Pattishall IP Blog

January 7, 2016

New Year’s Resolution — Review and Update Website Privacy Policy and Terms of Use

Filed under: Internet, Privacy — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:05 am

Jason Koransky F HRby Jason Koransky, Associate

With the changing of the calendar to 2016, now is a good time to look over your company’s often-neglected website privacy policy and terms of use. Here are 10 areas to focus on in reviewing and updating these important areas of your website.

  1. Disclosure of personal information to third parties. Under California law, California residents can request information about how your company or its subsidiaries provide personally identifiable information (“PII”) to third parties for these third parties’ marketing purposes. Your company’s website should include a notice to California residents that provides them a means to request this information. Further, on January 1, 2016, the Delaware Online Privacy and Protection Act went into effect. One of the provisions in this new law requires a website’s privacy policy to disclose the categories of third parties with which a website operator shares PII about the Delaware-resident users of a website. Accordingly, if your company’s website has any users in Delaware, your company must provide this information in its privacy policy.
  2. Disclose categories of PII collected. To comply with state laws such as those in California and Delaware, as well as to be proactive in communicating privacy issues with visitors to your company’s website, your website privacy policy should disclose all categories of PII that you collect from its users.
  3. Cookies? You should audit the use of cookies on your website, and make sure that your privacy policy properly discloses use of cookies. In addition, you should confirm that the opt-out procedures for cookies are up-to-date and functional.
  4. Limit content geared toward children. The federal Children’s Online Privacy Protection Act generally limits the collection of PII from children under 13. The new Delaware privacy law goes a step further. It prohibits the use, disclosure, or compiling of PII of a child under 18 years old if PII will be used in the marketing or advertising of 17 specific categories of goods and services, such as tobacco, tattoos, tanning facilities, or pornography. If your company’s website is not targeted toward children under 18, the website’s terms of use should expressly state this, and ask anyone under 18 not disclose PII.
  5. Tell users how to access PII. If your company’s website collects PII, the privacy policy should disclose how a user may access, review, and request changes to this PII.
  6. Use easy-to-read, straightforward language. With data security and privacy issues increasingly in the news and of concern to consumers, your website should be proactive in communicating its privacy policy. Making the policy user-friendly is a great place to start. Rather than being in hard-to-decipher legalese, the privacy policy and terms of use should use straightforward language that does not require a lawyer to understand.
  7. Make conspicuous links to the privacy policy and terms of use. The new Delaware privacy law requires that the link to your website privacy policy must be clear and conspicuous.
  8. Remove references to the E.U.–U.S. Safe Harbor Framework. In October 2015, the European Court of Justice declared that the Safe Harbor provision that allowed for the transfer of consumers’ personal information from the E.U. to the U.S. was invalid. Your website’s privacy policy, however, may still have references to this framework, such as stating your company’s compliance with it. Even though a new agreement may be negotiated, with the framework invalidated, references to it should be removed.
  9. Is your DMCA agent contact information correct? If your company’s website qualifies as an Internet Service Provider under the DMCA, it needs to have contact information for the DMCA agent to whom someone would submit a copyright infringement claim notification. You should confirm that this information is accurate.
  10. Are all e-mail, telephone numbers, and mailing addresses correct? Finally, your privacy policy and terms of use should provide website users a way to communicate with you about issues that may exist, either via e-mail, phone, or mail. Confirm that contact information is accurate, that your company actually monitors the e-mail addresses set forth on the site, and responds to inquiries that users may communicate to you.

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Jason Koransky is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues. Jason’s practice focuses on trademark, trade dress, copyright, data security and privacy, and false advertising litigation domestic and international trademark prosecution and counseling, and privacy issues. He is co-author of the book Band Law for Bands, published by the Chicago-based Lawyers for the Creative Arts.

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July 7, 2015 Sued for Bait and Switch

Filed under: Internet, Litigation, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:52 pm

baa_hiresBy: Brett A. August

In an important case for all companies whose products are sold on, the Ninth Circuit Court of Appeals overturned a district ruling yesterday that Amazon could not be sued for trademark infringement when it presented the goods of one watch maker in response to a search for another brand of watches.  In Multi Time Machine Inc. v. Inc., Case No. 13-55575, the Ninth Circuit (in a 2-1 decision) ruled that Amazon’s practices could confuse consumers into believing the watches displayed in the search results are put out by a company related to the manufacturer of the searched-for watches.

