This is Microsoft’s brief for summary judgement in its TTAB opposition to Apple’s application for the mark APP STORE.

The brief alleges that Steve Jobs used the term ‘app store’ to refer to competitors. I can picture the Apple in-house trademark lawyer going into his office the next day: “Great keynote speech yesterday, Mr. Jobs.  One small quibble . . . ”

Coverage here.

Brief Microsoft Generic App Store

Railroad modelers strive for historical accuracy. However they will vary a model from an existing building in two respects. The modeler will practice ‘selective compression‘, which involves removing details in order to fit the smaller scale, while retaining the look of the original. Second, they may vary the appearance of ‘trim’: color and design of, for example, window frames, awnings, etc.

Plaintiff sues competitor/defendant for copyright infringement in three models. Defendant’s model has 20 or so similarities with plaintiff and 20 or so differences (however the decision doesn’t provide great guidance on how significant these differences or similarities are). Defendant alleges that plaintiff’s works were based on public domain building (and didn’t disclose as such on its copyright registration application).

Defendant’s summary judgment is denied. Decision discusses (1) what constitutes fraud on the Copyright Office; and (2) what should test of similarity be for ‘thin’ copyright. Defendant’s proffered ‘super-substantial similarity’ is rejected in favor of normal test merely applied to fewer elements.

43(b)log presents a comprehensive discussion of the issues here.

Decision Osment Models v Mikes

Former son-in-law of owner of JOE’S PIZZA OF BLEECKER STREET uses JOE’S PIZZA and JOE’S PIZZA OF BLEECKER STREET. He also allegedly refers to the original JOE’S in his advertising. He is enjoined from making such references but not enjoined from using the ‘generic’ name JOE’S PIZZA.

Decision Joes Pizza

Northern District Cal. enjoins Second Life from removing Plaintiff’s virtual horses on Second Life, subject of DMCA takedown notice sent by defendant (who alleges that plaintiff infringed its virtual bunnies software).

Hardly any 17 USC 512(f) actions in a decade, then two in two months.  512(f) is the notional safeguard against DMCA abuse.

Prof Goldman discusses fact that Second Life, not a party to the suit, is enjoined, not defendant.  I think he’s right, all other things being equal, that a company like Second Life would not want to be told that it can’t remove something from its service. 

Decision TRO Re DMCA Second Life

I posted about the Racebrook auction of ‘retired trademarks’ previously.  The auction has now taken place and the NY Times reports on the auction winners.  SHEARSON went for $45,000, MEISTER BRAU went for $32,500, VICTROLA was a steal at $1000.  The gross total of winning bids was $132,000, for about two dozen of the 170 or so names offerred.

The residual value (and true owner) of ‘retired’ brands is the usual point of interest for such a story, however this caught my eye:

Mr. Reich does not own the names that were auctioned. Rather, he filed trademark applications for them with the federal Patent and Trademark Office on what is known as an intent-to-use basis — that is, declaring an intention to use the trademarks to sell goods and services in interstate commerce. The auction was selling his rights in those applications.

“You’re paying for a license for an interim period till the trademark issues” from the trademark office, said Gabe Fried, founding principal at Streambank in Needham, Mass., which handled the sale of intellectual property for brands like Circuit City, Duck Head apparel and KB Toys.

Ok, bear in mind that I have no background information as to the brands in questions or the relationship between the seller and auction winners.  This is all speculation, unfettered by facts.

Section 10 of the Lanham Act, states that an applicant may not assign a ‘pre-use’ Intent to Use application (in other words, the applications that Racebrook or its agents own):

“Except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.”

To give a non-controversial (hypothetical)  example of what’s allowed: the Times reports today that Fortune Brands may sell the JIM BEAM business.  I assume that Fortune Brands may have pre-use ITU applications on record in its pipeline.  The company that buys that business could lawfully have assigned to it those pending ITUs because its buying the underlying JIM BEAM business.

To give an example of what’s prohibited: somebody thinks up names all day, files trademark applications, and auctions them off.  Congress specifically prohibited this when requiring a ‘bona fide intent to use.’ (rueful aside: the domain name market seems to be exactly what Congress didn’t want to exist for trademarks).

Mr Fried, in the article, refers to an ‘interim license.’  This suggests to me that the ITU applicant will likely retain ownership of the application, have the ‘purchaser’  begin use, then satisfy the user requirement with the licensee’s use.

This portion alone is not unusual.  A movie company, for example, wishes to license a mark, say HARRY POTTER, in businesses in which it has never done business and will never do business in, let’s say vitamins or shampoo.  It is uncontroversial that it had a bona fide intent to use (through licensees, possibly unknown to it on the day it files), and can satisfy its trademark registration user requirements with the use of its licensees.  Assuming quality control by the trademark owner, so far, so good.

The twist here is that there is (probably) an agreement to assign the registration to the auction winner at a later date.

The most respected commentator in trademark law, Prof. McCarthy, has stated in the abstract that such an agreement to assign in the future doesn’t violate the letter of Section 10, simply because the  assignment only takes place once the prohibition no longer applies.  (McCarthy, Section 18:13, page 18-31, 2010 ed.)
Prof. McCarthy also states that such an agreement doesn’t violate the spirit of the law.  I’m not sure he envisioned, however, a situation where an entity in no particular business, filed a portfolio of applications in disparate fields, and promotes the ‘sale’ of a ‘trademark’ through auction.

Auctions of ITU application would be, I think prohibited by trademark law but there may be (untested) loopholes.

There is a pending bill entitled the Combating Online Infringement and Counterfeits Act, known as COICA (not to be confused with Cloaca, which is the sex organ of the platypus).  The bill would allow the Attorney General to bring an in rem action against any domain name found ‘dedicated to infringing activities.’

I was struck by COICA as a case study of the IP war of rhetoric.  Pro-IP forces lauded the bill as a necessary tool against, for example, counterfeit drugs and airplace parts.  Anti-IP forces (or more accurately, Anti-Pro-IP forces) immediately framed the bill as a censorship bill. See Patry for more on this.

Then, Senator Wyden of Oregon indicated that he was dead-set against the bill, which appeared to have killed COICA, at least during this session of Congress, and I stopped paying attention.

However, this week brought news reports that DoJ has indeed seized 82 domain names, many apparently located outside the US.  A list of the seized names include BURBERRYOUTLET-US.COM, LOUISVUITONOUTLETSTORES4U.COM, DVDORDERONLINE.COM and TORRENT-FINDER.COM.

I wondered why was there a fuss over COICA, when DoJ believes it can perform such in rem seizures already.  Prof. Post, blogging at Volokh, wondered that as well, and discusses the seizures and the constitutionality thereof.

Google is involved in a lawsuit, now on appeal, with Rosetta Stone about sale of keywords that reflects trademarks.  Paul Levy, of the Public Citizen, reviewed Rosetta Stone’s brief and was concerned by the redactions (his concerns discussed here).  He succeeded in making public an unredacted copy of the brief available.  The unredacted brief, with formerly redacted portions circled, is here.

Among the redactions: Rosetta alleges that Google conducted internal studies that showed high (as in 94% in some cases) levels of consumer confusion resulting from use of a trademark anywhere in the text of an ad.