Samsung's Counsel Get a Slap on the Wrist for Breaching Confidentiality

As discussed and predicted here in November 2013, Samsung's outside counsel were found to have violated the Court's "Protective Order" in the Apple patent litigation, but received nothing more than "public shaming" from a U.S. Judge.

To address the potential mishandling of proprietary and confidential information during litigation, parties routinely stipulate to entry of a “Protective Order.”

This stipulation takes the form of a Court Order which allows the parties and their counsel to designate documents and information into categories or tiers.

When documents contain highly sensitive information, such as pricing or key licensing terms, the parties are usually able to mark documents as “Outside Counsel’s Eyes Only,” and file such documents under a strict seal so the public cannot get access through the Court’s docket.

Responsible outside counsel take great pains to respect these orders, often at significant cost and inefficiency. Multiple drafts of the same document must be created and digital firewalls maintained with redactions and password-protected file folders.

These day-to-day procedures involved in handling competitors' sensitive data can be onerous to the parties and their outside counsel litigating these cases, but such measures are viewed as necessary to ensure that litigants feel that their sensitive information is not being acquired by their competitors in the guise of discovery exchange.

In the now famous Apple/Samsung patent case, highly confidential licensing terms were apparently contained in a draft expert report on damages that was forwarded to Samsung’s internal personnel without any redactions whatsoever.

The leak of the confidential information only came to light after the case was effectively over, when Samsung happened to be negotiating a license with third party Nokia.  According to testimony, a Samsung executive told Nokia that he knew the terms of the Apple-Nokia license and was able to recite its terms verbatim during the negotiation.  Nokia told Apple, who demanded a formal investigation.

After a Court-ordered investigation, it became clear that Samsung’s outside counsel had posted a draft of its expert’s report on a client file-sharing site that was accessible by Samsung’s staff, and e-mailed instructions for accessing the site, which included over fifty Samsung employees who were not permitted to access the highly confidential information contained therein.

Samsung's outside counsel essentially admitted that all of the above did indeed occur, but denied that the violation was intentional. Samsung argued that no sanctions whatsoever are warranted, despite the harm to Apple and the threat to the integrity of the discovery process.

Frequently, outside counsel entering into the exchange of sensitive discovery materials during intellectual property litigation are asked by their clients whether to trust that the terms of protective orders are respected by their adversaries.

And the standard response that outside counsel typically give to their clients is supposed to allay their concerns:  Any violations of the Protective Order wil be swiftly punished by the Court, thus deterring misconduct.

Not this time.

The Judge found that the only appropriate punishment for Quinn is its "public shaming."  Apparently, that shame will follow the firm all the way to the bank.

As we previously wrote, Americans live under a legal system that is far too tolerant of discovery abuses.

Canadian Olympic Committee Sues North Face for Misleading Customers

An Accused North Face Product

Canadian news is reporting that the Canadian Olympic Committee (the "COC") is suing apparel maker The North Face, alleging that it infringed upon the Olympic trademarks and attempted to mislead customers into believing that it had sponsored the games, when it hasn't.

The lawsuit, which was recently filed in British Columbia, formally alleges that the North Face sold jackets and bags adorned with the maple leaf and "RU/14", which the COC alleges is a reference to Russia and the 2014 Sochi Games, while others featured "2.7.14", an alleged reference to the date of this week's opening ceremonies.  Further, the lawsuit alleges that some of the items were identified with such names as "Men's Sochi Full Zip Hoodie."

The lawsuit claims that the COC had warned the North Face about its concerns on multiple occasions, but that the warnings went largely unheeded.  

The North Face apparently responded by saying:  "[W]e are not an official sponsor of the COC or Team Canada and never indicated we were.  We do not agree with the COC's claims and we are disappointed they have taken this action."

The COC has been accused of overzealously protecting its brand. For example, in 2004, the COC launched a high-profile battle to force the Olympia Pizza and Pasta Restaurant in Vancouver to remove signs that featured the Olympic rings and torch. The restaurant owner defied the committee's demand, and the signage apparently still remains in place today.

