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U.S. Court Protects Middle Earth. Hobbits, Not Inmates, Take Over Asylum.

A United States District Court for the Central District of California has granted plaintiffs Warner Bros., New Line Cinema, MGM and Saul Zaentz – the motion picture studios and producer behind the forthcoming film "The Hobbit: An Unexpected Journey" – a temporary restraining order against Global Asylum (also known as The Asylum of Burbank), blocking the release of "Age of the Hobbits." The plaintiffs previously filed suit against Global Asylum (Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.; CV 12 – 9547 PSG (CWx)), seeking an injunction against infringement and damages for trademark dilution, false designation of origin, copyright infringement, false advertising, unfair competition and violations of California’s Business and Professions Code. The Peter Jackson film, a motion picture adaptation of J.R.R. Tolkien’s classic book slated to open tomorrow, December 14, continues the successful "middle earth" franchise created by the success of The Lord of the Rings film series. The motion picture epic trilogy reportedly has gleaned more than $3 billion to date.

Asylum has a history of creating relatively low-budget films with parodied titles of Hollywood blockbusters (e.g., "Snakes On A Train," "Transmorphers: Fall of Man," "American Warships"). The studios pointed out these alleged parodies are always timed to coincide with release of each major motion picture counterpart and use "confusingly similar titles."

In granting the restraining order, Judge Phillip S. Gutierrez said the plaintiffs satisfied the legal standard requiring a plaintiff to demonstrate it has a valid copyright infringement claim, that there would be imminent danger to the plaintiff if the order is not granted, that the plaintiff would suffer more and that the order would advance the public interest. The judge’s decision specifically notes that: "The evidence of the advertising and promotion for ‘Age of Hobbits,’ as well as the media coverage the film has received, provides support for Plaintiffs’ contention that Asylum intended to deceive consumers by associating its movie with Plaintiffs’ works." You can read the Order in its entirety right here, Order Granting Plaintiff’s Ex Parte Application for a Temporary Restraining Order.

As always, if you need help or more information, contact me, Joseph I. Rosenbaum (joseph.rosenbaum@rimonlaw.com), or any of the Rimon lawyers with whom you regularly work.

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Adwords Add Nauseum – What if the Jabberwock Wrote Blogs

The Adword Lawsuit

Now D (Defendant) buys competitor’s words from a search engine, you see.
What words do they buy? Just brands that are popular – with you and with me.
They buy words I might search for when I am looking for thee. 
When we search for P’s (Plaintiff) product, they also find me.
D’s product and brand pops up with such glee; a sponsored link for consumers to see.

Now P gets really mad, call the lawyers, they do,
P’s marketers scream loudly, "Go sue, yes, let’s sue."
So do what they might and do what they may,
The lawyers do sue, in court we shall have our day! 

But wait just a moment, says the court to party P,
In order to win, two things prove for me,
Did D "use the mark in commerce" for all the world to see
And can you prove that buyers, from deception and confusion are free?

Well maybe I can and maybe I can’t, says P not quite funny.
But Your Honor, you do know I’ve invested huge sums of money.
With branding and ads placed in time and in space, 
How can D be permitted to stand in my place? If a "mark" I invest in, an intellectual property right,
Surely you will protect my investment before calling it a night!

Not so, sayeth the court and much to Plaintiff’s fright.
‘Tis only deception we courts should set right.
The mark is intellectual and property we know,
But in "adword" competition, deception is as far as we go.
So P left the stage, bloodied but resolved to fight another day,
But so far and at this point, the Ninth Circuit says "no way."

 

The English Translation

Consider the case of Network Automation, Inc. v. Advanced Systems Concepts [No. 10-55840 (9th Cir. 3/8/11)]. Network Automation sells scheduling and management software under the brand name AutoMate. Its competitor, Advanced Systems Concepts, has a product called ActiveBatch. Now in 2009, Network Automation purchased keywords, including "ActiveBatch," from Google and Bing. When consumers searched for "ActiveBatch," the displayed results carried a sponsored link to Network Automation’s website. Naturally, Advanced Systems demanded Network Automation stop using its name as an advertising keyword, claiming the use infringed its intellectual property rights. Network Automation refused and Advanced Systems sued.

In order to prevail, traditional trademark law says Advanced Systems must show that the mark was "used in commerce" and that consumers of these competitive products are likely to be confused. I won’t bore you with the legal machinations leading up the ruling last week, but first the Ninth Circuit clearly joins the Second Circuit in stating the purchase of adwords is "use in commerce" for purposes of trademark law (the Second Circuit made a strong statement to that effect in Rescuecom v. Google Inc., 562 F.3d 123, 127 (2d Cir. 2009)). But what about the likelihood of confusion?

