Two Las Vegas Adult Film Companies Battle Over “Deep Throat”

On April 24, 2009, a company named Arrow Productions Ltd. (“Arrow”) filed a trademark and copyright infringement lawsuit against V.C.X., Ltd. (“VCX”) and its owner David Sutton. See Arrow Productions Ltd. v. V.C.X., Ltd. et al, Case No. 09-cv-00737 (D. Nev. April 24, 2009). A copy of the complaint can be downloaded here. A story on the lawsuit was reported by the Xbiz newswire (link here)

Both Arrow and VCX are in the business of “selling prerecorded sexually oriented motion pictures for personal home use, presently and, in recent years, in DVD format and previously in VHS videotape format.”

According to the complaint, VCX is the successor-in-interest to a California corporation named VCX Incorporated formed in 1979 (along with related corporations named Direct Video Corporation and Showcase Video Corporation) in the early years of the home videotape market. Apparently, in 1986, one or more of those companies went into bankruptcy and a man named Rudy Sutton purchased the rights to the film libraries owned by those corporations from the bankruptcy trustee. Rudy later incorporated VCX in 1996. Rudy passed away on December 14, 2006, but the business has continued on under the direction of David Sutton. VCX now sells the films that it owns on DVD as well as over the Internet.

The basis of the lawsuit centers around VCX's alleged distribution of several thousand copies of the movie “Deep Throat” in early 2009.

Arrow claims to be the owner of the copyright to the original motion picture “Deep Throat” (Wikipedia, IMDB). Arrow states that the movie was created and directed by the late Gerard Damiano as a work for hire of Arrow’s predecessor-in-interest. According to Xbiz, “Deep Throat” was produced by Plymouth Distributing owner Louis "Butchie" Peraino, who later called the company Arrow Film and Video (now Arrow Productions).

One critical issue is whether or not the copyright rights to the original film are in the public domain (VCX apparently believes that they are). And because pre-1989 copyright law required all works to be published with a copyright notice, one issue is whether the movie was published without a copyright notice because, if it failed to do so, then the movie might be in the public domain based on pre-1976 copyright laws.

Without specifically stating whether or not copyright notices were printed on the early versions of the film that were shown in theaters, Arrow claims that during the early theatrical exhibition of the movie, Arrow always maintained control of the prints and the showing of the movie was “four-walled” (i.e., Arrow’s employees rented the theater, sold the tickets to moviegoers, collected the tickets, and operated the projected), and thus such theatrical exhibition did not constitute “publication” under the Copyright Act. [Any copyright experts care to field that argument?]

Arrow’s subsequent distribution of the film on videotapes purportedly had the required copyright notice. Arrow asserts that it registered its copyright to the movie in March 1979 (although curiously Arrow’s complaint does not mention the specific registration number).

In order to bolster its otherwise quite simple copyright infringement claim against VCX, Arrow throws in a barrage of trademark infringement claims. Arrow originally applied for the mark DEEP THROAT (for prerecorded videotapes involving adult content) back in 1998, but the application went abandoned after failing to respond to an office action. Arrow filed again in 2004, and this time, the mark was registered (for pre-recorded videotapes and DVD's featuring adult entertainment programs and movies). Arrow also registered the mark with the Nevada Secretary of State on February 23, 2009 (see E0094112009-8). Arrow claims to have used the mark to identify a series of adult movies going back to 1972.

Arrow’s complaint also cites to a trademark on the mark LINDA LOVELACE. Linda Lovelace was the pseudonym of Linda Susan Boreman, the actress who played the lead female character in the movie “Deep Throat” (and apparently also in one version of the sequel). However, “Linda Lovelace” was played by different actresses in several “Deep Throat” sequels and there were two additional movies other than “Deep Throat” that use the Linda Lovelace “character” in the title. Arrow currently has three applications pending for the LINDA LOVELACE mark (here, here and here). And for good measure, Arrow registered the mark with the Nevada Secretary of State on March 17, 2009 (see E0139232009-6 ).

Arrow’s causes of action are, with respect to the DEEP THROAT mark, for federal and state registered trademark infringement, counterfeiting [Query: if VCX's copy of the movie is an authentic copy (albeit unauthorized), how exactly is that a counterfeit?], common law trademark infringement, false designation of origin under Section 43(a) of the Lanham Act, and trademark dilution under federal and state law [Query: Is Deep Throat really famous as a mark identifying a source of goods or services – or famous as identifying a particular single work?]. And with respect to the LINDA LOVELACE mark, Arrow’s causes of action are for state registered trademark infringement, common law trademark infringement, false designation of origin under Section 43(a) of the Lanham Act, trademark dilution under federal and state law [Again, is Linda Lovelace really famous as a mark identifying a source of goods or services – or famous for the fact that it identifies a particularly famous pseudonym of an actress who appeared in the film?] Arrow’s final cause of action is for copyright infringement. [Placed in the complaint almost like an afterthought].

Arrow is seeking injunctive relief, an impounding and destruction of all infringing copies of the movie, and statutory damages (for the counterfeiting and copyright infringement claims).

Of course, despite the morass of causes of actions relating to trademark infringement in Arrow’s complaint, this case is really about copyright infringement, and more particularly, whether the film “Deep Throat” is in the public domain. After all, if the movie is in the public domain and all that VCX is doing is distributing that single work under that single title, then VCX is not using the term “Deep Throat” as a mark to identify the source of goods and services, but merely as the genuine title of the work.