Online Oscar "Replica" Seller in Texas Sued for Counterfeiting and Fraud

©A.M.P.A.S.®

The Hollywood Reporter describes a lawsuit filed yesterday against Jaime De La Rosa, a Texas individual who was selling fake Oscar statuettes online.

The Academy of Motion Picture Arts and Sciences (AMPAS) alleges that it first became aware of the existence of these "counterfeit replica" statuettes in November 2013, when it found an eBay listing for an "Academy Award Hollywood Metal Movie Acting Trophy Prop Replica" selling for $850.00.

AMPAS then contacted De La Rosa, who signed a sworn Declaration attesting that he had made seven statuettes, selling six and surrendering one to the Academy.

AMPAS now claims that it has identified four additional statuettes sold by De La Rosa on eBay and another sold by him on Etsy, making De La Rosa's Declaration seemingly false.

AMPAS has filed other lawsuits attempting to protect its intellectual property rights in the Oscar statuettes.  For example, AMPAS sued a chocolatier in North Hollywood who made chocolate figurines.

Officially named the Academy Award of Merit, the Oscar statuette is the most recognized trophy in the world, and has stood on the mantels of the greatest filmmakers in history since 1929.

Since the initial Academy Awards banquet began on May 16, 1929, 2,809 Oscar statuettes have been presented. Each January, additional new golden statuettes are cast, molded, polished and buffed by R.S. Owens & Company, the Chicago-based awards manufacturer retained by the Academy since 1982.  Oscar stands 13 1/2 inches tall and weighs in at 8 1/2 pounds.

On its website, AMPAS notes that the Academy, as the copyright owner of the Academy’s “Oscar” statuette, and owner of its trademarks and service marks, including “OSCAR®,” “OSCARS®,” “ACADEMY AWARD®,” “ACADEMY AWARDS®,” “OSCAR NIGHT®,” “A.M.P.A.S.®” and the federally registered “Oscar” design mark, is required to protect its properties against unauthorized uses and infringements.

Confusion and Conflict Over "Candy Crush" Trademark Status

Over the last several weeks, news reports began to circulate that King.com Limited, the software developer that designed the hugely popular "Candy Crush Saga" game, had trademarked the term "CANDY" in the United States, and had begun to send cease and desist demands to developers who were using the term "candy" in connection with other, unauthorized applications.

The developer is also the creator of PetRescue Saga and the FarmHeroes Saga.

Yesterday, the Los Angeles Times reported on the more accurate status of the matter.

Namely, the game maker had applied for a federally registered trademark for the word "CANDY" nearly a year ago, and on January 15, 2014, the application was "approved for publication" in the Official Gazette.

This status means that the public has thirty (30) days within which to file any formal oppositions to the pending trademark application.

If, after that period, no one objects (or any formally litigated opposition is unsuccessful), the application will proceed to receive a federal registration.

To protest King's trademark application, several game developers have reportedly created a "Candy Jam" protest website that encourages others to create unauthorized games themed around "candy."  Extra credit may be offered to those who also use the words "scroll", "memory", "saga", "apple", or "edge".

One of the creators of the protest website reportedly told the Los Angeles Times: "Reaching a point where a company is allowed to trademark a common word is complete nonsense.  You don't need to have a great understanding of the laws to understand that this is ridiculous and totally unethical."

But these protesters are legally incorrect.  During the prosecution of the application, the U.S. Trademark Examiner conducted an exhaustive search and found that the word "CANDY" is not commonly nor descriptively used in connection with any other mobile digital applications.

The Examiner did find an existing trademark for "KANDY" in one of the classes of services at issue, but that conflict seems to have been resolved.

Trends in the Intellectual Property Legal Marketplace

One of the most frequent questions that I am asked is what trends I see in the areas of intellectual property, brand protection and the marketplace for legal services.

There are a few interesting, long-term trends in the data worth mentioning, that affect everyone and not just lawyers or those who work in the brand protection and IP industry.  Perhaps the most glaring one is that:

The Cost of Doing Business Globally is Going Down, But the Cost of Protecting Intellectual Property Keeps Going Up

By 2014, the out-of-pocket costs of engaging in global commercial activity have become extremely low.  In fact, they are the lowest they have ever been.

