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Author Archives: Kenan Farrell

Oregon Trademark Litigation Update – Cyber Acoustics v. Shenhen Fenda Technology

30 Wednesday Apr 2014

Posted by Kenan Farrell in District of Oregon, Intellectual Property, Litigation, Oregon, Trademark

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Breach of Contract, False Designation of Origin, John V. Acosta, Litigation Update, Trademark Infringement

Cyber Acoustics, LLC et al v. Shenhen Fenda Technology Co. Ltd.

Court Case Number: 3:14-cv-00695-AC
File Date: Monday, April 28, 2014
Plaintiff: Cyber Acoustics, LLC, Cyber Acoustics HK Ltd.
Plaintiff Counsel: J. Peter Staples, Susan D. Pitchford of Chernoff Vilhauer McClung & Stenzel LLP
Defendant: Shenhen Fenda Technology Co. Ltd.
Cause: Trademark Infringement, False Designation of Origin, Breach of Contract
Court: District of Oregon
Judge: Magistrate Judge John V. Acosta

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Oregon Trademark Litigation Update – Nike v. Ho et al

29 Tuesday Apr 2014

Posted by Kenan Farrell in District of Oregon, Intellectual Property, Litigation, Oregon, Trademark

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Breach of Contract, Breach of Fiduciary Duty, Conversion, Fraud, Litigation Update, Michael W. Mosman, Trademark Infringement

Defendants Yamaguchi and Ho are alleged to have used their position as managers at Nike to steal unique and/or custom athletic footwear in order to profit from the sale of those shoes to collectors of rare athletic shoes, known in the industry as “Sneakerheads.” These defendants allegedly lied to Nike and its manufacturers by misrepresenting that the shoes would be used for promotional and marketing purposes in order to trick them into manufacturing inventory for the illicit scheme. Defendant Keating allegedly acted as the middle-man in the unlawful enterprise by knowingly purchasing and re-selling the stolen footwear obtained by Yamaguchi and Ho.

Nike brings this action to recover the stolen shoes, recover the illicit gains obtained by Defendants from the sale of the stolen goods, to obtain an injunction preventing Defendants from continuing to participate in the illicit sale of stolen Nike goods, and to seek an award of punitive damages.

Nike Swoosh Registration

 

Nike Inc. v. Tung Wing Ho et al

Court Case Number: 3:14-cv-00696-MO
File Date: Monday, April 28, 2014
Plaintiff: Nike Inc.
Plaintiff Counsel: Paul H. Trinchero, Robert C. Weaver Jr. of Garvey Schubert Barer
Defendant: Tung Wing Ho, Denise Wei-Ching Yee, Kyle Keoki Yamaguchi, Shu-Chu Yamaguchi, Jason M. Keating
Cause: Trademark Infringement, Conversion, Fraud, Breach of Fiduciary Duty, Breach of Contract
Court: District of Oregon
Judge: Judge Michael W. Mosman

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Oregon Copyright Litigation Update – Pendleton Woolen Mills v. Kraff’s Men’s Wear Co.

17 Thursday Apr 2014

Posted by Kenan Farrell in Copyright, District of Oregon, Intellectual Property, Litigation, Oregon, Trademark

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Breach of Contract, Common Law Trademark Infringement, Common Law Unfair Competition, Copyright Infringement, Federal Trademark Infringement, Federal Unfair Competition, Intentional Interference with Economic Relations, Litigation Update, Paul Papak

Plaintiff is a Portland, Oregon-based designer/manufacturer/retailer of high quality wool fabrics and apparel, and is known for its unique proprietary fabric and blanket designs. Plaintiff regularly enters into sales contracts with wholesale customers, who must agree that “The Purchaser will not sell the goods or any part thereof, to another dealer or to any other reseller, and will not sell the goods through the Internet without the written consent of [Plaintiff].” The 20 John Doe defendants are wholesale customers that have signed the sales contract. None were authorized to sell to Defendant Kraff’s, the primary target of the lawsuit.

Defendant Website ScreenshotDefendant Kraff’s is a retailer operating a clothing store that markets and sells apparel, blankets, and related products in Toppenish, Washington. From approximately 1941 until 2006, Kraff’s was a wholesale customer of Plaintiff. Kraff’s has allegedly continued to purchase product from a Doe defendant after termination of their sales contract with Plaintiff, thus making them an unauthorized reseller of Plaintiff’s goods. Plaintiff brings this lawsuit with numerous copyright claims based on their distinctive designs and trademark claims based on the unauthorized use of their company name.

Stay tuned for updates.