Here, Advanced Systems failed to convince the court that a "sophisticated" Internet consumer (the target consumer for this product) was likely to be confused by the keyword advertising strategy. "A sophisticated consumer of business software exercising a high degree of care is more likely to understand the mechanics of Internet search engines and the nature of sponsored links, whereas an un-savvy consumer exercising less care is more likely to be confused," the ruling states.

While intellectual property lawyers will themselves review the Ninth Circuit’s distinction between the Sleekraft factors used to determine likelihood of confusion (named from AMF, Inc. v. Sleekraft Boats, 599 F.2d 341 (9th Cir. 1979)) and those used in the Brookfield case (Brookfield Communications, Inc. v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999)), you should know the Ninth Circuit felt the right factors to consider in competitive adword cases are: strength of the mark, evidence of actual confusion, type of goods, the degree of care likely to be exercised by the purchaser, and the appearance of the ads and surrounding context on the screen displaying the results. 

But wait a minute. If the brand owner has invested significant time and money building brand recognition and a strong mark, shouldn’t it be entitled to protection? Put another way, if a trademark is intellectual PROPERTY, don’t I have the right to protect my asset and not give the alleged "infringer" a free ride on my investment? Well the Ninth Circuit seems to be saying "no, you don’t." 

The court reasoned that trademark law focuses on protecting the consumer (and correspondingly the trademark owner) from the likelihood of confusion. Even though, over the past decade (inspired by cases like Brookfield), companies sought to emphasize the "property" aspect of their marks – protecting their investment and asset value – this court feels that is not the right approach. With this ruling, the Ninth Circuit appears to dismiss the property or asset "value" and investment argument, and makes a fairly clear statement that the rationale for protecting trademarks and the basis of permissible legal action still remains consumer deception and confusion. "Did D ‘use the mark in commerce’ for all the world to see, and can you prove that buyers, from deception and confusion are free."

For these judicial combatants, it means Network Automation can keep advertising on search engines using keywords that include the name of Advanced Systems and its products. Want to read the case for yourself? You can download your own personal copy and read the entire Ninth Circuit decision in this case right here: Network Automation, Inc. v. Advanced Systems Concepts. Need help? Contact me or the Rimon attorney with whom you regularly work.

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A German Tale of Two Marks (neither Karl nor Groucho)

This post was also written by Katharina Weimar.

In 1904, the already acclaimed American novelist Jack London published The Sea-Wolf, a dramatic and powerful adventure story about a sea captain and the survivors he has rescued after an ocean collision. But then, that’s not news is it? What is news is the fact that two film producers in Germany, almost at the same time, recently produced films based on that novel, AND both used the German translation “Der Seewolf” as the title of their films. Really? Both of them? Yes, really.

Well it turns out that one of these producers had previously created a television production of Der Seewolf back in 1971. So that producer (we’ll call him Number 1) went to court in Munich demanding that the other producer (we’ll call him Number 2) relinquish the title and recognize the priority of the title in Number 1 – based on his earlier work and concerning the use of that name for his new film. But, as they say, the plot thickens. The defendant – producer Number 2 – had also applied for a German trademark registration after announcing his production in the film press in Germany.

Much like the psychological drama unfolding in the Jack London novel, the court decided that Number 2 must withdraw the trademark application and is prohibited from distributing the film using the name “Der Seewolf” or “Seewolf,” because Number 1 already has priority. You see, the 1971 work continues to enjoy re-runs and re-broadcasts so that, according to the court, copyright protection of the title “Der Seewolf” continues to exist for the benefit of Number 1. Not only that, but since the titles were identical and were based on the same novel, the court of course also concluded that there is a direct and clear likelihood of confusion – a key ingredient for a claim of trademark infringement. Following that logic, you might think that the requirements for both a copyright and a trademark infringement claim exist, so Number 2 is prohibited from using the title. However, quite unhappy about this state of affairs, Number 2 decided to appeal the ruling.

Now this is where truth becomes stranger than the underlying fiction, even though justice may well have been served in both the Jack London novel and this tale of two producers. The Higher Regional Court of Munich reversed the decision of the lower court, deciding that Number 2 is absolutely still entitled to publicize and distribute a cinematographic work using the title “Der Seewolf” or “Seewolf.” The court did not dispute that Number 1, as the legitimate user of the title dating back to 1971, had the right to bring an action against Number 2. You see in Germany, any legitimate user of the title of a work has the right to assert a claim to protect that title. Even further, the High Court agreed there indeed was a strong risk of confusion between the works given the 1971 title “Der Seewolf” and the new title “Der Seewolf” or “Seewolf,” since they were identical. So far so good.

