Intellectual Property Category Archives — The Virginia Business Litigation Blog Published by Virginia and Washington, D.C. Litigation & Appeals Attorney

August 16, 2020

Spoliation of Evidence Can Result in Dismissal or Default

When specific and identifiable litigation becomes reasonably foreseeable, those likely to be involved in the litigation and with awareness of their likely involvement have a duty to preserve potentially relevant evidence. Failure of such a party to take reasonable steps to preserve the evidence–or intentional alteration, concealment, or destruction of evidence–is known as “spoliation of evidence” (often misspelled as “spoilation of evidence,” which is not a thing) and can result in severe sanctions if other litigants are prejudiced by their inability to use the missing evidence at trial. (See Va. Code § 8.01-379.2:1) Typically, the court will instruct the jury that it may (or must) presume that the evidence–had it been preserved–would have been unfavorable to the party who failed to preserve it. Sometimes, however, in particularly egregious circumstances, the court can dismiss the action (if the plaintiff is guilty of spoliation) or enter a default judgment (if spoliation was committed by the defendant).

Case in point: QueTel Corp. v. Hisham Abbas, No. 18-2334 (4th Cir. (Va.) July 16, 2020). QueTel brought this action against Hisham Abbas, Shorouk Mansour, and Finalcover, LLC, for misappropriation of trade secrets, copyright infringement, and other claims. The gist of the lawsuit was that Abbas–a former QueTel employee–allegedly stole source code from QueTel’s copyrighted software (TraQ Suite 6) and used it in a competing product (CaseGuard). QueTel sent the defendants a cease-and-desist letter in which it demanded that they:

cease infringing on QueTel’s intellectual property including the source code underlying the TraQ Suite 6 software;
cease all advertising, promotion, and sale of the CaseGuard software;
provide an accounting of all sales of the CascGuard software made to date; and
allow QueTel to copy and inspect a complete copy of all versions of the CaseGuard source code as well as any computers that Abbas used during the period from January l, 2014 to the present.

April 22, 2017

Accessing Former Employer’s Google Account May Violate CFAA

by Lee E. Berlik

Suppose your employer asks you to create a Google account for the company. So you do. You set up everything yourself: Google Drive, Google+, Gmail–the works. You even set the password to your dog’s name. All of Google’s terms and conditions are accepted by you personally when creating the account. You proceed to use the account on behalf of the company, using Google Drive to store hundreds of company documents. Then you leave your job. Is the Google account yours? You created it, so are you free to make whatever use of the account you wish? Can you delete it?

Marcelo Cuellar thought so, but he was wrong. According to papers filed in Estes Forwarding Worldwide v. Cuellar in the Eastern District of Virginia, here are the facts. Cuellar joined Estes Forwarding Worldwide (“EFW”)–a transportation logistics company–in 2010. EFW has developed trade secrets relating to the best transportation solutions for various types of shipments, including information about type of freight, freight dimensions, routing decisions, vendor selection, and so on. It keeps this information in spreadsheets and other electronic documents.

August 20, 2012

Virginia Technology Firm Sued for Trademark Infringement

by Lee E. Berlik

Vienna, Virginia-based Immersonal, Inc., a consumer software and technology services company, has been sued for trademark infringement and related claims in Virginia federal court. Radio and Podcast personality, Ira Glass, and Chicago Public Media say Immersonal’s new “This American Startup” podcast infringes on their award-winning “This American Life” radio and podcast programs. The suit includes counts for trademark infringement and dilution, unfair competition and fraud, and violation of the Virginia Consumer Protection Act.

According to the complaint, Mr. Glass has produced, aired, promoted and distributed the radio show, “This American Life,” since 1996. The show is part of the lineup of Chicago Public Media, an Illinois not-for-profit corporation, which has owned and operated a radio station since 1990. “This American Life” is a Peabody award-winning syndicated program on contemporary American culture, including fiction and nonfiction and original monologues, mini-dramas, documentaries, music and interviews. It is also available on the internet as a podcast and is downloaded about 700,000 times per week. In many weeks, it is the most popular podcast in the country. The program was turned into a television show between 2006 and 2008 and garnered several Emmy awards.

