Top Intellectual Property Cases of 2008, Part I
| Publication year | 2009 |
| Pages | 49 |
| Citation | Vol. 38 No. 3 Pg. 49 |
2009, March, Pg. 49. Top Intellectual Property Cases of 2008, Part I
March 2009
Vol. 38, No. 3 [Page 49]
Intellectual Property and Technology articles are sponsored by the CBA Intellectual Property and Technology Law and Policy Sections. They provide information of interest to intellectual property and technology attorneys who advise clients on protecting and exploiting various forms of intellectual property in the marketplace.
Article Editors
Steven J. Merker, Denver, of Dorsey and Whitney LLP, (303) 629-3400, merker.steve@dorsey.com; William F. Vobach, Denver, of Townsend and Townsend and Crew LLP, (303) 571-4000, wfvobach@townsend.com
About the Author
Daniel J. Sherwinter is an associate at Townsend and Townsend and Crew LLP. His practice focuses on strategic patent portfolio development, with an emphasis on patent prosecution in the electronics, software, and mechanical arts, (303) 571-4000, djsherwinter@townsend.com.
This article provides summaries of several notable intellectual property law cases of 2008. Cases for each of IP's main disciplines, trademark, copyright, and patent law, are summarized in Part I. Part II will summarize the remaining cases.
During 2008, a number of important cases were decided across the main disciplines of intellectual property law: trademark, copyright, and patent law. This article provides a summary of ten notable cases for each discipline. Part I covers five cases for each discipline; Part II, which will be published in the April 2009 issue of The Colorado Lawyer, will summarize the remaining cases. The facts of each case are consolidated as much as possible to highlight significant legal discussions and implications.
No Gain, No Pain: Noncommercial Website is Not a Use in Commerce. Utah Lighthouse Ministry v. Foundation for Apologetic Info., 527 F.3d 1045 (10th Cir. 2008).
Plaintiff Utah Lighthouse Ministry (UTLM) was established "to critique the Church of Jesus Christ of Latter-day Saints (LDS Church). In support of its mission, UTLM sells books at both a brick-and-mortar bookstore in Utah and through an online bookstore at the official UTLM website, www.utlm.org."(fn1) Defendant Foundation for Apologetic Information and Research (FAIR) is "a volunteer organization that responds to criticisms of the LDS Church."(fn2) FAIR's vice president and Webmaster, Alan Wyatt, registered ten domain names containing the words "Utah Lighthouse Ministry" and the names of its principals, and created a noncommercial website "parodying the UTLM website, the Wyatt website is similar in appearance [to the UTLM website] but has different, though suggestively parallel, content."(fn3) Wyatt's website included multiple links, but none was to any storefront.
UTLM sued FAIR for trademark infringement and unfair competition under the Lanham Act,(fn4) and for cybersquatting, in violation of the Anticybersquatting Consumer Protection Act (ACPA).(fn5) The Tenth Circuit affirmed the lower court's dismissal of UTLM's Lanham Act claims, finding that operation of a noncommercial website did not constitute use in commerce (declining to follow a contrary holding from the Fourth Circuit). The Tenth Circuit determined that there was no likelihood of confusion under the traditional factors and that the website was a successful parody. Finally, the ACPA claims were dismissed for lack of requisite bad faith intent to profit from the use of UTLM's mark. Specifically, under a safe harbor provision of the ACPA, there can be no bad faith intent where the court determines that the defendant reasonably believed the use to be fair use or otherwise lawful.
A "Vail" of Protection: Geographically Descriptive is Not Distinctive. Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008).
Plaintiff Vail Associates, Inc., owner of the registered service mark "VAIL," sued defendant Vend-Tel-Co., Ltd. for operating a toll-free "1-800-SKI-VAIL" phone service. Plaintiff contended that defendant's use of its registered 1-800-SKI-VAIL mark in commerce was likely to cause confusion, with customers mistakenly dialing the toll-free number in an attempt to reach Vail Associates.
After evaluating extensive testimony from witnesses, including plaintiff's vice president of marketing and sales, a travel agent, and a trademark attorney, the Tenth Circuit affirmed the lower court's decision for defendant. The Circuit decided all of the likelihood-of-confusion factors in defendant's favor, including finding little evidence of actual confusion and no proof of defendant's intent to deceive customers or to trade on plaintiff's goodwill. For example, the Circuit concluded that, as a geographically descriptive mark, VAIL is a strong mark for ski destinations, but a weak mark for goods and services.