For example, a relatively desirable Internet domain name can be leased for only a few dollars a year.  Using templates and shared hosting, virtually anyone can design and host an e-commerce website very cheaply.

This is a departure from a decade ago, when designing a website required an understanding of HTML and related computer languages, technical knowledge generally limited to IT Departments and computer consulting firms.

Similarly, marketing has become cheap.  Today, by using free e-mail accounts and social media platforms like Facebook, Pinterest, Google+ and Yahoo! for communication and marketing, and low-cost international distribution and shipping channels like eBay, Stamps.com, AliBaba and others, a well-managed small business can conceivably generate hundreds of thousands of dollars per year in only a short amount of time.

Yet the out-of-pocket cost involved in protecting a brand against Intellectual Property theft and infringement, both online and in the brick and mortar context, continues to spiral ever upward.

For example, the high-profile attorneys in the Apple v. Samsung patent wars charged their clients $1,200 per hour.  The hourly billing rates at all the large law firms have reached an all-time high, with many lawyers routinely charging well over $1,000 per hour.

And clients who choose smaller law firms and those firms that offer "flat fee" arrangements may get a better deal, but are not immune from the increased competition for high-quality intellectual property legal services.  

For example, one small law firm in Maryland posted its flat fees online, and notes that it is charging up to $12,000 for filing a provisional U.S. patent application.  An appeal if it is denied could add another $8,000.  That may be less than a large law firm's services, but just filing for a patent is still an expensive proposition.

And of course, that is just the first step in protecting Intellectual Property.  Filing for a patent or trademark is no guarantee that it will be respected by others. 

When infringers are inevitably discovered, commencing and pursuing complex litigation against them routinely costs companies many hundreds of thousands of dollars per year.

Therefore, it is clear that while many are finding it easier and easier to start and develop businesses, they are also finding it more and more expensive to effectively protect their Intellectual Property assets against thieves and infringers.

What does this trend signify?  It would appear that the marketplace is beginning to fully understand that the legal services offered by experienced Intellectual Property lawyers are at a premium, because branding and IP assets in general are as valuable -- if not more valuable -- than traditional ones.

Rock Showdown: Queensrÿche Faces Trial Over Trademark Ownership

Queensrÿche with Original Lead Singer Geoff Tate

It appears that hard rock and 1980's "hair bands" are a perennially fertile source of trademark litigation, as well as bar brawls and heady interpersonal drama.

Last year, we reported on the ugly trademark dispute between Ed Kowalczyk and his former band Live as they disputed whether it was appropriate for Ed to continue to bill himself as "Ed Kowalczyk of Live." (According to a recent Rolling Stone interview, that case has been settled).

Now, the original members of progressive heavy metal band Queensrÿche are embroiled in a hotly-contested litigation that is preparing for an imminent trial in a Washington State Court. The band's intellectual property is owned by Tri-Ryche Corporation, which is the company owned by the band's members.

(One legal oddity of this case is that it is an intra-corporate dispute between band members, which is a purely state law matter, whereas the vast majority of trademark cases invoke exclusively federal jurisdiction).

Last year, Rolling Stone reported that fans--and lead singer Geoff Tate himself--were stunned to learn that Queensrÿche had fired its lead singer after nearly thirty years with the band.

For those unfamiliar with Queensrÿche's catalog, it includes such songs as Silent Lucidity and full-length narrative-driven albums Rage for Order and Operation: Mindcrime.

After the 2012 split, two bands were simultaneously using the name and Queensrÿche brand.  They are each identified by their frontman, with one version led by new singer Todd La Torre, with original members Rockenfield, Wilton and Jackson and guitarist Lundgren (who joined in 2009) and the other led by original singer Geoff Tate, with former guitarist Gray, Randy Gane and Robert Sarzo and Simon Wright.

"Queensrÿche" With Lead Singer Todd La Torre

The litigation centers around who should own the rights to control the Queensrÿche brand and related trademarks after an alleged "assault" by Tate on the other band members occurred in Sao Paolo, Brazil early last year.  

The band's core legal argument is that Tate's alleged assault justified his firing as a form 'corporate action' to address his breach of duty to the other members of the entity.

