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Internet Law | LIKELIHOOD OF CONFUSION®
Tag Archives: Internet Law

GEICO Isn’t Good News for Google

Originally posted 2005-02-21 21:14:00. Republished by Blog Post Promoter

Remember the GEICO v. Google case? My former law partner and long-time spouse Jane Coleman does. She’s writing a chapter on secondary trademark infringement liability for the second edition of a book on trademark counterfeiting now being edited by our colleague Brian Brokate, a partner at Gibney Anthony & Flaherty.  wrote the definitive reference work on secondary trademark infringement.  (Brian is one of the leading anti-counterfeiting lawyers in the country. )  Her conclusion is one that Google and its lawyers doubtless know well: Having no trademark monitoring policy may be trouble, but a little policing may be worse than none at all.

The standard is set by a leading case in this area, Inwood Labs. Under Inwood, in a contributory trademark infringement case, a court will find contributory liability if the defendant has either (1) intentionally induced a third party to infringe the plaintiff’s mark or (2) supplied a product to a third party with actual or constructive knowledge that the product is being used to infringe the mark. The GEICO lawsuit, like most such cases, is a Prong Two case.

So, on to Prong Two, then: supplying a product to a third party with knowledge that the product is being used to infringe the mark. Product? Here there is no product; Google provides a service. But based on the principles synthesized in a later decision, Lockheed Martin v. Network Solutions from what are known as the “flea market cases,” the second prong of this definition of contributory infringement can apply to services, too. Then the court applies a modified version of the Inwood standard: It considers the extent of monitoring and control the defendant has over the infringing activity.

So, what happened in the GEICO case? GEICO, a discount insurance company, sued Google for using GEICO’s trademarks to sell advertising on Google’s search engine, alleging contributory trademark infringement. Two practices of Google were at issue:

  1. The sale by Google of GEICO’s marks as search terms or “keywords,” and
  2. The advertisements or “sponsored links” which contained GEICO’s marks in their text, generated by customers who selected those terms.

Regarding the sponsored links, GEICO had argued earlier that Google was contributorily liable, saying, “the advertisers themselves [made] ‘trademark use’ of the GEICO marks by incorporating them into the advertisements, which are likely to deceive customers into believing that the advertisers provide accurate information about GEICO products or are somehow related to GEICO.” GEICO also claimed — remember the “direct control and monitoring” standard of Lockheed – that Google in fact exercised significant control over the content of advertisements that appeared on its search result pages.

Last December, Google asked the U.S. District Court to grant judgment as a matter of law in its favor. It argued that GEICO could not win its contributory liability claim, because it could not prove that “Google affirmatively encouraged or knowingly assisted in violation of trademark law by the alleged infringers.” Google urged that its own internal trademark enforcement policy bans the infringing advertisements at issue, though “some ads occasionally slip through.” It insisted that the “inability to achieve perfect enforcement of that policy” did not give rise to contributory liability, and that there was no evidence that Google condoned or encouraged infringement.

But this would only matter if Prong One — intentional inducement– were at issue. Apparently, it’s not. Google understandably would have the court focus on its good intentions, but this is a Prong Two case such as Lockheed – where, again, the courts ask whether the defendant exercises a level of monitoring and control that Google acknowledges it does effect via its trademark enforcement policy. Google’s argument regarding its internal trademark policing policy may, in fact, prove too much.

It’s not clear that Google can get out of responsibility for ads that “slip through,” given its awareness of the existence of infringing ads. If it can police a little, perhaps it can police a lot. Judge Brinkema’s oral opinion did not address this, but a final written decision by her or an appellate court might. [UPDATE: As of early May, there is still no written decision. It’s a good bet that there won’t be one and the parties will settle…]

The court granted in part and denied in part Google’s motion, allowing the case to go forward on the question of whether Google was contributorily liable for trademark infringement arising out of the sponsored advertisements containing GEICO’s marks. The incentive to settle is high — and maybe that’s why it’s so quiet.

This is why I have argued that auction websites (read: eBay) should be subject to contributory liability for the sale of counterfeit or other infringing merchandise — because they (and other web auctioneers) do have control over the auctions. Courts have repeatedly found contributory infringement where a defendant claims “willful blindness.” Well, it’s certainly a sort of willful blindness to do some kinds of monitoring and not others.

