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Joe’s Café

Joe’s Café

Traditional Trademark Law

© 2015 Sally Abel and Peter Menell

TRADEMARK LAW

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Addresses: Real Space vs. Cyberspace

Realspace:Name: Berkeley Center for Law & TechnologyStreet: University of CaliforniaCity, State, Zip: Berkeley, CA 94720

_____________________________________Cyberspace: [email protected]

Name: BCLTThird Level DN: lawSecond Level DN: berkeleyTop Level DN: edu

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Domain Names

.com

Source

Address

Joe’s Café

Joe’s Café

Cyber-Trademark Law

www.joescafe.com

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URL: www.heartsonfire.com/

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Search Query: Hearts on Fire

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8

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$7.5 m

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.GURU = 41,161

.PHOTOGRAPHY = 25,308

.TODAY = 12,157

.TIPS = 11,444

.TECHNOLOGY = 9,066

.CLOTHING = 8,270

Today’s Explosion of New gTLD Registrations900+ new generic Top Level Domains, including:

As of March 5, 2014

1. Cyber-Piracy 2. Cybersquatting

4. Cyber-racing3. Typo-squatting

www.cbsmews.com

www.panavision.com www.kaplan.com

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RECOURSE

1993 1996

FederalAnti-Dilution

Act

?

PapalVisit99.com1999 Papal Visit Commemorative Official Commemorative Items.com

Papal Visit 1999, St. Louis.com

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“Avery Dennison is a global leader in pressure-sensitive technology and innovative self-adhesive solutions for consumer products and labeling systems.” <www.averydennison.com>

Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999)

Fame

No Commercial Use

RECOURSE

1993 1996


Act

ACPA

1999

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Lanham Act S. 43(d)15 U.S.C. S.1125(d)

Anticybersquatting Consumer Protection Act

(d) CYBERPIRACY PREVENTION

Any person who, with bad-faith intent to profit from the goodwill of a trademark or service mark of another, registers, traffics in, or uses a domain name that is identical to, confusingly similar to, or dilutive of such trademark or service mark, without regard to the goods or services of the parties, shall be liable in a civil action by the owner of the mark, if the mark is distinctive at the time of the registration of the domain name.

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Virtual Works v. Volkswagon Inc.; Network Solutions, Inc., 238 F.3d 264 (4th Cir. 2001)

vw.net

Virtual Works Industries develops high quality interactive Internet sites for business, government, organizations, andeducation.

RECOURSE

1993 1996


Act

ACPA

1999 2000

UniformDispute

Resolution Policy

(UDRP)

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UNIFORM DISPUTE RESOLUTION POLICY

• Administrative challenge

• Panel:1-3 experts in IP law/Internet• Parties can go to court at any time

Process

1. Domain is identical or confusingly similar to your mark;

Basis for Complaint

2. Domain holder has no “right or legitimate interest” in the domain; &

3. Domain “has been registered and is being used in bad faith”

• Decision within 14 days of response• Domain holder has 20 days to respond

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http://www.nicolekidmannude.com/

What constitutes “confusion” on the Internet?

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Next Exit

Ooh ooh!Can we stop?

We love McDonald’s!!

Initial Interest Confusion


Let’s eat here!But it’s not McDonalds.

Who cares! I’m starved.

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Yaaaay!

Yaaaay!

Yaaaay!

Rooray!


Steinweg

GROTIAN-STEINWEG

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"It is the subliminal confusion apparent in the record as to the relationship, past and present, between the corporate entities and the products that can transcend the competence of even the most sophisticated consumer. Misled into an initial interest, a potential Steinway buyer may satisfy himself that the less expensive Grotrian-Steinweg is at least as good, if not better, than a Steinway. Deception and confusion thus work to appropriate defendant's good will. This confusion, or mistaken beliefs as to the companies' interrelationships, can destroy the value of the trademark which is intended to point to only one company.“ 365 F.Supp. at 717.

[T]he court found that, despite the high price of the pianos and the sophistication of the purchasers, the likelihood of confusion resulting from the factors discussed above could not be eliminated by the degree of care taken in selection:

Grotian, Helferich, Schulz, Th. Steinweg Nachf., v. Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975)

www.peta.org

People for the Ethical Treatment of Animals

People Eating Tasty Animals

263 F.3d 359 (4th Cir. 2001)

• No parody because connection not simultaneous

• Use with goods/services where hindering consumer access to tm owner and/or includes links

• Initial interest confusion

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Google Search I’m Feeling Lucky

What is “use” on the Internet?

Ordinary wordFunctional use

playboy

Source identifier 1st Amendmentuse

Keyword Advertising

playboy

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“[Applying the Brookfield court’s analysis of initial interest confusion and the Sleekcraft eight factor likelihood of confusion test,] we conclude that a genuine issue of material fact exists [as to trademark liability].”

