http://www.trademarklawlitigation.com/gazette/ Trademark Laws » Blog Gregarius 0.6.1 en http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/google_comes_under_fire_from_o.html Wed, 18 Aug 2010 18:48:22 -0400 http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/google_comes_under_fire_from_o.html http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/many_cloud_computing_vendors_a.html Wed, 18 Aug 2010 18:47:02 -0400 http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/many_cloud_computing_vendors_a.html HIPAA rules, have addressed such contractual liability avoidance by specifying that business associates of companies covered by the statutes are also liable for data breaches. As the cloud computing industry matures, vendors will learn that they have to comply with statutory security requirements. During this maturation, new and possibly standardized methods to share responsibility for security of customer information will emerge. For now, customers should seek the advice of experienced counsel before entering into any cloud computing agreement to mitigate or eliminate vendor avoidance and to ensure the vendor will adequately protect protected personal information. ]]> http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/lawsuits_against_gripe_sites_c.html Wed, 18 Aug 2010 18:45:56 -0400 http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/lawsuits_against_gripe_sites_c.html Career Agents Network, Inc. v. CareerAgentsNetwork.Biz. Career Agents Network, Inc. (“CAN”) brought suit against a former customer, Lawrence White, who had developed a web site called careeragentsnetwork.biz solely to warn prospective customers against doing business with CAN. The lawsuit included claims under the Anti-cybersquatting Consumer Protection Act, alleging that White registered the web site in bad faith in an effort to profit from his use of CAN’s trademark. The complaint also included a more traditional trademark infringement claim under the Lanham Act. White prevailed, with the court finding that his site was simply meant as a forum to express dissatisfaction with CAN and not to reap profit by stealing potential customers from CAN. As a result, White not only succeeded in obtaining a dismissal of CAN’s claims but also received an award of attorney’s fees – the court determined CAN had brought the suit in an oppressive manner and that its claims were unfounded. The case should be viewed as a warning to businesses to think carefully before retaliating against gripe sites and online critics with legal action. Litigation is always an expensive proposition, but the costs in this kind of scenario are augmented by the reputational damage that can result even from sending a threatening letter to a targeted business. Such letters have a habit of being posted on the sites in question and of further exacerbating the existing publicity problem. A better solution, when possible, is usually to engage critics in an effort to resolve a negative experience through customer service efforts. Barring that, an effective search engine optimization strategy can help to bury search results pointing to gripe sites and to keep the majority of potential customers from encountering the negative content. A knowledgeable attorney can assist with those efforts and can provide an effective battle plan when informal efforts are found to be ineffective. ]]> http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/proof_of_license_in_siia_softw.html Wed, 18 Aug 2010 18:39:58 -0400 http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/proof_of_license_in_siia_softw.html http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/aol_loses_trademark_injunction.html Wed, 18 Aug 2010 18:38:53 -0400 http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/aol_loses_trademark_injunction.html Advertise.com, Inc. v. AOL Advertising, Inc., 2010 WL 3001980 (9th Cir. 2010), the Court of Appeals for the Ninth Circuit partially reversed a trial court decision granting AOL an injunction against Advertise.com. In August 2009, AOL – which owns the mark ADVERTISING.COM – filed a complaint and motion for a preliminary injunction against Advertise.com alleging that Advertise.com had infringed AOL's trademark rights. Advertise.com appealed the trial court's decision to grant the preliminary injunction, but it did not contest that part of the preliminary injunction that enjoined it from using any design mark that was confusingly similar to AOL's stylized marks. On appeal, the Ninth Circuit concluded the ADVERTISING.COM mark was generic . Generic terms are those that refer to the genus of which the particular product or service is a species, i.e., the name of the product or service itself. To determine whether a term is generic, a court determines whether consumers understand the word to refer only to a particular producer's goods or whether the consumer understands the word to refer to the goods themselves. On the other hand, a mark that is descriptive describes the qualities or characteristics of a product. Generic terms cannot be valid marks subject to trademark protection, whereas a descriptive mark can be valid and protectable if it has acquired secondary meaning. The Ninth Circuit first examined the component parts of ADVERTISING.COM and determined ADVERTISING and .COM were both generic terms. Merging the terms together yielded a generic term as well. The court indicated that AOL accurately could describe itself as an “advertising.com” or “advertising dot-com.” AOL’s references to cases in which a seemingly generic URL mark was ruled non-generic did not persuade the court. Additionally, the multitude of other domain names incorporating the word “advertising” (Advertise.com cited 32 such examples) convinced the court that AOL’s mark is generic. The court addressed AOL’s remaining arguments as inapplicable or unpersuasive and reversed the district court’s grant of an injunction against Advertise.com to the extent it enjoined Advertise.com from using the designation and trade name ADVERTISE.COM or any other designation or trade name that is confusingly similar to AOL's ADVERTISING.COM marks. If you require assistance navigating a trademark dispute or registering your trademark, you should consult counsel experienced in handling trademark matters ]]> http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/patent_lawsuit_may_cause_negat.html Tue, 10 Aug 2010 13:31:18 -0400 http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/patent_lawsuit_may_cause_negat.html Bilski opinion regarding business method patentability), the degree to which the processes incorporated into eBay’s payment methods really are encompassed, if at all, within XPRT’s patent claims, and the enforceability of the confidentiality agreement referenced in (though not attached to) XPRT’s complaint, among others. Patent infringement claims – especially those involving patented business methods and processes – are fairly common, and especially so when a defendant, such as eBay, has deep pockets and a similarly deep dependence on technological innovation in order to remain competitive. XPRT’s claims are somewhat more incendiary than those involved in many such suits, in that they include allegations of intentional wrongdoing by