The comedian Gil Gottfried had a routine at a ‘roast’ honoring Bob Sagett where a recurring theme was the denial, with greater and greater specificity, that contrary to a rumor, Bob Sagett did not in fact rape and murder a young girl in 1990. It’s one of those bits that isn’t funny the first six or so times the line is repeated.
So someone registers the domain name GLENNBECKRAPEDANDMURDEREDAYOUNGGIRLIN1990.COM. Glenn Beck then filed a UDRP. Registrant’s response (linked to here) explains why the domain name is funny, and why Beck’s interviewing technique is not.
Jim Brown sued EA, publisher of Madden Football video game, re use of avatar that resembled Brown. Image was used in game but not in promotional material for game. Judge dismisses case on First Amendment grounds. Background on on-going disputes between atheltes and EA here. You can use TIGER WOODS and TONY TWIST as search terms on the Trademark Blog search tool to the right, to learn more on the general subject of use of athletes’ images.
Jim Brown Decision
The Advocate General of the European court of Jsutice has released his opinion in Google France v LVMH, regarding Google’s ability to sell keywords reflecting trademarks, in the EC. The Advocate General’s opinion strongly determines the actual decision of the ECJ. The AG’s view is that the sale of keywords is not per se unlawful From the ECJ press release:
In his Opinion delivered today, Advocate General Poiares Maduro suggests that Google has not committed a trade mark infringement by allowing advertisers to select, in AdWords, keywords corresponding to trade marks. He highlights that the use of the trade marks is limited to the selection of keywords which is internal to AdWords and concerns only Google and the advertisers. When selecting keywords, there is thus no product or service sold to the general public. Such a use cannot therefore be considered as being a use made in relation to goods or services identical or similar to those covered by the trade marks. Similarly, advertisers themselves do not commit a trade mark infringement by selecting in Adwords keywords corresponding to trade marks.
By contrast, the Advocate General finds that Google, by displaying ads in response to keywords corresponding to trade marks, establishes a link between those keywords and the sites advertised which sell products identical or similar to those covered by the trade marks. The very same link is established between keywords which correspond to trade marks, and the sites displayed as natural results.
However, in the view of the Advocate General, such a link also does not constitute a trade mark infringement. In effect, the mere display of relevant sites in response to keywords is not enough to establish a risk of confusion on the part of consumers as to the origin of goods or services. Internet users are aware that not only the site of the trade mark owner will appear as a result of a search in Google’s search engine and sometimes they may not even be looking for that site. These users will only make an assessment as to the origin of the goods or services advertised on the basis of the content of the ad and by visiting the advertised sites; no assessment will be based solely on the fact that the ads are displayed following the entry of keywords corresponding to trade marks.
Note that I did not have access to legible exhibits to the complaint. I understand these to be cookie tins offered by plaintiff and defendant and not necessarily the products involved in this action.
Complaint Danish Butter Cookies
Macy’s uses MACY’S AND CLINTON KELLY MAKE OVER AMERICA receive demand letter from owner of registrations for various MAKE OVER marks; files declaratory judgment action.
Consider this case:B & L Sales Associates v H. Daroff & Sons, 421 F.2d 352 (2d Cir 1970) (registered trademark COME ON STRONG v use of COME ON STRONG in ad copy).
Complaint Macy Makeover
On the one hand its prudent to advise all attornies to read any decision where Rule 11 sanctions are actually awarded. On the other hand, it’s hard to imagine an attorney finding him or herself in this situation.
Trademark owner, who sells hoisin sauce, prevails on partial summary judgment against infringer. Five months after summary judgment, defendant seeks to amend its answer. Hoisin means seafood and defendant has ‘just’ learned that there’s no seafood in trademark owner’s hoisin sauce. Therefore trademark owner has allegedly committed fraud on the PTO in obtaining its registration and has committed fraud in general. Judge rolls his eyes and points out that sauces are often named after what they are used with, not what they contain (think BBQ or steak sauce). Judge says in effect “I can’t stop you from making this motion but I can make you sorry that you did” and specifically warns of sanctions.
So defendant defers from making the motion to dismiss in that action before that judge and instead files a new action to cancel the registration, and alleging fraud on the hoisin sauce-using public. (The first action had concluded in chief, but apparenty there is still fighting over fees). Trademark owner moves to dismiss second action, and moves for Rule 11 sanctions.
The new judge finds that as the protectability of trademark owner’s registration was a litigated point in the first action, all claims were barred by res judicata and collateral estoppel. Furthermore, as defendant was aware of the ingredients of the hoisin sauce for years (given that the ingredients were on the label), the claims were also time-barred. And, as icing on the frivolous motion cake, none of the plaintiffs in the second action had standing (for various reasons).
So there you have it – claims dismissed and Rule 11 sanctions ordered.
Decision Rule 11 Hoisin