Posts Tagged ‘bully’

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A friend recently asked for my counsel with respect to a claim that his company was cybersquatting. In short, he was accused of registering and using another company’s domain with the intent to profit from the other company’s goodwill. In this case, my friend, in a stroke of foresight, bought a host of domains in the late 1990s, to secure his company’s online presence. One of these included a domain very similar to the alleging company’s trademark. But he had purchased the domain with the intent the use it in his business, and, get this, it was over 10 YEARS before the alleging company even used the name! They had the gall to send a cease and desist demanding that he turn over the domain, without compensation, and stop using it (and probably to say he was super duper sorry and really bad too).

He had a few options. Turn it over and be done with it. C’est la vis. I didn’t like that one since the other company was being a bully, and they had no rights to the domain. The better option was to string them along a little while longer until they made an initial offer to purchase (or came up with better proof of our infringement). I was hesitant to advise that we offer to sell, as offering the domain for sale is part of an element of cybersquatting. But what is cybersquatting, specifically, and what isn’t it?

Cybersquatting is registering, selling or using a domain name with the intent of profiting from the goodwill of someone else’s trademark. It generally refers to the practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses.

Allow me to add that my friend and his competitor are not “famous” like some of the early victims of cybersquatting (such as Panasonic, Hertz, and Avon).

Under the provisions of the Anticybersquatting Consumer Protection Act (ACPA), a trademark owner may sue an alleged cybersquatter in federal court to seek an order transferring the domain back to the trademark owner. Sometimes, the cybersquatter must pay damages to the owner.

To prove cybersquatting, the trademark owner must prove the following:

  1. the domain name registrant had a bad-faith intent to profit from the trademark
  2. the trademark was distinctive at the time the domain name was first registered
  3. the domain name is identical or confusingly similar to the trademark, and
  4. the trademark qualifies for protection under federal trademark laws — that is, the trademark is distinctive and its owner was the first to use the trademark in commerce.

If the accused cybersquatter demonstrates a reason to register the domain name other than selling it to the trademark owner, he will probably get to keep it.

Here, my friend registered the domain. No question there. But even he lacked bad faith intent, that is ultimately a question of fact. Next, the trademark was not distinctive when my friend registered his domain — it didn’t even exist! So, the second element should win the day. Skipping element 3, since we could argue all day over whether it was “similar”, does the mark qualify for protection and was the owner the first to use it in commerce? We know he wasn’t first to use it, since we beat him to the punch by at least a decade.

Going back to whether my friend had a bad faith intent to profit, a court may consider many factors, including nine that are outlined in the statute:

  1. the registrant’s trademark or other intellectual property rights in the domain name;
  2. whether the domain name contains the registrant’s legal or common name;
  3. the registrant’s prior use of the domain name in connection with the bona fide offering of goods or services;
  4. the registrant’s bona fide noncommercial or fair use of the mark in a site accessible by the domain name;
  5. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
  6. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
  7. the registrant’s providing misleading false contact information when applying for registration of the domain name;
  8. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others; and
  9. the extent to which the mark in the domain is distinctive or famous.

I believe we prevail on all enumerated factors. We were using the domain for legitimate business, before the other party even used the mark they now own. I don’t take well to bullies, especially when their claims are groundless. Before threatening others, you’d be wise to learn what cybersquatting is, and what it isn’t.

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By: Mark R. Malek

This story hits a little close to home because of my love for the Angry Birds game.  I don’t think it is the game that gets me so much as it is the noises that the birds make as they are rocketed from a sling shot to perform all manner of acrobats while destroying a structure in hopes of making a green blob explode.  It doesn’t hurt that the games are generally free through the Android Marketplace or the App Store.