Would it add to the cost of search engines and auctions to do more policing? Yes, of course it would: More fighting over rent. Considering the profits involved, and the tremendous costs imposed on brand owners to try and keep up with counterfeits and online infringers, an outcome that required more policing to protect the IP that contributes to those profits doesn’t seem like an unreasonable one.

“I didn’t make him for you”

Originally posted 2007-03-01 14:25:14. Republished by Blog Post Promoter

Google is not a utility. Or an agent of the state, or a thing that owes anyone anything except to the extent they pay for it. At least for now. Eric Goldman has the decision from the U.S. Court for the District of Delaware, and the writeup.

UPDATE: Unrelated, but related:  the Google Censorship FAQ.

Major League Baseball steals from customers

Originally posted 2007-11-07 22:14:24. Republished by Blog Post Promoter

“If You Purchased MLB Game Downloads Before 2006, Your Discs/Files Are Now Useless; MLB Has Stolen Your $$$ And Claims “No Refunds”

Compelling blog post title, no?

So typical of the bloated steroid brains running that business. Yes, guys, you’ll always be able to do just whatever you want to fans, because your product is in unceasingly great demand. Just ask the record companies.

Billed hat tip to TechMeme.

Anti-Sedition Acts begin their attack on the Internet

Originally posted 2006-01-16 23:17:14. Republished by Blog Post Promoter

Different River reports on the biggest threat to free speech ever — the McCain-Feingold Act and its state law copycats.  Is there any chance that the new and improved Supreme Court will save us from this not so petty tyranny?  Or will the present controversies over “money in the political process” (see here for a contrarian view, by the way) make things even worse?

Death By Lawyer

Originally posted 2007-06-13 20:42:40. Republished by Blog Post Promoter

They make that sound like a bad thing. Now, I wouldn’t agree with each and every little thing Stan Schroeder, the author of this article on Mashable, says — such as this about MP3.com of blessed memory:

In 2000, the owners started a new service – My.MP3.com – which enabled users to register CDs they legally own and make online copies on MP3.com’s servers. Although this about as legit as you can get, the record industry managed to sue them (!) and win (!?), and MP3.com had to settle the lawsuit, paying 200 million dollars in damages, which turned out to be a blow from which they would never recover.

“About as legit as you can get”? Yes, well, that’s what Cooley Godward thought, too. Judge Jed Rakoff didn’t see it that way, and — in his inimitable matter — he didn’t suggest there was a lot of doubt about the right answer, either. We never got a second opinion (i.e., one that mattered from an appellate court), so just don’t come away from this article with the wrong impression.

Still and all, a good piece, and food for thought. Hat tip to Overlawyered.

Louisiana’s lawyers’ guild

Originally posted 2008-11-26 00:28:26. Republished by Blog Post Promoter

Last year we screamed and shouted along with a bunch of other people and prevented New York from passing “ethics” rules that would have essentially shut down New York lawyers’ blogs by regulating them out of existence.  Unfortunately all the noise didn’t make it down to Louisiana, which did go ahead and pass a similar set of restrictions under the guise of “consumer protection” but which should be understood as an attempt by established bar-association types to keep the bogeyman of blog- and Internet-savvy lawyers away from their cozy courtroom concessions.

Now a Louisiana law firm is taking on the regulations and has filed suit in federal court. Look, here’s their press release — we’re allowed to copy that (but links added by LOC):

This morning, Wolfe Law Group, L.L.C. filed a suit in federal court challenging the constitutionality of Louisiana’s new rules governing lawyer advertising. The lawsuit seeks to prevent the enforcement of Louisiana’s new advertising rules, scheduled to take effect on April 1, 2009. The Louisiana advertising rules are some of the most aggressive in the nation, and Wolfe Law Group’s suit argues that the rules go too far and restrict an attorney’s right to freely speak about its trade.

Wolfe Law Group argues that the new rules effectively prevent a lawyer from advertising its services through online mediums, such as Google’s AdWords, as the rules also restrict an attorney’s ability to engage in discourse with colleagues, clients and the public through online bulletin boards, blogs, twitter, and other online communities and forums.

The law firm that practices in the area of construction law out of its offices in New Orleans, Louisiana and Seattle, Washington, is actively engaged in the Internet marketplace, posting daily on sites like wolfelaw.com, Twitter, Facebook, Avvo.com, and similar Web 2.0 services.

The suit argues that Louisiana’s new advertising rules would subject each of the firm’s posts to an “evaluation” by the Louisiana State Bar Association, with an evaluation fee of $175.00.

