Microsoft has recently tested a new system of advertising whereby ads are not placed on top of the organic search results, nor to the side, nor on a colored background, but actually within the list of organic results. Is this a smart move? Will Microsoft find itself on the end of a (meritorious) lawsuit for trademark infringement or unfair competition? Probably not. Continue reading »
While the Wall Street Journal (initially, at any rate) declared outright victory for Google’s AdWords service after the Court of Justice of the European Union (“ECJ” or “CJEU”) ruled that the sale of keywords to advertisers did not constitute “use” of those keywords within the meaning of the Trade Marks Directive (89/104/EEC), most of us were more cautious from the outset.
I couldn’t let today pass without wishing you all a very happy World IP Day. This year, the focus of the day is “Designing the Future”, which you can read about here. You can also ‘Like’ World IP Day on Facebook here, and can read the IPKat’s salute here.
No doubt the next year will be an interesting one for IP. Perhaps sometime in the next 366 days we will know whether YouTube is exempt from copyright liability under the DMCA in the States and/or the E-Commerce Directive across Europe, and whether Google (and now Microsoft) is liable for or automatically exempt from unfair competition claims for their sale of trademarks as keywords in Europe.
If I told you that Robert Burck had had a haircut, you probably wouldn’t know what I was talking about. But if I told you that while in Times Square last week I noticed that the Naked Cowboy is back performing with a new look, you might even remember the lawsuit he filed last year against Sandra Brodsky, which I commented on here (case 1:10-cv-05539-VM).
Briefly, Burck sued Brodsky for trademark infringement over her use of the Naked Cowgirl label; and her counterclaims included an allegation that he had obtained some of his trademark registrations fraudulently. Continue reading »
Yes, the man telling us we "have enough to worry about" is wearing a cowboy hat. In the middle of NYC.
In his January 25, 2011 decision in the Central District of California, District Court Judge George H. King held that the targeted use of a third party’s trademark in a Google AdWord advertising campaign can constitute trademark infringement and can also leave advertisers open to an award of enhanced damages, attorneys fees and costs. (Binder v. Disability Group, Inc., Case no. cv 07-2760-GHK)
The holding is a warning to advertisers that Google’s (current) placement and color of ads is insufficient by itself to avoid trademark infringement. Accordingly, care must be taken to ensure that such ads are carefully worded, particularly since it appears that the infringed trademark in Binder was not even in the text of the offending ads.
In relation to the trademark infringement claim under 15 U.S.C. § 1114(1)(a), the Court noted:
“Moreover, ‘[i]n the context of the Web in particular, the three most important Sleekcraft factors [the ‘Internet trilogy’] are (1) the similarity of the marks, (2) the relatedness of the goods or services, and (3) the simultaneous use of the Web as amarketing channel.’ GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9thCir.2000).”
The Court found a “strong” likelihood of confusion due to the strength of Plaintiff’s mark, identity of the marks, identity of services and identity of commercial channels (i.e. the Internet). Accordingly, the Plaintiff’s registered marks were found to have been infringed by the Defendants’ AdWords ads. There was also evidence of actual confusion among users viewing Google’s search results (which the Court described as the result of the Defendants’ “deception”), though the Court notes that evidence of actual confusion was not necessary.
The Court also held that the Defendants’ use of Plaintiff’s trademarks as part of their AdWords campaign meant they were also liable for false advertising under 15 U.S.C. §1125(a), saying:
“Defendants used Plaintiff’s mark in their advertising campaign through Google to market their business in a manner that was likely to confuse potential clients and that decieved potential clients into thinking they were being led to Plaintiff’s website”. [Emphasis added.]
The indication is that the Defendants’ wrongful act was the very leading of users to their website, and was not in any way dependent on what appeared on said website.
The Court held that the Defendants’ intentional use of their competitor’s registered marks amounted to willful misconduct and a “deliberate intent to deceive”. Accordingly, the Court awarded enhanced damages under 15 U.S.C. § 1117(a) in the amount of double the Plaintiff’s lost profits.
