Seattle Trademark Lawyer

Palantir Technologies Inc. v. Palantir.net, Inc. is a trademark case from the Northern District of California concerning the parties’ right to use the trademark PALANTIR. For added color, the case involves a bit of lore from the Lord of the Rings.

As Judge Charles Breyer explained, a palantir is a “magical artifact from the Lord of the Rings trilogy. It is a stone that functions somewhat like a crystal ball; when one looks in it, one can communicate with other Stones and anyone who might be looking into them. People of great power can manipulate the Stones to see virtually any part of the world.”

Palantir.net’s predecessor began providing Web design, development, and database services nationally under the Palantir name in 1996. It acquired the palantir.net domain name in 1997. Palantir.net incorporated in 2000 and obtained a federal registration for PALANTIR in 2006. It sells to educational and cultural institutions, as well as financial, corporate, and governmental clients.

Palantir Technologies designs database software for the Central Intelligence Agency and a financial services company. It started offering products under PALANTIR in 2005. It is a small company but it purchases the word “palantir” from Google’s AdWords service and outranks Palantir.net in Google search engine results.

Palantir.net moved for a preliminary injunction enjoining Palantir Technologies from using PALANTIR in advertising. The Northern District of California concluded: “Palantir.net has easily proven the existence of serious questions going to the merits; indeed, the Court finds that it has also demonstrated a probable success on the merits given (1) the virtual identity of the marks, (2) the strength of the mark, (3) the relatedness of the goods, and (4) both parties’ use of the Internet. The balance of hardships also tips sharply in Palantir.net’s favor given its long-time use of the mark, the importance of the mark to word-of-mount referrals, and [Palantir Technologies’] recklessness in adopting the mark for its young business without first searching for any similar trademarks. Palantir.net’s motion for a preliminary injunction is therefore GRANTED.”

In imposing a preliminary injunction, the court required Palantir Technologies to place on all of its Web sites, including its blog, a “prominent disclaimer that advises viewers that it is different from Palantir.net and that advises viewers how to access Palantir.net.” The court also enjoined Palantir Technologies from “engaging in any Internet advertising under the palantir mark, that is, no more Google advertisements.”

The case cite is Palantir Technologies, Inc. v. Palantir.net, Inc., 2008 WL 152339, No. 07-3863 (N.D. Calif. Jan. 15, 2008).

I’m a faithful “lurker” in the International Trademark Association’s listserve. I’ve found my passive participation pays off, since there often is a quality tip or issue for discussion. Recent days have been no exception. On Jan. 9, the talk turned to Network Solutions (STL’s domain name registrar). The listservers say the registrar keeps track of name availability searches conducted on its site. The company then reserves the requested domain name for up to five days if the user does not register the domain name during that session. Future availability searches with other domain name registrars list the domain name is unavailable. If the searcher (or anyone else) returns to Network Solutions, however, the domain name is listed as being available for registration. Worse still, word is that “reserved” domain names may be identified as being sought after, increasing the chance that a cybersquatter could register the name. This practice is known as “domain front running,” and is a variant of domain tasting. Large, brand-name companies are saying they have been the victim of this practice. Beware. 

The solution? Avoid registrars who engage in domain front running. And hope ICANN changes its policies that allow this practice to happen in the first place.

See the Canadian Trademark Blog’s recent summary of the Wall Street Journal’s article (subscription required) on domain front running here.

In Amiga, Inc. v. Hyperion VOF, plaintiff sued defendant in the Western District for breach of contract, trademark infringement, trademark dilution, false designation of origin, and unfair competition relating to the development of a software operating system. Hyperion counterclaimed against Itec, Inc., alleging that Amiga, Inc. (Washington), one of the other parties to a software development agreement, had assigned its rights to Itec, which breached its obligation under the agreement to deliver certain intellectual property to Hyperion. (Itec allegedly later transferred its rights to another company that changed its name to Amiga, Inc. (Delaware), the plaintiff in this case).

New York-based Itec moved to dismiss the counterclaims based on lack of personal jurisdiction. Judge Ricardo Martinez agreed. As the court summarized:

“Hyperion’s counterclaims against Itec arise from the April 24, 2003 agreement between these two parties. That agreement states, in relevant part, ‘Hyperion confirms that for the receipt of 25000.00 USD, Hyperion shall transfer the ownership of the Object Code, Source Code and intellectual property for OS 4.0 to Itec in accordance with the provisions of the [November 3, 2001] agreement between Amiga, Hyperion and Eyetech and to the extent it can do so under existing agreements with their party developers whose work shall be integrated in OS 4.0.’ Hyperion asserts that this agreement constitutes an assignment to Itec of the rights and obligations of the 2001 Agreement, including the jurisdiction and venue provisions, which laid venue in Washington State. Itec argues that this is a simple contract of sale of the rights to OS 4.0; that it has never claimed to be an assignee of the 2001 Agreement between Amiga Inc., (the Washington corporation) and Hyperion, and that as a non-party to that Agreement it is not bound by its jurisdiction and venue provisions.

