I mean, for sure, it seems to be one of those situations where no one would have ever learned of the sites GODLMANSACHS666.COM and GOLDMANSACHS13.COM, but for the demand letter, but the letter itself doesn’t have the misplaced certitude, the overblown rhetoric, the baseless imputation of evil to the recipient, and over-all lack of self-awareness, that marks the truly dumb demand letter.
So I have to disagree with Marco here. I’ve read dumber. But Marco raises interesting points on ‘client control,’ a term that I don’t like, as (1) it is not what our job is; and (2) it can’t be done. We’re in the effective guidance business. We identify options and predict outcomes of selecting those options.
So what would you have done?
BTW, see Lamparello v. Falwell; and Bosley Medical v Kremer.
Prof Goldman: “1-800 VAIL Doesn’t Infringe — Vail Associates v. Vend-Tel-Co“:
This case nicely illustrates that a vanity 800 number containing a third party trademark doesn’t create a likelihood of consumer confusion. To the extent that 800 numbers are analogizable to keyword advertising, this case suggests that maybe keyword trademark triggering doesn’t either.
The defendant operates nearly 2 dozen 800-phone lines that all begin “1-800-SKI-[destination].” At issue in this case is the phone line 1-800-SKI-VAIL. The 800 number was a redirection service that routed callers to various businesses such as travel agencies.
Edison-based I-many, Inc. (NASDAQ:IMNY) announced that it has filed a lawsuit against Model N, Inc. of Redwood Shores, Calif., for trademark infringement, dilution, fraudulent business practices and unfair competition.
The Edison provider of contract management software and services alleges that Model N has deliberately used I-many’s registered trademarks in a series of online advertisements, where potential customers who click on the trademark “I-many” are diverted to Model N’s Web site.
Prof Goldman: “Keyword Ads and Metatags Don’t Confuse Consumers — J.G. Wentworth v. Settlement Funding” (Eastern District of Pennsylvania, finding no likelihood of confusion). From the post:
“. . . this case stands for two clear legal propositions:
* if keyword-triggered ad copy doesn’t display the plaintiff’s trademarks, plaintiff loses
* if search results don’t display the plaintiff’s trademarks even though the trademarks were included in the keyword metatags, plaintiff loses”
Audi AG v. D’Amato dba Quattro Enthusiasts (05-2359) (6th Cir Nov 27, 2006) (AUDISPORT.COM infringes and dilutes AUDI).
From Lovells September 2006 newsletter: “Germany: Trademarks As Meta Tags” (discussion of German Supreme Court decision re whetherunauthorized use of a trademark as a meta tag constitutes infringement in Germany (yes)).
I apologize for not reporting on this case earlier.
Defendants were a not for profit organization (“NFP”) helping restaurant workers, and a restaurant owned by a workers’ cooperative, in which the NFP had a 40% interest. The NFP protested Plaintiff’s policies relating to its workers. The NFP created a hand-out that reproduced the Plaintiff’s logo on the cover (the hand-out was folded). When opened, the text of the hand-out contained information about the organization’s criticism of Plaintiff (the brochure identifies the NFP as the source and promoted the NFP’s primary mission of helping restaurant workers – and makes no mention of the co-op restaurant).
A reproduction of the leaflet is here.
The hand-out was distributed near Plaintiff’s establishment. Defendant acknowledged that the appearance was intended to induce passers-by to accept the leaflet and read it.
Plaintiff sued on trademark infringement and dilution. The Court denied the motion for preliminary injunction because plaintiff was unable to show irreparable harm; however the Court found that the plaintiff WAS likely to prevail on infringement, having shown a likelihood of confusion, basing its decision that defendant’s use of the tradeamark initially confused passers-by and diverted them to use defendant’s services, namely educating them in its viewpoint.
Prof. Goldman, in discussing this case, refers to it as a travesty and one of the five all time worst initial interest confusion cases of all time (I will be emailing him to obtain the complete list).
Read the case.
SMJ Group. et. al. v. 417 Lafayette Restaurant LLP, 06 CIV 1774 (SDNY July 6, 2006).
Barrett, ‘Internet Trademark Suits and the Demise of ‘Trademark Use,‘ 39 U.C. Davis L. Rev. 371 (2006). Abstract:
“The Internet has provided countless new ways for ingenious businesses and individuals to refer to a plaintiff’s mark in a manner that impacts the plaintiff’s business. These new methods may not directly associate the mark with goods or services that the defendant is offering for sale and may be completely hidden from consumers’ view. In evaluating the numerous trademark infringement and dilution suits that these unauthorized references have generated, courts have often failed to focus on the appropriate role of the “trademark use” requirement, which has traditionally limited the scope of the trademark infringement (and more recently, trademark dilution) cause of action. Some courts appear to have completely ignored the trademark use limitation, while others have acknowledged the limitation but construed it in a manner that undercuts or distorts it. This has given rise to a number of splits in the Circuit Courts of Appeals. This Article undertakes to bring some focus and coherence to the trademark use issue in the Internet context. It provides an in-depth examination of the history and purpose of the limitation and proposes a modern, general definition of “trademark use” in light of that history and purpose. It then demonstrates how this definition should apply in several important contexts on the Internet.”
HT Prof Goldman, who provides other links to law review articles on the same topic.
Technology & Marketing Law Blog: Metatags as Per Se Trademark Infringement.
Tdata Inc. v. Aircraft Technical Publishers, 2006 WL 181991 (S.D. Ohio Jan. 23, 2006).