BUT, the High Court didn’t stop there. You see, also under § 23, No. 2 of the German Trademark Act, the legitimate owner or user of a business mark (the title of a cinematographic work falls within the definition of business marks) cannot prohibit anyone else from also using an identical mark, as long as is it is used to describe the characteristics or properties of the goods or services (and, of course, unless there is some moral or public policy reason to create a restriction). Well, as you might have guessed, the Higher Court in Munich found no moral or public policy issue, AND it was their opinion that the titles were both descriptive: both films were adaptations of the same Jack London novel, The Sea-Wolf, and both titles were simply descriptive translations derived from that work.

So we end up with the curious situation (and result) in which it is true that Number 1 has the right to claim protection for the title “Der Seewolf” as an adaptation of the original Jack London novel based on the 1971 use of that title, but Number 1 also has to accept the legal conclusion that the exact same title may be used by anyone else producing an adaptation of that same novel!

What can we learn from this? First, intellectual property laws are different around the world, so don’t assume rights or protections without consulting legal experts and advisors who appreciate and understand the differences. Second, always remember that intellectual property, by definition, is a creature of specific laws and statutes. As with patents, rights in trademarks and copyright arise, and are interpreted and enforced under the specific laws of the jurisdiction involved. For example, aspirin is no longer a protected trademark in the United States, the United Kingdom and many other countries – the victim of “genericide.” But “Aspirin” remains a protected trademark in Germany, Canada and a host of other countries. Further, copyright laws protect against copying, not original creation, so two or more individuals, independently creating two identical works (without copying), would each be entitled to copyright protection, with neither able to stop the other – whether for paintings, novels or computer software programs. Besides, copyright protection is not forever. Jack London’s rights in The Sea Wolf copyright expired and his novel is publicly available. By adapting, translating or using a descriptive name to refer to these films, neither of the producers was able to claim exclusive rights to the use of the title, any more than Jack London’s heirs could claim the copyright still existed.

So when it comes to intellectual property rights, don’t assume, and do consult an expert. If you want to know more, just contact Katharina Weimer in Rimon’s Munich office or Joseph I. (“Joe”) Rosenbaum in New York, or any of the Rimon lawyers you work with. We are happy to help.

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Did You Miss Our Seminar: “Facebook Personalized URLs: Titanic Brand Opportunity or Tip of an Iceberg?”

As we reported previously, Facebook announced the availability of a personalized Facebook URLs, raising serious issues — yet another example of technology colliding with traditional intellectual property laws. In this case, laws intended to protect trademarks and brand names. If you followed the news, the promotional momentum created by Facebook’s offer has made every astute brand owner ponder the implications! While you, of course, should look at my previous Legal Bytes post on Personalized URLs, if you missed the informative one-hour seminar on the subject presented by Douglas J. Wood and myself, Co-Chairs of the Rimon Advertising Technology & Media Law Group, you can find it here: “Facebook Personalized URLs: Titanic Brand Opportunity or Tip of an Iceberg?”

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Whatz Gnu? Rimon Teleseminar: Facebook Personalized URLs: Titanic Brand Opportunity or Tip of an Iceberg?

Last week, Facebook announced the availability of a personalized Facebook URLs. This latest offering from Facebook raises serious issues—issues that are typically encountered when technology collides with traditional intellectual property laws intended to protect trademarks and brand names. Much like the confusion and abuse that proliferated when cybersquatting became rampant over the ownership and administration of domain names, we now have social networks and service providers allowing users to generate content and offering customized URLs within their domains in a digital and borderless world. Significantly, the promotional momentum created by Facebook’s offer has caused every astute brand and trademark owner to ponder whether they should be in a rush to register their personalized URL on Facebook, or let it ride and deal with potential infringements when—and if—they occur! You need practical guidance and insightful approaches to these problems.

The Media & Entertainment Industry Team and the Advertising Technology & Media Law Group at Rimon have put together an informative one-hour teleseminar entitled “Facebook Personalized URLs: Titanic Brand Opportunity or Tip of an Iceberg?” airing on Tuesday, June 23 at 12 p.m. EDT with partners Doug Wood and Joe Rosenbaum, to help you understand the issues, formulate an approach and make informed decisions and you are invited to participate. Participation is free, although long-distance telephone charges apply outside of the United States, the UK, France, and Germany, where 800 numbers are used. Don’t miss this call!