Furthermore, the Court held that this type of trademark infringement is the sort of “exceptional” infringement referred to in the Lanham Act, and awarded the Plaintiff additional orders of attorneys’ fees and costs. The Court also found one of the Defendants’ officers personally liable since he had “directed, authorized or participated in” the infringement. In a small victory for the Defendants, the Court declined Plaintiff’s claim for prospective corrective advertising costs, citing the passage of time (the judgment came a little over four years after the last infringement) and a lack of specificity in Plaintiff’s pleadings. So make sure to start claims sooner rather than later.
Finally, the Court left the door open for a future litigant to argue that the failure of a mark owner to preemptively register their mark with Google (to prevent its selection as an AdWord) meant the owner has failed to mitigate its losses. The argument failed in Binder partly because the evidence presented by the Defendant was vague, but the Court didn’t completely rule out the possibility that it could apply on different evidence (though it seems unlikely).
When I was growing up, the BBC provided journalism at its very best. The anchors spoke so clearly, and with such grammatical precision, that “BBC English” became a standard in its own right. If you wanted to understand something in the news, the BBC was the most accurate and unbiased report you could find.
The BBC online, however, has tarnished my impressions of this great British organisation [sic]. While their TV and radio reports are still excellent, some reporting online is sensationalist and more akin to tabloid reporting. I understand, and advocate, distilling complex matters into plain language when your target audience is unlikely to be familiar with the more technical aspects of a development, but getting facts wrong or failing to adequately investigate a claim is not what I would expect from the BBC.
I am not alone in thinking this. A recent piece in the Guardian brilliantly parodied the BBC’s online science reports. Martin Robbins, “The Lay Scientist”, wrote “This is a news website article about a scientific paper” which attracted some really funny and incisive comments too. There are websites devoted to tracking, and correcting, BBC science reports.
Two recent news reports on IP stories also caught my attention.
as it appears on apple.com
The first concerns Microsoft’s opposition to Apple’s application to register “APP STORE” as a trademark in the US. First, it suggests that Microsoft believes that “APP STORE” is “too” generic. This is incorrect, since there is no sliding scale of genericism (or “genericness”) which is allowable in applications to register trademarks: if a mark is generic (descriptive of the goods and/or services for which registration is sought) it can’t be registered. End of.
Secondly, no mention is made of the USPTO’s 2009 final refusal to register the mark for the very reason that it is “merely descriptive”. The refusal is publicly available, and you can read the USPTO’s letter notifying Apple of its refusal here.
Third, the report says:
“It is not clear why Microsoft has filed papers now, more than a year after the USPTO opened up Apple’s original application for opposition.”
The irony here is that if you follow the very link that the BBC provides, you will find the answer. The page linked to by the BBC says two things: first, that Microsoft’s Opposition was actually filed in July 2010, not January 2011; and second, it says:
“Current Status: An opposition after publication is pending at the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page.”
Immediately upon visiting TTABVUE, you can see that Microsoft filed a motion for summary judgment in respect of Apple’s application on January 10, 2011. That’s why Microsoft filed papers in January 2011 – there was a brand new proceeding. Thanks to Niamh Hall’s post on the Marques Class 46 blog for bringing this story to everyone’s attention.
The other story concerns the BBC’s report on how the “Catcher in the Rye” litigation came to an end. I’ll post about it later.
Ever thought of applying for an intellectual property right via a Czech agency? Probably not, if you’re reading this, but in case you do then you might want to read the IPKat’s comments on WIPD, an organization whose name and logo closely resemble those of WIPO, which in addition to being a well respected organization is also an agency of the United Nations.
“The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations. It is dedicated to developing a balanced and accessible international intellectual property (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest.”
“The World Intellectual Property Database (WIPD) is an organization whose task is to manage the world database falling within the area of intellectual property, in particular patents and trade marks.”
