Legal Geek No. 128: Google Sued for AdWords Practices

Welcome back to Legal Geek. This week, we review a recent federal lawsuit filed against Google in federal court claiming trademark infringement and dilution based on practices Google has established in its AdWords program.

https://archive.org/details/LegalGeekEp128 

Edible International is the owner and operator of the Edible Arrangements brand, well known for sending bouquets of candy and fruit as a competitor for flowers.  If you conduct a Google search for Edible Arrangements, the company's primary competitors including Shari's Berries and 1-800-Flowers come up as links as well as Edible Arrangements itself.  This is because those competitors have purchased the rights to appear in search results when the keyword term Edible Arrangements is searched by a user. 

This is common practice for companies under the Google Adwords program, as it can be helpful to appear both when users search for you as well as your competition.  However, Edible International argues that allowing competitors to buy such search rights based on its trademarked name has caused over $200 million dollars in damages thanks to customer confusion and damage or dilution to their trademark.

Thus, Google once again finds itself on the cutting edge of IP litigation that will help define the boundaries of such rights moving forward.  Google has successfully pushed against copyright claims in the various Google Books cases, and this will be one of what may become a number of case studies on trademark law and how it interacts with online search engine practices. 

The gray area comes in that Google is profiting off selling advertisements using the actual trademarks and slogans of companies not related to Google.  That appears to be contrary to the goals of trademark law, as it can potentially lead to consumer confusion when competitors buy up the right to advertise using competition names and slogans as keywords.  However, there is also a countervailing public interest to allow helpful information to be presented to users of software like search engines.

The case from Edible International makes out a number of different theories for liability, and as such, Google will have its work cut out to overcome and contest all of these theories.  Of course, some of the claims may be removed by the court or simplified as the case continues through the early stages, but as currently written, this will be a landmark decision on the cutting edge or potential limits of brand protection. 

The Bottom Line is, one of the aspects that makes Google a success as a company is the innovation and boundary-pushing it does, but such practices often lead to litigation as well.  In the case of AdWords, Google appears to be profiting more than acting purely in the public interest, so if this case comes down to a close call of the equities, Google may lose this time.  We will keep a pulse on this case and update it as decisions occur, as this is likely a case that could shoot up through appeal courts and possibly to the Supreme Court.

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Legal Geek No. 127: How an Embedded Tweet may lead to Supreme Court Litigation

Welcome back to Legal Geek. This week, we cover a recent case from New York about embedding tweets into news articles that may lead to a circuit split of opinion and Supreme Court litigation on what constitutes copyright infringement.  Who knew embedding a tweet could have such dire consequences?

https://archive.org/details/LegalGeekEp127 

The case is entitled Goldman v. Breitbart News Network, and it was decided in late February at a New York federal district court.  Justin Goldman is a photographer who captured an image of Tom Brady speaking with Boston Celtics GM Danny Ainge in July 2016, and then posted it on Snapchat.  This phot went viral and was shared by many others on other platforms like Twitter.  That also led to a slew of news articles with speculation of how Brady and Ainge might be working together.

These news articles came from sources such as Yahoo, Time, Gannett, and the Boston Globe, with many of the articles embedding tweets of other Twitter users containing Goldman's photo.  Goldman filed suit and claimed such a practice was copyright infringement of his photograph.

Embedding tweets works by displaying the content of another server or site, in this case Twitter, in the middle of a news article when published online.  Thus, the news publishers never stored a copy of the picture on their servers, and this was argued by the news companies as decisive proof of no copyright infringement.

This theory is based on a 9th Circuit Court of Appeals case called Perfect 10 v. Amazon, which occurred in California.  In that case, Google was being sued for copyright infringement for showing nude or suggestive images originally from the Perfect 10 magazine when google image searches led to sites having this content.  That case drew an interesting distinction between the showing of thumbnails in the initial search, and the full size images shown when a user would click on a corresponding thumbnail image.  The full size images were shown by in-site linking to the other sources, while the thumbnails were stored on Google's server, and this storage was deemed to make the thumbnails copyright infringement.  In other words, linking or embedding an image from another source is not a prohibited display of a copyrighted work because it was never stored on the server of the infringer.

