Q4 2014 & Q1 2015 Quick Links Part 5 (Trademarks, Domain Names, Marketing)

Trademarks and Domain Names

* TheDomains: .Sucks Releases Pricing With “Premiums” For Trademark Holders Up To $2,499 A Year. A pox on the .sucks operator and on ICANN for permitting this pricing scheme. ICANN wants federal regulators to declare the pricing scheme illegal so that it can take action against the operator, but if it doesn’t get bailed out by these government enforcers, it won’t do anything.

* The most significant keyword advertising loss in Europe, Interflora v Marks & Spencer, was overturned and ordered for a retrial.

* Treemo, Inc. v. Flipboard, Inc., 2014 WL 5306671 (W.D. Wash. Oct. 15, 2014):

Flipboard does not argue that the Google search results would cause initial interest confusion, i.e., a “bait and switch” for Flipboard’s potential customers. In fact, the Google search results suggest that potential Flowboard customers would instead be redirected by Google to Flipboard’s site. Nevertheless, the Google search results continue to link Flowboard with Flipboard, fostering consumer confusion about the difference between the two apps, and showing that the two apps operate within the same space.

Related article on how search engines create meaning in trademark law.

* Rebecca: Trademark overreach of the day: ICE says “Yankees Suck” infringes

* And now something ridiculous from North Carolina: David J. Turlington III of Boone was censured by the Grievance Committee. Turlington employed other attorneys’ names and names of law firms in a keyword advertising campaign through Google’s AdWords program. He continued this practice after publication of 2010 FEO 14, which states that an attorney’s purchase or use of another attorney’s name in an Internet search engine’s keyword advertising program is dishonest. The committee also found Turlington knowingly made a false statement of material fact by claiming the inclusion of inappropriate keywords was inadvertent. Prior blog post. More on this issue very soon. [UPDATE: here’s a preview.]

* NY Times: The Weird Science of Naming New Products

* From ICANN: ccTLDs aren’t subject to writs of attachment.

* Couture v. Playdom (Fed. Cir. March 2, 2015): offering a service, without the actual provision of a service, is not sufficient to constitute use in commerce under the Lanham Act. In that case, an “under construction” web page didn’t count.

* First Premier Bank v. Papadimitriou (D. S.D. Jan. 7, 2015). Credit card company can’t use trademark law to shut down a credit card comparison site from displaying an “apply now” button.

* World Trademark Review: EweTube? YewTube? Study uncovers extent of sound-based cybersquatting

* Marketing Land: Verisign: .Com Domains Have More Click Appeal In Search Results

* Lexology: use of a competitor’s trade marks in metatags held not to amount to copyright or trade mark infringement in Canada

* I totally missed this, and maybe you did too: NTIA suspended kids.us in July 2012 because “the kids.us domain is not serving its intended purpose.” No shit!

* Chronicle of Higher Education, Here Are 88 Weird College-Owned Trademarks, Arranged as a Poem

Advertising

* The State Bar of California Standing Committee on Professional Responsibility and Conduct, Formal Opinion Interim No. 12-0006: “ISSUES: Under what circumstances is “blogging” by an attorney subject to the requirements and restrictions of the Rules of Professional Conduct and related provisions of the State Bar Act regulating attorney advertising?”

* WaPo: How two ‘free’ games made enough money to buy Super Bowl ads

* Marketing Land: What 30 Seconds Of Super Bowl Ad Money Would Have Bought Online: 2,542,573,344 Impressions

* Newsweek: Manipulating Wikipedia to Promote a Bogus Business School. Related article.

* NY Times: Radio Broadcasters Seek Changes in Disclosure Rules for Paid Programming. Related article.

* NY Times: Unilever, Suing Over Rival’s Use of ‘Mayo,’ Changes Own Website. The NY Times followup: Hellman’s Maker Unilever Drops Suit Over Eggless Mayo

* Business Insider: British regulators are targeting freebies to vloggers. And AdWeek: Inside Instagram’s Secret Barter Economy. NY Times. My blog post on Instagram freebies.

* The Americanization of Cuba continues: the government is officially creating classified ads. Related blog post.

* Reuters: Online ad revenue at risk in war on ‘click fraud’

* Fox Test Prep v. Facebook, Inc., 2014 WL 7336402 (9th Cir. Dec. 26, 2014):

Plaintiffs’ central theory of liability is that Facebook improperly charged them for “invalid” clicks. As a result, it was crucial for them to establish a workable, classwide method to distinguish among “valid,” “invalid,” and “fraudulent” clicks. Plaintiffs’ expert stated that he could develop and implement rule-based algorithms to determine whether Facebook failed to employ algorithms in conformity with prevailing industry standards in determining whether a click is legitimate. He further noted that the IAB (Interactive Advertising Bureau) Click Measurement Guidelines make clear that it is generally understood in the industry that a click is defined as a request by a human with an intent to view the content. Nowhere in his report or deposition, however, did he provide the actual method for distinguishing between valid and invalid clicks. Further, in his deposition he acknowledged that he knows of no sources, including the IAB guidelines, that provide specific parameters for determining what constitutes a valid click.

Because Plaintiffs failed to meet their burden of demonstrating a workable class-wide methodology to determine what constitutes a “valid click,” the district court did not abuse its discretion in denying class certification because “common issues do not predominate,” In re Facebook, 282 F.R.D. at 459, as required by Rule 23(b)(3).

* Globe and Mail: The hidden cost of annoying ads is fewer page views

* AP: As tastes change, big food makers try hipster guises

* FTC Business Center Blog: Top 10 Blog Posts of 2014

* Santa Monica City Attorney’s office busts MyLife.com for false advertising related to automatic account renewals and more. A good reminder that Internet enforcement activity can take place even at the city level.

* TINA.org, Belting Out Brand Names