Posted on April 29, 2011 by Stacia Lay

Recent Copyright & Trademark Filings in the Western District of Washington

Copyright

Northwest Territorial Mint, LLC v. Hangzhou Cool Eagle Hardware Mfg. Co., No. 11-00694-RSL (W.D. Wash.) filed April 25, 2011

 According to the complaint, Northwest Territorial Mint is a custom mint that designs, manufactures and sells coins and other collectables for the U.S. military, federal, state and local governments, and corporations.  NW Territorial Mint displays its coin designs and photographs of its coin artwork on its website, for which it obtained a copyright registration.

NW Territorial Mint alleges that Cool Eagle also sells coins and collectables through its online store as well as third-party resellers such as eBay.  According to the complaint, Cool Eagle's website and coins copied NW Territorial Mint's artwork.  In 2010, NW Territorial Mint complained to eBay that it was hosting auctions for Cool Eagle coins that copied NW Territorial Mint's designs.  In apparent response to that complaint, in March 2011, NW Territorial Mint received an email from Cool Eagle admitting that it had "infringed upon your intellectual property," apologized for doing so and indicating that it had taken action to correct the infringement.  Notwithstanding Cool Eagle's email, however, NW Territorial Mint alleges that Cool Eagle continues to copy its designs.

NW Territorial Mint alleges claims for copyright infringement, a constructive trust upon illegal profits and an accounting.

Complaint, minus attachments, here.

VendNovation, LLC v. Apex Indus. Technologies LLC, No. 11-00700-JLR (W.D. Wash.) filed April 26, 2011

According to the complaint, VendNovation develops software and hardware for use in vending machines, including server-hosted software that controls and remotely monitors vending machines through the web.  VendNovation alleges that Apex Industrial Technologies markets and sells vending machines.

VendNovation alleges that it and Apex entered into agreements (explained in greater detail in the complaint) under which VendNovation agreed to provide its software and control boards for use in vending machines that would be marketed, sold and installed by Apex.  In January 2011, VendNovation alleges that it learned that Apex had begun ordering vending machines without VendNovation's control boards and that Apex had instead developed its own control board and software to compete with VendNovation's works.  According to VendNovation, Apex's competing products used VendNovation's trade secrets and copyrighted works.

VendNovation alleges claims for copyright infringement, a constructive trust upon illegal profits, an accounting, breach of contract, breach of the implied covenant of good faith and fair dealing, misappropriation of trade secrets, unfair business practices, breach of the duty of loyalty and a declaration of exclusive ownership as to the enhancements or derivative works allegedly created by Apex.

Complaint, minus attachments, here.

Trademark

Goodrich v. Allen, No. 11-00687-RSM (W.D. Wash.) filed April 22, 2011

 According to the complaint, Debbie Goodrich's business "is devoted to providing education and entertainment pertaining to birds, particularly parrots, and other animals, as well as marketing and selling related products and services."  Goodrich alleges that she adopted the name "The Parrot Lady" in connection with presentations in Washington and later California.  In 2001, she obtained a Washington business license under the name The Parrot Lady Educational Entertainment and later obtained the domain name parrotlady.com and a Facebook page advertising her services and products.

Goodrich alleges that Karen Allen, a resident of California, markets and sells products and services related to birds and that she obtained a registration for the mark THE PARROT LADY in 2006 in connection with exotic bird breeding and grooming.  Goodrich further alleges that, among other things, Allen or her representatives contacted Facebook asserting rights in THE PARROT LADY mark, which led to the removal of Goodrich's Facebook page.  Goodrich also claims that Allen or her representatives contacted other of Goodrich's vendors, service providers and potential or actual customers asserting rights in THE PARROT LADY mark.

Goodrich alleges claims for a declaratory judgment of non-infringement, cancellation of Allen's registration, tortious interference with business expectancies and relations and unfair competition and trademark infringement under the Lanham Act.

Complaint, minus attachments, here.

