E-Commerce Law

Federal Court Dismisses Facebook's Trademark Infringement Claims Against Teachbook

Teachbook, a social and professional networking Web site dedicated to teachers, successfully moved to dismiss Facebook's trademark infringement claims by arguing that it was not subject to personal jurisdiction in California.  Facebook, Inc. v. Teachbook.com, LLC, No. CV 10-03654 RMW, 2011 WL 1672464 (N.D. Cal. May 3, 2011).  The District Court for the Northern District of California held that although Facebook presented sufficient evidence to show that Teachbook intentionally adopted a "confusingly similar trademark," it did not purposefully avail itself of doing business in California because it did not register users in that state.

My This Week in Law (Episode 105) Companion #TWiL105

On Friday, I had the pleasure of appearing on This Week in Law with hosts Denise Howell and Evan Brown and fellow guest Iyaz Akhtar.  You can view the podcast below or download it from iTunes.

It was great to be back on the show (I appeared on Episode 78 in September).  Here's a little more information about some of the stories we discussed:

Ninth Circuit Explores Likelihood of Confusion Involving Keyword Ads

BNA, Inc.'s Electronic Commerce & Law Report has published an article on the Ninth Circuit's recent decision in Network Automation, Inc. v. Advanced Computer Concepts, Inc.  For the article, I was asked to comment on the court's apparent shift away from a rigid application of the so-called "Internet trinity" in determining whether the Internet use of a trademark is likely confuse consumers in the relevant market.  I also discussed the Ninth Circuit's recognition of the growing sophistication of Internet shoppers (which is not surprising, given that 75% of the 240 million American Internet users use the Internet to shop for products or services).  You can read the full copy of the article here:  Ninth Circuit Explores Likelihood of Confusion Involving Keyword Ads, Adopts New Standard.

If you have any thoughts about the case, the article, or my comments, please let us know.  For additional commentary on the case, please see Eric Goldman's Technology & Marketing Law Blog and Rebecca Tushnet's 43(b) Blog.

Sports Brandjacking Generates Millions of Dollars and Tens of Millions of Web Visits Each Year

Savvy Internet marketing allows thousands of individuals and companies to peddle more than a million counterfeit sports shirts and jerseys annually, according to the 2011 Special Edition of the Brandjacking Index published today.  The online sale of counterfeit sports apparel is a multi-million dollar industry that generates tens of millions of visits to the websites selling such products.

MarkMonitor, which provides Internet brand protection services to companies, began publishing its Brandjacking Index in 2007.  The index analyzes trends and statistics about brand abuse online, and addresses the business and technical methods used by brandjackers, by applying proprietary algorithms to publicly available information.

According to the most recent edition of the index, MarkMonitor identified more than 6,000 suspects selling more than 1.2 million shirts and jerseys bearing counterfeit sports league and team logos.  The e-commerce sites selling these counterfeit goods attract 56 million visits annually and generate more than $25 million in revenue.

The operators of sites selling counterfeit sports apparel use sophisticated Internet marketing techniques to drive traffic to their sites.  They invest heavily in paid search advertising,  "black hat" SEO techniques, cybersquatting, and typosquatting.  They also use affiliate marketing programs and pay-per-click advertisements.  

MarkMonitor has identified more than 1,300 of these sites selling some 800,000 units of suspicious sports apparel each year.  Most of these sites are associated with a Chinese registrant or registrar.

Injunction is No Great Leap for Court in “Skydive Arizona” Case

On April 29, 2010, the United States District Court for the District of Arizona granted, in part, Plaintiff’s request  to enjoin the Defendants' use of certain trademarks and domain names related to skydiving in Arizona.  Skydive Arizona, Inc. v. Quattrocchi, 2010 WL 1743189 (D. Ariz. April 29, 2010)

Plaintiff operates a skydiving business in Arizona (“Skydive Arizona”) with numerous jump centers in the state.  Defendants operate a website that offers information on skydiving and skydiving gift certificates that are redeemable at participating skydiving centers across the country, but does not operate any actual skydiving centers.  In fact, the Defendants operated various websites implying that Defendants owned skydiving centers in numerous cities in Arizona, where none existed. 

"No Meat" in Quiznos' Motion for Summary Judgment

On February 19, 2010, the United States District Court for the District of Connecticut denied Quiznos’ motion for summary judgment on Subway’s suit for false and deceptive advertising in violation of the Lanham Act, along with state law claims for commercial disparagement and violation of the Connecticut Unfair Trade Practices Act.  Doctor's Associates, Inc. v. QIP Holders, LLC., 2010 WL 669870 (D. Conn.). The case arises out of Quiznos’ advertising campaign to introduce their “double meat” line of sandwiches. The advertising campaign involved an internet-based contest and two national television commercials that compared certain “double meat” Quiznos sandwiches to certain Subway sandwiches.  Quiznos claimed that its new line of sandwiches had “two times the meat” of comparable Subway sandwiches.

