Free for a Fee

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

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

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

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.

Technology & Marketing Law Blog

by Venkat Balasubramani

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

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

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)

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…

Technology & Marketing Law Blog

May 11, 2018

Eric Goldman

[ed’s note: Eric always argues that metatags are old school, irrelevant, and don’t mislead. He does so, even when a Circuit court case rules that THEY DO STILL MATTER].

Yesterday, the Ninth Circuit ruled about trademarked stripes on tennis shoes. To me, legally weaponizing dots in three lines on a shoe predictably leads to wasteful and possibly anti-consumer litigation. However, instead of critiquing the opinion generally, I’ll isolate just one aspect.

The court says:

Skechers placed metadata tags on its website that directed consumers who searched for “adidas Stan Smith” to the page for the Onix shoe. “Using another’s trademark in one’s metatags is much like posting a sign with another’s trademark in front of one’s store.” Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1064 (9th Cir. 1999). We agree with the district court that “the only reason ‘adidas Stan Smith’ is a useful search term is that consumers associate the term with a distinctive and recognizable shoe made by adidas.” Therefore, the district court did not clearly err by finding that the Stan Smith had acquired secondary meaning.

Instead of the multitude (dozens?) of Ninth Circuit cases interpreting online trademark law in the past two decades, this court in 2018 actually reaches back to the Brookfield billboard analogy from 1999? FFS. As I explained in 2005, Brookfield’s billboard analogy is irreparably flawed. Even in keyword metatag’s halcyon days when they had minor technical relevance, keyword metatags that are processed only by automated bots bear zero resemblance to a physical space sign that consumers see.

Case citation: Adidas America, Inc. v. Skechers USA, Inc., No. 16-35204 (9th Cir. May 10, 2018)

Proskaueh on Advertising Law

Lawrence Weinstein, Alexander Kaplan and Evelyn Pang

May 21, 2018

[ed’s note: this is not an IP law case per se. However, it applies the Lantham Act in a social media context, or more to the point, it shows that the Lanthan Act cannot be used merely to constrain criticism on social media]

A judge in the Western District of Wisconsin recently denied a motion for a preliminary injunction that sought to prevent a customer from criticizing the plaintiff’s products over social media.  Buckeye Int’l v. Schmidt Custom Floors, 2018 WL 1960115 (W.D. Wis. Apr. 26, 2018).  Plaintiff Buckeye sells floor finishing products, and defendant Schmidt is a flooring installer and refinisher.  Schmidt purchased Gym Bond, Buckeye’s floor finishing product, to facilitate the bonding of a clear topcoat to finished hardwood sports courts.  When the topcoat peeled off, Buckeye blamed Schmidt and refused to pay for repairs and refinishing.  Schmidt then complained about Gym Bond and Buckeye on social media, which caused Buckeye to sue Schmidt for false advertising under the Lanham Act and seek a preliminary injunction barring Schmidt’s social media postings about Buckeye and its product.

 

more

The content in this post was found at https://www.proskaueronadvertising.com/2018/05/lanham-act-injunction-floored-where-social-media-criticisms-were-not-commercial-advertising/Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com