The New York court explicitly questioned whether the Perfect 10 decision was correct in concluding the opposite in this case, that copyright infringement exists when embedding tweets with images even though there is no local storage of the image by the news sites.  Thus, the photographer wins at this level, although you can likely expect this to be appealed by the big publishers to the Second Circuit Court of Appeals, and then to the Supreme Court if they don't win at the intermediate level.  If this occurs, this is precisely the type of split in law or interpretation between circuit courts that usually leads to the Supreme Court taking a case and rendering a decision.  So embedding a tweet could lead all the way to the Supreme Court.

Most social network terms of service force you to sign away such IP rights claims against them, but this waiver interestingly does not stretch to those who repeat content from those social networks, at least in the judgment of this court.  Just another fascinating quirk of this case.

The Bottom Line is, the lines of what constitutes copyright infringement can be ever-changing in the field of online publishing, and that's even when there's no fair use claim, as in this case.  Sometimes the most seemingly innocuous action can lead to the highest courts, and we will keep our eyes on this possibility in this case.  

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Legal Geek No. 126: Hotter Than Hot Sauce

Welcome back to Legal Geek. This week, with permission from Garrett and Kyle, we cover the trademark Cease and Desist received by the WeekSauce podcast this week from the holders of the Tabasco brands, and how that process works. 

https://archive.org/details/LegalGeekEp126

https://archive.org/details/LegalGeekEp126

We've covered fun versions of Cease and Desist letters or demand communications in recent segments, but our Frogpants friends from AMoveTV received a serious type of letter in this form from McIlhenny Company, owners of the trademark portfolio for Tabasco.  Kyle graciously allowed me to take a deeper look at the details, and it should help clarify for content creators what to do when this happens.

McIlhenny has actively protected the Tabasco brands for nearly 100 years, and so the letter to AMoveTV strikes the typical firm but understanding tone of modern C&D letters.

The brand manager for McIlhenny starts by listing some of the unauthorized uses on iTunes and the internet of the WeekSauce podcast logos which they deem to be problematic, and then provides a summary of the various trademark registrations held by the company.  Several of these are also attached for review, and the letter goes on to explain that U.S. trademark law forces them to actively police and defend their marks to maintain the valuable rights against claims of dilution.  The letter concludes with the demand for AMoveTV to stop use of the marks deemed objectionable.  This is standard fare in this field, but it is well written and clear in this case.

Turning to the merits of McIlhenny's argument, most of the Tabasco trademark registrations cover the name itself Tabasco, the diamond shaped bottle label, and the diamond logo with the wording.  Those are easily distinguished because AMoveTV is not using the name Tabasco and/or because many of these logo trademarks cover only the famous pepper sauce rather than other goods and services.

But one particular registration stood out on my review, and that is one from 1996 which covers just the square and circular lines forming the diamond logo, absent any wording.  This was registered in many classes of goods and services, including apparel like T-shirts, food products, cocktail mixes, and restaurant services.  This is a very broad way to cover the core of the company's famous logo, and it's a genius way to reach potential infringements that may not copy the words or other parts of all the other trademarks.  And it's this very same registration that causes trouble for folks like Kyle and Garrett, even though podcasts are not explicitly within the scope of what is covered by McIlhenny's trademark.  The problem is that use in another context can blur over time if AMoveTV brought out T-shirts or other merchandise using the WeekSauce logo, and the mark must also be policed against dilution which can occur if Tabasco did not enforce their rights in these types of close call situations.

