By Nathan Geronimo

Until recently, if a plaintiff in a copyright infringement case sought an injunction against continued infringement, a reasonable showing that plaintiff was likely to prevail on the merits of the infringement claim gave rise to a presumption of irreparable harm, which is a necessary element a plaintiff must prove in order for a court to issue an injunction. However, in early August 2011, the Ninth Circuit in Perfect 10, Inc. v. Google, Inc., citing the United States Supreme Court decision in eBay Inc. v. MercExchange, L.L.C., stated that this presumption of irreparable harm no longer exists.

Perfect 10, Inc. sought a preliminary injunction against Google for alleged copyright infringement. Perfect 10 creates and copyrights photographs of nude models for commercial distribution on its website, perfect10.com. Access to the website is limited to members who pay a monthly fee.

Perfect 10 alleged that Google’s web search and caching feature allows internet users to access Perfect 10’s copyrighted images for free, which constitutes copyright infringement. Perfect 10 also alleged that because the images are available through Google’s search engine, people are unwilling to pay for a subscription to view the images. This has caused Perfect 10 to lose over $60 million in revenue over the last fifteen years.

Continue Reading Ninth Circuit Says No Presumption of Irreparable Harm in Copyright Infringement Cases

By James Kachmar

Although courts routinely grant permanent injunctions to curtail deceptive marketing practices, they sometimes struggle with whether an injunction impermissibly violates a party’s rights under the First Amendment. In TrafficSchool.com, Inc. v. EDriver Inc., the Ninth Circuit struck down one such injunction finding that it was overbroad and violated the defendants’ First Amendment Constitutional rights to free speech.

In TrafficSchool.com, the defendants owned and managed several for-profit websites, including DMV.org, whose mission was to save their customer “time, money and even a trip to the DMV.” People could visit the defendants’ website “for help renewing drivers’ licenses, buying car insurance, viewing driving records, beating traffic tickets, registering vehicles and even finding DUI/DWI attorneys.” The defendants generated revenue from the DMV.org website based on the number of visitors it attracted. Given the website name DMV.org, as well as its layouts, many visitors confused the website with the one that was run by California’s actual Department of Motor Vehicles. In addition to consumers, law enforcement officials and DMV employees from other states also confused DMV.org with the real California DMV website.

Continue Reading The First Amendment and Anti-Trust False Advertising Injunctions

By Zachary Wadlé

The term “geek” is no longer a pejorative term. Just ask consumer electronic retail giant Best Buy. The chain recently threatened online rival Newegg.com with legal action, arguing that its Geek On advertising slogan sounded too similar to Best Buy’s tech support service, Geek Squad. Newegg responded by posting Best Buy’s cease-and-desist letter on Facebook and suggesting that Best Buy was attempting to subjugate geeks everywhere. Newegg.com’s posting generated substantial negative reaction towards Best Buy from other self-professed geeks who took issue with Best Buy’s efforts to claim sole rights to “geek” status (and trademark rights).

In its defense, Best Buy says it is just narrowly protecting its Geek Squad trademark against overzealous competitors like Newegg.com. In fact, federal records show that Best Buy has disputed more than a dozen geek-themed trademarks in the past decade, including Rent a Geek, Geek Rescue and Speak With A Geek. But why does a company like Best Buy risk the negative publicity associated with threatening competitors like Newegg.com with legal action over “geek” terminology? The answer is that companies that don’t aggressively defend trademarks, even against seemingly innocuous intrusions, risk having courts decide that they abandoned the trademarks later when more substantive disputes crop up.

Continue Reading Best Buy Gets “Geeked Up” Over Trademark Protection

by David Muradyan

The Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. §§ 1051, 1127,defines a trademark to mean “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”  Under 15 U.S.C. § 1114(1), the holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988); see also 15 U.S.C. § 1125(a) (“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . .  is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”).

Continue Reading Trademark Basics: Infringement

Most of us easily will recall one of the first uses of the internet: Napster. While Napster thrilled users with the prospect of “free” music and the ability to locate those obscure songs you thought were lost when your last vinyl LP record broke, its widespread use was devastating to the retail music industry and infuriated Metallica drummer Lars Ulrich. Further, in most instances, the use of Napster to download music and other content also amounted to copyright infringement. Accordingly, Napster was sued, the general public was educated about the fact that stealing copyrighted content is unlawful, and Lars Ulrich was happy.

The end of Napster marked only the beginning of the use of the internet for sharing files over what are called peer-to-peer (“P2P”) networks. Although Napster ultimately was moved to make adaptations to comply with copyright laws, multiple other unrestricted P2P file-sharing tools sprang up in its place. Seemingly overnight, tools like LimeWire Kazaa, and BearShare came into existence to fill the void left by Napster.

Continue Reading The Trouble With Torrents