2023 Quick Links: IP, Keyword Ads

* For over a decade, I’ve implored people to stop using the term “Soft IP.” Amanda Levendowski now provides another reason: the term has problematic gender implications.

* After II Movie, LLC v. Grande Communications Networks, LLC, 2023 WL 1422808 (W.D. Tex. Jan 31, 2023). Another troubling ruling for an Internet access provider trying to shake a contributory copyright claim based on user-caused copyright infringement.

* Live Face on Web LLC v. Cremation Society of Illinois, No. 22-1641 (7th Cir. Aug. 11, 2023):
Time and again we have declared that “prevailing defendants in copyright cases are presumptively entitled (and strongly so) to recover attorney fees.” Our strong presumption flows from copyright law’s asymmetric recoveries. A successful copyright plaintiff can recover damages and receive a judicial recognition of her rights. A successful defendant, by contrast, recovers nothing he didn’t already have. His defense is that the work he used was free for all; after his victory, that work remains in the public domain for others to build upon. The best he can hope for is to break even—to recover his attorney’s fees. Without an award of attorney’s fees, a defendant faces pressure to abandon his meritorious defenses and throw in the towel because the cost of vindicating his right (his attorney’s fees) will exceed the private benefit he receives from succeeding (a nonexcludable right to continue doing what he has already done)….
Whether to award fees is a matter for the district court’s discretion, but our presumption places a heavy thumb on the scale in favor of doing so for a prevailing defendant.
Interesting implications for SAD Scheme cases in the Northern District of Illinois. This logic seemingly extends equally to trademark cases…

* Politico: “Tech giant battle means doom for small news outlets, Trudeau was warned.” Canada’s C-18 “link tax” has devastated independent journalism in Canada.

* PetaPixel: “Photographer Who Won Warhol Copyright Case Paid Over $2.5M to Defend Rights”

* United Federation of Churches LLC v. Johnson, No. 23-35060 (9th Cir. Nov. 30, 2023). For ACPA purposes, “the alleged infringement regards a post-domain path, not a domain name within the meaning of Section 1127. Moreover, contrary to The Satanic Temple’s novel argument, domain registration is not the same as registration for a social media website.”

* Hoffmann Brothers Heating and Air Conditioning, LLC v. Hoffmann Air Conditioning and Heating, LLC, 2023 WL 2681994 (E.D. Mo. March 29, 2023). Trademark owner lost a jury trial, allegedly because the court’s instructions to the jury about initial interest confusion were not favorable enough to the rightsowner. Motion denied.

* Nolen v. PeopleConnect, Inc., 2023 WL 4303645 (N.D.Cal. June 30, 2023)

The internet is not Schrödinger’s cat, only existing once it has been seen. Webpages do not rest up in the ether until a viewer’s click jolts them into being; rather, a webpage is published once it is publicly accessible….Defendant published Plaintiff’s image even though accessing it requires a predicate search (something inherent to anything on the Internet – the viewer must be directed to a URL)….
to hold that images are only commercially used once they are actually seen by a consumer makes little practical sense. It would be as if an image within a newspaper advertisement were not commercially used until a customer paid their quarter, unlocked the newsrack, opened the paper, began reading, opened the page containing the relevant circular, and saw it. Defendant’s construct makes even less sense in the age of the Internet. As noted above, a webpage openly published on the Internet still requires a viewer to click on its URL before it may be seen. The notion that there is no publication or commercial “use” upon placing the image on the open Internet ignores the terms and purpose of Cal. Civ. Code § 3344, which is predicated upon “knowing[ ] use[ ] … for purposes of advertising.” The point of using Plaintiff’s image for advertising is to try to enhance Defendant’s business revenues by increasing the odds of sales. Here, Defendant uses Plaintiff’s image as bait, betting on the chances that Plaintiff’s image will be seen by some viewers, some of whom will be thereby induced to further click and subscribe to Defendant’s product. So viewed, appropriation is not contingent on the ultimate success Defendant’s campaign (actual viewership and resulting sales).
* Serc-CA Discos, Inc. v. Tierra Caliente Music Group, S.A., 2023 WL 8480096 (S.D. Tex. Sept. 29, 2023). 512(f) case in the context of an ownership dispute is sent to a jury. “Defendants present some evidence of the Chavez Brothers’ belief, at the time of the put-back notices, that Defendants held rights sufficient to upload the subject media. Whether to accept that belief as credible is for a jury to decide, not a matter of law for the Court, and summary judgment must be denied.”

* S&P Global Inc. v. S&P Data LLC, 619 F.Supp.3d 445 (D. Del. Aug. 4, 2022):

The KeyBank, SoFi, and Wells Fargo incidents are the best evidence of confusion. Each shows initial interest confusion. Initial interest confusion is actionable in the Third Circuit. “The rarity of … evidence [of actual confusion] makes even a few incidents highly probative of the likelihood of confusion.”