Mark Felt – The “real” Deep Throat

[May 1, 2009 Update: Steve Green has an article (link here) in the Las Vegas Sun which provides Sutton's response to Arrow's allegations.]

New England Patriots Lose TTAB Opposition Over 19-0 THE PERFECT SEASON

Followers of John Welch’s The TTABlog® are probably familiar with his ongoing series of decisions filed under the category of WYHA (“Would You Have Appealed?”). Well, after reading his write-up here on the TTAB’s recent precedential decision in Kraft Group LLC v. William A. Harpole, Opposition No. 91185033 (April 22, 2009) (precedential), there may be a new category – “Would You Have Opposed?”

Back on February 1, 2008, with the New England Patriots on the verge of becoming only the second team in NFL history to go undefeated, I wrote (link here) about the Section 1(b) intent-to-use applications filed on January 17, 2008, by Kraft Group, LLC (“Kraft”), the owner of the New England Patriots NFL franchise, for the marks 19-0 and 19-0 THE PERFECT SEASON. The same post also mentioned the earlier filed application to register the mark THE PERFECT SEASON 19-0 filed William Harpole on November 8, 2007, on the Supplemental Register.

Well, Harpole apparently figured out that he meant to file for registration on the Principal Register and that he could amend his application to be on the basis of intent-to-use on the Principal Register. Harpole’s application was published for opposition and Kraft promptly opposed.

In the TTAB opposition, Kraft attempted to argue that Harpole’s application was void ab initio or alternatively that the application's effective filing date must be deemed to be the date on which he amended the application to seek registration on the Principal Register (in April 2008 – well after Kraft’s applications were filed). The TTAB rejected Kraft’s arguments finding that Harpole's original application, even though it originally sought Supplemental Registration, nonetheless had all the information that was necessary to receive a filing date under Trademark Rule 2.21(a) and that the PTO’s Rules and Practices allow applicants the opportunity to provide information missing in the original application so that the mark can be registered without losing the original filing date.

Of course, one wonders why Kraft even bothered to oppose this mark at this stage – after all, by that time (as we all now know full well) all hopes of THE PERFECT SEASON 19-0 were dashed when the New York Giants defeated the New England Patriots in that year’s Super Bowl® brand championship football game. Perhaps Kraft was hoping to knock out Harpole’s application and keep its own applications alive in hopes that the team might pull off another perfect season in the three year time frame following the eventual Notice of Allowance (certainly they have a bona fide intent to achieve another perfect season, right?). Of course, as things stand, Kraft’s application will now be suspended until such time as Harpole’s application is either abandoned for failure to file a Statement of Use or until such time as Harpole files a Statement of Use and the mark registers (at which time Kraft’s application will most likely be rejected over Harpole’s then registered mark). So there is still the chance that Kraft's applications might be allowed eventually (does anybody really think that Harpole intends on putting out THE PERFECT SEASON 19-0 brand clothing?).

So I ask again, given the above – Would You Have Opposed?

And as a final sidenote, while no one has applied for 18-1 THE IMPERFECT SEASON (as noted by the TTABlog), there was no shortage of enterprising (but misdirected from a trademark perspective) persons who forsaw the possibility of the New England Patriots not having a perfect season.

One individual filed for 18-1 THE PERFECT UPSET on February 3, 2008, but the application went abandoned when no statement of use was filed. Another individual filed for 18-1 WORLD CHAMPIONS on February 4, 2008, but that application was also abandoned when no statement of use was filed. Same for 18 AND NO filed on February 4, 2008 – allowed but no statement of use. The New York Post had its three applications (mentioned in this article here) for 18-1 filed February 4, 2008 (here, here, and here), but all three have been abandoned. Which leaves only two applications pending: one company filed for 18-1 on February 4, 2008 (the application is currently suspended, but all cited pending applications have not been abandoned so it should be allowed to proceed) and the remaining applicant filed for WORLD CHUMPS 18-1 on February 21, 2008 (also suspended pending the outcome of the remaining 18-1).

And just because you don’t have a trademark registration for 18-1 for clothing goods doesn’t mean you can get out there and sell them anyway (although I don’t think any of these would qualify as 18-1™ brand clothing).

HeinieSniff'n Dog Toy Maker Seeks Declaratory Relief

I previously blogged (link here) about the court decision ruling against VIP Products, LLC (“VIP”) over one of its “beer” bottle shaped squeaky dog toys. In that case, it was Anheuser-Busch, Inc. (“AB”) which sued VIP over its “Buttwiper” dog toy (pictured above) and the court granted AB’s motion for preliminary injunction based on likelihood of success on the merits of AB’s trademark infringement claims. See Anheuser-Busch, Inc. v. VIP Products LLC, Case No. 08-cv-0358, 2008 U.S. Dist. LEXIS 82258 (E.D. Mo. October 16, 2008).

Yesterday, VIP, possibly hoping for a better outcome in its home jurisdiction, opted to go on the offensive with respect to another one of its “beer” bottle shaped squeaky dog toys – in this case, the HeinieSniff'n (reminiscent of the famed Heineken bottle).

On April 21, 2009, VIP filed a declaratory judgment action against Heineken USA Incorporated and Heineken Brouwerijen B.V. (together “Heineken”). See VIP Products, LLC v. Heineken USA Incorporated et al, Case No. 09-cv-00842 (D. Ariz.) A copy of the complaint can be downloaded here.