The plaintiffs allege further that the mark, “This American Life,” has been in continuous use since 1996 in entertainment and in connection with the audio program. The plaintiffs co-own this and related marks and have expended significant money and air time to promote and advertise their marks in various media. They say these efforts, combined with quality programming, have led consumers to associate “This American Life” with quality service. In turn, this acceptance and good will has opened the door to additional business opportunities associated with the marks. The plaintiffs claim the mark is famous given its duration of use, reach, extensive consumption and recognition.

August 13, 2012

Trademark Infringement Claimed by Christian Rockers

by Lee E. Berlik

The Newsboys, a Christian rock music group, has filed a trademark infringement lawsuit against the New Boyz rap duo, claiming that despite the contrasts in musical styles and lyrics, the similarity in the bands’ names will cause confusion among its fans. Sounds legit, right?

Actually, as ill-advised as this lawsuit may seem at first, the Newsboys may have a valid concern. To their credit, they registered “Newsboys” as a trademark in 1994 and have used the name continuously since then. According to the complaint, the Newsboys have had 28 number-one singles and produced four albums since 2008. One of their earlier albums was entitled, “Boys will be Boyz.”

In 2011, Warner Brothers began promoting New Boyz. In contrast to the wholesome lyrics favored by the Newsboys on tracks such as “He Reigns” and “In Christ Alone,” the New Boyz favor a raunchier style, rapping lyrics like “You’re a jerk! Jerk Jerk Jerk!” and “Tell all the homies she got bunz, bunz, bunz.”

July 13, 2012

No Trademark for WAGGIN’ STRIPS

by Lee E. Berlik

Midwestern Pet Foods, Inc. (Midwestern) applied for a trademark on its dog treat product, WAGGIN’ STRIPS. The Societe des Produits Nestle S.A. (Nestle), which holds the trademark on a similar dog treat, BEGGIN’ STRIPS, challenged the application, claiming Midwestern’s proposed mark would infringe on its mark. The Trademark Trial and Appeal Board found Nestle failed to prove its BEGGIN’ STRIPS mark was famous enough that the WAGGIN’ STRIPS mark would dilute it. But it found the proposed WAGGIN’ STRIPS mark would likely confuse consumers because “the goods are identical, the channels of trade and classes of purchasers are the same, and the marks are similar in appearance, sound, connotation and commercial impression.” It denied the application.

Midwestern appealed on several bases. It argued that Nestle should not have been allowed to introduce evidence of the BEGGIN’ STRIPS mark’s fame that postdated the WAGGIN’ STRIP’s application because such evidence must predate an applicant’s filing date to be used to analyze the likelihood of confusion. The Federal Circuit rejected this assertion as a misreading of the law.

Though not relevant to the question of dilution, evidence of post-application fame is relevant when considering likelihood of confusion. To show dilution, Nestle had to show its mark was famous before Midwestern filed its intent-to-use application. Failing that, however, Nestle could still use evidence of the BEGGIN’ STRIPS mark’s strength in showing likelihood of confusion, even if that strength (fame) occurred later.

May 23, 2012

Weak Mark, Lack of Confusion Leads to Summary Judgment for Defendant

by Lee E. Berlik

Judge Leonie M. Brinkema was not impressed with the trademark infringement case filed by Wag’N Enterprises, a pet-safety company based in Herndon, Virginia, against a California nonprofit known as Redrover. Entering summary judgment in favor of Redrover, she essentially found that no reasonable jury could find that Wag’N’s mark, “Wag’N Rover Respond’R” was confusingly similar to RedRover’s “RedRover Responder.”

