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Siegel v. Warner Bros. Entertainment Inc.
542 F. Supp. 2d 1098 (C.D. Cal. 2008).
As part of its continued representation of Time Warner, DC Comics, Warner Bros. Entertainment Inc. and related companies in the ongoing copyright termination litigation between the heirs of Jerome Siegel, one of the co-creators of the first Superman comic strip published in 1938’s Action Comics #1, the firm helped obtain a major ruling further narrowing the scope of the litigation as it heads to a trial later this year. On March 26, 2008, Judge Stephen G. Larson of the U.S. District Court for the Central District of California issued a ruling granting-in-part and denying-in-part the parties’ cross-motions for summary judgment, and setting the stage for a trial in the fall of 2008. Despite the fact that the Court 's holding that plaintiffs, the heirs of Mr. Siegel, had, under Section 304(c) of the Copyright Act, successfully terminated the first grant of rights in Superman – resulting in a recapture of a one-half share of rights to the first Superman comic story and entitling them to an accounting of profits attributable to that story as exploited in new comics, films and other works by the defendants after 1999, the effective date of the termination – the Court made several further rulings limiting the scope of that termination, including denying the plaintiffs the right to recover profits from foreign exploitation of Superman, profits arising from exploitation of pre-1999 Superman derivative works and profits attributable to DC’s famous Superman related trademarks, the first time a court has applied such limiting provisions and exceptions provided for in Section 304(c). The Court also held that a black-and-white depiction of the iconic cover of Action Comics #1 was not subject to termination because it was published outside of the statutory timeframe for serving a termination notice.
Crown Awards, Inc. v. Discount Trophy & Co., Inc.
No. 07 CV 1400 (CM) (S.D.N.Y. March 13, 2008).

Following a trial, the court held that the defendant infringed the copyrights in our client’s popular Spin Trophy, by selling a trophy that court found “strikingly similar” to the Spin Trophy. The judgment permanently enjoins the defendant from selling the infringing trophy and orders it to pay Crown its profits from the infringement.

In July, 2008, the Court granted our motion to recover attorneys' fees. The Court said that Crown and Fross Zelnick "prevailed in every stage of the litigation" and that Crown was entitled to recover its legal fees in full. The Court went on to write that "Fross Zelnick hourly rates for legal services have repeatedly been found to be fair by courts evaluating them," and that "as a result of Fross Zelnick's expertise in the field of copyright law, it does not expend extra time to understand the issues involved in a copyright case, and therefore spends only a reasonable number of hours to litigate the case."
Siegel v. Time Warner, Inc.,
496 F. Supp. 2d 1111 (C.D. Cal. 2007).
The firm was part of the defense team responsible for a major victory for clients Time Warner Inc., Warner Communications, Inc., Warner Bros. Entertainment Inc., Warner Bros. Television Production Inc. and DC Comics, the defendants in the ongoing litigation in the U.S. District Court for the Central District of California over the copyright termination interest in Superman and Superboy characters allegedly owned by the heirs of co-creator Jerry Siegel. On July 27, 2007, the Court granted defendants' motion for reconsideration of its March 23, 2006 ruling that a 1948 decision of the New York State Supreme Court between the parties' predecessors-in-interest determining various claims under state law precluded defendants from asserting several copyright law defenses to the plaintiffs' attempts under section 304(c) of the 1976 Copyright Act, applicable to works created before 1978, to terminate a grant of rights in Superboy. The Court vacated the prior ruling, holding that all such defenses were found to be grounded in copyright law and not subject to any preclusive effect of the 1948 litigation, which involved state law. By its ruling, the court reinstated potentially dispositive defenses that the first Superboy story was (1) a derivative work of Superman containing little new material beyond the idea for depicting the character at age 12, (2) like Superman, a joint work that remains co-owned by DC Comics, and (3) not subject to termination because it was never published so as to be copyrighted before January 1, 1978, and requested supplemental briefing on these issues.
Polar Bear Productions, Inc. v. Timex Corp.,
No. 05-35811, 2007 WL 2193541 (9th Cir. July 31, 2007); 384 F.3d 700 (9th Cir. 2004).
The firm successfully concluded its representation of Timex Corporation in its defense against copyright and trademark infringement claims brought against it by Polar Bear Productions, Inc. In 2002, when our firm first became involved in the case, Polar Bear had been awarded a $2.415 million jury verdict for Timex's copyright infringement of a kayaking video entitled "PaddleQuest." We took over the appeal, and, in 2004, the Ninth Circuit vacated the entire $2.1 million award under Section 504(b) of the Copyright Act of Timex's profits allegedly attributable to the copyright infringement as unduly speculative and cut the damage award from $315,000 to $115,000 on the same grounds. The case was then remanded to the district court on Polar Bear's remaining trademark claims. Upon Timex's motion the court dismissed all of Polar Bear's remaining trademark claims, and Polar Bear appealed the dismissal of its claims to the Ninth Circuit. The Ninth Circuit, in an unpublished opinion dated July 21, 2007, affirmed final dismissal of the case.