According to the complaint, on April 17, 2009, attorneys for Heineken contacted one of VIP's customers (Scalawags of Kennebunkport, Maine) selling the HeinieSniff'n dog toy claiming that the dog toy infringed and diluted Heineken’s trademarks and trade dress and demanding that Scalawags cease and desist from selling the toy and remove all pictures of the toy from the company’s website.

VIP seeks a declaration that VIP’s HeinieSniff’n dog toy does not infringe or dilute any trademark or trade dress rights owned by Heineken.

Station Casinos Follows MGM’s Lead in Cybersquatting Lawsuit Against Panamanian Company

The Las Vegas Sun had an article today (link here) about the cybersquatting lawsuit filed by Stations Casinos on April 17, 2009, against a Panamanian company named Smart Answer, S.A. (“Smart Answer”) and a Panamanian resident affiliated with the company named Susana Gonzales. See Station Casinos, Inc. v. Smart Answer, S.A. et al., Case 09-cv-00692 (D. Nev.).

The lawsuit is the third in a string of cybersquatting actions brought against Smart Answer by Las Vegas casinos. The first was MGM Mirage Operations, Inc. v. Gonzales et al, Case No. 08-cv-01543 (D. Nev. Filed November 7, 2008). This lawsuit was voluntarily dismissed on March 24, 2009. The second was Bellagio LLC et al v. Smart Answer S.A. et al, Case No. 08-cv-01569 (D. Nev. Filed November 13, 2008). A copy of the complaint filed in that case (which appears to be the form used against this company) can be viewed here.

No doubt the latest lawsuit will follow the same pattern as the second lawsuit – Complaint and Temporary Restraining Order, followed by Motion for Preliminary Injunction (served by e-mail), then Motion to deem email service on the Defendants effective under FRCP 4, then Entry of Default, followed by Motion for Default Judgment (seeking the maximum statutory damages per domain name) which will be entered by the Court.

According to the LV Sun article, the second lawsuit resulted in a default judgment of $2.2 million for the infringement of the trademarks owned by Bellagio, Circus Circus, Mandalay Bay, New York-New York and Treasure Island. Not surprisingly, the successful plaintiffs in that case are not currently pursuing collection of the $2.2 million judgment – apparently content with having acquired the allegedly infringing domain names (and having nothing to do with the difficulties of enforcing a judgment against a foreign company).

Amber Alert Creator Files Pro Se $150 Million Trademark Infringement Lawsuit

The Houston Press has an article today about a $150 million trademark infringement lawsuit filed pro se by Bruce Seybert – the Texas man who helped create the AMBER ALERT system (you can read his story on his website http://www.amberalertcreator.com/) – against the National Center for Missing and Exploited Children (“NCMEC”) and its president, Ernie Allen. See Seybert v. National Center for Missing and Exploited Children et al., Case No. 09-cv-00169 (E.D. Tex. April 15, 2009)

According to the article (I have not seen the actual complaint), Seybert wants the NCMEC to stop using any references to Amber Alert. In essence, Seybert believes that NCMEC, the government's contractor running the nationwide Amber Alert program, by failing to set forth any state-by-state guidelines, is resulting in inconsistent application and use of the Amber Alert system, which in turn, Seybert believes, has cost some kids their lives who might have otherwise been saved by the program.

Seybert also has three other trademark lawsuits (each of which were also filed pro se) against three other parties pending in the same jurisdiction – all filed March 3, 2009. Seybert v. Woods, Seybert v. Amber Alert Safety Centers Inc et al, and Seybert v. AmberAlert.com et al. And while I have not read the complaints in any of those cases either, Seybert does provide a little insight into his perception of his trademark rights and the impetus for his trademark enforcement efforts on the Amber Alert trademark page of his website where he warns people and businesses using the Amber Alert mark that if they don’t stop using it, they will be receiving one of his lawsuits (excerpted at the bottom of the page). I will let Seybert’s website speaks for itself.

Of course, the more interesting issue is whether Seybert is even the correct party to be bringing such enforcement actions. After all, the U.S. Department of Justice owns U.S. Trademark Registration No. 3,507,207 for the AMBER ALERT design mark pictured above (registered September 30, 2008). Does Seybert have some kind of agreement with the DOJ which allows him to enforce the government's trademark rights? The complaints may provide some answers. However, if Seybert is not the owner of any intellectual property rights to AMBER ALERT, Seybert will soon get a good education about not only trademark law, but also Federal Rules of Civil Procedure.

Dueling OCTOMOM Trademark Applications Filed with the U.S. Patent & Trademark Office

Like most people (at least I would like to think most people), I find the whole OCTOMOM story ridiculous. She has single handedly ruined the name Nadia for me – a great name which I was going to give to my future daughter until now. I even go out of my way to avoid reading or watching any tabloid stories on Nadya Suleman just so that I won’t play a part in the media frenzy feeding into her octo-ego.

Despite my self-imposed OCTOMOM embargo, I cannot help but make a one-time exception with a link to Tamera Bennett’s ©reateP®otect blog post (which cites The Smoking Gun) about the dueling intent-to-use trademark applications for OCTOMOM pending at the U.S. Patent and Trademark Office– one filed by a Texas company, Super Happy Fun Fun, Inc., on March 10, 2009 covering three classes (computer games, toys, and providing online games) and the other two filed by “Nadya Suleman AKA Octomom” on April 10, 2009 (the first for disposable diapers, dresses, pants, shirts, and textile diapers and the second for an on-going television variety program).

