Mastering Copyright, Trademark & Patent Law The Rossdale Group. Hot Topics in Trademark Law

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1 Mastering Copyright, Trademark & Patent Law The Rossdale Group Hot Topics in Trademark Law Cases Network Automation, Inc. v. Advanced Systems Concepts Inc., 638 F.3d 1137 (9 th Cir. 2011). Where defendant purchased competitor s mark as a search engine keyword, the court concluded that, given the relatively high price of the goods and the labeling of the search results, consumers were unlikely to be confused as to the source of the products; rejecting district court s reliance on the outdated assumption that Internet users on the whole exercise a low degree of care and vacating preliminary injunction.) FPX, LLC v. Google, Inc., 276 F.R.D. 543 (E.D. Tex. 2011) Denying plaintiffs motion for class certification because of the fact-specific inquiries the court would have to evaluate to address [defendants ] affirmative defenses, including fair use of trademarks. Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012) Reversing district court decision and holding that functionality doctrine does not apply in the case of Google AdWords because it is irrelevant whether Google s computer program functions better by use of Rosetta Stone s nonfunctional mark. Jenzabar Inc. v. Long Bow Group Inc., 977 N.E.2d 75, 82 Mass App. Ct. 648 (Mass. App. Ct. Oct. 18, 2012) Affirming grant of summary judgment in favor of defendant film producer where defendant s use of plaintiff s trademark in keyword meta tags was not likely to cause initial interest confusion because parties goods were dissimilar, Jenzabar s product so expensive that consumers would exercise heightened care, and defendant s intent was to provide thirdparty information about plaintiff and disclaimed any affiliation therewith.

2 CollegeSource, Inc. v. AcademyOne, Inc., No. 2:10-cv-03542, 2012 U.S. Dist. LEXIS (E.D. Pa. Oct. 25, 2012) An online educational services company s purchase of a competitor s marks for use as search engine adwords triggering the display of the company s web advertisements did not amount to trademark infringement because the manner in which the marks were used was unlikely to create consumer confusion. Court relied on Ninth Circuit s Network Automation case for analyzing cases of claimed confusion stemming from adword advertising and noted that [m]odern Internet users, particularly ones who are interested in credit distribution in higher education institutions, are not likely to be confused by Internet advertising. AK Metals L.L.C. v. Norman Industrial Material, Inc., No. 3:12-cv-02595, 2013 U.S. Dist. LEXIS (S.D. Cal. Jan. 31, 2013) A business that used a competitor s mark in the text of Google search keyword ads, indicating that the sponsored result was related to the user s search terms, likely did not infringe the competitor s mark. The court denied plaintiff s motion for a preliminary injunction after determining that none of the four factors that the Ninth Circuit identified as being most important in the internet advertising context in Network Automation, Inc. v. Advanced Systems Concepts Inc., 638 F.3d 1137 (9 th Cir. 2011) strength of the mark, evidence of actual confusion, type of goods and degree of care likely to be exercised by the purchaser, and the labeling and appearance of the advertisements and surrounding context on the search results page favored plaintiff. Multi Time Machine, Inc. v. Amazon.com, No. 2:11-cv-09076, 2013 U.S. Dist. LEXIS (C.D. Cal. Feb. 20, 2013) Amazon.com s display of plaintiff s mark as a search term alongside competing products is unlikely to confuse consumers as to the products source; granting summary judgment in favor of Amazon. Page 2

