Thursday, April 29, 2010

Craigslist awarded $1.3 million judgment in copyright infringement case

Last week, Craigslist sent a clear message to sites offering third-party posting software., owned by one Igor Gasov, had been offering customers the ability to post (including multiple postings) and manage ads on Craigslist. Craigslist sued them for copyright infringement, referencing the Digital Millennium Copyright Act, the Computer Fraud and Abuse Act, and trademark law. The defendants didn’t contest, and Craigslist was awarded a $1.3 million judgment.

In the past, other companies have offered Craigslist posting software, but Powerpostings took it too far. They also offered listing agents, who would post ads for customers, and they used false email addresses on Craigslist. No doubt there were several violations of Craigslist’s terms of use, in addition to the alleged trademark and copyright violations. Because Powerpostings didn’t appear in court, Craigslist didn’t have to prove anything. Craislist would have had to prove they registered parts of their Web site, and that Powerpostings copied those parts, for copyright infringement to have taken place. But considering all the allegations against them, it was probably a smart move for Powerpostings to accept a lesson learned the hard way.

Friday, April 16, 2010

Dental Design Patent and Trademark Infringement: Discus v. Biolase

Discus Dental and Zap Lasers, makers of surgical laser instruments, and cofounded by Dr. Dorfman, notable from his ABC's Extreme Makeover show, filed a complaint in the U.S. District Court for the Central District of California against a company called Biolase, which makes an “iLase” cordless medical laser. The claims were made against Biolase after it began to market its iLase product for sale in the U.S. in March.

According to the Complaint, the issue involves Discus' product the Styla, which is a hand-held cordless soft-tissue laser device, U.S. Patent No. D587,803. Discus claims patent infringement of the design of the Styla in view of a hand-held laser device that Biolase has. The claim for trademark infringement is a bit unclear because we believe that Biolase's product is simply called "iLase".

Biolase CEO David M. Mulder recently stated that "we are very confident in the breadth of our intellectual property portfolio, and in the strength of our laser technology, and we intend to vigorously defend the Company against these allegations levied by Discus and Zap."

Biolase asserts that the suit is being made merely for the design of the unit, and not its functionality or technology.

Wednesday, April 14, 2010

True Blood Wine Stirring Trademark Trouble

In 2008, HBO created the hit show True Blood, which has since become the most watched show on HBO since the Sopranos. Years before the show, in 2002, TI Beverage Group created True Blood wine, and registered the trademark. TI beverage group must have found it interesting that the HBO program featured a fictional drink called Tru Blood. They weren’t amused, however, when HBO and Hot Topic paired up in 2009 to produce a drink called Tru Blood, based on the show and made from blood oranges. TI’s trademark infringement lawsuit against HBO and Hot Topic was dropped though, after the product was removed from the shelves. The suit was filed again last week, when True Blood began appearing once more at Hot Topic.

The case is reminiscent of recurring trademark litigation involving Duff beer, Homer’s beer of choice on The Simpsons. Over the years, a few different breweries, both in the states and abroad have tried to produce Duff beer, with varying degrees of success. 20th Century Fox and Matt Groening (creator of The Simpsons) have never agreed to license Duff beer, mainly because of concerns that it would encourage underage drinking. All companies that have tried to market Duff have been promptly sued for trademark infringement. The most notable case involves a brewery from Australia that produced about 10,000 cans of Duff before being shut down by 20th Century Fox. From time to time, unopened cans of Australian Duff beer sell for thousands of dollars on Ebay.

Monday, April 12, 2010

Ebay Trademark Infringment of Tiffany

New York based jeweler Tiffany & Co. have been hard hit by a ruling from last week, in a case against Ebay for trademark infringement. A district appellate court ruled that Ebay “did not engage in trademark infringement, false advertising or trademark dilution.” Apparently, Tiffany conducted research that indicated around 70% of Tiffany’s merchandise on Ebay was fake. This led to the current legal dispute, and Tiffany & Co. wants Ebay to assume responsibility for selling counterfeit merchandise.

But Ebay says they’re doing all they reasonably can to deter the sale of counterfeit goods. Selling counterfeit merchandise on Ebay is officially against the rules, but enforcing the rules is mainly up to Ebay buyers who can report suspected counterfeits. And, according to last week’s decision, it’s the individual sellers who are guilty of trademark infringement, not Ebay itself. For the last few years, rulings have been back and forth on the issue. For example, France ruled against Ebay in a similar suit last year.

Tiffany & Co chairman and chief executive officer Michael Kowalski commented:
“As an e-commerce leader, eBay has a responsibility to protect consumers and promote trust in its marketplace. eBay knew that counterfeit merchandise was being sold on its site – and eBay took no effective steps to stop it. eBay deliberately misled consumers for profit, and unfortunately, the court has justified its actions. The consumer is the real loser today."

However, Lake Forest, California-based National Trademark Investigations (NTI), offers a practical solution for consumers affected by trademark infringement. NTI recently launched the Web site “” as a collaborative tool for buyers to combat counterfeits. Visitors to the site can report suspected counterfeit goods anonymously on the “fake finder” and view a gallery of reported fakes.

According to Mike Santoni, president of NTI, has been created to help combat the problem of counterfeiting in three ways. First, consumers can reach out for help determining whether an item they have purchased is legitimate branded merchandise, or a knock-off. Secondly, each time is able to conclusively identify and report on a counterfeit, it adds to the searchable gallery on the site as a resource for the public. And finally, it provides brand owners with a new source of information about knock-offs that they can use in their anti-counterfeiting efforts.”

Tuesday, April 6, 2010

M&M Trademark Infringement with Zorro

From time to time, the Mars candy company teams up with entertainment execs to market M&M’s dressed as iconic Hollywood characters. Apparently, they didn’t team up with Zorro Productions, Inc ("Zorro"). Zorro is suing Mars (and ad agency BBDO Worldwide) in the U.S. District Court of Northern California for trademark infringement, unfair business practices, and dilution under the Lanham Act.

Last fall, Mars used the famous masked character in its Halloween advertising, with a “Zorro M&M.” But Zorro, Inc., alleges that the Zorro character is protected under trademark and trade dress law, and that Zorro is famous, whether for movies, costumes, or M&M’s. It’s another reminder that when involved in the creative process, if you’re using someone else’s intellectual property, you still need their permission. Even if you’re using said property in a new and creative way.

Although, it seems that BBDO doesn’t care too much about the threat of litigation. They’ve been sued before (and lost) for the exact same thing – and M&M representation of the Times Square “Naked Cowboy.”