Copyright Law Blog

How To Avoid Legal Trouble From Trademark Infringement When You Buy A Domain Name

July 17th, 2009 at 06:42pm Under trademark law

So you have a hot idea for a website, or maybe you want to capitalize on a hot new product that has just been released. There are some things that you will want to know first before you get yourself in a lot of hot water.
Choosing a domain name isn’t really rocket science but it is very important. You want to choose something that is as short as possible, easy to pronounce and remember for marketing purposes, and if at all possible you want to get your main keywords in the domain name. All that aside, you also have to be careful that you don’t step on the toes of a person or company who may be inclined to sue you.
For example, judges have ruled against domain name squatters in every case where they registered a celebrity’s name. They will also rule against companies that infringe upon other companies. A good case in point would be the case a couple of years ago between the World Wrestling Federation and the World Wildlife Foundation. The World Wrestling Federation called itself the “WWF”, put up a website at wwf.com, and the World Wildlife Foundation filed a trademark infringement suit against them. The Wildlife Foundation won because they had been in existence for many years before the wrestling firm and therefore the World Wrestling Federation had to change its name to World Wrestling Entertainment. Obviously this cost them a great some of money to change their name that appeared on millions of marketing products all over the world as well as the expense they had put up on their website and online marketing.
Another more recent issue that is still ongoing is the battle between Apple and the V.O.I.P. product “iphone” from Cisco. Apple announced they would be bringing a product to market called the Apple iPhone to go along with their other products that start with an “I”. Cisco promptly filed for injunctive relief and as of this writing the issue is unresolved.
There are a few basic guidelines that will help keep you out of trouble when you are choosing a domain name so you don’t run into legal trouble from violating someone’s trademark. Let’s take a look at them.
First off you need to realize that a name that is used to identify a particular service or product is a recognized trademark. Trademarks that are deemed to be suggestive and memorable are granted protection by both state and federal law.
A confliction of trademarks occurs when one trademark is in conflict with another and the deployment of both is probably going to be confusing to customers or would be customers concerning the company’s products or services. As I illustrated above, when the legal issue is with a later user of a trademark, the law rules that the first commercial user of the trademark is the legal owner and is therefore given protection. The loser will be forced to cease using the trademark and may even be compelled to pay damages to the original owner, particularly if it is determined that they were malicious in their intent.
The smart thing to do is to consult a trademark lawyer and have them check out your idea for a domain name before you invest too much in developing and marketing it.

Defending Trademark Infringement

July 15th, 2009 at 12:43pm Under trademark law

Patent infringement is considered the theft of an invention, idea, or enhancement that has been filed with the U.S. Patent Office, with a given time frame of acceptable overlap of one year.
The U.S. Patent Office is responsible for determining whether or not a patent can be granted based on the information given by the applicant. Trademark infringement is the use of a company’s or individual’s registered trademark, a trademark being a sign, symbol, or emblem used to distinguish one company’s or individual’s trademark from another, such as RCA uses a specific dog in a specific position as their trademark.
Any company wishing to use a dog as their trademark can do so without being guilty of a trademark infringement provided they use a different type of dog as their trademark.
Trademark infringement is as equally serious as patent infringement. Trademarks are a recognizable symbol, which companies are hopeful that the general public will associate with quality and purchase the product based on recognition.
Trademark infringement is profit infringement, and if trademark infringement is suspected it is within a company’s or individual’s best interest to contact a trademark lawyer. A trademark lawyer can help launch an investigation and determine whether or not a trademark infringement has occurred.
By enlisting the assistance of a trademark lawyer, the company or individual is then able to have legal backing should they choose to make a legal claim of trademark infringement. A trademark lawyer can naturally do the same thing for a patent infringement.
The difference between a patent infringement and a trademark infringement is the nature of the idea that is copied. A patent infringement refers to the copying or theft of an actual invention while a trademark infringement refers to the copying or theft of an icon, symbol, or even a special set of lettering. A trademark lawyer can assist a company or individual with either case.
The U.S. Patent Office is responsible for keeping and maintaining the records of all patents and trademarks, which is a searchable database of registered patents and trademarks.
In order to obtain a legal basis for patent infringement or trademark infringement, the U.S. Patent Office must have a record of the original filing of the patent or trademark. This is not so difficult to obtain through the U.S. Patent Office, especially with the development of the internet and searchable software.
These tools have both removed any valid excuse of ignorance for trademark infringement or patent infringement while simultaneously enhancing an inventor’s ability to search out trademark infringements and patent infringements. It doesn’t take a trademark lawyer to search the database, as this is something anyone can easily do with a little time and energy, and an internet connection.
Once the original patent or trademark registration is determined, a trademark lawyer can then follow a few basic steps to determine the actuality of a patent infringement or trademark infringement.
This means that the trademark lawyer will likely write a certified letter to the company stating the fact that the company is in violation of trademark infringement laws or patent infringement laws, and they are to immediately cease and desist the current use of either the trademark or the patent.
The company then has a choice to make, whether they will immediately abide by the warning letter or they may choose to fight the notion that they are guilty of any type of trademark infringement or patent infringement.
They as well will turn to the U.S. Patent Office to determine if they are in error, or if the inventor or trademarked company is mistaken in their assertion. Should their U.S. Patent Office search prove to them that they are in violation of trademark infringement laws or patent infringement laws, and they do not immediately cease and desist, the trademark lawyer will undoubtedly recommend filing a lawsuit.
The trademark lawyer may very well recommend filing a lawsuit regardless of the company’s further actions, as this is likely to prompt a settlement offer for any marketing or promotion damage that may have been done while the offending company was in violation of trademark infringement laws or patent infringement laws.
Trademark infringement and patent infringement can be complicated in proving every detail, particularly if the infringement was in fact intentional or accidental. However, while intent does play a role in determining the outcome of a lawsuit, ignorance does not excuse the action. There should be a decline in trademark infringement and patent infringement cases as the U.S.
Patent Office records are now easier than ever to search, however it seems as though cases of infringement are climbing rather than declining.