3 Rottier v. Cannon, 828 N.W.2d 876, 346 Wis. 2d 709, 2013 Wisc. App. LEXIS 159 (Wis. Ct. App. Feb. 21, 2013) A law firm that purchased the names of rival law firm s partners as invisible search engine advertising keywords did not use the individuals names in violation of Wisconsin s invasion of privacy statute. Elcometer Inc. v. TQC-USA Inc., E.D.Mich., No. 4:12-cv-14628, 2013 U.S. Dist. LEXIS 51126, 106 U.S.P.Q.2d (BNA) 1588 (E.D. Mich. Apr. 9, 2013) Denying motion to dismiss trademark infringement and contributory trademark infringement claims alleging that Defendants [via authorized distributors] conduct a baitand-switch scheme using Plaintiff s registered trademark, ELCOMETER, as a Google adword to confuse consumers into purchasing defendants competing products). Home Décor Center, Inc. v. Google, Inc., 2:12-cv GW-SH (C.D. Cal. May 9, 2013) Home Décor sued Google, alleging trademark infringement and unfair business practices under California law for selling terms like home décor center to Home Depot for use as keywords in Google s AdWords program. In successfully moving for summary judgment, Google argued and the Court agreed that Home Décor Center was a generic mark; therefore there was no need to analyze whether there was any likelihood of confusion Contacts, Inc. v. Lens.com, Inc., 2013 U.S. App. LEXIS 14368, 2013 WL (10th Cir. July 16, 2013) Tenth Circuit rejected Plaintiff s claim of initial interest confusion and found that the mere purchase of competitor s trademark as a keyword to trigger sponsored links (with the link itself not incorporating such trademark) is unlikely to be deemed trademark infringement, citing Network Automation for principle that a likelihood of confusion should not be inferred in cases of consumers searching for a particular business with a strong mark, when a resulting ad link is clearly labeled and has a name different from the business being searched for. Page 3

4 Allied Interstate LLC v. Kimmel & Silverman, P.C., 2013 U.S. Dist. LEXIS (S.D.N.Y. August 12, 2013) Plaintiff alleged that defendant law firm uses its trademarks in the website s copy, in metatags and in hidden text, and that defendant law firm bought a keyword as a trigger for Google AdWords advertising. Even though the defendant law firm referenced plaintiff s trademark in the ad copy in addition to using it as the trigger, the Court granted defendant a judgment on the pleadings (with leave to amend). InfoStream Grp, Inc. v. Avid Life Media Inc., 109 U.S.P.Q.2d 1512 (C.D. CA November 12, 2013) Plaintiff s keyword advertising allegations were tossed on a motion to dismissed, with the court holding that search engine advertisements that were off to the side of search results and were clearly labeled as ads did not infringe a competitor s trademarks. Auto IES v. Google France, Cour de cassation [Cass.] [Supreme Court for Judicial Matters] com. September 25, 2012 (available in French at Google Inc. s Adwords service does not infringe trademarks if advertisers using those protected marks as keywords avoid confusion with the owner of the protected marks, the Commercial, Financial and Economic Chamber of the Supreme Court of France said. In offering a service allowing, based on key words, the display of sponsored links leading to competitors internet sites, the Google companies did not commit any act of hijacking (or misappropriation) of customers. The decision echoes a landmark 2010 ruling by the European Court of Justice, which found that Google did not violate European Union law by allowing advertisers to purchase keywords corresponding to their competitors trademarks, Google France S.a.r.l. v. Louis Vuitton Malletier S.A., No. C-236/08, E.C.J. March 23, Page 4

5 Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012) Contributory infringement in the online context is viable after Tiffany (NJ) Inc. v. ebay, Inc., 600 F.3d 93 (2d Cir. 2010). The Court noted that the district court committed error by relying too heavily on Tiffany because the Court there did not view the evidence through the lens of summary judgment; rather, Tiffany involved an appeal of judgment rendered after a lengthy bench trial. The Court found that a question of fact existed as to whether Google continued to supply its services to known infringers. The Court, however, found that no question of material fact existed as to plaintiff s allegations of vicarious liability since Rosetta Stone only offered evidence that Google jointly controls the appearance of the ads or sponsored links on Google s search-engine results page, which the Court found is not evidence... that Google acts jointly with any of the advertiser to control the counterfeit ROSETTA STONE products. Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011) The Ninth Circuit found a company that provides web hosting services liable for contributory trademark infringement for hosting websites that sold counterfeit goods. Akanoc Solutions ignored Louis Vuitton repeated notices requesting the removal of listings for infringing items. The Court clarified that the jury instructions were not erroneous because they failed to require the plaintiff to establish that the defendant s conduct was intentional. Rather, the plaintiff only had to prove that the defendant provided [its] services with actual or constructive knowledge that the users of their services were engaging in trademark infringement. Academy of Motion Pictures Arts and Sciences v. GoDaddy.com Inc., No cv-03738, dkt. entry no. 491 (order granting in part and denying in part cross-motions for summary judgment filed June 21, 2013). Internet registrar GoDaddy.com Inc. was not entitled to the protection of the ACPA s safe harbor provision for claims concerning operation of its advertising-oriented parked pages program. Creating webpages, placing web advertisements, and collecting ad revenues, as GoDaddy does in the program, are not the kinds of registration activities that the ACPA safe harbor was designed to protect. Page 5

