San Diego Legal Blog

Responding to intellectual property infringement

Most entrepreneurs in California and around the country understand the importance of intellectual property and take steps to protect it, but they are often unsure about what to do when their logos, branding, formulas, inventions or trade secrets are used by others without their permission. Pursuing intellectual property litigation can be costly without guarantee of a successful outcome, so entrepreneurs may be wise to attempt to resolve this kind of dispute amicably before involving the courts.

Before deciding on a course of action, intellectual property owners should learn as much as they can about the infringer and their goals. Infringement is sometimes unintended or minor and may not warrant an aggressive response, but a more robust approach could be justified when the infringer is a competitor, a former employee or someone who has violated the intellectual property rights of others in the past. Business owners may also wish to determine how much the infringement in question is damaging their companies before taking legal action.

Copyright infringement lawsuit brought against Oscar frontrunner

The Oscars are not all fun and games. Amidst the awards, partying and celebration, there is a copyright dispute going on behind the scenes. According to the Los Angeles Times, there is a copyright lawsuit against The Shape of Water

While the Oscar frontrunner has received many accolades, it is under hot water right now. Director Guillermo del Toro and his team may be guilty of plagiarizing a play from the 1960s. 

Federal judge allows embedded photo copyright case to advance

Copyright protections enable many people and organizations in California to earn an income. The ruling of a U.S. District Court judge surprised media observers when she chose not to halt a photographer's case against multiple media outlets. The photographer had filed suit claiming that the defendants violated his copyright when they embedded a tweet with his photo of an athlete into their news reports.

The plaintiff had originally placed the image on Snapchat and then it appeared on Twitter, where online publications used HTML code to embed the media into their stories on sites owned by Yahoo, Breitbart, Gannett and Boston Globe Media Partners. Publishers had considered this commonplace practice to be previously settled by a decision in a case against Amazon. Known as the server test, the earlier ruling from a federal appeals court had established that copyright liability did not arise when content was stored on a separate server.

Uber settlement with Waymo

Residents of California who follow the news coming out of Silicon Valley may have heard that Uber has been spending the past year tied up in litigation over its driverless car technology; the company suing Uber, Waymo, has been claiming that Uber stole its proprietary technology. Recently, the case was settled, and Uber agreed to pay Waymo $245 million in equity, giving the plaintiff, along with its parent company, a 0.34 percent equity stake in Uber.

It is worth pointing out that this case was taking place in a year filled with scandals for Uber, all of which culminated in one of Uber's founders stepping down from the position of CEO. However, the case between Uber and Waymo has been particularly devastating, especially since it had strong ramifications for the future of the ride-sharing company.

Beatles' companies file suit against online counterfeit vendors

California is the home of the entertainment industry, and that industry can also spawn disputes over copyrights, trademarks and counterfeit fan-oriented merchandise. The Beatles have filed a lawsuit against 48 different websites for selling counterfeit fan gear with the band's logo, work or other trademarks. The suit, filed by the band's companies Apple Corps and Subafilms, lists a number of internet vendors and aliases that the band alleges have sold items that feature imitations of Beatles merchandise and images.

In the suit, the band alleges that the internet companies are engaging in trademark infringement, trademark counterfeiting, unfair competition, common law trademark infringement and false designation of origins in order to defraud potential customers. Most of the defendant companies are based outside the United States in countries that are well-known to have very little or no trademark enforcement. The vendors sold the products on global sites like eBay, Amazon and Etsy as well as their own websites.

Disputes ongoing over James Brown's estate

In January 2018, a lawsuit was filed in California regarding the estate of the singer James Brown. It is one of more than a dozen challenges filed since his death in 2006, and their steady stream means that the underprivileged children he hoped to help as well his other beneficiaries have not received any of the assets intended for them.

The estate administrator and Brown's widow are the targets of the January lawsuit. This one alleges that his wife made illegal agreements with the estate regarding song copyrights. Other lawsuits have argued that Brown's alcohol and drug problems meant that he was not of sound mind when he created his estate plan.

Trade secret lawsuit filed against Uber company

California has become a hub of technological advancement for the United States, as well as around the world. When it comes to innovative technologies that can enhance the lives of consumers, medical patients and professionals, competition is fierce. It is not uncommon for one company to accuse another of stealing trade secrets, particularly in the information and technology sector. It is important to understand the difference between a trade secret that can harm business and knowledge that someone did not necessarily pick up while working for a competitor.

The United States Patent and Trademark Office provides the following information that simplifies the definition and impact of trade secret theft:

  • A trade secret is knowledge that is not generally known by someone who has not worked for a particular company.
  • Knowledge of said information would give a company an economic edge over competitors.
  • A trade secret dispute must be business-related.

Grumpy Cat case resolved for $710,000

Grumpy Cat Limited won a $710,000 award for copyright and trademark infringement by Grenade Beverage. The amount was decided by a jury verdict in the Central District of California court on Jan. 23. In 2013, Grenade Beverage was given a license to use the image of Grumpy Cat to market an iced coffee called Grumpy Cat Grumppuccino. Grenade would form Grumpy Beverage as a subsidiary for the purposes of selling this beverage.

However, in 2015, Grumpy Cat Limited learned that Grumpy Beverage intended to use the image to market a ground coffee product. Despite knowing that it didn't have permission to do so, the beverage company began marketing the ground coffee product with Grumpy Cat's image. This was in violation of the trademark and copyright held by Grumpy Cat Limited. The complaint against Grenade also claims that the company failed to pay royalties on sales of the Grumppuccino and began selling Grumppuccino T-shirts.

Eagles and real-life Hotel California settle dispute

An ongoing trademark battle between the famous classic US rock band, the Eagles, and a Mexican hotel calling itself Hotel California has ended. The song "Hotel California" was one of the Eagles' greatest hits and continues to be popular decades after its release in 1976. The trademark case is over after the Hotel California in Mexico withdrew its own application for a trademark on the term.

The Eagles had filed a trademark infringement complaint against the hotel, which sold an array of goods imprinted with the Hotel California name. They claimed that the hotel's merchandise was likely to cause confusion with the band's registered wordmark on the name, which they use on memorabilia such as keychains, guitar picks, clothing and posters.

U.S. Army files trademark litigation against Las Vegas NHL team

Hockey fans in California may be enjoying the Cinderella inaugural season of the National Hockey League expansion Vegas Golden Knights, but lawyers representing the U.S. Army expressed less enthusiasm regarding the team's name and color scheme. Army lawyers have filed an intellectual property litigation action, accusing the team of trademark infringement. They claim that the Army acquired "exclusive rights" to the name as well as "common law rights" for the color combinations of black and gold as well as yellow and white in combination the name. The filing states that the trademarks were established as far back as the 1960s for the service branch's parachute team.

The name and color scheme of the Las Vegas hockey team -- the first major league sports team in the city's history -- were announced in late 2016. Surprising most analysts, the Golden Knights entered the middle of January with the second-best record in the NHL. The Army first voiced its opposition in mid-2017, and the filing of the intellectual property infringement complaint was made on the final day of an extension granted by the court.

Email Us For A Response

Contact The Firm In San Diego, California

Bold labels are required.

Contact Information

The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.


Privacy Policy

Mazzarella & Mazzarella LLP
1620 Fifth Avenue
Suite 600
San Diego, CA 92101

Phone: 619-238-4900
Fax: 619-238-4959
San Diego Law Office Map

Review Us
  • AV Preeminent 2017
  • Lawyers.com