According to a letter sent to Wolfe Law Group’s colleagues and clients, “The new rules would stifle our firm’s ability to continue talking with you about the legal profession, the construction industry and the evolution of construction law across the nation.”

To continue commenting upon the progress of the action, the firm launched a blog titled “Blogging is Speaking,” at the Web address http://www.protectspeech.com.

Get that?  According to this, everything posted online by a Louisiana lawyer — and God help a Web 2.0-oriented shop such as Wolfe or, say, LIKELIHOOD OF CONFUSION® — has to be run past a Louisiana oldlaw censor at $175 a pop!  Even assuming it isn’t bounced, that’s a lot of pops per pixel.  It’s prior restraint on the First Amendment axis, a restraint of trade (sorry, it’s a profession, but in economic terms a trade) on the antitrust axis, and just plain piggy on the obnoxious axis.

This effort by the Wolfe Law Group deserves the support of blogging and online-networking lawyers, their clients, their prospective clients… everyone who isn’t getting a cut of that $175 per, basically.

UPDATE:  Kevin O’Keefe thinks it’s a tempest in a teapot:  “Lawyers get paid to be creative”!  (Via Overlawyered.)

MORE:  Here’s the preliminary injunction amicus brief filed by Public Citizen.

Some intel on INTEL®

Originally posted 2010-04-07 03:15:14. Republished by Blog Post Promoter

CIA Headquarters - intel inside

There's intel inside.

BUMPED from January 1, 2010 and UPDATED due to decision (scroll to the bottom for the stunning conclusion):

Had you heard about this one from Mike Masnick?

Chip giant Intel has a bit of a reputation for being a trademark bully at times, threatening or suing many companies just for having “intel” in their name somewhere — including a travel agency and a jeans company. Now, before anyone brings it up, yes, as a trademark holder the law requires you to enforce your trademark against infringement, lest it become considered “generic” (such as xerox machines, kleenex tissues, aspirin and other brand names that became generic).  But, the key in all of those generic situations was that the use was applied to things that directly competed with the original brand’s products. People referred to other tissues as “kleenex” and it stuck. Intel’s lawyers seem to go out of their way to find potential infringement where there obviously is none at all.

Paul Alan Levy alerts us to the latest such case, where Intel has sued the operators of the Mexico Watch newsletter, because its domain is LatinIntel.com. Of course, the reason for that is that it is using the commonly accepted abbreviation of “intel” as short for “intelligence.” It’s common shorthand, especially within government circles, to refer to gathered intelligence as simply “intel.” . . .

More importantly, no one is going to look at LatinIntel.com and confuse it for the world’s largest computer chip maker. No one is going to look at that site and wonder how come they can’t order a Centrino processor. There’s simply no confusion at all. . . .

Well, when I first read that post, I thought Mike may just be on to something there. Here’s how I see it now:

UPDATE:  Intel loses (don’t get excited about the “decision” itself however!)

Yay us!

Glory and gratitude to my co-counsel Colby Springer who nailed it at oral argument.

MORE:  Is less.

LIKELIHOOD OF CONFUSION® in 2006: “Is Google a utility?”

Originally posted 2009-08-12 23:59:27. Republished by Blog Post Promoter

I posted this in August, 2006. I don’t think the question has been answered yet:

Utility

We wrote about the Kinderstart lawsuit against Google, claiming an unfairly depressed Google search rank, last March. There have been further, very interesting, developments, exemplified by this this colloquy reported by Dawn Kawamoto:

David Kramer, a Wilson Sonsini attorney also representing Google, said the search giant’s PageRank system is subjective, using a combination of reviews into whether a Web site is adhering to its guidelines and is worth a user’s time to view.

“Google is constantly evaluating Web sites for standards and quality, which is entirely subjective,” Kramer said.

The judge probed Kramer on the topic of whether Google engages in misleading behavior, and whether it uses objective criteria to evaluate sites–rather than solely relying on subjective reasoning.

“What if, say, Google says it uses facts one through 10 to evaluate a site, but actually uses number 11 to decide its rank. Isn’t that misleading?” the judge asked.

Kramer, however, said Google readers understand that the site’s ranking system is subjective and based on Google’s opinion about whether a site is worth viewing.

