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May 31, 2007 Trademarks

No stay of action in PODFITNESS trademark case

Apple Computer, Inc. v. Podfitness, Inc., No. 06-5805, 2007 WL 1378020 (N.D. Cal. May 10, 2007)

Podfitness.com provides a service whereby users can download workout routines onto their iPods. When Podfitness filed trademark applications for PODFITNESS, PODFITNESS.COM, PODPOCKET, and PODWORKOUT with the United States Patent and Trademark Office, Apple filed notices of opposition with the Trademark Trial and Appeal Board (“TTAB”), seeking to prevent the marks from registering. Apple also filed a federal lawsuit against Podfitness, alleging that the company’s “entire marketing strategy appears to consist of hitching its wagon to Apple’s star.”

Defendant Podfitness moved to stay the proceedings pending the outcome of the oppositions before the TTAB. The court denied the motion to stay.

Podfitness provided two arguments why a stay would be appropriate. First, it argued that since the question of likelihood of confusion would be central to all of Apple’s claims, the court should wait to see how the TTAB rules on that point. Second, Podfitness claimed that Apple has initiated numerous other oppositions before the TTAB seeking to preclude others from registering trademarks containing word combinations which include the term “POD,” and therefore a stay would further the interests of judicial economy because the TTAB’s decision would comprehensively adjudicate Apple’s right to preclude others from using POD-formative marks.

In denying the motion for a stay, the court looked to the doctrine of “primary jurisdiction.” Under this doctrine, a court should stay proceedings which are properly within the jurisdiction of, and are in fact presently under consideration by, an agency with extensive regulatory powers over the subject matter and the parties involved.

Podfitness argued that a stay of the action pending the TTAB’s decision would promote a uniform and efficient adjudication of the parties’ rights, while, at the same time, avoiding the potential for inconsistent judicial determinations concerning Apple’s rights to preclude others from using POD-formative marks. Apple countered that since the TTAB’s decision would only determine the registrability of Podfitness’s marks, the Court would still have to adjudicate its claims for trademark infringement, dilution, false advertising and unfair competition regardless of the substance of the TTAB’s determinations. Accordingly, Apple argued, a stay would only serve to delay the resolution of the issues, perhaps for years.

The court agreed with Apple’s arguments, observing that the TTAB would be incapable of resolving all of the issues between the parties. Granting a stay would only serve to postpone resolution of the issues, forcing the court to eventually adjudicate what would inevitably be stale factual claims. And in the interim, Podfitness would be able to continue its allegedly infringing activity unfettered.

So the benefit of prompt adjudication won out.

April 12, 2006 Miscellaneous

Blog Law & Blogging for Lawyers Seminar

I am quite honored to have been asked to speak at next week’s Blog Law & Blogging for Lawyers Seminar at the Pan Pacific Hotel in San Francisco. I will be speaking at 10:30 a.m. on Thursday, April 20, 2006 on defamation liability for bloggers and blog commenters. How humbling it will be to share the stage with Professor Raymond Nimmer, who will discuss intellectual property ownership issues relating to blogging.

The two-day seminar will feature appearences from a number of true law-and-technology luminaries, among them Kurt Opsahl, Lauren Gelman, Mia Garlick, and Denise Howell. My friend Dennis Crouch of the Patently-O blog is a co-chair of the seminar, and I thank him for the opportunity to be a part of this very interesting event.

If you’re a reader of InternetCases.com and you plan on being there, be sure to say hello.

October 3, 2005 Miscellaneous

Harriet Miers on the law and technology

I’ll leave it to the likes of Chuck Schumer, Ted Kennedy and Russ Feingold to complain incessantly over the next few weeks about not knowing enough about Harriet Miers, President Bush’s most recent nominee to the Supreme Court.

A look over the cases in which Miers has been involved as an attorney is scant on the topic of the law as it relates to technology. However, a quick search reveals that Miers and her Dallas firm Locke Liddel & Sapp have represented such heavyweights as Microsoft and RealNetworks. Notable decisions in cases where Miers was among the counsel of record include:

Microsoft Corp. v. Manning, 914 S.W.2d 602 (Tex.App. 1995) – Microsoft lost an appeal of the lower court’s grant of class certification in an action alleging breach of warranty, unjust enrichment, violations of the Magnuson-Moss Act, and violations of the Washington Consumer Protection Act. The underlying action dealt with issues surrounding disk compression technology embodied in Microsoft’s 1993 release of MS-DOS 6.0.