Lsu V. Smack Apparel: Trademark Protection for Color Schemes

July 13th, 2009 at 06:43pm Under trademark law

Background

Louisiana State University, the University of Oklahoma, Ohio State University, the University of Southern California, and the schools’ licensing agent brought this trademark infringement action against Smack Apparel Company, alleging that Smack’s t-shirts create a likelihood of confusion among consumers. Smack produces t-shirts bearing the distinctive color schemes of various universities and professional sports teams, along with sarcasm or puns relating to some fact or indicia about the school or team such as events. The university-based items tend to relate to the school’s sports teams.

Smack’s products are unlicensed. In news interviews, the company claims to be “licensed only by the First Amendment.” Smack also paid no royalties to the schools.

The plaintiff Universities alleged that Smack’s products were identical to and competed directly with the Universities’ own officially licensed products. The Eastern District of Louisiana agreed with the Universities, finding that Smack’s use of the color schemes and other indicia constituted trademark infringement, granting summary judgment to plaintiffs and holding a jury trial as to damages. Smack appealed.

Color schemes can attain a secondary meaning

The Court noted that in order for an unregistered mark to obtain protectibility, “[t]he key is whether the mark is ‘capable of distinguishing the applicant’s goods from those of others.’” Bd. of Supervisors for La. State Univ. v. Smack Apparel Co., 550 F.3d 465, 475 (5th Cir. 2008) (citing Two Pesos Inc. v. Taco Cabana Inc., 5050 U.S. 763, 768 (1992). The Fifth Circuit agreed with the parties that a color scheme can be protected as an unregistered trademark when, as here, it has acquired secondary meaning and is non-functional. Id. at 475-476. Notably, the schools claimed a mark not in the color scheme alone, but in the combination of color scheme and school indicia on Smack’s products.

The court applied the multi-factor test for determining secondary meaning set forth in Pebble Beach Co. v. Tour 18 I Ltd., 115 F.3d 525, 541 (5th Cir. 1998): 1) length and manner of use of the mark or trade dress, 2) volume of sales, 3) amount and manner of advertising, 4) nature of use of the mark or trade dress in newspapers and magazines, 5) consumer-survey evidence, 6) direct consumer testimony, and 7) the defendant’s intent in copying the trade dress. Board of Supervisors for La. State Univ., at 476.

The plaintiff schools had been using their respective color schemes for more than 100 years; the colors were immediately identifiable with the school by those familiar with the school. The schools sell over $10 million in color scheme-marked merchandise every year, and the color schemes are included in all promotional material. The color schemes had been referenced multiple times in the media, and the schools often refer to themselves using their colors. Indeed, Smack intentionally incorporated the colors in their products in the belief that the colors had developed a secondary meaning. Because so many of the factors were met in this case, the court determined that the color schemes had developed a secondary meaning. Id. at 476- 477.

