In a case that spotlights the growing importance of search engines to commerce, NameSafe has sued a competitor, LifeLock, for trademark infringement involving ads placed next to search results.
NameSafe, which like LifeLock sells services designed to protect customers against identity theft, alleged its rival used NameSafe's name in deceptive search ads on Google, Yahoo, and other search engines.
"The ads created by defendant deceptively contain the words 'NameSafe' and 'NameSafe.com' and those marks are often displayed as hyperlinks. Consumers following the hyperlinks are wrongfully and deceptively directed to the defendant's Web site," the suit said. "Thus, consumers are confused and mislead as to origin of NameSafe's services since defendant's ads result in the appearance of an affiliation between NameSafe and defendant."
This exhibit in the lawsuit purports to show a search for 'Namesafe' that shows Namesafe's name as the top sponsored result, along with a link to rival LifeLock's Web site.
LifeLock denied buying keyword search terms itself that use a rival's trademark, but blamed the issue on one of its 3,000 partners that resell its services.
"We have contacted our reseller network to remind them of the importance of compliance with LifeLock's requirements. We have been informed that a non-compliant reseller purchased the term 'NameSafe.' The reseller has subsequently been terminated," the company said in a statement. "LifeLock will not tolerate violations of our compliance guidelines from any independent reseller."
The suit, filed Wednesday in federal court in the middle district of Tennessee, also accuses Lifelock.com of violating the Tennessee Consumer Protection Act. Namesafe is seeking payment for damages and attorney fees and an injunction that would prohibit LifeLock from using Namesafe's trademarks confusingly in advertisements.
Search: Now a part of business
The issue shows the ever-increasing influence that search engines have over the business world. Because such sites are gateways that lead potential customers to companies, the commercial world naturally is powerfully interested in the search results, both the paid results determined by the winning bidders for search keywords and the "organic" results in the search engine itself.
One earlier paid-search controversy is whether a company may bid for a rival's name as a keyword. The NameSafe case sidesteps this particular issue, though: the company is objecting to the text of the ads, not the keyword itself.
A Yahoo search for 'NameSafe" on Friday included an ad that led to LifeLock's Web site.
LifeLock denied buying the "NameSafe" search term, "We as a company have never bought any branded search terms belonging to any other company. In fact, we have been the victim of many other companies trying to capitalize on the success of LifeLock by buying the term 'LifeLock,'" the company said.
But an exhibit in NameSafe's complaint shows ads that indicate somebody seemed to be winning bids for it. For example, the exhibit showed an ad sponsored accompanying search result that said "Namesafe. Proactive identity theft protection. Save 10% Today. Enroll Now. www.livelock.com."
Also, a search on Google for "NameSafe" on Friday morning showed an ad from LifeLock as the top sponsored result. However, later in the morning, no Lifelock-sponsored ads appeared.
Another Google and Yahoo paid-search response for the "NameSafe" search term was for Identity Theft Labs, which describes itself as "a contracted affiliate of LifeLock, LoudSiren, Debix, and TrustedId," four identity theft services.
Search trademark rules
Search engines have rules about use of another company's trademark in search ads. "Yahoo Search Marketing...requires advertisers to agree that their search terms, their listing titles and descriptions, and the content of their Web sites do not violate the trademark rights of others," Yahoo's rules say. "Advertisers are responsible for the keywords and ad text that they choose to use. Accordingly, Google encourages trademark owners to resolve their disputes directly with the advertiser, particularly because the advertiser may have similar ads on other sites," Google's trademark rules say. Both companies also offer mechanisms to lodge complaints.
But that process didn't satisfy Namesafe founder and Chief Executive David Ridings.
When NameSafe found the LifeLock ads, "We handled it with a complaint through the search engine informal complaint process," he said in an interview. "It did not have any effect. We had no other alternative but to file the lawsuit."
The complaint doesn't show any exhibits with a Google search, but the search ads were shown at the site, Ridings added. "We have evidence they were displayed on Google," he said.
The complaint process at the search engines didn't do the trick for Ridings, but the lawsuit apparently did. NameSafe filed its suit after hours on Wednesday, and it became public at 8 a.m. Thursday, he said. The ads were gone by 9 a.m., he said.
There are many ways to slice--or draw--an apple, but the Cupertino, Calif., computer maker is once again claiming right to its own methodology.
Just as we were enjoying a reprieve from Apple trademark cases, a new one arose this week with the company challenging New York City's trademark application for a logo it's using in a new green living campaign.