Shaw v. Broadcast.com, Inc. 2005 WL 2095770 (N.D. Tex., August 30, 2005) – Defendants Broadcast.com, Inc., Realnetworks, Inc. and Microsoft (represented by, among others, Miers) were awarded summary judgment in a patent infringement lawsuit brought by owners of a patent dealing with efficient transmission of streaming media.

August 18, 2005 Cybersquatting, Trademarks

Trademark on Supplemental Register no help in domain name proceeding

A WIPO administrative panel recently denied a request to transfer the domain name oilchanger.com, finding that the complainant had failed to prove the essential element of enforceable trademark rights in the domain name.

Oil Changer, Inc., operator of numerous oil changing facilities in California, claimed that its registration of the marks OIL CHANGER and OIL CHANGERS on the Supplemental Register with the United States Patent and Trademark Office served as prima facie evidence of its ownership and the validity of the marks. However, the panel refused to recognize any such presumption for marks on the Supplemental Register.

The panel determined that registration on the Supplemental Register was an admission that the marks were not inherently distinctive at the time the applications for them were filed. Further, the panel determined that registration on the Supplemental Register was evidence that there were no common law rights at the time of the applications. Finally, there was insufficient evidence in the record to show that the complainant’s marks had acquired secondary meaning.

Oil Changer, Inc. v. Name Admin., Inc., Case No. D2005-0530 (July 28, 2005).

July 22, 2005 Trademarks

Has Microsoft forgotten to file a trademark application for the name of its new operating system?

Microsoft has announced that the name of its new operating system coming out next year will be called “Vista.” As of the date of this posting, a search of the records of the United States Patent and Trademark Office reveals no applications on file for the mark VISTA owned by Microsoft. Is this an oversight or merely a consequence of the several day backlog for getting information about new applications online? Perhaps it’s just a load date issue.

Further: More observations on this subject over at Infamy or Praise.

And further: Dennis Crouch over at Patently-O has a this post on the delay one finds in the world of patent applications.

June 13, 2005 Miscellaneous

Blawg Review #10

[What is Blawg Review?]

There has been a lot of interesting legal news this past week, and the members of the blogosphere have been there to report and comment. Let’s get right to it.

For convenience, you can click on any of the links below to take you directly to discussion of that topic:

Legal ethics
Patent reform
Copyright reform
Tort reform
Medical marijuana
The practice of law
Employment law
Attorney fees
Evidence
Blogging basics
Podcasting
First Amendment
File sharing litigation
Trademarks
Reparations

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Free Ben Cowgill

. . . as Robert Ambrogi so aptly encourages in light of this controversy.

Loyal readers of Ben Cowgill’s Legal Ethics Blog might have noticed that he didn’t post much druing the month of May. On June 7th we learned the reason for the absence through Ben’s “I’m Back” posting. As Ben explains, a question raised by the Kentucky Attorney’s Adversiting Commission is whether an attorney’s weblog constitutes advertising. If it does, Kentucky blawggers would be required to submit to the Commission a copy of each blog posting and pay a $50 filing fee. After Ben announced the controversy, lively debate ensued. Here’s a wrap up of links to various commentators:

Kentucky says every blawg post is an ad (David Giacalone)

Blogging as Advertising? (Professor Bainbridge)

prof. bainbridge should concur, not dissent over ads (David Giacalone again)

KY Lawyers Welcome Here (Evan Schaeffer’s Legal Underground)

Blawgers As Advertisers? No More So Than The Kentucky Bar Association. (Craig Williams at May it Please the Court)

Ben Cowgill posted an update on his situation on June 10, which provides links to many other informative commentary on this subject.

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Patent Reform

Looks like the times they are a-changin’. Lots of folks talking about reform (e.g., copyright reform, tort reform, below). Dennis Crouch at the Patently-O: Patent Law Blog has this rundown of some important patent legislation introduced in the House on June 8. For more on patent reform, be sure to visit Matt Buchanan’s Patent Reform Library.

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Copyright Reform

Denise Howell of Bag and Baggage and Between Lawyers, has likened the present state of copyright law to an “aging house” with “infrastructure and plumbing [that] have reached the end of their useful lives.” With word pictures like that, you can imagine there’s some interesting discusison. Links on the topic are aggregated here.

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Tort Reform

Clay Conrad at jurygeek has developed a thesis that tort reformers want to eliminate the civil jury system. See if you agree by checking out
Tort Reform or Jury Elimination Part I and Part II.

