Our weekly SoCal IP Institute meeting on Monday, March 2, 2015 will be a discussion of:
Ava Ruha Corporation dba Mother’s Market & Kitchen v. Mother’s Nutritional Center, Inc., Cancellation No. 92056067 (TTAV 1/29/15 (available here). In a precedential TTAB Opinion, Ava petitioned to cancel Mother’s marks “Mother’s” and “Mother’s Nutritional Center” “Retail grocery stores that exclusively feature foods authorized for purchase by pregnant women, new mothers and young children participating in the federal Supplemental Food Program for Women, Infants and Children (WIC)” in International Class 35 based on a likelihood of confusion with and dilution of its registered mark “Mother’s Market & Kitchen” for “Restaurant and grocery services directed toward natural and health products and food preparations” in International Class 42. The Board granted Mother’s motion for summary judgment on its affirmative defense of laches with respect to the dilution claim. The Board found that laches runs from the date the applications for the subject registrations were published for opposition, June 16, 2009. Therefore, based on the August 21, 2012, commencement date of the cancellation actions, it is not subject to genuine
dispute that the length of delay is a little over three years and two months. Petitioner’s “encroachment” arguments did not excuse the delay because the respondent’s registrations clearly contemplated grocery stores.
Donna Corbello v. Thomas Gaetano DeVito et al, Case No. 2:08-cv-00867 (9th Cir. 2/10/15 ) (available here). In a copyright case regarding “The Jersey Boys” musical, The Panel reversed the district court’s court’s summary judgment ruling. In 1988, Woodward entered into an agreement with DeVito to ghostwrite DeVito’s autobiography discussing his involvement in the band called the Four Seasons. In 1991, DeVito registered the work with the Copyright Office under his own name. In 1999, DeVito and Macioci [another band-mate] entered into an agreement with former bandmates, Valli and Gaudio wherein Valli and Gaudio were given the right to develop a musical stage show based on the Four Seasons. Valli and Gaudio entered into an agreement to produce the play in 2004 with a production company, wherein the musical “Jersey Boys” was later produced and opened on Broadway in 2005. In 2006, Corbello, Woodward’s widow and heir discovered DeVito’s copyright and added Woodward as a co-author of the work. Corbello claims that the show is a derivative work of her husband’s autobiography. The trial court held that the 1999 agreement was not an assignment, but an exclusive license and that DeVito’s conduct sufficiently licensed Valli to use the work in developing the play. The Panel reversed and held that the trial court erred in concluding that the work fell outside of the agreement’s use of “biographies” for the purpose of transferring ownership of a copyright interest in the work. The term “biographies” was not ambiguous and the work, on its face, qualified as a “biography.” As a result, the copyright co-owners had to account to one another for any profits earned by exploiting the copyright.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 2, 2015 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.