Tuesday, April 15, 2014

Google's Attempt to Register "Glass" As a Trademark Stalls

"Google Glass" is already registered as a trademark, but now, Google is having difficulty getting a registration for its "Glass" mark:




Recently, the USPTO rejected the registration citing applications filed prior to Google's application, likelihood of confusion and the mark is descriptive.  In response, Google's attorneys provided almost 2,000 pages of news articles about Google Glass in an attempt to show that there can be no confusion because of all the press.  The argument goes that since Glass has gotten so much press, consumers are not likely to confuse that mark with anything else.  The attorneys, of course, also argue that the term is not descriptive.  

Everything I've ever read (and it has not been 2,000 pages of articles) has used the term "Google Glass," not just "Glass" alone.  Not sure Google can overcome this rejection, but maybe "might makes right" on this one? Stay tuned. 


Wednesday, April 9, 2014

More for the Don't Trust Yelp File

Yelp seemingly provides never-ending fodder for this blog.  As you may recall, when we last left our erstwhile thug (i.e. Yelp), Yelp was suing a law firm for "working" the system by getting associates and employees to post favorable reviews.  Of course, Yelp did not take kindly to being sued and began running competitor's ads on the firm's Yelp page, as well as filtering the reviews to make the less favorable ones more prominent.  This is a common tactic employed by Yelp when a merchant has the audacity to refuse to pay Yelp's advertising fees. 

According to a recent Los Angeles Times article provided a real-life example of Yelp's "mafia-like" tactics.  Apparently, Rick Fonger decided to open a jewelry store after a career in journalism.  To help advertise, Mr. Fonger paid Yelp $ 300 a month.  He got some results, but thought that he could spend his advertising dollars differently to get better results (or, more advertising bang for the buck).  So, he did what any small business owner would do, he canceled his Yelp ad in order to apply his limited advertising budget towards something more fruitful.  The next day, a Yelp representative called Mr. Fonger to inform him that competitor's ads were showing up on his Yelp page and explained that she could make them go away for $ 75 a month.  I agree with the LA Times article that this sounds like extortion.

David Lazarus of the LA Times was not done with Yelp.  He followed up the aforementioned article with another one describing Yelp's extortionist ways.  In that article, Mr. Lazarus describes how Yelp uses bad reviews to strong-arm small businesses to purchase their services.  Indeed, if the small business refuses to "play ball," it is likely that they will find bad reviews featured more prominently. Yelp also demands payment to remove bad reviews and is not very helpful in addressing false claims made by reviewers.  Even more troublesome is the fact that several of the small business owners who spoke to the reporter were afraid to give their names for fear of retaliation by Yelp.  Indeed, one real estate appraiser noted that after he stopped paying Yelp, Yelp apparently reordered the reviews to feature the negative ones more prominently.

Notably, after my last blog post about Yelp, I received several phone messages from someone from Yelp.  Undoubtedly, that person wanted to sell me ad space or have me pay to remove ads of "competitors." 

Tuesday, April 1, 2014

First Onions, Now Whiskey

Well, Georgia has their trademarked Vidalia Onion.  Now, Tennessee is in a battle over whiskey.  Specifically, Tennessee whiskey.  Apparently, the Tennessee Legislature passed a law that "Tennessee Whiskey" is that which is made virtually the same way as Jack Daniel's.  Needless to say, JD's closest in state competitor, Dickel, was not amused.  Apparently, JD's has several distinct advantages in making their hooch the way its been doing it since the 1870's.  First, JD's is a huge enterprise.  Second, they also make their own very expensive barrels mandated by the law.

Jack Daniel's frames the law as necessary to insure that Tennessee's "signature" whiskey is not undermined by competitors.  Apparently, JD's is trying to make it harder for its behemoth competitor, Johnnie Walker from entering the Tennessee whiskey fray.  It will be interesting to see if David can slay Goliath in this battle. 

Tuesday, March 18, 2014

Software Patents Headed to Supreme Court

If you've read my patent primer, you know that patents protect inventions, but not abstract ideas.  One wrinkle to this notion is the software patent.  Many in the industry believe that software code should not receive patent protection.  There is also the little matter about a design patent which can translate into trade dress thereby receiving legal protection for longer than the monopoly afforded patents--but, I digress.

Those who say "down with software patents" may see their demise in the form of a Supreme Court opinion in Alice Corp. v. CLS Bank.  Apparently, the founder of Alice obtained a patent for a software program which calculates the obligations of parties entereing into a currency exchange transaction.  However, the Federal Circuit in a circuitous and fractured opinion invalidated the patent.  Because of the Federal Circuit's muddled opinion, it appears the Supreme Court will now need to take up this case to provide clarification about the viability of software patents.  In one of the many opinions of the Federal Circuit, Judge Moore provided an inkling at what was at stake:
And let's be clear: If all of these claims, including the system claims, are not patent-eligible, this case is the death of hundreds of thousands of patents, including all business-method, financial-system, and software patents as well as many computer implemented and telecommunications patents.
In other words, money is at stake.  Patents (or any other IP) generally equates to money.  They are property after all.  For example, Twitter just paid $ 36 million to avoid a lawsuit and to purchase 900 patents from IBM.  Undoubtedly, most, if not all, of these patents are software patents.  That is a lot of money for a portfolio of patents which the Supreme Court invalidates in a few months.  With so much at stake, it will be interesting to see what the Supreme Court has to say in this case. 