Playboy v. Netscape, 354 F.3d 1020 (9th Cir. 2004)

Cf. concurring opinion of Judge Berzon, “Brookfield might suggest that there could be a Lanham Act violation even if the banner advertisements were clearly labeled . . .”


What is “use” on the Internet?

Ordinary wordFunctional use

rescuecom

Source identifier 1st Amendmentuse

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Sale of TMs as Keyword Advertising Triggers®provides on-site one hour response

computer services. 24 hours per day. 365 days per year.

v.

))))

TM infringement

for selling Rescuecom as a trigger for Google advertisements by Rescuecom’s competitors

12(b)(6) MotionNo Use in

Commerce

“Use in Commerce” Puzzle

§43(a) imposes liability on “any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol, or device ... which-(A) is likely to cause confusion

§45 CONSTRUCTION AND DEFINITIONSIn the construction of this Act, unless the contrary is plainly apparent from the context –

* * *The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce –

* * *(2) on services when it is used or displayed in the sale or advertising of services * * *

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Section 45 * * * states rather that the terms listed shall have the given meanings “unless the contrary is plainly apparent from the context.”

* * * The requirement that a use be a bona fide use in the ordinary course of trade in order to be considered a “use in commerce” makes clear that the particular definition was not intended as a limitation on conduct of an accused infringer that might cause liability. If §45’s definition is applied to the definition of conduct giving rise to liability in §43(a), this would mean that an accused infringer would escape liability, notwithstanding deliberate deception, precisely because he acted in bad faith. A bad faith infringer would not have made a use in commerce, and therefore a necessary element of liability would be lacking. Liability would fall only on those defendants who acted in good faith. We think it inconceivable that the statute could have intended to exempt infringers from liability because they acted in bad faith. Such an interpretation of the statute makes no sense whatsoever. It must be that Congress intended §45 definition of “use in commerce” to apply to other iterations of the term “use in commerce” [such as to qualify for registration] and not to the specification of conduct by an alleged infringer which causes imposition of liability.

Rescuecom Corp. v. Google, 562 F.3d at 132-33

Solving the “Use in Commerce” Puzzle

Rescuecom Corp. v. Google, 562 F.3d 123 (2d Cir. 2009)

Sale of TMs as Keyword Advertising Triggers

• TM use by

®provides on-site one hour response computer services. 24 hours per day. 365 days per year.

v.

))))

TM infringement

for selling Rescuecom as a trigger for Google advertisements by Rescuecom’s competitors

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v.

))))

TM infringement

for purchasing “hearts on fire” as a trigger for advertisements

®

Infringement for Purchase of TMs as Keyword Advertising Triggers

Hearts on Fire Company, LLC v. Blue Nile, Inc. 603 F. Supp. 2d 274 (D. Mass. 2009)

hearts on fire

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But “Use in Commerce” Alone Does Not Establish TM Infringement –

There Must Be Likelihood of Confusion

But what constitutes “confusion” on the Internet?

Hearts on Fire Company, LLC v. Blue Nile, Inc., 603 F.Supp.2d 274 (D.Mass. 2009)

Likelihood of Confusion in the Context of Purchase of TMs as Keyword Advertising Triggers

Hearts on Fire Company, LLC v. Blue Nile, Inc., 603 F.Supp.2d at 287

Next Exit

Many cases * * * will fall somewhere between the incarnations of so-called initial interest confusion discussed above-the misleading billboard or the choice-enhancing menu. The Court's task is to distinguish between them. As a preliminary matter, the Court agrees with the many scholars who find the deceptive billboard analogy often inapt in the internet context. Unlike the deceived shopper who is unlikely to get back on the highway, the internet consumer can easily click the ‘back’ button on her web browser and return almost instantly to the search results list to find the sought-after brand. Her added search costs, in other words, may often be very low while her comparative choice among products is greatly expanded.

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• purchased “ActiveBatch as a keyword

Competitors in sellingJob scheduling software


• purchased “ActiveBatch as a keyword

Competitors in sellingJob scheduling software

Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011)

• BUT not likely to cause initial interest confusion;must consider results page as whole

• TM use by

• TM owner must show confusion; not mere diversion

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Filing Disability Claims

Ads

Social Security Disability – free,No obligation consultation.www.disabilitygroup.com/

Filing Disability ClaimsSocial Security Disability – free,no obligation consultation.www.disabilitygroup.com/

Filing Disability Claims

Ads

Social Security Disability – free,No obligation consultation.www.disabilitygroup.com/

Filing Disability ClaimsSocial Security Disability – free,no obligation consultation.www.disabilitygroup.com/

Binder v. Disability Group, Inc., 772 F.Supp.2d 1172 (C.D.Cal. 2011)

Strong LOC based on identical mark, strong marketing by plaintiff, identical market, intentional copying, flawed survey evidence (16 out of 17 confused), and evidence of actual confusion

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Multi Time Machine v. Amazon.com 926 F. Supp. 2d 1130 (C.D. Cal. 2013)

Multi Time Machine v. Amazon.com 926 F. Supp. 2d 1130 (C.D. Cal. 2013)

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Cosmetic Warriors Ltd v amazon.co.uk Ltd EWHC 181 (Ch) (10 February 2014)

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Contributory Infringement for Sale of TMs as Keyword Advertising Triggers

)))))

ContributoryTM infringement

for selling “Rosetta Stone” as a trigger for advertisements

v.

