Tag Archives: Anna J. Brown

Software company sues Nike for breach of contract, software piracy

27 Friday Apr 2018

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

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The Plaintiff in this action, Quest Software, Inc., is a California-based software company that “develops and supports software used by database professionals for cloud management, security, workforce mobility and data-driven insight.”

A January 2017 audit revealed that one of its customers, Oregon-based shoe and apparel giant Nike, had deployed Plaintiff’s software in excess of the scope allowed by the parties’ SLA. The Complaint also alleges that Nike “had used pirated keys to bypass the Quest License Key System.”

Per the Complaint (below), when confronted by Plaintiff about the unauthorized uses, Nike refused to purchase additional licenses, hence this lawsuit.

Quest Software, Inc. v. Nike Inc.

Court Case Number: 3:18-cv-00721-BR
File Date: Tuesday, April 24, 2018
Plaintiff: Quest Software, Inc.
Plaintiff Counsel: Thomas A. Lerner, Theresa H. Wang, Bradford J. Axel of Stokes Lawrence, P.S.
Defendant: Nike, Inc.
Causes: Breach of Contract, Copyright Infringement, Violation of Digital Millennium Copyright Act
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

Photographer Files Copyright Lawsuit After Settlement Negotiations Break Down over Confidentiality Clause

01 Friday Sep 2017

Posted by in Copyright, District of Oregon, Intellectual Property, Litigation, Oregon, Portland

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The Plaintiff in this copyright lawsuit is a professional photographer from Sammamish, Washington. He sells “limited edition luxury nature photography.” Pretty cool stuff, go check it out.

The Defendants are a real estate agency located in Portland, Oregon, who allegedly used one of Plaintiff’s photographs on their website without permission.

That’s all pretty standard stuff for a copyright lawsuit. We see those types of photography lawsuits regularly, since copyright infringement is strict liability, meaning liability doesn’t depend on actual negligence or intent to harm. Even the proposed settlement amount was reasonable by all accounts, just $1000 (statutory damages are $750 minimum). The more interesting part of this lawsuit may be the reason why the parties couldn’t amicably settle the dispute outside of court.

Settlement discussions apparently broke down over a confidentiality clause in the settlement agreement. Per the Complaint (below), “Defendants’ counsel did not wish to be personally bound by confidentiality ostensibly on account of an article that Defendants’ counsel intended to submit to California Lawyer magazine.” Defendants’ counsel also “apparently believed that amicable settlement was not prudent, as these types of cases ‘need more exposure.'”

Of course, we’re more than happy to give Oregon trademark and copyright cases tons of exposure here at the Oregon Intellectual Property Blog. Stay tuned for updates (and perhaps eventually a California Lawyer article with more detail).

Reed v. Ezelle Investment Properties Inc. et al.

Court Case Number: 3:17-cv-01364-BR
File Date: Thursday, August 31, 2017
Plaintiff: Aaron C. Reed
Plaintiff Counsel:Mathew K. Higbee, Esq. of HIGBEE & ASSOCIATES
Defendant: Ezelle Investment Properties Inc. d/b/a Ezelleinvestproperties.com, Glenn D. Ezelle Jr., Does 1-10
Cause: Copyright Infringement
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

Trademark and Unfair Competition lawsuit filed over expired software license

14 Friday Jul 2017

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

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This lawsuit involves the registered trademarks LEXILE, LEXILE FRAMEWORK, LEXILE ANALYZER and METAMETRICS.

The parties previously had a license by which the Defendants could use Plaintiff’s software, but it apparently expired on June 30, 2017.

MetaMetrics, Inc. v. NWEA et al.

Court Case Number: 3:17-cv-01059-BR
File Date: Thursday, July 6, 2017
Plaintiff: MetaMetrics, Inc.
Plaintiff Counsel: Jeff Pitzer of Pitzer Law
Defendant: NWEA (f/k/a Evaluation Association), Matthew Chapman, Jeff Strickler
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, False Advertising, Copyright Infringement, Oregon Trademark Infringement, Common Law Trademark Infringement, Oregon Trademark Dilution, Oregon Unlawful Trade Practices Act, Common Law Unfair Competition, Common Law False Advertising, Breach of Contract, Tort of Conversion
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

Local pizzeria owner may not be able to use own name

05 Wednesday Jul 2017

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

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Patsy (Pat) makes pizzas.

New York-style pies are his specialty.

Patsy opens a restaurant in Oak Grove, Oregon called, wait for it, Patsy’s New York Pizzeria. “Best New York pizza in Portland!” Business is good, customers love him, say “He’s everybody’s dad.”