Payne v. Anvil Knitwear, Inc.,
No. CV 06-8100 SVW SSX, 2007 WL 1953438 (C.D. Cal. June 27, 2007).
We represented Anvil Knitwear, Inc. in a successful motion for summary judgment dismissing claims for copyright infringement brought by Reva and Lucretia Payne in the U.S. District Court for the Central District of California. The Paynes contended that they owned rights under copyright to certain anvil designs which were infringed by similar designs owned by Anvil. On its motion for summary judgment, Anvil provided the court with incontrovertible evidence that Anvil's designs were created years before the Paynes' designs were created, thus precluding the Paynes from proving a key element of their claim, namely, access by Anvil to the allegedly infringed works. The Court agreed, granting Anvil's motion in its entirety and dismissing the case, as well as awarding a substantial amount of attorneys' fees.
Troll Company A/S v. Uneeda Doll Company, Ltd.,
400 F. Supp. 2d 601 (S.D.N.Y. 2005), aff’d, 483 F.3d 150 (2d Cir. 2007).
In a case of first impression, the U.S. Court of Appeals for the Second Circuit affirmed a preliminary injunction we secured on behalf of Troll Company A/S of Denmark, copyright owner of the famous fuzzy-haired Good Luck Troll doll, preventing distribution of “Wish-nik” dolls by Uneeda Doll Co., Ltd. The U.S. copyright for the Good Luck Troll had been invalidated in 1965, but was resuscitated 30 years later by the Uruguay Round Agreements Act (“URAA”) (codified in Section 104A of the U.S. Copyright Act), which restored copyrights of foreign authors lost for failure to comply with statutory formalities. The Court ruled that Uneeda, which sold Wish-nik dolls when the Good Luck Troll was in the public domain, was not a “reliance party” entitled to notice and a one-year sell-off period under the URAA because there had been “more than trivial interruption” in its sale of the dolls after Troll Co.’s rights were restored.
Overbeck Corp. v. Overbeck GmbH,
No. 03-CV-0844 (DRH) (ETB), 2007 WL 1029025 (E.D.N.Y. Mar. 30, 2007).
The firm prevailed a motion to strike a jury verdict against its clients, the German grinding machine company Overbeck GmbH, its parent, the Spanish cooperative Danobat S. Coop., and its U.S. affiliate Danobat Machine Tool Co., Inc., in the U.S. District Court for the Eastern District of New York. After a full trial, in which plaintiff was forced to drop most of its nine causes of action, and defendants successfully moved in limine to dismiss all of plaintiff’s claims for monetary damages because of its discovery abuses, the jury nevertheless found for plaintiff, a local company. Prior to the verdict, defendants timely moved to strike plaintiff’s jury demand, and they renewed this motion thereafter. The court granted the motion, deeming the jury decision against defendants merely advisory.
Milne v. Stephen Slesinger, Inc.,
430 F.3d 1036 (9th Cir. 2005), cert. denied, 126 S. Ct. 2969 (2006).
In the first judicial treatment of the new termination right enacted in the U.S. Copyright Term Extension Act of 1998, the U.S. Court of Appeals for the Ninth Circuit affirmed the District Court’s decision rejecting an attempt by Disney and Clare Milne to cut off our client Stephen Slesinger, Inc.'s right to receive royalties relating to Winnie the Pooh. The firm also represented Slesinger in successfully opposing Milne's Petition for a Writ of Certiorari filed in the U.S. Supreme Court. In February 2007, we successfully obtained a dismissal for Slesinger of a second termination notice served by the granddaughter of an illustrator of the Pooh works.
Video-Cinema-Films, Inc. v. The Lloyd E. Rigler–Lawrence E. Deutsch Foundation,
No. 04 CV 5332 (S.D.N.Y., Oct. 6, 2006).
We were brought in after the liability phase to represent the defendant in a rare jury trial on statutory damages for copyright infringement. Before we became involved in the case, our client, a nonprofit charitable foundation, was found liable for copyright infringement based on the defendant’s use of a clip from the 1947 movie Carnegie Hall. The plaintiff sought a finding of willful infringement, which would have permitted an award up to $150,000.00. But we persuaded the jury that our client did not act willfully, and the jury awarded only $6,700.00 to the plaintiff. This judgment was cut in half by an award of costs to our client because the judgment did not exceed the Rule 68 Offer of Judgment we made on our client’s behalf immediately upon entering the case.
