The first nine months of 2005 have yielded an eclectic assortment of trademark and copyright cases in the U.S. District Court for the Eastern District of California, which is based in Sacramento. Meanwhile, the Ninth Circuit Court of Appeals addressed the question of whether the term “yellow cab,” as used by a Sacramento cab company, can receive trademark protection. A summary of selected cases follows, starting with the trademark cases. Please contact us for additional information.

Ben & Jerry's Homemade Hldgs., Inc. v. Ray Cammack Shows, Inc., Case No. 05-01760 (filed Sept. 1, 2005)

Ben & Jerry's sued the carnival operator at the 2005 California State Fair over the use of a vehicle to sell ice cream products not made by Ben & Jerry's. The vehicle allegedly displayed signage advertising “Ben & Joy's Ice Cream” in a font, type style and color scheme confusingly similar to the “Ben & Jerry's” trademark. The photograph below, attached to the Ben & Jerry's complaint,

Cozad Trailer Sales LLC v. Rackley Bilt Trailer Sales, Inc., Case No. 05-01181 (filed June 14, 2005)

Cozad contends that Rackley manufactured and sold low-bed, heavy haul trailers designed to mimic Cozad's products. Rackley allegedly has “palmed off” its lower quality products as those of Cozad. The suit is pending, but Rackley has moved for summary judgment on the ground that the trade dress aspects for which Cozad is seeking protection are not protectable because they are merely functional, the overall impression created by those elements is generic, and trade dress protection would violate public policy.

CytoSport, Inc. v. Dymatize Enterprises, Inc., Case No. 05-01004 (filed May 20, 2005)

CytoSport, the Benecia-based maker of nutritional and dietary supplement products, filed a complaint against Dymatize Enterprises. CytoSport holds a federally-registered trademark for MUSCLE MILK, a protein powder. CytoSport alleges that Dymatize marketed and promoted a similar product under the name MEGA MILK, creating a likelihood of confusion. Dymatize has denied the alleged infringement and countersued for a declaration of non-infringement on the theory that MUSCLE MILK is a generic or merely descriptive mark.

CytoSport, Inc. v. Workoutsupplies.com, Inc., Case No. 05-01496 (filed July 26, 2005)

CytoSport filed a complaint against Workoutsupplies.com for trademark infringement and cyberpiracy. CytoSport complains that Workoutsupplies.com markets and promotes CytoSport's products through the use of CytoSport's trademarks, without permission. CytoSport also contends that Workoutsupplies.com has registered and used the domain names www.cytosport.net and www.cytogainer.net with the intent to profit on the similarity of the names to CytoSport and to ransom the domain names for money.

Mobile Hi-Tech Wheels v. U.S.A. Tire & Wheel Outlet, Inc., Case No. 05-00906 (filed May 5, 2005)

Mobile Hi-Tech Wheels designs and distributes custom wheels for automobiles and is the licensee of the trademarks DUB and DUBS for vehicle wheels. It alleged that USA Tire & Wheel infringed upon these marks by using the mark DUB WHEELS without permission. On June 28, 2005, the parties stipulated to a judgment. USA Tire & Wheel acknowledged that its actions were infringing and agreed not to use the word “DUB” as a trademark or for any other purpose without Mobile Hi-Tech Wheels' permission.

Nike, Inc. v. Nikepal International, Inc., Case No. 05-01468 (filed July 21, 2005)

Nike, the athletic apparel company, sued Nikepal International (based in Sacramento ) for trademark infringement. Nike has numerous trademark registrations for the NIKE mark and variations thereof. Nikepal International applied for a NIKEPAL trademark to be used in connection with its import and export of scientific testing instruments and other products. Nike opposed the application on the grounds that the NIKEPAL mark would cause a likelihood of confusion with and dilute the NIKE mark. The U.S. Trademark Trial and Appeal Board denied Nike's opposition. Nike then filed this lawsuit to challenge the Board's decision and to stop Nikepal from using the NIKEPAL mark.

Nvision, Inc. v. Utstarcom, Inc., Case No. 05-00520 (filed March 16, 2005)

NVision, a Grass Valley developer of routing and distribution systems for the production and delivery of high quality digital video and audio, filed a complaint against UTStarcom. NVision holds a federally-registered trademark for the mark NVISION which it uses in connection with audio, video, and data transmission, distribution and processing equipment. NVision alleged that UTStarcom infringed upon the NVISION mark by utilizing its own mVision mark in connection with UTStarcom's equipment.

NVision claimed that the mVision mark is likely to cause confusion, mistake, or deception among consumers. NVision dismissed its lawsuit in July.

Red Bull GmbH v. Red Rave, Inc., Case No. 05-00900 (filed May 6, 2005)

Austria-based Red Bull, an energy drink supplier, filed a complaint against Red Rave for copyright and trademark infringement. Red Rave allegedly has copied Red Bull's copyrighted product statement for use in promoting the Red Rave Energy Drink. Also according to Red Bull, Red Rave has infringed upon its RED BULL mark, its RED BULL ENERGY DRINK mark and its VITALIZES BODY AND MIND mark. Red Rave has denied Red Bull's allegations.