Sometimes acts that are truly an infringement can still be done if they fall under the protections of Fair Use, including things like parody.  That exception could be applicable here, but trademark litigation to try and prove that as a defense is costly and usually not worth the expense to smaller parties.  Fair Use is a serious gray area that's honestly never that predictable in court.  It's simply safer and easier to avoid infringement altogether, or take a license.  In this case, Kyle and Garrett are changing the show logo, and sometimes that's just what you have to do.  It doesn't feel great, but the big companies are forced into this by the U.S. rules on things like dilution, and the rest of us just have to deal with the consequences of the system.

The Bottom Line is, McIlhenny should be commended for finding such innovative ways to secure broad coverage of elements of their logo, but it leads to this downside.  When in the position Kyle and Garrett found themselves in, it is best to be calm, breathe a minute, and then take a close look at the claims of the company enforcing their brand or other IP before deciding what action to take.  The claims don't always have merit, after all, and that can open an opportunity for dialogue with the other side.  If you can't figure it out yourself, please never hesitate to have an attorney help guide you to the best solution to the problem, even if it's not what you originally want to do.

But for now, we can all rejoice that WeekSauce and our friends are hotter than hot sauce.  Boom.

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Legal Geek No. 125: Famous Sporting Events and Trademarks

Welcome back to Legal Geek. This week, we celebrate last week's great Super Bowl and the opening of another Olympic Games with a look at how trademarks are closely intertwined with these events and athletes.

https://archive.org/details/LegalGeekEp125 

Trademarks may not be the first thing that comes to mind when you think of world famous sporting events and spectacles like the Super Bowl and the Olympics.  However, the use and enforcement of trademarks has become a vital part of these events and how companies around the world can participate in the celebration.

For example, both the National Football League and the International Olympic Committee hold significant trademarks covering the names and logos associated with these sporting events.  Both organizations aggressively defend such intellectual property as well, as anything with a multi-colored linked ring design or marketing surrounding Super Bowl Sunday would quickly be shut down if not allowed by a license agreement from these rights holders.  By keeping such a tight lock on these names and logos, these organizations are able to maintain highly profitable revenue streams from licensing the rights to companies like McDonald's and others who want to advertise and be a significant part of these big events.

One interesting thing to look out for in the next two weeks is the new faces who become viral, or nicknames and slogans that grab the world's attention and become water cooler talk.  These athletes or teams can leverage that rise to fame for a longer period of time if they register for trademark protection and then defend and use those rights after the Olympics.  This is similar to what happens in some NFL athlete lives, such as the "Beast Mode" moniker that will far outlive our memories of running back Marshawn Lynch, who coined the popular phrase.

For any of these athletes who are still in college, navigating the acquisition of trademark rights and the NCAA compliance rulebook can be highly difficult.  However, there's no rule stopping athletes in college from locking down these trademarks and then fully leveraging them after NCAA eligibility is over.

While it's true that many of these "15 minutes of fame" elements of the Olympics will fade from public consciousness quickly, just like the Right Shark moment from a couple Super Bowl halftime shows ago, they do lead to trademark implications and interesting cases we look forward to covering here.

In another quick sports trademark story, the Cleveland Indians organization decided to stop using their Chief Wahoo logo on the field starting in 2019.  While trademarks can still be maintained on allegedly disparaging marks following the In re Tam decision on The Slants band, the Cleveland baseball team has chosen to relent from public pressure while other similar teams like the Washington Redskins football team does not.  However, to keep the valuable trademark rights from lapsing, Cleveland will continue to sell merchandise with Chief Wahoo, so the symbol is not going away anytime soon thanks to trademark rules and practices.

The Bottom Line is, trademarks and big sporting events fit together like a hand and a glove.  While pursuing athletic conquest and glory, many athletes and others happen upon fame that can give them financial success for life, thanks to trademarks and branding protections.

