Intellectual Property Category Archives — Page 2 of 5 — The Virginia Business Litigation Blog Published by Virginia and Washington, D.C. Litigation & Appeals Attorney

December 5, 2011

Court Orders “De-Indexing” of Infringing Domain Names

Chanel, Inc., which like many other luxury-goods companies has been constantly plagued by counterfeiters, has taken its legal fight against unauthorized knock-offs to a whole new level. On November 14, 2011, acting at Chanel’s request, U.S. District Judge Kent Dawson of the District of Nevada signed an order that not only prohibits hundreds of alleged trademark infringers from manufacturing or selling fake Chanel handbags, wallets, shoes, and the like – but also orders the defendants’ domain names seized and transferred to the Web hosting company GoDaddy, which would direct them to a page describing the seizure. The temporary restraining order also orders that the counterfeiters’ domain names be “de-indexed” by Google, Bing, Yahoo, and all social media websites, specifically mentioning Facebook, Twitter, and Google+.

Chanel, Inc. had filed suit against several websites for selling counterfeit versions of its merchandise. Chanel hired an investigative firm to purchase several items from three of the websites named as defendants in the lawsuit. The investigators then sent those items to a Chanel consultant who determined that the merchandise was not genuine Chanel. The consultant also examined other merchandise offered for sale on these websites and determined that none of the items offered were authentic Chanel products. The defendant websites were not authorized dealers of Chanel products and therefore were in direct violation of Chanel’s trademark rights.

Chanel’s trademark lawyers obtained this injunctive relief by, among other things, pointing out that counterfeiters use search engine optimization (SEO) just as legitimate companies do, and that it was necessary for the court to shut down their ability to use the Web to compete unfairly with Chanel. “Chanel does contend that it has the right to fairly compete for such search engine results space unfettered by unfair competition stemming from an illegal use of Chanel’s trademarks,” Chanel’s lawyers wrote in the underlying motion.

November 22, 2011

Parenting Blog Case Raises Motherlode of Trademark Issues

by Lee E. Berlik

If a blog is successful and gains name recognition among the public, with whom is the brand associated in the minds of readers, the publisher or the primary author of the blog? Apparently not a lot of thought has gone into this interesting question, as the New York Times did not apply for a trademark for its popular “Motherlode” parenting blog until its primary author, Lisa Belkin, left the Times to create “Parentlode” at The Huffington Post. Now it will be up to the courts to determine whether the Times has exclusive trademark rights to the “Motherlode” name and similar-sounding derivatives.

The New York Times Co. sued the Huffington Post and AOL, its parent company, on November 4, 2011, in U.S. District Court in Manhattan, seeking both injunctive relief and damages. NYT’s trademark lawyers argue in the complaint that the mark “Parentlode” is “clearly derived” from the Times’ established “Motherlode” trademark and that it was “intended to create an association with Ms. Belkin’s prior work” at the Times. According to the complaint, there is evidence that confusion already exists in readers’ minds between the “Motherlode” blog, which the Times is continuing to publish, and the new “Parentlode” blog at the Huffington Post. On Twitter, for example, someone wrote (incorrectly, the Times argues) that “The NYT’s Motherlode becomes HuffPo’s Parentlode.”

In her first “Parentlode” blog entry, Belkin referred to “Parentlode” as a “new name” that in a nonsexist manner includes fathers as well as mothers. The Times seized upon this statement and wrote that Belkin “clearly intended to create an association in the minds of readers between the two competing blogs, and further, [Belkin’s] reference to the ‘new name’ was a deliberate attempt to mislead readers into mistakenly believing it was the same blog, albeit with a slightly different name and location.”

November 15, 2011

Serta Seeks Declaratory Judgment of Non-Infringement

by Lee E. Berlik

Oleg Cassini was a French-born American fashion designer who created a wardrobe for Jacqueline Kennedy. Now, the company that he founded, Oleg Cassini Inc., finds itself embroiled in trademark litigation with Serta, Inc., over Serta’s decision to name a particular mattress model the “Cassini.”

