Traverse Internet Law Disclaimer
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.
GARY LEON TETER, JR. v. GLASS ONION, INC.
WESTERN DISTRICT OF MISSOURI (ST. JOSEPH)
FILED: 9/23/2008
5:08-CV-06097
The two alleged instances of intellectual property misconduct, taken together, are a big problem. Once again, understanding the totality of your business practices is critical to assessing risk.
G. L. Teter is a renowned artist. The Defendant is a website that provides hard to find, rare works of art on its website. The Defendant is using the Plaintiff's name in meta-data associated with its own website and is using "thumbnail images" of the Plaintiff's copyright protected artworks on its website.
The lawsuit alleges copyright infringement, false designation of origin, violations of the visual arts rights act, unfair competition under the federal trademark laws, trademark infringement, and trademark dilution. The Plaintiff is moving for injunctive relief, an accounting of the Defendant's website profits, reimbursement of all damages sustained by the artist, the tripling of all profits and damages, attorney's fees, punitive damages, and other relief. Traverse Internet Law Cross-Reference Number 1213.
HARRY AND DAVID v. ANSHU PATHAK dba ORGANIC FRUIT OF THE MONTH CLUB, ALSO dba BRENTWOOD TRADING GROUP, ALSO dba PREMIUM ENTERPRISES
DISTRICT OF OREGON (MEDFORD)
FILED: 9/23/2008
1:08-CV-03101
This is another example of a business trademark being used to sell competing products or services online. The allegations in this case include the use of the registered trademark in the domain name and then a separate use of the registered trademark to key a sponsored ad being presented from the Defendant whenever the Plaintiff's trademark was searched. A good rule of thumb is that keying ads off of a competitor’s name will often get you a cease and desist from the competitor's lawyer. However, when you acquire domain names that are used in conjunction with the advertising often times the consequences will far exceed a simple "cease and desist" communication.
Harry and David is a nationally famous premier direct marketing, e-commerce and retail company operating over 140 stores nationwide and its best known and most successful offerings are its "FRUIT-OF-THE-MONTH Club" mail order services. Defendant Pathak has allegedly registered multiple knock off domain names of the "FRUIT-OF-THE-MONTH" trademark and is using "keyword triggers" on search engines such as Google with the Plaintiff's trademark term keying sponsored link advertising placed by Defendant.
Plaintiff is alleging federal trademark infringement, federal false designation of origin, false representation, unfair competition, Oregon state trademark infringement, Oregon State unfair competition, and cyberpiracy. Harry and David is requesting extensive injunctive relief as well as statutory damages tripled due to alleged specific misconduct, and an award of attorney's fees and costs. Traverse Internet Law Cross-Reference Number 1214.
HOURIGAN, KLUGER AND QUINN, P.C. v. DOMAIN DISCREET
MIDDLE DISTRICT OF PENNSYLVANIA (SCRANTON)
FILED: 9/22/2008
3:08-CV-01753
Another in the long line of ever growing cases brought by a trademark owner against a third party using its name online. There is a clear connection between the use of the name, which clearly would result in higher organic search ranking, and the advertising on the website that leads directly to competitor’s products or services. The twist here is that it is likely the owner of these domain names is an "affiliate marketer" being paid by referrals and/or simply a squatter on the domain names participating in an advertising program for which the owner is paid a percentage of revenue generated by the traffic from his site.
Hourigan, Kluger and Quinn, P.C. is a law firm in Northeastern Pennsylvania and the attorneys practice before federal and state courts throughout the commonwealth of Pennsylvania in the areas of medial malpractice, personal injury, workers compensation, commercial law, labor law, and other areas of the practice of law. The Defendant is alleged to have registered numerous Internet domain names that consist of marks owned by the law firm or intentional misspellings of the law firm's trademarks. A number of marks with the name of the law firm included with various top level domain names are the subject of this lawsuit. Websites located at the domains allegedly refer traffic to competing lawyers and competing websites that provide lawyer advertising.
This lawsuit alleges cybersquatting under the anti-cybersquatting consumer protection act, trademark infringement under the Lanham Act, false designation of origin under the Lanham Act, unfair competition and false advertising under the Lanham Act, unfair competition under Pennsylvania common law, and conversion. Plaintiff requests an award of actual damages, liquidated damages, statutory damages, disgorgement of Defendant's profits, triple damages, attorney's fees and costs, and the entry of temporary and permanent injunctive relief against the Defendants continued acquisition of the domain names and more extensive injunctive relief. Traverse Internet Law Cross-Reference Number 1215.
INTERSECTIONS INC. v. LIFELOCK, INC. AND KBJ HOLDINGS LLC.
EASTERN DISTRICT OF VIRGINIA (ALEXANDRIA)
FILED: 9/16/2008
1:08-CV-00960
Yet another case of a lawsuit arising from the use of a trademark by competitor in the online world. Most important is the conspiracy allegation bringing into this case liability for third party misconduct. And affiliate marketers are the alleged third parties. Of course, in a conspiracy the misconduct of one conspirator can be imputed to all conspirators and jurisdiction as to one conspirator is often adequate to bring in all conspirators. This type of a lawsuit is another perfect example of why your business must be proactive, self policing, and self regulating as it relates not only to your internal business practices but the business practices and policies of those around you.
