Tag Archives: Diversion

INTA and the big tent (updated)

Originally posted 2012-05-13 22:00:26. Republished by Blog Post Promoter

Revised from Friday’s original post.

In the previous INTA post I raised the question of how a significant session discussing a significant topic — the effect of developments in keyword advertising cases on trademark rights on May 9th, the first day of the 2012 Annual Meeting — could have been so seriously skewed.  I promised, as they say in Washington (but not the way they mean it when they say it), to extend and  clarify my remarks.

I linked to this item from Managing Intellectual Property, the really interesting part of which will be discussed in another post.  We’ll start there, however:

More than 1,400 attendees crowded into a session on keyword advertising yesterday, where Rosetta Stone counsel John Ramsey and other panelists shared their frustrations about the issue and also faced tough questions about the proper legal approach.

Ramsey could not discuss specifics of the company’s closely watched case with Google over trademarks as keywords in sponsored ads, but he explained to attendees the aggravation the brand has experienced over search results incorporating the ROSETTA STONE trademark that managed to appear above links to the company’s authentic site.

Ramsey has every right to be aggravated:  Rosetta Stone has a serious counterfeiting problem; the real actors are essentially untouchable; and it sure as heck seems as if Google is making money off it by taking the pirates’ money for display advertising.

Trademark lawyer Ron ColemanI am not unsympathetic to the concept that intermediaries — at some level — should be held to account for their actions; as regular readers know to death by now, I have long advocated that secondary liability attach to eBay for its comparable role in this process, and remain at odds with many, including the Second Circuit, on this topic.  I was also involved in early efforts, not all of which I can disclose, to get at what seems to be willful blindness by at least some credit-card issuers — an effort regarding which, of course, some small results have finally been achieved by others.

On the other hand, as an outgrowth of my work defending entrepreneurs against fallacious trademark claims based on “unauthorized distribution” of branded merchandise as well as my First Amendment work involving bloggers, I have had the opportunity to see the Lanham Act misused a slightly different way:  As a would-be workaround of the safe harbor provision of Section 230 of the CDA.  That is, they are state-law defamation claim dressed up as federal trademark infringement suits.

Now, as dissimilar as Google and eBay may be in their purported roles as secondary infringers, gripe sites in Section 230 cases are yet another increment less similar.

Yet the claims against all three types of defendants raise related issues:

  • Infringement allegedly arising out of SEO-related techniques, such as keyword purchases, metatags and supposed “black hat” SEO
  • Network or affiliate marketing where the ad content is not controlled by the defendant
  • Claims of consumer confusion based on affiliation or sponsorship arising out of such advertisements

Would the distinction among fact patterns and defendants be acknowledged in this discussion, which was advertised as addressing SEO in trademark infringement but whose focus was the arguably unique (and, by the way, pending) case of Google v. Rosetta Stone?  I was quite interested in this panel and not unsympathetic to Rosetta’s plight.  Yet.

My heart sank, however, when I heard John Ramsey — however understandably — utilizing the loaded vocabulary of advocacy, not reflection:   Read More…

Google, Geico Good to Go

Originally posted 2014-03-14 10:41:00. Republished by Blog Post Promoter

Google and Geico have settled.

S&L v. Australian Gold: You, the Jury

Originally posted 2009-01-08 21:34:29. Republished by Blog Post Promoter

Its all about the coin.

It’s all about the coin.

Here’s S&L Vitamin’s Trial Brief for the trial scheduled for next week in the above-entitled cause.  (Or you can read it at the bottom of the post).  We pick a jury on Monday, and after a day “off” for stuff I don’t even want to mention, opening statements are Wednesday morning.

Oh, all right.  Here’s Australian Gold’s trial brief.  I’m sure our distinguished adversaries are at least as proud of this work product as we are of ours.

I will not comment on the prospect of this trial, of course, at least not at this juncture.

But others have, more or less. And now, you can too!

Ninth Circuit. Keywords. Trademarks. Hike!

