Category: Trademarks

The Freecycle Network, Inc. v. Oey, — F.3d —-, 2007 WL 2781902 (9th Cir. September 26, 2007)

“Freecycling” is a collaborative online effort of people working to share and trade items they no longer want. The Freecycle Network is at the forefront of these efforts, providing a website that facilitates the exchange of information and the subsequent exchange of stuff. Read more about the organization in the group’s Wikipedia entry.

Tim Oey was one of the early forces of the Freecycle Network. At first he encouraged the group to take seriously what rights it may have in the word “freecycle.” Some time later he changed his mind, and began advocating online, through message boards and other fora, that the term should be left to the public domain. The Freecyle Network disagreed with this approach, and ultimately sued Oey for infringement and “defamation of trademark” under Section 43(a) of the Lanham Act.

The district court entered a preliminary injunction against Oey. But Oey sought review with the Ninth Circuit, which reversed.

The court provided three reasons why the Freecycling Network’s claim for trademark infringement failed. First, Oey’s conduct did not constitute a “use” of the mark in commerce, as the record in the case did not indicate they were made to promote any competing service or reap any commercial benefit whatsoever. Rather, Oey simply expressed an opinion that the plaintiff lacked trademark rights in the term “freecycle” and encouraged like-minded individuals to continue to use the term in its generic sense and to inform the USPTO of their opinions.

Second, even if Oey’s statements could somehow have been construed to be a “use in commerce,” that use was not likely to cause confusion, mistake, or deceive anyone as to the connection of Oey’s services (or any other) with those of the plaintiff.

Finally, Oey’s statements did not satisfy the requirements for false advertising, misrepresentation, or unfair competition under § 1125(a)(1)(B). There was no evidence that Oey’s statements were made in “commercial advertising or promotion.” And, even if such evidence existed, § 43(a) creates liability only for product disparagement — i.e., misrepresentation of “the nature, characteristics, qualities, or geographic origin” of “another person’s goods, services, or commercial activities.” In this case, the plaintiff did not allege or show that Oey made any statements disparaging its goods or services. Instead, he merely talked about the nature of the mark itself. Indeed, many of his remarks were aimed at ensuring the ongoing success of the plaintiff’s organization and its services.

As for the claim of “trademark disparagement,” the court held that no such cause of action existed under the Lanham Act. It further held that even if trademark disparagement were a viable claim under the law, Oey’s conduct did not satisfy the elements of such a tort that the Freecycling Network asserted. The statements were not “false.” At worst, Oey offered an erroneous legal opinion (by a layperson) that the Freecycle Network lacked trademark rights in the term “Freecycle.” But under the Lanham Act, statements of opinion are not generally actionable.

View the opinion below (or click through if it’s not showing up in the RSS feed):

Finding Internet video player and instant messaging software “extraordinarily different,” court denies preliminary injunction in trademark case.

Instant Media, Inc. v. Microsoft Corp., No. 07-2639, 2007 WL 2318948 (N.D.Cal. August 13, 2007)

Plaintiff Instant Media sued Microsoft for trademark infringement, and later moved for a preliminary injunction. Instant Media had a registration for the word mark I’M for use in connection with its downloadable media player called I’M. Microsoft used the mark “i’m” in connection with philanthropic services closely tied to its Windows Live Messenger service.

The court denied the motion for preliminary injunction, finding that Instant Media would not likely succeed on its infringement claim. It applied a subset of the Ninth Circuit’s Sleekcraft factors known as the “Internet trinity,” comparing (1) the similarity of the marks, (2) the relatedness of the products, and (3) the parties’ simultaneous use of the Internet as a marketing channel.