Smack’s products caused a likelihood of confusion

Once a plaintiff shows ownership in a protectable mark, he must show that defendant’s use of the mark “creates a likelihood of confusion in the minds of potential customers as to the ‘source, affiliation, or sponsorship” of the product at issue.” Id. at 478. In order the determine likelihood of confusion, the court assesses eight factors:1) the type of mark allegedly infringed, 2) the similarity between the two marks, 3) the similarity of the products or services, 4) the identity of the retail outlets and purchasers, 5) the identity of the advertising media used, 6) the defendant’s intent, 7) any evidence of actual confusion, and the degree of care exercised by potential purchasers.  Id.

Analyzing the facts under these factors, the court found that plaintiffs adequately demonstrated a likelihood of confusion. The court found that the marks were strong despite some evidence of third party use of the colors. Id. at 479. Even though Smack asserted that its designs were not identical to any University-licensed shirts, the court found, after comparing the shirts, a “striking similarity.” Id. Both parties used similar media, advertising and retail outlets to sell products. Id. at 481. As to intent, Smack’s owner testified that it was “no coincidence” that his shirts incorporate the University color schemes and then he designed the shirts to make people think of the particular targeted school. Id. at 481-482.

In all, the court found a likelihood of confusion, stating: “Smack’s use of the Universities’ colors and indicia is designed to create the illusion of affiliation with the Universities and essentially obtain a “free ride” by profiting from confusion among the fans of the Universities’ football teams who desire to show support for and affiliation with those teams. Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 33 (1st Cir. 1989).  This creation of a link in the consumer’s mind between the t-shirts and the Universities and the intent to directly profit therefrom results in “an unmistakable aura of deception” and likelihood of confusion. Id. at 35.” Board of Supervisors for La. State Univ., at 483-484.

Conclusion

The Fifth Circuit’s decision serves as a partial guide for companies seeking to use unregistered color schemes in connection with unlicensed products or services. Clearly, the use of those color schemes in combination with indicia of the trademark owner’s entity constitutes infringement. However, the Court does not go so far as to state whether the color schemes alone, without the other collegiate indicia, would similarly have constituted protectable trademarks – that issue remains to be decided. Schools and companies can protect themselves against infringement by registering their color marks, which would create a presumption that the color scheme is a valid trademark.

Audi V. Shokan Coachworks: Trademark Infringement in Email Signature

July 13th, 2009 at 12:42am Under trademark law

Introduction:

In the case Audi AG v. Shokan Coachworks Inc., 2008 WL 4911730, No. 1:07-CV-00173 (N.D.N.Y. 2008), the federal district court grappled with a slew of trademark claims, combining into one opinion many of the issues raised by a number of other previous courts. Specifically, the court could not grant summary judgment in Audi’s favor on one issue because it did not properly authenticate archive.org website printouts. The court also joined the ranks of many federal district courts that chose the 9th Circuit test for nominative fair use over the 3rd Circuit court’s test. The parties’ previous settlement agreement, in which certain limited uses were allow, played a major role in the outcome of the cross-motions for summary judgment.

Background:

Automobile manufacturer Audi AG (“Audi”) had previously sued Shokan Coachworks Inc. (“Shokan”), a vehicle recycler and used-parts retailer specializing in Audi parts, for trademark infringement in 1990 over Shokan’s use of the AUDI mark and logo on its letterhead, business cards and advertisements. The parties settled that lawsuit, with Shokan agreeing to change its logo and refrain from using the AUDI mark except as an adjective to describe its repair services.  The settlement also specifically approved a Shokan ad that used the phrase “AUDI USED PARTS” and the phone number “1-800-ALL-AUDI.”

In 2003, Audi again sued Shokan for trademark and trade dress infringement, dilution, false designation of origin, false advertising, and cybersquatting. At issue were Shokan’s use of the phone number 1-800-ALL-AUDI; answering the Shokan business line “all Audi;” using the phrases “Audi Used Parts” or “Used Audi Parts” in ads; using the email address “allaudi.shokan@verizon.net;” (”email address”) using the phrase “Shokan Audi Parts” in the signature block of 38,000 emails sent by Shokan; the doman name “800allaudi.com;” and the phrases “Audi Parts Warehouse” amd “1-800-ALL-AUDI” inside Shokan’s business premises. Audi also alleged that Shokan used Audi’s ring logo on its website and on a sign inside the business premises.