Tate's court papers allege that "[t]he cut-and-thrust of Defendants' motion is that the alleged 'assault' in Sao Paulo, Brazil justifies all of their 'corporate' action under the Business Judgment Rule and leaves Geoff Tate with no defense."

First, Tate argues that there is a genuine issue of material fact demanding a trial regarding what happened in Brazil. Second, Tate substantively disputes the facts and circumstances surrounding the incident in Brazil and does not 'admit' he 'assaulted' anyone.

In his Declaration in Support of the Tates' Motion for a Preliminary Injunction, Geoff Tate swears that Mr. Rockenfield taunted him, saying, 'I fired your wife, I fired your daughter and your son-in-law, and you're next.' Angry, Geoff Tate admits that he 'went after' Mr. Rockenfield, but never touched him."

The Court apparently agreed that a trial was necessary to sort out the mess. According to music blog Blabbermouth, the trial will start in January 2014.

Sounds like a trademark trial worth following.  Stay tuned.

"Thanksgivingukkah" Trademarked Over One Year Ago

Screenshot from ModernTribe.com

"Thanksgivingukkah" is the term being used to describe the very rare confluence of Hannukah and Thanksgiving.

However, those seeking to commercialize the term may want to think twice:  An enterprising Boston resident had the prescience over a year ago to trademark the term.

Local Boston news is reporting that Dana Gitell trademarked the term in 2012, and has partnered with Atlanta-based company Modern Tribe to create a line of Thanksgivingukkah themed merchandise, including an apron with a turkey and a menorah on it.

Toy Company Sues Beastie Boys, Claiming Parody Protects Its Viral Ad

Screenshot from GoldieBlox's website

A progressively-themed company that makes and sells toys that will supposedly help young girls overcome gender stereotypes has become embroiled in a high-profile copyright litigation with the Beastie Boys.  Toy company GoldieBlox says on its website: 

"In a world where men largely outnumber women in science, technology, engineering and math...and girls lose interest in these subjects as early as age 8, GoldieBlox is determined to change the equation.  Construction toys develop an early interest in these subjects, but for over a hundred years, they've been considered "boys' toys".  By designing a construction toy from the female perspective, we aim to disrupt the pink aisle and inspire the future generation of female engineers."

In its recent viral video commercial touting the ingenuity of young girls who build an elaborate contraption that can change the television channel, GoldieBlox intentionally utilized the music and parodied the lyrics from the Beastie Boys' song Girls.

The Beastie Boys were apparently not pleased with GoldieBlox's unauthorized use and sent a cease and desist letter, alleging copyright infringement and demanding that GoldieBlox end its campaign.

Rather than complying with the demands, GoldieBlox countered by filing a Declaratory Judgment Complaint against the Beastie Boys in Los Angeles federal district court, asserting that its usage was parody and fully protected by the First Amendment.

Given the Beastie Boys' recent unhappy experience with copyright litigation, one suspects that GoldieBlox's executives were well aware that this dispute would erupt, and intentionally developed a strategy inducing litigation to fuel its viral campaign to garner "free" publicity.  Whether the gambit works or not is yet to be seen.

Legally, the controlling analysis here is the Supreme Court's decision in 1994 in Campbell v. Acuff-Rose Music, Inc., interpreting the "fair use" defense to musical parodies used in a commercial context.

In that case, the members of the rap music group 2 Live Crew had created a parody of Roy Orbison's iconic "Pretty Woman," called "Big Hairy Woman."  Roy Orbison's estate sued the rap group, alleging that the group's use was not fair or protected free speech, but was an unprotected commercial use.

After years of litigation, the Supreme Court ultimately held that 2 Live Crew's commercial parody may very well be a fair use within the meaning of § 107 of the U.S. Copyright Act, which states:

"In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—




(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;


(2) the nature of the copyrighted work;


(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work."

On appeal, the Supreme Court found the aforementioned four factors must each be applied to every situation on a case by case basis, and that the fact that the parody was used in a commercial context alone was not dispositive.

When looking at the purpose and character of 2 Live Crew's use, the Supreme Court found that the more transformative the new work, the less will be the significance of the other three factors.  The court found that, in any event, a work's commercial nature is only one element of the first factor enquiry into its purpose and character.

