IP Litigation

Representative Litigation Matters

UNITED STATES FEDERAL DISTRICT COURTS

George Gutenberg v. Bonni Ison, et.al.
USDC Central District of California  No. 5:21-cv-02134-PA-SHK
Alleged claims of Copyright Infringement of photographs brought by "Copyright Troll" - law firm Higbee & Associates. 
(case settled)

The Upper Deck Company v. Miguel Flores, et.al.
USDC Southern Dist. of California - San Diego, No. 3:21-cv-01182-GPC-KSC
Claims brought by manufacturer of trading cards against Ebay seller of a single Michael Jordan trading card.  Claims include False advertising, right of publicity, celebrity endorsement, trademark infringement, counterfeiting, unfair competition; Third-Party claims brought against grading card/authenticator for inducement of infringement, breach of contract, breach of warranty and contributory liability. (case pending)

Talavera et al v. Global Payments, Inc., Active Network, LLC et.al. 
USDC Southern Dist. of California - San Diego, No. 3:21-cv-01585-TWR-AGS
Motion for T.R.O. and Preliminary Injunction involving copyright infringement, DMCA Violations of Sections 1201 and 1202 of the Copyright Act, False Designation of Origin and unfair competition. (case pending)

Simple Design Ltd. v. Candymobi Information Technology Co. et al
USDC for the Northern District of California, San Francisco, No. 3:19-cv-05501-VC
Successfully obtained default judgment including DMCA take downs, and permanent injunction prohibiting Defendants and others from continuing to use two infringing trademarks; nearly $30,000 in attorney’s fees and $1,825.55 in costs against two foreign Defendants distributing an infringing software app via the GooglePlay store and elsewhere online. This comes only after Plaintiff obtains extensive early third-party discovery from Facebook, Inc., Apple, Inc. iTunes, Google, Inc. and the GooglePlay Store, and a Court Order for Alternative Service of Process under FRCP Rule 4, allowing for special ( outside Hague Convention) e-mail service on elusive defendants advertising and selling infringing software bearing client's new trademark designs and logos.

Prolacto Mich Florida, LLC v. La Mejor Michoacana Ice Cream, Inc. et al 
USDC Middle District of Florida No. 2:17-cv-00658-JES-CM 
In a case alleging Trademark Infringement and passing off brought by the US licensee of a Mexican ice cream company, successfully obtained a Permanent Injunction and a favorable settlement for Plaintiff before the Hon. John E. Steele, (before the ice cream could melt). 

Gary G. Young v. 3.1 Phillip Lim LLC, Nordstrom, et al 
USDC Central District of California, Santa Ana, No. 8:16-cv-01556-DOC-KES  
Obtained favorable settlement(s) for Plaintiff, a fashion designer known for luxury sunglasses, watches and clothing, against a well-known International fashion icon and America's top luxury department stores and retailers, after hearing on Motion for Preliminary Injunction against infringing high-end designer women’s shoe designs and trademarks before the Hon. David O. Carter. 

PowerTV Media, LLC v. Street Racing Dignight, Pilgrim Studios and Discovery Network, et al 
USDC Central Dist. of California, Riverside No. 5:16-cv-02341-JGB-DTB
Obtained a default Judgment against one defendant and settled favorably with other defendants in an action alleging claims including Sherman Act Antitrust violations, unfair competition and contract interference involving television production. Successfully persuaded Hon. Jesus G. Bernal to deny a barrage of television producers’ and network defendants’ 12(b)(6) Motions to Dismiss as well as separate Motions to Strike Plaintiff’s claims under California’s Anti-SLAPP Act. 

Nixus International Corp. v. INTEG Tiffany Hansen et al  
USDC Middle District of Texas No. 4:15-cv-000735
Obtained a favorable injunction and settlement against the Defendants. 
Also obtained TM registrations for "STRONGBACK" in the EU as well as Malaysia and Brunei in Opposition proceedings. 

