Click Confusion Not the Same as “Actual Confusion”

Posted by Elijah Yip on Feb 8, 2013 in Social Media, Trademark

Spike in YouTube Views and Google Search Errors Insufficient to Prove “Actual Confusion” in Trademark Infringement Claim – Scorpiniti v. Fox Television Studios, Inc., 2013 WL 252453 (N.D. Iowa Jan. 23, 2013)

Scorpiniti v. Fox Television Studios, Inc. is the latest case involving use of Internet popularity to prove infringement of a trademark or trade dress.  In this case filed in Iowa’s federal district court, the plaintiff unsuccessfully argued that a sudden rise in the number of hits on a YouTube page bearing the mark in question is evidence of “actual confusion.”

The plaintiff, Louis J. Scorpiniti (Scorpiniti) registered the mark “THE GATE” with the U.S. Patent and Trademark Office for use in relation to “television broadcasing.”  In 2007, Scorpiniti was developing his own religious-themed music television show, The Gate.  Scorpiniti created a website for the show and completed a pilot (which he posted on YouTube) and the first episode (which he posted on his Facebook page).  He never broadcasted his show on TV.

Fox Television Studios, Inc. (Fox) filed an application with the USPTO to register the mark “THE GATES” for use in relation to a new TV series, “The Gates”, about a police officer who moves into gated community inhabited by supernatural beings.  Scorpiniti initially filed a Petition for Opposition to Fox’s mark, but later withdrew the petition and chose instead to sue Fox for trademark infringement.  The Gates aired on ABC stations from June to September of 2010.

To prove infringement, Scorpiniti had to show that Fox’s use of THE GATES “creates a likelihood of confusion” between the two TV programs.  One of the factors relevant to determining if there is “likelihood of confusion” is evidence of actual confusion.

The pilot episode of The Gate that Scorpiniti posted on YouTube experienced a spike in the number of views during the summer of 2010 when ABC was advertising The Gates.  Scorpiniti argued that this was evidence of actual confusion.  The court disagreed.  Also unpersuasive to the court was the fact that a Google search of the term “abc the gate” yielded results in which Fox’s TV show was misspelled as “The Gate.”  Spelling errors in an internet search or the fact that someone stumbles upon Scorpiniti’s YouTube video due to a search illustrates inattentiveness or carelessness on the part of the searcher, not actual confusion, the court said.  Any viewer who mistakenly viewed the pilot episode of The Gate while searching for The Gates would be able to tell that the two shows come from different sources based on differences in their appearance, content and production value.

You “Like” Me? I Must Be Famous!

Posted by Elijah Yip on Dec 13, 2012 in Advertising and Marketing, Social Media, Trademark

One of the requirements for proving a claim for trade dress dilution is that the claimant’s trade dress must be “famous.”  15 U.S.C. § 1125(c)(4).  Surveys to establish famousness are notoriously expensive.  Can social media provide a cheap alternative  to a survey?  Not exactly, but one court made a step in that direction.  Paramount Farms Int’l LLC v. Keenan Farms, 2012 WL 5974169 (C.D. Cal. Nov. 28, 2012), is the first case I know of that recognizes brand recognition among social media users as an indication of famousness.

In analyzing whether the plaintiff established the required elements of a trade dress dilution claim, the court in Paramount Farms noted that the plaintiff had a Facebook page with almost 300,000 “likes.”  The court did not regard the “likes” as conclusive evidence of actual recognition of the plaintiff’s associated trade dress, but did note that the brand’s Facebook popularity gave credence to other evidence that the trade dress has become famous.

Well, a Facebook “like” might not be protected under the First Amendment, but at least it’s good for something.

Google’s Typosquatting Claim Rejected

Posted by Elijah Yip on Jul 26, 2012 in Trademark

Google has lost a domain name arbitration against the owner of Oogle.com.  According to a report by the Domain Name Wire, Google charged the registrant of Oogle.com with cybersquatting.  Google was not happy that the domain name, which someone intending to visit its popular search engine could easily type in by mistake, points to porn sites.  It didn’t help either that Oogle.com was being offered for sale on a common domain name auction site for $300,000.  In his defense, the registrant argued that he registered the name before the Google mark was registered and gained popularity, although there is a dispute about whether a Whois search corroborates that.  The registrant also swore in a declaration that he registered the domain name because he was acquainted with a programmer who used the handle “Oogle” or “Criminal Oogle.”

The National Arbitration Forum panel expressed “extreme suspicions” about the registrant’s explanation, but ultimately found that Google failed to prove bad faith registration of the domain, which is required to obtain an order canceling or transferring a domain name.  So, the registrant can keep his name for now.  The panel did suggest that discovery in a legal proceeding could uncover evidence of bad faith.  Read the full decision here.