Call-in ports are limited, so please click here to register or contact Anna Kazachkov at akazachkov@rimonlaw.com no later than Monday, June 22, to receive a dial-in number and a passcode. If you require additional information, you can contact Anna by telephone directly at +1.212.702.1399.

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WWW.IMaySoonBeLegal BytesWithoutAnyDotCom

Move over “Dot Com” and other “dots” you have come to know and adore. Soon you may be able to purchase a top-level domain corresponding to almost any word or phrase, including your name or brand. ICANN, which administers domain names, is accepting comments on its new Draft Applicant Guidebook; but if you really want expert guidance and advice on what this means to you and why you should prepare yourself for the changes, read our bulletin Branded Dot Com Internet Domain Names, and then contact John Hines, our resident authority Advertising Technology & Media Law partner. Dot’s nice!

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The Doors of Perception Can Sometimes Lead to Harsh Reality

Although the California Appellate Court, Second Appellate District, has designated the actual opinion as NOT FOR PUBLICATION (this means you must consult the rules of the court before you cite this case), this past May, two former members of the famed rock band The Doors were held to have engaged in false advertising under California law by advertising a concert band using that name. Although a jury found the band members not guilty of trademark infringement or unfair competition, the appeals court agreed with the trial court that “false advertising” claims are not the same, and upheld a permanent injunction against the individuals using the name “The Doors,” or any name containing that name. The court’s ruling also precludes the use of the name, voice or likeness of deceased band member Jim Morrison, in promoting concert ticket sales, citing prohibitions under the California statute regarding rights of publicity. Rimon knows publicity and privacy, in California—and throughout the United States and the world. Always know before you show. Call us, we can help.

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Strange But True Courtroom Tales–Google Loses Round 1

Move aside file-sharing, user-generated content, and DMCA “take down” notices for copyright infringement; here come the trademark and brand protection lawyers taking on Google again. Just this month, a Federal Court in the Northern District of California refused to dismiss charges brought by American Blind & Wallpaper Factory (yes, they sell window blinds) that Google is illegally selling American Blind’s trademark as a keyword that consequently triggers sponsored links to competitors’ ads when they do a “Google” search. As you know, selling keywords is a huge source of revenue for Google, and the judges’ refusal to grant Google a summary judgment dismissing the case breathes some new trademark life into an old story. Google had argued its AdWords program is not a “use” of trademarks of others in “commerce” within the meaning of the federal law that regulates trademarks—the Lanham Act. In asking the court to dismiss the case, Google relied on two federal cases in the Southern District of New York.

In one case, the court held that unless the trademark was placed on the goods or their packaging or in advertisements, if the search word was invisible to the public—it wasn’t being “used” in the trademark sense and therefore wasn’t infringement. In the second case, Merck claimed that an online pharmacy infringed Merck’s trademark: it bought the keyword “Zocor”—a drug manufactured by Merck—and was using it to generate advertising and sponsored links to the online pharmacy’s generic version of that drug. The court analogized the use of a keyword to private thoughts or mental categorization, and upheld the pharmacy’s right to buy the word from Google for search purposes.

The court in California distinguished these cases from those decided in New Jersey and some unreported decisions emanating from Delaware and Minnesota, where search engines were considered to be infringing when they sold trademark keywords to competitors, noting that these transactions were trading on the value of a company’s trademarks—thus prohibited. Stay tuned. Round 2 is coming up.

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Disappointed in Super Bowl Bid, Giants Seek to Score on the Legal Field

This past November, the New York Giants and the NFL filed suit against Clear Channel Communications alleging breach of contract, trademark infringement, unfair competition and fraud. Apparently, a number of Clear Channel websites advertised a promotion that would enable listeners to win tickets to Giants’ football games. Both the Giants and the NFL allege that the stations were not authorized to use tickets as prizes in connection with any such promotion, and since the printed text on the back of the tickets specifically indicates tickets may not be used for advertising, promotion or other commercial purposes without the written consent of the NFL and the Giants, they sued. The complaint alleges that these promotions were unauthorized and (because apparently this was not the first time promotions like this were attempted) were a “willful and bad-faith” attempt to trade on the Giants’ and NFL’s famous trademarks and their goodwill. That, the complaint says, is likely to confuse consumers into believing that these promotions were sponsored or endorsed—authorized. The NFL and the Giants are seeking to enjoin the websites (and presumably any other medium) from using these tickets for promotional purposes or using their trademarks at all.

We will let you know as the two-minute warning approaches.