ESIP Series 1 v Floracopeia, Inc. 
USDC District of Utah No. 2:15-cv-0857BCW 
Alleged patent infringement claims were promptly and favorably settled after investigation. 

Joe Hand Promotions Inc v. Luis Fernando Baez et al 
USDC Central Dist. of California – Riverside, No. 5:13-cv-01101-WDK 
Case Settled favorably for Defendants after discovery. 

Lanceco Industries, Inc. v. Pugster, Inc 
USDC Southern District of New York, No. 7:12-cv-02519-ER 
Several Federal Multi District Cases alleging copyright and trademark infringement and Trade and Tariff Act violations were settled favorably for Defendant after discovery and motions practice. 

GP International LLC v. RoidStudio et al 
USDC Northern District of California – San Jose, No. 4:11-cv-04690-DMR 
Case Settled favorably for Plaintiff with significant award for Plaintiff, a California-based software developer against a Chinese competitor, after Plaintiff obtains third-party discovery from Facebook, Inc., Apple, Inc. iTunes, Google, Inc. and the GooglePlay Store.

Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. De C.V. 
USDC District of Columbia No. 1:11-cv-01623-RC, 188 F. Supp. 3d 22 (D.D.C. 2016) aff’d, 743 F. Appx 457 (D.C. Cir 2018)
In an epic battle between two ICE CREAM manufacturers, involving COPYRIGHTS, TRADEMARKS, REPUTATION, FALSE STATEMENT OF ORIGIN, GEOGRAPHIC ID, SECONDARY MEANING, CROSS-BORDER FAME, FRAUD, BAD FAITH, WILFULNESS, INDIGENOUS RIGHTS, PASSING OFF, and replete with a twisted and checkered family and company history spanning more than 150 YEARS, on behalf of Mexico's oldest and largest chain of ice cream stores, conducted 14 day bench trial before Judge R. Contreras re: Registrant’s unsuccessful appeal of the TTAB’s decision in favor of Petitioner after eleven years of litigation including more than 24 depositions as well as nearly every type of FRCP civil motion conceivable. 

During the litigation, handled as many as nine distinct discovery disputes and local District Court subpoena duces tecum objections before Federal Judges in Washington D.C., Florida, Texas (Houston and Dallas), California (San Francisco and Los Angeles) Arizona and elsewhere, including the Federal District of MEXICO CITY, MEXICO (DMX). 

Talavera et al v. E-Harbor Inc. 
USDC Southern Dist. of California - San Diego, No. 2:11-cv-01266-GHK
Plaintiff’s massive copyright infringement and unfair competition claims alleging copyright infringement, software piracy and breach of license, fraud and for injunctive relief were resolved very favorably with a long-term, mutually advantageous, serendipitous and synergistic business result. 

Brorsen et al v. American Association of Critical Care Nurses et al 
USDC Southern District of California San Diego, No. 3:11-cv-00280-AJB
Plaintiffs’ copyright and unfair competition claims favorably resolved.

Talavera et al v. Lanset America Corporation et al 
USDC Central District of California – Los Angeles, No. 2:09-cv-04141-SVW-PJW 
Plaintiff’s software copyright and unfair competition claims were favorably resolved including Permanent Injunction, monetary damages and subsequent licenses. 

Land of Myth and Not Inc v. Amy Brown et al 
USDC Central Dist. of California – Los Angeles, No. 2:06-cv-03606-PSG-PJW 
Represented famous artist in complex and lengthy litigation involving a number of third party licenses, contract and copyright counterclaims. Successfully obtained Permanent Injunctions against nearly a dozen parties and a favorable settlement result. Later pursued contempt proceedings against a wayward Counter-Defendant. 

Thereafter created and managed a custom-built licensing and distribution model for client (and related fantasy artists) of inestimable value, expanding her goods and services classifications, into and including ornaments, statuary, nightlights, housewares, clothing goods, tattoos, IP licensing programs, digital expansion of copyrights, websites, blogs and intangible assets. 

