Q2 2014 Quick Links, Part 1 (IP)
* Barton Beebe has posted a new free casebook, Trademark Law: An Open-Source Casebook. Quite possibly the new gold standard of trademark casebooks. Check it out!
* Overstock v. NoMoreRack.com (D. Utah June 30, 2014). NoMoreRack doesn’t create consumer confusion when it uses the term “overstock” to describe its goods.
* Renna v. County of Union, N.J., 2014 WL 2435775 (D. N.J. May 29, 2014). Using a county seal on a public access TV show doesn’t violate any trademark rights of the county. Related blog post.
* Marketing Land: How Trademark Worries Block “World Cup” Ads On Google
* LA Times: To sell marijuana, you need a clever name
* Radiancy, Inc. v. Viatek Consumer Products Group, Inc., 2014 WL 1318374 (S.D.N.Y. April 1, 2014):
Viatek’s Counterclaims include the allegation that Radiancy’s internet marketing techniques are designed to “piggyback” Viatek’s marketing by using the Pearl trademark in the code for its website and by paying Google to have results for the no!no!® hair remover appear before results for Viatek’s product when searching “Pearl hair remover.” The question of whether “use of another company’s registered trademark in metadata or as part of a sponsored search constitutes use of a trademark in commerce under the Lanham Act … [has been sustained by] other circuits…. The courts in this Circuit, however, have largely rejected these claims.” Site Pro–1, Inc. v. Better Metal, LLC, 506 F.Supp.2d 123, 125 (E.D.N.Y.2007). The Second Circuit addressed Viatek’s claims regarding a Google search in 1–800 Contacts v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir.2005). The Second Circuit stated,
[I]n the search engine context, defendants do not “place” the ZOCOR marks on any goods or containers or displays or associated documents, nor do they use them in any way to indicate source or sponsorship. Rather, the ZOCOR mark is “used” only in the sense that a computer user’s search of the keyword “Zocor” will trigger the display of sponsored links to defendants’ websites. This internal use of the mark “Zorcor” as a key word to trigger the display of sponsored links is not use of the mark in a trademark sense.
Id. at 415.
Instead, “[t]he key question is whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicates source or origin.” Id. at 127. Viatek does not allege this, nor any other claims that would state a claim either a misappropriation or a palming off theory. Therefore, Viatek has not stated a claim for unfair competition under the Lanham Act and this counterclaim is dismissed.
* Sussman-Automatic Corp. v. Spa World Corp., 2014 WL 1651953 (E.D.N.Y. April 25, 2014):
there is no allegation regarding the Defendants’ trademarks, much less that they resembled the Plaintiff’s marks. To the contrary, the amended complaint, in fact, undercuts a theory of “initial customer confusion” inasmuch as the Plaintiff alleges that the Defendants maligned the Plaintiff’s “Mr. Steam” products as inferior to the Defendants’ products. In other words, the Defendants’ purported acts in distinguishing the Plaintiffs products from the Defendants’ products renders implausible any inference that there could be confusion about the source of the product.
Further, even if the unauthorized use of the Plaintiff’s branded products may have helped the Defendants gain “crucial credibility during the initial phases” of a purchasing decision, Mobil Oil Corp., 818 F.2d at 259, there is no allegation that such credibility was acquired on account of the similarity between the parties’ respective trademarks, as is required to state a claim sounding in “initial interest confusion.”
* Buzz Bee Toys, Inc. v. Swimways Corp., 2014 WL 2006799 (D. N.J. May 15, 2014):
Plaintiff has not produced any evidence of actual confusion. Plaintiff cites the “BUFFDADDY NERF” blogger, who noted that Swimways’ products were copies of Buzz Bee’s products. But the blogger was not actually confused about whose products were manufactured by whom and he did not mistakenly assert that Swimways’ products were manufactured or designed by Plaintiff. This factor does not favor Plaintiff.
Along the same lines: Kind LLC v. Clif Bar & Co., 2014 WL 2619817 (S.D.N.Y. June 12, 2014) (cites omitted):
The social media posts KIND has submitted are mostly unhelpful. The comments on Clif Bar’s Facebook posts note similarities between the MOJO bars and KIND bars. See, e.g., comment on Clif Bar’s Facebook post introducing two MOJO flavors stating, “I love all things Clif and I’m sure I’ll like these too, but don’t they kinda look like Kind bars?”. However, “assertions of similarity … do nothing to establish consumer confusion that enables a seller to pass off his goods as the goods of another, the definition of actual confusion under the Lanham Act.” KIND also submits a twitter post in which a twitter user wrote, “I was about to pick up one of those [MOJO bars] because I thought it was a Kind Bar at the vitamin shop ….“ Taken as a whole, KIND’s evidence of actual confusion is weak; this factor weighs slightly in favor of Plaintiff.
* Michael Grynberg, More Than IP: Trademark Among The Consumer Information Laws, 55 Wm. & Mary L. Rev. 1429 (April 2014).
* David A. Hyman & David J. Franklyn, Trademarks as Search-Engine Keywords: Who, What, When?, 92 Texas L. Rev. 2117 (2014): “the risk of widespread abuse is low. Trademark owners’ objections seem to have more to do with objections to free riding than with the zone of interests currently protected by U.S. trademark law”
* Patently-O Guest Post by Prof. Mark McKenna: The Implications of Blackhorse v. Pro-Football, Inc.
* Tom O’Toole: Looking Back at ICANN: NSI’s Courtroom Victories Paved Way for Modern Domain Name Industry
* Techdirt: Data Shows Homeland Security Is Lying When It Claims Intellectual Property Seizures Are About Health & Safety
* New Yorker: Competition for McDonald’s, and For Ronald. Regarding Taco Bell’s ads featuring people named Ronald McDonald enjoying their food.
* Tarantino v Gawker, CV 14-603-JFW (FFMx) (C.D. Cal. April 22, 2014). No contributory copyright infringement if plaintiff can’t show links caused direct infringement.
* Techdirt: Ex-Wife Allegedly Using Copyright To Take Down Husband’s Suicide Note
* Ars Technica: Judge to porn trolls: IP addresses aren’t people
* Caner v. Autry, 2014 WL 2967607 (W.D. Va. July 1, 2014). $34k fee award in fair use case. Prior blog post.
* Public Relations Consultants Association Ltd v. Newspaper Licensing Agency Ltd. Web browsing and local caching isn’t infringement in the EU.
* ABA Journal: DA settles suit over copyrighted photo uploaded to his Twitter account
* WSJ: Calls Grow to Loosen Federal Circuit’s Monopoly on Patent Appeals
* Tesla voluntarily defangs its patents: “Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.” I hope the pro-patent policymakers are listening. Tesla is unilaterally disarming its patents because patents are harming the industry’s growth. More from Jim Bessen.
* A paper by Intel and Wilmer Hale indicates that $120 of a $400 smartphone is due to patent licensing.