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No More High Hopes for Medical Marijuana

Naturally there was plenty of talk this week of the Supreme Court’s decision in Gonzales v. Raich which essentially stikes down the states’ ability to permit the medical use of marijuana. Where else would one turn for commentary but the SCOTUSblog? As you’d expect, it’s hard to find postings there from the past week that do not deal with the case.

Indianapolis lawyer Stephen Terrell, who writes the new and witty Hoosier Lawyer blog, comments on an interesting choice of words by one Congressman in light of the Raich decision.

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Law Practice Management

E-mail for the simplest things

Respected for his experience, judgment, and wisdom, Ernie the Attorney provides a simple and useful account of using technology to run an efficient law practice.

Little firm, big firm

Marketing expert Seth Godin recently touted the virtues and benefits of the smaller-sized enterprise, and its ability to serve its clientele.

The Patent Baristas have an insightful analysis and critique of Godin’s proposition, and bring it into the law firm context, defending the big firm perspective. Kevin O’Keefe joins the debate on the side of the small firm.

Well-caffeinated lawyering

George Lenard reports that while engaging in his new pastime of viewing photos posted to Flickr (some of which, by the way, he says he uses for his blawg if under Creative Commons license permitting such use), he discovered an intriguing concept for a law office. Read his post to find out what it’s all about.

Electronic Discovery

Evan Schaeffer at The Illinois Trial Practice Weblog remarks how amazing it is that information as useful as Dennis Kennedy’s recent article on electronic discovery is available for free over the Internet. Dennis Kennedy has a whole lot more about electronic discovery here.

A Lawyer’s Life (and the Quality Thereof)

The Dark Goddess of Replevin points us to this attorney work/life balance calculator. If you think you hate your job now, just wait until you’ve tried this.

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You’ve Got to be Careful at Work

Your Life or Your Job — Literally

David Kopel writing at The Volokh Conspiracy discusses a wacky recent case where a 7-11 employee had been fired for acting in self-defense against a store robber.

Employment Agencies and Discrimination

Michael Harris, one of the co-bloggers at George’s Employment Blawg discusses a press release from the New York State Attorney General’s Office to formulate the warning Employment Agencies Beware! Discrimination Laws Apply To You, Too

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Getting the Scoop

Richard Radcliffe, an attorney in Newport Beach, California, writes lawreligionculturereview, and in this post, he has an interesting first-hand account of proceedings in which a court really hammered Home Depot on the issue of attorney fees.

Radcliffe’s weblog is an interesting read. Be sure to check out this post on the horror of receiving one’s bar exam results.

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Evidence

The Dark Goddess of Replevin strikes again and mulls over the evidentiary issues surrounding the “creepy” weblog entry of Simon Ng before his murder last month.

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Back to Basics

It’s 2005, but you still probably get the question, “What’s a blog?” Al Nye the Lawyer Guy gives us a link to an article he wrote for the Spring 2005 Maine Law Journal that lays it all out from A to Z. It’s a bit of work getting to the article (you’ve got to download a PDF file and scroll to page 39), but it’s worth the effort. And the Star Wars theme to the article makes it even easier to bring others over to the dark side of blogging. The article even has a glossary that defines “podcast.”

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Podcasting Lawyers

Speaking of podcasts, does anyone have an answer yet to the question of “Where have all the podcasts gone?” The boys over at rethink(ip) have chimed in with the rethink(ip) aloud podcast #4, an interview with The Invent Blog’s Stephen Nipper.

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Utah and Porn

. . . are not two subjects you often think of together, but those concepts are joined in the lawsuit reported on by Professor Eric Goldman, as he takes a look at how the ACLU is “leading a charge against Utah for their latest anti-porn initiative.”

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While We’re Waiting for Grokster

Professor Michael Geist examines the recent Canadian Federal Court of Appeal’s decision involving the recording industry’s attempt to identify 29 alleged file sharers.

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Trademark Law and the Philosophy of Language

If you ever find yourself interested in the doings of the Trademark Trial and Appeal Board, be sure to visit John Welch’s TTABlog. His case summaries are frequent and pithy, and his blog is inherently interesting due to the very particular niche on which it focuses. And speaking of inherent meanings, Welch goes off topic a bit this week with a clever little riddle which will elicit groans from many and laughter from those with a dry sense of humor.

While on the topic of niche blogs, attorney Patrick Jones maintains the UDRPLaw blog which tracks decisions over domain names under the Uniform Domain Name Dispute Resolution Policy. This past week, Patrick discusses how the clothing store American Eagle Outfitters lost a proceeding over the domain name americaneaglestores.com.