®L


Rosetta Stone

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Foreign Language TodayLearn French, Italian, and SpanishCheaper than Rosetta Stonewww.amorelingua.com



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Contributory Infringement forCounterfeit Goods

)))))

ContributoryTM infringement

for hosting online sales bazaar

v.

®

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v.

eBay anti-counterfeiting measures

• $20m annually on tools to promote trust and safety

• 200 employees who focus exclusively on combating infringement

• May 2002 – “fraud engine” to ferret out counterfeit listings

• Verified Rights Owner (VeRO) Program – notice and takedown

• 2003: implemented special warning messages when vendor attemptedto list Tiffany products.

• suspends hundreds of thousands of sellers per year

• 2006: 6 – 12 hour delay of Tiffany listings; develop ability to assessnumber of items in a listing; restrictions on one and three day auctions

www.tiffany.com

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www.tiffany.me

http://www.tiffany.me/about-us

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http://www.tiffany-jewelries.us/

http://www.tiffany-jewelries.us/?MenuInfos_20.html

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))))))

Direct TM infringement


v.

®

Indirect TM infringement

TM Dilution

))))))

))))))

Direct TM infringement


v.

®

Indirect TM infringement

TM Dilution

))))))

Summary JudgmentGranted for

• no likelihood of confusion

• functionality defense

732 F.Supp.2d 628 (E.D.Va.2010)

Notice of Appeal

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v.

676 F.3d 144 (4th Cir. 2012)

Direct Infringement:• failure to carefully consider several allegations supporting likelihood of confusion (intent, actual confusion, consumer sophistication)• but notes that not all of the traditional factors are in play or are of only limited significance where nominative fair use is in play (e.g., similarity of marks – marks will be the same; strength of the mark)

Functionality Defense:• inapplicable – focus in on the plaintiff’s use of the mark (which is not functional); not the defendant’s use

reversed

Indirect Liability:• over-reliance on Tiffany v. eBay (which followed trial) for a summaryjudgment determination

AvePoint, Inc. v. Power Tools, Inc.2013 WL 5963034 (W.D. Va. Nov. 7, 2013)

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CyberTM and Freedom of Expression

Nominative use on the Internet

buy-a-lexus.com

buyorleaselexus.com

Sponsored/Affiliated with ?

9th Circuit Nominative Fair Use Reqts

2. Has the mark been used by the defendant more than is reasonably necessary to identify the plaintiff?

3. Has the defendant done acts that would falsely suggest sponsorship or endorsement by the trademark holder?

1. Is the product or service of the trademark owner one which is readily identifiable without use of the trademark?

Toyota v. Tabari, 610 F.3d 1171 (9th Cir. 2010)

no

no

no

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This site is neither endorsed , nor sponsored by,nor affiliated with Playboy Enterprises Inc.,

PLAYBOY®, PLAYMATE OF THE YEAR®, andPLAYMATE OF THE MONTH®

are registered trademarks of Playboy Enterprises, Inc.

Playmate of the year 1981

<META Name = “KEYWORDS” Content = “Playboy, Playmate of the year, . . . “>

Playboy Enterprises v. Terri Welles, 279 F.3d 796 (9th Cir. 2002)

• use of trademarks in metatags, headlines,and banner ads = nominative fair use

• repeated use of trademarks as website wallpaper NOT nominative fair use

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This site is not affiliated with Bally Total Fitness Health Clubs

descriptive fair uses, 1st Amendment protection

Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998)

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www.bosley.com/

This website contains information critical of the Bosley Medical Institute and is not affiliated with it in

any way. The Bosley Medical website is locatedat www.bosley.com

www.bosleymedical.com/

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This site is non-commercial and intended for consumer information purposes only.

www.falwell.com

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www.fallwell.com

No likelihood of confusionLamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005)

Narrows the “initial interest confusion” standard set forth in PETA.org

• does not adopt initial interest confusion test; LOC applies

• critical element: must involve financial gain

Documents

Digital TM 2015 PSM 5-20-15 handouts.ppt Cut Diamonds at Blue Nile Find hearts on fire diamonds at Forbes Favorite Online Jeweler. Sponsored by: Find hearts on firediamonds at Forbes