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.

Don’t Shoot the Host

Posted by Elijah Yip on Jul 17, 2012 in Defamation, Journalism

Section 230 of the CDA protects online news website from defamatory comment posted by anonymous person — Hadley v. Gatehouse Media Freeport Holdings, Inc.,2012 WL 2866463 (N.D. Ill. July 10, 2012)

This is a pretty straightforward Section 230 case.  Gatehouse Media Freeport Holdings, Inc. publishes The Journal-Standard.  Like many modern newspapers, The Journal-Standard is available in print and online.  The Journal-Standard published an article about Bill Hadley, a candidate for political office.  An anonymous person using the name “Fuboy” posted an online comment to the article saying that “Hadley is a Sandusky waiting to be exposed.  Check out the view he has of Empire from his front door.”  Hadley sued Gatehouse Media for defamation.

Gatehouse Media got the lawsuit dismissed based on Section 230(c)(1) of the Communications Decency Act of 1996, which provides that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”  47 U.S.C. § 230(c)(1).  As a website host that allows readers to post comments, Gatehouse Media was an “interactive computer service.”  A user who posts comments on the newspaper’s website is “another information content provider.”  That means Gatehouse Media is not considered the publisher or speaker of the allegedly defamatory comment directed at Hadley.

Hadley hypothesized that Gatehouse Media could have invented a fictitious person named “Fuboy” to post the comment anonymously.  There being no evidence, the court disregarded the argument as “sheer speculation.”

LegalTXT Lesson: Section 230 is a powerful shield against defamation in the digital age, and a much needed one given the ease with which anyone with a computer and an Internet connection can post outlandish remarks under the cover of anonymity on a website hosted by a member of the mainstreammedia.

Get Registered

Posted by Elijah Yip on Jun 26, 2012 in Copyright

Photographer barred from claiming statutory damages and attorneys’ fees for copyright infringement of unregistered photographs – Davis v. Tampa Bay Arena, Ltd., 2012 WL 2116136 (M.D. Fla. June 11, 2012)

This case is a good illustration of a basic concept in copyright litigation.  If you want to preserve the right to seek statutory damages and attorneys’ fees in case someone infringes on copyrights you own, make sure you register the copyright with the U.S. Copyright Office.

The plaintiff (“Davis”) photographed events at the Tampa Bay Times Forum under contract with the owner of the Forum (the “Forum”). The contract allowed the Forum use Davis’ photos for limited purposes, but apparently, publishing the photos on its Facebook page was not one of them.  Davis maintained ownership and copyright of all the photos he took at the Forum’s events.  Davis sued the Forum for copyright infringement for posting 255 of his photos on the Forum’s Facebook page, where other users could download the photos free of charge and without restriction.

In the face of as motion to dismiss filed by the Forum, the court let most of the claims in Davis’ complaint proceed because factual allegations in a complaint are assumed to be true at that early stage of the case.  However, Davis admitted that he had a registration certificate for only 40 of the 255 photographs.  The court therefore dismissed Davis’ infringement claims for statutory damages and attorneys’ fees for based on the 215 photographs for which Davis did not allege he had a registration certificate.

LegalTXT Lesson:  The takeaway from Davis is pretty straightforward.  A copyright registration with the U.S. Copyright Office is required to recover statutory damages and attorneys’ fees for copyright infringement.  Without being able to recover statutory damages, the copyright holder has to prove actual damage or profit from the alleged infringement, which could be a difficult exercise.  The prospect of shifting attorneys’ fees to the loser in a copyright infringement case also gives the copyright holder added leverage.  Consult an attorney to make sure you satisfy all the requirements for bringing a copyright infringement action.