The parties filed cross-motions for summary judgment, with each party winning some and losing some. The opinion on all cross-motions is Audi v. Shokan Coachworks, Inc., 2008 WL 4911730, No. 1:07-CV-00173 (N.D.N.Y. 2008).

The doctrine of laches protected Shokan on previously-decided claims

Shokan asserted a laches defense regarding its use of 1-800-ALL-AUDI and in using “Audi Used Parts” in advertisements, on the grounds that both were permitted in the parties’ previous settlement agreement and had been used by Shokan for 20 years.

The court agreed with Shokan, finding that Audi had failed to show that Shokan exceeded the scope of usage contemplated by the original settlement agreement. The court rejected Audi’s argument that its prosecution delay was excusable, as Shokan had been using the phone number and advertising for so long that the delay prejudiced Shokan. 2008 WL 4911730, *10-13.

Improper authentication prevented summary judgment on email address

The court granted summary judgment in favor of Shokan on the email address due to Audi’s failure to properly authenticate supporting documents. Audi submitted copies of Shokan’s website, which included the email address as contact information. However, Audi used the archive.org website to generate the submitted images supported by declaration of an Audi witness. Courts have held that printouts from archive.org can only be authenticated by a knowledgeable representative of that website. Audi’s failure to produce such a representative meant Audi failed to properly authenticate the printouts, which means the Court could not consider those printouts in support of Audi’s motion for summary judgment. 2008 WL 4911730, *24.

Likelihood of confusion and dilution created in email signature block

The court did grant summary judgment in favor of Audi on its infringement and dilution claims regarding Shokan’s use of the AUDI mark in its email signature block., “Shokan Audi Parts.” The court found that the signature block created a likelihood of consumer confusion based on the parties’ competitive proximity, the strength of the AUDI mark, and Shokan’s use of the identical mark. 2008 WL 4911730, *19.

The court also agreed with Audi’s dilution argument regarding the signature block. The Audi mark was famous based on the length of time it had been registered, the high cost of Audi’s advertising campaigns, and the amount and geographic reach of Audi’s sales. The case was filed before enactment of the Trademark Dilution Revision Act, which establishes a “likelihood of dilution” standard, so the court applied the previously applicable “actual dilution” standard. Even with this higher standard, Audi established actual dilution as a matter of law because of Shokan’s use of the identical mark in its signature block. 2008 WL 4911730, *20

No nominative fair use by Shokan

The court rejected Shokan’s nominative fair use defense. The court followed the lead of many other district courts in the 2nd Circuit in following the 9th Circuit test – rather than the 3rd Circuit test — for nominative fair use (though the 2nd Circuit Court itself had not yet adopted any test for nominative fair use). The 9th Circuit’s three-part test for nominative fair use determines whether 1) the product or service in question is not readily identifiable without use of the trademark; 2) only so much of the marks are used as is reasonably necessary to identify the product or service; and 3) the user does nothing that would suggest sponsorship or endorsement by the trademark holder. 2008 WL 4911730, * 14-16.

The court determined that Shokan’s email signature block and its other uses of the “Audi” mark could not qualify as nominative fair use because Shokan’s use could “imply sponsorship” by Audi, thus failing the third prong of the test. 2008 WL 4911730, *16.

Question of good faith in cybersquatting claim is a question of fact

As to the domain name “800allaudi.com,” there was as genuine issue of fact as to whether the prior settlement covered those claims. The prior settlement, allowing Shokan to use the vanity phone number, prevented the court from being able to find, as a matter of law, that Shokan’s use of the phone number as a domain name constituted bad faith under the Anticybersquatting Consumer Protection Act. The court specifically noted that issues such as good faith are “singularly inappropriate for determination on summary judgment.” 2008 WL 4911730, *21.

Conclusion

Shokan should serve as a sobering reminder for practitioners that printouts of historical websites from the archive.org website are not admissible without a supporting declaration from an archive.org representative. The case is also indicative of a trend of federal courts to adopt the 9th Circuit test for nominative fair use, as opposed to the 3rd Circuit’s different nominative fair use test.

Finally, the scope of the parties’ previous settlement agreement had a significant impact on the outcome of these cross-motions. While Audi likely believed it was allowing narrow uses, Audi’s previous allowance of those uses raised questions of fact as to whether similar uses would also be allowed. Practitioners should learn from this case and take care to craft settlement agreements very narrowly to avoid a similar situation.