Languages:
English flagItalian flagChinese (Simplified) flagPortuguese flagGerman flagFrench flagSpanish flagJapanese flag

Facebook Continues its Litigation Trend – The Next Target: Lamebook

November 15, 2010 by · Comments Off
Filed under: law, trademark, Trademark Articles 

Facebook has grown decidedly litigious this past year in suing other companies that it claims are confusingly similar to its very famous ‘Facebook’ mark.  While this past Summer it was Teachbook that was in trouble with Facebook’s heavy hitting legal counsel in a lawsuit, now their latest target is Lamebook, a site that hosts “the funniest and lamest of facebook.”

Facebook continues to make the claim that their mark is so strong that anyone who uses the term “book” in connection with social networking services will confuse consumers into thinking that the potential infringer is affiliated with Facebook.  What makes this new case interesting is that Lamebook does not offer any social networking services, but rather entertainment services.  In order to be successful in its claims, Facebook must either show that marks containing the suffix “book” in entertainment services in addition to networking services  infringe on Facebook’s marks, or that Facebook’s marks are so famous that even a substantially different mark such as ‘lamebook’ dilutes their mark.

Lamebook and Facebook had been engaging in discussions regarding possible infringement for some time before these companies took their issues to court.  Interestingly enough, it was Lamebook that first initiated a lawsuit by asking the US District Court for the Western District of Texas to declare that their use of ‘Lamebook’ did not infringe Facebook’s trademark.  Facebook responded by filing its own lawsuit in the US District Court for the Northern District of California claiming that Lamebook is liable for trademark infringement, trademark dilution, and unfair competition.

Lamebook has file for registration of their mark with the USPTO and their application is still pending.    Regardless of their USPTO application, it will be the result of these lawsuits that will determine whether Lamebook will be able to keep its name.

How to Get Twitter and Facebook to Remove Content That is Infringing Your Trademarks

April 7, 2010 by · Comments Off
Filed under: Business, law, Online Privacy, trademark, Trademark Articles, Uncategorized 

As sites like Facebook and Twitter become more popular the amount of content that is being published on these sites continues to grow.  This creates a problem when these companies begin hosting infringing content, as 15 USC § 1114 absolves a publisher for damages if they are unaware of the infringement.  However, once they know that there is infringing content they open themselves up to liability.  While provisions for copyright infringement are detailed in the DMCA, there is no statute that lays out exactly how trademark holders should contact Online Service Providers and how OSPs should respond.

Facebook and Twitter have created specific policies and web forms to deal with allegations of trademark infringement.  The following steps should be taken to have material infringing upon your trademark rights removed:

Facebook:

  1. Facebook provides a generic, non-copyright, Intellectual Property Infringement form available at http://www.facebook.com/legal/copyright.php?noncopyright_notice=1.
  2. Fill out your name and contact information.
  3. In the “rights infringed” field state that your trademark or servicemark has been infringed.  Provide the name of the mark, the date you first started using the mark, the goods used in connection with the mark, and if registered, your registration number.
  4. In the lower boxes explain how your trademark rights have been infringed.  For more information about your rights under trademark law visit our Trademarks page.

Twitter:

Twitter provides two methods by which you can submit a trademark infringement complaint: you can submit their online help request form, or send an email.

Help Request Form:

  1. Go to http://twitter.com/help/login and login to your Twitter account.  If you cannot login, or do not have a Twitter account, select the “No account? Login problems?” link.
  2. From the first drop down menu select “Something’s broken, or amiss”.
  3. From the second drop down menu select “Trademark/Brand squatting”.
  4. In the text field include the following information:
    1. Username of violating account
    2. Your name
    3. Your company name (if infringing company’s mark)
    4. Your (and/or your company’s) Twitter account
    5. Your (and/or your company’s) contact information – address, phone and fax numbers
    6. Your (and/or your company’s) email address and website(if available)
    7. The mark you are claiming has been infringed.
    8. The state and/or federal registration number for your trademark (if available)
    9. Your requested action: cancelling the account or transferring the account to your possession are usually the remedies.
    10. Fill in the remaining boxes and submit your form.