The Big Apple's GreeNYC campaign features an emblem--an apple with a stalk and leaf--that has started to appear on city bus shelters, hybrid cabs, and even Whole Foods shopping bags, according to a story first reported by Wired.
Apple says the emblem resembles its own signature logo, and will thus confuse people and "seriously injure the reputation which (Apple) has established for its goods and services," according to the January filing with the federal Trademark Trial and Appeal Board obtained by Wired (PDF).
New York, in response, says the claim is without merit and that Apple is asking for overly broad protection, according to news reports. A spokeswoman for the city's marketing arm said the logo was "meant to invoke thoughts of upstate New York's bucolic rural areas, where apple orchards once delivered much of the nation's crop," according to the Associated Press. She added that the idea came from the city's Big Apple nickname.
The city, however, has never obtained trademarks related to "The Big Apple" phrase, according to the AP. But with Apple's three Manhattan retail stores and its trademark history, maybe the time is ripe for the city to do so.
A European body has again told Google that it cannot have trademark protection to use the Gmail mark throughout the European Union.
Google's mark.
(Credit: Google)
Giersch's mark.
(Credit: P1 Private GmbH)The European Union's trademark regulation agency denied Google's appeal in late February. The ruling concluded that the mark is too similar to the G-mail trademark owned by German businessman Daniel Giersch. Giersch runs an electronic postal delivery business that goes by the name G-mail, which is short for "Giersch mail."
"There is a likelihood of confusion," the agency wrote.
Google representatives in the U.S. did not respond to an e-mail seeking comment. Bloomberg reported that Kay Oberbeck, a spokesperson in Europe, said in an e-mailed statement that the company was disappointed with the ruling. It was unclear whether Google would appeal.
The trademark regulatory agency's lower board denied Google's request in January 2007.
Google changed the name of its free Web-based e-mail service to "GoogleMail" in Germany after losing to Giersch in court there and in Switzerland. Google also uses the "GoogleMail" name in the U.K. as a result of a complaint there.
A court in China has dismissed a trademark lawsuit filed against Google, according to a report on ChinaCourt.org that was translated into English and posted on Pacific Epoch.
A Beijing company called Gu Ge Technology sued Google China earlier this year, claiming that its Chinese name, "Gu Ge" was confusingly similar to its own name.
However, the Haidian People's Court in Beijing threw the suit out because Google China began using the name April 12, 2006, seven days before the other company registered its name.
Google has been ordered to pay 10,000 euros (about $14,000) for using the "m.gmail.com" domain for mobile search in Germany in violation of a court order in a trademark case.
"We will pay the money to the German State as required by the Court of Appeal in Hamburg," a Google statement said. "We now use 'Googlemail' across Germany and believe our users are very happy both with the name and the service."
The German appellate court ruled against Google in June in a lawsuit filed against the U.S. search giant by German venture capitalist Daniel Giersch. Giersch runs an electronic postal delivery business that goes by the name G-mail, which is short for "Giersch mail."
Is JewTube easily confused with YouTube?
(Credit: JewTube)Apparently, Google doesn't have a sense of humor when it comes to puns related to its YouTube video site.
The company is preparing to challenge the use of the name "JewTube" for a Jewish-related video site on trademark grounds, according to a filing with the U.S. Patent and Trademark Office, which was reported on by WebProNews.
A lawyer for NetParty, listed as the owner of JewTube, did not immediately return a call seeking comment. A Google spokesman said he was checking into the matter.
Meanwhile, Google rival Yahoo apparently wasn't so bothered by Jewhoo, a Jewish-oriented blog. However, Yahoo did try to block the use of Ya-Hooka, a directory of marijuana-related links, back in 1999.
(Credit:
YouTube)
Yahoo did not immediately return an e-mail seeking comment on the outcome of that case, and Ya-Hooka could not be reached.
Terence Evans this week became the first judge in the United States to cite a YouTube video in a written opinion.
Evans, a President Clinton nominee who sits on the 7th U.S. Circuit Court of Appeals, was writing about a case involving a trademark dispute over "Stealth" baseball bats.
Judge Terence Evans
The case deals with baseball Hall-of-Famer George Brett, who joined a baseball bat manufacturer after he left the Kansas City Royals. Now Brett Brothers Sports International is embroiled in a trademark dispute with Central Manufacturing, which is a hyper-litigious company owned by Leo Stoller that claims broad trademark rights in the world "Stealth."
As background, Evans included a description of what baseball fans remember as Brett's famous Pine Tar Incident in a 1983 game against the New York Yankees over whether the bat was legal to be used. Brett's home run was nullified by an umpire, the Yankees won, but on appeal to the American League his team got a second try and eventually beat the Yankees 5-4.