Creative Arts by Calloway, LLC v. Brooks,
82 U.S.P.Q.2d 1319 (S.D.N.Y. 2007); No. 01 Civ. 3192 (CLB) (S.D.N.Y. Dec. 11, 2001), aff’d, 2002 WL 31303241 (2d Cir. Oct. 11, 2002).
Our firm successfully defended Cab Calloway’s grandson, Christopher Brooks, against multiple attempts by his step-grandmother, her family, and their company to prevent him from performing his grandfather’s music under the name “The Cab Calloway Orchestra.” Most recently, we obtained a dismissal on res judicata grounds of the plaintiffs’ copyright infringement claims against Mr. Brooks for his use of Cab Calloway’s songs. Judge Richard Owen held the claims should have been brought in an action the plaintiffs filed against Mr. Brooks in 2001 concerning use of the CAB CALLOWAY trademark. In the 2001 action, we obtained summary judgment for Mr. Brooks, which was affirmed by the U.S. Court of Appeals for the Second Circuit.
Rhino Entertainment Co. v. DomainSource.com, Inc. and Rhino Entertainment Co. v. Suk Min Jun,
Case Nos. D2006-0968 (WIPO Oct. 18, 2006); Case No. D2006-0948 (WIPO Oct. 25, 2006).
On behalf of Rhino Entertainment and members of the BeeGees music group, we recovered the BEEGEE.COM and BEEGEES.COM domain names in Uniform Domain Name Dispute Resolution Policy (“UDRP”) proceedings, from owners that were using the names for websites linking to BeeGees-related sites (and other sites) of third parties to generate advertising or “click through” revenue for the registrants.
Tea Board of India v. Republic of Tea, Inc.,
Opp. No. 91118587 (T.T.A.B. 2006).
The firm secured a decision in favor of The Tea Board of India, owner of the DARJEELING geographic certification mark for tea, in its opposition against a trademark application for DARJEELING NOUVEAU, covering tea, of Republic of Tea. In a 61-page decision, the Trademark Trial and Appeal Board upheld the opposition and denied Republic of Tea’s counterclaim for cancellation in which it argued that our client’s DARJEELING mark was generic.
De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc.
440 F. Supp. 2d 249 (S.D.N.Y. 2006)
The firm won a trial before the United States District Court for the Southern District of New York on behalf of plaintiffs De Beers LV Limited and De Beers LV Trademark Limited, owners of rights in the famous DE BEERS mark. Calling the DE BEERS mark "one of the most famous brands in the world," the District Court ruled that the defendants' attempt to use the DE BEERS name to sell diamonds over the Internet was "entirely in bad faith" and accordingly found the defendants liable for trademark infringement, trademark dilution and unfair competition.
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
396 F.3d 1369 (Fed. Cir. 2005)
The U.S. Court of Appeals for the Federal Circuit affirmed a successful opposition brought by our client Veuve Clicquot Ponsardin in the Trademark Trial and Appeal Board, in which it claimed that VEUVE ROYALE is confusingly similar to VEUVE CLICQUOT, and held that VEUVE CLICQUOT is a famous mark.
Hogarth v. Edgar Rice Burroughs, Inc.,
342 F.3d 149 (2d. Cir. 2003), cert denied, 72 U.S.L.W. 3465, 3589, 3598 (2004).
The U.S. Court of Appeals for the Second Circuit affirmed the trial decision in favor of Edgar Rice Burroughs, Inc., owner of all rights in the Tarzan character, that two Tarzan books published in 1972 and 1976 illustrated by artist Burne Hogarth are works for hire owned by Burroughs, notwithstanding erroneous registrations stating that Hogarth was the author of the works. Hogarth's estate also unsuccessfully claimed that Edgar Rice Burroughs had licensed the use of the illustrations from the books to Disney for its 1999 animated movie "Tarzan."
DC Comics v. Kryptonite Corp.,
336 F. Supp. 2d 324 (S.D.N.Y. 2004).
We defeated a motion for summary judgment filed by the lock manufacturer Kryptonite Corporation. In ruling for DC Comics, the U.S. District Court for the Southern District of New York held that DC Comics owns strong rights in the KRYPTONITE mark, based upon its consistent use with Superman over the past 60+ years.
Fruit-Ices Corp. v. Coolbrands Int'l, Inc.,
335 F. Supp. 2d 412 (S.D.N.Y. 2004).
We obtained a preliminary injunction against ice cream company CoolBrands on behalf of the firm's client Frozfruit. The U.S. District Court for the Southern District of New York held that Frozfruit was likely to prevail on the merits of its claim that CoolBrands' re-designed packaging for its frozen fruit bar was an infringement of the Frozfruit trade dress.