This is an important result for all vendors of branded goods who believe they are losing business to competitors due to Amazon’s failure to tell users of its website that the goods for which the customer is searching are not available on The court noted that Amazon’s competitors – such as and –  inform customers when the goods in their search terms are not sold on those websites.

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Brett August is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals. The firm advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Brett’s practice focuses on domestic and international trademark, copyright, unfair competition, and Internet counseling and litigation.

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October 2, 2014

Not Quite “Happy Together” – Recording Industry Scores Significant Victory in First Major Pre-1972 Sound Recordings Performance Rights Decision

Filed under: Copyright, Internet, Litigation — Tags: , , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:40 am

by Jason Koransky, Associate

When Sirius XM broadcasts “Happy Together,” “It Ain’t Me Babe,” and other hit recordings from The Turtles through its satellite and Internet radio services, it infringes the copyrights to these recordings, according to a court in the Central District of California.

In an order issued September 22, 2014, in Flo & Eddie Inc. v. Sirius XM Inc., 2:13-cv-05693 (C.D. California: Public performances of pre-1972 sound recordings protected by California copyright law)[1], the record industry scored a significant victory in the first major court ruling on the issue of state copyright protection for public performances of pre-1972 sound recordings. The court granted Flo & Eddie summary judgment on its claim that Sirius’ unlicensed public performances of its sound recordings violated California Civil Code § 980(a)(2), the section in California’s copyright statute that applies to pre-1972 sound recordings. Flo & Eddie is the corporation owned and operated by Howard Kaylan and Mark Volman, founding members and the lead singer and guitarist, respectively, of the 1960s pop group The Turtles. Because the case involves only California state law, however, the court’s ruling is limited in scope to public performances of these recordings in the state of California.

This case is one of a series of lawsuits that seek royalties for public performances by new media music services such as Sirius XM and Pandora of sound recordings created before February 15, 1972, based on the argument that state law protects these recordings from such unlicensed uses. While music compositions have long enjoyed copyright protection under U.S. copyright law, only in 1972 did Congress extend copyright protection to sound recordings. Individual states, however, had enacted their own copyright statutes, which co-existed with the federal Copyright Act until the enactment of the 1976 Copyright Revision Act, which preempted these state laws. The 1976 federal law, however, expressly carved out a preemption exemption to sound recordings created before February 15, 1972. See 17 U.S.C. § 301(c) (“With respect to sound recordings fixed before February 15, 1972, any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this title until February 15, 2067.”)

In 1995, Congress expanded the rights attached to a sound recording when it passed the Digital Performance Right in Sound Recordings Act, which added digital audio transmissions of sound recordings to the exclusive bundle of rights a copyright grants. See 17 U.S.C. § 106(6). SoundExchange has emerged as the performance rights organization that collects the compulsory license fees that non-interactive digital music services—including Sirius XM—pay to perform these recordings.

But Sirius did not pay, and SoundExchange did not attempt to collect, royalties for pre-1972 recordings, as these do not have federal copyright protection. The digital public performance rights that owners of these sound recordings possess have existed in a sort of legal limbo based on the interpretations of state copyright statutes. Flo & Eddie owns the rights to The Turtles’ recordings, and tested these legal waters by suing Sirius for violating California copyright law—and bringing claims for unfair competition, conversion, and misappropriation—for broadcasting its sound recordings.

The case boiled down to statutory construction. The applicable statute, California Civil Code § 980(a)(2), reads (with emphasis added):

The author of an original work of authorship consisting of a sound recording initially fixed prior to February 15, 1972, has an exclusive ownership therein until February 15, 2047, as against all persons except one who independently makes or duplicates another sound recording that does not directly or indirectly recapture the actual sounds fixed in such prior recording, but consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate the sounds contained in the prior sound recording.

