troll.jpgLos Angeles – Matt Drudge, owner of the Drudge Report, has reportedly reached an out-of-court settlement with Righthaven LLC.  Righthaven is a copyright holding company founded in 2010, which acquires newspaper content and photos from its partner newspapers after learning that the content has been used without permission by online sites.  Righthaven then sues the site owners for copyright infringement.

The complaint against Drudge was initially filed on December 8th in U.S. District Court for Nevada, claiming that the Drudge Report had used a TSA pat-down photo from the Denver Post without authorization.  Righthaven went on to file copyright infringement complaints against 33 other website operators over unauthorized use of the same photo.

Details about the Drudge settlement have not been released but it is certain that Drudge will keep his domain name which supposedly was at issue.  Righthaven’s usual method for enforcing copyrights is to demand forfeiture of the domain names and then eventually accept monetary settlements in exchange for allowing the defendants to retain the domain name.  Critics of Righthaven’s legal strategy often call this “copyright trolling” and say that the demand for domain forfeiture is simply a scare tactic to pressure the defendants to settle the case.  Righthaven responds to the criticism by claiming that its demands are reasonable and that justice is being served.

Drudge has not commented on the settlement.

sandwich-footlong.jpgSan Diego – Subway is being sued in federal trademark court in a dispute over the term “Footlong”.  Apparently, the world’s largest sandwich chain hopes the courts will rule that “Footlong” is a noun that describes its signature sandwiches.  Subway has filed a Footlong trademark application and is  currently using it in a multi-million dollar advertising campaign for its line of 12-inch sandwiches priced at five dollars.

Casey’s General Stores of Ankeny, Iowa, recently filed a complaint against Subway in U.S. District Court in Des Moines.  Casey’s, which owns a chain of 1,600 stores in the Midwest, is fighting Subway’s claim of exclusive rights to the “footlong” term.  It is in the process of launching a similar promotion to Subway, and is using the non-hyphenated term on menus and other marketing materials.

It appears as though the battle started when Subway attorneys declared proprietary rights to the term and threatened legal action against Casey’s.  Casey’s responded to the threats by filing a claim, seeking a declaration that the term “footlong” is generic and should not be subject to exclusive rights.  The Iowa-based convenience store company is willing to present the case to a jury and is seeking unspecified damages over claims that it violated Subway’s trademark.  Subway has yet to file a response to the complaint.

In a who’s who of fast-food restaurant chains, other chains like Long John Silvers, A&W, KFC, Taco Bell and Pizza Hut have also joined in to oppose Subway’s trademark application for “footlong”.  The prosecution of the application will now be delayed pending all of the litigation.  A trial date has not been set.

Overall we like Subway’s chances.  Though clearly not the strongest trademark possible for sandwiches, we think the Footlong trademark is defintely worthy of a 2(f) registration on the principal register (a 2(f) designation acknowledes that the trademark is at least somewhat descriptive but yet that it has acquired secondary meaning through extensive use).  Seperately, we’re not sure what all the fuss is about in the line forming to oppose the trademark.  Can’t those companies just one up Subway by creating a new trademark like 13 Incher?  We checked and its not registered.

playdoh-chicken.jpgSan Diego – Hasbro, the world’s second-largest toymaker, has succeeded in winning a trademark infringement action against a U.K. toy distributor MAPS Toys.  Hasbro sued Maps as well as German company 123 Nahrmittel over its infringing use of the term “play dough” with its “Yummy Dough” product.

The suit, filed with the High Court of Justice, noted that although children are encouraged to use Hasbro’s molding compound to make food-like objects, it is not intended to be edible.  In fact, “Play-Doh” contains components to make the taste unpleasant and to discourage children from eating it.  Hasbro’s “Play-Doh” has been on the market since 1955. 

The Yummy Dough product  is meant to be eaten, and even uses the phrase “the edible play dough” on its packaging.  Hasbro insisted that this terminology would create a strong likelihood of confusion with consumers.  123 Nahrmittel questioned whether “Play-Doh” was even validly registered or should in any event be revoked.  Judges with the High Court denied the counterclaim and ruled in favor of Hasbro.

The ruling demands that 123 Nahrmittel cease marketing its product as “Play Dough”.  The German toy-maker must also compensate Hasbro for legal fees and damages.

The 123 Nahrmittel website states that it is disappointed with the decision and is considering its options in regard to an appeal.  Really?  To us this seems like a clear infringement so it seems that 123 Nahrmittel should just turn the page.

road fast.jpgOrange County – The United States Patent and Trademark Office (USPTO) has just released the details on a new patent examination initiative that would speed up the examination process to one year for those willing to pay.  Because of the large backlog, the process currently can take up to three years from the time of filing to hear anything at all back from the patent office.