Union of Orthodox Jewish Congregations of Am. v. Sun Flour Baking Co., Case No. 05-00377 (filed Feb. 25, 2005)

The Union of Orthodox Jewish Congregations of America, owner of the federally-registered kosher certification mark (a letter “ U” inside a circle), filed a complaint against Sacramento-based Sun Flour Baking Company. Sun Flour allegedly infringed on the Orthodox Union's kosher certification mark by using a confusingly similar mark (a letter “V” inside a circle) on the packaging of cookie products. The parties agreed to a consent order, under which Sun Flour agreed to refrain from using the Orthodox Union's mark or any confusingly mark and to use best efforts to recall all products containing the offending labeling. The parties stipulated to a voluntary dismissal of claims.

William L. Lyon & Associates dba Lyon Real Estate v. Frack, Case No. 05-01811 (filed Sept. 8, 2005)

Lyon Real Estate owns the federally-registered LYON trademark. It complains that defendants are offering real estate related services under the trade name “Lyon Share Investment Clubs.” In particular, Lyon Real Estate complains of an article in Gold Country Homes, an insert of The Press Tribune, that invited the public to attend the first meeting of the Lyon Share Investment Club and appeared immediately above an ad for two homes offered by Lyon Real Estate. This juxtaposition allegedly created a likelihood of confusion. According to the complaint, defendants did not agree to cease using the “Lyon” name after Lyon Real Estate made such a demand. Lyon seeks an injunction that would prohibit defendants from using the LYON mark for real estate related services, as well as damages and attorneys' fees.

Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (9th Cir. 2005)

The U.S. Court of Appeals ruled that a Sacramento business might have trademark protection for the phrase “yellow cab” in its name. The various owners of Yellow Cab Company of Sacramento owned and operated the company in the region since 1922. At the time of the suit, the company had approximately 90 taxi cabs. The name of the company was not a registered trademark. In September 2001, the owner of Yellow Cab of Elk Grove began providing competing service in the Elk Grove and Sacramento areas, using a single taxi cab. Yellow Cab Company of Sacramento claimed infringement of its unregistered trademark. The federal district court in Sacramento held that “yellow cab” was a generic mark, or at most a descriptive mark with no secondary meaning, and thus not entitled to trademark protection. The Court of Appeals reversed the decision, finding triable issues of fact as to whether “yellow cab” is generic and has acquired secondary meaning. The case now returns to the district court for trial.

Copyright Cases

Broadcast Music, Inc. v. Triple H, LLC, Case No. 05-01911 (filed Sept. 20, 2005)

Broadcast Music and others sue the operators of Mr. Lucky, a club in Chico, for allegedly allowing the performance of various copyrighted musical works without authorization.

Garden City Boxing Club, Inc. v. Arias, Case No. 05-01819 (filed Sept. 9, 2005)

Plaintiff contends that defendants, who operate a business in Fairfield, exhibited a copyrighted broadcast (a boxing match) without permission.

Microsoft Corporation v. Data Day USA, Inc., Case No. 05-01859 (filed Sept. 15, 2005)

Microsoft contends that defendants installed unauthorized copies of its software programs on computer systems.

Odnil Music Ltd v. Scheck, Case No. 05-00545 (filed March 17, 2005)

Odnil Music Limited and Fifty-Six Hope Road Music Limited, owners of copyrights to four songs written by reggae legend Bob Marley, filed a complaint against William and Nathaniel Scheck, owners of Katharsis LLC. The complaint alleges that Katharsis and the Schecks, without a license from the American Society of Composers, Authors, and Publishers, caused the four songs to be publicly performed at the Owl Club Ale House, a Roseville venue owned by Katharsis. The plaintiffs sought an injunction to preclude further infringing performances.

Peck v. Cedar Hill Books, Case No. 05-01886 (filed Sept. 19, 2005)

Cedar Hill Books allegedly included Barbara Peck's copyrighted short story in a book without her permission.

Synergy Computing Business Group, Inc. v. Joshua Grecian dba Andi's Kitchen, Case No. 05-01204 (filed June 16, 2005)

Synergy Computing Business Group, doing business as Chef's Resource, filed a complaint against Andi's kitchen for copyright infringement and unfair competition. Chef's Resource operates a website through which it markets products. Visitors obtain information by clicking on thumbnail photographs that link to detailed product information. Chef's Resource displays copyright notices on its website. Chef's Resource claims that Andi's Kitchen improperly copied at least 10 photographs onto the Andi's Kitchen site and then failed to remove the photographs upon request.

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Please contact us if you have questions or want more information. Please note that the information contained in this newsletter is not intended to provide legal advice. You should consult with an attorney and not rely on any information contained herein regarding your specific situation.