Flo & Eddie argued that “exclusive ownership” of sound recordings encompasses the right to control public performances of these recordings. Sirius argued that because the statute did not expressly specify the public performance right, it was not included in the “exclusive ownership” of a recording. Based on the plain language of the statute, its legislative history, and two court decisions which implied that the California statute granted the owner of a sound recording the exclusive right to control public performances of its recordings, the court agreed with Flo & Eddie’s interpretation. As such, because no dispute existed that Sirius had broadcast The Turtles’ recordings without a license, the court granted Flo & Eddie’s summary judgment motion that these public performances infringed their sound recording copyrights. The court also granted Flo & Eddie summary judgment on its unfair competition, conversion, and misappropriation claims.

This case has the potential to create significant revenue streams for major record labels and other owners of pre-1972 sound recordings. Conversely, it presents new licensing and business challenges to Internet, satellite, and other new media non-interactive music service providers. Of course, a treasure trove of artistically and commercially successful music was recorded before 1972—think Elvis, The Beatles, Jimi Hendrix, Miles Davis, Duke Ellington … the list could go on and on. A huge void would exist if Sirius simply stopped broadcasting these recordings. As such, the full implications of the decision in the Flo & Eddie case may take years to emerge, especially considering that the decision applies only in California. For example, a court interpreting another state’s law could issue an opposite decision. But in practicality, Sirius could most likely not block its broadcasts from California. So if this decision is affirmed on appeal, new licensing requirements will likely emerge for digital public performances of pre-1972 sound recordings.

*     *     *

Jason Koransky is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues. Jason’s practice focuses on trademark, trade dress, copyright and false advertising litigation, as well as domestic and international trademark prosecution and counseling. He is co-author of the book Band Law for Bands, published by the Chicago-based Lawyers for the Creative Arts.



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June 26, 2014

Aereo’s Internet-Based Television Streaming Services May Be Wizardry, But the Supreme Court is in No Mood for Magic

Filed under: Copyright, Internet, Litigation — Tags: , , , , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:17 pm

Ekhoff_Jessica_2 F LRby Jessica Ekhoff, Associate

Describing its Internet-based television streaming services, tech start-up Aereo proclaims, “It’s not magic. It’s wizardry.”[1] In yesterday’s 6-3 decision the Supreme Court disagreed, or at the very least, adopted a staunchly anti-wizardry stance.[2]

Justice Breyer, writing for the majority in American Broadcasting Cos. v. Aereo, Inc., characterized the issue before the Court as whether “Aereo, Inc., infringes this exclusive right [of public performance under §106(4) of the Copyright Act] by selling its subscribers a technologically complex service that allows them to watch television programs over the Internet at about the same time as the programs are broadcast over air.”[3] Despite Aereo’s self-description as a mere equipment supplier doing no “performing” of its own, the Court held in the affirmative.

The Court analyzed the issue in two parts: whether Aereo “performed” under the Copyright Act, and if so, whether the performance was “public.”

In concluding that Aereo did, in fact, perform under the Copyright Act, the majority of the Court turned to the 1976 amendments to the Act, which were adopted, in large part, to bring community antenna television, or CATV—the precursor to cable television—within the scope of the Act. CATV functioned by placing antennas on hills above cities, then using coaxial cables to carry the television signals received by the antennas into subscribers’ homes. CATV did not select which programs to carry, but rather served as a conduit for the transmission and amplification of television signals. Before the 1976 amendments, Supreme Court precedent considered CATV to be a passive equipment supplier that did not “perform” under the Act.[4] After the amendments, to “perform” an audiovisual work such as a television program meant “to show its images in any sequence or to make the sounds accompanying it audible.”[5] CATV thus “performed” the shows it transmitted because it both showed the television programs’ images to its subscribers, and made the accompanying sounds audible. Over a strong dissent authored by Justice Scalia[6], the majority found that, because its services were so similar to those once offered by CATV, Aereo also “performed” under the post-1976 definition of the term.[7]

