, most notably the swoosh symbol. Additionally, Nike has separate trademark registrations for its slogan “Just do it.” So as you see, one company may have several trademark applications for the same word or logo, but just under different goods and services. The more trademark registrations a company has, the greater the strength of its intellectual property portfolio. To a startup clothingline, having multiple trademark registrations can attract more investors, and create greater confidence and valuation to your company.

Clothing has unique trademark issues compared to other goods and services. Most importantly in regards to the filing process, a proper specimen of use must be submitted that shows the name you have used, on the clothing itself, and must appear in the right location and be used in a trademark manner. Inexperienced attorneys typically receive ornamental rejections based on their specimen of use submitted during the trademark application process. That is why it is critical to have an experience trademark attorney file the application the first time.

Once the application is filed and ultimately approved and registered, the owner of the registration will received nationwide rights to enforce the trademark against other subsequent users. Further, the owner will be able to license, either exclusively or nonexclusively, the right for others to use the trademark name or logo. Licensing can be important to newer clothing companies that have established and created goodwill and a strong following of the brand, but have yet to develop the expertise or resources to manufacturer, distribute, or efficiently sell the clothing. The clothing company can provide a trademark license to a separate company that is more experienced in manufacture, distribution and sales, while the newer company reaps the benefits of the license royalties.

Monday, May 4, 2009

Imposters Posting on Twitter and Other Social Networking Sites

Have you ever wondered if what you are looking at on myspace, facebook and other social networking sites were the actual site of a celebrity? Common sense usually dictates that it's not, especially if it's a big name celebrity. But now with Twitter we may not be so sure. Some of us heard the story about Ashton Kutcher egging on CNN about the number of subscribers. And then the story about Demi Moore communicating via Twitter to an individual that was about to commit suicide.

So are celebrities really hiding behind their online profiles after all? Accordingly comes the celebrity social networking site impersonators. Most recently, Televangelist Robert H. Schuller, whose audience reaches in the millions was vicitm to a bogus Twitter profile. The imposter profile attracted more than 1,000 followers in less than one week. The creator of the fake profile can easily spread rumors about the celebrity, or in the event of a televagelist request money from its follows. Schuller's legal team was quick to get Twitter to respond to remove the imposter profile. The biggest legal claim was probably that of Right of Publicity.

Trademark Attorney Michael N. Cohen's Blog

Law Office of Michael N. Cohen, is proud to announce the first of many intellectual property blogs that will focus on various issues of trademark, patent, copyright and entertainment law. To learn more about Mr. Cohen, please view his website at