The cost for the accelerated route is $4,000 which is in addition to the usual $1,090 fee for filing, search and examination.  United States Commerce Secretary Gary Locke stated, “This new system will bring the most valuable patents, as determined by inventors, to market faster and will help shrink the backlog by catering to the business needs of America’s innovators.”  The above fees are reduced for small entities.

Other details of the initiative involve limiting patent applicants to four independent claims and thirty total claims.  In fiscal 2010, it took the USPTO an average of 25 months for a first action and almost 3 years for a patent to issue.

purse.jpgLos Angeles – Former Coach Inc. employee Gina Kim knows the price of a real handbag.  To earn extra money, Kim planned to auction several of her Coach handbags that she had purchased with her employee discount.  Soon after Kim advertised the bags for sale on eBay, she received a cease and desist letter from Coach accusing her of trademark infringement and selling counterfeit goods.

According to Kim’s Seattle attorney Jay Carlson,  the cease and desist letter threatened her with a $2 million trademark infringement suit.  Attorneys representing Coach also demanded that Kim relinquish all of her Coach merchandise, admit to guilt, agree to never sell its merchandise again and send a check for $300.

The threat of a lawsuit from Coach has seemed to only empower Kim, who has since filed her own lawsuit against the handbag conglomerate.  According to her attorneys, she has filed a complaint in the U.S. District Court in Seattle accusing Coach of violating the Consumer Protection Act, defamation of character, interfering with her business and other claims.  Soon after filing the complaint, Kim was notified by eBay that her seller’s account had been reactivated.

Counterfeiting is a huge obstacle for retailers trying to protect their intellectual property.  However, retailers walk a fine line because at the same time they know that consumers have the right to sell their secondhand items as long as they are legitimate. 

Meanwhile, Kim and her attorneys aren’t done.  They are seeking out other online sellers who have also received a threatening letter from Coach in an effort to make this a class-action lawsuit.  Kim believes Coach was wrong to falsely accuse her of counterfeiting and defame her character without properly investigating the case. 

pig.jpgSan Diego – If you are a Facebook user, and chances are pretty good that you are, you’ve likely been exposed to the social networking application called “Farmville.”  Developed by Zynga Inc., Farmville now has over 14 million active daily users and 56 million active monthly users.  The game’s popularity has been so overwhelming that Zynga has developed a new game called “Cityville”, which has attracted even more users.

Now comes a new social networking game called “Blingville” – but its not related to Zynga.  Knowing that Zynga aggressively polices use of the word “Ville”, Blingville LLC filed a preemptive lawsuit asking the U.S. District Court for the Northern District of West Virginia for a declaratory judgement that its “Blingville” social media game will not infringe on “Farmville” and “Cityville.”  After declaring in its motion that it registered the blingville.com domain name in 2004 and filed an application with the United States Patent and Trademark Office for the “Blingville” trademark last November, Blingville was immediately hit with three cease and desist letters from Zynga.  Zynga is claiming that “Blingville” is violating the Lanham Act and that users would be confused as to who developed the game.

Zynga believes that the undeniable popularity of its “ville” games should give the company sole rights to use of the word “ville” for social media games.  Lawyers for the company are likely trying to prove that its two games encompass a family of trademarks that use generic “place” words in conjunction with the “ville” suffix and therefore would cause users to believe that “Blingville” is part of the “Farmville” family.

One can argue that Zynga has established a “family of marks” based on the popularity of its games.  McDonald’s with “Mc” prefix and apple with its “i” prefix are other examples.  This could, however, be tough for Zynga to prove in court.  If Zynga had even one more “Ville” trademark its case would be that much better.  Still, I wouldn’t bet against Zynga as it definitely has a case to make.

Regardless of the outcome, there is one thing that is for certain, Zynga will be living in “TrademarkInfringementville” for some time.

creditcard.jpgOrange County – Twitter co-founder and Square CEO Jack Dorsey has filed suit over the patent rights to Square, a device that Time Magazine named as one of the Top 50 Inventions in 2010.  Jim McKelvey, a glassblowing artist turned entrepreneur has joined Dorsey in the lawsuit against Robert Morley, an associate professor of electrical engineering at Washington University.

Square is a small, portable, plug-in device that enables users to accept credit cards anywhere by offering a plug-in credit card reader that is compatible with iPads, iPhones and Android phones.  Users are charged a fee of 2.75% on credit card transactions.

McKelvey is claiming that it was he, not Morley, who originally thought of the idea for Square.  He said it was to assist with credit card sales at his own business, Third Degree Glass Factory.  Morley who owns sole rights to the Square patent technology argues that he developed the technology himself without any help from McKelvey.

