Archives for posts with tag: trademark

This opinion is about discovery in an infringement case involving POWERWHEELS, Dora the Explorer, Spider-Man, Strawberry Shortcake and Ninja – under the ‘Lil Quad and PowerQuad marks.

dora explorer powerquad spider man powerquad

MATTEL, INC.,
and FISHER-PRICE, INC., Plaintiffs,
v.
RAND INTERNATIONAL LEISURE PRODUCTS, LTD., Defendant.

UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NEW YORK
06CV807A
2008 U.S. Dist. LEXIS 89439

Decided November 4, 2008, Opinion by: Honorable Hugh B. Scott, United States Magistrate Judge:

This is a trademark and copyright infringement and common law unfair competition action regarding toy ride-on quad vehicles. The plaintiffs claim trade dress infringement and copyright infringement of their “‘LIL QUAD” battery powered ride-on quad vehicles under their POWERWHEELS(R) brand, bearing the Nickelodeon channel characters Dora the Explorer and Diego. Plaintiffs allege that defendant’s “POWER QUAD” bearing the indicia of Marvel Comics’ Spider-Man infringes on their ‘LIL QUAD design and claims that defendant has been selling these infringing ‘LIL QUAD toys since 2006. (See Docket No. 29, Pls. Memo. at 2; see generally Docket No. 1, Compl.)

On October 30, 2007, plaintiffs served their Interrogatories and requests for production (id. at 3; Docket No. 29, Kane Decl. P 2, Exs. A (Interrogatories), B (requests for production)). After over three months (including repeated requests for a response), defendant served plaintiff with its discovery responses (Docket No. 29, Pls. Memo. at 3; Docket No. 29, Kane Decl. PP 3-4, 5, Exs. C, D, E (Interrogatory responses), F (document production responses)). On February 15, 2008, plaintiffs wrote to defendant about the deficiencies in defendant’s production, outlining several non-responsive Interrogatory responses and categories of documents not produced (id.; Docket No. 29, Kane Decl. P 6, Ex. G).

Defendant basically responded with information about the Spider-Man POWER QUAD. Plaintiffs allege that defendant infringes on their LIL QUAD mark with other toys (for example POWER QUAD toys with Strawberry Shortcake, Ninja, and Marvel Heroes trade dress) and defendant thus needs to supplement its production as to these other toys (see Docket No. 29, Kane Decl., Ex. G, at 1-3). Interrogatory Number 8 sought defendant to identify which part of the LIL QUAD design was functional or otherwise not protectable by copyrights, but defendant objected that it was premature since it had not examined plaintiffs’ products (Docket No. 29, Kane Decl., Ex. A, Interrog. No. 8; Docket No. 29, Kane Decl., Ex. G at 3-4). Plaintiffs sought documents regarding defendant’s distribution of the POWER QUAD toys, the costs to produce, documents regarding adverting and marketing of these toys, and communications with retailers about advertising and about this action (Docket No. 29, Kane Decl., Ex. G, at 4-5).

Plaintiff’s motions are granted in part and denied in part. The granted motions are about packaging materials and access to employees responsible for packaging materials.

This 1997 Federal Court opinion involved multiple major Hollywood movie companies suing a video rental company for copyright infringement. The movie “3 Ninjas Knuckle Up”, copyright held by Columbia Tristar, is listed as involved in the litigation.

video city

COLUMBIA PICTURES INDUSTRIES, INC.; BUENA VISTA PICTURES DISTRIBUTION, INC.; DISNEY ENTERPRISES, INC.; METRO-GOLDWYN-MAYER PICTURES, INC.; PARAMOUNT PICTURES CORPORATION; TRISTAR PICTURES, INC.; TWENTIETH CENTURY FOX FILM CORPORATION; UNITED ARTISTS PICTURES, INC.; UNIVERSAL CITY STUDIOS, INC.; WARNER BROS., A Division of TIME WARNER ENTERTAINMENT COMPANY, L.P.; COLUMBIA TRISTAR HOME VIDEO; LIVE HOME VIDEO, INC. (LIVE AMERICA INC.); TWENTIETH CENTURY FOX HOME ENTERTAINMENT, INC., Plaintiffs,
v.
DOMINGO LANDA, individually and d/b/a VIDEO CITY and MOVIE TRAK; JASON FRANK, individually and d/b/a TAKE TWO VIDEO; and SYED AHMED, individually and d/b/a VIDEO CITY, Defendants.


