Copyright Litigation May Commence Without First Obtaining Registration

In order to commence a copyright infringement action in federal court, under 17 U.S.C. § 411(a), makes registration of a copyright a prerequisite prior to bringing an infringement suit. But in a May 2010, Court of Appeals for the Ninth Circuit case, Cosmetic Ideas, Inc. v. IAC/Interactive Corp., has held otherwise. The case was an appeal from a U.S. District Court, California Central District case in which Cosmetic Ideas, Inc. sued the Home Shopping Network for copyright infringement involving a necklace. Cosmetic Ideas submitted a copyright application for a necklace, and then sued HSN before getting an official registration from the U.S. Copyright Office.

Initially the case was dismissed for lack of subject matter jurisdiction because of the lack of a registered copyright. The Ninth Circuit court then later overturned that decision. The 9th Circuit court found that a copyright is actually considered registered once the application has been submitted and stated "that receipt by the Copyright Office of a complete application satisfies the registration requirement of § 411(a)."

Their reasoning was that Congress’s purpose for copyrights was to protect intellectual property in exactly this scenario. Cosmetic Ideas may have had to wait several months before their copyright was officially registered. And theoretically, during that time, nothing could be done to stop copyright infringers. The issue of speed of information in the post-internet world is likely to affect similar statutes. And this is probably not the last time we’ll hear about this specific case.

Dr. Dre's Trademark Cause of Action Gets Dismissed

When hip-hop label Death Row was acquired by WIDEawake in 2009, they promptly decided to re-issue some Death Row greats, most notably Dr. Dre’s 1992 album ‘The Chronic’ in the 'Re-Lit' album/DVD set. Dr. Dre was not part of the re-issue process, and quickly sued WIDEawake Entertainment Group, Inc.

In the United States District Court for the Central District of California (case no. 10cv01019), Dr. Dre sued for royalties owed, but also for trademark infringement, trademark dilution and false advertising, citing the Lanham Act, among other statutes.

But a federal judge threw out the trademark-related portions of the claim last week (with leave to amend). Judge Christina A. Snyder decided that since the original picture of Dr. Dre from the 1992 album was also used on the re-issue, no affiliation was implied. More specifically, the Order states the following:

"As to plaintiff’s allegation that defendants have used his name and likeness, including the original photograph from the jacket cover of “The Chronic,” the Court finds that these allegations fail to state a claim that defendants have over-represented plaintiff’s contribution to “Re-Lit,” given that defendants accurately identify plaintiff as the author of the original masters and that defendant used a substantially same photograph from the original album jacket cover, and did not use a current picture so to imply that plaintiff recently contributed to the re-issued album."

Dr. Dre will continue pursuing the claim for royalties owed.

Top Trademark Attorney 2010: Cohen IP Law Group, PC

Once again, the Cohen IP Law Group, PC has ranked among the top trademark firms in the nation in the recent May 2010 issue of IP Today Magazine.

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

Tommy Burger Trademark Infringement Family Affair

Trademarks are valuable property. Business partners, friends, and even family members can be split over trademark rights. Take the case of Original Tommy’s World Famous Hamburgers here in L.A. When the original Tommy Koulax died in 1992, he left the franchise in the hands of some of his children and relatives. According to an article in today’s Los Angeles Business Journal, one of his children is trying to start up a Tommy’s-inspired company, and apparently breaking some family ties doing it.

What made Tommy’s world famous was arguably its chili, not hamburgers. In fact, Tommy’s chili recipe is protected by a trade secret. In 2008, Tommy’s son, Tommy Koulax Jr., started an online business selling chili. “Tommy’s Original Chili Factory” received a cease and desist letter from Original Tommy’s (jointly owned by other siblings and relatives). Since then, the name has been changed to “Tommy Jr’s Chili Factory,” but the Tommy Jr. crew is still under attack. They have been sued in California Central District Court for trademark infringement and unfair competition, Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).


It may be a tough case for Tommy Jr. to win. His logo is very similar in style and color to the Original Tommy’s logo, and on his products he claims to be the “son of the originator and founder of Tommy’s World Famous Hamburgers.”

Jessica Seinfeld Copyright Infringement Battle Over Cookbook

Last week, a federal appeals court upheld the previous decision of a lower court in the Jessica Seinfeld cookbook case. Jessica (Jerry Seinfeld’s wife) was sued for both trademark and copyright infringement by Missy Chase Lapine, author of “The Sneaky Chef: Simple Strategies for Hiding Healthy Foods in Kids’ Favorite Meals.” Jessica’s book is titled “Deceptively Delicious: Simple Secrets to Get Your Kids Eating Good Food.” See the original lower district's complaint here. It does seem a bit close for comfort, but two judges have now ruled that Jessica’s book is not a copycat.

According to Judges Reena Raggi and Peter W. Hall of the Second U.S. Circuit Court of Appeals in Manhattan, “stockpiling vegetable purees for covert use in children’s food is an idea that cannot be copyrighted.” Conceptual ideas like that cannot be protected by copyright law. Seinfeld's intellectual property attorney's stated "countless prior works utilized this very same unprotectable idea," including a 1971 book."

Lapine’s book was published four months previous to Seinfeld’s, and apparently, some publishers were looking at the books around the same time. It seems pretty unlikely that Jessica Seinfeld would have had enough time to plagiarize, since both books were published around the same time.

On a side note – a slander case is still pending for Jerry Seinfeld’s jokes (when he said his wife is accused of "vegetable plagiarism") about the suit and Missy Lapine on The Tonight Show.

Patent Application Video by Michael Cohen

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Craigslist awarded $1.3 million judgment in copyright infringement case

Last week, Craigslist sent a clear message to sites offering third-party posting software. Powerpostings.com, owned by one Igor Gasov, had been offering customers the ability to post (including multiple postings) and manage ads on Craigslist. Craigslist sued them for copyright infringement, referencing the Digital Millennium Copyright Act, the Computer Fraud and Abuse Act, and trademark law. The defendants didn’t contest, and Craigslist was awarded a $1.3 million judgment.

In the past, other companies have offered Craigslist posting software, but Powerpostings took it too far. They also offered listing agents, who would post ads for customers, and they used false email addresses on Craigslist. No doubt there were several violations of Craigslist’s terms of use, in addition to the alleged trademark and copyright violations. Because Powerpostings didn’t appear in court, Craigslist didn’t have to prove anything. Craislist would have had to prove they registered parts of their Web site, and that Powerpostings copied those parts, for copyright infringement to have taken place. But considering all the allegations against them, it was probably a smart move for Powerpostings to accept a lesson learned the hard way.