But just when life looked like easy street for Patsy, there’s a trademark lawsuit at his door. The Plaintiff in this lawsuit, a New York corporation, has been operating pizzerias under PATSY’S PIZZERIA or PATSY’s trademarks since 1933 and franchising the PATSY’S PIZZERIA trademark since 1996. Frank Sinatra apparently gave them a shout-out during a live concert in 1976.

Additionally, the name wasn’t the only alleged similarity. The Complaint (below) alleges that Patsy’s (Oregon) offered the same specialty pizzas as Plaintiff’s original menu.

Early conversations in 2015 between Patsy’s and Plaintiff’s counsel were leading toward Patsy changing his pizzeria’s name. However, Patsy has persisted with the name and the Plaintiff now seeks intervention by thefederal court for the District of Oregon.

Stay tuned for updates.

 

I.O.B. Realty, Inc. v. Pasquale DeSiervi d/b/a Patsy’s New York Pizzeria

Court Case Number: 3:17-cv-01023-BR
File Date: Friday, June 30, 2017
Plaintiff: I.O.B. Realty, Inc.
Plaintiff Counsel: James F. Halley of Law Firm of James F. Halley, P.C., Paul Grandinetti, Rebecca J. Stempien Coyle of Levy & Grandinetti
Defendant: Pasquale DeSiervi d/b/a Patsy’s New York Pizzeria, John Does 1-10
Cause: Federal Trademark Infringement, Common Law Trademark Infringement
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

Country Archer vs. Tillamook Country Smoker…are you confused?

21 Thursday Jul 2016

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

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Food fight!

Country Archer is a California-based purveyor of beef jerky.

Tillamook Country Smoker, based in Tillamook, Oregon, is one of the four largest purveyors of jerky in the United States.

On July 12, Tillamook Country Smoker received a demand letter from Country Archer accusing Tillamook’s new packaging of trademark infringement, copyright infringement, trade dress infringement and violation of California’s Unfair Competition Law.

Based on their belief that the demand letter was frivolous, Tillamook promptly filed this lawsuit seeking a declaration of non-infringement.

Take a look at the comparison images from the Complaint. Are you confused?

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Tillamook Country Smoker, Inc. v. S & E Gourmet Cuts, Inc. et al

Court Case Number: 3:16-cv-01477-BR
File Date: Wednesday, July 20, 2016
Plaintiff: Tillamook Country Smoker, Inc.
Plaintiff Counsel: J. Peter Staples, Susan D. Pitchford, Amelia S. Forsberg of Chernoff Vilhauer LLP
Defendant: S & E Gourmet Cuts, Inc. d/b/a Country Archer, Country Archer
Cause: Declaration of Non-Infringement of Trademarks, Declaration of Non-Infringement of Trade Dress, Declaration of Non-Infringement of Copyright, Declaration of Non-Infringement of Cal. Bus. & Prof. Code §17200
Court: District of Oregon
Judge: Anna J. Brown

Complaint: 

 

Yarn company sues to enforce Twisted trademark

27 Monday Jun 2016

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

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The Plaintiff, based in Portland, Oregon, sells knitting, crochet, spinning, and weaving supplies using the trade name Twisted.

In April 2016, the Plaintiff learned that Defendants, a competitor based in Chelan, Washington, had recently changed their name from “Warehouse Woolery” to “Twisted Fine Yarn & Wool”. The Complaint (below) references several actual instances of confusion.

On June 9, 2016, after receiving Plaintiff’s letters, which put Defendants on notice of Plaintiff’s TWISTED marks and claim of infringement, Defendants filed a federal trademark application for TWISTED FINE YARN & WOOL. That action, unsurprisingly, prompted this trademark lawsuit and likely a trademark opposition. Stay tuned for updates.Screen Shot 2016-06-27 at 6.08.23 PM

Twisted LLC v. 3ZS LLC et al

Court Case Number: 3:16-cv-01259-BR
File Date: Friday, June 24, 2016
Plaintiff: Twisted, LLC
Plaintiff Counsel: Parna A. Mehrbani of Lane Powell PC
Defendant: 3ZS, LLC d/b/a Twisted Fine Yarn & Wool, Sandi Sandum
Cause: Federal Trademark Infringement, Unfair Competition, Oregon, State Trademark Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

Simple Finance files trademark lawsuit against Simple RTO, alleges website mimicry

10 Tuesday May 2016

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

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This trademark dispute involves the trademarks SIMPLE and SIMPLE FINANCE in connection with financial services.

In addition to using confusingly similar trademarks, the Defendant is also accused of mimicking the design of Plaintiff’s website.