The dispute arose when Serta unveiled a line of mattresses, to be sold exclusively at J.C. Penney stores, with names that were related to outer space. Among them were Gemini, Eclipse, Taurus, Moonscape, Nebula – and Cassini. Serta claimed that the name was inspired by Giovanni Domenico Cassini (1625-1712), an Italian-French astronomer and mathematician who was the first person to observe four of Saturn’s moons. When the Oleg Cassini company found out about the existence of products such as the “Serta Perfect Day Cassini Firm Twin Mattress Set,” it sent a cease-and-desist letter to the Serta company, declaring that it was “amazed” to see the Cassini name on the J.C. Penney website and stating that the mattress company does not have the right to use the “Cassini or Oleg Cassini” trademarks.

Serta responded by discontinuing the model immediately, but this was not enough for Cassini, the complaint contends. Cassini proceeded to demand that J.C. Penney ensure that no floor models (including close-outs) be sold under the Cassini name. In addition, Cassini threatened to sue for infringement if it did not receive “a reasonable offer of damages and a detailed plan for correcting the improper usage of the Cassini mark.” Instead of offering to pay damages, Serta filed a declaratory judgment complaint in the Northern District of Illinois seeking a judicial ruling of non-infringement.

October 25, 2011

Descriptive Trademarks Can Be Difficult to Enforce, Discovers Timelines, Inc.

by Lee E. Berlik

Timelines, Inc., a small Chicago-based Internet company, has lost the first round of its legal efforts to obtain a court finding that Facebook infringed on its “Timelines” trademark when it announced its much-ballyhooed new feature, “Timeline.”

On Sept. 22, 2011, Facebook announced the “Timeline” feature, which will allow users to store and share their life events in chronological order on the site. Timelines, Inc., quickly filed a trademark infringement suit against Facebook, noting that it already has a registered trademark for the term “Timelines.” This mark refers, among other things, to a website that allows users to record and share events and contribute descriptions, photos, videos, geographic locations, and links related to events and people.

Arguing that there was a significant likelihood of confusion between its existing online product and the one just announced by Facebook, Timelines filed its lawsuit in order to avoid, in the words of the complaint, “being rolled over and quite possibly eliminated by the unlawful action of the world’s largest and most powerful social media company.”

October 10, 2011

Copyright Troll Lawyer’s Tactics Criticized by Virginia Judge

by Lee E. Berlik

United States District Judge John A. Gibney, Jr., sitting in Richmond, Virginia thought so little of the well-publicized shakedown tactics of the new wave of “copyright troll” lawyers–in this case practiced by Richmond lawyer Wayne O’Bryan–that he took it upon himself (without any Defendant asking for it) to issue a show-cause order against the lawyer demanding that he explain why his conduct should not be punished with Rule 11 sanctions.

The subject of the lawsuit at issue is Gangbang Virgins, a pornographic film allegedly downloaded by 85 unnamed “John Doe” defendants using popular peer-to-peer network BitTorrent. The Court initially granted the plaintiff permission to issue subpoenas to Internet Service Providers to learn the identities of the people behind the accused I.P. addresses. Later, however, Judge Gibney was apparently moved by some of the letters he received from the John Doe defendants. Several of the defendants, for example, notified the Court that the plaintiff made harassing telephone calls to them as soon as their identities were revealed, asking for a payment of $2,900 to end the litigation.

What the Court found particularly troubling was the lawyer’s behavior after certain defendants filed motions challenging their inclusion in the case. Rather than proceed to argue the merits of the motions in court, he routinely dismissed them, apparently to ensure the Court did not actually rule on any of the motions so that he could continue to threaten others. That, the Court found, amounted to nothing more than a “shake down” and an abuse of the Court’s resources.