Center for Computer Technology, Inc. v. Domains by Proxy, Inc. et. al. 
USDC District of Arizona -Phoenix No.: 2:05-cv-03921-EHC – (and parallel proceedings in USDC San Diego) 
Obtained immediate ex parte injunction locking and prohibiting Domain name Transfer in San Diego Federal Court, simultaneous ex parte order for discovery on Go Daddy, Inc. ("GoDaddy") re identity of anonymous Domain Name Registrant.  Recovered Plaintiff’s hijacked domain name at ex parte hearing on Motion, and obtained Order on judgment on the merits and significant damage award and attorneys' fee award against Defendants, within 30 days of being initially retained by the Brooklyn, New York based client.

Biotechne Complex v. Joseph Barra dba Thysmusking, et al
USDC, Northern District of Georgia - Atlanta 
Case No. 1:03-cv-00960-JTC 
Successfully defended claims of Section 526 of the Tariff Act and trademark infringement through extensive motions practice. 
Later obtained a UDRP ruling of reverse-domain name hijacking. 

Checkers Alive Games v. Pressman Toy Corporation, et. al. 
USDC District of New Jersey No. 2:03-cv-01003-WHW-SDW – Plaintiff, a small, independent Canadian game inventor and manufacturer's complex copyright claims in a simple board game brought against a litany of the world's largest toy companies, were aggressively litigated through Summary Judgment hearings like "child's play'.. 

Directv Inc v. Harold Christian, et al - 
USDC Central Dist. of California – Los Angeles, No. 2:03-cv 
06573-DT-SS – Defended more than 60 separate parties (in this and more than 140 additional cases filed in each of California’s US District Courts) against allegations including violations of the Telecommunications Act, Patent claims and Copyright Infringement. 

Lumiere (Rights) Limited v. VSV Merger Subsidiary a.k.a. Blockbuster Entertainment Corporation, et. al. 
USDC Central Dist. of California – Los Angeles, No. 93-7028-RAP
In action for copyright infringement of various episodes of “the Avengers” BBC television series on behalf of a reknown French client, International Film company against a number of video store retailers including the world’s largest, handled all discovery, motions, injunctive relief,  judgments and obtained favorable resolutions of Plaintiffs’ claims after Final Pretrial Conference and on courthouse steps on first day of trial. 

Hard Rock Cafe Licensing Corporation v. Ross West, et.al. 
USDC Central Dist. of California – Los Angeles, No. CV-93 4275-RMT – Obtained immediate pre-trial orders for seizure and impound of infringing materials, preliminary and permanent injunctions against unauthorized vendors of HARD ROCK CAFE T-shirts. 

United States Federal Trade Commission  v. C.H.I. and S.K. et.al.  
USDC Central Dist. of California – Los Angeles - Quickly worked with the client to address some glaring DIGITAL PRIVACY issues involving collection of DATA of UNDER AGE MINORS brought under Federal Laws including COPPA (Children's Online Privacy Protection Act). Worked with FTC investigators and United States Attorneys to bring client in immediate compliance, resulting in avoidance of liability and dismissal of claims. 

United States Postal Service v. OV - Worked with Postal Investigators to avoid and dispel claims brought re: STAMPS.COM by USPS for breach of contract and digital piracy in excess of $300,000.

State of California EPA - Pesticide unit v.  TDI  - Successfully defended and ultimately resolved series of claims brought for millions in penalties and damages against California based retailers accused of illegal parallel grey market importation of pet flea and tick solutions made by Bayer, and Frontline. 

 *These are only a few- see note at bottom of page.) 

                                                            Reported Superior Court of California Cases include: 
Pacific Rim Assurance Company v. Bottomline Industries, Inc.  
Los Angeles Superior Court Northwest No. LC039124 
Successfully defended corporate defendant against claim by Insurance Carrier for breach of contract and reclassification of more than one hundred and thirty thousand dollars in benefits. 