Justice Souter, writing for the majority of the Court, then moved onto the second § 107 factor, "the nature of the copyrighted work", finding it has little merit in resolving this and other parody cases, since the artistic value of parodies is often found in their ability to invariably copy popular works of the past.

The Court found the third factor integral to the analysis, finding that the Ninth Sixth Circuit Court of Appeals had erred in holding that, as a matter of law, 2 Live Crew copied "excessively" from the Orbison original.

Justice Souter reasoned that the "amount and substantiality" of the portion used by 2 Live Crew was reasonable in relation to the band's purpose in creating a parody of "Pretty Woman".

The majority reasoned "even if 2 Live Crew's copying of the original's first line of lyrics and characteristic opening bass riff may be said to go to the original's 'heart,' that heart is what most readily conjures up the song for parody, and it is the heart at which parody takes aim." 

The Supreme Court then looked to the new work as a whole, finding that 2 Live Crew thereafter departed markedly from the Orbison lyrics, producing otherwise distinctive music.

Looking at the final factor, the Supreme Court found that the Court of Appeals erred in finding a presumption or inference of market harm.

Parodies in general, the Court said, will rarely substitute for the original work, since the two works serve different market functions.

While Acuff-Rose found evidence of a potential "derivative" rap market in the very fact that 2 Live Crew recorded a rap parody of "Oh, Pretty Woman" and another rap group sought a license to record a rap derivative, the Supreme Court found no evidence that a potential rap market was harmed in any way by 2 Live Crew's parodic rap version.

In fact, the Supreme Court found that it was unlikely that any artist would find parody a lucrative derivative market, noting that artists "ask for criticism, but only want praise."

Applying this same analysis in the newly-filed Beastie Boys case, the courts will need to evaluate each of these same factors to determine if Goldiblox's usage was appropriate or improper.

In the meantime, the GoldieBlox commercial has gone viral, and received nearly 8 million views.

Starbucks Loses Big Against CHARBUCKS in the Court of Appeals

Starbucks lost a significant trademark appeal before a panel of three judges of the U.S. Court of Appeals for the Second Circuit in a case that it had brought against a small coffee shop that had named itself "CHARBUCKS".

Starbucks had filed a trademark infringement and dilution suit in federal court in New York against Black Bear Micro Roastery, which is operating a "CHARBUCKS"-named coffee shop in Tuftsboro, New Hampshire.

Starbucks' legal claim rested almost entirely on the theory that the play on the word STARBUCKS by  Black Bear constituted dilution by blurring.

Blurring is a species of trademark dilution that does not require that consumers are confused into thinking that the Plaintiff makes, endorses or sponsors the Defendant's products or services, but merely that the unauthorized use is likely to "blur" the mark's distinctive quality.

Blurring is distinct from the tarnishment theory of dilution, which seeks to determine if the famous mark is being called into disrepute by association with unsavory themes or words.

After a two day bench trial, the District Court rejected Starbucks' evidence, and found that the Defendant's use was not likely to blur the fame or distinctiveness of the famous Seattle coffee brand.

Starbucks subsequently appealed, and this week, a panel of three judges unanimously agreed that Starbucks had failed to carry its burden of proof at trial.  Starbucks has said that it respects but disagrees with the panel's decision.  Starbucks may seek review by the entire Circuit Court, in a rare but not unprecedented legal maneuver.

Samsung and Its Outside Counsel Facing Sanctions For Breaching Confidentiality: But Will the Punishment Fit the Offense?

Before Apple and Samsung litigated their now epic patent trial before a federal district court, they were engaged in routine discovery practices, which involved the exchange of the fierce competitors’ highly sensitive licensing information.

To be sure, such disclosure is commonplace and indeed required by discovery in the United States' Federal Rules of Civil Procedure.

To address the potential mishandling of proprietary and confidential information, parties routinely stipulate to entry of a “Protective Order.”

This stipulation takes the form of a Court Order which allows the parties and their counsel to designate documents and information into categories or tiers.