Should you you wish to contact WIPD using anything other than snail mail (since only a postal address is shown on the WIPD website), then you should contact David Cabal, World Intellectual Property Database s.r.o., at email@example.com (which appears to be a functioning email address) or at +420.606654600 (assuming that’s a real phone number). If either of these details are incorrect you can inform the domain name registrar, Joker, who are obliged to insist on WIPD providing accurate contact details (though that may eventually force them into hiding behind a privacy proxy).
In the meantime, you can compare the images above and below, and consult the relevant websites to make up your own mind about WIPD’s bona fides.
Amid plenty of fanfare, UK Prime Minister David Cameron recently announced plans to develop part of East London as a global IP hub that will compete with Silicon Valley. With the existing tech park dubbed “Silicon Roundabout” the plans are certainly ambitious, and David Cameron looked to two (US) tech giants to give credibility to the plans. The trouble for the Government, though, is that he seems to have jumped the gun.
After telling us that he’s going to review copyright law in the hope of creating another Google, David Cameron said that Google would create an innovation hub in East London and that Facebook will create a permanent home in East London for their Developer Garage programme.
Facebook responded immediately, first in a post on TechCrunch and then on Twitter. On TechCrunch, Dave Nattriss, Secretary of the Facebook Developer Garage that is already in London, said:
“‘Facebook will create a permanent home in East London for their Developer Garage programme’ – hmm, that’s news to us! We have been using TechHub for the past few months for our events, but it’s barely ‘east London’, and certainly not permanent, nor has been created as a home for our organisation. So we’re not really sure what Cameron is referring to on that one?!”
“They didn’t tell us … And we’ve since had confirmation from Facebook’s European Policy Manager that they have no plans to move or start another office as things stand. Cameron’s people seem to have jumped the gun on this point at least.”
He also used Twitter to say “Cameron/his people have got it wrong” and said it was a “false statement”. It was all, according to him, “out of the blue”.
So where does this leave the plans for growing Silicon Roundabout? It seems that their implementation was not imminent, but this news will only add to the suspicion that this was a PR stunt that has not been thought through in any great depth. Many are also surprised that Google, which has been a lightening rod for criticism from IP owners, should be the catalyst for another IP review (according to the report here). It’s also interesting to note that neither of the two companies referred to are UK-based companies: should the Government be focussing on innovation from within the UK, rather than importing it from outside?
And here’s something to ponder: if David Cameron’s speech was intended to attract investment, was it a commercial communication? If so, and if he used the “Facebook” mark without Facebook’s permission, has he committed trademark infringement and/or passing off?
Now offering you the opportunity "in principle" to take your injunction anywhere in Europe
The IPKat reports today that Advocate General Cruz Villalón has released his Opinion in Case C-235/09DHL Express (France) SAS v Chronopost SA.
The reference to the ECJ asks whether a prohibition issued by a Community trade mark court of a Member State has effect throughout the entire European Community or whether it becomes impotent at the rendering State’s borders. Since the Opinion itself is not available in English, we’re having to make do with the Press Release for the time being. (It contains a helpful link to the list of official translations of the Opinion, which includes Greek, Latvian, Finnish and Swedish, but not English). In it, the Advocate General is reported to have opined that:
“the [Community Trade Mark] Regulation confers jurisdiction on the competent national court to declare that a trade mark has been infringed in one or more Member States, so that its proprietor may apply to a single court in order to bring the acts of infringement to an end in several [note – not “all”] Member States. The declaration of infringement relates to a trade mark granted by the European Union, whose judicial protection is entrusted to special national courts of the EU and therefore, in principle, the declaration has effect throughout the entire area of the EU.
However, where the infringement or action for infringement is limited to a specific geographical or linguistic area, the court’s order is limited territorially. It follows that, since the prohibition is the natural consequence of the declaration of infringement, the territorial scope of the prohibition corresponds, in principle, to the scope of the infringement.”
What this appears to say is that the Courts of a Member State can make a declaration of infringement which might be limited to certain geographical areas or which might be unlimited, meaning that it is binding throughout the EC.