August 19, 2011

Judge Hilton Grants Summary Judgment of Non-Infringement for ICON

by Lee E. Berlik

Several exercise machines manufactured by ICON Health & Fitness, Inc., which permit a person to play blackjack, poker, and other games while exercising, don’t infringe patents held by Fitness Gaming Corp. (FGC) for a device that combines an electronic game of chance and a piece of exercise equipment. This was the decision of U.S. District Judge Claude M. Hilton of the Eastern District of Virginia in an August 12, 2011, ruling on ICON’s motion for summary judgment of non-infringement.

FGC had sued ICON for patent infringement, but the judge found, reviewing both the language of the patent and its prosecution history, that this claim had no substance and that as a matter of law, ICON hadn’t infringed the patents. “The specification and prosecution history make clear what the claims require as a matter of law, and FGC has no evidence that the accused devices have what the claims require,” Judge Hilton wrote.

The key point was that in obtaining the patent, FGC carefully specified that the patents involved a “combination of an electronic game of chance device and a piece of exercise equipment.” FGC’s patent application specifically equated the term “electronic game of chance device” with the term “legalized gambling device.” The prosecution history showed that FGC made this limitation in order to respond to objections from the patent office that an existing patent, involving the combination of exercise equipment and a video display showing the progress of a bicycle on a track, had anticipated FGC’s patent and that FGC had therefore applied for something that wasn’t novel. FGC, in its own words, said that it only wanted a patent on an exercise machine that was combined with a gambling device.

August 16, 2011

Pincher’s Fights Wendy’s For Trademark Rights to Slogan

by Lee E. Berlik

Pincher’s Crab Shack, a restaurant chain with seven locations in Southwest Florida, is taking on fast-food giant Wendy’s in a trademark lawsuit. In a case filed in federal court on July 12, 2011, Pincher’s asserts that Wendy’s has stolen its trademarked slogan, “You Can’t Fake Fresh,” and used it in its advertising on television, radio, and the Internet. Wendy’s actions “are likely to cause public confusion, mistake, or deception, and constitute trademark infringement,” Pincher’s attorneys wrote in their complaint, which alleges infringement, unfair competition, and false statements of origin under both federal and Florida law. Pincher’s is seeking more than $2 million in damages.

“Defendants have openly and actively engaged in the unauthorized, infringing, unlicensed, and imitative use of the exact same trademark registered exclusively to Plaintiff, namely YOU CAN’T FAKE FRESH for the exact same services protected in Plaintiff’s federal registration, namely ‘restaurant services,’ in the exact same geographic area in which Plaintiff uses its Mark, in commercial advertising and in exact and direct competition with Plaintiff,” wrote Pincher’s attorney Jennifer Whitelaw of Naples, Fla., in the complaint. Whitelaw was also quoted in the press as saying, “It’s a great trademark. Our client worked hard to create it and our legal team worked hard to protect it and to successfully register it. From there, apparently it caught the eye of another suitor. Admiring our client’s mark is understandable, but this is a bit more admiration than what the law allows.”

Slogans are protectable under federal trademark law, provided they are used in such a way as to identify and distinguish the trademark owner’s goods and services from those of others. Because the touchstone for liability in any trademark action is the likelihood of confusion, however, trademark infringement does not necessarily occur where slogans serve a subsidiary role to a service provider’s “main” trademark. In other words, if “You Can’t Fake Fresh” is always preceded in advertising by either “Pincher’s Crab Shack” or “Wendy’s,” it may be difficult to prove consumer confusion.

August 13, 2011

Trademark Infringement Leads to Disgorgement of Profits By Franchisee Wannabe

by Lee E. Berlik

A U.S. district judge in Virginia has adopted a magistrate judge’s recommendation to deny a Minnesota man’s motion to dismiss a trademark complaint against him in a case that centered around an automobile service center franchise, and to enter a judgment against the service center he operated in an amount to be determined by an accounting of its profits during the period it infringed the plaintiff’s trademarks by using its logos after being denied franchisee status.