Roxanna Belia v. Fireman’s Fund Ins. Co. (Cal. State Worker’s Compensation Bureau) 
Represented fraud and forgery unit of a National Insurer as sole trial counsel. During examination of Plaintiff's first day's witness, successfully obtained an unappealable directed defense verdict, defending claims (based on stipulated facts of prior in-house counsel - conceding facts that amounted to actual liability and insurer-duty, and in fewer than five (5) minutes of Mr. Anderson's cross-examination of only one witness, saved insurer and insured more than FIFTY MILLION dollars, $50,000,000.00 (adjusted for inflation).
U.S. TRADEMARK TRIAL & APPEAL BOARD 
Opposition and Cancellation Actions
Michael N. Klepner v. Popstar Beverages - Cancellation No. 92070989
Petition to Cancel the wordmark VAMPIRE REPELLENT for "lip balm" was sustained under Trademark Act Section 14(3) on grounds of Abandonment, False suggestion,  misrepresentation and Fraud on the USPTO. 

Epitasio Serbantes v Importaciones Los Tres Potrillos, S.A. de C.V. - Cancellation No. 92070004 
After Motion for Summary Judgment seeking to cancel the mark LOS TRES POTRILLOS (and design) based on non-use, abandonment, fraud on the USPTO and other grounds (Trademark Act Sections 14(1) and 1(a), (c), and (d), Section 14(3)) Registrant filed a voluntary surrender of the mark. The Petition was sustained and registration was cancelled. 

Lay Peng, Priscila Teo v. The Michael Shane Group, Inc. DBA Academy of Rock - Cancellation No. 92070579 
Petition to cancel the word mark ACADEMY OF ROCK based on abandonment, deceptiveness, and trademark misuse (Trademark Act Sections 14(3) and 2(a)) was sustained and registration was cancelled by the T.T.A.B. under Section 18.
 
Premier Car Club Los Angeles v. Chris Fields - Cancellation No. 92070761
Petition to cancel the registration for the identical mark PREMIERE LOS ANGELES (improperly registered by a former disgruntled club member) of the mark used widely by a vintage hot-rod car club since 2001 was sustained by the Trademark Board on several grounds including: 
  -  Priority and likelihood of confusion                                                                  Trademark Act Sections 14(1) and 2(d)
  -  Nonuse of the mark in commerce                                                                    Trademark Act Sections 14(1) and 1(a), (c), and (d)
  -  Registrant not rightful owner of mark for identified goods or services      Trademark Act Sections 14(1) and 1) 
  -  Misrepresentation of source of the goods or services; and                         Trademark Act Section 14(3)
  -  Fraud on the USPTO.                                                                                           Trademark Act Section 14(3); In re Bose Corp.,
G. Pozos v. OMZE Authentic Tequila, Mezcal & Spirits, Inc. - Opposition No. 91246716 
Opposition was sustained and the improper attempt to register the mark EVAGA  (for distilled blue agave spirits) by the Jalisco, Mexico-based distillery's non-exclusive U.S. distributor of Tequila and Mezcal was refused by the Board. 
Productos Lacteos Tocumbo S.A. De C.V v. Moises Mota et al - Cancellation No. 92067975 
Petition for cancellation was granted against Registration No. 5141009 for the mark LA SUPER MICHOACANA 
due to a Petitioner's prior use of a confusingly similar trademark in connection with ice cream and restaurant services. 

Nutraceutical Science Research LLC v. Longlong Jin - Cancellation No. 92064095
Registration No. 4656083 for the mark GIFTED LIFE for vitamin, mineral and dietary and nutritional supplements was cancelled 
by the Board in view of Petitioner's claims of non-use, fraud, abandonment as well as rights in the mark GIFT of LIFE for similar goods. 

UnitedHealth Group Incorporated v. Pierre Cobbaert - Opposition No.  91215852
Application for the mark UNITED WEED was abandoned after the Applicant received a hefty and confidential settlement. 

