Monday, August 17, 2009

Traverse Internet Law Federal Court Report: July 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.


GOOGLE INC. v. JOHN BECK AMAZING PROFITS, LLC
NORTHERN DISTRICT OF CALIFORNIA (SAN FRANCISCO)
3:09-CV-03459
FILED: 7/28/2009

This is a fascinating lawsuit attempting to attack a class action suit in which the lead named Plaintiff is targeted as a Defendant. Lawsuits for a declaratory judgment are becoming more common as a weapon to counteract or combat lawsuits brought in unfavorable jurisdictions. Suffice it to say that using the Internet exposes almost everyone to the jurisdiction and the laws of just about every state. Great care needs to be taken in asserting legal claims relating to the Internet to avoid finding yourself sued in a faraway place.

John Beck Amazing Profits, LLC filed suit against Google and AOL in a class action in Texas for trademark infringement relating to the sale of its trademark terms for keying advertisements in Google’s AdWords program. Google has, in return, filed a lawsuit against the named Plaintiff in the class action requesting a declarative judgment of non-infringement in California.

The Plaintiff claims breach of contract and has requested that the court enter an order finding that Google has not violated the Defendant’s trademark. The prayer for relief requests compensatory damages, attorneys’ fees, costs, and other relief that the Court deems just and proper. Traverse Internet Law Cross-Reference Number 1335.


ROSETTA STONE LTD v. GOOGLE INC.
EASTERN DISTRICT OF VIRGINIA (ALEXANDRIA)
1:09-CV-00736
FILED: 7/10/2009

This is another in the numerous lawsuits pending against Google for allowing third parties to purchase trademark terms and present AdWords ads. Google recently revised its policies on the use of trademarks in its advertising and you must be extremely careful not to assume that complying with Google’s guidelines means that you are not infringing on a trademark. In other words, don’t rely on Google to make sure that you are following the law.

Rosetta Stone is a leader in technology based language-learning products and services. This is a claim based upon Google selling advertising to third parties that is triggered off the “keyword” of the Plaintiff. Rosetta Stone alleges that the “sponsored links” in Google’s AdWords program are expressly designed to draw consumers away from Rosetta Stone websites.

The lawsuit alleges federal trademark infringement, contributory trademark infringement, vicarious trademark infringement, false representation, trademark dilution, trademark infringement under Virginia law, and unfair competition under Virginia law. Plaintiff has requested preliminary and permanent injunctive relief, the disgorgement of gains and profits, compensatory damages, punitive damages, treble damages, and attorneys’ fees, interest and cost. Traverse Internet Law Cross-Reference Number 1336.


MARY KAY INC. v. YAHOO! INC.
NORTHERN DISTRICT OF TEXAS (DALLAS)
3:09-CV-01278
FILED: 7/06/2009

This claim is an extension of claims being asserted against the search engines for including advertising of competitors using trademarks in the copy of the ad. The primary allegation rests upon the claim by Mary Kay that ads are directing users to unauthorized reseller sites. The important issue here deals not with this specific case but with the broader quagmire of complex legal issues as to whether an unauthorized reseller can use the name of the trademark.


Mary Kay is a cosmetic company. Yahoo!, of course, is the Internet business best known for its search engine. It also offers a free email service which carries advertisement. Mary Kay alleges that the advertisements being carried within the email messages on the Yahoo! email service infringe its trademarks.

The lawsuit includes counts for trademark infringement and trademark dilution under the Lanham Act, common law trademark infringement, unfair competition under the Lanham Act, common law unfair competition, and misappropriation. Plaintiff requests the entry of a preliminary and permanent injunction, an accounting of profits, an award of compensatory damages, costs and attorneys’ fees, and other relief deemed just and proper by the Court. Traverse Internet Law Cross-Reference Number 1337.