6 Petroliam Nasional Berhard v. GoDaddy.com, Inc., 897 F. Supp. 2d 856, 101 U.S.P.Q.2d 1507 (N.D. Cal. 2012), No (9 th Cir. Dec. 4, 2013) The Ninth Circuit, affirming an award of summary judgment in favor of GoDaddy, determined that neither the plain text of the ACPA, nor the legislative history, nor the goals of the law supported the availability of an action for contributory cybersquatting. Donald R. Dudley, D.C. d/b/a HealthSource Chiropractic v. HealthSource Chiropractic, Inc., 883 F. Supp. 2d 377 (W.D.N.Y. 2012) The Court denied an injunction covering the Internet to senior trademark user with only common law rights in a limited geographic territory over junior user that secured a trademark registration four years after the senior user s first use. Unsurprisingly, the Court noted that the Internet is not a geographic territory to be subdivided. Nevertheless, it would be improper for a user to target internet advertisements to consumers within another user s exclusive territory or to advertise on locally focused web sites that target that market. Prosperity Bancshares Inc. v. Town and Country Financial Corp., No. 3:12-cv-03179, 2013 U.S. Dist. LEXIS (C.D. Ill. Feb. 5, 2013) An Illinois bank that named a new branch Peoples Prosperity Bank in all likelihood did not infringe a Texas bank s registered Prosperity Bancshares, Inc. and Prosperity Bank marks because consumers who had to appear at a physical branch in Illinois or Texas to open an account at either respective bank were unlikely to be confused by the names of the banks. Evans v. Hewlett-Packard Co., 109 U.S.P.Q.2d 1081 (Aug 15, 2013) Singer Chubby Checker s federal trademark claims against HP based on its vending of an alleged vulgar mobile device app were sufficient to survive a motion to dismiss, but the state law claims were dismissed, after the court found that HP, as an online service provider, was protected from liability by a provision of the Communications Decency Act. Page 6

7 Avepoint, Inc. v. Power Tools, Inc. d/b/a Axceler, 2013 U.S.Dist. LEXIS (W.D.Va. Nov. 7, 2013) A software developer s allegations regarding a competitor s creation of a fake LinkedIn profile were sufficient for its federal and state law claims to survive a motion to dismiss. The Court noted that there were allegations that some clients of the plaintiff had actually been misled into believing that the faked LinkedIn profile was legitimate. Del Monte Int l GmbH v. Del Monte Corp., C.D. Cal., No. 2:13-cv (2/5/14) A Swiss Del Monte entity that had a license to use the DEL MONTE mark applied to operate the.delmonte gtld. The Del Monte entity based in Delaware filed a legal rights objection under WIPO-established procedures to the Swiss Del Mont s application, which objection was sustained. The Swiss entity then sued in federal court seeking a declaration that it had sufficient rights in the DEL MONTE mark to operate the gtld and that it was not violating the ACPA in doing so. The U.S. District Court of the Central District of California ruled Feb. 5 in an issue of first impression, that a failed bid to secure a new gtld did not result in a registration of a domain name that would support an action under the ACPA. James Dean Inc. v. Twitter Inc., S.D.Ind., No. 1:14-cv-00183, notice of removal 2/7/14) Twitter is defending itself against allegations that account violates publicity and trademark rights of James Dean, Inc. The lawsuit claims that Twitter allowed handle despite repeated requests since October 2012 to stop the unauthorized use and to obtain relevant contact information of the account s owner. Twitter successfully removed the case from Indiana Superior Court to the Southern District of Indiana. The complaint, which seeks treble damages and an injunction, alleges trademark infringement under the Lanham Act, false endorsement under 43(a), Indiana state statutory right of publicity, common law right or publicity, unfair competition, unjust enrichment, conversion, deception and the Indiana Crime Victims Act, which allows those who suffer a pecuniary loss to seek treble damages. Twitter is strongly contesting liability and does not believe plaintiff is entitled to any relief. Page 7

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