Sex, Apps, and Rock-and-Roll

Posted by on Aug 22, 2013 in Litigation, Trademark

Rock legend gets to continue lawsuit against HP for selling penis-measuring app named after himEvans v. Hewlett-Packard Co., 2013 WL 4426359 (N.D. Cal. Aug. 15, 2013)

English: Photo of Chubby Checker when he was i...

(Photo credit: Wikipedia)

Want to test the urban myth that a man’s shoe size is a good measure of his you-know-what?  Well, there’s an app for that.  Or there was.  And the app store that sold it is being sued by the app’s namesake, who isn’t thrilled that his name was associated with a digital ruler for male nethers.

“The Chubby Checker” was an app for estimating the size of a man’s genitals based on his shoe size.  Hewlett-Packard’s subsidiary, Palm, Inc., offered the app for sale on its app store.  The name of the app is a pun based on “Chubby Checker,” the stage name of rock-and-roll legend Ernest Evans.  Evans and the companies who owned registered marks associated with the name “Chubby Checker” sued HP and Palm for trademark infringement and dilution, federal unfair competition, and various state law claims.

The defendants tried unsuccessfully to dismiss the trademark infringement claim.  The complaint sufficiently alleged a claim of contributory infringement against the defendants, the court found.  Plaintiffs alleged that the “Chubby Checker” name and mark was internationally famous.  The defendants also allegedly maintained “primary control” over the use of the mark by setting up a detailed application and approval process for the app.  Thus, the court ruled that it was plausible to infer that the defendants knew or could have reasonably concluded that the plaintiffs would not have consented to license the “Chubby Checker” mark for use with the app.

The defendants fared better in their attempt to dismiss the state law claims.  The defendants invoked Section 230 of the Communications Decency Act, which immunizes internet service providers from tort liability based on content published by third parties.  The plaintiffs did not allege that the defendants created the app.  Instead, third parties created the app.  Since the defendants were internet service providers rather than content providers, Section 230 required dismissal of the state law claims.

LegalTXTS Lesson: This ruling could be a major setback for app store operators.  Essentially, it means an app store could be sued for contributory trademark infringement whenever one of the apps it sells is the subject of trademark litigation.  That might make some sense if the app store set up an approval process that includes review of the intellectual property rights used by apps (e.g., see how the app Pic Bubbler fared in the review process for the Apple App Store), but not if such review is missing from the app approval process (Google Play, for example, employs a minimal review process).  And you can bet the app store operator is a prime target for litigation if it’s a deep pocket.  Like in this case, who would you rather sue—HP, or the creator of The Chubby Checker, which apparently sold a mere 88 copies at 99 cents each?

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Click Confusion Not the Same as “Actual Confusion”

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

Spike in YouTube Views and Google Search Errors Insufficient to Prove “Actual Confusion” in Trademark Infringement ClaimScorpiniti 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.

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ICANN, You . . . Can’t

Posted by on Jul 2, 2012 in Litigation, Trademark

ICANN not a “domain name authority” under ACPA; no in rem jurisdiction in district where ICANN is basedVizer v., 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 (  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.

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