After mutual effort put into resolving the issue of counterfeit Tiffany products being sold on eBay, all discussion has ceased and an interesting lawsuit has emerged. The question is whether website owners are going to bear an onerous burden of policing their websites, one atom at a time. Under the principle of contributory trademark infringement, that might just be the case.
Contributory trademark infringement implies that if there is a platform which effectuates infringement, then the owner of such platform is liable. In the Gucci case, the United States Southern District Court of New York established that an ISP could not absolve itself of liability of its users who were indulging in trademark infringement.
Undue Burden?
Knowledge of infringement is not enough to hold one liable, however, willful part-taking is closer to home. Past measures of actual notice of infringement and take down have worked well, but Tiffany is reaching far and beyond this. Tiffany wants that eBay police sellers of counterfeit goods under a microscope in the virtual world.
Is if fair? Is it possible …well with advancing technology much is or soon could be possible; question would be how economical and strenuous would that be for website owners?
There are numerous efforts to curb sales of counterfeit products in the physical world and often times the pace of sale is greater than the policing. However, in the virtual world, time can be caught up with significantly, even if not beaten.Even if this case sets a precedent which does not fare well for website owners, I am positive that technology could change the length of time such legal reasoning shall survive.
Tuesday, November 13, 2007
Some sparkles sometimes spark!
Monday, November 12, 2007
Patent Infringement Law Suit Against the Tech Moguls
Performance Pricing, Inc. ("Plaintiff") sued Google, AOL, Microsoft and Yahoo ("Defendants") in the District Court, Texas on September 27, 2007 for patent infringment.
Performance Pricing, Inc. claims that the Defendants indulged in unauthorized use of its patent (U.S. Patent No. 6,978,253) the summary of invention of which is, as follows:
"invention comprises a business model used to determine the price of goods and/or services to be provided from a seller or sellers to a buyer or buyers.
One Aspect...involves a method of doing business over a global communications network comprising the steps of: communicating to a buyer via the global communications network, ....accepting a first request .....accepting a second request ....while participating in a Price-Determining-Activity (PDA) ...receiving data from the buyer over the global communications network...
Another aspect ...involves a method of determining a price of a product using a global communications network, ...communicating to a buyer via the global communications network, data representing a plurality of products available, ....accepting acknowledgement ...said acknowledgement being communicated over the global communications network; determining the performance of the buyer; and assigning a price to the product, ..."
Performance Pricing claims that the Defendants used their patented technology without permission and seeks injuction in light of "impairment and irreperable damage to their patent rights."
The latest of documents was filed on November 07, 2007 for a motion to extend time for a response to the Plaintiff's Complaint by Defendant A9.com.
AA v Google
American Airlines sued Google for using its trademark as a trigger for adwords in August 2007 in Texas Northern District Court.
Google claimed that use of AA's trademark does not amout to "use in commerce" as required by the Lanham Act § 1127. This line of reasoning has been upheld previously in the Norther District Court of California, but the Southern District Court of New York has categorically disagreed with it. The outcome of this case in Texas remains to be seen. Eric Goldman has however, highlighted some interesting strengths and weaknesses of this case.
Friday, November 02, 2007
Scrabulous - Infringorous!!!
Recently I was invited by my friend to play scrabulous online. Unfortunately, two parts of me went along - the scrabble playing individual and the trademark enthusiast and so I logged off quite the disgruntled consumer/lawyer.
This is the conversation in my head.
Scrabble Player: Hmm…the online board looks very similar to the real scrabble board
(Ding! TM enthusiast awakens. Similar!…who owns what?)
Scrabble Player: What is troubling is that the color codes for scoring high points in pink, dark blue and light blue are identical to the original pattern in Scrabble. Yet, there is a difference. Yes! That’s it. The colored boxes just do not state clearly what scoring advantage the color stood for.
(Ha! very smart, but any self respecting scrabble player can easily identify what the box color denotes.)
Scrabble Player (Disgusted): The most annoying part is when words from other languages could be made, for instance pina (Spanish for pineapple)!!!! FAKE
Exit disgruntled scrabble player and the Trademark enthusiast is raring and rearing to go.
Information on Scrabble website says Hasbro owns it all.
(http://www.hasbro.com/games/adult-games/scrabble/home.cfm?page=about)
“SCRABBLE® is a registered trademark. All intellectual property rights in and to the game are owned in the U.S.A. and Canada by Hasbro Inc. and throughout the rest of the world by J.W. Spear & Sons, PLC of Enfield, Middlesex, England, a subsidiary of Mattel Inc. Mattel and Spear are not affiliated with Hasbro.”
http://www.hasbro.com/home/copyright.html
Scrabble at the very least owns a trademark right in the name, a trade dress in the look of the board.
In Two Pesos, Inc., v Taco Cabana, Inc, the Court laid down a five part test for determining whether a trade dress was inherently distinctive or had it acquired a secondary meaning.
i. Does the Plaintiff have “trade dress”?
ii. Is the Trade Dress functional/non-functional?
iii. Is the Trade Dress inherently distinctive?
iv. Has the Trade dress acquired a secondary meaning in the concerned market?
v. Does the alleged infringement create confusion, in the mind of ordinary consumers, as to source/association of product with goods/services?
