Seattle Trademark Lawyer

Novel causes of action for contributory cybersquatting and contributory dilution appear to viable here in the Western District.

On Jan. 12, Western District Judge Ricardo Martinez refused to dismiss such claims plaintiff brought in Microsoft Corp. v. Shah.

In that case, Microsoft alleges defendants, among other things, induced others to engage in cybersquatting and dilution by instructing them on how to use Microsoft trademarks to increase traffic on their Web sites. Microsoft also alleges defendants sold a product that contained software that enabled buyers to create Web sites incorporating Microsoft marks to help sell emoticon-related software, including a video narrated by defendant Amish Shah.

Defendants moved to dismiss, arguing claims for contributory cybersquatting and contributory dilution are not recognized.

The court denied the motion.

“In the current case, Defendants’ alleged conduct falls squarely within the statute’s goal of imposing liability on those who seek to profit in bad faith by means of registering, trafficking, or using domain names that contain identical or confusingly similar marks. Defendants allegedly sought to profit in bad faith by teaching others how to trade off the widespread recognition of Plaintiff’s mark in order to drive traffic to a given website. A defendant who seeks to profit by selling a method that teaches others how to benefit from violating the [Anticybersquatting Consumer Protection Act] should not be able to escape liability by interpreting the statute so narrowly. The practice of instructing others on how to engage in cybersquatting runs counter to the purpose of the ACPA. … [T]he ACPA should not be read so narrowly as to unduly constrain the protections the statute is meant to afford against cybersquatters.”

The court made a similar finding with regard to Microsoft’s claim for contributory dilution.

“As with contributory cybersquatting, contributory dilution is a tort-like cause of action which naturally lends itself to the theory of contributory liability. In the case at hand, Defendants are alleged to have encouraged others to utilize the famous Microsoft mark in such a way that could cause dilution of the Microsoft mark. The Trademark Dilution Act seeks to provide a mechanism through which owners of famous marks may seek protection against exactly the kind of harm — in the form of blurring or tarnishing — that is alleged in the present case. It would be inconsistent with the Trademark Dilution Act to prohibit a cause of action for contributory dilution.”

The case cite is Microsoft Corp. v. Shah, No. 10-653 (W.D. Wash. Jan. 12, 2011) (Martinez, J.).

Trouble searching applications and registrations today?

The PTO’s Trademark Electronic Search System (TESS) database was having trouble.

From Carl Oppedahl on INTA’s list serve:

“Well, this morning it was TESS that was acting up, and eventually after some hours of discussion on the listserves, USPTO quietly posted a notice that TESS had melted down and was being repaired.”

Later in the day, the PTO circulated this message:

“On Tuesday, January 18, the USPTO became aware that searches conducted prior to 3:30 p.m. through the Trademark Electronic Search System (TESS) were not producing accurate results. The TESS problem was resolved; however, it is suggested that any searches conducted prior to 3:30 p.m. be performed again to ensure accuracy.”

I’m happy to say I’m not just as good as my latest trademark search, but my latest trademark search with a database that isn’t working just isn’t very good.

Tomorrow Western District Judge Thomas Zilly will consider the constitutionality of RCW 63.60, Washington’s Personality Rights Act.

This is in the Experience Hendrix, LLC v. HendrixLicensing.com, Ltd. case, in which the Jimi Hendrix Estate’s licensing company sued the seller of Jimi Hendrix-oriented artwork (discussed here and here).

Among other things, plaintiff claims the defendant violated Washington’s right of publicity statute, as amended in 2008, which states the right of publicity recognized in this state “does not expire upon the death of the individual or personality, regardless of whether the law of the domicile, residence, or citizenship of the individual or personality at the time of death or otherwise recognizes a similar or identical property right.” (The amendment is discussed here and here.) 

The defendant responded in part by filing a counterclaim challenging the statute’s constitutionality. It then moved for partial summary judgment on its counterclaim.

