Keyword advertising raises interesting questions beyond the run-of-the-mill trademark infringement and unfair competition issues typically discussed. For instance, if a sponsored ad can be clicked in three separate countries, can the Courts of each of those countries take jurisdiction to hear and determine a dispute? The Court of Justice of the European Union has given a strange answer to this question, which you’ll probably want to know about if you, or your competitors, do any business online. Continue reading »
Further to my copyright post here, I’ve set out below a list of recent trade mark articles and quotes, with links where possible. A list of my recent copyright publications is here, and there’s a full list of all publications here.
- “National Use Neither Proves Nor Precludes Finding of Genuine Use of a Community Trade Mark,” Edwards Wildman Palmer LLP Client Advisory, July 2012.
- “Onel Opinion Sparks Debate On CTM Genuine Use,” quoted, Managing IP, July 2012. Continue reading »
Brand owners are likely to be unimpressed by Google’s latest update to its AdWords program, which gives purchasers of third party trademarks increased prominence for their ads. The change, which is already in operation, means “organic” search results will be pushed further out of view by sponsored ads, whose format now looks like some categories of organic results. Continue reading »
A District Court in New York has become the latest to find that using a competitor’s trademark in Google’s AdWords program can be trademark infringement. District Judge Roslynn R. Mauskopf found that the Defendants’ selection of “PILLOW PETS” and similar marks as a trigger for Google Ads is likely an infringement of the Plaintiff’s registered trademarks “MY PILLOW PETS” and “IT’S A PILLOW, IT’S A PET”, and granted Plaintiff’s motion for a preliminary injunction. The case is CJ Products LLC v. Snuggly Plushez LLC, 11-CV-0715 (RRM)(SMG), NYLJ 1202512398696, at *1 (EDNY, Decided August 22, 2011). Continue reading »
Fashion designers, as a class, should gain only limited IP protection, according to Judge Victor Marrero of the Southern District of New York. Giving judgment in Christian Louboutin SA et al v. Yves Saint Laurent America, Inc et al., 1:11-cv-2381 (NYSD August 10, 2011), Judge Marrero acknowledged that the world famous Louboutin house has acquired extensive reputation and goodwill in their red soles – to the point that said soles have acquired a secondary meaning of designating Louboutin footwear only – yet ruled that this meant nothing because their goods are items of fashion.
The decision is curious since Judge Marrero relies, at least in part, on a comparison between apples and oranges. Continue reading »
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.
For my own part, I wrote in the World Trademark Review that Continue reading »
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).
The full decision can be read below.
Binder v. Disability Group
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.
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.
Of itself, WIPO says:
“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.”
Of itself, WIPD says:
“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.