Pattishall IP Blog

January 5, 2012

Using An Employee’s Personal Social Media Accounts Without Her Authorization To Market Employer May Create Liability Under Trademark And Electronic Privacy Laws

Filed under: Advertising, Litigation, Right of Publicity, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:55 am

by Phillip Barengolts, Trademark Attorney

We’ve all been taught that our work e-mail and social media accounts are owned by our employers, so watch what you say and realize that you have no expectation of privacy in those accounts.  But what happens when an employee uses a personal account to promote her employer?  According to one court, the employer’s use of these accounts without the employee’s authorization can lead to liability under the Lanham Act and the Stored Communications Act. Maremont v. Susan Fredman Design Group, Ltd., Case No. 10 C 7811 (N.D. Ill. Dec. 7, 2011).[1]

The plaintiff, Jill Maremont, was the Director of Marketing, Public Relations, and E-commerce for the defendant Susan Fredman Design Group, Ltd. (SFDG), a prominent interior design firm based in Chicago.  As part of a social media marketing campaign for SFDG, Maremont created a blog on SFDG’s website.  She also promoted SFDG through her personal Twitter and Facebook accounts., including by linking to the SFDG website and blog.  She entered and stored all account access information, including passwords for her personal Twitter and Facebook accounts, on the SFDG server.  She never gave authority to anyone to access her personal Twitter and Facebook accounts. Maremont’s compensation was, in part, based on the overall sales of SFDG, so she had every incentive to promote SFDG.

After suffering a serious accident, Maremont could not work for some time and SFDG decided to continue posting to Maremont’s personal accounts to promote SFDG.  Once she found out, Maremont asked SFDG to stop – but SFDG did not.  After some back and forth about Maremont returning to work for SFDG, she went to another company and sued SFDG over the use of her social media accounts.  (more…)

December 13, 2011

Judge In New Mexico Issues Temporary Restraining Order Against Research In Motion To Prevent Use Of BBX Mark At Conference In Singapore

Filed under: International, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:01 am

by Phillip Barengolts, Trademark Attorney

Research In Motion (RIM) planned to introduce its newest mobile platform at the BLACKBERRY developers’ conference (DevCon) in Singapore.  It was going to call it BBX – until Basis International obtained a temporary restraining order against RIM’s use of the name the day before the conference opened.  See Basis Int’l Ltd. v. Research In Motion, Ltd., No. 11‑cv-953, slip op. (D.N.M. Dec. 6, 2011).[1]  Now, RIM is going to call the platform BLACKBERRY 10.  Meanwhile, the suit continues with a hearing on Basis’s motion for preliminary injunction, scheduled for December 19.

The Lanham Act can have extraterritorial application to stop foreign use of an infringing mark under appropriate circumstances.  As stated in the order:

This Court may issue an injunction having extraterritorial effect in order to prevent trademark violations under the Lanham Act where: the extraterritorial conduct would, if not enjoined, have a significant effect on United States commerce, and then only after consideration of the extent to which the citizenship of the defendant and the possibility of conflict with trademark rights under the relevant foreign law might make issuance of the injunction inappropriate in light of international comity concerns.

Id. at 3.

The court decided the facts satisfied these conditions, so issuing a temporary restraining order was appropriate.  From this author’s view, three facts convinced the court: (1) RIM was going to use a mark identical to Basis’s mark; (2) the parties targeted identical consumers, i.e., business software developers; and (3) actual confusion had already arisen – upon RIM’s original announcement of the BBX platform in October, Basis had been contacted about the connection between RIM and Basis.

RIM, a Canadian company, argued that the Lanham Act should not be applied to stop the use of BBX by RIM’s Singapore subsidiary (which was running the conference), but the court found that line of reasoning unpersuasive.  “It is naive to believe that further confusion of the BBX mark in the United States will be confined to only those attending the conference from this country.”  Id. at 4 (emphasis in original).  The court did not explore this conclusion, but did say that “it is not a stretch to state that RIM is attempting global publicity, much of which is aimed at BASIS’s core customer base—U.S. software developers.”