Pendleton Woolen Mills Inc. v. Kraff’s Men’s Wear Co. Inc. et al

Court Case Number: 3:14-cv-00628-PK
File Date: Wednesday, April 16, 2014
Plaintiff: Pendleton Woolen Mills Inc.
Plaintiff Counsel: Parna A. Mehrbani, Vicki L. Smith of Lane Powell PC
Defendant: Kraff’s Men’s Wear Co. Inc., Daniel P. Johnson, John Doe Companies 1-20
Cause: Copyright Infringement, Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, Intentional Interference with Economic Relations, Breach of Contract
Court: District of Oregon
Judge: Magistrate Judge Paul Papak

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Oregon Copyright Litigation Update – Digital Sound Co. v. Audio and Video Labs

11 Friday Apr 2014

Posted by Kenan Farrell in Copyright, District of Oregon, Intellectual Property, Litigation, Oregon

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Copyright Infringement, Litigation Update, Paul Papak

Digital Sound Co. et al v. Audio and Video Labs, Inc. et al

Court Case Number: 3:14-cv-00598-PK
File Date: Thursday, April 10, 2014
Plaintiff: Digital Sound Co., Stars for Art Productions FZ LLC
Plaintiff Counsel: Christopher H. Kent, Leslie S. Johnson of Kent & Johnson LLP
Defendant: Audio and Video Labs, Inc., Martin Berz Group, Does 1-10
Cause: Copyright Infringement
Court: District of Oregon
Judge: Magistrate Judge Paul Papak

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Voltage Pictures shifts BitTorrent strategy in Oregon from copyright to state trademark claims

04 Friday Apr 2014

Posted by Kenan Farrell in Intellectual Property, Litigation, Oregon, Trademark

≈ 2 Comments

Tags

BitTorrent, Litigation Update, Oregon State Trademark Infringement

Here’s a new twist in the BitTorrent download saga in Oregon. Rather than the typical strategy of pursuing copyright infringement claims in federal court, Voltage Pictures is now going after 50 John Doe defendants in Oregon state court on state trademark claims.

Defendants are alleged to have “without the authorization or consent of plaintiff, used, copied and/or distributed a reproduction, counterfeit and copy of plaintiff’s motion picture bearing plaintiff’s registered trademark VOLTAGE PICTURES.”

It’s a novel strategy, but perhaps with a few flaws. For one, it will be an uphill battle to argue that Defendant’s uploading/downloading of a digital file amounts to distribution that is likely to cause confusion as to source. Notably, a Plaintiff can only recover damages or profits under Oregon state trademark law if the trademark was used with the intent to cause confusion or mistake or to deceive (ORS 647.095 (2)). Similar to the federal “nominative fair use” exemption, a Defendant is permitted to use another party’s trademark to reference that party’s goods or services.

It will be interesting to see how the State Court handles this lawsuit. Stay tuned for updates.

Voltage Pictures, LLC v. Does 1-50

Court Case Number: 14C13823
File Date: Thursday, April 3, 2014
Plaintiff: Voltage Pictures, LLC
Plaintiff Counsel: Carl D. Crowell, Crowell Law
Defendant: Does 1-50
Cause: Oregon State Trademark Infringement
Court: Circuit Court of the State of Oregon for the County of Marion

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Oregon Trade Dress Litigation Update – Marmoset v. The Music Bed

25 Tuesday Mar 2014

Posted by Kenan Farrell in Copyright, District of Oregon, Intellectual Property, Litigation, Oregon, Portland, Trade Dress, Trademark

≈ 4 Comments

Tags

Common Law Trademark Infringement, Common Law Unfair Competition, Copyright Infringement, Litigation Update, Michael W. Mosman, Trade Dress Infringement, Unfair Competition, Voluntary Dismissal

Plenty of thought, time and expense goes into creating a website. Therefore, it has to be pretty upsetting when a direct competitor rips off the “look and feel” of your site. Marmoset

That’s what Marmoset, a specialized boutique music agency based in Portland, Oregon, alleges of The Music Bed, a similar company in Fort Worth, Texas. Check out comparison images in the Complaint or, better yet, go visit the websites yourself.

What do you think? Are the websites too similar? Confusingly similar?

And remember, imitation is the sincerest form of flattery.

Marmoset, LLC v. The Music Bed, LLC

Court Case Number: 3:14-cv-00431-MO
File Date: Monday, March 17, 2014
Plaintiff: Marmoset, LLC
Plaintiff Counsel: Timothy S. DeJong, Jacob S. Gill of Stoll Stoll Berne Lokting & Schlachter PC, Charles F. Moore of Alleman Hall McCoy Russell & Tuttle LLP
Defendant: The Music Bed, LLC
Cause: Trade Dress Infringement, Unfair Competition, Copyright Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Judge Michael W. Mosman

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UPDATE 7/7/2014: A Notice of Voluntary Dismissal Without Prejudice was filed in this lawsuit on 6/6/2014. To date, there have been no discernible changes to either website.