Having determined that Aereo’s services constitute a performance under the Copyright Act, the Court next turned to the issue of whether those performances are public. Aereo argued its services do not constitute public performance because whenever a subscriber selects a program to watch, Aereo places a unique copy of the show in that subscriber’s folder on Aereo’s hard drive, which no one other than that subscriber can view. If another subscriber wants to watch the same show, she will receive her own copy of the program in her own folder from Aereo. The Court dismissed this argument, finding the “technological difference” inconsequential in light of Congress’s clear intent to bring anything analogous to CATV within the scope of the Copyright Act’s requirements. Under the post-1976 Act, an entity performs a copyrighted work publicly any time it “transmits” a performance. A performance is “transmitted” when it is communicated by any device or process beyond the place from which it is sent, whether the recipients receive the transmission at the same time and place, or at different times and places.[8] Aereo therefore publicly performs a copyrighted television program each time its system sends a copy of that program to a subscriber’s personal Aereo folder.

The majority characterized its holding as a “limited” one, and was careful to emphasize that its decision does not apply to other new technologies, such as cloud-based storage and remote storage DVRs. But with a slew of amici curiae predicting the decision could have a catastrophic impact on the tech industry, there are surely some who will take no comfort from the Court’s assurances. Aereo, unfortunately, may not have a spell to resurrect itself.

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Jessica Ekhoff is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues. Jessica’s practice focuses on trademark, trade dress, copyright and false advertising litigation, as well as film clearance, media and entertainment, and brand management.



[3] American Broadcasting Cos. v. Aereo, Inc., No. 13-461, slip op. at 1, 573 U.S. __ (2014).

[4] Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968); Teleprompter Corp. v. Columbia Broadcasting System, Inc., 415 U.S. 394 (1974).

[5] 17 U.S.C. § 101.

[6] Justice Scalia argues that Aereo does not “perform” because it is the subscriber, rather than Aereo, who selects the program she wishes to watch, which in turn activates the individual antennae Aereo has assigned to her for the purpose of viewing that program. This means it is the subscriber who is doing the performing, since she is the one rousing Aereo’s antennae from dormancy and calling up a specific program to watch. Justice Scalia went on to note that although he disagrees with the majority’s interpretation of “perform,” he agrees that Aereo’s activities ought not to be allowed, either because Aereo is secondarily liable for its subscribers’ infringement of the Networks’ performance rights, or because it is directly liable for violating the Networks’ reproduction rights. If future courts fail to find Aereo liable under either of those theories, Justice Scalia advocates relying on Congress to close the loophole. Slip Op. at 12.

[7] Slip Op. at 8.

[8] 17 U.S.C. § 101.

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November 27, 2012

When it Comes to Parody Twitter Accounts, Laughing Them Off May Be Your Best Move

Filed under: Internet, Social Media, Trademark (General) — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:39 pm

by Andrew R. W. Hughes

The @NYTOnIt Twitter feed managed to draw more than 20,000 followers and accolades from Time magazine with its wry send-ups of New York Times trend pieces.  Whenever the New York Times published a story that Benjamin Kabak found obvious, pompous, or otherwise groan-inducing, he took to his @NYTOnIt Twitter handle to mock the venerable publication.  When the New York Times ran a piece on teenagers’ bedrooms being messy, @NYTOnIt was there with, “GUYS, teenagers have messy bedrooms, and The Times is ON IT.”  An article about seniors and the Internet drew, “GUYS, some old people aren’t too up on the Internet, and The Times is ON IT.”

While many people found the account hilarious, the New York Times did not.  This week, the paper complained to Twitter, which suspended the account.[1]  The basis of the complaint was apparently not the content, but Kabak’s use of a modified version of the Times’ “T” logo as the handle’s avatar:

As the paper’s spokeswoman Eileen Murphy explained, “We’re not seeking to disable the account however it is important to The Times that our [trademark] is protected and that it is clear to all users of Twitter that parody accounts or other unofficial Times accounts are not affiliated nor endorsed by The Times.”[2]

Kabak claimed that his use of the modified Times logo was fair use.  Bolstering his claim was the fact that the description of the account explicitly stated that it was “a parody account clearly not associated with any newspaper.”[3]  Nonetheless, in accordance with its rules regarding trademark protection, Twitter initially suspended the account, before restoring it without the potentially infringing logo. (more…)

October 1, 2012

ICANN Seeks Comments On The Procedures To Be Used by the Trademark Clearinghouse In Connection With The Implementation of New gTLDs

Filed under: International, Internet — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:31 pm

by Phillip Barengolts, Partner

On September 24, 2012, ICANN requested comments on two important procedures in the implementation of the Trademark Clearinghouse[1] – proof of trademark use and determination of a match.  The Trademark Clearinghouse will serve as a repository used by trademark owners to protect against the use of their marks for domain names in any of the new gTLDs during the sunrise period of a new gTLD and for trademark claims generally.[2]  See prior coverage here:  The deadline to submit comments is November 7, 2012.

