Q3 2011 Quick Links, Part 2 (Trademarks/Domain Names Edition)

By Eric Goldman

* In the Betty Boop case (Fleischer Studios v. AVELA), the Ninth Circuit stepped back from some of its perplexing language about aesthetic functionality and the Dastar opinion, but the revised opinion remains confusing. Rebecca’s coverage.

* Car-Freshner Corp. v. Getty Images, Inc., 2011 WL 4527782 (N.D.N.Y. Sept. 28, 2011). In rejecting a motion to dismiss, the court say that selling photos of trademarked items can be trademark use in commerce and may not qualify as trademark fair use; and Getty could be contributorily liable for third party photographs. Terrible decision! Marty’s coverage.

* Rebecca recaps the latest ruling in Fair Isaac Corp. v. Experian Information Solutions, Inc., 2011 WL 3586429 (8th Cir. 2011). Prior blog post.

* Firefly Digital Inc. v. Google Inc., 2011 WL 4454909 (W.D. La. Sept. 23, 2011):

Firefly’s Marks, GADGET and WEBSITE GADGET, are generic and/or descriptive without distinction or secondary meaning. Accordingly, the Motion for Summary Judgment filed by Google will be granted and Firefly’s claims for trademark infringement under the Lanham Act, federal unfair competition, LUPTA and federal and state dilution will be dismissed. Finding that all the requirements for cancellation of Firefly’s federal marks have been met, the Court will order that Federal Registration Numbers 3,711,998 and 3,730,874 are cancelled, and will direct the Clerk of Court to provide a certified copy of the judgment that will issue pursuant to this ruling, to the Director of the U.S. Patent and Trademark Office pursuant 15 U.S.C. § 1119 for appropriate cancellation of the foregoing federal registration numbers. Further, the Court will order that the Louisiana Secretary of State cancel from the state registry Firefly’s mark, WEBSITE GADGET, pursuant to La. Rev. Stat. 51:219.

Yet another trademark owner ends a trademark lawsuit against Google with fewer trademarks than they started with.

* IPKat provides a very useful explanation of what happened (and didn’t happen) with the L’Oreal v. eBay ECJ ruling.

* LimoStars Inc. v. New Jersey Car & Limo, 2:10-cv-02179-LOA (D. Ariz. Aug. 8, 2011). In a default judgment, the court wrote “the mere existence of the www.nylimostars.com website likely adversely impacted Plaintiff’s ranking of www.limostars.com in the listings of Google and other popular online search engines.” Really…? Compare the Bitchen Kitchen case. Also interesting: the court said that the trademark plaintiff could sue the defendant in Arizona based on the defendant’s registration of a domain name with GoDaddy, citing the GoDaddy-registrant agreement’s venue selection clause. I wonder if that contract also has a “no third party beneficiary” clause…?

* Adaptive Marketing LLC v. Girard Gibbs LLP, 2009 WL 8464168 (C.D. Cal. Oct. 9, 2009). I don’t remember seeing this case before, and it just showed up in my Westlaw alerts after 2 years. Keyword advertising defendants may find this case useful. The defendant was a law firm seeking clients who had been allegedly victimized by the plaintiff. The defendant bought the plaintiff’s trademark as an ad trigger and then used the trademark in the ad copy. The court says that the ad buy didn’t constitute initial interest confusion or dilution because the advertiser made a nominative use; and also there was no initial interest confusion because the litigants were not competitors. This outcome is so logical that it should be unremarkable, but defense wins are rare when the keyword ad copy includes the third party trademark.

* Suntree Technologies, Inc. v. Ecosense Intern., Inc., 2011 WL 2893623 (M.D. Fla. July 20, 2011): “Suntree alleges initial interest confusion, which is not actionable confusion in the Eleventh Circuit.” Rebecca has more on this case, which reminded me a little of the classic Jacob & Young v. Kent case.

* Mirina Corp. v. Marina Biotech, 770 F. Supp. 2d 1153 (W.D. Wash. March 7, 2011): “in this case, Plaintiff does not argue that Defendant lures its customers away: it argues instead that Plaintiff has a harder time making business contacts because the contacts believe the Plaintiff is the Defendant. Thus, this case is distinguishable from cases where the court has applied an ‘initial interest confusion’ theory.”

* QVC Inc. v. Your Vitamins Inc., No. 10-4587 (3d Cir. July 14, 2011). A corporate-authored blog post about a competitor’s products didn’t support a false advertising preliminary injunction. The court rejected user-authored comments to the blog post as evidence of consumer confusion (cites omitted):

Comments left on blog posts can be very difficult to authenticate. The use of false identities in Internet forums is now a well-known tactic for attacking corporate rivals. Even if a poster is “legitimate,” doubts will often remain as to the sincerity of the comment. And, finally, even if a poster is genuine and making a comment in good faith, whether he or she would fall in to the universe of consumers whose opinions are relevant (i.e., those who are or potentially might be purchasers of the products in question) often cannot be known. Given these considerations, it was especially appropriate for the District Court to give the blog comments only limited weight.

Rebecca’s blog post on the case.

* Z Productions, Inc. v. SNR Productions, Inc., 2011 WL 3754693 (M.D. Fla. Aug. 18, 2011). Trademark battle over the mark “cam guys.”

* Coventry First lawsuit dismissed. Prior blog post.

* Sex spray settles Sears “Die Hard” trademark lawsuit.

* Rosetta Stone v. Google oral arguments. A recap (perhaps a little biased).

* Coke Zero’s latest “joke” about overexpansive trademark rights (remember their “joke” about “taste infringement”?) is that it claims it owns the word “and.” That would be funny, except that it’s more of a sad commentary on the state of trademark law–expanded significantly by big trademark owners…like Coca-Cola–that I wouldn’t rule anything out. Yuck yuck yuck.

* Mark McKenna, Probabilistic Knowledge of Third-Party Trademark Infringement, Stanford Technology Law Review (2011). Part of the abstract:

This essay argues that the Supreme Court’s Inwood decision [requires] knowledge that particular actors are likely to infringe as a condition of secondary trademark liability. If, however, courts were inclined to take the analogy to tort law more seriously, then cases involving probabilistic harm would be viewed as negligence cases rather than trademark infringement cases. Liability in these cases would turn on an evaluation of the reasonableness of the defendant’s conduct in preventing harm, taking into account the full cost of alternative precautions. It would also turn on the trademark owner’s ability to prove causation – both in-fact and proximate – concepts that generally are completely absent from trademark cases.

* Tucows.Com Co. v. Lojas Renner S.A., No. 11-C52972 (Ontario App. Ct. of App. Aug. 5, 2011). Ontario court says domain names are property.

* Humorous critique of ICANN’s new TLDs.