Columbia v. Landa
Case No. 96-1340
UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF ILLINOIS
974 F. Supp. 1

Decided – June 26, 1997

Judge Joe Billy McDade writing for the Court explains:

Plaintiffs, numerous motion picture producers and distributors, filed this action against Defendants, three movie rental store owners, on July 11, 1996. The named Defendants include Domingo Landa, d/b/a VIDEO CITY and MOVIE TRAK, Jason Frank, d/b/a TAKE TWO VIDEO, and Syed Ahmed, d/b/a VIDEO CITY. 1 Plaintiffs Amended Complaint [Doc. # 33] alleges that Defendants illegally duplicated and distributed motion picture videocassettes in violation of 17 U.S.C. § 106 (Copyright Infringement) and 5 U.S.C. § 1125(a) (Trademark Infringement).

An extensive array of movies videocassettes were seized from the defendants, and “3 Ninjas Knuckle Up” appears first in the list because the number three is first alphabetically.

The Court, granting Plaintiff’s motion for Summary Judgment, finds that there was copying and orders damages and permanent injunction relief. Interesting, despite finding that Defendant’s “illegal activity” was “pervasive” and with “total disregard for copyright law”, there is no finding as to willful infringement. Such a finding could have increased the liability tremendously but:

In the instant action, Plaintiffs do not seek a finding that the infringing acts of Defendants were willful. (See Doc. # 61 at p. 8). Rather, Plaintiffs insist that an award against Landa and Frank in the amount of $ 1,000 per infringement is just and proper.

The Court agrees, and so with 207 infringing video cassettes, the defendants owe $207.000. And in 1997, I am sure that sounded like a huge award for a copyright case.

But contrast with the future (err. the present), the more recent cases, where similar Plaintiffs have taken a more aggressive position on digital content. For example see Sony BMG v. Tenenbaum and of course, the prosecution of NinjaVideo.

In this 1996 case Topps sued to protect its product, the Ring Pop, from competition. One of the reasons it won was because of the substantial advertising to non-sophisticated purchasers (kids), by means of cartoons. And so of course again, appearing somewhat unnecessarily in a Federal Court opinion, the Teenage Mutant Ninja Turtles.

ring pops

THE TOPPS COMPANY, INC., Plaintiff, – against – GERRIT J. VERBURG CO. and B.I.P. HOLLAND B.V., Defendants.
96 Civ. 7302 (RWS)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
1996 U.S. Dist. LEXIS 18556; 41 U.S.P.Q.2D (BNA) 1412

December 12, 1996, Decided

The Court explains:

During the mid-1970’s, Topps developed the product for which it now seeks protection, the Ring Pop lollipop. It is comprised of a candy portion in the shape of a solitaire jewel, supported by a plastic base portion in the form of a stylized, or “play,” ring. The Ring Pop is held by inserting a finger through the ring, and the candy is then licked.

In 1975, Topps filed patent applications in the U.S. Patent Office on the “inventive” ornamental design for a diamond gemstone ring candy and was awarded two patents, Nos. Des. 242,646 and Des. 242,645 on December 7, 1976. These patents expired on December 7, 1990, but reference to them continues to appear on the Topps’ packaging.

On June 1, 1976 a trademark was registered for Ring Pop by Topps and on July 26, 1994 a trademark was issued consisting of “a candy portion in the configuration of a jewel mounted on a stylized ring.”

The Court continues explaining the high volume of sales and about

Topps’ advertisements on broadcast television during the past ten years of the Ring Pop emphasized the configuration of the product during children’s programming on well-known, popular programs, such as Tom & Jerry Cartoons, Teenage Mutant Ninja Turtles, and Power Rangers, shows specifically aimed at the children for whom the Ring Pop candies were conceived. The buyers of these products are not sophisticated purchasers.

Because the Court will rely on a likelihood of confusion analysis for the trademark infringement claims, the fact that the competing candy products “are expressly intended to be consumed by children” is important. The Court also notes other deceptive aspects of defendant’s packaging and that it “fails to meet the requirements set by regulations” of the US FDA as to nutritional labeling.