Similarity of the Marks

As for the first factor of the Internet trinity, the court considered the sight, sound and meaning of the two marks. It held that in terms of sight, Microsoft’s mark, consisting of lowercase letters “i’m” appearing in a stylized format with a speech balloon and rendered in pale green and blue, was sufficiently different from Instant Media’s registered “I’M” word mark. The court determined that the sound of the two marks was ambiguous, so Instant Media had not established that the marks sound the same. The court also sided with Microsoft on the third subpart of this analysis — meaning — holding that, given “I’M” could mean Instant Media, instant messenger or the contraction “I am,” Instant Media had not demonstrated that the two marks shared the same meaning.

Relatedness of the Products

The court then turned to the second factor of the Internet trinity, the relatedness of the services. Citing to Jupiter Hosting Inc. v. Jupitermedia Corp., 76 U.S.P.Q.2d 1042 (N.D. Cal. 2004), Instant Media had essentially argued that the two products were necessarily related under this factor, because they were both “free downloadable Internet applications intended for computer users at large.”

The Jupiter Hosting case had relied on GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) in which the Ninth Circuit observed that in the Internet context, “even services that are not identical are capable of confusing the public.” The GoTo.com case recognized, however, that “[o]ur ever-growing dependence on the Web may force us eventually to evolve into increasingly sophisticated users of the medium.”

The court declared that such an age of increasing sophistication had arrived:

GoTo.com was decided seven years ago-aeons in Internet terms-and the moment of our evolution into “increasingly sophisticated users of the medium” is upon us. While it may have been plausible in 2000 to suggest that consumers could not easily discriminate between content-delivery programs such as the I’M player or iTunes on the one hand and instant messaging programs such as WLM or AIM on the other, in 2007, where iPods and instant messaging are household concepts, this Court cannot say that, as a matter of law, “it is irrelevant whether the parties’ Internet related services are different.”

Applying this standard, the court held that Microsoft’s instant messaging software and Insight Media’s video player were “extraordinarily different within the context of the Internet.”

Simultaneous Use of the Internet as Marketing Channel

This third factor of the “Internet trinity” was the only one that weighed in Instant Media’s favor. Although Microsoft argued that the marketing channels were different, in that it did not advertise on television (and Instant Media did), the court held there was no real dispute that both parties used the Internet to market their products.

Eric Goldman takes an in-depth look at the newly-filed American Airlines v. Google sponsored listings suit. From the professor’s post:

This complaint pleads the usual claims for this type of action, including direct, contributory and vicarious trademark infringement…; a false advertising claim that the “sponsored link” language communicates a false impression of actual sponsorship; dilution; various “soft” state claims (unfair competition; misappropriation and others); and tortious interference with contract because Google allegedly knew that American’s distributors weren’t supposed to buy American’s trademarks as keywords.

Apple Computer, Inc. v. Podfitness, Inc., No. 06-5805, 2007 WL 1378020 (N.D. Cal. May 10, 2007)

Podfitness.com provides a service whereby users can download workout routines onto their iPods. When Podfitness filed trademark applications for PODFITNESS, PODFITNESS.COM, PODPOCKET, and PODWORKOUT with the United States Patent and Trademark Office, Apple filed notices of opposition with the Trademark Trial and Appeal Board (“TTAB”), seeking to prevent the marks from registering. Apple also filed a federal lawsuit against Podfitness, alleging that the company’s “entire marketing strategy appears to consist of hitching its wagon to Apple’s star.”

Defendant Podfitness moved to stay the proceedings pending the outcome of the oppositions before the TTAB. The court denied the motion to stay.

Podfitness provided two arguments why a stay would be appropriate. First, it argued that since the question of likelihood of confusion would be central to all of Apple’s claims, the court should wait to see how the TTAB rules on that point. Second, Podfitness claimed that Apple has initiated numerous other oppositions before the TTAB seeking to preclude others from registering trademarks containing word combinations which include the term “POD,” and therefore a stay would further the interests of judicial economy because the TTAB’s decision would comprehensively adjudicate Apple’s right to preclude others from using POD-formative marks.

In denying the motion for a stay, the court looked to the doctrine of “primary jurisdiction.” Under this doctrine, a court should stay proceedings which are properly within the jurisdiction of, and are in fact presently under consideration by, an agency with extensive regulatory powers over the subject matter and the parties involved.

