Court allows discovery of competitor’s keyword purchases

Scooter Store, Inc. v. Spinlife.com, LLC, 2011 WL 2160462 (S.D. Ohio June 1, 2011)

The Scooter Store and a related company sued a competitor for trademark infringement and other causes of action for unfair competition based in part on the competitor’s purchase of keywords such as “scooter store” and “your scooter store” to trigger sponsored advertisements on the web. Defendant moved for summary judgment and also moved for a protective order that would prevent it from having to turn over information to plaintiffs concerning defendant’s purchase of the keywords. The court denied the motion for protective order.

Defendant argued that it should not have to turn over the information because plaintiffs’ trademark claims based on those keywords were without merit, as the words are generic terms for the goods and services plaintiffs provide. Defendant also asserted a need to protect the commercially sensitive nature of information about its keyword purchases.

The court rejected defendant’s arguments, ordering that the discovery be allowed. It held that “whether or not [p]laintiffs’ claims involving these terms survive summary judgment [] has no bearing on whether the discovery [p]laintiffs seek is relevant, particularly viewed in light of a party’s broad rights to discovery under Rule 26.” As for protecting the sensitivity of the information, the court found that such interests could be protected through the process of designating the information confidential, and handled accordingly by the receiving party.

Court throws out Facebook’s lawsuit against Teachbook.com

Case dismissed because federal court in California did not have personal jurisdiction over Illinois resident.

Facebook, Inc. v. Teachbook.com, LLC, 2011 WL 1672464 (N.D.Cal. May 3, 2011)

Last year Facebook made us wonder if it had gone off its meds when it filed a trademark infringement lawsuit against Illinois-based Teachbook.com. More than one commentator thought Facebook was being overzealous in its efforts to claim exclusivity in the term “book” for social networking services.

However one contenances the action, the court has shut the cover on the first chapter. The U.S. District Court for the Northern District of California (where Facebook is located) held that it lacked personal jursidction over the Illinois defendant. So it dismissed the case.

Applying the well-known “effects test” from Calder v. Jones, the court found that Teachbook had not expressly aimed its conduct into California:

Teachbook does not register users in California. Thus, even if Teachbook intended to compete with a California company, it intended to compete for users who were not in California. The fact that an essentially passive Internet advertisement may be accessible in the plaintiff’s home state without “something more” is not enough to support personal jurisdiction in a trademark infringement suit brought in the plaintiff’s home state.

So if the fight continues, it won’t take place in Facebook’s back yard.

Court enters injunction against use of Twitter accounts in trademark case

Black Sheep Television, Ltd. v. Town of Islip, 2010 WL 4961669 (E.D.N.Y., December 6, 2010)

The Long Island Macarthur Airport is in a dispute with a company over that company’s alleged cybersquatting and the creation of websites that apparently a number of people have confused with the airport’s official marketing efforts. That company has also registered some Twitter accounts with usernames that incorporate the airport’s trademarks.

The airport has alleged trademark infringement and other similar claims against the company, and moved for a preliminary injunction. The court granted the motion, ordering (among other things) the Twitter accounts to remain in the ownership, custody, and control of the airport throughout the pendency of the litigation.

[Download the opinion]

Personal name in web search results did not support Lanham Act claim

Stayart v. Yahoo, — F.3d —, 2010 WL 3785147 (September 30, 2010)

Plaintiff performed a vanity search of her own name on Yahoo and found some results on porn and pharmaceutical sites. When Yahoo would not remove the search results upon plaintiff’s request, plaintiff sued under Section 43(a) of the Lanham Act. She claimed that the results showed a false endorsement by her of the pornographic and pharmaceutical sites.

Yahoo moved to dismiss, arguing that plaintiff was without standing to challenge this use of her personal name under Section 43(a). The district court granted the motion. Plaintiff sought review with the Seventh Circuit. On appeal, the court affirmed.

It held that plaintiff had failed to show she had a commercial interest in her name. Such interests are the only ones protectible under Section 43(a). Attempting to overcome this hurdle, plaintiff urged the court to consider her online activities such as writing “scholarly articles” and some poetry to be commercial services.

The court rejected this argument, noting that while those goals may be passionate and well intentioned, they are not commercial. Absent commercial activity, plaintiff lacked standing under the Lanham Act.

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