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Legal Geek No. 124: The Town Crier Approach to C&D Demands

Welcome back to Legal Geek. This week, we review what has become a trend in sending demand or cease and desist letters, a softer edge that is just as much marketing as it is legal.

https://archive.org/details/LegalGeekEp124 

A couple months back, the main show and this segment covered a story about Netflix attorneys sending a cease and desist letter to a pop up Stranger Things themed bar with a lot of humor and in jokes from the show mixed in, instead of the usual threats and legalese.  This resulted in positive press for Netflix and their attorneys, as evidenced by our own coverage of the event, while also resulting in the other party complying with the demand from Netflix.  This softer approach is becoming more prevalent, as evidenced by a Town Crier sent by Budweiser to another brewing company last month:

INSERT TOWN CRIER FROM: https://www.youtube.com/watch?time_continue=2&v=hCvPtSxxVkU

Turns out, even Dilly Dilly can be made into something funny and enjoyable in this context.  As with the Stranger Things letter, this Town Crier demand went viral online and in news coverage, with positive press happening for Budweiser rather than the negative feedback the public often gives when brands are pushy about enforcing their rights.  Plus, the Minnesota brewing company agreed to comply with the demand and stop selling the Dilly Dilly Mosaic Double IPA after the initial run was sold.

Other examples recently of this trend include TGI Fridays sending a box of buttons and other flair to a Chicago bar with a letter asking that the bar's plans to hold an event mimicking the Friday's restaurant be limited to a one-time thing.  That certainly makes it easier for the bar's employees to look like Friday's servers for the event, and it struck a good balance between enforcing a trademark, which is required to keep those rights, and being reasonable about fan service or parody in this case. 

In another case, Dole responded to an Instagram meme from a New York branding agency using their company logo for a Halloween joke about receiving bags of fruit instead of candy, but not with a takedown notice.  Instead, Dole added to the meme by making some more small bags of fruit and asked that the other company refrain from future unauthorized use of the trademarks so that they didn't have to come take all their candy away.

This trend for demand letters is certainly a response to the negative feedback other companies have gotten on social media and in the news for facing down fans with formal legal threats.  This is a smart way to jam some positive marketing into legal responsibilities.  Considering that nobody really wants to add more costly litigation to their dockets, the softer approach has proven to be effective enough to protect most brands while avoiding legal escalation and bad press.  In other words, a win-win.

The Bottom Line is, the old adage of "you catch more flies with honey than with vinegar" appears to be working in this context.  In my own practice, I often recommend a softer edge from content creators and brand owners at the beginning, as it can't hurt to try being somewhat nice before escalating to full conflict.  You just might end up with more friends and business partners that way, too.  In a society divided by politics and a lot of other stresses, it should come as no surprise that this approach is more effective.  I look forward to covering more fun legal demand letters as the trend continues.

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Legal Geek No. 123: TWiT sues Twitter for Trademark Infringement

Welcome back to Legal Geek. This week, we review the newest lawsuit hot off the presses this week as podcast network TWiT, also known as This Week in Tech, sues Twitter for trademark infringement and other alleged misdeeds.

https://archive.org/details/LegalGeekEp123 

This Week in Tech is a network of shows in video and audio format that began around 2005 when Leo Laporte founded the network.  Indeed, many of you know this well because Current Geek's own Tom Merritt was a host of multiple highly popular shows on that network from 2010 through 2013, including Tech News Today. 

TWiT grew rapidly after the network's formation, and Laporte protected this name with a trademark registration at the U.S. Trademark Office in 2007.  Around the same time, Laporte had Twitter founder Evan Williams on one of his shows, and that led to a frank discussion regarding the potential overlap and confusion between the names TWiT and Twitter.  However, verbal communications and written follow-up communications in 2007 and 2009 reveal that Laporte and Williams agreed that these companies could co-exist because the creation of audio and video entertainment content was distinct enough from the text-based microblogging of the Twitter platform.

