The suit is brought by Sol Puerto Rico Limited, the company that owns the licenses to the Shell (Gasoline) trademarks in Puerto Rico. Essentially, defendant was a franchisee who violated (allegedly) the agreement and thus, defaulted on the same. Defendant continued using the Shell trademark, and besides a slew of breach of contract claims, garnered himself a trademark infringement claim.

Below is the complaint, sans exhibits (which totaled over 100 pages).

Sol v. Guiliani Toro

According to the complaint, Plaintiff (and senior user) Batey Zipline runs a, you guessed it, zipline and tourism company here in Puerto Rico. Plaintiff registered his mark and trade dress before the USPTO and owns a property where they bring their customers to zip and ride around the trees. Defendant, Atabey, (allegedly) used plaintiff’s land without permission, posted content on Facebook regarding plaintiff’s services and land, and used a similar trade name (Batey, which is a Taino word referring to a plaza).

Plaintiff requests injunctive relief, and alleges trademark/dress infringement, false advertising, product disparagement, libel (under the Puerto Rico Civil Code) and a general tort claim.

Below is the complaint, what do you think?

Batey Zipline v. Atabey

Which side of the Court do you agree with? Chime in below!

Golan v Holder 10-545

No license or contract agreements seems to have been signed by the parties, giving the impression that OmniPress did not have a license or right to engage in the unauthorized reproduction or distribution as alleged in the Complaint.

We’ll see what defenses OmniPress raises once it enters its answer to the complaint, but this case underscores something we have repeated many times: Always get a license (in writing)!

Here is the complaint:

Delgado v Omnipress PRD

Dize resorted to tweet about a new production with another studio, in (alleged) violation of the contract with Pina. Pina has a copyright claim against Dize stemming from the works produced under the contract. The case has some entertainment law, copyright law, breach of contract and a good old ‘monies collection.

Hit the link below to see the complaint.

Rafael Pina v Tony Diez

After one too many motions of appearance, pro hac vice, and motions for extension of time to answer the complaint, someone finally filed a juicy motion. Defendants Microsoft Corporation, Hewlett-Packard Company, EMC Corporation, Nuxeo Corporation, Informatica Corporation, Oracle Corporation, SAP America, Inc., and Lexmark International, Inc, appearing jointly, filed a lengthy motion to dismiss pursuant to R. 12(b)(6), and in light of the Supreme Court’s rulings in Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009), and Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007).

Below is the motion, and as soon as a response is entered, we’ll post it!

Update 12/28/2011: Several defendant’s filed motions to dismiss. This week, Ingeniador filed three lengthy motions in opposition to motions to dismiss. Here are Ingeniador’s motions in response [Response 1, Response 2 and Response 3]

Joint Motion to Dismiss – Ingeniador

The trademark formerly known as Walter

Puerto Rico astrologist, and general hair entrepreneur, Walter Mercado just suffered another blow in his trademark battle with his former business partner, Bart Enterprises.  In short, Mercado had assigned his trademark and likeness to Bart Enterprises in the mid-90′s. Said assignment was in perpetuity unless the contract was validly terminated (according to the courts, it was not). Following a Florida based litigation, Mercado was found in breach of his contract, and thus, Bart kept the rights to the trademark “Walter Mercado”. The 1st Circuit affirmed the District Court of Puerto Rico’s decision to issue a preliminary injunction against the real Walter Mercado for the use of his trademark in the course of his business.

The Opinion is below, but there are two passages worth quoting. The first one is the Court’s decision regarding whether or not the Ebay-Irreparable Harm presumption applies in trademark cases:

Although eBay dealt with the Patent Act and with permanent injunctive relief, we have stated that “the traditional equitable principles discussed by the Supreme Court in eBay apply” in trademark infringement cases where preliminary injunctive relief is sought. Voice of the Arab World, 645 F.3d at 31 (concluding that the principles of eBay applied to a request to preliminarily enjoin alleged trademark infringement, but declining to decide whether such principles precluded a presumption of irreparable harm). We need not decide here whether eBay precludes a presumption of irreparable harm because Bart has demonstrated enough irreparable harm that the district court did not abuse its discretion in granting the preliminary injunction. In any event, Mercado has not challenged the district court’s finding of irreparable harm, so this argument is waived.

The second point is how the Court summarizes the extent as to which Mercado can, and cannot use, his name:

Mercado argues that the preliminary injunction is in error because it potentially prevents him from using his personal name. However, “[t]here is no doubt that a personal name used as a trademark may be expressly assigned to another along with the goodwill symbolized by the mark.” 3 McCarthy on Trademarks and Unfair Competition § 18:32 (4th ed. 2011). “If a person has sold a business which is identified by his personal name, the name is an asset which he has sold, and he cannot keep commercial control of the name and keep the purchase price too. Of course, the seller can use his own name to identify himself, but he has sold the right to use the name as a commercial symbol — a trademark.” Id. (footnote omitted).

Below is the full opinion, what’s your take?

Walter Mercado v. Bart

A continuación le proveemos el proyecto de ley, según aprobado, con los cambios que se le hicieron desde que el mismo se radicó. El proyecto pasa ahora a la Camara el cual se recomienda que se apruebe sin enmiendas adicionales.

Proyecto de Derechos Morales

Although Teachbook pointed to language on its site that it argued distinguished the site from Facebook – by referencing the fact that some schools forbid teachers to use Facebook – Judge Aspen said that teachers might think Teachbook is Facebook’s response to such actions.

“In light of such policies, a reasonable consumer might assume that Facebook was offering social networking services targeted specifically at teachers and addressing the privacy concerns at which the schools’ policies are apparently aimed. The same consumer might further assume that Facebook, in order to draw on its famous name, decided to call that service Teachbook,” he wrote, refusing to dismiss the suit.

The people at Mannatt Phelps & Phillip have posted the opinion, which you can read here.

Puerto Rico Trade Secrets Act