Your Periodic Reminder That Keyword Ad Lawsuits Are Stupid–Passport Health v. Avance

12 07 2019

Eric Goldman
Technology & Marketing Law Blog
December 20, 2018

The parties compete for the provision of health services related to traveling, like immunizations. The defendant Avance bought keyword ads triggered on the plaintiff’s trademark “Passport Health.” In 2013, the trademark owner complained, and Avance apparently dropped the Google ad buy. However, apparently everyone forget about Bing. In 2017, the trademark owner reemerged, complaining about the Bing ad buys. This lawsuit ensued.

It doesn’t go well for the trademark owner.

Case citation: Passport Health, LCC v. Avance Health System, Inc., 2018 WL 6620914 (E.D.N.C. Dec. 18, 2018)

more

The content in this post was found at https://blog.ericgoldman.org/archives/2018/12/your-periodic-reminder-that-keyword-ad-lawsuits-are-stupid-passport-health-v-avance.htm Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com



If Your Trademark Case Depends on Showing Initial Interest Confusion, Save Your Money–Select Comfort v. John Baxter

12 07 2019

Eric Goldman
Technology & Marketing Law Blog
December 14, 2018

Today’s case comes on post-jury motions in one of several litigation battle royales in the mattress industry. (Aside: I HATE blogging mattress cases because players in that industry litigate to the death, resulting in overlong opinions). The jury found that “Defendants did not infringe Select Comfort’s trademark rights in SLEEP NUMBER, WHAT’S YOUR SLEEP NUMBER?, SELECT COMFORT, or COMFORTAIRE.” Select Comfort sought to overturn the jury verdict based on the initial interest confusion doctrine. The court says no (emphasis added):

more

The content in this post was found at https://blog.ericgoldman.org/archives/2018/12/if-your-trademark-case-depends-on-showing-initial-interest-confusion-save-your-money-select-comfort-v-john-baxter.htm Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Powered by WPeMatico



Everything You Wanted to Know About Emojis and the Law

12 07 2019

Eric Goldman
Technology & Marketing Law Blog
November 29, 2018

For the past couple of years, I have invested significantly in all things emojis. This post rounds up everything I’ve done during that period.

more

The content in this post was found at https://blog.ericgoldman.org/archives/2018/11/everything-you-wanted-to-know-about-emojis-and-the-law.htm Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Powered by WPeMatico



Restricting Competitive Keyword Ads Is Anti-Competitive–FTC v. 1-800 Contacts

12 07 2019

Eric Goldman
Technology & Marketing Law Blog
November 26, 2018

Starting in 2002 and continuing for about a decade, 1-800 Contacts systematically locked up many of its online contact lenses retail competitors into settlement agreements that prohibited the parties from bidding on each other’s trademarks at the search engines. Perhaps not coincidentally (this was the subject of some back-and-forth among experts), 1-800 Contacts unapologetically and consistently charges higher prices than its online retailer competitors.

In 2016, the FTC filed an administrative complaint against 1-800 Contacts, alleging that its competitive advertising restrictions were illegal restraints on trade. The enforcement action implicates a number of complex topics, including: (1) when are settlement agreements pro- or anti-competitive; (2) when (if ever) can competitors agree to restrict advertising; and (3) when does competitive keyword advertising infringe trademarks? The case’s complexity virtually ensured long, fact-intensive, divisive, and very expensive proceedings. Both sides lawyered (10+ on each side) and experted up. . . .

Earlier this month, the Commission affirmed the ALJ ruling in a 3-1 ruling (one commissioner was recused). The majority opinion completely vindicates the FTC’s decision to bring the case. The dissent’s opinion, in contrast, raises numerous substantive and procedural flaws with the majority decision. The split of opinion exposes some potentially significant ideological fault lines that might define this cohort of commissioners.

