2H 2015 Quick Links, Part 2 (Patents, Trademarks, Other IP)

Patents

* ClearCorrect Operating, LLC v. International Trade Com’n, 2015 WL 6875205 (Fed. Cir. Nov. 10, 2015): ITC has jurisdiction only over “material things,” not digital content. An obvious but much needed ruling.

* Washington Post: Patents are a terrible way to measure innovation

* Washington Post: Patent office stresses quantity over quality, new review of troubled telework program finds

* Milo & Gabby LLC v. Amazon.com, 2:13-cv-01932-RSM (W.D. Wash. jury verdict Oct. 29, 2015). Jury rules that Amazon isn’t liable for design patent infringement due to its marketplace vendors’ activities. Prior blog post.

* Law.com: Facing Tsunami of Cases, Federal Circuit Gives PTAB Wide Berth

* Laura G. Pedraza-Farina, “Understanding the Federal Circuit: An Expert Community Approach,” 30 Berkeley Technology Law Journal 89 (2015)

* Washington Post: How a black inventor beat the odds to create the Super Soaker. I teach a patent case against Super Soakers in my IP Survey course, which gives me an excuse to bring loaded water guns into the classroom. Faced with the threat of liquid discipline, students are remarkably participatory that day.

Trademarks

* The California Supreme Court denied review in Ison v. Google. Prior blog post.

* Control Solutions, Inc. v. MicroDAQ.com, Inc., 2015 WL 5092593 (D. Oregon August 26, 2015):

Each of CSI’s claims herein arises out of MicroDAQ’s use of CSI-related keywords in connection with Google Adword internet advertising campaigns as described above.

MicroDAQ offers the declaration testimony of its founder and president, Philip Reeder, that over the course of its Google Adwords campaigns, it made only a single sale resulting from a Google search using one of CSI’s marks or trade names (specifically, a search for “vfc–5000”), Reeder declares that the resulting purchase was for two of MicroDAQ’s temperature data loggers to a Tennessee company in March 2015, that the sale price was in total $305, and that the purchaser subsequently returned the data loggers for a refund.

Keyword advertising lawsuits are stupid.

* Migliore & Associates v. Kentuckiana Reporters, LLC, 2015 WL 5722814 (W.D. Ky. Sept. 29, 2015)

Plaintiffs Migliore & Associates, LLC and Lisa Migliore Black (collectively “Migliore”) provide court reporting services. Defendant Kentuckiana Reporters, LLC also provides court reporting services. This action arises out of Kentuckiana Reporters’ registration of the domain name “lisamigliore.com.” Visitors to the website “lisamigliore.com” were redirected to a website for Kentuckiana Reporters. Migliore claimed to possess an unregistered common law trademark right in the name “Lisa Migliore.” Migliore asserted that Kentuckiana Reporter’s registration of “lisamigliore.com” domain name violated the Anti-Cybersquatting Protection Act, the Lanham Act, and constituted unfair competition.

A jury trial was held in February, 2015. The first interrogatory presented to the jury asked: “Do you believe that Migliore & Associates has shown, by a preponderance of the evidence, that it owns ‘Migliore’ as a trademark.” (Docket #84). The jury answered “no.” (Docket #84). The jury also found that Kentuckiana had not injured Migliore by “taking its business, impairing its goodwill, or by unfairly profiting from the use of its name.”

* Zerorez Franchising System, Inc. v. Distinctive Cleaning, Inc., 2015 WL 2097634 (D. Minn. May 5, 2015):

A reasonable fact finder would conclude Distinctive possessed intent to infringe on Plaintiffs’ mark. Carr knew that ZEROREZ was a competitor to Distinctive’s carpet cleaning business. The evidence includes Carr’s decision to purchase “Zero rez” as an AdWords keyword.

* ADT, LLC v. Capital Connect, Inc., 2015 WL 6549277 (N.D. Tex. Oct. 28, 2015)

The court concludes that initial interest confusion still appears to be a valid theory under Fifth Circuit law, and that the Supreme Court’s analysis in Lexmark did not abrogate the theory. Here, however, the court does not base its “likelihood of confusion” analysis on the viability of the initial interest confusion doctrine, although ADT’s consumers’ “initial interest confusion” is relevant to the court’s determination of a likelihood of confusion. Elvis Presley, 141 F.3d at 204. The court concludes that ADT has carried its burden of proving “likelihood of confusion” by producing sufficient evidence that Capital Connect’s false sales pitches actually confuse customers into thinking there is some affiliation with ADT or that ADT’s equipment is faulty. See Elvis Presley, 141 F.3d at 204; Ford Motor Company, 671 F.3d at 532.

Related blog post.

* SanMedica Intern., LLC v. Amazon.com, Inc., 2015 WL 1786104 (D. Utah April 24, 2015)

Although Amazon’s sponsored ads identified Amazon as the source of advertisement, the ads stated that SeroVital was available on Amazon. Therefore, the language of the sponsored ads could have caused initial interest confusion; that is, consumers being lured to Amazon with the expectation of SeroVital being available for purchase on the Amazon marketplace.

* Upstart Business Journal: Shapeways, Kickstarter, Etsy and others ask the White House to protect their users from ‘abuse’

* Pinterest loses its trademark enforcement action against Pintrips: “the word pin and the act of pinning are common and well-understood terms across virtually all major forms of computer technology purchased and used by the public… Pintrips may avail itself of the fair use defense whether or not it could have dreamed up a non-descriptive word to use in place of pin. ”

* Swanson v. Instagram LLC, 2015 WL 5254246 (W.D. Wash. Sept. 9, 2015): “the term “Layout” is generic when used in the context of mobile applications”

* Slate: The rise and fall and likely rise again of parody Twitter.

* NY Times: Bicycle Makers Struggle to Swat Down Counterfeits

Other IP

* Hawaii bans non-compete clauses in IT industry employment contracts. A good start but we should go further to ban non-competes.

* New Republic: “The federal government, thereby, has implicitly acknowledged that it considers agricultural products both an asset and a weapon in a long-range geopolitical chess match with China, a resource of near-military value and importance, one that must be protected by all available means. By that logic, those Chinese nationals stealing corn are spies, no different—and, indeed, perhaps more important—than those who swipe plans for a new weapons system.”

* Jennifer Rothman, Commercial Speech, Commercial Use, and the Intellectual Property Quagmire, 101 Va. L. Rev. 1929 (2015)

* Cracked: 6 Times People Have Legally Claimed To Own Everyday Things