IP Law Chat : IP Law Chat -- Hendricks & Lewis, intellectual property, trademark, copyright and technology attorneys

Checking back in with the happenings in the Western District of Washington, following are brief descriptions of a few of the recent trademark-related claims filed in the Court:

Deloitte Touche Tohmatsu v. Anselmi, No. CV10-00220 RSL, filed Feb. 5, 2010

Deloitte Touche Tohmatsu, a Swiss Verein, alleges that Roberto Anselmi's registration of the domain name rsudeloitte.org and posting of a website at that address violated Deloitte's rights in its "DELOITTE" and "DELOITTE & TOUCHE" marks.  Anselmi, an individual alleged to have a mailing address in Italy, was alleged to have registered the domain name with eNom, Inc., a Washington corporation with a principal place of business in Bellevue, Washington.  Deloitte alleges a single cause of action for violation of the Anticybersquatting Consumer Protection Act, Section 43(d) of the Lanham Act.

A copy of the complaint, including exhibits, here (PDF, 22 pgs).

S.H. Inc. v. The Law Society, No. CV10-00248 MJP, filed Feb. 9, 2010

S.H. Inc., a Belize corporation, alleges a claim for "reverse hi-jacking" under the Anticybersquatting Consumer Protection Act of the Lanham Act against The Law Society, an entity located in London, in connection with the domain name lawsociety.org.  S.H. Inc. seeks, in part, an order enjoining transfer of the domain name (which appears to have been ordered following a UDRP claim filed by The Law Society) and a declaration that S.H. Inc. is the lawful registrant of the domain name.

A copy of the complaint here (PDF, 6 pgs).

Ball & Chain LLC v. Random House, Inc., No. CV10-00235 MJP, filed Feb. 10, 2010

Ball & Chain LLC, a Washington limited liability company, alleges that Random House, Inc. has infringed its trademarks "BEDROOM BUCKS" and "IOU" by using identical marks in connection with competing coupon books.  Ball & Chain alleges claims for federal trademark infringement, false designation of origin, and state law unfair competition.

A copy of the complaint here (PDF, 9 pgs).

Choice Advisory Servs., Inc. v. Choice Connections, Inc., No. CV10-00311 TSZ, filed Feb. 22, 2010

Choice Advisory Services, Inc., a Washington corporation that provides retirement-related services, alleges that Choice Connections, Inc., a Michigan corporation and related defendants that provide a senior housing advisory service, infringed its rights in the "CHOICE" mark by using that mark in connection with identical and closely related products and services and by incorporating the mark in domain names.  Choice Advisory alleges claims for federal trademark infringement and for infringement and unfair competition under state law.

A copy of the complaint here (PDF, 9 pgs).

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The First Circuit took on a fairly specialized issue of copyright law in a lengthy opinion involving, among other claims, allegations that the Massachusetts Museum of Contemporary Art violated the rights of Swiss visual artist Christoph Büchel under the Visual Artists Rights Act ("VARA"), which protects certain so-called "moral rights" of some visual artists.

The 60-page opinion gives a long and detailed explanation of the history of the installation as well as the deterioration of the relationship between the Museum and Büchel.  In brief, the Museum and Büchel agreed to an installation art project entitled "Training Ground for Democracy" that Büchel described as "essentially a village, . . . contain[ing] several major architectural and structural elements integrated into a whole, through which a visitor could walk (and climb)."  Although the parties did not formalize their relationship with regard to the installation by executing a written instrument, they apparently did agree that Büchel would have sole title to any copyright in the completed work.

Unfortunately, as a result of numerous conflicts and a breakdown in the relationship between the Museum and Büchel, the project was never completed.  Thus, the Museum sought a declaration in federal court that it was entitled to present the materials and "partial constructions" of the installation to the public.  Büchel in turn counterclaimed under VARA and the Copyright Act seeking an injunction preventing the Museum from displaying the unfinished installation as well as damages for alleged violations of his rights.

On cross-motions for summary judgment, the District Court found for the Museum because, although it assumed that VARA applies to unfinished works of art, it concluded that there were no genuine issues of material fact.  The First Circuit agreed with the District Court in some respects but ultimately concluded that there were genuine issues of fact as to some of Büchel's claims under VARA and Section 106 of the Copyright Act.