Podfitness argued that a stay of the action pending the TTAB’s decision would promote a uniform and efficient adjudication of the parties’ rights, while, at the same time, avoiding the potential for inconsistent judicial determinations concerning Apple’s rights to preclude others from using POD-formative marks. Apple countered that since the TTAB’s decision would only determine the registrability of Podfitness’s marks, the Court would still have to adjudicate its claims for trademark infringement, dilution, false advertising and unfair competition regardless of the substance of the TTAB’s determinations. Accordingly, Apple argued, a stay would only serve to delay the resolution of the issues, perhaps for years.

The court agreed with Apple’s arguments, observing that the TTAB would be incapable of resolving all of the issues between the parties. Granting a stay would only serve to postpone resolution of the issues, forcing the court to eventually adjudicate what would inevitably be stale factual claims. And in the interim, Podfitness would be able to continue its allegedly infringing activity unfettered.

So the benefit of prompt adjudication won out.

Site Pro-1 v. Better Metal, LLC, No. 06-6508 (E.D.N.Y. May 9, 2007)

Site Pro-1 sued its competitor Better Metal, LLC, accusing Better Metal of committing trademark infringement when it purchased the terms “site,” “pro,” and “1” to trigger sponsored links on Yahoo! The facts of the case were “straightforward and not in dispute”: the mark SITE PRO-1 did not appear in the sponsored search results linking to Better Metal’s website.

Better metal moved to dismiss the complaint under FRCP 12(b)(6). The court granted the motion.

Relying heavily on the cases of 1-800 Contacts v. When-U, 414 F.3d 400 (2d Cir. 2005), Merck & Co., v. Mediplan Health Consulting, Inc., 425 F.Supp.2d 402 (S.D.N.Y. 2006), and Rescuecom Corp. v. Google, Inc., 456 F.Supp.2d 393 (N.D.N.Y. 2006), the court held that the internal use of the plaintiff’s mark to trigger the sponsored listings was not “use” as provided under the Lanham Act. The key question was “whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicate[d] source or origin.” Because the court answered that question in the negative, Site Pro-1’s infringement claim failed.

Hat tip to Eric Goldman.

In late 2005, a blogger named Smith posted an entry in which he was critical of an eBay listing company he’d had dealings with. In the post, Smith used the listing company’s logo several times. The company sued in federal court, alleging, among other things, trademark dilution. The trial court denied a motion for preliminary injunction against Smith, holding that the way in which he’d used the mark was merely for news reporting and commentary, and thus not actionable under trademark law. [Read Eric Goldman’s summary of the lower court proceedings here.]

On March 6, the Fourth Circuit affirmed the lower court’s denial of the preliminary injunction. With little substantive analysis other than to recite the factors appropriate for a court to consider in granting injunctive relief, the court held that the trial court did not abuse its discretion. So in this case, the blogger remains victorious.

BidZirk, LLC v. Smith, (Slip Op.), 2007 WL 664302 (4th Cir. March 6, 2007)

In any trademark infringement suit, a successful plaintiff has to show, among other things, that the use of the defendant’s mark is likely to cause confusion as to the origin of the plaintiff’s goods or services. The various federal courts across the United States apply a number of different factors to determine whether the use of a mark is likely to cause confusion with a previously-existing mark.

In just about every iteration of this analysis, one of the factors a court will consider is the channels of trade in which the goods or services bearing the plaintiff and defendant’s marks are distributed. If products are distributed in the same channels of trade, confusion is more likely.

So what about products sold over the Internet? Does the fact that the products of both parties in a trademark infringement suit are available online automatically mean that they are in the same channel of trade? The recent case of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, from the U.S. District Court for the Eastern District of Virginia, addressed that question. And the answer appears to be no.

