Technically Legal

Twitter’s Promoted Tweets program is still in the planning stages, but they haven’t ruled out selling the search term “Nike” to Reebok. Court after court have found that this isn’t trademark infringement, but Google gets sued regularly for selling trademarked terms to competitors. Twitter, if they go down this path, could expect a similar torrent of litigation.

Comments Off Posted in: Links on May 24, 2010

Planet Money, the great NPR podcast about the financial crisis and economics, and whom we’ve covered before, seems to have commited fraud on the United States Patent and Trademark Office.

On their most recent podcast, they talked about applying for the “Money Honey” trademark for use on visors and hats. You can search for “Money Honey” or “85009258″ on the TESS site here.

The problem is that it doesn’t look like they filed an “Intent to Use” application. Rather, they filed an application where they must have represented that they already sold a hat or visor in commerce marked with the Money Honey brand. Since they admitted in the podcast that they haven’t made or sold any yet, they must have lied to the Patent and Trademark Office when they said that they had sold it in commerce.

This is still an application, and the mark hasn’t been registered, but god-forbid Planet Money ever tries to prosecute someone for infringing this mark, the defendant would have a strong case that the registration is invalid for fraud on the PTO.

Please Note: This was done as an intellectual exercise. I harbor no ill will toward Planet Money, and do like their program a great deal.

2 Comments Posted in: Analysis on May 5, 2010

On yesterday’s Podcast, we discussed how Rescuecom voluntarily withdrew their trademark infringement suit against Google’s Adwords program. Last week a similar suit against Google, Stratton Faxxon v. Google, was dismissed out of a Connecticut Superior Court. According to Eric Goldman, there have been approximately twelve similar lawsuits to date (primarily against Google) for the sale of trademarked phrases in the Adwords program.

Unlike Rescuecom, Stratton Faxon didn’t claim trademark infringement in this suit. Instead, their claims alleged interference of business relations and unfair competition. The details are somewhat unclear, and I don’t have access to the actual filings, but it appears that Google filed a “Motion for Judgment” which was granted last week. No order or opinion stating the reasoning for the dismissed seems to be publicly available. However, because Stratton Faxon did not sue on a theory of trademark infringement, they are not precluded from refiling another suit in Federal Court on a trademark theory.

The theory behind the bulk of these suits is fairly novel. To summarize, trademark owners are suing Google for selling their registered trademarks to competitors as search terms. After competitor successfully “buys” (or “bids” might be more appropriate) for a search term that consists of a registered trademark of another person, the competitor’s advertisement appears in the sponsored links section on the search Google search result page. This does not affect the organic results where you would presumably see any links related to the trademark owner. Rather, it only affects what appears as an advertisement which is clearly labeled “sponsored link.” The beef these trademark owners seem to have is that they don’t want any links to competitors, sponsored or not, appearing next to their organic search engine results. Unfortunately, not all uses of a trademarked phrase are protected by the law. See e.g., Nominative fair use.

As you might imagine, these suits have been challenged by Google and other defendants on a number of grounds. In an ordinary trademark infringement case, a plaintiff needs to establish that the defendant, (1) used his identical mark, or one that is confusingly similar, (2) in commerce, (3) in connection with the sale of goods or services, (4) and, that the use was causes a likelihood of confusion to the consumer. The two biggest points of contention that defendants have argued is that selling a trademarked phrase is not “in commerce” and that there is no “likelihood of confusion” that results from the sale of the mark. Before Rescuecom withdrew from litigation, the Second Circuit opined that the sale of trademarks in the Adwords program was enough to satisfy the “in commerce” requirement. As far as I know, no court has resolved the the “likelihood of confusion” issue on the merits. Nevertheless, it smells like an awfully tenuous argument given the layout and separation of sponsored links and organic search results.

Hat tip goes to Eric Goldman for his outstanding coverage on Google Adwords litigation.

Comments Off Posted in: Analysis on March 17, 2010

Summary Judgment Motions in Viacom v. YouTube, Amazon 1-Click Patent, and Rescuecom v. Google comes to an end.