Case citation: In the Matter of 1-800 Contacts, Inc., 2018 WL 6078349 (FTC Docket #9372, Nov. 7, 2018)

more

The content in this post was found at https://blog.ericgoldman.org/archives/2018/11/restricting-competitive-keyword-ads-is-anti-competitive-ftc-v-1-800-contacts.htm Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Powered by WPeMatico



Supreme Court Holds Ban on Immoral or Scandalous Trademarks Unconstitutional

4 07 2019

Ira Sacks & Mark Lafayette
LexBlog
June 30, 2019

On June 24, 2019, the United States Supreme Court, in Iancu v. Brunetti, reviewing the trademark application for “FUCT”, held that the Lanham’s Act’s provision, prohibiting the registration of “immoral[] or scandalous” trademarks, 15 U.S.C. 1052(a)(1), violated the First Amendment to the United States Constitution.

The Supreme Court first reviewed its decision in Matal v. Tam, 137 S. Ct. 1744, 582 U.S. ___ (2017), which found unconstitutional the Lanham Act’s bar on the registration of “disparage[ing]” trademarks.  The Court noted that although the eight-Justice Court divided evenly between two opinions and could not agree on the overall framework for deciding the case, all Justices agreed on two propositions. First, if a trademark registration bar is viewpoint-based, it is unconstitutional. Second, the disparagement bar was viewpoint-based.  Thus, in Tam, the Justices found unanimous common ground in that the government may not discriminate against speech based on the ideas or opinions it conveys. Accordingly, the Court observed that, under Tam, that “[i]f the “immoral or scandalous” bar similarly discriminated on the basis of viewpoint, it must also collide with the First Amendment.” . . .

Accordingly, the Court found the “immoral and scandalous” bar viewpoint-based and violative of the First Amendment.

more

The content in this post was found at https://www.lexblog.com/2019/06/30/supreme-court-holds-ban-on-immoral-or-scandalous-trademarks-unconstitutional Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Powered by WPeMatico



Trademark Ownership Based on Actual Use

10 10 2018

Lex Blog

James R. Sonny Chastain, Jr.

Oct. 9, 2018

The Federal Circuit in Lyons v. American College of Veterinarian Sports Medicine, 859 F. 3d 1023 (Fed. Cir. 2017) addressed trademark ownership, distinguishing between an idea, concept, mere preparation to use and actual use.   Between 1999 and 2001 Sheila Lyons and other veterinarians formed an organizing committee and began using the mark “The American College of Veterinary Sports Medicine and Rehabilitation” as the name of its veterinary specialist organization.   In 2002, Lyons participated in drafting a letter of intent and working with the organization to create a petition to seek accreditation.  She drafted by-laws which she presented to the organizing committee.   Thereafter, she was dismissed from the organizing committee for reasons not at issue.

After her dismissal, Lyons sought registration of the mark for “veterinary education services.”  She obtained the registration on the Supplemental Register of the U.S. Patent and Trademark Office claiming she used it in commerce.   Thereafter, the organization was granted provisional recognition as “The American College of Veterinary Sports Medicine & Rehabilitation” as a Colorado non-profit organization.

more

The content in this post was found at https://www.lexblog.com/2018/10/09/trademark-ownership-based-actual-use/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Powered by WPeMatico



Departing Employee Required to Transfer Social Media Accounts–Hyperheal Hyperbarics v. Shapiro

23 09 2018

Technology & Marketing Law Blog

by Venkat Balasubramani

Sept. 22, 2018

This is an ownership dispute over a departing employee’s right to use social media accounts and trademarks of an employer. The facts are somewhat atypical.

Shapiro founded a company called Hyperheal Hyperbarics to provide “hyperbaric oxygen therapy”. In 2014, the business was struggling and raised money from an investor, Samer Saiedy. Saiedy again put in money in 2015. Due to these cash infusions, Shapiro became a minority shareholder (owning 2.38%) and employee. In 2016, he was terminated. He was rehired in 2017 as an employee (he still retained his minority stake) but terminated again in 2018. Before being hired in 2017, he signed an employment agreement restricting his participation in social media on behalf of Hyperheal and agreeing to turn over unspecified social media accounts relating to Hyperheal. As part of the agreement, Shapiro also relinquished all rights in Hyperheal’s intellectual property.