As Bennett notes, Super Happy’s application was filed first and will have priority before the PTO and could even serve to block Suleman’s applications. Of course, I would imagine that Suleman will try to oppose registration of Super Happy’s mark on the basis that the media coverage she has received worldwide has (sadly) made the word OCTOMOM famous as a term identifying Suleman . . . albeit in connection with services in the nature of a media harlot exploiting her eight newborns for the sake of her personal ambitions for fame.

World Market Center Faces Major Setback in Cybersquatting Cases

In December 2008, World Market Center Venture, LLC (“WMC”) filed approx. 11 cybersquatting lawsuits against various defendants. Several of the lawsuits appear to have been directed against registrants of domain names using some variation of the terms “Las Vegas” and “Market.”

Nevada District Court Judge Roger Hunt has denied WMC’s Motion for Preliminary Injunction against one of those defendants (a Motion that was actually unopposed by the defendant, but which the Court opted not to grant anyway given the merits of the case). See World Market Center Venture, LLC v. Michael Ritz, Case No. 2:08-cv-1747-RLH-PAL, 2009 U.S. Dist. LEXIS 30816 (D. Nev. February 4, 2009).

World Market Center

World Market Center Venture, LLC owns and operates the furniture trade show complex located in downtown Las Vegas known as the World Market Center. Among WMC’s portfolio of marks is (believe it or not) the federally registered mark LAS VEGAS MARKET (“Las Vegas” disclaimed). The mark was filed in September 2004, but WMC claimed first use going back to April 2001. Because of the highly descriptive (and with this decision, now decidedly generic) nature of just the word MARKET, WMC was only able to get the mark registered on the Principal Register under section 2(f) acquired distinctiveness.

The allegedly cybersquatting domain name registered by Defendant Michael Ritz on or about May 2, 2002 (long before WMC filed is trademark registration applications), was marketlasvegas.com, which apparently provides links to Las Vegas hotels.

As eloquently described by the Court, WMC, which owns the domain name lasvegasmarket.com on which its promotes its furniture market showcase, “now wants to force Defendant to relinquish the domain name to it by resorting to expensive litigation with the claim that it has the exclusive rights to the phrase, Las Vegas Market. This may be what some characterize as reverse cyberpiracy.”

In denying WMC’s injunctive relief, the Court states succinctly as follows:

The Court concludes that the words or phrase, "Las Vegas Market," are generic and purely descriptive in the most basic sense, and not subject to trademark or service mark protection. Neither party can preclude the other, or anyone else for that matter, from using these words or this phrase. The word "market" is purely generic. "Las Vegas" is descriptive of the location of the market. To permit a single party to claim ownership to such a phrase would be against the public interest and deny others their legitimate right to describe their business or activities.

The remainder of the opinion is the Court going through the proper analysis of WMC’s case on the merits and why WMC cannot show a likelihood of success on the merits or the lack of any showing of irreparable harm if the injunction were not granted.

The Court went on to state:

It is inconceivable that anyone would confuse the domain name , which has links to Las Vegas hotels, with Plaintiff's trademarks, "Las Vegas Market" or "World Market Center Las Vegas," which showcases home and hospitality furnishings to wholesalers.

There is evidence that Defendant's registration of his domain name and his use thereof preceded Plaintiff's efforts to register its name. It is also clear that Plaintiff only has an anticipation of using the name for ventures outside the scope of its present business.

Furthermore, "marketlasvegas" is not confusingly similar to Plaintiff's distinctive WMCLV trademarks. There is no likelihood that its use will cause mark dilution. There is no evidence of bad faith on the part of Defendant. There is no likelihood of confusion. The marks are neither identical nor "extremely similar," although the domain names are merely reversed. No presumption of confusion arises in this instance.

Judge Hunt deserves major kudos for demonstrating that there can still be justice in the world for the little guys who are picked on by the big bullies with the bucks. Not only did he reach the right decision to deny WMC's motion for preliminary injunction, but he also rendered a final decision that “Market, Las Vegas, or any combination of those words, are generic and cannot be exclusively used by anyone” (which pretty much makes WMC's Certificate of Registration for LAS VEGAS MARKET nothing more than a pretty piece of paper). Moreover, he decided against WMC in the face of Local Rule 7-2(d) which provides that the failure to file points and authorities in opposition to a motion constitutes a consent that the motion be granted – the Defendants did not respond to the Motion, and yet the Court, recognizing the absurdity of the case, was “not inclined to invoke the Local Rule in this case where the merits of the Motion fail to justify its intent.”

So for all of those other litigants with “las vegas” and “market” domain names – if you haven’t already given in to WMC’s demands to turn over your domain name (and probably pay some attorneys fees as well), perhaps the Court’s decision in this case will give you some encouragement to continue the fight.

[Update: On March 23, 2009, WMC filed a Motion with the Court to reconsider its Order, which was promptly denied by the Court on March 25, 2009.]

PepsiCo Sues Coca-Cola For False Advertising Over Energy Drink Campaign

Another Pepsi v. Coke battle

(Photo Credit: USA George)

Reuters and Dow Jones reported today on the false advertising lawsuit filed in U.S. District Court for the Southern District of New York by Stokely-Van Camp, Inc. (owned by Quaker Oats which is controlled by PepsiCo Inc.) – the maker of the Gatorade energy drink – against Coca-Cola Co. and its energy drink division, Energy Brands Inc.