* In 2014, Defendants’ executive assistant sent a LinkedIn message seeking to arrange an introduction call to KeyBank, a client of Plaintiffs. The message was eventually forwarded from KeyBank to one of Plaintiffs’ employees.
• In 2017, Defendants’ executive assistant sent emails to Steven Sikes from SoFi seeking to schedule a meeting between Mr. Sikes and Mr. Plashkes. Mr. Sikes initially agreed to the meeting, but later declined the meeting, stating, “I apologize for the about face, but my initial impression was that you guys were from Standard & Poor’s.”
• In 2017, Christy Boughman from Wells Fargo emailed sales@spdatallc.com and asked for pricing on “the S&P CDO Evaluator License.” [The S&P CDO Evaluator is one of Plaintiffs’ products.]. Defendants’ executive assistant responded, “are you trying to reach standard and poors?”. Boughman replied, “I am trying to reach S&P Data LLC. Do you have the CDO Evaluator License?”

* Phys.org: Digitizing books can spur demand for physical copies:

Digitization can boost sales of physical books by up to 8% by stimulating demand through online discovery. The increase in sales was found to be stronger for less popular books and even spilled over to a digitized author’s nondigitized works

* Vans, Inc. v. Walmart, Inc., 2023 WL 6922833 (C.D. Cal. Oct. 11, 2023): “initial interest confusion could occur if Walmart stores display shoes below eye level. In this scenario, a consumer may be initially drawn to Walmart’s shoes based on the goodwill associated with Vans’ Stitching Mark.” Seriously, no one has a clue of what “initial interest confusion” means or stands for.

Keyword Ads

* Cohen v. Hot House Beauty Ltd, 2023 WL 4408919 (W.D. Pa. June 14, 2023)
if “Amazon.com purchases keywords from Google, the search results attributable to Amazon.com do not contain Plaintiff’s mark and are clearly labeled….consumers may be “diverted” but they are not “confused.” Thus, these facts are insufficient to support a claim of initial interest confusion.”

* RBG Plastic, LLC v. Webstaurant Store, 2023 WL 2683170 (N.D. Ill. March 29, 2023):

Webstaurant argues that purchasing the keyword “RESTAURANTWARE” to cause Webstaurant’s own advertisements to appear is not trademark infringement. There have been some decisions—though none controlling in this District—in which the court held that purchasing a term for the purpose of search-engine advertising is not likely to cause confusion (and thus would not result in infringement). But none of those cases outright hold that there is a blanket rule for whether using a mark in a keyword purchase is definitively infringement or definitively not infringement. That is not surprising, given that factual context matters, especially because keyword purchasers use the keywords in various ways after a potential customer views the search-engine results. And there certainly is no such blanket rule either way within the Seventh Circuit. Having said, that, RBG failed to oppose—and even seems to agree with—Webstaurant’s contention that, as a matter of law, a purchased keyword is not likely to cause confusion. So Webstaurant’s motion for summary judgment as to the keyword purchase of “RESTAURANTWARE” for advertising purposes is granted and this theory of liability is dismissed from the case.

* Maryland State Bar Association Ethics Opinion 2022-02, “Internet Advertising: Competitive Keyword Purchases,” approved January 11, 2023. It’s the 2020s, and bar associations are STILL freaking out about competitive keyword ads???

The conclusion: “the purchase of a competitor’s name as a keyword in an internet marketing campaign violates the Maryland Attorneys’ Rules of Professional Conduct (“MARPC”), Rule 8.4.” The entire justification for why Rule 8.4 is violated:

The core reason for purchasing as a keyword the name of another lawyer or law firm is to appropriate for oneself the earned reputation of another lawyer or firm in order to further one’s own financial interests. In the view of the majority of this Committee, such conduct is inherently deceptive, especially to the unsophisticated consumer, evidences a lack of professional integrity and calls into question the trustworthiness of the lawyer who does so.

This “analysis” sucks. The first sentence is an empirical assertion without any empirical support (because it’s empirically false). The “core reason” for competitive keyword advertising is to give consumers more choices, not to “appropriate” value improperly. Based on this false claim, the rest of the analysis is conclusory. What is “inherently deceptive”? Where is the “lack of professional integrity,” and how does competitive keyword ads signal “untrustworthiness”? This paragraph is like a ChatGPT output of venerable gripes about competitive keyword advertising, not a legally rigorous assessment of the tradeoffs between intellectual property and consumer protection. Bar associations, do better. For more on the irrationality of this ethics opinion, see this 2016 paper.