Weintraub Tobin and Moss Adams are co-sponsoring the LAVA Digital Media Group’s panel discussion: “What’s Ahead for Digital Media in 2013” on Tuesday, February 26.

Making predictions in digital media can be challenging. At this time last year who even knew what Pinterest was, let alone that it would explode in popularity. Our panel will talk about what they see as being in store for 2013 and what opportunities might exist for L.A. Technology companies.

Featured Speakers include Jake Winett, Vice President, Consumer Services | Digital Strategy & Innovation | Sony Pictures Home Entertainment, and Keyvan Peymani Head of Digital Strategies Division, ICM Partners.

The event takes place from 6:30-9 p.m., Tuesday, February 26th at ROC, 604 Arizona Street in Santa Monica. For more information, contact Lee Lanzi at len@lava.org or visit www.lava.org

By Nathan Geronimo

In order to establish a claim for copyright infringement, a party must establish two essential elements: (1) ownership of a valid copyright; and (2) copying of original elements of the work.  Additionally, registration of a copyright is a prerequisite for filing a claim for copyright infringement.  To register a copyright, the owner of a copyright must submit to the Copyright Office an application for registration, and the registration fee.  Once the application is processed, the Copyright Office will issue a Certificate of Registration. 

What is evidence of registration for purposes of bringing an infringement claim?  There is a split in case law regarding whether one must simply apply for registration, or whether one must actually receive the certificate of registration from the Copyright Office.  In some cases, proof of application to register a copyright, plus proof of payment of the required fee will suffice.  In others, a certificate of registration may be required.  (If a copyright claim is registered within five years of the first publication of the work, the certificate of registration is also preliminary evidence of ownership of the copyright, the first element to an infringement claim.)  Despite this split in authority, there is some clarity regarding proof of registration.  A recent federal case reiterates and discusses the rule that a certificate of recordation alone will not suffice to demonstrate registration. 

Continue Reading Copyright Infringement Considerations: Proof of Registration

By Dale Campbell

The United States Supreme Court issued a ruling in January 2013 clarifying the application of the Voluntary Cessation Doctrine in trademark actions. The case is entitled Already LLC, dba Yums v. Nike, Inc., 184 L.Ed.2d 553 and 2013 LEXIS 602. The Supreme Court’s decision provides important practical guidance for all practitioners.

The Voluntary Cessation Doctrine is founded upon United States Constitution Article III’s requirement of a “case” or “controversy.” The case becomes moot when there are no longer live issues to resolve.

Nike originally sued Already, a competing footwear company, for alleged infringement of Nike’s trademark related to Nike’s Air Force 1® shoe. This infringement claim did not involve the famous Nike “swoosh.” Already filed a counterclaim, contending that the Air Force 1® trademark is invalid. Months after Nike originally sued, it issued a “Covenant Not to Sue” letter to Already and then filed a motion to dismiss its complaint with prejudice and to dismiss Already’s counterclaim without prejudice on the ground that the Covenant Not to Sue had extinguished any existing case or controversy.

Continue Reading The Voluntary Cessation Doctrine: An Escape from Troublesome Litigation?

Most of us have become familiar with the terms and conditions printed on the back of the ticket that is obtained when parking our cars in public lots. We all are familiar with the caption at the top of the ticket proclaiming “This contract limits our liability, please read it.”  Having parked my car hundreds of times in public parking lots, each time receiving a small ticket informing me of this proclamation, I now scandalously admit that I have never read these terms. Yet, if a dispute were to ensue regarding the terms and conditions of my use of public parking, the dispute would likely center around the terms and conditions that I have carelessly ignored in cavalier fashion. While I’m not suggesting that we review, analyze, revise and negotiate the boilerplate terms thrust upon us in the context of public parking, I mention this frequently overlooked contract relationship to demonstrate that we often may enter into contracts with others, while giving little thought or consideration to the terms we have accepted.

Continue Reading This Contract May Cause You Unlimited Liability – Please Read It

By Scott Hervey

Licensing attorneys should take note of the recent decision by the Central District of California in Jason Bitzer v. Body Glove Int’l et al. In this case, Body Glove licensed its trademark to Sport Dimension who manufactures bodyboards. Sports Dimension allegedly had the permission to use the likeness of professional bodyboarder Jason Bitzer on merchandise, including bodyboards. Body Glove separately had a sponsorship agreement with Bitzer which gave Body Glove the right to use Bitzer’s likeness in certain circumstances. Sport Dimension manufactured bodyboards containing Bitzer’s image and Body Glove’s trademark. Body Glove now faces potential liability for the alleged misappropriation of Bitzer’s likeness due to its use on the bodyboards.

Sports Dimension argues that it entered into an agreement with Bitzer to have Bitzer promote Sport Dimension products as a sales representative, and this agreement gave it the right to use Bitzer’s image on various Sport Dimension products such as bodyboards. Sport Dimension claimed that this agreement included the Body Glove branded bodyboards. Bitzer claimed that the agreement did not grant Sport Dimension that right and that Sport Dimension and Body Glove violated California Civil Code Section 3344.

Continue Reading Licensor Can Potentially Be Liable for Licensee’s Misappropriation of Third Party Athlete’s Likeness