The specific procedures for which ICANN seeks comment now are: 1) the procedures that the Trademark Clearinghouse will use to verify that a claimed trademark is in use; and 2) the process by which the Trademark Clearinghouse will determine a match between a trademark recorded with the Trademark Clearinghouse and an applied-for domain name.  Highlights of these memoranda are below.

Proof of Use

ICANN has decided that only marks that are in use will be provided protection through the Trademark Clearinghouse during the sunrise period of a new gTLD.[3]  Most jurisdictions throughout the world do not require proof of use to obtain a trademark registration, but the U.S. does have such a requirement (with notable exceptions for foreign trademark registration holders).

To prove use, a trademark owner must submit a signed declaration of use and a single sample of current use.  The specific proposed declaration is below:

The [Trademark Holder/Licensee/Agent] hereby certifies that the information submitted to the Clearinghouse, is, to the best of [Trademark Holder/Licensee/Agent’s] knowledge complete and accurate, that the trademarks set forth in this submission are currently in use in the manner set forth in the accompanying specimen, in connection with the class of goods or services specified when this submission was made to the Trademark Clearinghouse; that this information is not being presented for any improper purpose; and that if, at any time, the information contained in this submission is no longer accurate, the [Trademark Holder/Licensee/Agent] will notify the Clearinghouse within a reasonable time of that information which is no longer accurate, and to the extent necessary, provide that additional information necessary for the submission to be accurate. Furthermore, if any Clearinghouse-verified mark subsequently becomes abandoned by the holder, the holder will notify the Clearinghouse within a reasonable time that the mark has been abandoned.

The sample of use must be “an item that evidences an effort on behalf of the trademark holder to communicate to a consumer so that the consumer can distinguish the products or services of one from those of another.”  Examples include:

  • Labels, tags, or containers from a product; and
  • Advertising and marketing materials (including brochures, pamphlets, catalogues, product manuals, displays or signage, press releases, screen shots, or social media marketing materials). (more…)

August 8, 2012

What Do Kim Kardashian And Your Random Facebook Friend Have in Common? A Right of Publicity That May Be Worth Money

Filed under: Internet, Litigation, Right of Publicity, Social Media — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:44 pm

By Meg C. Lenahan, Summer Associate

Use Facebook? If so, did you know that your right of publicity has been at the center of litigation for over a year?

In March 2011, a class action suit, Fraley v. Facebook, Inc., was filed on behalf of users featured in Facebook’s Sponsored Stories.[1] Sponsored Stories create customized paid advertisements, starring Facebook’s own users based their activity on the site. For example, if your friend Bucky “likes” Rosetta Stone, you might see his profile picture underneath the Rosetta Stone logo on the right side of the page—the portion of the site where advertisements appear.  See below.[2]

Mark Zuckerberg, Facebook founder and CEO, described the feature—which originally gave users a choice to opt out (rather than opt in)—as a “trusted referral” and “the Holy Grail of advertising.”[3] In their complaint, the named plaintiffs in Fraley instead described it as a violation of their publicity rights.[4]

Governed by state law, the right of publicity is an intellectual property right that protects against the unauthorized use of an individual’s identity for commercial purposes and grants that individual the exclusive right to control and profit from commercial use of his or her identity.[5] This means, for example, that Olympic gold medalist Ryan Lochte has the exclusive right to control and profit from any sales of custom-made American flag grills[6] using his image or that Kim Kardashian has the exclusive right to control and profit from use of her name to sell perfume. Even your friend Bucky would have an exclusive right to control and profit from use of his identity in connection with Rosetta Stone advertisements. That is, of course, unless Bucky licensed or transferred his right of publicity to someone else—someone like Facebook. (more…)