Brian Carter Cellars, LLC v. Casa Bruno, LLC, No. 11-00723 (W.D. Wash.) filed April 28, 2011

 According to the complaint, Brian Carter Cellars owns a registration for the mark ABRACADABRA for red wine, white wine and wine.  Brian Carter Cellars alleges that Casa Bruno is an importer and distributor of wine, including a wine made by the French winery Domain le Chemin des Reves that is marketed under the mark ABRACADABRA.

Brian Carter Cellars alleges that Casa Bruno sells an "Abracadabra 2008 Rouge AOC Pic Saint Loup" red wine in the United States.  Brian Carter Cellars also alleges that in March and April 2011, it asked Casa Bruno to cease importing and selling ABRACADABRA wine from the French winery but that Casa Bruno refused to do so.

Brian Carter Cellars alleges claims for trademark infringement and false designation of origin under the Lanham Act and unfair competition under Washington state law.

Complaint, minus attachments, here.

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Posted on April 21, 2011 by Stacia Lay

Fame of Citigroup Marks Fails to Win the Day in Citigroup Opposition

Citigroup filed an opposition to four standard character mark applications filed by Capital City Bank for the following marks:  CAPITAL CITY BANK; CAPITAL CITY BANK INVESTMENTS; CAPITAL CITY BANK GROWING BUSINESS; and CAPITAL CITY BANC INVESTMENTS.  The TTAB dismissed Citigroup's opposition, concluding that there was neither a likelihood of confusion nor dilution from registration of Capital City's marks.

The Federal Circuit affirmed the dismissal, concluding that although a number of the relevant factors supported Citigroup, a proper weighing of the most relevant factors supported a finding of no likelihood of confusion:

Citigroup's approach of mechanically tallying the DuPont factors addressed is improper, as the factors have differing weights.  Although the T.T.A.B. deemed the CITIBANK mark famous, fame is only one of the thirteen DuPont factors.  [Capital City's] marks do not employ the C-I-T-I spelling or compound word structure, characteristics that contribute to the fame of Citigroup's marks.  Because those characteristics are not present in [Capital City's] marks, the fame factor is less persuasive than it is typically.  Pervasive third-party use of the phrase "City Bank" in marks for financial services also limits the protection afforded to the CITIBANK mark.  The dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression strongly supports a finding of no likelihood of confusion.  Additionally, no instances of actual confusion have been reported despite opportunities for confusion to have occurred.  But because a standard character registration would cover potential variations of the [Capital City] applications that create a different commercial impression from [Capital City's] past uses, the "actual confusion" factor has limited probative value in this case.

Weighing these factors, the Federal Circuit concluded that the TTAB correctly found that Capital City's marks were not likely to cause confusion with Citigroup's marks and affirmed dismissal of Citigroup's opposition.

The Federal Circuit did not address Citigroup's dilution claim, which Citigroup did not discuss on appeal, because Citigroup contended that "'proper consideration of all the reasonable manners of display demonstrates a clear likelihood of confusion' and 'this Court need not consider the issue of dilution to reverse the Board's dismissal below.'"

The case cite is Citigroup Inc. v. Capital City Bank Group, Inc., No. 2010-1369 (Fed. Cir. March 28, 2011) (Opposition No. 91177415).

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Posted on April 21, 2011 by Stacia Lay

Domain Name Owner Suffers ACPA Loss After UDRP Win

Newport News Holdings Corporation ("Newport News") is a women's clothing and accessories company that owns five federal registrations for the mark NEWPORT NEWS in connection with the sale of those products through catalogs and over the Internet.  Newport News also owns the domain name newport-news.com.

Virtual City Vision ("Virtual City") owns at least 31 domain names that incorporate the names of geographic locations and Virtual City's intent was to create websites that provided information and advertising related to those locations.

In 1997, Newport News attempted to purchase the domain name newportnews.com but it had already been purchased by Virtual City.  In 2000, Newport News brought a UDRP complaint against Virtual City, alleging that newportnews.com was confusingly similar to Newport News' NEWPORT NEWS marks.

