Thursday, September 25, 2008

Traverse Internet Law Federal Court Report: August 2008 Trademark Infringement Lawsuits

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

FILED: 8/15/2008

This is another pay-per-click keyword search lawsuit with a couple of nuances. First, there is use of the trademark deep in the URL used by the advertiser. Second, the traffic is being “trapped” so that the back button on a browser cannot be properly used. Both are issues to be considered in your advertising practices because they arguably build the “initial interest confusion” case for trademark infringement. If you lure a customer into your store, and then lock the doors, it looks really bad. Stay away from browser trapping.

Harry and David sued the Defendant for triggering ads using the “Harry and David” name. In addition, there is a reference to “Harry and David” buried in the URL string which the Plaintiffs are suggesting is another misuse of its trademark. Plaintiff also alleges a partial “mouse trapping” or “browser trapping” practice by the Defendants when traffic comes to its site.

Harry and David has sued for federal trademark infringement, federal unfair competition, federal trademark dilution, state trademark infringement, and state trademark dilution, requested triple damages and the entry of an injunction prohibiting Defendant from using the “Harry and David” marks for any advertisement for the sale of any product, together with an award of its attorney’s fees and court costs. Traverse Internet Law Cross-Reference Number 1205.

FILED: 8/12/2008

This case reminds me (although this issue may not be part of this case) to suggest that a business be very careful about allowing your affiliate marketers to operate “directories” or “comparison” or “review” websites. Pure aggregators of information can claim that they are fairly using the trademarks of businesses. However, there appear to be abuses occuring online in which seemingly independent and fair use of business names is really a direct commercial use, which opens up potential legal issues. “Review” websites are almost always fronts for trademark infringement, product disparagement, defamation or unfair competition and once businesses and their lawyers figure out what is going on expect to see a spike in lawsuits against these sites and owners. This lawsuit is getting a lot of press and commentary.

Jones Day, one of the largest law firms in the world, sued the owners of a website that gathers and publishes details of private residential real estate transactions. Jones Day alleged that the Defendants were publishing this information in a scheme to solicit advertisements and garner advertising income. The website, according to the Plaintiff, uses the service marks of others, links to website owned by others, and uses material from websites belonging to others, and the site attempts to create the false impression that the Defendants are affiliated or endorsed by the Plaintiff.

The lawsuit alleges service mark infringement, federal false designation of origin, federal service mark dilution, unfair business practices, common law infringement and unfair competition. Jones Day has requested that the court enter extensive preliminary and permanent injunctive relief, award triple damages, profits, costs and attorney’s fees, as well as punitive damages. Traverse Internet Law Cross-Reference Number 1206.