The crux of the suit is Coke's recent ad campaign for its Powerade ION4 sports drink which showed pictures of Pepsi’s Gatorade drink with the phrase "Don't settle for an incomplete sports drink".

Apparently, Coke’s advertising also makes the claim that Gatorade is "missing two electrolytes" – calcium and magnesium – that are found in Powerade. According to the complaint, the trace amounts of calcium and magnesium found in Powerade are so minute that it really has no nutritional benefit.

Pepsi’s causes of action are for false advertising, unfair competition, trademark dilution, deceptive trade practices, and injury to business reputation.

uBid Sues GoDaddy for Cybersquatting Over Monetized Parked Domains

On April 6, 2009, Ubid, Inc. (“Ubid”) filed a cybersquatting lawsuit against The Godaddy Group, Inc. and its domain name registrar subsidiary company, Godaddy.com, Inc. (together “Godaddy”) in the U.S. District Court for the Northern District of Illinois. See UBID, Inc. v. The GoDaddy Group, Inc. et al, Case No. 09-cv-02123 (N.D. Ill.). A copy of the complaint can be viewed here.

Ubid describes itself as the “leading asset recovery solutions company for the world’s most trusted brands.” Or put in more layman’s terms, Ubid offers an online auction platform for sellers to sell off bulk quantities of excess inventory to the highest bidder. Ubid’s flagship sites are ubid.com and redtag.com. Ubid also has federal trademark registrations for several of its trademarks including UBID.COM, UBID, and REDTAG.COM.

Godaddy.com is the domain name registrar that claims to manage over 29 million domain names. As part of its domain name management services, Godaddy offers several programs for domain name registrants. One such program is a “Parked Page Service” – where Godaddy will “park” the domain name for its registrant customer and will put up a web page (or “landing page” as its sometimes called) which showcases various advertisements which generate pay-per-click revenue (or PPC revenue).

One interesting nuance regarding this service is that under the “Domain Name Registration Agreement” between Godaddy and its domain name registrant customers, Godaddy is authorized to redirect the registrant’s website for purposes of placing advertisements on the registrant’s webpage and reserves the right to retain all of the revenue from such advertising (emphasis added):

8. Parked Page Service
The Parked Page Service, includes, but is not limited to, the parking of pages on Go Daddy nameservers, and Starter/For Sale web pages (all parked pages, collectively, the "Parked Page"). For every domain name registered, Go Daddy will provide the Parked Page service free to its customers. Go Daddy will provide You with these services as long as You abide by the terms and conditions set forth herein and in each of Go Daddy's policies and procedures found here.

If You are using Go Daddy's Parked Page services, You agree that Go Daddy may point the domain name or DNS to one of Go Daddy's or Go Daddy's affiliates web pages, and that they may place advertising on Your web page and Go Daddy specifically reserves this right. Go Daddy also reserves the right to collect and retain all revenue obtained from such advertising. You may terminate Your use of the Parked Page service at any time through Your online account manager.

If You are using Go Daddy's Parked Page service, You are responsible for ensuring that any content placed on Your Parked Page by You or anyone on Your behalf conforms to all local, state, federal, and international laws. Further, You are responsible for ensuring the legal copyright to any images, text, or other web site elements not provided by Go Daddy. In order to use Go Daddy's Parked Page service, You must have a domain name registered with Go Daddy. Go Daddy is not responsible for making back-up copies of Your web site; this is solely Your responsibility. You agree that Go Daddy may place advertising on Your Parked Page and Go Daddy specifically reserves this right. Go Daddy also reserves the right to collect and retain all revenue obtained from such advertising.

Ubid alleges in its complaint that Godaddy, through this Parked Page Service, is acting as the “authorized licensee of the registrants” with respect to such domain names. Ubid’s complaint lists over 100 domain names containing the words “ubid” or “redtag” that are allegedly taking part in this service

Another service offered by Godaddy is its CashParking service. This is essentially the same monetization concept as above except that the domain name registrant pays a fee to Godaddy to have the pay-per-click advertising (courtesy of Google) placed on the domain name’s website and the revenue is then split between the registrant, Godaddy, and Google. Ubid’s complaint lists a few websites that it alleges is using this service including as ubidmotor.com and ubididoit.com.

Finally, the complaint mentions Godaddy’s Auction services, where the company helps sell domain names. Ubid’s complaint focuses on approx. 25 domain names that Ubid allegedly sold on February 9, 2009, including ubidsold.com, ubid-online.com, and ubid.ws.

Under the Anti-Cybersquatting Protection Act (15 U.S.C. §1125(d)(1)(A)), a person is liable to a trademark owner if such person, with a bad faith intent to profit from the mark, “registers, traffics in, or uses a domain name” that is identical or confusingly similar to a mark that is distinctive at the time of registration.

What makes this case unusual is that normal cybersquatting lawsuits (especially most cases these days) will go after the domain name registrants for placing these types of pay-per-click advertising on their websites in order to monetize their domain names. In this case, however, Ubid is going after the domain name registrar itself (and bypassing the registrants).