Newport News was unsuccessful, however, as the UDRP panel concluded that, although the mark and the domain name were identical,

"visitors to [Newport News'] branded web site, who seek out the latest women's clothing and home fashions would clearly not be confused when seeing a home page of another web site, bearing an identical mark, that explicitly provides city information . . . with no connection whatsoever to women's and home fashions." . . .  The panel further held that [Virtual City's] website provided "bona fide service offerings," which included "disseminat[ing] city information in an effort to increase tourism and other visitor traffic to the city." . . .  Significantly, with respect to [Newport News'] claim of bad faith, the panel noted that "given the total absence of competition between the businesses of [Newport News and Virtual City] . . . [Virtual City] did not register the contested domain name in an effort to cause any likelihood of confusion.

Following a "deliberate metamorphosis" of its newportnews.com website, however, Virtual City was not so successful in the next litigation confrontation with Newport News.

In 2008, Newport News sued Virtual City alleging claims for, in part, violation of the Anticybersquatting Consumer Protection Act.  The District Court later granted summary judgment in favor of Newport News on its ACPA claim.

On appeal, among a number of other issues, the Fourth Circuit affirmed the grant of summary judgment on the ACPA claim. With respect to the issue of bad faith and Virtual City's use of the domain name newportnews.com, the Fourth Circuit found the District Court had reached the correct conclusion:

Here, even drawing all reasonable inferences in favor of [Virtual City], the record is clear that after November 2007, [Virtual City] was no longer in the business of providing information about the city of Newport News.  The contrast between the newportnews.com website and [Virtual City's] other locality websites, which were dominated by links and advertisements for businesses and activities in those cities, is stark.  Unlike those websites, newportnews.com went from being a website about a city that happened to have some apparel advertisements to a website about women's apparel that happened to include minimal references to the city of Newport News.  The district court correctly held that, once [Virtual City] largely abandoned its city information service, it ceased to have a right to use the name of Newport News to describe such service.

The Fourth Circuit also held that the District Court properly concluded that the prior UDRP decision in Virtual City's favor supported a finding of bad faith.  That decision's finding of no bad faith was supported by, at that time, the total absence of competition between Newport News and Virtual City.  Thus, "[t]he fact that, in the face of this cautionary language, [Virtual City] later purposefully transformed its website into one that competed with [Newport News] by advertising women's apparel is a legitimate factor within the totality of the circumstances supporting the district court's finding of bad faith."

The case cite is Newport News Holdings Corp. v. Virtual City Vision, Inc., No. 09-1947 (4th Cir. Apr. 18, 2011).

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Posted on April 12, 2011 by Stacia Lay

SDNY on Definition of "Work" for Purposes of Statutory Damages under the Copyright Act

Plaintiffs had succeeded on proving liability for secondary copyright infringement on summary judgment, now the case proceeded to the damages stage.  In this order, the District Court addressed the issue of the definition of "work" for purposes of plaintiffs' claims for statutory damages under the Copyright Act.

At issue were 9,715 of plaintiffs' sound recordings.  Relying on Bryant v. Media Rights Productions, Inc., 603 F.3d 135 (2d Cir. 2010) (previously blogged here) and the language of Section 504(c)(1) of the Copyright Act, defendants argued that plaintiffs may only recover one statutory damage award for any sound recording that was made available as part of an album even if that individual sound recording was also issued as an individual track at some point.

The District Court rejected defendants' argument, concluding that "[n]othing in the Copyright Act [or Bryant] bars a plaintiff from recovering a statutory damage award for a sound recording issued as an individual track, simply because that plaintiff, at some point in time, also included that sound recording as part of an album or other compilation."  Thus, the District Court concluded that:

Plaintiffs may recover a statutory damage award with respect to each sound recording that (1) Plaintiffs made available as an individual track, and (2) that was infringed on the LimeWire system during the time period in which it was issued as an individual track.  However, for those sound recordings that Plaintiffs issued only as part of an album, Plaintiffs can recover only one statutory damage award for that album, not for each individual sound recording.

The case cite is Arista Records LLC, et al. v. Lime Group LLC, Case No. 1:06-cv-05936-KMW-DCF (S.D.N.Y. Apr. 4, 2011).

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