In the Louis Vuitton case, the fact that the plaintiff’s luxury accessories (bearing the mark LOUIS VUITTON) and the defendant’s pet products (bearing the mark CHEWY VUITON) were both available online, did not “by itself . . . imply that the same trade channels were used for the purposes of determining likely customer confusion.” Looking to the case of Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 633 (6th Cir. 2002), the court held that some other factors were also to be considered, such as whether both parties use the Internet as a substantial marketing and advertising channel, whether the parties’ marks are utilized in conjunction with web-based products, and whether the parties’ marketing channels overlap in any other way.

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, (Slip Op.) No. 06-321, 2006 WL 3182468 (E.D. Va., Nov. 3, 2006).

Plaintiff Rescuecom, a computer services business, filed suit against Google, claiming that the search engine infringed its trademark by suggesting and selling the registered mark RESCUECOM as a keyword to competitors advertising through Google’s AdWords program. Google moved to dismiss for failure to state a claim, arguing that Rescuecom had not adequately alleged that Google’s sale of the keyword and triggering of ads was an actionable trademark use under the Lanham Act, 15 U.S.C. 1051 et seq.

The court agreed with Google and dismissed the case.

The court first looked to the Lanham Act for the elements of a trademark infringement claim. Under the Act, infringement occurs when (1) a defendant uses a plaintiff’s valid and protectible mark in commerce, without the plaintiff’s consent, in connection with the sale or advertising of goods or services, and (2) that use is likely to cause confusion as to the source of those goods or services.

The court observed that the Second Circuit has not decided whether the sale of a trademarked keyword for advertising purposes constitutes trademark infringement. It noted, however, eight recent decisions indicating a split among district courts over the issue of trademark use in the sponsored listing context.

Rescuecom offered four arguments as to why Google’s suggestion and sale of RESCUECOM as a keyword was trademark “use” under the Lanham Act. First, Google was free-riding on the good will associated with the trademark. Second, Google lured searchers away from the Rescuecom website. Third, the keyword’s use by competitors altered search results, causing confusion. Fourth, Google used “Rescuecom” internally as a keyword to trigger competitor’s advertisements.

The court addressed Rescuecom’s good will argument first, and found that Rescuecom’s allegations could not support improper trademark use by Google. Although the allegation of use of the mark “in commerce” could be supported, the court gave a nod to the decisions in 1-800 Contacts v. WhenU, 414 F.3d 400 (2d Cir. 2005) and Merck v. Mediplan Health Consulting, 425 F.Supp.2d 402 (S.D.N.Y. 2006) to hold the subtle point that commercial use is not the same as “use in commerce” for trademark purposes. In the absence of an allegation of an improper trademark use, there could be no violation of the Lanham Act.

In addressing Rescuecom’s next argument – that Google lured searchers away from Rescuecom’s website – the court rejected the faulty premise that a trademark use occurs when a searcher clicks a sponsored link triggered by “Rescuecom” but the user is not led to the Rescuecom site. Critical to the court’s analysis in rejecting this argument was that Rescuecom had not alleged that any of the sponsored links, besides those leading to Rescuecom’s own site, displayed the RESCUECOM mark.

The court also rejected Rescuecom’s next argument, that Google caused confusion via altered search results. Similar to its analysis for the previous argument, the court found that because searchers could still find Rescuecom’s website in the search results, and because none of the sponsored links displayed Rescuecom’s trademark, there was no infringing use by Google.

Rescuecom’s final argument, namely, that Google’s internal use of the mark to trigger ads was infringing also failed. Where Google did not place the RESCUECOM mark on any “goods, containers, displays, or advertisements” and where Google’s “use” of the mark was not visible to the public, there was no cognizable trademark use under the Lanham Act.

Because Rescuecom had not adequately alleged that Google’s actions constituted a trademark “use,” the court dismissed the federal trademark infringement, false designation of origin and dilution claims. The court refused to exercise supplemental jurisdiction over the remaining state law claims.

Rescuecom Corp. v. Google, Inc., 2006 WL 2811711 (N.D.N.Y., Sept. 28, 2006).