The lengthy opinion is worth the read for those interested but here's a quick summary of some of the First Circuit's conclusions on the legal issues:

•  VARA applies to unfinished but "fixed" works of art that, if completed, would qualify for protection under the statute
• VARA does not provide a damages remedy for violation of the right of attribution, one of the "moral rights" protected under the statute
• VARA does not cover the separate moral right of disclosure (also known as the right of divulgation), which protects the artist's authority to prevent third party disclosure of the work to the public without the artist's consent
• The failure of claims under VARA does not, necessarily, signify the inadequacy of "more traditional copyright claims"

The cite is Massachusetts Museum of Contemporary Art Foundation, Inc. v. Büchel, No. 08-2199 (1st Cir. Jan. 27, 2010).

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In a collegiate battle over trademarks, the University of South Carolina suffered defeat at the hands of both the TTAB and the Federal Circuit while the University of Southern California walked away the victor.

The University of South Carolina sought registration of its Carolina Baseball Logo mark (pictured in the opinion linked below) composed of the interlocked letters "S" and "C" for "clothing, namely, hats, baseball uniforms, T-shirts and shorts."  The University of Southern California opposed the registration, claiming in part that it would create a likelihood of confusion with its registrations for the letters "SC" in standard character form and for a design mark composed of the interlocked letters "S" and "C" (also pictured in the opinion).

Showing that fighting spirit, South Carolina counterclaimed for cancellation of SoCal's registration of the letters "SC" in standard character form, claiming that the letters falsely suggested an association with the State of South Carolina.

The TTAB disagreed, concluding first that South Carolina lacked standing to bring the cancellation counterclaim and that even if it did have standing, summary judgment would still be granted in favor of SoCal because South Carolina failed to establish a genuine issue of fact as to whether the letters "SC" are "uniquely and unmistakably associated with the State of South Carolina.  In another defeat, the TTAB refused registration of South Carolina's mark, finding that it would create a likelihood of confusion with SoCal's registrations.

On appeal, South Carolina challenged the TTAB's likelihood of confusion conclusion only with respect to three factors:  the similarity of trade channels; the care exercised by consumers in purchasing the goods; and the absence of evidence of actual confusion.

Although the Federal Circuit did not agree with the TTAB's decision on all three of these factors (specifically with respect to the degree of care differing classes of consumers would exercise in making purchases), it ultimately concluded any error was harmless because the conclusion that the marks were legally identical and would appear on the same classes of goods in the same trade channels was sufficient to support a likelihood of confusion finding.

On the issue of standing, the Federal Circuit agreed with South Carolina that the TTAB had taken an unnecessarily limited view of standing because South Carolina only needed to show that it had a reasonable belief that it would be damaged by SoCal's registration and that it had a direct and personal stake in cancellation.  The Federal Circuit had no problem concluding that South Carolina could make that showing.

Victory was short-lived, however, because the Federal Circuit concluded that, although South Carolina had standing to assert its cancellation claim, the claim still failed because South Carolina had failed to show that there was a genuine issue for trial as to whether the letters "SC" uniquely pointed to the State of South Carolina.  Although South Carolina pointed to evidence demonstrating that the public associates the letters with the State, SoCal countered with evidence showing that "SC" refers to many other entities.  And South Carolina itself had, in the context of another issue, submitted evidence showing that at least 16 other universities and colleges represent themselves as "SC."

The cite is The University of South Carolina v. University of Southern California, No. 2009-1064 (Fed. Cir. Jan. 19, 2010) (non-precedential).

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Admittedly this case is not IP-related but it does involve an issue in which I have a particular interest.

On Wednesday, the Supreme Court issued a decision granting a stay of the order of the District Court for the Northern District of California permitting the live broadcast of a civil trial to five other federal courthouses in Seattle, Pasadena, Portland, San Francisco and Brooklyn.  The trial involves the constitutional challenge to California's Proposition 8, which amended the California Constitution to provide that only marriages between a man and a woman are valid or recognized in California.

The Supreme Court's decision gives a detailed description of the history of the District Court's order but ultimately granted the stay preventing the live broadcast of the trial to the federal courthouses on procedural grounds, concluding that the District Court failed to follow appropriate procedure when it amended its local rules to allow for the broadcast.  In deciding the matter on procedural grounds, the Court was quick to assert--in the second sentence of the opinion--that it was not expressing any view on the question of whether trials should be broadcast.  Nonetheless, opinions could differ on whether the tone of the Court's decision does in fact suggest or at least hint at a view on the question.

Justice Breyer, joined by Justice Stevens, Justice Ginsburg and Justice Sotomayor, dissented from the Court's decision arguing in part that the Court was departing from its own practice and was "micromanag[ing] district court administrative procedures in the most detailed way," and that the balance of the equities tipped heavily against issuing a stay.

The cite is Hollingsworth v. Perry, No. 09A648 (U.S. Jan. 13, 2010).