Originally posted 2011-03-11 17:23:32. Republished by Blog Post Promoter

Here’s a roundup of what other people are saying about the decision in Network Automation, Inc. v. Advanced System Concepts, Inc. involving keyword advertising using other folks’ trademarks (a form of the dreaded “diversion“!) and perhaps implicating secondary liability for trademark infringement:

Well, that’s almost all the roundup you need!  In fact, here’s the “takeaway” of Eric’s post:

9th Circuit court building with sign

We’ve had surprisingly few appellate decisions involving keyword advertising generally, and almost none involving trademark owners’ lawsuits against keyword advertisers (as opposed to suing keyword sellers like search engines). On that basis alone, this ruling is important. The case is also remarkable because the opinion, written by highly regarded Judge Wardlaw, gets so many things right.
Perhaps that sounds like damning with faint praise, but the reality is that the Ninth Circuit’s Internet trademark law has become horribly tortured due to deeply flawed opinions like the 1999 Brookfield case. This opinion deftly cuts through the accumulated doctrinal cruft and lays a nice foundation for future Internet trademark jurisprudence.
The only sour note is that the opinion makes some unnecessary and empirically shaky “presumptions”–exactly the kind of unfortunate appellate court fact-finding that got the Ninth Circuit into trouble into the first place. Still, given how this opinion could have turned out, I still give this opinion very high marks.
Yeah, Eric is great on that “presumption” stuff — and how badly judges wing them when it comes to trademark.  And Rebecca?

Read More…

Aw, shucks

We already covered the Designer Skin v. S&L Vitamins summary judgment decision, and linked to commentators Greg Beck, Bill Patry, Rebecca Tushnet, Eric Goldman and Jason Lee Miller.

But it’s positively nerve-wracking reading the commentary of someone like Evan Brown! 😉

Best of 2008: Which exit did we get off, again?

Posted on September 7, 2008.

Well, maybe we’ve been too hard on the Democrats here at LIKELIHOOD OF CONFUSION®.  Perhaps unlike the GOP, they’ve got good, progressive IP counsel out there, and maybe an Obama Administration will take a more realistic view of what you can and can’t do on the Internet.  At least we know they don’t have any hangups about “deceptive key word advertising” or “Internet traffic diversion,” the modern bugaboos of Internet trademark litigation.  Turns out they think those things are pretty keen!

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

Above is a screen shot (click for full size) of a search result you got if you searched Google for SARAH PALIN SPEECH on Saturday night — note the sponsored link on top, in color, that links to the Democratic Convention website, DemConvention.com:

The link tells Internet users they’re going to a page called DemCovention.com/RNC.  Wow, are they showing the Palin speech in order to get you to compare it critically to what the DNC has to offer?  It’s comparison shopping, right?  A modern-day Miracle on 34th Street!

Well, no.  Here’s what you actually get: Read More…

Best of 2008: The Long and Rocky Road

This was first posted on May 7, 2008.
beatle_icecreamIrvin Robbins, the co-founder of the Baskin-Robbins ice cream chain, died yesterday. Here’s how much time has passed since just about the time your blogger was born, in ice cream marketing years:

When the Beatles were to arrive in the United States in 1964, a reporter called to ask whether Baskin-Robbins was going to commemorate the event with a new flavor.

Robbins didn’t have a flavor planned but quickly replied, “Uh, Beatle Nut, of course.”

The flavor was created, manufactured and delivered in just five days, according to the Web site.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

Hah! Can you imagine? Without a sponsorship deal!

“Diversion!” “Free riding!” “Initial interest confusion!” “LIKELIHOOD OF CONFUSION®!” And, of course, “Dilution!”

No…. none of those things. Just tribute. And, yes, a little profit too. The Beatles… probably didn’t miss it. They were a musical act, and song writers, interested in rhythm and blues, not sprinkles and scoops.

We’re not against intellectual property here.

Read More…

Best of 2008: The Long and Rocky Road

This was first posted on May 7, 2008.