When documents contain highly sensitive information, such as pricing or key licensing terms, the parties are usually able to mark documents as “Outside Counsel’s Eyes Only,” and file such documents under a strict seal so the public cannot get access through the Court’s docket.

Responsible outside counsel take great pains to respect these orders, often at significant cost and inefficiency. Multiple drafts of the same document must be created and digital firewalls maintained with redactions and password-protected file folders.

These day-to-day procedures involved in handling competitors' sensitive data can be onerous to the parties and their outside counsel litigating these cases, but such measures are viewed as necessary to ensure that litigants feel that their sensitive information is not being acquired by their competitors in the guise of discovery exchange.

In the now famous Apple/Samsung patent case, highly confidential licensing terms were apparently contained in a draft expert report on damages that was forwarded to Samsung’s internal personnel without any redactions whatsoever.

The leak of the confidential information only came to light after the case was effectively over, when Samsung happened to be negotiating a license with third party Nokia.  According to testimony, a Samsung executive told Nokia that he knew the terms of the Apple-Nokia license and was able to recite its terms verbatim during the negotiation.  Nokia told Apple, who demanded a formal investigation.

After a Court-ordered investigation, it turns out that Samsung’s outside counsel had posted a draft of its expert’s report on a client file-sharing site that was accessible by Samsung’s staff, and e-mailed instructions for accessing the site, which included over fifty Samsung employees who were not permitted to access the highly confidential information contained therein.

Samsung's outside counsel has essentially admitted that all of the above did indeed occur, but denies that the violation was intentional. Samsung incredibly argues that no sanctions whatsoever are warranted, despite the harm to Apple and the threat to the integrity of the discovery process.

The Magistrate Judge appears to be mulling what sanctions are appropriate for the apparent violation of the Court’s Protective Order.

Frequently, outside counsel entering into the exchange of sensitive discovery materials during intellectual property litigation are asked by their clients whether to trust that the terms of protective orders are respected by their adversaries.

And the standard response that outside counsel typically give to their clients is supposed to allay their concerns:  Any violations of the Protective Order wil be swiftly punished by the Court, thus deterring misconduct.

But let’s face reality for a moment:  Unless the fines imposed on Quinn Emanuel, Samsung’s outside counsel here, are truly draconian in nature, the misconduct is likely to go largely unpunished.

Quinn Emanuel undoubtedly billed millions upon millions of dollars in legal fees to Samsung for its litigation services, and any fine imposed is likely to be paltry in comparison to the violence such conduct does to the integrity of the discovery process and the commercial harm to Apple.

And, in the event that the fines imposed the Magistrate were truly draconian in nature, what is the likelihood that Judge Koh would enforce them?  The Court has already reduced the damages awarded to Apple against Samsung by the jury from over $1billion to less than half.

Further, even if Judge Koh found the nerve to impose a draconian penalty against the misconduct, Quinn Emanuel and Samsung will inevitably appeal to the U.S. Court of Appeals for the Ninth Circuit.  What are the odds that that California-based appellate court would sustain a draconian penalty against Samsung and/or its outside counsel?  Slim to none, I suspect.

Therefore, while Quinn Emanuel very well may have inadvertently violated the Protective Order rather than willfully, parties facing high-stakes intellectual property litigation requiring the exchange of highly sensitive data with competitors would be well advised to consider the risks inherent in litigating against a fierce adversary with all the wrong incentives, in a legal system that is far too tolerant of discovery abuses.

The Selfie Trademark: Struggling to Own the New Slang

In the modern world of interactive social media, new words are invented, used and discarded at lightning speed.

Indeed, the lexicon of online social media is replete with an entirely new vocabulary composed of Internet "slang."  There are thousands of examples percolating on the Internet, with dictionaries and even online translators devoted to these emerging linguistic trends.

Some examples of words that started as Internet slang and which are now mainstream are: "cookies" (a small piece of data embedded in an Internet browser), "photoshopped" (referring to the popular software graphics program that allows for visual 'touching up' of digital photographs) and "spam," (those annoying bulk e-mail messages that clog up our inboxes).