We are so confused by this Patent Troll

Going past the free levels, however, is where the problem allegedly lies.  Although many of the levels are free, there are some additional levels that are available for purchase by users.  According to this story on Benzinga, which sites another story on The Telegraph, the Lodsys patent allegedly includes claims that cover a method for allowing players to purchase new levels inside its mobile application.  (See also this story on CBR)

Of course, the common theme that I have been seeing in many of these stories is that there is a problem with allowing patents on software – let the comments begin.  I, of course, do not see any problem with patents on software.  Many software developers disagree, but I do not believe that they are applying U.S. patent law when making their arguments.  In short, a U.S. patent, and patents in general, are meant to provide protection on the functionality of an invention.  So what is wrong with protecting the functionality of a piece of software?  The software field is so crowded, that any allowable software patent application is generally focused on a very specific function, and the manner in which that function is carried out.  We got a bit (a very little bit) of direction from the United States Supreme Court in their Bilski decision a little over a year ago (see my story on Bilski here), and with that, we were presented with the “machine or transformation” test, but were also told that this test was not the only test out there.  I guess we will have to wait and see what other tests there are, but we know that “machine or transformation” does not stand alone.

I was pleased to read the article regarding this matter by my good friend Gene Quinn, founder of IPWatchDog.com, and one of the teachers of the patent bar review course presented by PLI.  Gene points out what I believe is the bigger issue – the patent troll.  Gene notes that a patent troll generally gets the process started by finding an attorney willing to take a patent infringement case on contingency, and filing a complaint riddled with broad allegations.  That is part of the reason why the story’s regarding this Angry Birds infringement matter are a bit vague.  We are not too sure what aspect of the Angry Birds game is allegedly infringing.

We will have to wait and see how this, and the other Lodsys suits, turns out.  It will be interesting to see if Apple keeps out of this somehow.

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By: Mark R. Malek

I came across a story on the Businessweek Magazine Website that rang my trademark bully alarm.  It seems as though Entrepreneur Magazine, which publishes a magazine geared towards the interests of, wait for it, wait for it – entrepreneurs, is suing  entrepreneurs for trademark infringement.  As I was initially reading the story, I was thinking – ok, this author might not have it right.  Entrepreneur Magazine is probably only really going after folks who are putting out competing magazines and using the “Entrepreneur” trademark for their magazines.  Unfortunately, Paul Barrett did understand and was right on.

Entrepreneur Magazine’s latest victim is Daniel Castro, who operates the website EntrepreneurOlogy.com.  Daniel is described as being a serial entrepreneur, having started several different businesses. EntrepreneurOlogy.com is website that, essentially, promotes Mr. Castro as an aid to entrepreneurs and provides tools to “corporate executives to get back to the basics of entrepreneurship.”  Entrepreneur Magazine does have a trademark for “Entrepreneur,” among many others, as used in relation to “advertising and business services, namely, arranging for the promotion of the goods and services of others by means of a global computer network and other computer online services providers; providing business information for the use of customers in the field of starting and operating small businesses and permitting customers to obtain information via a global computer network and other computer online service providers and; web advertising services, namely, providing active links to the websites of other.”

Point of order – isn’t this exactly what entrepreneurship is?  At least a part of it?  For example, “providing business information for the use of customers in the field of starting and operating small businesses.”  Is that not the same as saying “providing business information to entrepreneurs?” Seems to me that, if I were Entrepreneur Magazine, I would be somewhat careful about trying to flex some trademark muscle against folks…especially against my own customer base.  Has this trademark registration been put to the test yet?  Seems to me as though suing your target audience is not a very bright idea.  How are entrepreneurs supposed to trust anything in a magazine for entrepreneurs that involves the advice of “sue your target audience?”

Time to play devil’s advocate.  Let’s say that I am the trademark attorney for Entrepreneur Magazine, and let’s say that my client comes to me with a list of potential infringers.  On that list are three magazine publishers that include the mark “Entrepreneur” in their title, and three websites that are titled “Entrepreneur” and that each provide business information for the use of customers in the field of starting and operating businesses.  I probably advise my client to ask the magazines to stop immediately.  I probably then tell my client that it is time to do a very in-depth analysis of the websites.  My question to my client is the following: “how else do you think this website should describe their target audience, i.e., how else would you refer to someone that is starting a new business?”  If the answer is anything remotely close to “it wouldn’t make sense to call them anything but entrepreneurs,” then I ask my clients to probably reconsider going after the website, especially if the website merely incorporates the word “entrepreneur” into their title.

If your trademark is the only way to say a particular thing, i.e., your trademark becomes the generic term, then it is not protectable.  For example, the following used to be trademarks: aspirin, trampoline and escalator.  Here are a few that I just can’t believe are still around: Band Aid, Popsicle and Jacuzzi.  Seems to me as though Entrepreneur needs to watch its step here.  I’m not saying that entrepreneur is becoming generic as to magazines for business start ups, I’m just saying that a trademark registration does not give them the ability to remove the word from the lexicon.