While Godaddy clearly did not register these domain names, by focusing on Godaddy’s right to place ads on parked pages and to keep the revenue from its Parked Page Service (or its sharing of revenue from its CashParking service), Ubid argues that Godaddy is “using” these domain names with a bad faith intent to profit – just like any domain registrant engaging in the same conduct. In addition, Ubid characterizes Godaddy’s role with respect to these domain names using these services as one of an “authorized licensee” of the domain name registrants in order to argue that Godaddy’s actions also constitute “trafficking” of such domain names. See 15 U.S.C. §1125(d)(1)(E), which defines the term “traffics in” as referring to “transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.” (emphasis added). Furthermore, Ubid also argues that Godaddy’s Auction services allows Godaddy to “traffic” in such domains with a bad faith intent to profit by being involved in the sale of infringing domain names.

Most importantly, however, Ubid’s complaint, by focusing on Godaddy’s profiting from these allegedly infringing domain names that it is maintaining for registrants, gets around the “cybersquatting immunity” for domain name registrars set forth in 15 U.S.C. §1114(D)(iii) (“A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.”)

Ubid is seeking Godaddy's profits, or alternatively statutory damages under 15 U.S.C. §1117(d) ($100,000 per domain name), for each of the domains cited in its complaint along with the injunctive relief to stop Godaddy from further use or trafficking in of domains names infringing Ubid’s marks.

With Ubid going up against a major company like Godaddy (definitely not your normal cybersquatter), this should be an interesting case. I would expect that Godaddy will at least answer the complaint (unlike OnlineNic did with Verizon's cybersquatting complaint).

As a sidenote, does anybody else find it odd that Godaddy’s Domain Name Registration Agreement, which allows Godaddy to put ads on a registrant’s parked web page, nonetheless, appears to hold the registrant responsible “for ensuring that any content placed on Your Parked Page by You or anyone on Your behalf conforms to all local, state, federal, and international laws.” So if a company sues Godaddy for allegedly infringing PPC ads appearing on a parked page (ads that Godaddy, not the registrant, was responsible for putting up), the registrant is held responsible for such infringement?

My New Favorite Barack Obama Inspired Pro Se Trademark Application

There are no shortage of examples of pro se applicants attempting to capitalize on the popularity of President Barack Obama by filing applications with the U.S. Patent and Trademark Office to register trademarks containing some form of the the name BARACK OBAMA. See IPBlog and PatentlyO for some prime examples. Most of these applications are typically for clothing (t-shirts) filed by pro se applicants with delusions of grandeur about getting a trademark on some slogan that they want to put on the front of some t-shirt (not realizing that such use is considered merely ornamental – see prior blog posts here and here – and not trademark use for t-shirts, but that’s really a sidenote to the inevitable doom of these types of applications).

Now I have another Obama inspired trademark application to add to the list – one that I have yet to see mentioned elsewhere that I stumbled upon while searching on the PTO’s Trademark Electronic Search System (TESS) for a particular design mark (and using TESS’ handy IMAGE LIST function) – this design mark application filed by New York resident Christopher Eastland (pictured below).

From Mr. Eastland’s perspective, the mark has nothing to do with our current President. The application’s slightly offensive description of the mark is as follows: “The mark consists of the head of a smiling man with pointy ears in a vampire costume, with the face and head in light brown and black, dark brown slicked back hair and eyebrows, dark brown cape, visible white teeth and fang, and purple lips, all outlined in the color black.”

Nonetheless, the mark was refused registration – on the same basis as most other applications seeking registrations involving Obama – lack of written consent from the President (15 U.S.C. §1052(c)):

Registration of the present application is refused under Section 2(c) of the Trademark Act, for the record does not include the written consent of Barack Obama, the name of the living individual whose likeness is depicted in the proposed mark. Section 2(c) of the Trademark Act, 15 U.S.C. Section 1052(c), bars the registration of a mark that consists of or comprises (whether consisting solely of, or having incorporated in the mark) a name, portrait or signature which identifies a particular living individual, except by the written consent of such individual. A name need not be the person's full name in order to identify a particular individual. See In re Sauer, 27 USPQ2d 1073 (TTAB 1993); In re Steak and Ale Restaurants of America, Inc., 185 USPQ 447 (TTAB 1975). Whether consent to register is required depends upon whether the public would recognize and understand the mark as identifying the person. . . . The use of his likeness in the proposed mark would be construed by the public as a reference to Mr. Obama. . . . Accordingly, because Barack Obama’s written consent is not of record, registration must be refused pursuant to Section 2(c) of the Trademark Act. To overcome this particular refusal, the applicant must therefore submit written consent from Barack Obama, authorizing the applicant to register his likeness.

Of course, if the PTO had actually allowed the mark to be published for opposition, I can imagine at least one company that might have had a problem with Mr. Eastland’s mark.

And it will probably come as no surprise that Mr. Eastland also applied for the mark COUNT BARACKULA (which sufferred a similar fate -- in addition to seeking registration on the Supplemental Register rather than the Principal Register and not reciting any basis for filing).

Another applicant who could've save himself $550 if he had just consulted with a trademark attorney first.

UPDATE: The shirts can be found at http://www.countbarackula.com/.

Ornamental indeed!

Bruce Lee Sues Ecko and Leo Valenia’s A.V.E.L.A. Over Clothing Using Lee’s Image

One of the things I like about trademark infringement complaints is the background story you get about famous individuals (albeit stated in lawyer legalese, which fortunately I can understand) – in this case, Bruce Lee.

On April 1, 2009, Bruce Lee Enterprises, LLC (“BLE”) filed a trademark infringement lawsuit against Marc Ecko Enterprises, A.V.E.L.A., Inc. and Leo Valencia in the U.S. District Court for the Southern District of Indiana. See Bruce Lee Enterprises, LLC v. Marc Ecko Enterprises et al., Case No. 09-CV-00398 (S.D. Ind. April 1, 2009). A copy of the complaint can be downloaded here.