But some entrepreneurs are hoping that such slang terms are capable of functioning as trademarks. For example, the word "selfie" means a photograph taken of oneself (usually with a smartphone) that is planned to be uploaded to Facebook, Instagram, Imgur or another social media networking website.

But several brand owners are trying to monopolize this term, even before it fully enters the mainstream lexicon.  

Thinkboks LLC, an Illinois based software development company, has filed a formal trademark application for "SELFIE" in connection with "computer application software for allowing hands free photographs on portable electronic devices."  Thinkboks claims that it first used the term in commerce in 2012.

Screenshot of Thinkboks.com

The Trademark Office was not persuaded and recently denied the application on the basis that “SELFIE” is defined as “a slang term used to describe a photo that is taken of oneself for the purpose of uploading it to social networking sites  and image sharing websites, such as Facebook, Instagram or Imgur”.

To illustrate his point, the Examiner attached screenshots of websites (italicized emphasis added) in which the term was used by third parties descriptively:  “With our face detection and timer modes, you will love taking selfies at home or on the go!” and "It’s simple and easy and it helps with taking selfies! . . .”

The Examiner found that as shown by the Internet evidence, the wording “SELFIE” and/or its inflected forms is used to describe a feature, subject matter, use, and/or the nature of selfie software, i.e., software for taking pictures of oneself.   

Material obtained from the Internet is generally accepted as competent evidence to determine if a mark is being used widely as a descriptive term.  Accordingly, Thinkboks' trademark application was rejected on grounds of descriptiveness under Trademark Act Section 2(e)(1).

In addition to or in the alternative to submitting evidence and arguments in support of registration, Thinkboks can amend the application to seek registration on the Supplemental Register.

However, that approach means that Thinkboks would need to wait as long as five years to renew its attempt to receive a trademark registration, and would need to swear under oath that, during the interim five years, it alone made "substantially exclusive use" of that mark in commerce.

Therefore, if Thinkboks cannot successfully monopolize usage using legal means, it can only succeed by convincing the marketplace generally that "SELFIE" is associated exclusively with it.  And that's likely an uphill endeavor.

In the meantime, others are trying a similar strategy.

Selfie Social, a New Jersey-based company, is seeking to register the trademark for "Selfie Social" in connection with computer applications used for the collection of photographs.  The Examiner rejected this application on the same "descriptiveness" grounds.

Further, an unidentified person or company currently cloaked with privacy protection services has apparently registered the domain name "SELFIE.COM" and is accepting requests for new screen names.

If this isn't Thinkboks' domain name, they may face an even steeper uphill climb than they bargained for.

Preliminary Injunction Against MAXIM Deodorant Denied, Court Finds "Insufficient" Harm to the Brand From Unlicensed Use

In a startling decision, a federal court refused to grant a court order against the continued unauthorized use the trademark "MAXIM" to sell antiperspirant, on the basis that the likely consumer confusion and harm to the brand was not sufficiently "irreparable" to justify a preliminary order halting the infringement.

Maxim magazine is a popular mens' "lifestyle" magazine with a circulation of over two million. Maxim magazine's publishers, Alpha Media Group, intend to license the "MAXIM" trademark to a line of body sprays, perfumes and colognes.

Corad Healthcare, Inc. manufactures antiperspirants to treat hyperhidrosis, a medical condition which causes excessive sweating. Corad has used the term MAXIM since 2001, but historically used clinical-looking packaging  on "prescription-strength" medication.

More recently, Corad began to use colorful packaging with "lifestyle" graphics, such as pictograms denoting golf and exercise. Further, Corad's "Maxim" name on its antiperspirant wipes started to look a lot more like Maxim's logo.  Consequently, upon learning of the new packaging, Alpha Media sued Corad, and sought a preliminary injunction.

The Accused Products

The court rejected the plaintiff's application for a preliminary injunction.  In its decision denying Alpha's motion, the District Court essentially agreed that there was the potential for Maxim's publishers to lose the ability to control its brand through Corad's unlicensed third party use. However, the Court then found that the publishers did not put forth evidence that such a result "will, in fact, occur."

The problem with the court's decision is that it requires a brand owner to prove the impossible until after the damage is already done.

Furthermore, a simple economic analysis demonstrates the flaw in the Court's logic.