First, trade mark infringement actions require an assessment of the visual, aural and conceptual similarities of a mark and their impact on the mark’s essential function or the likelihood of confusion among the public. The AG’s Opinion might not have an impact on the protection of inherently distinctive marks, but what of marks that have only acquired sufficient distinctiveness to get on the register? Are Courts in any jurisdiction sufficiently well-equipped to determine whether such a mark has been infringed in a Member State where a different language and different customs exist? If not, then Courts will, no doubt, limit their declarations of infringement accordingly, and this opinion (and any subsequent judgment that follows it) won’t precipitate any real change to current practice.
Second, though, what if a Court decides that it does have competence to issue a pan-European declaration of CTM infringement? If that happens, that Member State is sure to very quickly become a hot-bed of CTM litigation. Brand owners will be certain to do what they can to secure jurisdiction in such a Court through the commencement of preemptive proceedings. In that regard, Internet sales will be an area to watch. The UK Court of Appeal has recently held that the online sale of goods into a territory is insufficient to provide that territory’s courts with personal jurisdiction (see Lucasfilm Ltd & Ors. -v- Ainsworth & Anor.  EWCA Civ 1328, summarized in my article “Not so long ago, in a courtroom not so far away…“), but not all Courts agree: California assumed the personal jurisdiction in Lucasfilm which the Court of Appeal rejected, and more recently the Court of Appeals for the Second Circuit (on an appeal from the Southern District of New York) suggested, without having to decide, that even the sale of a single item via the Internet could establish personal jurisdiction (see Chloe v. Queen Bee (full citation and links to follow)).
So, if you’re a Member State with sufficient self-interest, then perhaps you will be hoping the ECJ will follow the Advocate General, and are already preparing to react accordingly…
We’re only a few short weeks away from the US mid-term elections and the politicians are filling the air waves with their electoral messages. A few things are common throughout their ads.
First, no-one wants to mention their party. Republicans and Democrats alike are campaigning on a platform of near-independence. Second, no matter what experience you have, it is obligatory to say things like “Washington is broken” (even if that’s all your ad really says) and to tell people that you’ll reform the political establishment (single-handedly, presumably, since no-one wants anything to do with their party). Most people are also talking about creating jobs, in some cases so that small businesses can have more lunchboxes. What is striking is that, so far, every single politician who wants to create jobs says they’ll do it by tax reform or some other fiscal remedy: no-one has had anything to say about protecting the businesses that these entrepreneurs have created or about working with Victoria Espinel, the recently-appointed US IP Czar.
There are a number of explanations for this glaring omission. I suppose it’s possible that the politicians are scared that cyber-terrorists will DDOS their campaigns if they dare mention IP, but I don’t think that’s it. Nor do I think that it is because the system is as good as it can be and there’s no need to tamper with perfection. And I don’t think that it’s because they don’t understand it, although there have been plenty of inches given to the apparent IQ-challenges of some candidates.
Obviously, IP is not on the agenda because it doesn’t win votes, and the reason it doesn’t win votes is because not enough voters understand it. Politicians prefer to use words like “corrupt”, “broken” and “tax” to hit the electorate’s lowest common denominator when they feel the need to adopt a safe, simple, populist message that doesn’t require anyone to think too hard. “Protecting innovation”? Too much effort to explain it; might alienate people.
I gave a talk a while ago to entrepreneurs on what IP was and how it can help them protect and grow their businesses. These were smart people with great ideas, but many of them didn’t know the difference between trademarks, copyrights and patents. They didn’t know what they could do with someone else’s work, and what they could not. They didn’t know about registered rights and unregistered rights. When they left the seminar, though, they were excited at the possibility of new marketing strategies and new lines of product development.
I feel strongly about helping people get on their own two feet and will continue to do what I can to help small businesses. It’s a disservice to voters to assume that they can’t think for themselves and it’s almost naive to say that tax savings will necessarily (yet only indirectly) lead to job creation. What is really needed is more prominent political support for measures that will directly assist enterprises to secure and grow their businesses. A better understanding of intellectual property is central to that.