This 2009 communication is a key to the lawsuit this week, as Williams indicated that news reports of Twitter moving into the production of original video content were inaccurate.  Thus, the two companies continued to peacefully co-exist until 2017, when Twitter did expand into original video production on the platform.  Laporte again tried to get Williams and Twitter to stop, but as the parties have not reached an agreement, TWiT sued the giant Twitter this week in California federal court.

Many of the claims against Twitter in the lawsuit pertain to alleged breach of contract or false statements.  Laporte argues that the verbal and written communications from a decade ago were an actual or implied contract between the parties to not expand into each other's tech space.  As to these claims, Laporte makes a good initial case in the Complaint, but it's unclear that he has shown any evidence, particularly in writing, of actual clear intent of Williams to refrain from all future expansion into the fields of TWiT.  Without that type of evidence, it may be difficult to prevail on these types of legal theories.

As to trademark infringement, Laporte argues that the two companies now overlap in goods and services, and the marks are sufficiently similar to cause consumer confusion.  Williams' admission statements regarding potential and actual confusion based on the marks when appearing on a show with Laporte in 2007 would seem to support this argument as well.  But as we've discussed before, trademark infringement and the likelihood of confusion test for it involves a high number of factors that courts must weigh before coming to a conclusion, and that could lead to varying final results.

Nevertheless, in my view, this is the stronger part of the case for TWiT, and it may be what brings the parties to the table to negotiate some sort of new co-existence.  In other words, Twitter will likely pay a bunch of money to make this issue go away, as it seems unlikely that Twitter will want to back down from the extensive plans to produce the original video content for their platform.

If that doesn't happen, we will see just how far Leo Laporte will go in challenging a bigger entity to try and guard his IP and his market territory.  We will certainly keep our eyes on it and provide further updates as the case progresses between these two companies and services many of us enjoy and use.

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Legal Geek No. 122: Mr. Smith takes on Washington for a Back Rub

Welcome back to Legal Geek. This week, we start the new year with a fun one, as we summarize what immediately became my favorite Complaint filed in federal court in 2017, a case entitled Lathan Smith vs. the United States, the Secret Service, and the President Trump.

https://archive.org/details/LegalGeekEp122

Lathan Smith is an individual living in the San Francisco bay area, and he filed a Complaint in December that has made the rounds in IP legal circles for its quirkiness. Mr. Smith is certainly not the first person to file a kooky Complaint against the government, but this one has some nuggets that are too rich not to share.

The supposed facts stated in the Complaint are as follows. Mr. Smith claims to have created a new automotive motor, crank, generator, and engine, as well as fire resistant sheet rock used in buildings and toilet paper that is allegedly used by the federal government and city offices. He also claims that the government is messing with his ability to get a job, his ability to use his phone to call relatives in North Carolina, and has arrested and tried to murder him on numerous occasions.

After stating those facts, Mr. Smith sets for the legal claims he is making, and they include attempted murder and patent infringement. Yes, he has mixed those two in the same Complaint. For the attempted murder, he argues that the government has stabbed a knife into his neck, has hit him in the face with a passing truck, and has taken his child away. For the patent infringement, he claims that the secret service had the patent pushed through and then realized the product would work through computer realization.

At this point, you may just want to write this Complaint off as a sad story from a troubled man, but then we close with the demand for relief. Mr. Smith asks for the following, and I quote:

"I want all my patent from the first one to the last. I want all the money made from them. I also want to be exempt from taxes on my employment and whatever I build through the patents for the rest of time. I also want the United States to stop using my patented ideas. For all the stress I want them to provide a full body massage the rest of my life daily."

So while Mr. Smith wants an injunction against patent infringement like most plaintiffs, he also wants to never pay taxes again, a la the Armageddon movie script, and a full body massage every day from the government. One would think someone who has escaped numerous murder attempts wouldn't let the government near his body anymore, but here we are.

So here's to you, Mr. Smith of San Francisco. Your prayer for relief is one we patent attorneys have never thought to ask for, but a daily massage sounds pretty good to pay us off for patent infringement.

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