Precision Franchising LLC, a Virginia company, licenses an automobile service system and owns several associated trademarks. Precision permits its licensees to use its business methods and its marks. Motorscope, Inc., was one of Precision Franchising’s franchisees. Lene Corporation, a Minnesota company with its principal place of business in Minnesota–a company that was wholly owned by Cary Lene-Tarango, the Minnesota businessman–attempted to purchase Motorscope’s franchise and to assume Motorscope’s rights and duties under the franchise agreement. Precision Franchising denied permission to Lene to make the purchase, finding that Lene’s balance sheet did not show it to be financially sound.

Lene went ahead in any case and started to use Precision Franchising’s trademarks as if it were indeed a franchisee. Since at no time was Lene a franchisee of Precision Franchising, Precision Franchising sued Lene and Tarango in the U.S. District Court for the Eastern District of Virginia under the Lanham Act for unfair competition and trademark infringement. Neither defendant filed an answer to the complaint. Tarango, however, filed a letter that was treated as a motion to dismiss, asserting that the court did not have personal jurisdiction over him since he is located in Minnesota and had no significant contacts with the Commonwealth of Virginia.

July 29, 2011

Unauthorized Korean DVD Sales Leads to Large Damages Award

by Lee E. Berlik

Earlier this week, a federal judge sitting in Alexandria, Virginia, ordered the owner of a now-defunct chain of Northern Virginia video stores to pay $555,000 in damages for willful violations of U.S. copyright law after he rented and sold unauthorized copies of copyrighted Korean-language DVDs and videos to customers. The individual in question, Young Min Ro, did not even attend his own trial, though he was represented by a lawyer.

The U.S.-based affiliates of the three largest television broadcasting corporations in South Korea sued Mr. Ro and other defendants for willful copyright infringement in United States District Court for the Eastern District of Virginia. They alleged and proved at a bench trial that Ro made illegal copies of their TV programs and continued to rent and sell copies of the programs to his customers even after his licensing agreement ended and he was no longer paying monthly fees to the broadcast companies. In a July 26, 2011, ruling, Judge Leonie M. Brinkema found that the evidence showed not only that Ro violated copyright law but that he did so willfully. Willful copyright violators are subject to heightened damages under a provision of U.S. copyright law. (See 17 U.S.C. 504(c)(2)).

The plaintiffs had chosen to seek statutory damages – those imposed at the judge’s discretion within certain statutory limits – rather than precise economic damages based on measures such as the defendant’s profits from the violations or the licensing fees that they did not pay. For damages purposes, the plaintiffs chose to focus on 37 specific instances of copyright infringement for which the judge had already found the defendants liable.

July 6, 2011

Apple Asserts New Intellectual Property Claims Against Samsung

by Lee E. Berlik

In a 63-page amended complaint filed on June 16, 2011, in federal court in San Jose, Apple Inc. is continuing to strongly press its contentions that Samsung Electronics Co.’s Galaxy smartphones and tablet computers infringe upon Apple’s patents and trademarks for the iPhone and the iPad. In this new filing, Apple, which has long been known as a company that pursues its intellectual property claims vigorously, amplifies a complaint it filed a couple of months ago against Samsung.

“Instead of pursuing independent product development, Samsung has chosen to slavishly copy Apple’s innovative technology, distinctive user interfaces, and elegant and distinctive product and packaging design, in violation of Apple’s valuable intellectual property rights,” Apple’s attorneys wrote in the new complaint. An Apple spokeswoman has been quoted as saying, “It’s no coincidence that Samsung’s latest products look a lot like the iPhone and iPad, from the shape of the hardware to the user interface and even the packaging. This kind of blatant copying is wrong, and we need to protect Apple’s intellectual property when companies steal our ideas.”

A key focus of Apple’s concern is several design patents that it owns for various aspects of the iPhone and iPad. These design patents, Apple said in the complaint, “cover the unique and novel ornamental appearance of Apple’s devices, which include features such as the black face, bezel, the matrix of application icons, and a rim surrounding a flat screen.”