A trade dress must be non-functional and must be unusual and memorable.( See I.P. Lund Trading ApS v. Kohler Co. “Whether the dress is so unique, unusual and unexpected in this market that it will automatically be perceived by customers as an indicator of origin”.) To be protectable under the Lanham Act, it is necessary for the product trade dress to show secondary meaning i.e. a certain product identifies with the source of the product.
However, an impediment to finding such trade dress is the functionality doctrine. The functionality doctrine as the Supreme Court’s dictum in Re Inwood Labs., established that if the product feature is essential for the use and purpose of the article or effects the cost and quality of a product, then that feature is functional.
But what about the colored tiles?
Qualitex Co. v Jacobson Products Co. Inc settled that concept back in 1995 by showing that though colors cannot be inherently distinctive, they can acquire recognition and a secondary meaning if the color is used over time and three factors are established:
i. This color acted as the source identifying factor
ii. The color did not undermine the need for that color in the industry
iii. Color was not functional
Quite obviously, the color coded tiles in the Scrabble board are easily identifiable as being associated with Scrabble, anybody else can use different colors to follow a similar concept and the colors pink and shades of blue certainly do not mean high points. (See Yankee Candle Company v Bridgewater Candle Co., LLC where the label color was gold implying opulence and thus failing to be inherently distinctive)
On the ground of trademark alone, there is
· Trademark infringement under 15 U.S.C 1114;
· False designation of origin under 15 U.S.C 1125(a);
· Violation of the Anti-dilution provision under TDRA
Otherwise, frustrating software allowing random words. Will SCRABBLE do something about it?
This is the conversation in my head.
Scrabble Player: Hmm…the online board looks very similar to the real scrabble board
(Ding! TM enthusiast awakens. Similar!…who owns what?)
Scrabble Player: What is troubling is that the color codes for scoring high points in pink, dark blue and light blue are identical to the original pattern in Scrabble. Yet, there is a difference. Yes! That’s it. The colored boxes just do not state clearly what scoring advantage the color stood for.
(Ha! very smart, but any self respecting scrabble player can easily identify what the box color denotes.)
Scrabble Player (Disgusted): The most annoying part is when words from other languages could be made, for instance pina (Spanish for pineapple)!!!! FAKE
Exit disgruntled scrabble player and the Trademark enthusiast is raring and rearing to go.
Information on Scrabble website says Hasbro owns it all.
(http://www.hasbro.com/games/adult-games/scrabble/home.cfm?page=about)
“SCRABBLE® is a registered trademark. All intellectual property rights in and to the game are owned in the U.S.A. and Canada by Hasbro Inc. and throughout the rest of the world by J.W. Spear & Sons, PLC of Enfield, Middlesex, England, a subsidiary of Mattel Inc. Mattel and Spear are not affiliated with Hasbro.”
http://www.hasbro.com/home/copyright.html
Scrabble at the very least owns a trademark right in the name, a trade dress in the look of the board.
In Two Pesos, Inc., v Taco Cabana, Inc, the Court laid down a five part test for determining whether a trade dress was inherently distinctive or had it acquired a secondary meaning.
i. Does the Plaintiff have “trade dress”?
ii. Is the Trade Dress functional/non-functional?
iii. Is the Trade Dress inherently distinctive?
iv. Has the Trade dress acquired a secondary meaning in the concerned market?
v. Does the alleged infringement create confusion, in the mind of ordinary consumers, as to source/association of product with goods/services?
A trade dress must be non-functional and must be unusual and memorable.( See I.P. Lund Trading ApS v. Kohler Co. “Whether the dress is so unique, unusual and unexpected in this market that it will automatically be perceived by customers as an indicator of origin”.) To be protectable under the Lanham Act, it is necessary for the product trade dress to show secondary meaning i.e. a certain product identifies with the source of the product.
However, an impediment to finding such trade dress is the functionality doctrine. The functionality doctrine as the Supreme Court’s dictum in Re Inwood Labs., established that if the product feature is essential for the use and purpose of the article or effects the cost and quality of a product, then that feature is functional.
But what about the colored tiles?
Qualitex Co. v Jacobson Products Co. Inc settled that concept back in 1995 by showing that though colors cannot be inherently distinctive, they can acquire recognition and a secondary meaning if the color is used over time and three factors are established:
i. This color acted as the source identifying factor
ii. The color did not undermine the need for that color in the industry
iii. Color was not functional
Quite obviously, the color coded tiles in the Scrabble board are easily identifiable as being associated with Scrabble, anybody else can use different colors to follow a similar concept and the colors pink and shades of blue certainly do not mean high points. (See Yankee Candle Company v Bridgewater Candle Co., LLC where the label color was gold implying opulence and thus failing to be inherently distinctive)
On the ground of trademark alone, there is
· Trademark infringement under 15 U.S.C 1114;
· False designation of origin under 15 U.S.C 1125(a);
· Violation of the Anti-dilution provision under TDRA
Otherwise, frustrating software allowing random words. Will SCRABBLE do something about it?
But a more interesting position to analyze is that of Facebook. More later.
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