The Plaintiff, in its first paragraph, lays out this case very clearly as follows: This is an action for trademark infringement and other related causes arising from Defendants' practice of displaying Plaintiff's trademarks in advertisements that appear when consumers perform searches using Internet search engines such as Google. When consumers follow the hyperlink that appears in the advertisements created by Defendants', they are directs to Lifelock's website. This practice infringes upon Plaintiff’s Federal and common law trademark rights, constitutes false advertising and unfair competition, and also is believed to have occurred as part of a conspiracy amongst Defendants and with Defendant's affiliates.
The Plaintiff has sued for trademark infringement, Federal unfair competition, Virginia common law trademark infringement, and violation of the Virginia Business Conspiracy Act. Damages and extensive injunctive relief has been requested by the Plaintiff. Traverse Internet Law Cross-Reference Number 1216.
Z57, INC. v. iHOUSEWEB, INC.
NORTHERN DISTRICT OF CALIFORNIA (SAN FRANCISCO)
FILED: 9/08/2008
3:08-CV-04226
This case is very much about the evolving issues of the use of a competitor’s name online. We are now seeing many cases filed each month dealing with the purchase by a competitor of a "search term" on the web. One of the next major areas of litigation will be the less obvious, surreptitious use of competitor's names once search engine optimization and online business practices are more fully understood by businesses, lawyers, and judges. There are many, many ways to use a trademark of a competing business that does not involve metatags, domain names or advertisement triggers, many of which will ultimately be seen as a clear case of "trademark infringement".
Z57 is a website that provides marketing information relating to the Real Estate industry. Defendant is alleged to be using the "Z57" keyword to trigger Google AdWords advertisements when the "Z57" term is searched. Plaintiff also alleges that Defendant has been "scraping" and extracting content from Z57's website in order to secure customer sales leads for its own commercial gain.
Plaintiff claims federal trademark infringement, false advertising, common law unfair competition, and violations of the California Unfair and Fraudulent Business Practices Act. Z57 requests a permanent injunction prohibiting the Defendant from using the mark "Z57" alone or in combination with other words, compensatory damages, disgorgement of Defendant's profits, treble damages, punitive damages, interest, costs, expenses and reasonable attorneys' fees, and other relief. To the extent there has been "unauthorized access" through the scraping allegation, there is neither a state unauthorized access claim nor a federal violation of the Computer Fraud and Abuse act alleged. Traverse Internet Law Cross-Reference Number 1217.
AGEL ENTERPRISES, LLC v. RANDY SCHROEDER AND RISING SUN, INC.
CENTRAL DISTRICT OF UTAH
FILED: 9/05/2008
2:08-CV-00673
This is once again another lawsuit dealing with the use of a competing trademark term in relation to web business. This time the trademarked term is embedded in a domain name, and the most interesting aspect of this case might be the fact that the websites now used to market competing products were built, and have a history of search engine optimization, around the Plaintiff's trademark. This is a new legal issue that has yet to be dealt with in the courts. When you build the page rank of a website using a trademark, are you then allowed to switch the site over to selling a competing product and reap the benefits of the search engine optimization page rank when the previous competing product is the subject of a search on Google? These are the very types of issues that will be considered in the coming years and this is a high risk practice that carries with it potential consequences.
Agel is in the business of selling nutritional supplements in individual portable gel packs, deliverable to the user through the Plaintiff's "suspension gel technology". The Defendants are alleged to have operated at least two Internet websites with the trademarked term "Agel" in the domain name. Defendants, at the time, were multilevel marketers and also affiliate marketers of the Plaintiff. Defendants then decided to terminate its relationship with the Plaintiff and start selling a competing product known as "MonaVie", a nutritional supplement sold in bottled juice form and manufactured and/or distributed by Monarch Health Sciences. The Defendants continued to use the name of the Plaintiff in the domain names it had earlier acquired while acting as an affiliate marketer for the Plaintiff, and this lawsuit followed.
Plaintiff sued for trademark infringement, false advertising, unfair competition under Utah state statutory and common law, and has requested the entry of a temporary and permanent injunction, compensatory damages and disgorgement of profits, and the recovery of costs and attorney's fees. Traverse Internet Law Cross-Reference Number 1218.
BARRY WRIGHT CORPORATION v. FIXTUREWORKS, INC.
DISTRICT OF MASSACHUSSETTS (BOSTON)
FILED: 9/04/2008
1:08-CV-11511
This appears to be a straight forward case of a business suing a competitor because the competitor is using its name or trademark in commerce. This is becoming a very common legal claim and any use of a competitor's name, whether it be for triggering advertising, in content, in metatags, or otherwise should be closely scrutinized.
Barry Wright Corporation manufactures and sells spring plungers, ball plungers, leveling devices and other mechanical components for use in a variety of industries and applications. It operates a website at "vlier.com", to which its customers obtain information about the products and order products sold by the Plaintiff. Defendant is a competitor and has purchases the keyword "Vlier" in the Google AdWords program so that when that term is searched a "sponsored link" advertisement is presented for "fixtureworks.net" the Defendant. Plaintiff has filed suit against the Defendant for using its trademark of "Vlier" in order to trigger an advertisement.
Barry Wright Corporation has asserted a trademark infringement claim, a related claim for false designation of origin and unfair competition, a common law claim under Massachusetts law for unfair competition, requested a preliminary and permanent injunction, and actual damages, costs and attorney’s fees. Traverse Internet Law Cross-Reference Number 1219.