Evans wrote: "Baseball, like our legal system, has appellate review...It ended after 12 minutes when Royals' closer Dan Quisenberry shut the door on the Yankees in their half of the ninth to seal the win. The whole colorful episode is preserved, in all its glory, on YouTube, at http://www.youtube.com/watch?v=4Cu1WXylkto (last visited June 6, 2007). See also Retrosheet Boxscore, Kansas City Royals 5, New York Yankees 4, at http://ww w.retrosheet.org/boxesetc/1983/B07240NYA1983.htm (last visited June 6, 2007)."
The YouTube video, by the way, has been taken down since the court visited it last week. A note on the site says: "This video is no longer available due to a copyright claim by MLB Advanced Media." (A search of a legal database on Thursday turned up some cases mentioning YouTube and copyright decisions involving the company, but no published opinions citing a specific YouTube.com video.)
Evans, who was writing on behalf of a three-judge panel, sided with Brett. He noted that Stoller's Central Manufacturing has a habit of threatening companies with trademark lawsuits unless they pay licensing fees--and losing most of them. He wrote: "Leo Stoller is no stranger to trademark litigation. Indeed, one might say it is the essential part of his business strategy. In fact, were there a Hall of Fame for hyperactive trademark litigators, Stoller would be in it. And, like George Brett, he would have gotten in on the first ballot. Acting as a sort of intellectual property entrepreneur, Stoller has federally registered scores of trademarks with the U.S. PTO (Central lists upwards of 50 that are actual or pending for just the 'Stealth' mark), many containing everyday words that regularly pop up in commercial enterprise."
The judge even noted that the New York Times wrote an article about Stoller titled "He Says He Owns the Word 'Stealth' (Actually, He Claims 'Chutzpah,' Too)."
The 7th Circuit sided with Brett, saying Stoller had "made a mockery" of the judicial process. It upheld a district court decision against Stoller, which found Brett Brothers had filed a trademark registration in 1999, five years before Stoller did. In fact, the district judge even went so far as to order that Stoller's 2005 registration of "Stealth" for baseball bats be canceled, and ordered Stoller to pay Brett Brother's lawyer fees and other costs.
Evans, by the way, has a habit of writing amusing opinions. Another included this footnote: "The trial transcript quotes Ms. Hayden as saying Murphy called her a snitch bitch 'hoe.' A 'hoe,' of course, is a tool used for weeding and gardening. We think the court reporter, unfamiliar with rap music (perhaps thankfully so), misunderstood Hayden's response. We have taken the liberty of changing 'hoe' to 'ho,' a staple of rap music vernacular as, for example, when Ludacris raps 'You doin' ho activities with ho tendencies."
We'll include the rest of Evans' description of The Pine Tar Incident below for your delectation:
It's undisputed: George Brett was a great baseball player. The statistics from his 21 years in The Show, all with the Kansas City Royals, seal the deal: 3,154 hits, 317 home runs, and a career batting average of .305. Only three other players--Stan Musial, Hank Aaron, and Willie Mays--ended their careers with more than 3,000 hits and 300 home runs, while still maintaining a lifetime batting average over .300. Brett's selection to the Hall of Fame, on the first ballot in 1999, was richly deserved. Yet for all his accomplishments, many who love baseball will always think of the "Pine Tar Incident" as the capstone of his career. It is a joy to recall.It was July 24, 1983, and the Royals, trailing 4-3 to the New York Yankees, had a man on first but were down to their final out in the top half of the ninth inning. Brett was at the plate. The Yankees' ace closer, 'Goose' Gossage, was on the mound. And Brett crushed an 0-1 fastball over the 353-foot mark into the right field seats, giving Kansas City the lead, 5-4. Pandemonium broke out in the Royals' dugout. The Yankee Stadium crowd fell silent. But things were about to change.
While the Royals were celebrating, the Yankees' fiery manager, Billy Martin, walked calmly (unusual for him) to home plate where he engaged the umpire, Tim McClelland, in quiet conversation. Martin pointed to an obscure rule (and we sometimes think the Federal Rules of Appellate Procedure are obscure!), which provides that any substance (including pine tar) that a player might rub on his bat handle for a better grip cannot extend more than 18 inches. See Major League Baseball Official Rules Sec. 1.10(b). Martin, pointing to a lot of pine tar on the bat Brett left behind as he circled the bases, asked McClelland to check it out. McClelland, using home plate as a ruler, determined that pine tar covered 24 inches of the bat handle. So the bat, McClelland ruled, was illegal.