After his 2016 termination, Shapiro filed a trademark application for “Hyperheal Hyperbarics, Inc.” In February 2017, prior to being rehired, the USPTO sent Shapiro an office action refusing his registration due to a previously filed mark (filed by Dr. Tommy Love).

After being hired in 2017, Shapiro ostensibly transferred over some social media accounts and domain names to the company. He did not mention the pending trademark application or office action. Because he never responded to the office action, the PTO deemed his application abandoned.

After his 2018 termination, Shapiro again applied to register a “Hyperheal Hyperbarics” trademark. This time, he bought Dr. Love’s interests in the trademarks. Shapiro also convinced GoDaddy to transfer the Hyperheal domain names back to him. He also told LinkedIn that Hyperheal infringed on Shapiro’s mark. Linkedin transferred control of the company account to Shapiro. Shapiro similarly contacted Twitter and Facebook. (The court does not describe the outcome of his efforts to pressure those companies into transferring accounts to Shapiro.)

Case citation: Hyperheal Hyperbarics v. Shapiro, 2018 WL 4257331 (D. Md. Sept 6, 2018).

more

The content in this post was found at https://blog.ericgoldman.org/archives/2018/09/departing-employee-required-to-transfer-social-media-accounts-hyperheal-hyperbarics-v-shapiro.htm Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Powered by WPeMatico



Nintendo Files Copyright, Trademark Infringement Suit Against Operator of ROM Websites

21 08 2018

IP WatchDog

Steve Brachmann
August 17, 2018

Nintendo’s complaint targets the operator of LoveROMS.com and LoveRETRO.co who has made thousands of Nintendo titles available online for free from platforms including the Game Boy, the original Nintendo Entertainment System, Super NES, Nintendo 64 and Nintendo DS, among others. Nintendo alleges that just the top 10 games on the LoveROMs site in which Nintendo is a copyright claimant and trademark owner have been downloaded more than 60 million times. Further, the LoveROMs website allegedly receives more than 17 million visits each month.

more

The content in this post was found at https://www.ipwatchdog.com/2018/08/17/nintendo-files-copyright-trademark-infringement-suit-against-operator-rom-websites/id=100283/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Powered by WPeMatico



Negative Keywords Help Defeat Preliminary Injunction–DealDash v. ContextLogic

17 08 2018

Technology & Marketing Law Blog

Eric Goldman

August 14, 2018

DealDash and Wish are e-commerce vendors. For a while, Wish offered a service called “Deal Dash” for time-limited bargains. Immediately after DealDash sued, Wish renamed its service “Bargain Blitz” and pulled the “DealDash” term from all advertising. DealDash still pressed for a preliminary injunction that restricted, among other things, using “DealDash” as keyword ad triggers in search engines and app stores.

Wish submitted an affidavit that it had blocked “DealDash” or “Deal Dash” as negative keywords in AdWords. The court responds:

 

Case citation: DealDash OYJ v. ContextLogic, Inc., 2018 WL 3820654 (N.D. Cal. Aug. 10, 2018)

more

The content in this post was found at https://blog.ericgoldman.org/archives/2018/08/negative-keywords-help-defeat-preliminary-injunction-dealdash-v-contextlogic.htm Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Powered by WPeMatico



Google’s servers housed by a third-party ISP qualify as a regular and established place of business to establish proper venue in the Eastern District of Texas

17 08 2018
Lex Blog
AUGUST 15, 2018
In our continued post-TC Heartland coverage, Judge Gilstrap in the Eastern District of Texas recently held that venue was proper because Google exercises exclusive control over physical servers implicated by the litigation, as well as the physical space within which the server is located and maintained. The court emphasized that the place where the server is located occupies a physical space, which is more than merely a virtual space or electronic communications from one person…

more

The content in this post was found at https://www.lexblog.com/2018/08/15/googles-servers-housed-by-a-third-party-isp-qualify-as-a-regular-and-established-place-of-business-to-establish-proper-venue-in-the-eastern-district-of-texas/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Powered by WPeMatico