Michael Atkins’ Seattle Trademark Lawyer blog posted today (link here) about a trademark infringement victory for Las Vegas’ favorite personal injury lawyer, Glen Lerner.
The Ninth Circuit Court of Appeals affirmed a Nevada District Court decision awarding Lerner $124, 375 in attorney’s fees for the willful infringement of Lerner’s “ONE CALL. THAT’S ALL” slogan as well as infringement of Lerner’s copyrights. See Invision Production & Media Services, Inc. v. Glen J. Lerner Legal Services, No. 07-15778 (9th Cir. March 24, 2009) (unpublished).
While the Ninth Circuit previously affirmed the fees under copyright law, the Ninth Circuit remanded the case back to the district court for additional explanation by the court of the fees awarded under trademark law as well as a breakdown of what fees were for copyright infringement and what were for trademark infringement. The district court, on remand, was much more specific about its conclusion that the case was “exceptional” for purposes of award attorneys fees under the Lanham Act (15 U.S.C. 1117(a)). The district court also allocated 60 percent of the fees to the trademark issues and 40 percent to the copyright issue.
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Those attorneys fees should come in handy in Lerner’s other trademark battle over his other well-known slogan “HEAVY HITTER” (previously blogged here). One interesting parallel between Lerner’s battle with Invision over “ONE CALL. THAT’S ALL” and his battle with Richard Sackett and LawCo USA, PLLC over “HEAVY HITTER” is the “naked license” argument. Invision had tried to argue that Lerner’s use of the “ONE CALL-THAT’S ALL” mark pursuant to a license agreement with the prior owner of the mark (before it was assigned to Invision) inured to Invision’s benefit – an argument that Invision lost because Invision could not show that it exerted any control over the quality of services provided under the mark – a prerequisite for a licensee’s use of a mark to inure to the licensor’s benefit. See Bancamerica Int’l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 595 (9th Cir. 2002). In Lerner’s lawsuit against Sackett and LawCo, Lerner also argued that the license agreement he had with the owner of the “Heavy Hitters” mark was a naked license because the licensor failed to exercise any control over the quality of Lerner’s legal services., N.Y. – personal injury attorneys James Alexander and Peter Catalano, who have long promoted themselves in TV ads as “The Heavy Hitters, ” have parted ways.
“He (Alexander) likes to do things his way and I like to do things my way, ” he said. Catalano declined to be more specific.
Alexander said Catalano decided to give up his position at the firm and strike out on his own. He declined to say why Catalano left.
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Alexander said he will continue to run the firm. “It’s the same legal business, he said. Alexander said Catalano’s two brothers still work for him. One works in accounting and the other is a paralegal.
The two lawyers, known for their steady stream of TV ads, worked together 23 years. Catalano said they are still friends. “I wish him the best of luck, ” he said.
Alexander and Catalano bombarded TV at all hours with their ads. The commercials were theatrical and humorous. The two lawyers appeared in the ads dressed as cowboys, baseball players and other characters. In one ad, Catalano fell from a tall building under construction, waving his arms before landing on his feet. In another ad, he slipped and fell in a shopping mall. One ad showed the lawyers offering counsel to space aliens who had crashed their UFO.
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In 2010, Alexander successfully challenged an effort by state judges to restrict the content of lawyers’ commercials. Court officials had said his law firm’s ads contained “patent falsities.” But the Second Circuit Court of Appeals ruled that restrictions on legal advertising were unconstitutional.
Alexander, 61, has specialized in representing personal injury victims in claims arising from motor vehicle crashes, general negligence claims and construction accidents for more than 30 years.
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Heavy Hitter' Darryl Isaacs Seeks $4.5m In Bike Accident
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In 2010, Alexander successfully challenged an effort by state judges to restrict the content of lawyers’ commercials. Court officials had said his law firm’s ads contained “patent falsities.” But the Second Circuit Court of Appeals ruled that restrictions on legal advertising were unconstitutional.
Alexander, 61, has specialized in representing personal injury victims in claims arising from motor vehicle crashes, general negligence claims and construction accidents for more than 30 years.
Thanks for visiting . Quality local journalism has never been more important, and your subscription matters. Not a subscriber yet? Please consider supporting our work.
Heavy Hitter' Darryl Isaacs Seeks $4.5m In Bike Accident
If you purchase a product or register for an account through one of the links on our site, we may receive compensation.
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