April 11, 2012

Fourth Circuit Reverses Grant Of Summary Judgment In Rosetta Stone v. Google: Google’s AdWords Program To Be Put On Trial

Filed under: Internet, Litigation, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 6:07 pm

by Uli Widmaier, Trademark Attorney

I.   Summary

Rosetta Stone, a leading language-learning software producer, sued Google for trademark infringement and dilution based on Google’s sale of Rosetta Stone’s marks as keywords.  In 2010, the District Court for the Eastern District of Virginia entered summary judgment against Rosetta Stone’s trademark claims (direct, contributory, and vicarious trademark infringement; dilution), and dismissed Rosetta Stone’s unjust enrichment claim.  See Rosetta Stone Ltd. v. Google, Inc., 730 F. Supp. 2d 531 and 732 F. Supp. 2d 628 (E.D. Va. 2010).

Rosetta Stone appealed.  On April 9, 2012, the Fourth Circuit issued its long-awaited decision.  See Rosetta Stone Ltd. v. Google, Inc., — F.3d –, No. 10-2007, 2012 WL 1155143 (4th Cir. April 9, 2012).  The Court reversed the district court’s summary judgment rulings in Google’s favor on Rosetta Stone’s three most important claims – for direct infringement, contributory infringement, and dilution.  The decision is notable for the Court’s frank criticism directed at the district court’s orders, finding substantial flaws in the district court’s analysis of both the factual record and the applicable legal doctrine.  The Fourth Circuit’s analysis contains a number of important assessments of actual confusion evidence, a defendant’s level of knowledge necessary to prove contributory infringement, the possibility of a plaintiff’s proving dilution when recognition of the plaintiff’s mark actually increased during the relevant time period, and several other matters. In light of these determinations, the Fourth Circuit’s affirmance of summary judgment on Rosetta Stone’s claims for vicarious infringement and dismissal of Rosetta Stone’s unjust enrichment claim provides scant comfort for Google.

The Fourth Circuit’s decision may well influence the approach to keyword advertising cases under U.S. trademark law.  With this decision, the law would seem to have become more favorable to trademark owners whose marks are being sold and used as keywords.  Search engines may reconsider some of their keyword advertising practices.  Parties who use others’ trademarks as keywords for their own sponsored links may wish to assess whether any of their practices may be affected by the Fourth Circuit’s analysis.  This is particularly true for situations in which the trademarks used as keywords also appear in the text of a sponsored link.  In the meantime (and barring a settlement), the fate of Google’s current keyword advertising model stands to be determined by a jury.

II.   A Circuit Split in the Making?

The Fourth Circuit’s evaluation of the evidence of actual and likely consumer confusion stands in contrast to two recent decisions from the Ninth Circuit, Toyota Motor Sales, USA, Inc., v. Tabari, 610 F.3d. 1171 (9th Cir. 2010) and Network Automation, Inc., v. Advanced System Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011). The Ninth Circuit premised these decisions on its finding that consumers have become sophisticated in exploring search engine results, including sponsored links.  According to the Ninth Circuit, consumers understand what sponsored links are, recognize them by their labels and graphic set-offs on search results pages, and are “ready to hit the back button whenever they’re not satisfied with a site’s contents.”  Tabari, 610 F.3d at 1179; see also Network Automation, 638 F.3d at 1152.  Moreover, “consumers don’t form any firm expectations about the sponsorship of a website until they’ve seen the landing page – if then.  This is sensible agnosticism, not consumer confusion.”  Tabari, 610 F.3d at 1179.

Contrast this with the Fourth Circuit’s observation in Rosetta Stone that “even well-educated, seasoned Internet consumers are confused by the nature of Google’s sponsored links and are sometimes even unaware that sponsored links are, in actuality, advertisements.  At the summary judgment stage, we cannot say on this record that the consumer sophistication factor favors Google as a matter of law.”  In fact, the Court noted, such uncertainty constitutes “quintessential actual confusion evidence.”  Rosetta Stone at *10.