Email:

  1. Address the email to terms@twitter.com.
  2. Title the email “Trademark Infringement”.
  3. In the body of the email include all of the information required for #4, above.

Congratulations, you just started the process for removing an account that infringes your trademark from the web.  There are a few more things to note:

  1. This will not automatically remove the infringing user, but rather starts Facebook and Twitter to begin an investigation to see if they should remove the information.
  2. While it will take a little time for your request to process, if you have not heard anything from them in a week and the infringing page is still up, send a follow-up email to see why no action has been taken.
  3. Be on the alert for emails from Facebook or Twitter, as they will contact you if they have any questions about your claim.

While sending these requests is good for reducing the amount of infringement of your mark, the infringing party is the root of the problem and you are not without recourse against them.  As they are violating you rights it is a good idea to send them a letter demanding they cease their infringing activity.  Look here or more information about Cease and Desist Letters.

If you need help removing content from Twitter or Facebook, please content Bambi Faivre Walters by e-mail at bambi@bfwpc.com or by phone at 888-388-9614.

BUSTED or NOT? Copyright & Trademark Infringement Claims Against Online Auction Sellers

March 16, 2010 by · Comments Off
Filed under: Business, Copyright Articles, law, Trademark Articles 

Do you know someone that has been targeted for selling fake goods online (e.g., eBay, uBid, craigslist, etc.)?  Do you know someone who was been offered amnesty if they immediately settle and send in a large chunk of money?   If so, please forward this link to the survey and ask them to confidentially take our survey.

Our firm has seen a large increase in potential clients who have been threatened with emails (and letters) seeking large amounts of money and offering amnesty from criminal liability.  Any information submitted will be held in confidence and will be used to analyze information about online sellers that have received a communication alleging copyright infringement, trademark infringement or other causes of action.

Thank you!

Liability of Online Auctioneers – Auction Sites and Brand Owners Hammer it Out

February 16, 2010 by · Comments Off
Filed under: Business, trademark, Trademark Articles 

Author: Emily S, William & Mary Intern

In today’s economy, online auctions are often viewed as a strategy to beat the credit crunch. Those unwanted gifts and unused purchases can all be put on Internet auction sites and sold for a bit of much-needed cash. Not all sellers have such innocent motives, however, and the unscrupulous have used these auction websites to sell counterfeit and other illegal goods. Such sellers have involved online auction sites with legal proceedings in a variety of jurisdictions, as luxury brand owners try to hold auction sites such as eBay jointly liable with sellers for trademark infringement.

Multiple examples of legal proceedings involving auction sites have occurred in the United States. In 2008, Tiffany brought suit against eBay for direct and contributory trademark infringement, false advertising and trademark dilution, with regard to the sale of counterfeit jewelry on eBay. Tiffany (NJ) Inc. and Tiffany and Company v. eBay Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008)

In filing its primary infringement claim, Tiffany acknowledged that eBay was not responsible for trademark infringement by individual sellers. However, Tiffany asserted that eBay was liable for contributory infringement because eBay knew that sellers posted and sold counterfeit items on its site and it did not take necessary measures to prevent or regulate this illegal activity. The company also claimed that eBay’s use of TIFFANY marks on its website and the advertising of counterfeit goods as authentic goods on eBay constituted trademark dilution and false advertising. In response to these claims, eBay asserted that its policies to remove potentially infringing listings when such listings were reported to eBay, even if somewhat inconsistently applied, were sufficient to exempt the company from being deemed a contributory infringer.  In addition, eBay claimed that it was not required by law to monitor its website and preemptively remove listings of counterfeit TIFFANY jewelry before such listings were made public. It argued that the duty to search the online market for counterfeit items belonged to the brand owner rather than the operator of the auction site.

In its decision, a U.S. district court in New York reiterated that liability for contributory infringement is not based on a reasonable anticipation of infringement, and it requires that the party knew or had reason to know of specific infringing activity. In looking into the matter, the court found that eBay had insufficient prior knowledge of specific infringing activity and took action to remove any infringing items once Tiffany provided notice that it believed the items were counterfeit. In addition, the court decided that eBay was not liable for dilution or false advertising, as eBay did not use the TIFFANY mark on its own products and false advertising is the fault of the seller.

