September 2010 Quick Links, Part 1 (IP Edition)

By Eric Goldman


* US v. ASCAP (2d Cir. Sept. 28, 2010): “the Internet Companies offer their customers the ability to download musical works over the Internet. It is undisputed that these downloads create copies of the musical works, for which the parties agree the copyright owners must be compensated. However, the parties dispute whether these downloads are also public performances of the musical works, for which the copyright owners must separately and additionally be compensated. The district court held that these downloads are not public performances, and we agree.”

* “Combating Online Infringement and Counterfeits Act” (COICA). Who dreams up crazy shit like this? The EFF’s take. Fortunately, the bill is on hiatus for now.

* The Fifth Circuit issued an amended opinion in MGE UPS Systems Inc. v. GE Consumer and Industrial Inc., 2010 WL 3769210 (5th Cir. Sept. 29, 2010)—apparently removing some of the most quirky discussions about 1201 anti-circumvention.

* Righthaven sued U.S. Senate candidate Sharron Angle for copyright infringement. If Angle wins, maybe her agenda will include copyright reform. Ars Technica does a good job summing up the Righthaven mess. In Righthaven v. Klerks (D. Nev. Sept. 17, 2010), the judge overturned the defendant’s default & suggested that the defendant’s fair use/implied licenses defenses could succeed.

* Vigorous copyright battle over rival chocolate milk apps. Maybe the parties need a timeout.

* Miller v. Facebook, 2010 U.S. Dist. LEXIS 98924 (N.D. Cal. Sept. 21, 2010). Miller adequately served Yeo, Facebook’s co-defendant, so Facebook could not dismiss the case based on Miller’s failure to follow the judge’s instructions to bring Yeo into the case. Prior blog post.

* The Copyright Principles Project, a 3 year effort led by Pam Samuelson, has released its report and recommendations.


* Paris Hilton settles her “That’s Hot” trademark lawsuit over greeting cards.

* Partners for Health and Home v. Yang (C.D. Cal. Sept. 13, 2010): “Defendants admit to having purchased the terms ‘perma-life’ and ‘perma life’ in internet search engine advertising keywords….These terms are identical and nearly identical to the Plaintiff’s trademark. Thus, Plaintiff has provided evidence to support a likelihood of success on the merits of this issue.”

* Harry and David v. ICG America, Inc., 2010 WL 3522982 (D. Or. Sept. 7, 2010). Rejecting the consolidation of two separate keyword advertising cases by Harry & David against different defendants because of the unique inquiries into each defendant’s situations.

* Putting goats on a restaurant’s roof is protectable trade dress? If the roof is grassy, what about the functionality doctrine?

* Is “Pepsi” generic for “cola” in India?

* Rebecca on a ridiculous trademark claim from an exclusive TM licensee that the licensor was allowing other logos to appear *near* the exclusively licensed TM in photos. For more on the folly of adjacency as being actionable under TM law, see my Brand Spillovers article.

* Pensacola Motor Sales v. Eastern Shore Toyota, 3:09-cv-00571-RS-MD (N.D. Fla. Sept. 23, 2010): “Defendants argue they are entitled to summary judgment because the internet ‘key words’ or ‘ad words’ they purchased do not constitute a misrepresentation or cause confusion under the Lanham Act. However, Defendants cite no case law in support of their argument and merely make a factual argument that these ad words do not meet the requirements of the Lanham Act. Plaintiff has presented facts that could lead a jury to conclude that Defendants’ purchase of ad words does indeed meet the requirements of the Lanham Act. Thus, there clearly remains a genuine issue of material fact, and summary judgment is not appropriate for Defendants on count II.”

* uBID v. GoDaddy (7th Cir. Sept. 28, 2010). Illinois has personal jurisdiction over uBID’s anti-cybersquatting claim against GoDaddy for domain name parking. Some interesting observations from the court:

GoDaddy has thoroughly, deliberately, and successfully exploited the Illinois market. Its attempt to portray itself either as a local Arizona outfit or as a mindless collection of servers is unconvincing….No more persuasive is GoDaddy’s argument that its sales to Illinois residents are automated transactions unilaterally initiated by those residents….

GoDaddy’s contacts with Illinois are extensive. It has hundreds of thousands of customers in the state and earns millions of dollars in revenue from the state each year. Illinois residents encounter GoDaddy’s ads on television, on the Internet, and on billboards at Wrigley Field and the United Center, among many others. GoDaddy has continuously and deliberately exploited the Illinois market for domain name registration and has profited handsomely from it.

* How 6 Memorable Tech Companies Got Their Names


* Lindsay Lohan and E*Trade settled the “milkaholic” publicity rights lawsuit. [I hope this is the first and last time I discuss both Paris Hilton and Lindsay Lohan in the same blog post]

* On remand, the district court rejected Tiffany’s false advertising claim vs. eBay. Rebecca discusses the ruling. My prior blog post.

* Yahoo juryrigs its ad display algorithm to artificially get advertisers to bid more. This seems like the kind of thing that spurs plaintiffs’ lawyers into action.

* Lengthy retrospective on ASIS, one of the serial anti-spam plaintiffs whose business crumbled after Gordon v. Virtumundo and a judge ordered her to pay $800,000 to Azoogle. Great line from ASIS’s principal: “I thought I was the Jeanne d’Arc of spam…But then she got assassinated, so what was I thinking?”

* Google trying to get pharma companies to try a new ad unit that helps them comply with FDA regulations.

* Webloyalty settles with the NYAG for $5.2M.

* Ads in celebrity Facebook “fan page” newsfeeds are coming.

* Robert Sprague and Mary Ellen Wells, Regulating Online Buzz Marketing: Untangling a Web of Deceit, 47 American Business Law Journal 415 (2010).