Interestingly, the court certified the issue of whether the statute is constitutional to the Washington State Attorney General pursuant to Federal Rule 5.1(b) — a rule I’ve never before considered. The Attorney General, however, declined to intervene in the case.

On Dec. 29, the court ordered the parties to file additional briefing “concerning whether the WPRA would be constitutional if interpreted as a ‘statutory directive’ to apply Washington law in determining if Jimi Hendrix’s right of publicity survived his death and passed to his heir.”

This will be the first time a court has passed on the constitutionality of Washington’s statute — a statute that could strongly influence how right of publicity claims are prosecuted.

This weekend, The Seattle Times reported a big story at Qwest Field.

No, it wasn’t that the 7-9 Seattle Seahawks managed to upend the defending Super Bowl champs, the New Orleans Saints.

That was certainly a surprise, and around here is big news.

But it’s not the story some are talking about.

Some instead are talking about the story that revealed vendors at Seahawks stadium have been charging $1.25 more for a “large” beer than the “small” beer that actually is the same size.

“The Seattle Times did a test before the start of the game to check the size of the glasses and confirmed that they [both] were 20 ounces,” the paper reported.

For those who paid more than needed, it’s an outrage. But was it illegal?

Section 43(a)(1) of the Lanham Act prohibits a “false or misleading description of fact,” and a “false or misleading representation of fact” that is likely to cause confusion or mistake. It also prohibits sellers from misrepresenting “the nature, characteristics, [or] qualities” of their goods or services.

Washington’s Consumer Protection Act similarly outlaws false statements or misleading acts that deceive consumers.

Under either statute, a threshold question is whether anything in the sales was false or misleading.

Fans who paid for a small-sized beer and got the same quantity as a large got a bargain.

So is the beer cup half-empty or half full?

Half-empty, say those who paid more for the same size as the small.

Half-full, say the sellers, who argue those who purchased a small beer got a bonus — a large-sized drink for the price as a small. From the seller’s perspective, the fans who opted for the large size merely didn’t get the windfall the small purchasers received; they got exactly what they paid for.

But doesn’t “large” — with its higher price — imply a larger quantity than a “small”?

How many fans would have paid the higher price for a large if they had known they could get the same amount of product for less?

Unhappy purchasers of the “large” size also point out the cups look different. The “large” 20 ounce cup is tall but narrow; the “small” is short and wide. While this could be an honest mistake — and for all I know this situation is chargeable to an independent contractor rather than the stadium or team — it doesn’t smell right.

This supposedly has been going on all year. What’s truly amazing is no one noticed until the playoffs started. 

Excerpt from the ABA’s “Trademark Misuse Survey”

I’m all for this kind of dialog.

And I’m not knocking the ABA.

But in this context, it feels wasteful. Sen. Patrick Leahy got upset this summer when one of his constituents was publicly mistreated by a trademark bully. So, he got Congress to pass a statute to study the phenomenon of trademark bullies. Thus, the “Trademark Technical and Conforming Amendment Act of 2010” was born. (Previous STL post here.)

The ABA summarized the statute’s mandate: “[T]he Secretary of Commerce, in consultation with the Intellectual Property Enforcement Coordinator, is conducting a study on the extent to which small businesses may be harmed by litigation tactics of trademark owners attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to them.”

Today, the ABA’s IP Law Section circulated a survey that’s apparently intended to help inform the process.

So, it’s asking questions like: “Do you agree that trademark ‘bullies’ are currently a problem?” and “Has your company or your client within the past 5 years ever complied with the demands of a cease and desist letter involving trademark rights, even though your company or your client believed that your company or your client would have prevailed if the parties had litigated?”

Good questions. If only the answers would lead to something.

Here’s my two-word solution that I think would save a lot of bullying: Attorney’s Fees.

That’s what we should be studying. Whether amending the Lanham Act to award attorney’s fees to the prevailing party in all trademark cases — rather than only in “exceptional circumstances” — would reduce overreaching in the trademark world.

I think it would.