A repeated theme in the article is that Google keeps urging that it has “no obligation” to “promote its rivals.” Which it certainly doesn’t seem as if it does. On the other hand, once a company becomes a sort of common carrier — I am pushing this here — is there really no point at which all purchasers of its services should be treated equally? (Very un-free-markety of me to suggest this, but I’m the conservative blogger who’s not a libertarian.) Avoiding a ruling that in any way characterizes Google search results as commodities is also evidently on the mind of the Google attorney who’s insisting, despite the obvious risk of doing so, that Google results, in some cases, are subjective, not objective.

And what is that risk? Read More…

Section 230 attacks get nowhere, but forests still shrink

Originally posted 2006-11-19 20:52:56. Republished by Blog Post Promoter

A court seems, according to this synopsis by Eric Goldman, to lay it out straight in dismissing a case brought in California against Craigslist. The claims was that the classified-ads site should be held responsible for “discriminatory” housing listings submitting submitted by third parties and posted on Craigslist with no meaningful involvement of the website operators. This is precisely the activity 47 U.S.C. 230 is meant to exempt from liability.

Eric has taken us here before, and he’s rather tired of the journey himself. First, the good news (I’ve added links for non-experts on this statute, like me):

[I]n a single paragraph . . . the judge reinforces the case’s complete lack of merit, succinctly dismissing the claim on its pleadings. The court says that (1) websites are [Interactive Computer Service] providers, (2) the classified ads on Craigslist originate from “another information content provider,” and (3) the Fair Housing Act statutory language uses the verb “publish” as one of the restricted activities and the plaintiffs characterize Craigslist’s behavior as “publishing” in their pleadings, so the plaintiffs are trying to treat Craigslist as a publisher of that third party content. All of the elements of a successful 230 defense are satisfied, so just like that–boom, boom, boom–case over.

Unfortunately, says Eric, that analysis took place on page 26 of 27. Why?

But…what about those other 26 pages? Unfortunately, the judge joined the burgeoning trend of adding dicta suggesting limits to 230’s parameters–other prominent examples of this trend include the 7th Circuit Doe v. GTE case and two recent 11th Circuit cases.  …

I really wish that judges would reconsider indulging themselves through 230-bashing dicta. All it does is encourages more plaintiffs to bring futile and wasteful lawsuits that impose real costs on defendants (like this case–which was inspired partially by the dicta from the Doe v. GTE case).

But then, what would all those law clerks do all days with their law-review sharpened pencils, Eric?

UPDATE:  More from Evan Brown.

He’s got the key

Originally posted 2009-12-01 17:06:25. Republished by Blog Post Promoter

Worthy of inclusion

Worthy of inclusion

Eric Goldman, author of one of the bona-fide-deserving, regularly updatedABA-Blawg-100-listed and actually fairly indispensable Technology & Marketing Law Blog updates us on a beat I’ve written on a whole bunch but given up hope on following comprehensively.  It is, however, a topic that anyone involved in trademark use on the Internet must stay on top of:  Keyword advertising litigation.

Here’s the latest, a report on a case called Morningware, Inc. v. Hearthware Home Products, Inc., 2009 WL 3878251 (N.D. Ill. Nov. 16, 2009), which involves a fairly novel question of what happens when one advertiser uses the phrase “Why buy an imitation?” in the small copy space Google ads allow you, along with the brand name of the competitor — suggesting the competitor is imitating the advertiser.

Eric walks you through the opinion, which he acknowledges is unremarkable in many respects.  But these observations are the ones I was particularly motivated to cut and paste here:

The advertiser also argued for a 12(b)(6) motion to dismiss on lack of consumer confusion grounds. While I understand the advertiser’s hope, I think it’s hard to convince a judge that the trademark owner failed to allege sufficient confusion in the complaint. This is especially true when plaintiffs invoke the stupid “initial interest confusion” doctrine, which has no doctrinal contours and therefore is simply impossible for defendants to refute at the motion-to-dismiss stage (obligatory cite to my anti-initial interest confusion rant from 2005). Citing to the abysmal 2002 Promatek case, the court says the plaintiff alleged enough initial interest confusion to survive the 12(b)(6).

Thanks, as ever, on that point Eric!  (Obligatory cite to my anti-initial interest confusion rant from 2003 here.)   Actually there were two points — I just get excited whenever he starts talking about initial interest confusion.  The first point is a good one, too:  Judges really don’t like to dismiss a trademark infringement complaint on 12(b)(6) grounds.*  Really good judges do, but they unfortunately are not in abundance in as many times and places as would be wished.