Irvin Robbins, the co-founder of the Baskin-Robbins ice cream chain, died yesterday. Here’s how much time has passed since just about the time your blogger was born, in ice cream marketing years:

When the Beatles were to arrive in the United States in 1964, a reporter called to ask whether Baskin-Robbins was going to commemorate the event with a new flavor.

Robbins didn’t have a flavor planned but quickly replied, “Uh, Beatle Nut, of course.”

The flavor was created, manufactured and delivered in just five days, according to the Web site.

Hah! Can you imagine? Without a sponsorship deal! “Diversion!” “Free riding!” “Initial interest confusion!”beatle_icecream “LIKELIHOOD OF CONFUSION®!” And, of course, “Dilution!”

No…. none of those things. Just tribute. And, yes, a little profit too. The Beatles… probably didn’t miss it. They were a musical act, and song writers, interested in rhythm and blues, not sprinkles and scoops.

We’re not against intellectual property here. Not at all. But there was a time when you could have a little fun, even in business, doing something that sounds like “trading on” the name and fame of the phenomena of public life without having to fear cadres of IP lawyers demanding cessation and desistence, claiming confusion as to source-sponsorship-or-affiliation, and reserving all rights on fancy colored letterhead delivered simultaneously by certified mail / RRR and PDF via email.

As any Beatle Nut knows, today the Beatles-inspired theme of big-IP rent-maximizing business would be what Bungalow Bill‘s mom told the children when they asked those uncomfortable questions: “If looks could kill it would have been us instead of him!”

Sounds good to me! Preliminary injunction granted!

Judge: “Go after your distributors, not free enterprise”

Quality KingJudges — especially in the Eastern District of New York — are picking up what’s going on in the “elite salons” end of the trademarks-as-distribution-method-enforcement scam.  Ever hear of Quality King?  Says Forbes:

Quality King Distributors has grown from a small shop in Queens, New York to a large distributor of pharmaceuticals and health and beauty care products. The company re-imports exported U.S.-branded over-the-counter pharmaceuticals and personal care products and sells them at deep discounts. Clients include drugstore and supermarket chains, grocery distributors, wholesale clubs and mass-merchant discounters. Glenn Nussdorf and his wife started Quality King in 1961, and the Nussdorf family still owns the company.

That can’t stand, can it?  Well, maybe it can:

A federal judge has blasted the L’oreal company, and former federal law enforcement officials it employs, for trying to bolster what he said was a very weak civil case by attempting to get former Justice Department colleagues to prosecute criminally a longtime business opponent. …

U.S. District Judge Leonard Wexler in Central Islip recently ruled against Paris- and New York-based L’oreal in a 2004 civil lawsuit brought by the company against Ronkonkoma-based Quality King Distributors, a $3-billion-a-year distributor of hair-care and other products, as well as its spinoff company, N.J.-based Pro’s Choice. The suit was the most recent round of an ongoing 17-year legal battle between L’oreal and Quality King.

L’oreal sought in its suit the enforcement of a 1990 injunction that barred Quality King and Pro’s Choice from buying and reselling an upscale line of hair shampoos and conditioners, sold by L’oreal under the names Matrix and ARTec.

That should be good enough, right?  Well, not if Judge Wexler smells baloney: Read More…

Online use of trademarks and copyrights by “unauthorized distributors”

LIKELIHOOD OF CONFUSION does not generally comment about active cases in which we are directly involved. But a very important and detailed (61 pages!) summary judgment decision came down in the U.S. District Court for the Eastern District of New York last week, in the case of S & L Vitamins, Inc. v. Australian Gold, Inc., 2:05-cv-1217 in which I represent the plaintiff. And while we will not comment on the decision, for obvious reasons, any reader of this blog involved in trademarks and the Internet will want to read it. So here it is. Credit to David Nieporent, co-author on the plaintiff’s brief!

UPDATE: Cogent commentary from Eric Goldman and Matthew Sag; now comes Rebecca Tushnet.