“The Court cannot resolve this ‘assignment’ versus ‘sale’ dispute on the basis of the record now before it. The issue has taken on proportions far beyond the scope of this motion…. However, it is not necessary for the Court to resolve that dispute, as regardless whether the April 24, 2003 agreement was an assignment of rights in OS 4.0 or a sale, there is no language in that agreement by which Itec consented to the jurisdictional and venue provisions of the November 3, 2001 Agreement between Amiga, Inc., and Hyperion.

“The Court finds in this 2003 agreement between two non-residents of this forum, neither purposeful direction of activities toward Washington State, nor consummation of a transaction within this forum or resident thereof. Nor has Itec performed some act by which it purposefully avails itself of the privilege of conducting activities in this forum, thereby invoking the benefits and protections of its laws. The first test for specific jurisdiction is therefore not met.”

The case cite is Amiga, Inc. v. Hyperion VOF, 2008 WL 163623, No. 07-631 (W.D. Wash. Jan. 17, 2008).

In 2006, Microsoft Corp. brought suit in the Northern District of Georgia against Silver Star Micro, Inc., and its principal, Chase Campbell, for trademark and copyright infringement. On Jan. 6, Judge William Duffey, Jr., granted in large part Microsoft’s motion for summary judgment and imposed a permanent injunction against the defendants.

The court found in April 2005, Silver Star Micro, doing business as USA Tech Store on the Internet at www.techusastore.com, sold a counterfeit copy of MICROSOFT SQL SERVER 2000. Microsoft notified defendants that it had purchased improperly sold Microsoft software and demanded that defendants cease further infringing activity.

In September 2005, law enforcement executed on a search warrant at defendants’ premises and seized disks containing counterfeit copies of MICROSOFT OFFICE 97, MICROSOFT WINDOWS XP PROFESSIONAL, 72 counterfeit Microsoft Product Key labels and 300 units of Microsoft Volume License Media.

In December 2005 and on three occasions in March 2006, defendants sold WINDOWS XP PROFESSIONAL CD-ROMs with counterfeit product key labels and counterfeit product keys.

On summary judgment, the court found: “Microsoft’s trademarks are associated worldwide with Microsoft products, and there is little doubt that the Defendants sold infringing software with the intent that its customers believe the software was authorized by Microsoft. ‘Where, as here, one produces counterfeit goods in an attempt to capitalize upon the popularity of, and demand for, another’s product, there is a presumption of a likelihood of confusion.’ Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987). Like in Polo Fashions, confusion is presumed here, and the Court grants summary judgment to Microsoft of trademark infringement on Nos. 1,200,236, 1,872,264, 1,815,350, and 2,744,843.

“Plaintiff has not, however, shown infringement of its trademarks related exclusively to the Microsoft Office 97 suite of programs. The Lanham Act and appellate precedent require that a defendant must use a mark ‘in commerce’ to be liable for trademark infringement. The undisputed facts in this case show that the Defendants possessed an infringing copy of Microsoft Office 97. The facts of this case do not show that the Defendants used the marks related to Microsoft Office 97 in any sort of commercial transaction. In the absence of evidence showing the ‘in commerce’ requirement, the Court denies summary judgment of trademark infringement and false designation of origin as to Trademark Registration Nos. 1,475,795 (‘POWERPOINT’), 1,741,086 (‘MICROSOFT ACCESS’), and 2,188,125 (‘OUTLOOK’).

The court awarded Microsoft $30,000 for each of the nine copyrights infringed, plus $25,000 for each of the four trademarks infringed, for total of $370,000. The court also found this was an “exceptional” case under the Lanham Act, entitling Microsoft to an award of its attorneys’ fees and costs.

Finally, the court entered a permanent injunction against the defendants, enjoining them from copying, selling, or making any other infringing use of Microsoft products.

The case cite is Microsoft Corp. v. Silver Star Micro, Inc., No. 06-1350 (N.D. Ga. Jan. 9, 2008).

Western District Judge John Coughenour appears to have stopped taking new trademark cases. New matters assigned to him reportedly are reassigned to other judges with the statement that “Judge Coughenour does not accept trademark cases.” 

Judge Coughenour has been on senior status since July 2006.

He certainly has plenty of experience deciding trademark matters. Among other cases, he presided over Microsoft Corp.’s lengthy infringement dispute with Lindows, Inc., over the latter company’s LINDOWS trademark that ended when the parties settled in 2004.