Recent Cases

Omega v. Costco
Five months after the split decision by the United States Supreme Court affirmed the position argued by the Collen IP -directed legal team in favor of its client Omega, the case continues to attract attention. The presenters at the Fashion and Design Protection Seminar focused on the case, displaying it on a jumbo screen while discussing the issues and results. Not only were the case specifics prominently displayed, but Collen IP attorneys were sought out by other attorneys interested in adopting similar strategies for their clients.

The Supreme Court found that the first sale doctrine does not apply to goods manufactured and sold abroad, which allows U.S. copyright holders to maintain and enforce their rights in the U.S. to distribute and control the importation of works manufactured and sold abroad.

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Balenciaga v. Steve Madden
Another hot topic at the Fashion and Design Protection Seminar was Balenciaga v. Steve Madden, a Collen IP case that is currently pending in the Eastern District of New York. Balenciaga had created fancy and colorful shoes, playfully nicknamed LEGO shoes, which received a lot of attention and were worn by Beyonce during a televised performance. Soon after, Steve Madden came out with its Bukled shoe. Collen IP brought suit for copyright and trade dress infringement, claiming that Madden's shoes were knockoffs of Balenciaga's.

Collen IP is a premier intellectual property law firm that represents domestic and international clients, from multi-national luxury goods makers and entertainment industry leaders, to start-up technology ventures and local businesses.

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Affirmed: Supreme Court Upholds Limitation of U.S. First Sale Doctrine in Favor of Omega
November 2010 - The U.S. Supreme Court is being asked to decide whether to uphold the Ninth Circuit's decision that the first sale provision under 17 U.S.C. § 109 is inapplicable to copyrighted works that are manufactured and sold abroad in the context of a copyright infringement action under 17 U.S.C. § 602(a) for infringing importation. Read the full story at: http://www.collenip.com/costcoomega

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The oral arguments for Costco Wholesale Corp. v. Omega S.A. will be heard by the Supreme Court on November 8, 2010
November 2010 - The U.S. Supreme Court is being asked to decide whether to uphold the Ninth Circuit's decision that the first sale provision under 17 U.S.C. § 109 is inapplicable to copyrighted works that are manufactured and sold abroad in the context of a copyright infringement action under 17 U.S.C. § 602(a) for infringing importation. Read the fact sheet, history and case documents and more about Collen IP's activity in this historic matter: http://www.collenip.com/costcoomega

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Collen IP Obtains Permanent Injunction, Damages in Excess of $1 Million and Award of Attorney's Fees in Trademark Dispute

Collen IP filed suit in the Southern District of New York on behalf of its clients, Dutch manufacturers of fire suppression products, and owners of U.S. Trademark Registrations for the marks FIT and FIT5. The complaint alleged federal and common law claims of trademark infringement and unfair competition. On May 20, 2011, Judge Lawrence M. McKenna entered Judgment against the defendants and awarded Collen IP's client full recovery of its damages in the amount of approximately $1.3 million, as well as recovery of its attorney's fees and costs for the litigation. The Judgment found in favor of Collen IP's clients on all counts and permanently enjoined the defendants from future use of the FIT and FIT5 marks. The Judgment also: (1) dismissed all of the defendant's counterclaims; (2) directed dismissal of the defendant's cancellation actions at the Trademark Trial and Appeal Board challenging the FIT and FIT5 marks; and (3) directed cancellation of the defendant's FIRE INTERRUPTION TECHNOLOGY trademark.

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Collen IP Succeeds in Trademark Opposition - Securing Refusal of Registration of Confusingly Similar Mark

      

On behalf of its client, Morinaga & Co., Ltd., a Japanese manufacturer of candy and other food products, Collen IP commenced an Opposition at the Trademark Trial and Appeal Board against registration of the mark MYCHEW for candy. Collen IP argued that registration of MYCHEW for candy would be confusingly similar to Morinaga's registration of, and rights in, the mark HI-CHEW. Following trial and oral argument on the merits, the TTAB, on February 17, 2011 issued a ruling finding in favor of Collen IP's client and against registration of the confusingly similar MYCHEW mark. A copy of the decision can be found here.