LegalTXT Lesson: Domain names can be valuable for branding purposes, so it’s important to brainstorm about  what typo-variations of your registered domain that you should also register.  At the same time, there are endless ways a domain name can be mis-typed, so one can only do so much (plus, being overzealous in registering domain names could in turn expose you to cybersquatting claims).  Still, considerable thought should be given to registering obvious typos, especially those with a salacious ring to it — like oogle, which does not require much imagination to associate with “adult” content.

ICANN, You . . . Can’t

Posted by Elijah Yip on Jul 2, 2012 in Litigation, Trademark

ICANN not a “domain name authority” under ACPA; no in rem jurisdiction in district where ICANN is based — Vizer v. Vizernews.com, 2012 WL 2367130 (D.D.C. June 22, 2012)

First off, my apologies for writing two consecutive posts with headlines that play off the word “can’t.”  Now on to more serious matters…

This case scuttles one way of getting a quick default judgment against a cybersquatter who is nowhere to be found.  The plaintiff (Vizer) wanted to bring a cybersquatting suit against the registrant of a domain name that contained his last name and was linked to a website dedicated to providing news about him (Vizernews.com).  Vizer couldn’t identify the registrant of the domain name; the domain was registered anonymously and the registrant used a privacy service to hide its contact information.  Vizer therefore brought an in rem action under the Anti-Cybersquatting Consumer Protection Act (ACPA).  Vizer is correct that the ACPA allows a trademark owner to file an in rem civil action against a domain name in the judicial district in which the “domain name registrar, domain name registry, or other domain name authority is located.”  The issue is, did Vizer file in the correct judicial district?

Vizer filed the in rem action in Washington, D.C. on the theory that the Internet Corporation for Assigned Names and Numbers (ICANN) maintains an office there.  The court dismissed the case because ICANN didn’t fit into any category of entities who can be sued in rem under the ACPA.  ICANN is not the domain name registrar (in this case, Melbourne IT, LTD d/b/a Internet Names Worldwide) nor the registry (in this case, VeriSign, Inc.).  Vizer argued that ICANN is a “domain name authority,” but the court rejected that suggestion.  According to the court, the term “domain name authority” refers to an entity that has some authority over the domain name, i.e., it plays a role in registering or assigning domain names.  ICANN doesn’t do either of those things.  Although ICANN coordinates the global domain name system, it doesn’t actually assign specific domain names or maintain a registry of such names.  The court also found persuasive legislative history of the ACPA stating that the in rem provision was not meant to cover ICANN.

LegalTXT Lesson: It looks like Vizer’s attorneys did their homework before going the in rem route.  I’m not sure what they could’ve done differently, except one wonders why they didn’t file in where the registrar (VeriSign) is located.  Verisign is based in Reston, Virginia, just a short distance far from D.C.

Proof of Ownership Required

Posted by Elijah Yip on Jun 8, 2012 in Litigation, Trademark

Only owner of a mark can sue for cybersquatting — Garruto v. Longo, 2012 WL 1981838 (D.N.J. June 1, 2012)

Say a disgruntled customer of your business decides to complain to the world about how dissatisfied he is with the product you sold him.  He writes scathing online reviews.  He even goes so far as to register a domain name that includes part of your company’s name.  What can you do?

At first glance, one solution might be to sue under the Anticybersquatting Consumer Protection Act (ACPA).  But not so fast.  First, you need to be the legal owner of the trademark that’s part of the offending domain name.  The plaintiff in Garruto v. Longo apparently overlooked that step.

A pet store (Fancy Pups, Inc.) sold a German Shepherd puppy to the defendant (Longo).  Immediately after the sale, the puppy contracted the parvo virus and died.  Longo claimed the puppy contracted the virus at Fancy Pups.  According to the complaint, Longo then “began an internet crusade to run Fancy Pups out of business.”   Longo allegedly posted photos of the dead puppy on the Internet, called the owner of Fancy Pups a “puppy killer,” and labeled Fancy Pups a “puppy mill.”  Longo voiced her complaints on online review websites like Yelp! and published advertisements in a local newspaper.  Longo also created a company profile for Fancy Pups on Manta.com.  In the profile heading “About Fancy Pups,” Longo stated: “We sell sick puppies at top dollar that will die.  I am an unscuplious [sic] man who will take your money and leave you with a dead dog.  I am evil LIAR.”

Fancy Pups and its owner sued Longo under the ACPA.  Notably missing in the complaint was an allegation that “Fancy Pups” was registered as a trademark by the plaintiffs or that it is a famous mark that everyone knows.  This omission proved fatal to the ACPA claim.  A cybersquatting claim must be brought by the “owner of a mark,” and the plaintiffs failed to establish that “Fancy Pups” was entitled to trademark protection.  The court also noted that there was no allegation that Longo registered a domain name that included “Fancy Pups.”  The court concluded without much discussion that posting a fake profile on an online business directory like Manta.com does not constitute cybersquatting.

LegalTXT Lesson: Register your trademarks.  The ACPA won’t help you if you can’t establish you own the marks you’re trying to protect.