 

 

 

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By: Mark R. Malek

According to an article on Domains.com, Facebook has filed suit against FacebookOfSex.com for trademark infringement.  According to another article on XBiz.com, this is related to the FriendFinder issue that I reported on last week.  I was really wondering about the details of what was going on with the “FriendFinder” trademark.

It seems as though the folks who run FriendFinder.com and AdultFriendFinder.com also run FacebookOfSex.com.  This is apparently one of their chat sites.  So it does not seem as though the fight is over “FriendFinder” as I had originally reported.  In the complaint, Facebook alleges that the launch of FacebookofSex.com was a “calculated scheme to capitalize on the fame of Facebook’s marks.”

For once, I am going to agree with Facebook and take their side on this issue.  When it comes to this lawsuit, I cannot call them trademark bullies.  As you know, I have been critical of Facebook’s tactics in the past.  See my articles here, here, here, and here.  This is not the first time that Facebook has encountered the need to stop the porn industry from using their mark.  You may recall in one of my previous articles that Facebook had to sue Faceporn for trademark infringement and, as of now, the Faceporn page is down.

I tweeted this story earlier this week (feel free to follow me @PTOLawyer) and one of the immediate responses I got back was from my good friend Patrick Anderson (Patrick runs an intellectual property blog – check it out http://gametimeip.com/.  He also tweets @pandersonllc).  Patrick’s response was very accurate – “I’ve never seen the ‘face book of sex’ used in commerce, but that’s one where FB just can’t sit on its hands…” I have to say that I agree with Patrick’s response.  If Facebook value’s their trademark portfolio, which they clearly do, then they have to stop this kind of activity.

I truly cannot think of a legal argument that would give FacebookOfSex.com a leg to stand on.  They are using Facebook’s trademark in its entirety in substantially the same classification, i.e., social media.  Sure these are two very different types of social media, but they are related nonetheless.  The likelihood is small that someone looking for Facebook would be confused if they landed on FacebookOfSex.com and saw some rather graphic pictures.  This trademark argument likely goes more towards dilution, i.e., diluting the value of a very famous trademark.  Facebook is, arguably, one of the more valuable trademarks out there and I believe that the dilution argument will be available for this case.

I will certainly follow this case, but I highly doubt that it gets too far.  I suspect there will be a rather quick settlement reached once FacebookOfSex.com comes to the realization that they are on the wrong side of the law with this one.

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By: Mark R. Malek

Although I do not have much information about it yet, a recent article indicated that Facebook has filed a trademark infringement lawsuit against Friend Finder and Adult Friend Finder.  Apparently, the function on Facebook that allows people to find “friends” is referenced as a “friend finder.”  A quick search of the USPTO records, however, indicate that “FriendFinder” and “AdultFriendFinder” are registered trademarks of Friendfinder, Inc.  The “AdultFriendFinder” trademark was used in commerce at least as early as 1996, as was the “FriendFinder” trademark.  I do not recall Facebook being around that early, so I am not sure where Facebook is coming from with this one.

As our readers know, I have been somewhat critical of Facebook’s trademark enforcement tactics.  See my previous articles about Facebook here, here, and here.  Although, to be perfectly open and honest – I would love to be one of the attorneys selected by Facebook to zealously (and I mean zealously) enforce the Facebook trademark portfolio.  I am pretty sure that such a client could keep me and maybe a couple other attorneys in our firm somewhat busy!

The complaint was not yet available for download and review, but as soon as I get a copy of the compliant, I’ll try to post an update so that we can figure out what Mr. Zuckerburg is up to now.  I really wonder if any of these decisions are run by him.  Who makes the decision to file these lawsuits?  Is Zuckerberg briefed by a team of attorneys as to who they think is infringing the Facebook trademark portfolio and he makes the decision on who to sue and who not to sue?  For some reason, I highly doubt he is involved in the process at all.

I will post a little bit more about this as I get more information.  In the meantime, please feel free to become a fan of TacticalIP at http://www.facebook.com/TacticalIP.


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