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SafeWorks, LLC, based in Tukwila, Washington, is the owner of several registered SPIDER marks for hoisting and suspended staging and scaffolding equipment.  Spydercrane.com, LLC, based in Arizona, is a crane distribution business that sells truck-mounted cranes.  SafeWorks has manufactured, sold and rented equipment under the SPIDER marks since 1947; Spydercrane began selling cranes under the Spydercrane name in 1999.

SafeWorks learned of Spydercrane after Spydercrane applied to register SPYDERCRANE with the PTO in 2008.  Thereafter, SafeWorks sued Spydercrane for trademark infringement and unfair competition under the Lanham Act and for a related claim under Washington state law.  Following an apparently unsuccessful summary judgment motion by SafeWorks, the matter was tried to the Court.

In its Memorandum Opinion finding for Spydercrane on all of SafeWorks' claims, the District Court concluded that the "most important [Sleekcraft] factors" for judging the likelihood of confusion between the parties' marks favored Spydercrane.

In SafeWorks' favor, the Court found that the SPIDER marks were suggestive and were very strong with respect to lifting, hoisting, safety and suspended access equipment.  Nevertheless, the Court found that the "strength of the mark" factor favored Spydercrane.  The Court found that the parties' goods were sold in separate and distinct markets to divergent classes of customers despite the fact that their goods could be broadly described as "products that are used to lift things."  In addition, the Court noted the prevalence of the use of the terms "spider" and "spyder" in "the commercial world," although it is not clear that the Court took into consideration the specific goods or services with which these marks were used.

Also in SafeWorks' favor, the Court concluded, with some hesitation, that the similarity of marks favored a likelihood of confusion finding given "some parallels" between the parties' products and the use of Spider/Spyder in the names.

The Court found that the remaining factors favored Spydercrane or were neutral.  The Court found that the parties' products, when considered more particularly than merely items used to lift things, were functionally different and were sold to different classes of purchasers (again when examined more precisely than merely those customers affiliated with the construction industry).  Thus, the proximity of the goods factor favored a finding of no likelihood of confusion.  For somewhat similar reasons, the Court also found that the parties' marketing channels were not convergent and therefore did not support a finding of a likelihood of confusion.  Lastly, the Court found that both the degree of care that customers would take with respect to purchase (or rental) of the parties' products and the lack of evidence supporting the existence of an intent to deceive weighed against a finding of a likelihood of confusion.

Thus, taken together, the weight of the factors supported a finding that there was no likelihood of confusion in the marketplace between SafeWorks' SPIDER marks and Spydercrane's SPYDERCRANE mark and the Court found in favor of Defendant Spydercrane.

The cite is SafeWorks, LLC v. Spydercrane.com, LLC, No. 08-00922 (W.D. Wash. Dec. 7, 2009).

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Michael Sones filed an intent-to-use application for the mark "ONE NATION UNDER GOD" for charity bracelets.  After the PTO issued a notice of allowance, Sones submitted his Statement of Use along with a specimen of use consisting of two pages from a website bearing the title "Beaches Chapel School Store."  Under this title, there appeared a listing for "ONE NATION UNDER GOD™ CHARITY BRACELET" followed by further text stating "ONE NATION UNDER GOD™ CHARITY BRACELET CHOICE OF BLUE OR RED $2.00 EACH."  Next to the description appeared a shaded box that stated "Photo not availble [sic]."  The specimen further showed a "shopping cart" functionality for online ordering.

The PTO rejected Sones' Statement of Use stating that the specimen did "not show a picture of the goods in close proximity to the mark."  Sones submitted argument in rebuttal but did not submit a picture of the charity bracelets or any new textual description.  The PTO then issued a final office action affirming the rejection.  The TTAB affirmed the decision stating that "it is readily apparent that [the webpages] do not include a picture of the goods."

On the same day that the TTAB's decision affirming the rejection was mailed, Sones filed a use-based application to register the same mark for charity bracelets.  He submitted a website specimen showing a picture of the bracelet but the alleged use in commerce date was later than that of Sones' original intent-to-use application.

On appeal, the Federal Circuit first disposed of any claim by the PTO that it was not proposing a bright-line rule requiring a picture for every website specimen of use, concluding that "the PTO's position has been consistent from prosecution up to oral argument in this appeal: a website specimen of use must have a picture of the goods."

The Federal Circuit then examined the origin of the PTO's "rule" from the case of Lands' End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992).  That case involved a specimen of use from a mail order catalog for the mark "KETCH" for purses.  The submitted specimen consisted of a catalog page showing a picture of a purse, a description and the term "KETCH."  The court in Lands' End concluded that the use of the term with the picture of the purse and the corresponding description was a sufficient display associated with the goods.