Companies with products in international markets must be cognizant that use of a mark that has a substantial or significant effect on U.S. commerce may result in a violation of the Lanham Act.  This was true even before the age of the Internet, but the Internet has helped blur national boundaries – with no small help from RIM and its BLACKBERRY.

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Phillip Barengolts 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, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Oxford University Press.

June 10, 2011

First Circuit: Supreme Court Decision Calls into Question Presumption of Irreparable Harm in Trademark Infringement Preliminary Injunction Cases

Filed under: Litigation, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:37 pm

Categories: Trademark (General), Litigation
Tags: Litigation, Preliminary Injunction, 1st Circuit, Janet A. Marvel

by Janet Marvel, Trademark Attorney

In eBay v. MercExchange L.L.C., 547 U.S. 388 (2006), the Supreme Court reaffirmed that courts must apply “traditional rules of equity” in deciding whether to grant permanent injunctions in patent cases.  It found that the Federal Circuit’s “general rule” in patent cases “that a permanent injunction will issue once infringement and validity have been adjudged” except in “exceptional circumstances” was improper.  Essentially, then, the Court found that courts cannot presume irreparable harm in the patent injunction context.

In many jurisdictions, irreparable harm has been presumed in trademark infringement preliminary injunction proceedings.  After eBay v. MercExchange, courts have considered, and sometimes avoided, the question of whether that presumption remains valid.  See Osmose, Inc. v. Viance LLC, 612 F.3d 1298 (11th Cir. 2010) (“Because the district court did not rely on a presumption of irreparable injury, we need not decide whether such a presumption still applies in the wake of eBay); N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008) (vacating and remanding preliminary injunction for consideration of whether a presumption of irreparable harm should be applied after the eBay decision); Lorillard Tobacco Co. v. Engida, 213 Fed. Appx. 654 (10th Cir. 2007), cert. denied, 127 S.Ct. 3016 (2007) (“We need not consider how eBay may apply in this context . . . because in any event Lorillard has not shown that any harm Lorillard would suffer in the absence of an injunction outweighed the potential harm to I and G”).  Compare Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d 377 (6th Cir. 2006) (court presumed irreparable harm on a showing of likelihood of success on the merits); Harris Research, Inc. v. Lydon, 505 F. Supp. 2d 1161 (D. Utah 2007) (“The Supreme Court has recently disapproved the use of categorical rules in connection with injunctive relief in intellectual property actions, and Plaintiff must show irreparable injury to support a preliminary injunction.”) (internal quotations and citations omitted).  (more…)

May 27, 2011

Federal Court Determines that Filing of Opposition Along with Settlement Discussions Regarding Use of a Mark is Not Grounds for Declaratory Judgment

Filed under: Litigation, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:41 pm

Categories: Litigation, Trademark (General)
Tags: Litigation, Declaratory Judgment, Janet A. Marvel

by Janet Marvel, Trademark Attorney

The Supreme Court in Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), set out a new standard for determining whether a case or controversy creates jurisdiction under the Declaratory Judgment Act.  The Medimmune standard states:

[T]he question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interest, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

Id. at 127.  The court in Vina Casa Tamaya S.A. v. Oakville Hills Cellar, Inc., No. 10 Civ. 3025, 2011 WL 1642524 (S.D.N.Y. Apr. 26, 2011),[1] applied that new test in the context of trademark oppositions.  There, Vina Casa Tamaya sought a declaratory judgment that its TAMAYA mark did not infringe Oakville Cellars’ MAYA mark.  Oakville sent Vina Casa a cease and desist letter objecting to its application for federal trademark registration of TAMAYA, but not to its use.  When Vina Casa did not respond, Oakville filed an opposition to registration.  The parties then tried to settle; apparently they discussed use of the TAMAYA mark, but Oakville would not settle on terms permitting continued use.  Vina Casa had used the TAMAYA mark in the U.S. for seven years prior to the suit. (more…)

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