H2 2013 Quick Links, Part 1 (IP)

Photo credit: 3D Quick Link Crossword // ShutterStock

Photo credit: 3D Quick Link Crossword // ShutterStock


* Appellate briefs in the latest Second Circuit trip for YouTube v. Viacom. Prior blog post.

Fox Broadcasting Company, Inc. v. Dish Network L.L.C., 723 F.3d 1067 (9th Cir. 2013). Another case where remote DVR users made the copies, not the DVR system operator; and any analysis of fair use should ignore user ad-skipping because it “does not implicate Fox’s copyright interests.” The Ninth Circuit recently denied an en banc hearing.

Wood v. Kapustin.  Another judge orders a default judgment that includes a domain name transfer as a remedy for copyright infringement. Prior blog post.

In re AutoHop Litigation2013 WL 5477495 (S.D.N.Y. Oct. 1, 2013)

Pearson Educ., Inc. v. Ishayev, 2013 WL 3948505 (S.D.N.Y. Aug. 1, 2013):

as a matter of law, sending an email containing a hyperlink to a site facilitating the sale of a
copyrighted work does not itself constitute copyright infringement.

* Kirtsaeng denied attorneys fees. Prior blog post.

Schenck v. Orosz, 2013 WL 5963557 (M.D. Tenn. Nov. 7, 2013):

If the owner files a takedown notice and receives a counter-notification from the allegedly infringing party, the holder must file suit within 10–14 days to prevent the ISP from replacing the material—even though the lawsuit will be subject to dismissal under § 411(a) because the copyright is not registered.

The court holds that an unregistered copyright is susceptible to this time squeeze.

* AP and Meltwater settle their case, leaving a troubling opinion in place.

* American Institute of Physics v. Schwegman Lundberg & Woessner, 0:12-cv-00528 (D. Minn. July 30, 2013):

a reasonable jury could only conclude that Schwegman’s purpose in downloading and making internal copies of the Articles was to ultimately comply with the legal requirement to provide prior art to the USPTO and to represent its clients’ interests in obtaining patents in Europe and Japan…Schwegman’s copying was essential to allow the law firm to evaluate whether the information in the Articles was prior art that needed to be disclosed in connection with patent applications.

* IsoHunt shuts down. Prior blog post.


Boston Globe: “At a recent gathering at the Cambridge Innnovation Center, a home for startups in Cambridge, the patent troll problem was voted the number one public policy issue facing entrepreneurs.”

* Minnesota AG cracks down on patent trolling.

* NY Times profile of Erich Spangenberg. He earns $25M a year!

Nature: Universities struggle to make patents pay.


* For the second time, the Wisconsin high court declined to hear Habush-Cannon Internet ad words dispute. Prior blog post.

* Apple gives up its ridiculous “App Store” lawsuit against Amazon. Prior blog post.

USA Today: Latest trend for college football coaches: Trademarked names.

W.W. Williams Co. v. Google, Inc., 2013 WL 3812079 (S.D. Ohio Jul. 22, 2013). TRO orders Google to disable *all* Gmail accounts containing the string “wwwilliam.” Any risk of false positives?!

* Google Keyword Planner Now Shows Trademarked Terms

American Eagle Outfitters, Inc. v. American Eagle Furniture, Inc. 2013 WL 6839815 (N.D. Ill. Dec. 27, 2013):

even assuming that furniture shoppers will exercise more care than clothing customers, AE Outfitters argues that mall shoppers may also experience initial interest confusion….AE Outfitters correctly points out that initial-interest confusion is all the more likely to happen here because other apparel companies have also expanded to offer furniture and home goods, so AE Outfitters’ customers’ interest in furniture made by AE Outfitters is likely to draw customers into the furniture store, even if eventually the confusion is dispelled….In sum, with customer scrutiny high but initial-interest confusion possible, this factor is closely balanced between the parties. But because the Court must construe the facts in the light most favorable to Defendants on this issue, this factor ultimately tips ever so slightly toward Defendants at this stage of the case.

Another example of initial interest confusion being cited in a non-dispositive way; here, even with initial interest confusion possible, the factor tips to the defense. Prior blog post.

Select Comfort Corp. v. Tempur Sealy International, Inc., 2013 WL 6767821 (D. Minn. Dec. 23, 2013):

Select Comfort alleges that Mattress Firm infringes Select Comfort’s trademarks through internet search engines and third-party websites. First, Select Comfort alleges that Mattress Firm uses Select Comfort’s trademarks verbatim by informing consumers that they can purchase genuine Select Comfort products from Mattress Firm. The parties do not appear to dispute that if a consumer is on the Mattress Firm website itself, there are no advertisements for Select Comfort products and there are no Select Comfort trademarks. The parties also do not appear to dispute that if consumers search for only “Select Comfort” or “Sleep Number” or “Mattress Firm” there is no direct overlap. Thus, in these situations there can be no likelihood of confusion. Instead, to show likelihood of confusion, Select Comfort appears to rely on the scenario that a consumer searches for either: 1) “Select Comfort” and “Mattress Firm,” or 2) “Sleep Number” and “Mattress Firm,” or 3) “Does mattress Firm sell Select Comfort beds?” When these searches are entered, the results include a link to the Mattress Firm website, with the title “Select Comfort—Mattress firm.” However, once a potential consumer clicks on the link, it takes them to Mattress Firm’s website, where it is immediately clear that Mattress Firm does not sell Select Comfort products. Select Comfort argues that consumers may then purchase those beds sold at Mattress Firm, and will abandon any possible search for or purchase of a Select Comfort bed, but this is not enough to show likelihood of confusion or irreparable harm at this stage in the proceeding and does not warrant the extraordinary measure of a temporary restraining order.

Groeneveld Transport Efficiency, Inc. v. Lubecore Intern., Inc., 730 F.3d 494 (6th Cir. 2013):

the circumstances of the present case do not remotely approach those of a paradigmatic initial-interest case. To begin with, Groeneveld presented no proof as to how, in view of the two pumps’ starkly different labels and logos, there would be any initial-interest confusion at all. Nor does Groeneveld explain why, assuming that such initial confusion were to take place, it would not be instantly dissipated without any harm. Simply invoking the term “initial-interest confusion” does not state a viable claim, let alone create a triable issue of fact. This court has held that alleging a hypothetical chance that a consumer might think for an instant that two products come from the same source is simply not enough…In the final analysis, what appears to concern Groeneveld is not so much initial-interest confusion, but initial interest, period. Groeneveld, in other words, simply does not want its customers to become interested in Lubecore as a potential competitor and possibly switch over.

AK Metals, LLC v. Norman Indus. Materials, Inc., 2013 WL 417323 (S.D. Cal. Jan. 31, 2013). Company bought keyword ads on its competitor’s trademark (“Escondido Metal Supply,” a dubious TM) and displayed the trademark in the ad copy. The court denies the plaintiff’s preliminary injunction request, in part because the defendant paused the ad campaign and in part because the plaintiff didn’t make a strong enough showing of legal merit. Prior blog post.

Right of Publicity

NY Times: As Legal Battle Continues, N.C.A.A. Ends Tie With Electronic Arts

Stayart v. Google, Inc., 134 S.Ct. 140.  Supreme Court denied cert. Prior blog post.