Alexander v. AOL Time Warner, Inc.,
Case No. 03-CV-114, 2004 WL 1401265 (S.D. Ga. Jun. 18, 2004), aff'd, Case Nos. 04-13626, 04-13850, 2005 WL 1182950 (11th Cir. May 19, 2005).
We obtained summary judgment in the U.S. District Court for the District of Georgia and successfully defended against an appeal in the U.S. Court of Appeals for the Eleventh Circuit on behalf of Kensington Publishing Corp., its principals, and Jerry Speziale in a right of privacy action brought by Paul Lir Alexander, a former cooperating witness for the Drug Enforcement Agency.
Luv N'Care, Ltd. v. Babelito, S.A.,
306 F. Supp. 2d 468 (S.D.N.Y. 2004).
We won a decision in the U.S. District Court for the Southern District of New York dismissing a trade dress infringement claim brought against our firm's client, Babelito, an Argentine manufacturer of products for infants, on the ground that the defendant had not been properly served in the United States.
Market Corner Realty Assoc's, LLC v. CGM-GH LLC,
317 F.Supp.2d 485 (S.D.N.Y. 2004).
We defeated a preliminary injunction motion on behalf of well-known restaurateur Jeffrey Chodorow and his company. The plaintiffs, who operated a neighboring restaurant featuring the Japanese cuisine of chef Tadashi Ono, sought to prevent Chodorow from opening a Japanese restaurant named ONO in the newly opened Hotel Gansevoort in New York City's meatpacking district.
I.M.S. Inquiry Mgmt. Sys., Ltd v. Berkshire Info. Sys., Inc.,
307 F. Supp. 2d 521 (S.D.N.Y. Feb. 23, 2004).
We argued defendant Berkshire Information Systems, Inc.'s successful motion to dismiss the plaintiff's claims under the Copyright Act and the Digital Millennium Copyright Act (DMCA).
Echo Design Group, Inc. v. Zino Davidoff S.A.,
283 F. Supp. 2d 963 (S.D.N.Y. 2003).
We successfully defeated a preliminary injunction motion brought by The Echo Design Group, Inc., a fashion and home accessories manufacturer, against Zino Davidoff S.A., Davidoff & Cie S.A., Davidoff of Geneva (NY), Inc., Coty Inc., and Lancaster Group LLC to prevent the US launch of ECHO DAVIDOFF, a new fragrance line.
Swatch Group (U.S.) Inc. v. Movado Corp.,
01 CV 0286(RLC), 2003 WL 1872656 (S.D.N.Y. Apr. 10, 2003).
We won summary judgment on behalf of Movado in the U.S. District Court for the Southern District of New York on April 9. Swatch alleged that its rights in its VENTURA mark, which it uses under its Hamilton line of watches, were infringed by Movado's use of the mark VENTURE, which Movado uses in connection with its ESQ line of watches.
M&G Elecs. Sales Corp. v. Sony Kabushiki Kaishi,
250 F. Supp. 2d 91 (E.D.N.Y. 2003).
We defeated a motion for a preliminary injunction brought by a Long Island-based electronics company against Sony Electronics in an action involving use of the mark MG in connection with digital copyright management software.
Glow Indus., Inc. v. Lopez,
252 F. Supp. 2d 962 (C.D. Cal. 2002).
On behalf of Jennifer Lopez and Coty Inc. we defeated a motion for a preliminary injunction brought by Glow Industries in the United States District Court for the Central District of California. The motion sought to block the launch of the GLOW BY J.LO fragrance line.
American First Run Studios v. Edgar Rice Burroughs, Inc.,
No. B153518, 2003 WL 1861585 (Cal. App. 2d Dist. Apr 11, 2003).
We successfully defended an appeal in the California Court of Appeal of Edgar Rice Burroughs, Inc.'s lower court victory dismissing the claims of American First Run Studios. American First Run had claimed that Disney's 1994 animated "Tarzan" movie under license from Edgar Rice Burroughs "the owner of all rights in the Tarzan character" was copied from and substantially similar to American First Run's earlier authorized live-action Tarzan television programs, even though the only similarities were the common presence of the pre-existing appearance of Edgar Rice Burroughs's Tarzan character.
Cavalier v. The Jim Henson Co., Inc.,
No. BC 251828 (Cal. Super. Ct. Jan. 5, 2004).
We won summary adjudication on behalf of defendants The Jim Henson Company, Simon & Schuster, Inc. and Viacom Inc. in an idea submission case brought by two individuals in Los Angeles Superior Court.
Wyeth v. Fempro, Inc.,
Opp. No. 91121800 (T.T.A.B. Oct. 20, 2003).
The Trademark Trial and Appeal Board sustained our opposition on behalf of Wyeth to an application to register FEMPRO for use in connection with feminine hygiene products, on the basis that it was confusingly similar to PREMPRO for use in connection with prescription medication to treat symptoms of menopause.