Trademark infringement exists where a valid and protectable mark is used by the defendant in a way that causes a likelihood of confusion in consumers. If the plaintiff does not hold a federally registered trademark, a valid and protectable mark may still exist where “the mark is used in commerce and is distinctive.” In determining the likelihood of confusion, some factors that a court may consider are: (1) the strength or distinctiveness of the mark (i.e., whether it is generic, descriptive, suggestive, arbitrary, or fanciful); (2) the similarity of the marks; (3) the similarity of the goods/services the marks identify; (4) the similarity of the facilities the two parties use in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant’s intent; and (7) actual confusion.

The court found that although Wag’N held valid and protectable marks in the registered name Wag’N Rover Respond’R and the unregistered but distinctive mark Rover Respond’R, there was no evidence that the RedRover Responders actually confused consumers. Specifically rejecting the Plaintiff’s argument that RedRover’s product “incorporates the essential essence” of its mark, the court noted that the marks do not share any identical words, the marks are not similar in meaning, and the companies have completely different logos with different typefaces, designs, and emphasis. Even if the names are similar, the court found, consumers do not see them in the same contexts, since Wag’N Rover Respond’R only has its name on its emergency kits and the mark RedRover Responders is found only on volunteer t-shirts and a brochure explaining the program.

April 10, 2012

Copyright Infringement Claim Against Builder Dismissed

by Lee E. Berlik

Although it is true that architects are entitled to copyright protection, a complaint alleging infringement of a copyright must contain sufficient factual allegations for the court to infer that the defendant is liable, or the case will be dismissed. This is what happened recently in Home Design Services, Inc. v. Schoch Building Corporation, in which the United States District Court for the Eastern District of Virginia dismissed the plaintiff’s threadbare complaint for failure to allege facts sufficient to support a copyright infringement claim.

Home Design Services (“HDS”) owned several architectural copyrights and filed suit against Schoch Building Corporation (“SBC”), a custom home builder, under the Federal Copyright Act alleging that SBC infringed its copyrights. To establish copyright infringement, a plaintiff must plead (1) ownership of a valid copyright and (2) that defendant copied the protected work. HDS submitted its copyright registration certificates which created the presumption of copyright validity and ownership. However, it failed to state facts alleging that SBC copied the protected work.

A plaintiff may establish copying by showing (1) that defendant had access to the copyrighted work and (2) that substantial similarity exists between the protected work and the allegedly infringing work. A plaintiff can show access by direct evidence arch drawing.jpg that the defendant had the opportunity to view the protected works or by showing that the works are so strikingly similar that there is no reasonable probability that they were independently created.

March 7, 2012

Trademark Infringement Action Filed Against Urban Outfitters

by Lee E. Berlik

The Navajo Nation has sued retailer Urban Outfitters and its subsidiaries for trademark infringement, trademark dilution, and related claims. In the suit, filed in the District of New Mexico, the tribe seeks monetary damages and an injunction against using the “Navajo” and “Navaho” names in connection with marketing goods that compete directly with Navajo Nation’s products.

According to the Complaint, Urban Outfitters has been using “Navajo” and “Navaho” on a line of clothing and accessories that competes directly with products offered by Navajo Nation. One of the tribe’s most valuable assets is its NAVAJO trademark which it has used to market such products for a century and a half. That trademark has been registered for over sixty years. The Complaint alleges that through its retail stores, online stores and catalog, Urban Outfitters has sold over twenty “Navajo” products, using geometric patterns similar to ones the Navajo Nation has created over the years, ranging from earrings and tunics to undergarments and liquor flasks. The Navajo Nation takes particular exception to the marketing of flasks bearing the tribe’s name, mark and design, because the sale and consumption of alcohol is prohibited on the Navajo reservation.

Navajo Nation asserts that Urban Outfitters’ actions are “designed to convey to consumers a false association or affiliation with the Navajo Nation, and to unfairly trade off of the fame, reputation, and goodwill of the Navajo Nation’s name and trademarks.” Lawyers for the tribe argue that consumers are being led to believe that Urban Outfitters has contracted with the tribe to sell its products under one of its registered trademark names but that, in fact, Urban Outfitters has no license or sponsorship relationship with the tribe that would permit the company and its subsidiaries to use any of these trademarks. The trademark case includes claims that Urban Outfitters has been diluting the NAVAJO mark’s distinctiveness (dilution by blurring) and harming the mark’s reputation (dilution by tarnishment). The tribe also asserts the company has violated the Indian Arts and Crafts Act by displaying and marketing the products so as to suggest they are authentic Indian-made products.