Changes Afoot for Declaratory Judgment Jurisdiction. Surefoot LC v. Sure Foot Corp., 531 F.3d 1236 (10th Cir. 2008).
Plaintiff Surefoot LC owns the registered SUREFOOT mark for shoe pads and other products. Defendant Sure Foot Corp. owns the SURE FOOT mark for custom-fit ski boots. After years of settlement attempts, cease-and-desist letters, and Trademark Trial and Appeal Board (TTAB) actions,(fn6) plaintiff sued for declaratory judgment (DJ) of noninfringement.
The district court denied standing for lack of "reasonable apprehension of imminent suit,"(fn7) Tenth Circuit precedent at the time. However, shortly thereafter, the U.S. Supreme Court essentially rejected that test in a patent-related case, MedImmune, Inc. v. Genentech, Inc.,(fn8) and plaintiff appealed under the new MedImmune standard.
The Circuit focused on language from MedImmune:
[T]he question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.(fn9)
Under this standard, the Circuit found that DJ jurisdiction existed. Specifically, it determined that defendant would have jurisdiction to bring a straight infringement action (as a counterfactual case); that not-withdrawn allegations of infringement, even years old, showed a substantial controversy; and that a recent burst of activity at the TTAB supported a continuing belief of controversy by the DJ defendant.
The Circuit was careful to limit its discussion to only the specific facts presented, and the final determination of factors to consider for DJ jurisdiction was remanded to the district court. Even so, the Circuit expressly rejected arguments restricting MedImmune to patent cases and to parties in privity (like the licensee relationship at issue in MedImmune).
If it Acts Like a "Duck," it Might be Generic. Boston Duck Tours, LP v. Super Duck Tours, LLC, 514 F.Supp.2d 119 (D.Mass. 2007) (granting preliminary injunction), clarified by 2007 U.S. Dist. LEXIS 94681 (D.Mass. Dec. 5, 2007), rev'd, 531 F.3d 1 (1st Cir. 2008).
Plaintiff Boston Duck Tours, LP has operated land and water tours around Boston since 1994, using brightly painted DUKWs (amphibious World War II vehicles, pronounced "duck"), with trademarks registered for BOSTON DUCK TOURS and a splashing cartoon duck logo. Defendant Super Duck Tours has provided similar services in Portland, Maine since 1991, but did not enter the Boston market until 2003 (its maiden Boston tour under the name "Super Duck Tours" was not until May 2007).
Plaintiff sued defendant for trademark infringement, and the district court granted a preliminary injunction after finding all likelihood-of-confusion factors and preliminary injunction factors to weigh in plaintiff's favor. Notably, the court rejected arguments that DUCK TOURS was a generic term for amphibious sightseeing tours, finding that even if merely descriptive, plaintiff had shown sufficient secondary meaning evidence based on long-term use of the mark.
Subsequently, defendant renamed itself SUPER DUCK EXCURSIONS, but continued to purchase the phrase "boston duck tours" as a Google "sponsored link" advertising program keyword. Defendant filed a motion to determine whether this activity violated the injunction. The court determined that, though the purchase of the keyword constituted use under the Lanham Act, defendant's name change distinguished defendant from plaintiff, such that consumer confusion "was likely diminished rather than increased." Thus, defendant's actions were not in violation of the preliminary injunction.
Plaintiff appealed, giving the First Circuit an opportunity to visit the question of whether the "duck tours" phrase was generic. The Circuit reversed the district court, finding "duck tours" generic and thus not entitled to trademark protection. The Circuit's determination relied on evidence of generic use, including articles in the media, similar names of companies offering similar services around the country, and plaintiff's admission on its website that "the unique idea of a [d]uck [t]our did not originate in Boston."(fn10)
The Circuit found no likelihood of confusion:
The preliminary injunction was reversed and the case was remanded to the district courtAllowing "duck tours" to largely drop out of the analysis, we conclude that the parties' marks are reasonably, although not completely, dissimilar. Although both "Boston" and "Super" are two-syllable words, and they are each followed by a two-word generic phrase, the words look and sound completely different. In addition, they have different meanings, describing a different feature of their products.(fn11)
Video Game is Not Stripped of Free Speech Expression. E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d...
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