The complaint provides a nice history of the life of Bruce Lee –his childhood acting, his young days with martial arts and cha cha dancing, his acting career as “Kato” (on the TV show The Green Hornet), his mastery of martial arts that he would later develop into JEET KOON DO, and his famous martial arts films up through his final film, Enter the Dragon.

Bruce Lee’s family established the company Concord Moon LP to hold the exclusive rights to all commercial merchandising and related rights relating to the use of Lee’s name, his image likeness, persona, signature, mannerisms, distinctive appearance, sayings, voice, and photographs. Concord Moon also held the rights to three particular federal trademark registrations – for the mark BRUCE LEE (for clothing), the mark JEET KUNE DO® (for magazines), and the below logo (described as the “Core Logo” -- a logo that Lee developed sometime in 1964 to associate with Lee and his martial arts principles of “Using No Way as Way, Having No Limitation as Limitation”) registered in three different classes (martial arts instruction, jewelry and lapel pins, and achievement certificates and non-fiction martial arts books) and pending in another (clothing). A slightly different variation of the logo has also been registered.

On April 1, 2008, BLE was organized by Lee’s family to be the successor-in-interest to Concord Moon’s intellectual property rights.

Marc Ecko Enterprises (Ecko) is the “global fashion and lifestyle company” behind such clothing brands as *ecko unltd, Avirex, and Zoo York.

Apparently, BLE contacted Ecko regarding a t-shirt with a Marc Ecko label on it that had Lee’s image on it. Ecko wrote back to BLE stating that it had obtained a license to the use Lee’s image from A.V.E.L.A., Inc. (the Art and Vintage Entertainment Licensing Agency) (“AVELA”), which is owned by Valencia. Subsequently, BLE sent a cease and desist letter to AVELA and Valencia regarding their sale of t-shirts online and in Target Stores having Bruce Lee’s image thereon; however, neither AVELA or Valencia apparently replied.

BLE’s causes of action are for violation of Lee’s right of publicity under Indiana law (I.C. §32-36-1 et seq.), California law (Cal.Civ.Code §3344), and under common law; registered trademark infringement under 15 U.S.C. § 1114, federal unfair competition under 15 U.S.C. § 1125(a); common law unfair competition; unjust enrichment; conversion under Indiana law (I.C. §35-43-4-3); deception under Indiana law (I.C. §35-43-5-3), and a claim for relief under Indiana Crime Victims' Act (Ind. Code §34-24-3-1) for BLE’s losses as the result of the Defendants’ conversion and deception.

Nostalgia Moment – one of my favorite computer games in my youth was Datasoft’s Bruce Lee (pictured below).

Old Fogey Moment – they just don't make games like they used to.

Second Circuit Overturns Google’s District Court Victory on Trademark Keyword Sales

Yesterday I posted (link here) about a Massachusetts district court decision finding that a party’s purchase of a trademarked keyword to trigger sponsored links constitutes a "use" within the meaning of the Lanham Act. That court’s decision noted that the “the Second Circuit stands alone in holding that the purchase of a competitor's trademark to trigger internet advertising does not constitute a use for the purposes of the Lanham Act.” (emphasis in original).

Today, the Second Circuit appears to have decided to join the other Circuits which have held that the purchase of trademarks to trigger sponsored links on a search results page is a "use" under the Lanham Act (while at the same time distinguishing, and drastically limiting its prior decision in 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2nd Cir. 2005) which heretofore had been relied upon by many trademark attorneys and Second Circuit district courts as the basis for dismissing trademark infringement lawsuits involving keywords).

In Rescuecom Corp. v. Google Inc., No. 06-4881-cv (2nd Cir. April 3, 2009), the Second Circuit reversed a lower court’s decision to dismiss Rescuecom’s trademark infringement action against Google Inc. under Rule 12(b)(6) for failure to state a claim on the grounds that Google did not use Rescuecom’s trademark in commerce within the meaning of the Lanham Act. The decision received a plethora of media coverage (NY Times, WSJ, Law.com, ZDnet, PC World, Techcrunch).

The Second Circuit held that Rescuecom’s allegations that Google’s recommendation and sale of Rescuecom’s trademark to Google Adword advertisers in order to trigger sponsored links in a manner that could likely cause consumer confusion from Google search engine user searching Rescuecom’s trademark were sufficient to allege a claim under the Lanham Act (i.e., such allegations were sufficient to allege that Google’s use of Rescuecom’s trademark was a “use in commerce” within the meaning of § 45 of the Lanham Act).

Eric Goldman provides his excellent overview of the impact of the court’s decision. Meanwhile, the Electronic Frontier Foundation paints its own dire picture of the implications of the decision on e-commerce.

In short, the Second Circuit appears to have brought to an end the debate about whether trademark keyword purchases and sales constitute “use in commerce” under the Lanham Act. With the Second Circuit now on board, all Circuits that have not previously addressed the issue will likely follow suit. The Second Circuit’s opinion even includes an Appendix discussing the phrase “use in commerce” in the Lanham Act (which while much more detailed and scholarly, nonetheless reaches the same conclusion as the Massachusetts district court did in the Hearts on Fire case yesterday).