This case alleges both copyright and patent infringement.  A patent protects a novel invention whereas a copyright protects an original work of authorship.  In the case of the Square patent, McKelvey will have to bring a lot of evidence to the table.  He will have to prove that his own independent ideas were involved in the invention of the technology because patent inventorship is a legal question.  It could turn out that the parties are co-inventors.

signhere.jpgOrange County – It appears that Sarah Palin and her daughter Bristol have both run into a bit of a snag in attempts to trademark their names for “motivational speaking services.”  Palin family attorney Thomas Van Flein filed applications for the names Sarah Palin and Bristol Palin on November 5, which were both rejected by the United States Patent and Trademark Office (USPTO).

According to an office action, Sarah’s application was refused because she failed to sign it.  “Please note that this refusal will be withdrawn if applicant provides written consent from the individual identified in the applied-for mark,” the USPTO said.  Apparently that wasn’t the only mistake on her application.  The USPTO went on to disclose that Sarah’s application failed to show that her name had been used in commerce and that, in itself, was grounds for refusal.  She is attempting to register her name as a trademark for motivational speaking services in the fields of politics, culture, business and values.

Bristol Palin’s application to trademark her name has also been refused for the same reasons.  She is seeking to trademark her name in light of her growing popularity as a motivational speaker “in the field of life choices.”  After having a baby out of wedlock at age seventeen, Bristol frequently speaks to teenagers about pregnancy and sexual abstinence.

It is typically uncommon for people in the political arena to formally trademark their names.  That is usually reserved for the likes of celebrities in the fashion, entertainment and sports industries who want to associate their branded names with commercial products and services. 

Either way, with the story of the incorrectly filed trademark applications picked up by many news outlets, the Palins may want to look into hiring an intellectual property law firm to file trademark applications in the future.

Ferrari.jpgSan Diego – To honor the 150th anniversary of Italy’s unification, Italian luxury sports car-maker Ferrari announced it’s new Formula One sports car called the F150.  Not so fast said American auto-maker, Ford.  Ford is arguing that Ferrari’s use of the trademark will likely cause confusion with consumers.

On Wednesday, February 9th, 2011, Ford sued Ferrari in federal court for cyber squatting and infringing on the famous F150 trademark.  Ferrari created the website ferrarif150.com to correspond with the release of the sports car.  Ford spokeswoman, Anne Marie Gattari, stated, “When Ferrari announced the name of its race car as ‘F 150,’ Ford asked Ferrari to change the name.  Ferrari did not respond in a timely matter, leaving Ford no choice but to take legal action to protect its important brand and trademark rights.”

Ford obtained a trademark registration for F-150 in 1995, however it has been using the name since 1975 for its full-size line of pick-up trucks.  In the lawsuit, Ford claimed that the F-150 trademark has suffered irreparable harm and is seeking to stop Ferrari from using the trademark in the U.S.  Ford is also suing for unspecified damages and for the Italian auto-maker to relinquish any revenue and profits it earned in the U.S. through the sale of its F150 sports car.  As for their claim of cybersquatting, Ford is asking for $100,000 in damages.

Ferrari is obviously disputing any likelihood of confusion between the two F150’s.  A spokesperson for the company said, “Ferrari believes that its own contender in the forthcoming F1 championship cannot be confused with other types of commercially available vehicles of any sort whatsoever, nor can it give the impression that there is a link to another brand of road-going vehicle.  Therefore it is very difficult to understand Ford’s viewpoint on the matter.  Despite this and to further prove it is acting in good faith and that it operates in a completely correct manner, Ferrari has decided to ensure that in all areas of operation, the abbreviated version will be replaced at all times with the full version, Ferrari F150th Italia.”

Ford has not since responded to Ferrari’s statement or has yet dropped the lawsuit.  Though at first blush Ford’s claim may seem a little silly, we don’t think it is.  Should Ford allow Ferrari to use the F150 trademark in relation to Ferrari’s automobiles, it would become much harder to stop a similar infringement in the future.

football.jpgOrange County – The Pac-10 is no stranger to competition.  The west coast college athletic conference has now expanded by two teams and could be facing its toughest competitor yet.  It appears that a dedicated Tupac Shakur fan is already the owner of the trophy at stake: the domain name pac12.com.

The domain, which was registered in 2005, was initially created as a memoriam to the slain rapper who was gunned down in 1996.  In a reactionary move to a recent domain name dispute complaint filed by the Pac-10 with the World Intellectual Property Forum, the domain started offering an Amazon-related widget that plays 2Pac albums.  In addition to the widget, the domain owner also added a shopping cart feature where one can purchase 2Pac items such as boxer shorts, key chains, ice buckets, posters, shot glasses, t-shirts, mouse pads, ect.  According to the website, all proceeds from the sales go to The Tupac Amaru Skakur Foundation, a nonprofit organization started in 1997 by the rapper’s mother.

The conference seeks ownership of the domain name for branding purposes.  The suit could be the beginning of negotiations in a financial settlement between both sides, resulting in the athletic conference securing ownership of the domain – for a price of course.