However, a later case in California made the courts’ position on this matter less clear-cut. In August 2009, a U.S. District court in California found that two internet service providers and their owner were liable for contributory trademark infringement for hosting websites that sold counterfeit LOUIS VUITTON goods. Louis Vuitton Malletier, S.A., v. Akanoc Solutions, Inc., et al., CV07-03952 JW (N.D. Cal. 2007).

Just as in the previous case, the court considered if the internet service provider had specific knowledge of the infringement, but unlike in the Tiffany case, the court held that the information provided by Louis Vuitton was sufficient to have given the internet service provider specific prior knowledge of the infringing activity.

The judgments in such cases to date appear to endorse the view that online auction sites are generally not liable for trademark infringements by their users and that the brand owners are the ones responsible for monitoring these sites. However, if the internet site or provider had sufficient specific knowledge of infringement activities, it may be held liable for contributory infringement. Additional information about trademark law and infringement may be found here.

North Carolina Trademark Infringement

May 18, 2009 by · Comments Off
Filed under: trademark, Trademark Articles 

Below are recent trademark infringement cases filed in the North Carolina Eastern District Court, the North Carolina Middle District Court, and the North Carolina Western District Court.

Bradford L. Picot DDS, PA et al v. Doctors Wilson & Wilson, PLLC et al

Filed Thu, 09 Jul 2009

North Carolina Western District Court

Kayser-Roth Corporation v. Renfro Corporation

Filed: Fri, 10 Jul 2009

North Carolina Middle District Court

Bradford L. Picot, DDS v. Doctors Wilson & Wilson, PLLC et al

Filed: Thu, 09 Jul 2009

North Carolina Western District Court

Pets TV, Inc. v. Entertainment Studios Networks, Inc.

Date Docketed: Fri, 29 May 2009

North Carolina Middle District Court

Carolina Biological Supply Company v. Zula, Ltd. et al

Date Docketed: Fri, 29 May 2009

North Carolina Middle District Court

Lord Corporation v. Hultec S&B Technical Products, Inc. et al

Filed: Sat, 09 May 2009

North Carolina Eastern District

Educational Testing Service v. Education Training Specialists, LLC et al

Filed: Tue, 21 Apr 2009

North Carolina Western District Court

Worldwide Media, Inc. v. Traditional Medicinals, Inc

Filed: Tue, 21 Apr 2009

North Carolina Western District Court

Meineke Car Care Centers, Inc. v. M. Larrea Enterprises, Inc. et al

Filed: Mon, 20 Apr 2009

North Carolina Western District Court

Biscuitville, Inc. v. Breakfastville, Inc., the et al

Filed: Fri, 10 Apr 2009

North Carolina Middle District Court

Kenneth J. Daidone v. Enrique (Henry) Rodriquez

Filed: Mon, 30 Mar 2009

North Carolina Eastern District Court

Canon U.S.A., Inc v Sylvester Fontenelle

Filed: Wed, 04 Mar 2009

North Carolina Eastern District Court

Priority Metals, Inc v. Priority Metals, Inc.

Filed: 25 Feb 2009

North Carolina Eastern District Court

Doug Herbert et al v. Snap-On Incorporated et al

Filed: Fri, 20 Feb 2009

North Carolina Western District Court

National Association for Stock Car Auto Racing, Inc et al v. John & Jane Does et al

Filed: Fri, 20 Feb 2009

North Carolina Western District Court

Lance Mfg LLC et al v. Voortman Cookies Limited

Filed: Fri, 06 Feb 2009

North Carolina Western District Court

I Play, Inc. v. Green to Grow

Filed: Wed, 04 Feb 2009

North Carolina Western District Court

Casana Furniture Company Ltd. V. Ashley Furniture Industries Inc.

Filed: Tue, 16 Dec 2008

North Carolina Middle District Court

Assurant, Inc v. MedAssurant, Inc.

Filed: Wed, 10 Dec 2008

North Carolina Western District Court