Friday, June 12, 2009

Traverse Internet Law Federal Court Report: May 2009 Trademark Infringement Cases

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: 05/29/2009

As a business person you must understand that this type of an ad is becoming a very common business practice. It likely arises from a gross misunderstanding as to what is “fair use” of a competitor’s trademark. This type of practice is also evolved because of the strict view taken by the courts with respect to the requirement of defamation resulting from a published statement of fact. At any rate, you must monitor the advertisements across the web as they might relate to your business name, product or service name, and all trademarks, and be prepared to deal with this type of advertising tactic when it arises.

The Plaintiff is a premier producer and publisher of personal development products and services for families. The Plaintiff owns a registered United States trademark in the term “the total transformation”. The Defendants offer, or are marketing and selling, similar competing products and programs. The Plaintiff alleges that the Defendant is keying its advertising off of the Plaintiff’s trademarks. More significant, however, is the claim that the Defendant is using the Plaintiff’s trademark name in the title of the Google AdWords ad and even has one advertisement that states “Transformation Warning” in its title, and “Don’t buy Total Transformation until you’ve read this” in its content.

The Defendant has been sued for trademark infringement, unfair competition and false advertising, cybersquatting, unfair competition under Louisiana state laws, violations of the Louisiana Unfair Trade Practices Act, and Louisiana state trademark dilution. The Plaintiff has requested extensive injunctive relief, an award of statutory damages for cybersquatting of up to $100,000.00 per domain name, an award of compensatory damages, attorneys’ fees, costs, and other relief. Traverse Internet Law Cross-Reference Number 1325.

FILED: 05/28/2009

I write extensively in “Google Bomb”, my book coming out by September 1, about these types of “review” sites. This advertisement appears to have it all. It not only contains the competitor’s name in its title, but it appears to attempt to artfully defame the products of the Plaintiff without making a definitive factual statement. This case is a perfect example of the evolving laws relating to online defamation and how the courts will have to change their approach to the definition of defamation in light of the Internet. The lesson here is don’t even suggest that competitor might be operating a scam unless you are prepared to prove it and stay away from using competitors’ names in advertising or to drive traffic to your site unless you are prepared to prove fair or nominative use.

Plaintiff and Defendant are competitors in the market of dietary supplements, nutritional supplements, weight loss supplements and related products. The Defendant is alleged to be using the Plaintiff’s trademark in the title of its AdWords ad. The ad’s title reads “Is Purity12 a Scam?”, and the content of the ad starts out “Don’t Get Scammed.” The ad then directs to a purported review site owned and controlled by the Defendant.

The lawsuit alleges trademark infringement, common law trademark infringement, false advertising, unfair competition, injurious falsehood (defamation), intentional interference with economical relations, deceptive trade practices under the state of Utah laws, and civil conspiracy. Plaintiff requests the entry of preliminary and permanent injunctive relief, an order for corrective advertising, an award of compensatory damages, reasonable attorneys’ fees and its costs. Traverse Internet Law Cross-Reference Number 1326.

FILED: 05/22/2009

This case is another in a long line of lawsuits relating to Google AdWords and the best practice is to not use a competitor’s trademark, even if it is a common law trademark, as keywords to generate your business ads.

The Plaintiff and Defendant are competitors in the business of providing event furnishings for special events. The Defendant is alleged to be using the trademarked term of the Plaintiff in the title of its Google AdWords advertising.

The lawsuit alleges federal trademark infringement, trade dress infringement for other alleged misconduct, federal unfair competition, California unfair competition, and unjust enrichment, and the Plaintiff has requested entry of temporary, preliminary, and permanent injunctive relief prohibiting the alleged misconduct set forth in the lawsuit, an award of at least $250,000.00 in damages, triple damages due to the alleged willfulness of the Defendant’s act, restitution and disgorgement of profits, and an award of reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1327.

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