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Summary Judgment Motions in Viacom v. YouTube

Court orders (relatively) quick unsealing of summary judgment papers in Viacom v. YouTube suit
YouTube: Keep summary judgment papers sealed for months; Viacom: ‘the time has come for transparency and public access’
Get ready for the Viacom v. YouTube summary judgment briefs

Amazon 1-Click Patent Survives Reexam

Amazon One-Click Patent Slides Through Reexamination
Controversial Amazon 1-Click patent survives review
Amazon’s 1-Click Patent Validated After Four-Year Re-Examination

Rescuecom v. Google Ends

Rescuecom Declares Victory… In Dropping Its Lawsuit Against Google
Rescuecom v. Google, Search Terms and Trademark Infringement

1 Comment Posted in: Podcast on March 15, 2010

Google had applied for a trademark on Nexus One, which drew some ire from the estate of Philip K. Dick. The trademark application was rejected for a totally different reason, though. The problem was that it could create a likelihood of confusion with a pre-existing mark for “Nexus,” with relation to telecommunication services.

Google can still appeal this decision, through the US Patent and Trademark Office, and then into the courts if they wish.

Comments Off Posted in: Links on March 15, 2010

Amazon Wrap Up, iPad Trademark Dispute, Out-Of-School Speech, New Rules for Juries

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iPad Trademark Dispute

FUJITSU’s iPAD
Fujitsu’s Leaked iPad Memo
Will the iPad soon have a new name?
MAGTEKs iPad
STMicroelectronics iPad
Apple’s Trademark Application

Students Punished, or not, for Out of School Speech

Snyder v. Blue Mountain School District
Synder Opinion
Layshock v. Hermitage School District, Opinion

New Rules for Juries

Juror Use of Electronic Communication Technology
Courts move to ban juror use of Blackberry, iPhone, Twitter and Facebook

Comments Off Posted in: Podcast on February 8, 2010

Are file extensions trademarks, Google Street View suit reinstated, and Amazon pulls Macmillian books.

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Are file extensions trademarks?

File extensions cannot be trademarks

Street View Suit Reinstated

Google Street View: Appeals court revives Pa. couple’s lawsuit
The opinion

Amazon pulls Macmillan Books

Amazon Pulls Macmillan Books Over E-Book Price Disagreement
Amazon conceded to Macmillan hours after we finished recording.

Comments Off Posted in: Podcast on February 1, 2010

Google has come under fire from the estate of Philip K. Dick over the use of name Nexus. Dick wrote Do Androids Dream Electric Sheep, which was turned into the movie Blade Runner. The book and movie feature Nexus-6 model androids. Yesterday, Google released the Nexus One phone, based on the Android operating system.

The Dick estate has a tough case to make for either copyright or trademark infringement. The copyright case is hard to make lagely because it’s just one word at issue. The trademark case is difficult because the only time Nexus was used as a brand was in a book. Nexus was never used by Dick to brand an actual product in real life.

Comments Off Posted in: Links on January 6, 2010

AppleInsider is reporting that Apple and Psystar have entered into a partial settlement. The deal will prevent a trial on the issues of copyright damages, trademark and tradedress infringement and state unfair competition claims. In exchange, Psystar will pay an undisclosed amount of money, and will not have to pay Apple until after Psystar appeals the District Court judge’s ruling.

The judge still has to decide whether to issue Apple’s permanent injunction, and Apple’s legal challenge to Psystar’s RebelEFI is not included in this settlement.

1 Comment Posted in: Links on December 1, 2009

Verizon recently announced two phones branded with the “DROID” mark. One of the phones is made by Motorola, the other by HTC. The name likely comes from the fact that both phones run the Android operating system.

Typically a trademark answers the question “Where am I from?” Not, “What am I?” For example, Swingline on your red stapler lets you know that the stapler is from Swingline. It doesn’t tell you that it’s a stapler.

DROID here doesn’t fall into either category. It doesn’t particularly tell you where it’s from, because the phones are on Verizon but made by two different companies. It also doesn’t describe the product itself.

Regardless, if Verizon filed for a trademark on the name DROID for cell phones, they would probably be given the trademark.

That is, if Lucasfilm hasn’t beaten them to it.

On October 9^th, Lucasfilm filed an applcation to register the word “DROID” for “Wireless communications devices, including, mobile phones, cell phones, hand held devices and personal digital assistants.” The serial number is 77845682, and you can search for the application through the TESS Engine at the Trademark office. Sadly, I can’t find a way to directly link to it.

We’ll follow this as it develops because a lot of issues might arise if these two companies clash. Stay tuned.

4 Comments Posted in: Commentary on November 5, 2009