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ABA Agrees to Settle COLLEN IP v. American Bar Association Trademark Infringement Lawsuit
September 12, 2008 – The American Bar Association agreed to settle a lawsuit in which COLLEN IP alleged that the ABA's Section of International Law, which had recently adopted a new logo, infringed upon COLLEN IP's federally registered trademark. In the case pending in federal court in Washington, D.C., COLLEN IP alleged that the Section's globe mark was likely to cause confusion, mistake and deception with COLLEN IP's distinctive logo, which has been used since 1998. In the settlement, the ABA has acknowledged the validity of COLLEN IP's trademark and registration, and agreed not to challenge or attack the registration. The ABA agreed that its use of COLLEN IP's globe logo will always be in conjunction with an ABA mark, according to the Association's Graphics Standards Manual. Further, the Chair of the Section of International Law has agreed to provide written assurances that the Section had no intention of applying to register the logo, and that the Section would remove from circulation those items which bear the logo without the ABA identifier, and that the Section will cooperate with COLLEN IP to address concerns which may arise in the future. As a result, COLLEN IP jointly agreed to, with the ABA, to dismiss the complaint with prejudice, and have done so through a stipulation, each side agrees to bear its own legal costs and fees.

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Collen IP Client Prevails in Case Which Brings Clarity to a Gray Market
On September 3, 2008, the United States Court of Appeals for the 9th Circuit held in favor of Collen IP's client, famous Swiss watch maker Omega SA, and against defendant Costco Wholesale Corp. The panel of three judges unanimously held that the first sale doctrine, under section 109 of the Copyright Act, provides no defense to copyright infringement and unlawful importation claims, such as that against Costco, where the copies at issue were manufactured and sold outside the United States and then imported into the United States without the copyright owner's authorization. See published decision at: Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir. 2008);.

The Omega Globe Design is copyright protected artwork, created for hire and owned by Omega SA, and registered with the United States Copyright Office. The design was engraved into the Omega brand watches, at issue in this case, at the time of manufacture by Omega in Switzerland. The watches were sold and distributed by Omega outside the United States only, in places such as Paraguay, Turkey, and Egypt, and not intended for importation and resale in the United States. The copies at issue were imported into the United States without Omega's authorization by Costco's supplier and then distributed by Costco at its warehouse clubs.

Since the copies at issue were not manufactured, sold or imported into the United States under Omega's authority, Omega sued Costco claiming copyright infringement and unlawful importation of its copyrighted works. Costco had claimed that a 1998 U.S.
Supreme Court case "effectively overruled" Ninth Circuit precedent, and changed the law in its favor. But, no court anywhere in the United States having analyzed similar facts had ever ruled in the way stated by Costco in the 10 years since the Ninth Circuit's decision. In essence, Costco alleged, the first sale defense was applicable if the copyright owner had manufactured and sold the copies at issue anywhere in the world, not just the United States. The Ninth Circuit held Costco's interpretation to be incorrect and affirmed its longstanding precedent.

The panel of judges also found no genuine dispute that Omega made the copies at issue of the Omega Globe Design in Switzerland, and that Costco sold them in the United States without Omega's authority. Accordingly, the Ninth Circuit held, the first sale doctrine is unavailable as a defense to Omega's claims for infringement.

Among the cases cited by the Ninth Circuit in support of its ruling in Omega's favor, are prior cases in which Collen IP has successfully enforced its clients' rights against gray market and parallel imports. One such case is in the 11th Circuit, Southern District of Florida, in the matter of Swatch SA v New City, Inc., where Collen IP won summary judgment in favor of the famous Swiss watchmaker on its copyright infringement and unlawful importation claims. See published decision at: Swatch SA v. New City Inc., 454 F. Supp. 2d 1245 (S.D. Fla. 2006); HYPERLINK "http:// www.collenip.com/swatchnew-city-sdfl.pdf"

As in the Omega case before the Ninth Circuit, the Florida district court in Swatch held that the copyright owner had the right to prevent goods bearing copyright protected artwork, which were manufactured and sold outside the United States, from entering the United States and competing with the identical products authorized to be distributed here.

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U.S. District Court in Michigan Grants Collen IP's Motion to Transfer Case to NDNY
Collen IP's client, an automobile recycling facility located in upstate New York, was sued by an automobile manufacturer for using the manufacturer's trademark in connection with its dismantling of the vehicles and selling the used parts to the relevant public. Plaintiffs filed suit in Federal Court sitting in Michigan, where the plaintiffs' headquarters are located, and in which they claimed the injury took place. The Court granted Collen IP's motion to transfer the litigation to the Northern District of New York pursuant to 28 U.S.C. § 1404(a), finding the Northern District of New York to be the more convenient forum for Collen IP's client.

