H1 2012 Quick Links, Part 1 (Trademarks/Domain Names, Patents, Trade Secrets, IP)

By Eric Goldman

[Eric’s note: I had an incredibly busy travel schedule since late March. My destinations included Akron, NYC, Seattle, Concord (NH), Boston, Chicago, Vancouver, the California Channel Islands (a blog post is coming later this week about that trip on my Goldman’s Observations blog), San Diego, Houston, Belgium (a blog post is coming about that trip too, eventually), Lansing (MI), Healdsburg (CA), Napa, Berkeley and Northridge. It’s been great for my frequent flier miles and lousy for my ability to maintain my “quick links,” which ballooned to hundreds of items over the past 4 months. As a result, I’m going to be posting the backlog over the next few days and then reassessing how I approach blogging these second-tier items to develop a more sustainable system. As always, thanks for reading.]

Trademarks/Domain Names

* Another trademark case turns on relative search engine placement: Hasbro, Inc. v. Asus Computer International, Inc., CV 11-10437 PSG (C.D. Cal. March 23, 2012):

Hasbro points to the fact that a Google search for “optimus prime tablet” picks up Asus’s “Transformer Prime” tablet, a search for “Transformer prime” causes Amazon to search its own site for “Asus transformer prime,” and that a search for “transformers prime” returns “several Asus hits and Transformers Prime hits.”…According to Hasbro, this “overlap in search results is bound to cause confusion.”…The Court disagrees. First, for the most part, the Google search for “Transformer Prime” returns results related to Asus’s products, while the results generated by the “Transformers Prime” search relate to Hasbro’s animated series…. Second, although the “Transformers Prime” Google search results offered by Hasbro show hits relating to the Transformers Prime animated series and the Eee Pad Transformer Prime tablet, Hasbro makes no argument that these products are related…. Furthermore, any concern that a consumer using Hasbro’s mark to search for Hasbro’s product might be confused by a results page that shows both Hasbro’s and Asus’s product is ameliorated when the sources of the respective products are clearly identified…. The nature of Asus’s product also supports this finding, as buyers of high-end computer products are even less likely to be flummoxed by search engine results than the general population.

* John Crane Production Solutions, Inc. v. R2R and D, LLC, 2012 WL 951723 (N.D. Tex. March 21, 2012): “even a sophisticated purchaser can be subject to initial interest confusion…The court finds that the purchasers of fiberglass sucker rods exercise a high degree of care and sophistication in making their purchases. This factor weighs heavily in favor of a finding of no likelihood of confusion.” Another example of IIC’s irrelevancy to a case’s ultimate outcome.

* Fancaster, Inc. v. Comcast Corp., 2012 WL 815124 (D.N.J. March 9, 2012). Abandoning a trademark doesn’t divest the trademark owner of ACPA standing for past statutory damages. Prior blog post.

* Two Plus Two Pub., LLC v. Boyd, 2012 WL 724678 (D. Nev. March 1, 2012). The domain name twoplustwopoker.com constituted an ACPA violation of plaintiff’s “Two Plus Two” trademark in publishing poker-related materials. Prior blog post.

* Ron Paul drops unmasking effort. Prior blog post.

* Bogoni v Gomez, 2011 WL 6957599 (S.D.N.Y. Dec. 28, 2011) and Bogoni v. Gomez, 2012 WL 745548 (S.D.N.Y. Jan. 6, 2012). Man wins cybersquatting claim against a “friend” who registered his name as a domain name and then tried to sell it back to him. NY Times coverage.

* John Ottaviani reports on a lawsuits against JC Penney for buying keyword ads triggered by brand name of goods it didn’t sell.

* Update on the Lens.com v. 1-800 Contacts antitrust lawsuit. Prior blog post.

* Spanish keyword advertising ruling goes against the defendant.

* Facebook is now claiming trademark rights in “Face” and “Book” in its Statement of Rights and Responsibilities (SRR).

* Facebook’s lawsuit against Faceporn dismissed for lack of jurisdiction. Prior blog post.

* NY Times: Nutsonline.com switched to Nuts.com at a very high price, yet traffic and sales plummet for months.

* Gibson v. Bordelon, 2011 WL 7763787 (N.D. Tex. October 31, 2011). A para-trademark case. A Texas statute prevents usage of a combination of the word “Texas” in conjunction with the words “Workers’ Compensation” or “Workers’ Comp.” This may prevent a lawyer from running a website/blog at the domain name “texasworkerscomplaw.com.”

Patents

* Washington Post: “In the smartphone market alone, $15-20 billion has already been spent by technology companies on building defenses, says Stanford Law School professor Mark Lemley…. Lemley estimates that more than $500 million has been squandered on legal fees.”

* Twitter’s Innovator’s Patent Agreement. WSJ coverage. An interesting idea. I see this as much more about recruiting new engineers than about reforming the entire patent ecosystem. As such, it’s a potentially very effective differentiator, even if Twitter never actually files for patents under the scheme.

Note the alternative: Twitter could simply not file for the patents at all. The fact that Twitter will still seek patents, while voluntarily defanging them, is a damning indictment of the patent system. Twitter clearly doesn’t want the patents to restrict competitive imitation, but it’s still spending tens of thousands of dollars per patent on the hope that the patents might help it achieve freedom to operate. This phenomenon is one of the reasons we’re holding our “Solutions to the Software Patent Problem” conference at SCU in Fall (registration now open!).

* Wired takes a look at how the Nortel patents have been deployed for trolling.

* Brad Burnham: The Freedom to Innovate

* Patent “troll” is going after city bus systems. Who pays for this? Taxpayers.

* TechCrunch: Facebook countersues Yahoo for patent infringement using a patent by an employee now at Yahoo.

* Inside Higher Ed: Universities don’t want to talk about their relationships with Intellectual Ventures.

* Hollywood Reporter: U.S. Patent Examiner Cites Borat’s Famous Swimsuit in Rejecting Claimed Invention

Intellectual Property and Trade Secrets

* Bill Gallagher, Trademark and Copyright Enforcement in the Shadow of IP Law. An interesting ethnographic study of how IP lawyers ply their craft.

* Everything you need to know about the Trans-Pacific Partnership (TPP) and IP

* From the USPTO: Intellectual Property and the U.S. Economy: Industries in Focus

* From the White House: IPEC 2011 Annual Report on Intellectual Property Enforcement

* Trade Secret Litigator: Non-compete restricting on-air radio personalities from working at other nearby radio stations doesn’t restrict them from broadcasting via Internet radio.

* WSJ: Litigation battles over the Pepsi cola formula.