And now the battle turns to where most trademark battles end up – addressing the issue of likelihood of confusion. The biggest defeat here is that purchasers and sellers of trademark keyword advertising can no longer get a trademark infringement lawsuit dismissed at an early state for failure to state a claim – and will instead have to endure some discovery and fight through to summary judgment or maybe even trial. The end result is that more parites will probably reach settlements earlier, and more online retailers will avoid purchasing another party’s trademarks as an advertising keyword which is the result that trademark owners ultimately wanted anyway.

Massachusetts District Court Finds Keyword Purchase Constitutes Trademark Use

A Massachusetts District Court has held that the purchase of a trademarked keyword to trigger sponsored links constitutes a "use" within the meaning of the Lanham Act. See Hearts on Fire Company, LLC v. Blue Nile, Inc., Case No. 08-cv-11053 (D. Mass. March 27, 2009).

I previously blogged about this case here. Hearts on Fire Company, LLC (“HOF”), the company behind the “Hearts On Fire” diamond (a/k/a The World's Most Perfectly Cut Diamond) (pictured above), filed a trademark infringement lawsuit against Blue Nile, Inc. (“Blue Nile”), an online retailer of certified diamonds and jewelry, based on Blue Nile’s purchase of the mark “Hearts On Fire” as webcrawler.com keyword which generated a Blue Nile sponsored link for searchers who searched for “Hearts On Fire”. Blue Nile had filed a Motion to Dismiss HOF’s complaint in part based on the argument that its purchase of the keyword “Hearts On Fire” was not trademark use.

After reviewing the conflicting circuit court decisions on the matter (the First Circuit Court of Appeals has yet to address this issue), United States District Judge Nancy Gertner, in denying Blue Nile’s Motion to Dismiss, decided to follow the Ninth and Tenth Circuit precedents on the purchase of trademarks triggering banner ads as constituting use under the Lanham Act (Playboy Enterprises, Inc. v. Netscape Commc'ns Corp., 354 F.3d 1020 (9th Cir. 2004); Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006)) which have been applied by other district courts to the purchase of trademarked keywords to trigger sponsored links. See Boston Duck Tours, LP v. Super Duck Tours, LLC, 527 F. Supp. 2d 205, 207 (D. Mass. 2007) (finding keyword-purchasing a "use" for trademark purposes); J.G. Wentworth, S.S.C. Ltd. P'ship v. Settlement Funding LLC, 2007 WL 30115 (E.D. Pa. 2007) (finding trademark use in sponsored linking); Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310 (D.N.J. 2006); Gov't Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004).

The Court noted that courts finding the purchase of keywords to be trademark "use" focused more on the broader definition of “use” in 15 U.S.C. § 1114 compared to the definition in the Lanham Act’s definition section (15 U.S.C. § 1127):

Rather than relying only on the Act's definitions section as the Second Circuit has done, see note 5, supra, these courts often look also to its civil remedies provision, which defines "use" more broadly. Compare 15 U.S.C. § 1127 (definitions section), with 15 U.S.C. § 1114 (civil remedies provision); see also Boston Duck Tours, 527 F. Supp. 2d at 207 (finding that "sponsored linking necessarily entails the 'use' of the plaintiff's mark as part of a mechanism for advertising," based on the statute's "plain language"). In particular, the civil remedies provision penalizes the "use in commerce" of "any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services." 15 U.S.C. § 1114 (emphasis added); see also note 2, supra. The purchase of a competitor's trademark to trigger search-engine advertising is precisely such a use in commerce, even if the trademark is never affixed to the goods themselves. In effect, one company has relied on its competitor's trademark to place advertisements for its own products in front of consumers searching for that exact mark. The Lanham Act's use requirement is not so narrow or cramped that it would fail to treat this conduct as a "use in commerce."
Even the Act's definitions section, which pre-dates the advent of internet commerce and advertising, treats as a "use in commerce" any use of the trademark on "displays associated" with the goods offered for sale. 15 U.S.C. § 1127. On the facts of this case, by contrast to 1-800 Contacts, 414 F.3d 400, a computer user's search for the trademarked phrase necessarily involves a display of that trademark as part of the search-results list. For instance, if a computer user searches for the "hearts on fire" trademark at www.webcrawler.com, the text "Web search results for 'hearts on fire'" is prominently displayed above the search results, including the sponsored links. Indeed, this display is exactly what the Defendant paid for: the association of Blue Nile's sponsored link with the searched-for trademark.

(emphasis in original)

The court held that given the Lanham Act's language and the broader purposes of the trademark statute, “there is little question that the purchase of a trademarked keyword to trigger sponsored links constitutes a ‘use’ within the meaning of the Lanham Act.”

The court went on to find that HOF’s allegations were sufficient at this stage to state a claim for trademark infringement (including a claim of infringement based on initial interest confusion). Even though none of Blue Nile’s sponsored links displayed the “Hearts On Fire” mark, HOF alleged sufficient allegations that consumers would likely to be confused based on the surrounding context in which the results appear.

Vegas™Comments:
Another victory for trademark owners looking to go after sponsored link purchasers who buy trademarks as search engine keywords.

State of Florida Suing Rapper Flo Rida for Trademark Infringement – NOT

A trademark April Fool’s Joke? You be the judge. Click here for the story on HipHopRx regarding the initial rumors that rapper Flo Rida was going to be sued by the State of Florida over his name and the subsequent confirmation that no such action was being contemplated.

I’ll leave the Florida jokes to The Legal Satyricon.