This paragraph is worth repeating too, as a summation of “what’s going on” this area of litigation:

I keep getting calls from reporters operating under the misimpression that trademark owner-vs.-search engine keyword advertising lawsuits are more common than trademark owner-vs.-keyword advertiser lawsuits. While the lawsuits against search engines certainly get way more press coverage, in reality they are relatively rare. I don’t have an exact count of pending lawsuits, but only 10 immediately come to my mind (9 against Google and the AA v. Yahoo case). In contrast, trademark owner-vs.-advertiser lawsuits are so numerous that I don’t blog on every complaint I see, and most trademark owners are wise enough to leave the search engines out of their litigation.

There you have it.   Reporters, keep calling Eric Goldman — he knows these things!  That’s why I ask him for free answers, too.RDC BIG BEARD

Defendants, on the other hand — “who you gonna call”?


*  The awfulness of this fact on legal, policy and justice grounds cannot be contained in this post, but is essentially the topic of about one fifth of the LIKELIHOOD OF CONFUSION® blog.

Diversion, yes, but no

Originally posted 2009-11-26 08:30:51. Republished by Blog Post Promoter

Some people have all the luck in the Eastern District of New York.  Whereas me — I think I’ve got it coming to me right down the middle, and then it seems to get, I don’t know — diverted from me!

So some lawyers get assigned judges in the Eastern District of New York whose ideas about trademark law and, well, the Federal Rules of Evidence — and, actually, the Federal Rules of Civil Procedure have, well, um . . . okay, I won’t say.  But in their courtrooms this is the kind of thing happens to “unauthorized resellers,” regardless of the actual “law” stuff.

RDC BIG BEARDI know, regular readers are sick of hearing about the S&L case, but I’m just framing the story here, okay?  Stick with me.

And then there are other judges in that same court who actually not only get it, but really, really, really get it:  There’s no such thing as “diversion” of authentic, untainted merchandise by “unauthorized” resale on the Internet.  Whether or not the manufacuter of a product thinks you need a whole two years of community college or that certificate from beauty school to slather on hair goop or tanning sludge, that preference does not “run with” the over-hyped blech they sell.

So — still setting the stage here, stay with me! — Judge Leonard Wexler, in 2007, went this far to make that point, as reported here exactly two year agos from tomorrow:

L’Oréal maintains that to keep the value, integrity and status of the products, they are supposed to be sold only by company-trained professionals in fashionable salons. Matrix alone “has been the number one professional hair brand on the market, with an estimated 16 percent market share,” L’Oréal said in court papers.

Quality King and Pro’s Choice, however, were obtaining the products in violation of the injunction by buying them, or, as it is called, diverting them, from middlemen and reselling them to nonqualified dealers, L’Oréal contended.

Diverting attention

Diverting attention

In his opinion, Wexler declined to enforce the old injunction, in effect, throwing out L’Oréal’s case against the two companies.

The judge said that if L’Oréal wanted seriously “to stop diversion of Matrix products,” it could terminate those of its distributors who are the sources of the diverted products.

He actually declined to enforce the old injunction, did Judge Wexler, because it would have actually been, well, wrong to!  Because of the law stuff.

Isn’t that enough mazal for Quality King?  Can’t some other lawyers in other courtrooms in that District have some of that good fortune?

No!  Evidently, on appeal of the earlier decision, the Second Circuit affirmed his vacatur (cancellation) of the injunction going forward, but remanded for further determination of whether the injunction should be not only — not “only”! — vacated, but also “terminated,” i.e., retroactively time-traveled into non-ever-existence.

So once more comes Matrix, the plaintiff, and with them this time big guns from the collossal Weil Gotshal, a real New York law firm this time.  So, was it a good idea to spend a good 50% more on fees (not to mention their markup on donuts!) to make the same arguments? Read More…

Google Gets it Right

Originally posted 2005-08-04 18:30:32. Republished by Blog Post Promoter

Perfect discrimination is every seller’s dream. The Internet at once promises to make that dream reality and yet provides consumers with the range of choice and potential transparency of the sell side that can maximize their options as well. From a microeconomic point of view, it’s a fascinating dynamic. In this online Wired article, “Media Hack” Adam L. Penenberg explains how Google is approaching perfect discrimination in the advertising business — and is only just scratching the surface.