With his ruling ready for delivery, McClelland took a few steps toward the jubilant Royals' dugout and gave the signal: for using an illegal bat, the home run was nullified, and Brett was out. Game over. Yankees win 4-3. And all hell broke loose. An infuriated George Brett charged out of the dugout and rushed McClelland as Martin, who looked like the cat who ate the canary, stood off to the side. It was one of the great all-time rhubarbs in baseball history. And that's how it ended, at least for July 24, 1983...
Looks like Google will finally have to stop using the Gmail trademark in Germany. A German appellate court ruled against the company, says German venture capitalist Daniel Giersch, who brought the case against Google. The court is expected to provide a written ruling on July 4, according to Google and Giersch.
Giersch runs an electronic postal delivery business that goes by the name G-mail, which is short for "Giersch mail." Giersch says he only wants to use the trademark in Germany, Switzerland, Norway and Monaco.
A Swiss court also has ruled against Google.
Separately, Google had to rename its e-mail service Google Mail in the United Kingdom in 2005 after losing a trademark case there. Google's use of the trademark also is being challenged in Poland.
In a move that could shape an upcoming retrial, the U.S. Patent and Trademark Office has agreed once again to revisit Web browser plug-in patents at the heart of a dispute between Microsoft and University of California spinoff Eolas Technologies.
Microsoft associate general counsel Andy Culbert told CNET News.com in a telephone interview on Friday that the Patent Office agreed last week to undertake what is known as an interference proceeding.
An interference proceeding occurs when the Patent Office has determined that two separate patent holders hold patents covering the same subject matter. A five-judge panel within the office weighs evidence presented by both sides and determines whether the patents in question are valid, and if so, who is the rightful owner.
The Eolas patent describes a system that allows external applications to load in Web browsers. After several years of generally unfavorable decisions for Microsoft, the Patent Office concluded that an application to reissue an existing Microsoft patent with broader claims covers identical subject matter to the Eolas patent and also predates it, Culbert said. Now the board is supposed to determine whether Eolas president Michael Doyle or Microsoft engineers were the first to invent the technology at issue.
"We think this is a hugely favorable development for us," he told CNET News.com. "We felt all along that the technology involved here was technology that we had developed."
In August 2003, a federal jury ordered Microsoft to pay $521 million to the University of California, which owns the disputed patent, and to Eolas, which licensed it. But an appeals court in 2005 partially reversed that ruling and ordered a new trial, which is currently scheduled to begin in federal court in Chicago on July 9.
Meanwhile, later that year, the Patent Office upheld the Eolas patent's validity after conducting a different kind of reexamination process, initiated by the director of the Patent Office, in which only Eolas was allowed to submit materials. The same patent is also currently undergoing another separate reexamination process within the Patent Office.
That earlier rulings about patentability most likely won't matter if the interference board decides differently, Culbert said. Microsoft has also asked the federal judge in Chicago to delay the start of the trial since it believes the outcome of the interference proceeding is deeply intertwined with the court case. The Patent Office board is expected to rule within a year, Culbert said.
In his lifetime, the late Rev. Jerry Falwell had no shortage of critics, both in the offline and online worlds--and over the years, some in the latter category found themselves caught in his legal crosshairs over domain names resembling his own.
One of the higher-profile Web spats involved Christopher Lamparello, a thirtysomething gay man in New York. Since 1999, Lamparello has owned the Fallwell.com Web site, which housed articles aimed at contradicting the televangelist's antigay views. A few years ago, Falwell sued him, claiming the domain name's spelling was too close to that of his official Web presence and created a "likelihood of confusion," thus violating trademark laws.
A federal district court sided with the preacher, but an appeals court overturned that ruling. Not content to stop there, Falwell asked the U.S. Supreme Court to weigh in, but the justices declined last year to take the case, leaving Fallwell.com to remain up and running.
But after news Tuesday of Falwell's sudden death at age 73--reportedly of heart failure--Lamparello's Web site adopted a somewhat different tone.
The articles attacking Falwell's views were no longer accessible from the home page. Instead, in stark white text on a navy blue background, Lamparello posted a brief note offering his "deepest sympathies" to Falwell's family--although he didn't back down on his disdain for the preacher's views.
"Although we have clearly been on opposite sides of the issues, there is no satisfaction in hearing of his passing," he wrote. "It was his homophobic bigotry and intolerance that we wanted to die, not him personally."