December 31, 2011

Who Owns an Employee’s Twitter Following?

by Lee E. Berlik

Does an employer have any sort of ownership interest in its employees’ tweets or Twitter following? This very current social-media question may be tested in a lawsuit originally filed last July in federal court in California by PhoneDog, a South Carolina-based company that reviews mobile phones and services online, against former employee Noah Kravitz. An amended complaint in the case, filed on November 29, 2011, has attracted considerable media attention.

When Kravitz worked for PhoneDog as a product reviewer and video blogger from 2006 to 2010, he tweeted under the handle @PhoneDog_Noah and attracted some 17,000 followers for his comments and opinions on Twitter. When he left the company, he continued tweeting under the name @NoahKravitz. But he didn’t create a new account with that name; instead, he kept the account (with all its followers) and just changed the Twitter handle to @NoahKravitz. Eight months later, PhoneDog sued Kravitz, alleging that his continued use of the account and his tweeting to his followers constitute a misappropriation of PhoneDog’s trade secrets, intentional interference with prospective economic relationships, and conversion. Phone Dog said that it had suffered loss of advertising revenue as a result and that Kravitz “was unjustly enriched by obtaining the business of PhoneDog’s Followers.”

PhoneDog essentially claims ownership rights due to the fact that it directs its employees to maintain Twitter accounts and instructs them to tweet links to PhoneDog’s website, thus increasing PhoneDog’s page views and generating advertising revenue for PhoneDog. PhoneDog said in the complaint that since Kravitz now works for TechnoBuffalo, a competitor of PhoneDog, he is exploiting PhoneDog’s confidential information on behalf of a competitor. PhoneDog is seeking $340,000 in damages — $2.50 per month per Twitter follower for eight months. Although PhoneDog said in the complaint that “industry standards” peg the value of a Twitter follower at $2.50 per month, the company did not give a source for that estimate. Nor did PhoneDog attempt to distinguish between people who followed Kravitz because of his connection to PhoneDog and those followers who are merely friends of his or enjoy his commentary.

December 19, 2011

No Copyright Protection for Yoga Routines, Argues Defense

by Lee E. Berlik

It’s clear that dances composed by choreographers can be subject to copyright as creative works, just like paintings or photographs. It’s also clear that no matter how creative a football player’s evasive “spin move” can be, neither he nor his team can copyright it so as to prevent others from using it without paying royalties. What about a series of yoga poses? Where does that fit into the world of copyright? Three cases now pending in the U.S. District Court for the Central District of California involve that question, and although the issue remains very much in dispute, the U.S. Copyright Office has taken the view that yoga exercises are more like athletic activities or health regimens, which cannot be copyrighted, and less like dance routines, which can be.

In the lawsuits, Bikram’s Yoga College of India, based in California, and its founder, Bikram Choudhury, have sued three yoga providers for copyright and trademark infringement, contending that they have unlawfully used the specific movements and poses of Choudhury’s brand of yoga, known as Bikram Yoga. Bikram Yoga, performed for precisely 90 minutes in a room heated to 105 degrees Fahrenheit, has become quite popular in recent decades. Bikram Yoga includes 26 poses, two breathing exercises, and a carefully scripted dialogue.

Greg Gumucio is a defendant in one of the cases, along with the company he founded, New York City-based Yoga to the People. Gumucio is a former student of Choudhury. According to the complaint in that case, Choudhury “created an original Yoga Pose.jpg work of authorship consisting of a series of instructions and commands that accompany, and correspond to, each poster of Bikram Yoga.” This “original work is recited in a precise manner,” according to the complaint, and the sequence of poses received protection from the U.S. Copyright Office on several occasions. Gumucio and the other yoga studio owners, Choudhury said, had infringed upon the copyrights.