Lance Armstrong Foundation v. Anthony Petrone et al  - Opposition No. 91202403 
Settlement agreement reached after application for the mark LEAF STRONG was amended to address Opposer's concerns 
regarding potential confusion with the mark LIVESTRONG.
 
Jiangxi Huangshanghuang Group Food Co., Ltd. v. Junxian Xiao - Opposition No. 91194786 
Opposed a mark featuring crown device (with Chinese characters inside the crown that transliterate to HUANG QIN, atop a rectangular shape with tapered ends containing Chinese characters that transliterate to HUANG SHANG HUANG), remarkably similar to the mark used by Opposer for "sauced duck and poultry" since the 1940's, named an "International Famous Brand Food," and sold by one of China's top 500 enterprises: Opposer's HUANGSHANGHUANG mark was designated the "Most Influential Brand in the Meat Industry of China, by the China Meat Association and thus, the the opposition was sustained and registration was refused.
Tiffany L Hansen et.al. v. Nixus International Corporation - Cancellation No. 92061269 
Registrant's Registration No. 3602020 for the mark STRONGBACK was successfully defended against allegations of priority and likelihood of confusion under Section 2(d); Section 2(a) and fraud. Successfully handled related litigation including a trademark infringement action in the Federal District Court for the Middle District of Texas, and Cross-Opposition and Cancellation proceedings before the IP Offices in Malaysia and Brunei Darussalam. 

Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana, Inc. - Cancellation No. 92047438
98 USPQ2d 1921, (TTAB May 20, 2011) [precedential] [Recon. Denied] (TTAB July 13, 2011) 
aff’d, 188 F. Supp. 3d 22 (D.D.C. 2016) aff’d, 743 F. Appx 457 (D.C. Cir. 2018)
On behalf of one of the world's largest ice cream companies, whose family owns the original Paleteria La Michoacana ice cream shop in Tocumbo, Michoacán, Mexico, and whom have used the famous mark LA MICHOACANA for ice cream, in Mexico since the 1940's and an Indian girl doll design in the USA since at least 2001, successfully Petitioned the Board to cancel conflicting Reg. No. 3210304 for the mark LA INDITA MICHOACANA (and Indian girl design) under Section 2(d) in a highly complex, contentious and fully briefed proceeding filed in April 2007, involving a literal "who's-who" of IP counsel. Cancellation affirmed after a 13+day bench trial before the D.C. District Court. 

Electrend, Inc. v. Blaze Pizza, LLC - Cancellation No. 92058341
Parties confidential settlement with consent and coexistence agreement.

MAQT, LLC v. Master Mao Confectioner & Pastry Workshop Limited- Cancellation No. 92061176 
Successfully defended Reg. No. 3910864 against claims brought under Section 14 (abandonment). 

Survivor Productions, LLC v. Active Life Events, Inc.- Cancellation No. 92057221 
Successfully defended Reg. No. 3482413 for the mark SURVIVOR MUD RUN in a proceeding brought under Section 2(d).

Richard Drengberg and Smart Fitness, LLC v. Othili Park - Opposition No. 91189026 
Board Sustained Opposition against Application No. 77495101 for the mark SMART BODY FITNESS on Section 2(d) grounds of priority and likelihood of confusion of the mark SMART FITNESS for health clubs and personal training services" after full briefing on the merits. 

Z&S Fresh, Inc. v. West Pak Avocado, Inc.- Cancellation No. 92050141
Successfully defended Registration No. 3482413 against a Petition brought under Section 2(d). 

Bio Harvest Cosmoceutical, Sdn. Bhd. v. Alfred Joseph & Company, Inc.- Cancellation No. 92049582 
Successfully Petitioned for Cancellation of Reg. No. 3069911 on Section 14 grounds of abandonment. 

Planet Yoga, Inc., Leeann Carey v. Global Yoga LLC- Opposition No. 91123150 
Successfully opposed Application No. 75807019 for the mark GLOBAL YOGA on Section 2(d) grounds due to priority of use 
of the mark PLANET YOGA for yoga instruction services despite a close and contentious proceeding.

