Trademark Law

Traditional Trademark Law

Joe’s Café

TRADEMARK LAW

1 Addresses: Real Space vs. Cyberspace

Realspace: Name: Berkeley Center for Law & Technology Street: University of California City, State, Zip: Berkeley, CA 94720

______Cyberspace: [email protected] Name: BCLT Third Level DN: law Second Level DN: berkeley Top Level DN: edu

2 Domain Names

Source

.com

Address

Cyber-Trademark Law

www.joescafe.com

Joe’s Café

3 URL: www.heartsonfire.com/

4 Search Query: Hearts on Fire

5 6 7 8 $7.5 m

9 Today’s Explosion of New gTLD Registrations 900+ new generic Top Level Domains, including:

.GURU = 41,161

.PHOTOGRAPHY = 25,308

.TODAY = 12,157

.TIPS = 11,444

.TECHNOLOGY = 9,066

.CLOTHING = 8,270

As of March 5, 2014

1. Cyber-Piracy 2. Cybersquatting

www.panavision.com www.kaplan.com

3. Typo-squatting 4. Cyber-racing

www.cbsmews.com

10 RECOURSE

Federal Anti-Dilution Act

1993 1996

PapalVisit99.com 1999 Papal Visit Commemorative Official Commemorative Items.com Papal Visit 1999, St. Louis.com ?

11 Fame

No Commercial Use

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

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

RECOURSE

ACPA Federal Anti-Dilution Act

1993 1996 1999

12 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.

13 vw.net

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

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

RECOURSE

ACPA Federal Anti-Dilution Uniform Act Dispute Resolution Policy (UDRP)

1993 1996 1999 2000

14 UNIFORM DISPUTE RESOLUTION POLICY

Basis for Complaint 1. Domain is identical or confusingly similar to your mark; 2. Domain holder has no “right or legitimate interest” in the domain; & 3. Domain “has been registered and is being used in bad faith”

Process • Administrative challenge • Domain holder has 20 days to respond • Decision within 14 days of response • Panel:1-3 experts in IP law/Internet • Parties can go to court at any time

15 http://www.nicolekidmannude.com/

What constitutes “confusion” on the Internet?

16 Initial Interest Confusion

Next Exit

Ooh ooh! Can we stop? We love McDonald’s!!

Initial Interest Confusion

Who cares! I’m starved. Let’s eat here! But it’s not McDonalds.

17 Initial Interest Confusion

Yaaaay!

Rooray!

Yaaaay!

Initial Interest Confusion Steinweg

GROTIAN-STEINWEG

18 [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:

"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.

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

www.peta.org

People for the Ethical People Eating Tasty Treatment of Animals Animals

• Initial interest confusion

• No parody because connection not simultaneous

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

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

19 What is “use” on the Internet?

Ordinary word Functional use

Source identifier 1st Amendment use

playboy Google Search I’m Feeling Lucky

Keyword Advertising

playboy

20 “[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].”

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 . . .”

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

What is “use” on the Internet?

Ordinary word Functional use

Source identifier 1st Amendment use

rescuecom Google Search I’m Feeling Lucky

21 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 12(b)(6) Motion No Use in for selling Rescuecom as Commerce a trigger for Google advertisements by Rescuecom’s competitors

“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 DEFINITIONS In 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 * * *

22 Solving the “Use in Commerce” Puzzle

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

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 • TM use by advertisements by Rescuecom’s competitors Rescuecom Corp. v. Google, 562 F.3d 123 (2d Cir. 2009)

23 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)

® ) ) v. ) )

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

hearts on fire

24 Ideal Cut Diamonds at Blue Nile Ideal Cut Diamonds at Blue Nile Find hearts on fire diamonds at Forbes Favorite Online Jeweler. FindSponsored hearts by: www.bluenile.com on fire diamonds at Forbes Favorite Online Jeweler. Sponsored by: www.bluenile.com

25 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

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

26 Infringement for Purchase of TMs as Keyword Advertising Triggers

Competitors in selling Job scheduling software

• purchased “ActiveBatch as a keyword

Infringement for Purchase of TMs as Keyword Advertising Triggers

Competitors in selling Job scheduling software

• purchased “ActiveBatch as a keyword

• TM use by

• BUT not likely to cause initial interest confusion; must consider results page as whole • TM owner must show confusion; not mere diversion

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

27 Ads Filing Disability Claims Filing DisabilitySocial Security Claims Disability – free, Social SecurityNo obligation Disability consultation. – free, no obligationwww.disabilitygroup.com/ consultation. www.disabilitygroup.com/

Strong LOC based on identical mark, strong marketing by plaintiff, identical Ads market, intentional copying, flawed Filing Disability Claims Filing DisabilitySocial Security Claims Disability – free, survey evidence (16 out of 17 confused), Social SecurityNo obligation Disability consultation. – free, and evidence of actual confusion no obligationwww.disabilitygroup.com/ consultation. www.disabilitygroup.com/

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

28 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)

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

30 Contributory Infringement for Sale of TMs as Keyword Advertising Triggers

® ) L ) v. ) ) ) Contributory TM infringement for selling “Rosetta Stone” as a trigger for advertisements

Rosetta Stone Google Search I’m Feeling Lucky

31 Foreign Language Today Learn French, Italian, and Spanish Cheaper than Rosetta Stone www.amorelingua.com

Foreign Language Today Learn French,Foreign Italian, Language Today and Spanish Learn French, Italian, and Spanish Cheaper thanCheaper Rosetta than Rosetta Stone Stone www.amorelingua.com www.amorelingua.com

32 Foreign Language Today Learn French, Italian, and Spanish Cheaper than Rosetta Stone www.amorelingua.com

Contributory Infringement for Counterfeit Goods

® ) ) v. ) ) )

Contributory TM infringement for hosting online sales bazaar

33 34 v.

eBay anti-counterfeiting measures • $20m annually on tools to promote trust and safety • 200 employees who focus exclusively on combating infringement • suspends hundreds of thousands of sellers per year • May 2002 – “fraud engine” to ferret out counterfeit listings • Verified Rights Owner (VeRO) Program – notice and takedown • 2003: implemented special warning messages when vendor attempted to list Tiffany products. • 2006: 6 – 12 hour delay of Tiffany listings; develop ability to assess number of items in a listing; restrictions on one and three day auctions

www.tiffany.com

35 www.tiffany.me

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

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

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

37 ® )) )) )) v. )) )) ) )

Direct TM infringement

Indirect TM infringement Foreign Language Today Learn French, Italian, and Spanish Cheaper than Rosetta Stone TM Dilution www.amorelingua.com

for selling “Rosetta Stone” as a trigger for advertisements

® )) )) )) v. )) )) Summary Judgment ) ) Granted for • no likelihood of confusion Direct TM infringement • functionality defense Indirect TM infringement Notice of Appeal TM Dilution for selling “Rosetta Stone” as a trigger for advertisements

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

38 v.

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

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

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

39 CyberTM and Freedom of Expression

Nominative use on the Internet

buy-a-lexus.com

buyorleaselexus.com