See Published Decision at: Audi AG v. Shokan Coachworks, Inc., 2007 U.S. Dist. LEXIS 10054 (E.D. Mich. 2007)

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Nevada Court Strikes Plaintiffs' Amended Complaint as well as Plaintiffs' Supplement to their Amended Complaint
District Court granted Collen IP's motion to strike the plaintiff's first amended complaint to add a new party and to add a claim for infringement of right of publicity under Nev. Rev. Stat. § 597.800 et seq., as well as plaintiffs' supplement to the motion for leave to amend the complaint to add a new party.

See Published Decision at: Fifty-Six Hope Rd. Music, Ltd. v. Mayah Collections, Inc., 2007 U.S. Dist. LEXIS 35034 (D. Nev. 2007)

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Nevada Court holds that Plaintiffs' Objections to Defendants' Discovery Requests are Deemed Waived
Nevada District Court grants Collen IP's motion to compel and holds that Plaintiffs' Objections to Defendants' discovery requests are deemed waived, and Plaintiffs must account for all communications between attorney and clients.

Nevada Court held that in light of hundreds or thousands of allegedly privileged documents, Court does not require a privilege log, but compels Plaintiffs' counsel to submit a declaration under oath which states and describes the following:
(1) That Plaintiffs have made a diligent and good faith effort to locate and produce all relevant and non-privileged documents, including emails, responsive to Defendant's requests.

(2) The number, or a reasonable estimate of the number, of the privileged email communications that exist.

(3) That Plaintiffs have reviewed the alleged attorney-client or work-product privileged emails to ensure that relevant, non-privileged email communications are not being withheld from production and that Plaintiffs' counsel verifies that no arguably non-privileged email communications are being withheld.

(4) In the case of emails as to which the attorney-client privilege is claimed, the affidavit or declaration should include a verification that the emails were not provided to persons other than the client and attorney. If such communications were provided to non-clients, and the attorney-client privileged is still claimed, then a privilege log consistent with Diamond State for each such communication should be provided.

(5) In the case of attorney-work product, the privilege may extend to persons other than the attorneys or the client, such as investigators. To the extent any attorney work-product emails have been provided to persons other than the attorneys or the client, an appropriate privilege log consistent with Diamond State should be produced for each such communication and an explanation provided as to why the work-product privilege applies.

Court denied Plaintiffs' request to shift costs of reviewing and preparing declaration of privileged documents to Defendants.
See Published Decision at: Fifty-Six Hope Rd. Music, Ltd. v. Mayah Collections, Inc., 2007 U.S. Dist. LEXIS 43012 (D. Nev. 2007)

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Collen IP Obtains Emergency Preliminary Injunction Withdrawing Its Client's Sponsorship of a Concert at Radio City Music Hall
One of Collen IP's clients agreed to be a corporate sponsor of the 2007 Chinese New Year Spectacular at Radio City Music Hall. After receiving information that the promoters of the concert were using the event to pursue a political agenda and just days before the beginning of opening night, Collen IP's client withdrew its sponsorship of the event and affiliation with the organization. The promoters continued to boast its sponsorship of the event and to use Collen IP's client's trademarks in its advertising.

Collen IP filed an emergency lawsuit, complaint, and request for a temporary restraining order in the U. S. District Court for the Southern District of New York. Notwithstanding that its client agreed to sponsor the event, the Court found that it had the right to control use of its trademark and trade name, and enjoined the defendants from continued use of the mark.

The Swatch Group (U.S.) Inc. v. New Tang Dynasty TV (NTDTV), SDNY Action No. 07-CV-404.

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Collen IP Obtains Summary Judgment for Client for Unlawful Importation of Gray Market Watches Pursuant to Section 602(a) of the Copyright Act
The United States District Court for the Southern District of Florida granted summary judgment in favor of Collen IP's client finding that defendant's unauthorized importation and sale of gray market watches violated the Section 602(a) of the Copyright Act. Because the wristwatches at issue here were manufactured and first sold abroad, the District Court held that the Supreme Court's precedent in Quality King did not protect defendant from violating § 602(a) by unauthorized importation. Quality King v. L'Anza, 523 U.S. 135 (1998). Under Section 602(a), Collen IP's client had the right to prevent these products from entering the United States and competing with the identical products authorized to be distributed here. Expressly rejecting defendant's Section 109(a) first sale argument, the District Court granted summary judgment in favor of plaintiffs. See Published Decision at: Swatch S.A. v. New City Inc., 454 F. Supp. 2d 1245, 1254-1255 (S.D. Fla. 2006)