The PTO interpreted Lands' End to require that a catalog specimen include a picture of the relevant goods (among other requirements) and created a new section addressing that requirement in the trademark examining manual for "catalogs as specimens."  In addition, the Federal Circuit examined the cases demonstrating that the PTO had applied this interpretation of Lands' End to website specimens, including "a rigid requirement for a picture."

The Federal Circuit read Lands' End differently, however, concluding that the case did not state that a picture is mandatory or that such a requirement applied to website specimens.  Nor could the Federal Circuit find any basis for a picture requirement in trademark law or policy.  Thus, the Court concluded that

a picture is not a mandatory requirement for a website-based specimen of use, and that the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is "associated" with the goods and services as an indicator of source.

The Federal Circuit therefore remanded the case for the PTO to consider Sones' specimen of use in light of the appropriate standard.

Circuit Judge Newman dissented from the decision contending that Sones had rendered the issue moot by filing the second, use-based application for the same mark for the same goods and submitting a specimen that included a picture.

The cite is In re Michael Sones, No. 2009-1140 (Fed. Cir. Dec. 23, 2009) and includes a photo of the website specimen submitted by Sones.

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In Schrock v. Learning Curve Int'l, Inc., the Seventh Circuit took up the issue of the extent of originality necessary for a copyright in a derivative work as well as the question of what permissions are necessary for the author of the derivative work to have a copyright in the work.

HIT Entertainment owns the copyright to the "Thomas & Friends" train characters and licensed Learning Curve to make toy figures of its characters.  Learning Curve then hired professional photographer Daniel Schrock to take photos of the toys for promotional materials.  After Learning Curve stopped using Schrock's photography services, it continued to use his photos in advertising and product packaging.  Schrock then registered his photos for copyright protection and sued Learning Curve and HIT Entertainment for copyright infringement.

The district court granted the defendants' motion for summary judgment concluding that Schrock did not have a copyright in the photos.  The district court, classifying the photos as derivative works (derivative of the "Thomas & Friends" characters), held that for such works, Schrock needed permission from Learning Curve both to make the photos and to copyright them.  Because Schrock had only the former permission, the district court dismissed his claim for copyright infringement.

The Seventh Circuit reversed, concluding that the district court had made a number of errors of law in granting summary judgment to the defendants.

As an initial matter, the Seventh Circuit noted the "deep disagreement" regarding whether photos of a copyrighted work are derivative works but chose not to weigh in on the disagreement, concluding that it need not resolve the issue and assumed for purposes of the decision that Schrock's photos were derivative works.

Turning to the issues it was prepared to decide, the Seventh Circuit first addressed the question of what standard of originality Schrock's photos must meet to qualify for copyright protection.  Specifically, the defendants argued that the photos must meet a higher standard of originality, relying on language from an earlier Seventh Circuit decision, Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983).  In Gracen, the court stated that the plaintiff could not maintain a suit for infringement of a derivative work because that work was not "substantially different from the underlying work to be copyrightable."

The Seventh Circuit concluded that this language was not intended to establish a higher standard of originality for derivative works.  Reading Gracen in light of other Seventh Circuit authority, the court identified two general principles:  "(1) the originality requirement for derivative works is not more demanding than the originality requirement for other works; and (2) the key inquiry is whether there is sufficient nontrivial expressive variation in the derivative work to make it distinguishable from the underlying work in some meaningful way."

With respect to Schrock's photos, although they were "highly accurate product photos," there was "minimally sufficient variation in angle, perspective, lighting, and dimension to be distinguishable from the underlying works" to entitle the photos to the limited derivative-work copyright protection.

The Seventh Circuit next addressed the district court's conclusion that Schrock needed the permission of the owner of the copyright in the underlying work both to create the derivative work and to copyright the derivative work.

Noting that copyright in a derivative work--and any other work--arises by operation of law upon the fixation of the original expression in a tangible medium, the Seventh Circuit rejected the district court's reasoning.  Thus, as long as Schrock created the derivative works with permission--which he did--he owned the copyright in those works (assuming the other requirements for copyright were satisfied).  However, because the default rule--that copyright in a derivative work arises by operation of law--can be altered by agreement of the parties, the Seventh Circuit remanded the case to determine whether the parties had done so in this case.

The cite is Schrock v. Learning Curve Int'l, Inc., No. 08-1296 (7th Cir. Nov. 5, 2009).

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A recent trademark decision from the Federal Circuit emphasizes the sometimes critical role procedural issues can play in the outcome of a case.