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Unfair Competition/False Advertising Lawsuit Filed Against Oregon Vitamin-Maker

19 Wednesday Mar 2014

Posted by Kenan Farrell in District of Oregon, Intellectual Property, Litigation, Oregon

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Common Law Unfair Competition, False and Misleading Advertising, Garcinia Cambogia, Litigation Update, Mark D. Clarke, Unfair Competition

Vitamins Online, Inc. v. DavidPaul Doyle

Court Case Number: 1:14-cv-00441
File Date: Tuesday, March 18, 2014
Plaintiff: Vitamins Online, Inc.
Plaintiff Counsel: Jeffrey M. Peterson of Ater Wynne LLP
Defendant: DavidPaul Doyle
Cause: Unfair Competition, False and Misleading Advertising, Common Law Unfair Competition
Court: District of Oregon
Judge: Magistrate Judge Mark D. Clarke

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Oregon Trade Dress Litigation Update – Carbon Audio v. Monster

10 Monday Mar 2014

Posted by Kenan Farrell in District of Oregon, Intellectual Property, Litigation, Oregon, Trade Dress

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Civil Conspiracy, Common Law Conversion, Litigation Update, Misappropriation of Trade Secrets, Misrepresentation, Paul Papak, State Unlawful Trade Practices, Temporary Restraining Order, Tortious Interference with Contractual Relations, Tortious Interference with Prospective Economic Advantage, Trade Dress Infringement, Unjust Enrichment

Plaintiff Carbon Audio d/b/a Boomphones, a Portland-based technology company, alleges that California-based competitor Monster Inc. has created a knock-off of Plaintiff’s “Pocket Speaker” product. Monster’s “Superstar” speaker is claimed to have the same internal and external configuration, as well as copying the distinctive and proprietary sounds of Plaintiff’s product.

Image from Complaint

Image from Complaint

Monster’s Superstar speaker is set to go on sale on March 14 and has allegedly already led to instances of consumer confusion, so Plaintiff has filed a Motion for Temporary Restraining Order (see Memorandum below). Monster has already filed its Memorandum in Opposition to the Temporary Restraining Order.

This lawsuit is moving fast out of the gates so stay tuned for updates.

Carbon Audio LLC et al v. Monster, Inc.

Court Case Number: 3:14-cv-00332-PK
File Date: Wednesday, February 26, 2014
Plaintiff: Carbon Audio LLC, Headbox, LLC
Plaintiff Counsel: Stephanie E.L. McCleary, B. John Casey of K & L Gates LLP
Defendant: Monster, Inc.
Cause: Trade Dress Infringement, Misrepresentation, Misappropriation of Trade Secrets, Tortious Interference with Contractual Relations, Tortious Interference with Prospective Economic Advantage, State Unlawful Trade Practices, Civil Conspiracy, Common Law Conversion, Unjust Enrichment
Court: District of Oregon
Judge: Magistrate Judge Paul Papak

Complaint:

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Memorandum in Support of Temporary Restraining Order and Expedited Discovery:

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Memorandum in Opposition to Temporary Restraining Order:

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Oregon Senate Considers Patent Troll Bill

18 Tuesday Feb 2014

Posted by Kenan Farrell in Intellectual Property, Litigation, Oregon, Patent

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Patent Troll, SB 1540

The Oregon Senate is currently considering what has been widely touted as a prohibition against “patent trolls.” Generally, a patent troll is a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or supply services based upon the patents in question. Of course, one person’s patent troll is another person’s valid patent rights holder so it will be interesting to watch this bill (SB 1540 A…full text below) as it proceeds.

Briefly, the bill “[p]rohibits person or person’s affiliate from communicating demand to recipient if in demand person or affiliate alleges, asserts or claims in bad faith that recipient has infringed or contributed to infringing patent or rights that patentee, assignee or licensee has under patent.”

Clearly what constitutes “bad faith” will be important to delineate. The bill is currently before the House Committee on Judiciary. Stay tuned for updates.

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Oregon Trademark Litigation Update – Raptor Archery v. Robert Maitland

10 Monday Feb 2014

Posted by Kenan Farrell in District of Oregon, Intellectual Property, Litigation, Trademark

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Common Law Trademark Infringement, Common Law Unfair Competition, Federal False Designation of Origin, Federal Trademark Infringement, Federal Unfair Competition, Janice M. Stewart, Litigation Update

Archery_targetThis is a fairly straightforward trademark dispute over the use of the “RAPTOR” trademark in connection with archery equipment. Plaintiff is based in Hood River, Oregon. Defendant is based in Sparks, Nevada, which is located just east of Reno. Plaintiff has a federal registration since 1998 and has used their RAPTOR ARCHERY mark since 1991.

Raptor Archery, Inc. v. Robert Maitland

Court Case Number: 3:14-cv-00203
File Date: Thursday, February 06, 2014
Plaintiff: Raptor Archery, Inc.
Plaintiff Counsel: William H. Sumerfield of Phillips Reynier & Sumerfield
Defendant: Robert Maitland
Cause: Federal Trademark Infringement, Common Law Trademark Infringement, Federal Unfair Competition, Common Law Unfair Competition, Federal False Designation of Origin or Source
Court: District of Oregon
Judge: Janice M. Stewart

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