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Collen IP Obtains Order of Seizure, Temporary Restraining Order and Injunction Against Counterfeit Sales of Curry Powder
Collen IP filed suit on behalf of its client, a curry powder manufacturer, alleging trademark infringement, trademark counterfeiting, false designation of origin, false advertising, trademark dilution and unfair competition by defendant curry powder sellers, in violation of 15 U.S.C.S. §§ 1114 and 1125(a). Collen IP obtained an order of seizure, temporary restraining order and permanent injunction against defendant's sales of counterfeit curry powder. Collen IP, with the assistance of the United States Marshalls Service, successfully seized over 22,000 units of counterfeit curry powder, and further obtained a notice of recall of all outstanding counterfeit powder in the retail market. See Published Decision at: Edward B. Beharry & Co. v. Bedessee Imps., Inc., 2006 U.S. Dist. LEXIS 79332 (D.N.Y. 2006)

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Collen IP Successfully Enforces Settlement Agreement and Recovers Judgment Totaling Approximately $500,000, Plus Attorney's Fees and Costs for Client
COLLEN IP filed a lawsuit in Federal Court against an oil exploration company for misrepresenting the background and qualifications of its principals, exaggerating its profits, and misrepresenting its production forecast. The lawsuit charged the company with securities fraud which divested COLLEN IP's client of approximately $500,000.

COLLEN IP successfully avoided an arbitration clause in the investment agreement, removed an ancillary state court action and consolidated all matters before the United States District Court for the Eastern District of Tennessee. At the initial hearing on the matter, the parties settled the case for nearly the entire amount of the lost investment funds.

Following the settlement, however, the defendants did not pay. COLLEN IP brought summary proceedings to accelerate payment of the settlement, impose financial penalties for failure to pay, and enforce the entire agreement. These proceedings resulted in a judgment granting the entire amount to COLLEN IP's client.

While granting COLLEN IP's subsequent motion for its attorneys' fees, the Court held, "[i]n the present case, while the plaintiff did not obtain all of the relief it requested, it did recover over 90% of the damages originally claimed. Accordingly, the Court finds that the plaintiff achieved excellent results in this case." See Published Decision at: Neft, LLC v. Border States Energy, LLC, 2006 U.S. Dist. LEXIS 68755, 19-20 (E.D. Tenn. 2006)

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Patent Infringement: Collen IP Gains Order Compelling Production of Documents and Deposition Testimony of Defendant's Former Trial Counsel
July 2003 - Magistrate Judge Peggy Leen of the United States District Court for the District of Nevada, granted Plaintiffs' motion to compel deposition testimony and the production of documents in a patent infringement case. Defendant was ordered to produce former trial counsel's entire litigation files. The plaintiff was represented by the New York based intellectual property firm Collen IP.

In a case brought by Collen IP on behalf of an eyewear manufacturer, the defendant elected to rely on the verbal opinion of its former trial counsel in defense of willful infringement. The Plaintiff obtained an order compelling the production of former trial counsel's entire litigation file and secured rights to take further deposition testimony. The defendant's former trial counsel had obeyed previous instructions not to answer by asserting attorney-client privilege, work-product privilege, and immunity from discovery because the information and material was prepared in anticipation of litigation. The defendant attempted to limit the waiver of attorney-client privilege to only that which was actually communicated to the client – the problem in this case was that former counsel did not put anything in writing and could not recall what he had told the client. Collen IP argued that the privilege, if waived, was waived entirely.

According to the Court's Order: "[Defendant] designated its former litigation counsel as an expert witness. The opinions on which [defendant] intends to rely were not reduced to writing and are oral. [Former trial counsel] has been deposed and was unable to recall with any specificity what he reviewed, when he reviewed it, what he discussed with the client, and what his opinions were based on. The majority of [his] deposition testimony was conclusory and unsupported by specifics. Under these circumstances, the court finds defendant has waived the work-product immunity for [former trial counsel's] file on the subject matter of the asserted defense, that is, evidence relating to willfulness, infringement, validity, and/or enforceability of the Patents-in-suit."

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