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Simple Finance Technology Corp. v. Simple RTO, LLC

Court Case Number: 3:16-cv-00801-BR
File Date: Monday, May 9, 2016
Plaintiff: Simple Finance Technology Corp.
Plaintiff Counsel: Kristina J. Holm, William C. Rava of Perkins Coie LLP
Defendant: Simple RTO, LLC d/b/a Simple Finance
Cause: Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, State Dilution
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

Portland’s new “Pelican’s Waiting Room” sued for Trademark Infringement on First Day of Business

23 Wednesday Mar 2016

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

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Less than a week into operation and already facing a trademark lawsuit…ouch. I’d revert to the IP attorney’s old adage of “Always do a proper trademark clearance search” but I’m not sure that was even necessary here. The Plaintiff in this trademark lawsuit is the well-known Pelican Brewing Company, set in beautiful Pacific City, Oregon.

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Defendants are alleged to have (recently…Soft Opening was March 19 and Grand Opening is today) infringed upon Plaintiff’s numerous PELICAN-formative marks by opening a bar and restaurant in Portland, Oregon (near NW 23rd, in the home of the recently closed Peddler and Pen) that serves beer, coffee, and foods under the name “Pelican’s Waiting Room.” Defendants also allegedly use a “confusingly similar” logo, as well as food and beverages branded “Pelican” including an alcoholic beverage called “Pelican’s Punch.”

Plaintiff has numerous federal registrations for PELICAN-formative marks. A few weeks ago, Plaintiff was contacted by the director of the Oregon Brewers Guild, who indicated that people in the beer and restaurant industries may be experiencing and/or may be likely to experience confusion between Plaintiff’s PELICAN Marks and Defendants’ use of the Infringing Mark.

Note that the Defendants’ website has already removed the term “Pelican” and now just calls the restaurant “The Waiting Room” so this lawsuit could be resolved quickly.

For Pelican beer aficionados, here’s some good information from the Complaint:

[Plaintiff] is opening the Pelican Brewing Pub in Cannon Beach, Oregon in late Spring 2016. Plaintiff also has plans to open a PELICAN-branded bar and restaurant in Portland, Oregon.

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Pelican Brewing Company v. Pelican’s Waiting Room, LLC et al

Court Case Number: 3:2016-cv-00486
File Date: Tuesday, March 22, 2016
Plaintiff: Pelican Brewing Company
Plaintiff Counsel: Michael A. Cohen, Nicholas (Nika) F. Aldrich, Jr., Alexandra J. Bodnar of Schwabe, Williamson & Wyatt
Defendant: Pelican’s Waiting Room, LLC d/b/a Pelican’s Waiting Room, No Comply Food Group, LLC, Kyle Rourke
Cause: Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

Oregon Trademark Litigation Update – House Spirits Distillery v. Pilot House Spirits

29 Friday Jan 2016

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

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This trademark dispute involves Plaintiff’s registered HOUSE SPIRITS trademark and Defendant’s recently adopted PILOT HOUSE SPIRITS trademark.

Some background on the lawsuit: Astoria Distillery That Just Changed Its Name Gets Sued Over New Name

House Spirits Distillery LLC v. Pilot House Spirits LLC

Court Case Number: 3:16-cv-00141-BR
File Date: Tuesday, January 26, 2016
Plaintiff: House Spirits Distillery LLC
Plaintiff Counsel: Steven M. Wilker, Eric Beach of Tonkon Torp LLC
Defendant: Pilot House Spirits LLC
Cause: Federal Trademark Infringement
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

Portland-based Insurance Company sues Competitor over Google AdWords Advertising

13 Tuesday Jan 2015

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

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Plaintiff, based in Portland, Oregon, is suing Defendant, a competing insurance company, over the use of Plaintiff’s trademarks by Defendant in Google AdWords advertising.

While several courts around the country have ruled on the issue of whether the purchase and use of a competitor’s trademark in keyword advertising is trademark infringement, these cases remain very fact-specific.

For those unfamiliar with keyword advertising, one party pays Google to appear in the “Ads” box at the top of or adjacent to the search results for specific search terms. Big companies hate this practice and small competitors love it. Google really loves it, because advertising is where Google gets a big chunk of their revenue.

Stay tuned for updates as the case proceeds. For what it’s worth, Defendant’s ad doesn’t show up when I run a search for Plaintiff’s trademark…

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Williston Financial Group LLC v. Old Republic National Title Insurance Company

Court Case Number: 3:15-cv-00047
File Date: Friday, January 09, 2015
Plaintiff: Williston Financial Group LLC
Plaintiff Counsel: Richard T. Cruzen, Kristen P. Reichenbach of Klarquist Sparkman LLP
Defendant: Old Republic National Title Insurance Company
Cause: Violation of 15 USC 1114, Violation of 15 USC 1125(a)
Court: District of Oregon
Judge: Anna J. Brown