“Sensible agnosticism” versus “quintessential actual confusion evidence” – these are rather different, and potentially outcome-determinative, evaluations of rather similar states of mind.  It remains to be seen how these two different approaches will play out in the evolution of trademark law as it relates to keywords and sponsored links. (more…)

November 8, 2011

Trademark Protection in ICANN’s New Generic Top-Level Domain (“gTLD”) Space Will Require Diligence by Trademark Owners

Filed under: Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:21 pm

Categories: Internet
Tags: ICANN, Internet, Phillip Barengolts, David Beeman

By Phillip Barengolts and David Beeman, Trademark Attorneys[1]

ICANN is launching its new top-level domain (“TLD”) program this winter.  It will begin to accept applications from potential registries on January 12, 2012.  The new TLD program will allow qualified applicants – those able to pay $185,000 (not including infrastructure and other investments to actually run a registry)[2] and meet technical requirements – to establish top-level domain names under any letter and number combination.[3]  While it remains to be seen how many <.company> TLDs will appear given the cost, trademark owners potentially will now face a myriad examples of <infringing_domain_name.whatever> and even some examples of <whatever.infringing_TLD>.  Acknowledging this problem, ICANN announced mechanisms that trademark owners will be able to use to  protect their trademark rights in these new TLDs.  The mechanisms have not been finalized as of this writing, but this post provides a summary of these mechanisms as currently contemplated by ICANN, including a procedure for objecting to the proposed TLDs and protecting owners’ rights in second-level domain names.

Procedure for Objecting to Proposed Top-Level Domain Names

Trademark owners, and others, will be able to object to new TLD applications after ICANN publishes them for public review shortly after the application period closes on April 12, 2012.  ICANN will not be responsible for reviewing the TLD applications for objectionable letter and number combinations.

Four types of objections to new TLDs will be permitted:[4]  1) “existing legal rights,” e.g., ownership of a registered or unregistered trademark; 2)  string confusion (i.e., confusion between two applied-for TLDs); 3) limited public interest objection; and 4) community objection.  We are only discussing the existing legal rights objection.  For information on the other types of objections, see ICANN’s Guidebook.

An existing legal rights objection will have to be filed with the Arbitration and Mediation Center of the World Intellectual Property Organization (“WIPO”).  The rules for this type of objection recently approved by ICANN are available at[5]  The filing fee for a single objection to a single TLD application will be $2,000, and the additional fee for having one panelist hear the objection is $8,000.  For a panel of three, the filing fee will be $3,000, and the panel fee will be $20,000. (more…)

October 26, 2011

Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names – Deadline for Sunrise Period for Blocking Registrations is October 28, 2011

Filed under: Internet, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:56 am

Categories: Trademark (General), Internet
Tags: Domain Names, Internet, ICANN, Belinda J. Scrimenti, Jasmine R. Davis

By Belinda J. Scrimenti and Jasmine Davis, Trademark Attorneys

[***Update – . XXX Domain Registry Has Received Over 42,000 Registrations – Deadline
for Sunrise Period for Blocking Registrations is October 28, 2011

ICM Registry, the registry handling .XXX top-level domain (“TLD”) registrations reported this week that it has received over 42,000 applications for .XXX domain names since the September 7, 2011 launch of the Sunrise Period “with thousands more pouring in each day.”  “We are very pleased, but not surprised, by this overwhelming response to the availability of .XXX domains,” said Stuart Lawley, CEO of ICM Registry.  The .XXX domain is intended solely for use by the “adult entertainment” industry.

ICM reported that the number of applications already received is over five times what ICM had anticipated.  ICM also reported that the applications have been “well balanced” between brand owners inside the adult industry and those non-adult brands that want to protect their trademarks.

Trademark owners outside the adult entertainment industry with registered trademarks have only until October 28, 2011 to take advantage of the sunrise period to file for a blocking registration that will prevent use of their trademarks in connection with pornographic uses.  If a trademark owner does not have a registered mark, or misses the deadline, it must wait until December 6, 2011 to file registrations to block others from using their marks in the .XXX domain.  See our August 18, 2011 blog post, below for details on the process.***] (more…)

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