In 2004, Francis Gary Powers, Jr. obtained registration of the mark THE COLD WAR MUSEUM for museum services based on acquired distinctiveness of the mark under Section 2(f) of the Lanham Act (15 U.S.C. 1052(f)).  Mr. Powers later assigned the rights to the mark to The Cold War Museum, Inc.  During the initial prosecution of the mark after the examining attorney had refused registration, Mr. Powers submitted more than 200 pages of material supporting his contention that the mark had acquired distinctiveness.

In 2007, Cold War Air Museum Inc. filed a petition to cancel the registration arguing that the mark was merely descriptive for museum services related to the Cold War.  In support of this claim, it submitted search engine results evidencing the public's understanding of the term "cold war" and excerpts from the mark owner's website and brochure to demonstrate that the museum's contents all related to the Cold War.

The mark owner responded by arguing that even if the mark was descriptive it had become distinctive and was therefore eligible for registration under Section 2(f), that the PTO had accepted evidence submitted during prosecution as sufficient proof of distinctiveness and thus the mark was now presumed valid.  It also argued that the challenger had not presented any evidence showing that the mark should not have been registered under Section 2(f).  The mark owner did not resubmit the evidence of acquired distinctiveness that had been submitted during prosecution.

The TTAB granted the cancellation petition finding that the challenger had proven that the mark was "highly descriptive" and had not acquired distinctiveness.  The TTAB then shifted the burden to the mark owner to show to the contrary.  Although the TTAB acknowledged that evidence of acquired distinctiveness had been submitted during prosecution, it concluded that it could not consider the evidence because the evidence had not been resubmitted in the cancellation proceeding.

The Federal Circuit held that this conclusion was in error and fatal to the TTAB's decision granting the petition for cancellation.  Emphasizing that registration of the mark under Section 2(f) afforded it both a presumption of validity as well as a presumption that the mark had acquired distinctiveness, the Federal Circuit stated that the challenger to the registration must therefore produce sufficient evidence to rebut these presumptions.

First, the Federal Circuit concluded that the TTAB had erred in concluding that it could not consider the evidence of acquired distinctiveness submitted during prosecution as the applicable regulation, 37 C.F.R. 2.122(b), unambiguously states that the entire registration file is automatically part of the record in a cancellation proceeding.  As a result, the challenger must rebut evidence of acquired distinctiveness in the registration file in order to satisfy its burden of proof.

Second, the Federal Circuit held that the challenger had failed to satisfy this burden.  To the contrary, the challenger's arguments in the cancellation proceeding related exclusively to the descriptive nature of the mark, which is irrelevant to the validity of a Section 2(f) registration.  The challenger presented no evidence relating to the acquired distinctiveness of the mark and therefore failed to rebut the presumption of validity.  And, given that failure, the Federal Circuit also concluded that the TTAB had erred in shifting the burden to the mark owner.

The Federal Circuit therefore reversed the TTAB's decision granting the petition for cancellation.

The cite is The Cold War Museum, Inc. v. Cold War Air Museum, Inc., No. 2009-1172 (Fed. Cir. Nov. 5, 2009).

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1800Mattress.com IP, LLC appealed from the TTAB's decision finding that the mark MATTRESS.COM was generic for the services identified in its application for registration, namely, "online retail store services in the field of mattresses, beds, and bedding."  1800Mattress.com challenged the decision arguing that (1) the only generic term for such services is "online mattress stores," (2) businesses outside the genus of online retail store services use "mattress.com" as part of their domain names, (3) the TTAB improperly looked to the components of the mark rather than the mark as a whole, and (4) the TTAB improperly disregarded the nature of the mark as a mnemonic and "as being capable of evoking the quality of comfort in mattresses."  None of these arguments swayed the Federal Circuit.

The Federal Circuit readily agreed with the TTAB's finding that the relevant public understands MATTRESS.COM to be no more than the sum of its constituent parts (the parties did not dispute the genericness of the components), specifically, "an online provider of mattresses."  Nor was it relevant whether the public referred to online mattress retailers as "mattress.com" as the inquiry is what the relevant public would understand upon hearing the term.  And on a related argument, the Federal Circuit rejected 1800Mattress.com's assertion that there could be only one generic term, "online mattress stores."

 Finally, the Federal Circuit agreed with the TTAB's finding that the ".com" "tail" of the mark did not "evoke the quality of comfort in mattresses" and that the mark is not a mnemonic, noting that 1800Mattress.com had failed to prevent any evidence to support such an argument.

The cite is In re 1800Mattress.com IP, LLC, No. 2009-1188 (Fed. Cir. Nov. 6, 2009).

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