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Perspectives on Reparations

Large banks like Wachovia and J.P. Morgan Chase, which in many cases have rolled together the business of hundreds of smaller banks across the country, have been issuing public apologies for their predecessor institutions’ involvement with slavery.

At Overlawyered, Ted Frank and correspondent John Steele Gordon are critical of the trend, while editor Walter Olson wonders whether momentum is building for courtroom challenges to Southern land titles that could result in unprecedented legal battles. Their three posts at Overlawyered on the topic are here, here and here.

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And That’s the Way it is

. . . for the “blawgosphere” during the week of June 6, 2005.

This week, Bora Zivkovic of Science And Politics has a guest post on the Blawg Review weblog.

Blawg Review has information about next week’s host, and instructions how to get your blawg posts reviewed in upcoming issues.

March 9, 2005 Trademarks

Decision gives guidance on domain names as trademarks

John Welch at the TTABlog provides a detailed analysis of the Trademark Trial and Appeal Board’s recent decision in In re Eddie Z’s Blinds and Drapery, Inc. which affirmed the examiner’s refusal to register BLINDSANDDRAPERY.COM as a trademark.

If you’re familiar with the Trademark Trial and Appeal Board, you can stop reading this post and click on over to the TTABlog to read about the decision. For a little bit of context, read the next two paragraphs.

The Trademark Trial and Appeal Board (TTAB in shorthand) is a panel of administrative trademark judges in the United States Patent and Trademark Office that, among other things, hears appeals of trademark applicants who feel that their trademark registrations were wrongfully refused. In this context, the outcome of a proceeding is to determine whether the trademark in question is entitled to registration. The board does not award damages for trademark infringement or provide injunctive relief.

A generic term is not entitled to registration as a trademark. For example, one could not trademark the word APPLE if he or she is using the word when selling, well, apples. (The question of using the word APPLE in connection with different goods like computers is a separate inquiry – in such a case APPLE would not be generic, but would be arbitrary.)

March 3, 2005 Cybersquatting

Court orders truck driver to deliver domain name

The U.S. District Court for the District of Massachusetts has determined that the registration of the domain name leasecomm.org by a disgruntled former customer was made in bad faith, thus violating the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. §1125(d). The court placed special emphasis on the fact that the registrant had offered to sell the domain name to the rightful owner of the LEASECOMM mark without having used the domain name in connection with a bona fide offering for sale of goods or services.

The procedural alignment of the parties in this case was a bit unique. Plaintiff Harrison, a retired truck driver, had lost a dispute with Defendant Microfinancial over the domain name leasecomm.org. The dispute had been submitted to arbitration pursuant to the Uniform Domain Name Dispute Resolution Policy before an administrative panel of the World Intellectual Property Organization (“WIPO”). Microfinancial, Inc. v. Harrison, Case No. D2003-0396. Before the domain name could be transferred as ordered by the WIPO panel, Harrison filed suit to enjoin the transfer. Microfinancial counterclaimed under the ACPA, and both parties moved for summary judgment. The court granted Microfinancial’s motion, holding that Harrison had a bad faith intent to profit from the use of the LEASECOMM mark.

Leasecomm, Inc. (“Leasecomm”) is a wholly-owned subsidiary of Microfinancial, and owns the mark LEASECOMM. The mark has been used in commerce since 1985 and is the subject of pending applications with the United States Patent and Trademark Office. Leasecomm also owns the domain names leasecomm.com and leasecomm.net.

Harrison had become unhappy with the terms of a business arrangement he had made with Leasecomm, and in retaliation, registered the domain name leasecomm.org. He established a site at leasecomm.org critical of Microfinancial and Leasecomm’s conduct. Harrison offered to “give” the leasecomm.org domain name to Microfinancial in return for compliance with various demands, including refunding money Microfinancial had allegedly “stolen” from “victims” and writing letters of apology.

Harrison claimed that his offer to transfer the domain name in exchange for compliance with his demands was merely “rhetorical and polemical” and thus did not evidence a serious offer to make a deal. The court rejected Harrison’s argument and found that “the undisputed evidence is clear that Harrison sought to use the offered transfer of the domain name to Microfinancial as leverage to obtain financial benefit for himself and others (whom he described as victims.)”

The court considered several other bad faith factors under the ACPA (e.g., Harrison had registered multiple domain names with were identical or confusingly similar to Microfinancial’s trademarks) to determine that the Harrison registered the domain name in bad faith. It concluded that no reasonable jury could have found that Harrison did not have a bad faith intent to profit from his use of the domain name.

Harrison v. Microfinancial, Inc., 2005 WL 435255 (D.Mass., February 24, 2005).

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