District Court Applies Calder Effects Test in Typosquatting Case

On November 13, 2009, the United States District Court for the Eastern District of Michigan applied the Calder effects test in granting a defendant's motion to dismiss for lack of personal jurisdiction, pursuant to Fed. R. Civ. P. 12(b)(2), or, in the alternative, to transfer venue.  Weather Underground, Inc. v. Navigation Catalyst Systems, Inc., 2009 WL 3818191 (E.D. Mich. Nov. 13, 2009).

The Sky is Falling! New Facebook Usernames Will be the End of Trademark Protection as We Know It

In just over six hours, Facebook will begin permitting its users to obtain "vanity" URLs for their Facebook profiles.  According to the popular social networking site,

"The one place [on Facebook] where your identity wasn't reflected was in the Web address for your profile or the Facebook Pages you administer. The URL was just a randomly assigned number like "id=592952074." That soon will change.  We're planning to offer Facebook usernames to make it easier for people to find and connect with you. When your friends, family members or co-workers visit your profile or Pages on Facebook, they will be able to enter your username as part of the URL in their browser. This way people will have an easy-to-remember way to find you."

Facebook will begin permitting its users to obtain these new vanity URLs at 12:01 a.m. tomorrow.

According to PC World, "[v]anity URLs are becoming an important part of one's online social life, as it makes it easier for others to find you by just typing your name after the service's URL (i.e. http://www.twitter.com/pcworld)."  Twitter and LinkedIn have always offered plain-language user names and its become something that social networkers now expect.

Despite the ubiquity of vanity URLs, Facebook's announcement has apparently caused a number of law firms and news outlets to sound the trademark protection alarm.  (See here, here, here, here, and here). 

E-Commerce Law Briefs: Week of April 20, 2009

The Wikipedia Foundation has demanded that the artists responsible for Wikipedia Art surrender the domain name wikipediaart.org.  "Last February, [the artists], working with several collaborators, created a Wikipedia article and invited the general public to add to it, following Wikipedia’s standards of credibility and verifiability. The work was intended to comment on the nature of art and Wikipedia. [However, Wikipedia editors shut down the project]  within fifteen hours for being insufficiently 'encyclopaedic.'"  The artists obtained the domain name wikipediaart.org and created a website to document the project which the Foundation seeks to shut down because it uses the "Wikipedia" trademark.

The United States District Court for the Northern District of Texas has applied traditional contract principles to find that Blockbuster Online's website Terms and Conditions are unenforceable.  "The crux of the Plaintiffs’ arguments were that since Blockbuster reserved the right to modify the Terms and Conditions at their “sole discretion” at “any time” to be effective immediately on their site, the contract was thus illusory.  The Court found the contract was illusory because Blockbuster had the power to unilaterally change the contract whenever they wanted to do so. The only 'limit' was the new terms would not be effective until posted online."

"Worldwide visitors to Twitter.com increased 95 percent in the month of March from 9.8 million to 19.1 million."

Google has upgraded a little-used feature that permits users to create profile pages with their name, photo, contact information, and other information.

"In February, a Texas jury awarded Orix Capital Markets, LLC $12.5 million in damages in a defamation case involving statements published on the . . . 'gripe site' Predatorix.com."

"Students have suffered another defeat in their legal fight against the company that runs a plagiarism-detection tool popular among professors.  A federal appeals court last week affirmed a lower court’s decision that the Turnitin service does not violate the copyright of students, even though it stores digital copies of their essays in the database that the company uses to check works for academic dishonesty."  The copyright infringment suit was brought by two Mclean, Virginia high school students after Turnitin was hired by their school to catch cheaters.

E-Commerce Law Briefs is a weekly feature appearing on E-Commerce Law. Each weekend, E-Commerce Law Briefs will provide a brief summary and commentary on recent legal news affecting e-commerce businesses.

E-Commerce Law Briefs: Week of October 20, 2008

"American Airlines is suing Yahoo Inc. for trademark infringement, a case similar to one that the nation's largest airline settled this summer against Google, Inc.  American filed its lawsuit last week in U.S. District court in Fort Worth for unspecified damages, legal costs and money to run a "corrective" advertising campaign"

E-Commerce Law Briefs is a weekly feature appearing each Friday afternoon on E-Commerce Law. Each week, E-Commerce Law Briefs will provide a brief summary and commentary on recent legal news affecting e-commerce businesses.