eBay’s officers and attorneys. However, the case generally appears to fit within a fairly common paradigm of a relatively unknown patent holder making claims for significant monetary damages based on patented technology allegedly incorporated in some aspect of the defendant’s products or services. Microsoft’s litigation with i4i, Inc. regarding XML-related technology in its Word software is another noteworthy, recent example. The XPRT lawsuit also has the potential to be more of a news item than the average patent-infringement suit, because it alleges that the wrongdoing in question occurred during a period of time in which California gubernatorial candidate Meg Whitman was the CEO of eBay. Recent history shows that California politics – especially those involving contests for the Governor’s Office – almost always entail explosive political drama, so it would not be surprising if the lawsuit is used as a political weapon against Ms. Whitman in the run-up to the election. However, Ms. Whitman is not named separately as a defendant in the lawsuit, and there are no allegations in the complaint that she was directly responsible for any of the allegedly wrongful conduct. Technology-dependent firms of all types must be prepared to recognize patent exposure as a cost of doing business, and they must be ready to work closely with knowledgeable counsel to evaluate the integrity of any patents they hold as well as the validity of any patent claims with which they are presented. ]]> http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/introducing_the_copyright_trol.html Tue, 10 Aug 2010 13:28:06 -0400 http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/introducing_the_copyright_trol.html Wired.com article, Righthaven plans to continue targeting bloggers who repost entire articles without permission by filing hundreds of lawsuits by the end of the year. While there is clearly nothing improper about protecting intellectual property, some commentators are accusing Righthaven of “trolling,” a tactic known in patent law circles where a patent owner enforces its patents against an infringer, often in an aggressive manner, without any intention to actually market or develop the patented technology. In the case of Righthaven and LVRJ, lawsuits have been filed against bloggers with miniscule web traffic numbers, where the actual damages caused by the infringement are correspondingly minor. However, Righthaven uses the threat of statutory damages—which can range up to $150,000 per infringement—to scare the media outfit into settlement. For a blogger who receives notice of a lawsuit, often without first receiving a request to remove the infringing material, the prospect of a lengthy federal court battle is far too expensive. Righthaven apparently counts on such analysis to encourage quick, monetary settlement of these cases. The “copyright trolling” trend being pioneered by Righthaven likely will expand before any material reform to copyright law occurs. Regardless of whether this type of use (or misuse) of copyright law is appropriate, Internet media companies and bloggers must ensure that any use of third-party content is either properly licensed or falls within the safe harbors provided by the copyright law prior to publication. ]]> http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/eating_and_drinking_establishm.html Tue, 10 Aug 2010 13:26:32 -0400 http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/eating_and_drinking_establishm.html press release that the establishments “either publicly performed the copyrighted musical works of ASCAP’s songwriter, composer and music publisher members without obtaining a license from ASCAP to do so, or had signed a license agreement with ASCAP but failed to comply with the license's payment terms.” ASCAP claims that it gives each establishment an opportunity to license music and pay the appropriate fees and that it resorts to legal action only when amicable attempts at resolution to a licensing dispute have failed. Establishments that engage in copyright infringement are subject to significant liability if found guilty. ASCAP has the option of electing statutory damages of up to $30,000 per song infringed or up to $150,000 per song infringed if the conduct was considered willful. The exact amount of damages awarded is within the court’s discretion. Willful conduct often is defined as actual knowledge of infringement or reckless disregard that conduct constituted infringement. Willful conduct also does not need to be proven directly and may be inferred from the defendant's conduct. Some courts have presumed an establishment acted willfully if it fails to respond to a complaint or court order or if it fails to appear in court. Alternatively, ASCAP may elect actual damages, normally calculated with respect to its lost profits. The defendant also may be assessed ASCAP’s attorney’s fees in addition to paying its own fees. Music copyright infringement disputes with ASCAP, BMI, and other music copyright owners and royalty clearinghouses can become very expensive for bars, nightclubs, restaurants, and other establishments. If you are negotiating a license agreement with ASCAP, BMI, or a similar entity, or if you already are in a licensing dispute with the entity, you should contact counsel experienced with copyright law and license agreements. ]]> http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/software_publisher_wins_injunc.html Tue, 10 Aug 2010 13:25:11 -0400 http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/software_publisher_wins_injunc.html “a substantial danger that Discovery's ability to saturate the marketplace will lead consumers to assume that CakeBoss is somehow associated with Cake Boss.” The Court also held that, though the products at issue – a software program and a television show – are not directly competitive, it is nevertheless “not a substantial leap for a consumer encountering CakeBoss software in the market place to imagine that Cake Boss might have an interest in selling or sponsoring cake bakery management software.” As a result, the Court issued an order prohibiting Discovery and its affiliates from using the name “Cake Boss,” either to identify the television program currently entitled Cake Boss, or in connection with the sales of merchandise related to the show, though the Court also delayed implementation of the order for Discovery to finish airing the first run of the show’s third season. Brand selection is a crucially important step when launching a new product line or a new business. Companies owe it to themselves to run thorough trademark screening searches to determine whether there is a likelihood that an initially favored brand may end up being the subject of a trademark dispute in the future, and they certainly should think long and hard before moving forward with a mark that they know, or should know, already is being used by another business in the same or a similar market. Knowledgeable IP counsel can provide valuable assistance with that analysis. ]]> http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/beware_document_soup_software.html Tue, 10 Aug 2010 13:22:56 -0400 http://blawg.scottandscottllp.com/businessandtechnologylaw/2010/08/beware_document_soup_software.html