It used to be the law that a preliminary injunction should usually issue when the use of a mark creates a likelihood of confusion in the consumers' minds as to the ownership or sponsorship of a product, because a high probability of confusion as to sponsorship almost inevitably establishes irreparable harm.

However, in 2010, in Salinger v. Colting, Judge Calabresi sitting in the Second Circuit Court of Appeals, penned a copyright decision finding that "a court deciding whether to issue an injunction must not adopt 'categorical' or 'general' rules or presume that a party has met an element of the injunction standard.

In plain English, Judge Calabresi effectively required that intellectual property owners factually "prove" the impossible, before it occurs:  that they are likely to be harmed by unlicensed third parties abusing their rights.

The reason such factual proof is impossible is not because it is untrue. It is because there is no simple way to measure the harm to a brand before such harm actually occurs. And once that harm occurs, it cannot be recovered. Judge Calabresi is a renowned law and economics scholar who should fully understand this point.

Here is an example:  Suppose Maxim's publishers seek to market and expand their brand to sell antiperspirants.  They set up a meeting with an established company that manufactures and distributes such products (such as Procter and Gamble).

In this hypothetical scenario, P&G would decline to market the Maxim-branded products on the basis that the trademark is already registered and used by Corad.

There is no way to ever calculate with precision the economic "harm" wrought on Alpha by the continued existence of Corad's unlicensed product in the marketplace.  

However, the economic opportunity cost to Alpha is significant:  It cannot meaningfully market a product that was its right to do so until after trial, which could be four years away.

At the conclusion of the lawsuit, a jury might award damages to Alpha Media based upon Corad Healthcare's infringement.

However, as this chart shows, the recovery of Corad's profits does not equal the opportunity cost to Maxim's publishers.  In other words, Alpha loses out on more than Corad actually gains:

The Second Circuit Court of Appeals has ignored this reality, and effectively would require that intellectual property owners suffer these losses.

The problem is that Corad will never be able to adequately compensate the publishers for the harm it causes to the brand owner.  Such "irreparable injury" is precisely why preliminary injunctions were commonplace when a brand owner could prove a high likelihood of confusion.

Under the new, "non-categorical" standard in the Second Circuit, brand owners must suffer these losses due to no fault of their own.

Canada Goose Sues Sears For Selling "Knockoff" Parkas

Canada Goose, maker of high quality and fashionable parkas, has filed a trademark infringement lawsuit in a Toronto federal court against Sears Canada, Inc., accusing the department store of selling a 'lower-end' misleading 'knockoff' jacket that is causing consumer confusion.

The Canada Goose design at issue is three quarters length, with a genuine coyote fur-trimmed hood called the "Kensington Parka" that sells for $695.00.  Canadian news reports that the accused Sears jacket sells for $199.00.

Last year, Canada Goose launched a similar trademark infringement lawsuit against Toronto-based International Clothiers, Inc. The parties settled that suit on undisclosed terms. Both disputes center around the of a logo in a circle.

Gioconda Law Group and Arthur Kenzie Settle Domain Name Dispute

The Gioconda Law Group PLLC and Arthur Wesley Kenzie have settled the dispute that had been pending before the New York federal district court, involving the misspelled domain name GIOCONDOLAW.COM.

The parties to the underlying dispute settled their differences through a mutually acceptable Settlement Agreement under which the GIOCONDOLAW.COM domain name will be permanently transferred to the law firm.  The Agreement is in the process of being submitted to the federal district court for final approval.

The parties disagree about whether the particular methodologies employed constitute an 'interception' of e-mail, and could therefore violate the Wiretap Act.  Furthermore, Arthur Kenzie has denied any wrongdoing or cybersquatting.

However, both parties agree that the vulnerability that this case exposes is indeed very important and one that all organizations should take seriously.

Furthermore, the public disclosure of discovery in this case may have revealed third parties' vulnerabilities in a manner that could have raised even greater data security concerns.

The use of unencrypted, misaddresses e-mail can create significant security risks to organizations, and all all organizations should also consider registering multiple misspellings of their domain names and using encrypted e-mail protocols to mitigate this risk.