Jinx Ltd. v. Bernard Thomas Dlugokeski - Opposition No. 91095721 
Feb 1997 - Board sustained Opposition of a similar mark “JINX” for various clothing items in class 025, on Section 2(d) grounds 
after full briefing on the merits. New Paragraph

UDRP Domain Name Disputes

DOMAIN NAMES RECOVERED
PHYTOSKIN.COM
THYMREVIT.COM
THYMUSKIN.COM
THYMU-SKIN.INFO
THYMUSKINSHAMPOO.COM
D2014-0978:  VITA-COS-MED KLETT-LOCH GmbH v. Perfect Privacy, LLC, Teresa Wainright et al  (WIPO August 5, 2014) 
 Successfully obtained Panel transfer order for the disputed domain names: phytoskin.com, thymrevit.com, thymuskin.com, thymu-skin.info, and thymuskinshampoo.com against Complainant's former U.S. distributor and licensee.

AUTOMEGA.COM 
D2006-0665: Custom Auto Trim and Graphics, Inc. v. 대 HyunGyu Lee 사건번호: 
(WIPO - (Korean) - August 31, 2006)  
https://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0665.html
Successfully obtained Panel transfer order for the domain name: AUTOMEGA.COM

SEKA.COM 
(NAF March 30, 2005)
Obtained a Panel Order transferring disputed domain name to renown celebrity persona.

ATEK.CO.UK 
(Nominet May 9, 2005)
Obtained a Panel transfer of disputed domain name. 

SECTORNINE.COM  
(NAF June 28, 2005)
Obtained a Panel order transferring disputed domain name used by a San Diego-based skateboard company against a Korean registrant.

DOMAIN NAMES DEFENDED
INVICTA.COM  (NAF - August 3, 2006) 
Successfully defended disputed domain name registration. Complainant narrowly avoids a finding of Reverse Domain Name Hijacking.

MOUNTAINVIEWCOUNTRYCLUB.COM  (NAF - March 28, 2005)  
Successfully defended disputed domain registration and won a Panel finding of Reverse Domain Hijacking against Complainant.

CANDY2U.COM (NAF - June 19, 2003)
Successfully defended claims brought under the UDRP.  Complainant narrowly avoids a finding of Reverse Domain Name Hijacking.

CAPITAL.BIZ (WIPO - July 3, 2002) 
Successfully defended disputed domain registration.

FILM.BIZ (NAF - August 20, 2002) 
Successfully defended disputed domain registration.

GRACE.BIZ  (WIPO - July 12, 2002) 
Successfully defended disputed domain registration against claims brought by W.R. Grace & Co., owner of numerous well-known marks. 

HUNTER.BIZ 
(NAF - June 20, 2002) 
Successfully defended disputed domain registration.

MUNICH.BIZ 
(WIPO - July 1, 2002)
Landeshauptstadt Muenchen v Beanmills, Inc. (decided by WIPO July 01, 2002) No. DBIZ2002-00147 
Successfuly defended claims brought by Complainant, the city of Munich, capital of Bavaria, Germany disputed registration of the URL 
MUNICH.BIZ by an American. (With powerfully creative arguments and evidentiary showing, successfully defended)

PRINT.BIZ
(NAF - June 25, 2002) 
Successfully defended disputed domain registration. 


More importantly, it's the cases that we don't litigate that really count. 
The ones where a simple cease and desist letter or a well-devised
license, amendment, or other settlement agreement might
more simply do the trick. 

Pugnatious fighters, we continually focus on avoiding litigation, while protecting and strengthening 
our clients' rights, preserving their Intellectual Properties and preventing infringement 
while vigilantly exploring creative resolutions to trademark, copyright,domain name and unfair competition cases. 
 
We have recovered dozens of domain names informally and we have negotiated the private sale, escrow and transfer 
of scores of infringing domain names on behalf of their owners. 

WE PROTECT IMAGINATION! 
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