On the heels of New York Fashion Week (#NYFW), Lewis & Lin achieved a victory for our client, Kirat Anand, in a case involving a fashion designer’s liability for alleged copyright infringement. Lewis & Lin’s client, Mr. Anand is the founder and lead designer for the KAS NEW YORK™ fashion label, owned by Dani II, Inc.
Bonita Fabrics, Inc. obtained a default judgment in California against our client, and sought to enforce that judgment in New York. Lewis & Lin filed a motion to dismiss on the grounds that the original California court lacked personal jurisdiction over Mr. Anand because he did not personally conduct any business in California, nor did he or Dani II sell the allegedly infringing garments, or any garments, in California. Judge Robert Sweet of the Southern District of New York agreed with Lewis & Lin on all points and dismissed the case in its entirety.
Copyright litigation is an unfortunate cost of doing business in the fashion industry, as are the tactics employed by lawyers who make a living bringing dubious infringement suits. It is even more unfortunate when such lawyers contact or involve customers in their attempts to extract exorbitant settlement payments.
The decision in the case, Bonita Fabrics, Inc. v. Kirat Anand, an individual, dba KAS New York, 12 Misc. 408 (S.D.N.Y.), can be accessed here.
About Lewis & Lin, LLC:
Lewis & Lin, LLC is an Internet and Intellectual Property law firm based in Brooklyn, New York. The firm’s highly experienced legal team has helped clients worldwide secure their IP rights, as well as anticipate and resolve a diverse range of IP issues. Lewis & Lin’s particular expertise lies in Internet transactions and disputes, including domain name licensing and sale agreements, domain name hijacking claims, Uniform Domain Name Dispute Resolution Policy (UDRP) disputes, and Anti-Cybersquatting Consumer Protection Act (ACPA) litigation. The team also expertly handles licensing agreements, website user agreements, service agreements and privacy policies, as well as Internet-related trademark and copyright litigation. For further information, visit www.ilawco.com.
The U.S. District Court for the Eastern District of New York issued a judgment in favor of our client Millennium TGA, an award-winning producer of online media. Millennium operates 13 internet websites through which it releases entertainment content through subscription-based online services or video-on-demand.
The defendant, Joel Leon, spent several years stealing and redistributing Millennium’s copyrighted works. Mr. Leon used passwords that he hacked or stole from others, and then copied or posted Millennium’s content through blogs and one-click hosting sites. The material that defendant downloaded included full-length movies and photosets that Millennium made available only to paying subscribers.
Lewis & Lin commenced litigation against Leon, seeking damages for copyright infringement and violation of the Computer Fraud and Abuse Act. When defendant failed to answer or otherwise appear in the action, we sought entry of a default against him, and promptly appeared at an inquest hearing before a U.S. Magistrate Judge. Upon our motion, the court awarded both actual copyright damages and damages relating to our client’s investigation of Mr. Leon’s activities. The recommendation of the Magistrate Judge was adopted by U.S. District Judge Margo Brodie, and a judgment was issued. The case is Millennium TGA v. Leon, No. 12 CV 1360 (MKB) (EDNY).
Lewis & Lin obtained another UDRP victory this week, defending the domain name <palace.com> against a complaint filed by the owner of The Palace of Auburn Hills, home to the Detroit Pistons.
The complainant had argued that the domain name was confusingly similar to its registered trademark THE PALACE OF AUBURN HILLS, and its common law rights to the mark PALACE. Complainant further argued that our client lacked rights or legitimate interests to the domain name, and that our client registered and was using the domain name in bad faith.
Lewis & Lin defended the domain dispute on three grounds. First, the domain name <palace.com> was not identical or confusingly similar to a mark the complainant had rights to. Regarding complainant’s federally-registered trademark, its five-word mark combined the generic word “palace” with the geographic modifier “of Auburn Hills,” and therefore obtained distinctiveness only in the combination as registered. Regarding complainant’s allegation that it had common law rights to the term “Palace,” complainant had failed to offer any evidence in support of its claim.
Second, Lewis & Lin pointed out that our client had spent several years prior to learning of the UDRP to prepare to use the domain name in connection with an online gambling business that it was contemplating. Lewis & Lin submitted proof of our client’s actions in creating a website, executing an SEO and marketing strategy, obtaining required licenses, and entering into contracts to develop its business.
Finally, Lewis & Lin argued that the complainant failed to show that our client both registered and used the domain name in bad faith—a required element under the UDRP.
A three-member panel of the World Intellectual Property Organization (“WIPO”) agreed with Lewis & Lin on all three points, ruling for our client, and denying the complaint in its entirety. The full decision is available here.
Lewis & Lin secured a victory for our client today in a case involving an e-commerce site’s liability for misdirected goods. Plaintiff sued our client, a top five Internet daily deal site, for damages resulting from the loss of a shipment of $200,000 worth of flat screen TVs.
Lewis & Lin filed a motion to dismiss on three grounds:
(1) Plaintiff failed to state a claim for breach of contract because, under the Uniform Commercial Code, the Purchase Invoice governing the sale of the TVs was a “shipment” contract, not a “destination” contract, and the risk of loss was borne by the plaintiff;
(2) Plaintiff failed to state a negligence claim because there was no allegation of a legal duty independent of the duty imposed by the contract itself; and
(3) Plaintiff failed to state claims for unjust enrichment or money had and received because those quasi-contract doctrines do not apply where the parties’ obligations are governed by a written contract for the sale of goods.
In a Report and Recommendation adopted by Judge Richard J. Arcara of the U.S. District Court of the Western District of New York, the court agreed with Lewis & Lin’s arguments on all three points. The case is Stampede Presentation Products, Inc. v. Productive Transportation, Inc. et al., No. 12-CV-491A (Sr) (W.D.N.Y.).
Lewis & Lin obtained a victory in a domain name action filed against our client by Comtex News Network over the domain name <Smartrend.com>. Comtex, the complainant, owned the registered trademark rights to the SMARTREND mark and operated the website hosted at <MySmartrend.com>. In its complaint filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), Comtex claimed that our client lacked legitimate interests in the <Smartrend.com> domain name and was using it in bad faith.
Lewis & Lin argued that the instant case was a business dispute and therefore was outside the scope of the UDRP. Our client was hired by Comtex as its Director of Marketing in 2010. As part of his job duties, respondent was requested to purchase and register the <Smartrend.com> domain, and transfer it to the complainant. Comtex, in turn, would compensate respondent for his services and expenses. A dispute arose, and instead of compensating our client, Comtex filed a UDRP action to attempt to gain control of the domain name.
A single-member panel of the National Arbitration Forum agreed with Lewis & Lin. The panel recognized that the instant case was “not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the UDRP was designed to address.” According to the panel, “a dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy.” Thus, the panel ordered that the <Smartrend.com> domain remain with our client.
The case, Comtex News Network, Inc. v. Haney, FA1211001472158 (N.A.F. Jan. 8, 2013), can be accessed here.