Though the competing product has been available in Hong Kong for as long or longer than the Topps Ring Pop product, and despite the expiration of Topps patent, trademark still protects the Ring Pop.

There is no inherent conflict between trademark rights under the Lanham Act and patent rights. Because the Lanham Act and the patent statute are both federal statutes, there is no preemption. A product can be both patentable and protected by trademark rights as long as the particular design protected does not have a utilitarian function.

Therefore, deciding the Ring Pop is not a functional design, the Court ordered a preliminary injunction. And in a subsequent motion decision, (April 28, 1997, 961 F.Supp. 88) the claims against defendant-manufacturer from Hong Kong were dismissed for lack of personal jurisdiction, leaving only the claim against the US distributor (which I assume was probably settled out of court..?).

Meanwhile, it seems a new relative of this case is coming back to the Courts. A false marketing claim was filed in May 2011, alleging Topps is violating marketing laws by continuing to list the patent numbers on Ring Pop packaging after the patents expired. See “Ring Pops: A Fun Way to Teach Your Kids about False Patent Marking” posted by Travis Burchart, Jun 2011 The complaint alleges that each Ring Pop sold violates marketing laws and if the Court agrees, Topps will be liable for a LOT of damages.

Finally, recall, this is not the first time we at NinjaLaw have seen the turtles mentioned unnecessarily and also not the first time mentioned with the Power Rangers. Last time we saw the Turtles team up with the Power Rangers in Federal Court, they served to exemplify the business model of cartoon merchandising. Here they help protect their sponsor Topps (baseball cards and candy and what else?), again implicating the susceptibility of kids to product marketing.


tmnt power rangers animation handshake
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Previous NinjaLaw cases about the Ninja Turtles:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

First mention of Ninja Turtles in F.Ct. where it’s actually about them
Mirage Studios v. Weng et.al. – April 29, 1994

Burger King Kids Club with Mutant Ninja Turtles – multi-ethnic path to Glee and Celebrity Apprentice
CK Company v. Burger King – September 29, 1994

Ninja Turtles again, this time with FASA’s BattleTech, ExoSquad, RoboTech and Playmates
Fasa v. Playmates – June 19, 1995
(WITH POWER RANGERS)

Spam vs Spa’am with Splinter from TMNT and Pumbaa from Lion King
Hormel Foods v. Jim Henson Productions – September 22, 1995

NinjaLaw has already posted about three prior mentions of the Teenage Mutant Ninja Turtles in Federal Court opinions but it was in 1994 that for the first time, a Federal Court opinion was actually involving them as intellectual property in dispute.

MIRAGE STUDIOS, a Massachusetts general partnership, Plaintiff, v. WENG C. YONG, MERRY M. YONG, DENNIS C.M. LOW and DOES 1-5 inclusive, dba TAI FUNG TRADING; et al., Defendants.
No. C-93-2684-VRW
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA
1994 U.S. Dist. LEXIS 5618

The opinion is by Judge Vaughn R. Walker. You may recall he is also the judge who recently ruled that California’a Proposition 22 was unconstitutional in case Perry v. Schwarzenegger about gay marriage case.

Written April 29, 1994:

On July 15, 1993, Mirage Studios (“Mirage”) filed this action for copyright and trademark infringement against a group of thirty-four retailers, distributors and manufacturers, alleging that each of the named defendants has infringed and threatens to further infringe upon Mirage’s copyrighted and trademarked “Teenage Mutant Ninja Turtles.”

I presume this was mostly for infringing tee-shirts. And as is typical, the copyright holder asked for maximum damages, in this case $10,000 but Judge Walker found no evidence of any such actual damages and ordered only $500 per defendant (34×500 is $17,000). Also the Judge ordered attorney’s fees of “$780 in attorney fees and $40 in service costs per defendant” – that $780 is the attorney’s bill of “5.2 hours (at $150 per hour)”.

The Court also chides the defendants who did not answer the complaints suggesting that they could have more easily settled the case in advance, but I wonder because attorney fees to answer could only have increased costs.

So this is the first time TMNT is actually directly involved in a Federal Court opinion. But recall the previous NinjaLaw posts about the prior tangential mentions the characters:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

Don’t worry, there’s more to come too.