Tuesday, March 11, 2014

More Copyright Act Bashing

A recent case involving the estate of Arthur Conan Doyle and the Sherlock Holmes character was mercifully rejected by Chicago Federal Judge.  However, the case is further proof that the Copyright Act is misused, abused, and outdated.  In the case, the estate of author Arthur Conan Doyle sought to protect the Sherlock Holmes character from being part of a TV Series "Sherlock."  Now, I know, you are wondering how Sherlock Holmes can still be under the protection of the Copyright laws when he first appeared in works published in 1887 and his creator passed away over 83 years ago.  One would think that Sherlock Holmes was clearly in the public domain by now, right? Well, the Doyle estate disagreed. 

If you read earlier posts  of this blog, you would know that copyright protection generally lasts for the life of the author, plus 70 years.  Let's see, doing the math, 83 years is more than 70 years, and therefore, the characters created by Arthur Conan Doyle are in the public domain.  However, the Doyle estate argued that protection remained until the rights expire on the last few stories in which the characters appeared.  According to the Doyle estate, this meant that Sherlock Holmes was copyrighted until sometime in 2022 or 2023.  You have to give it to the Doyle estate, they make a creative argument not based in anything in the Copyright Act.  I digress.

A little history:  the 1909 Copyright Act provided protection for 28 years with a renewal period for another 28 years; the 1976 Copyright Act lengthened the term of protection to life of the author, plus 70 years.  Given that commercial exploitation of copyrighted works is much shorter than 70 years after the author expires.  Indeed, as we move more and more towards consumers with shorter and shorter attention spans (thanks to TiVo, Facebook, Twitter, etc.), it seems as if the commercialization of copyrighted works should also get shorter.  Information travels so fast and becomes old news so fast that it makes sense to have Copyright laws which recognize this change. 

Tuesday, March 4, 2014

Blogging and Defamation

Last summer, I successfully obtained a summary judgment against a defamation claim involving a blog post.  With the proliferation of blogs, Facebook, and Twitter postings, defamation lawsuits are undoubtedly going to rise.  In my case, the Court agreed with me that the blog post was not actionable defamation because the comments were opinions protected by the First Amendment.

Recently, Courtney Love obtained a jury verdict rejecting a defamation claim involving a tweet by Ms. Love which stated that one of her attorneys had been "bought off."  Needless to say, the attorney took issue with the posting and sued Ms. Love for defamation.  Ultimately, the jury found that while the statement was defamatory (because it was false), Love was not liable for the defamation because she did not know the statement was false at the time she tweeted.  In other words, the statement was an opinion which is not actionable. 


Defamation requires a publication that is false, defamatory, unprivileged, and has a
tendency to injure or cause special damage. Pure opinions – “those that do not imply facts capable of being proved true or false” – are protected by the First Amendment. Assertions of fact and statements that “may imply a false assertion of fact, however, are not protected.”  In my case last summer, the Court examined the context of the blog entries, including examined the purpose of a blog and how readers would understand the statements made.  The Court found that in the context of a blog, readers are smart enough to understand that the statements made on a blog are more likely to be one of opinion rather one of fact.  In particular, the Court wrote: readers of the blog entry "would realize that [Defendant] wrote it from its own perspective to paint itself in a better light, and would not understand it to be 'statements of fact rather than the predictable opinion . . . of one side about the other's motives.'"

Now, before you begin tweeting, posting, or blogging all kinds of nasty things about a competitor, be mindful that the line between opinion and a statement of fact (defamation) is very thin.  Generally, when making a statement, it is best to provide the facts upon which you base your opinion in order to allow a reader to accept or reject your opinion by reviewing your facts. 

Tuesday, February 25, 2014

With Mobile Fitness Exploding, Two Heavyweights Fight Over Patents

Adidas recently sued Under Armour ("UA") and UA's subsidiary, MapMyFitness, for infringing its mobile fitness related patents.  Adidas claims that UA's performance tracking products and the suite of mobile fitness apps/websites of MapMyFitness (which UA acquired in November) utilizes Adidas' patented miCoach technology.

The miCoach fitness training devices provide audible coaching (in real time) and a web application to help optimize your workout sessions.  MapMyFitness offers users with the ability to map, record, and share their workouts.  It does this by using GPS and other technologies.  Adidas claims that UA's and MapMyFitness' products infringe on several of its patents relating to the following technologies:  a location-aware fitness training device that supports real-time interactive communication and automated route generation, systems and methods for presenting characteristics associated with a physical activity route, methods and computer program products for providing information about a user during a physical activity, and a mobile device that receives information from a server about a user’s movement.

Adidas' lawsuit specifically targets Under Armour’s Armour39 system, which includes an Armour39 module that can be attached to a chest strap (sold together); a mobile app that tracks heart rate, calories, and intensity; and a display watch that Under Armour says is an alternative to the mobile app, but sold separately.  Adidas included MapMyFitness in the lawsuit because the company offers methods for detecting, evaluating, or analyzing movement of a body or determining performance information in its apps MapMyFitness, MapMyWalk, MapMyHike, MapMyRun, MapMyRide, and MapMyDogwalk, which also can connect to the MapMyFitness Heart Rate Monitor.

What's more, Adidas claims that both UA and MapMyFitness knew of Adidas' patents, and therefore, "willfully" infringed upon them.  This allegation of willfulness stems from UA's hiring of Adidas' former senior innovation engineering manager.  If true, UA and MapMyFitness could be subjected to three times the amount of Adidas' damages and attorneys' fees.  Attorneys' fees for patent litigation are usually in excess of $ 1 million dollars.

Interestingly, it appears as if Adidas and UA are heading down the contentious path blazed by Samsung and Apple.  That is, using patent litigation as revenge for competition in the market.  In particular, UA recently signed a 10-year deal with Notre Dame which had a relationship with Adidas for 17 years.  

Clearly, this is a market which is heating up and competition is beginning to become fierce.  Both Samsung (no stranger to patent litigation all over the world) and FitBit are making forays into this market.  This will definitely be an area to keep an eye on in the future.