Virginia IP Law : Virginia Intellectual Property Lawyer & Attorney : Troutman Sanders Law Firm : Technology & Patent Litigation

Any IP case that includes website "scraping", "reverse passing off" and both "clickwrap" and "browsewrap" agreements deserves a blog post.  In Cvent, Inc. v. Eventbrite, Inc., 2010 U.S. Dist. LEXIS 96354 (E.D. Va. Sept. 14, 2010) (found here), U.S. District Judge Leonie Brinkema ruled that a plaintiff which alleged “scraping” of its website may maintain a claim for “reverse passing off” under the Lanham Act and a claim for unjust enrichment in addition to a copyright infringement claim. The Court, however, dismissed claims under the Computer Fraud and Abuse Act (CFAA), 18 U.S.C. § 1030, Virginia’s Computer Crimes Act, Va. Code Ann. § 18.2-152.3, and for both statutory and common law conspiracy.  Shortly after Judge Brinkema's decision, the parties entered into a consent order resolving their dispute, which can be found here.

“Scraping” a Website Database

Cvent maintains a website to assist meeting planners in locating venues for large-scale events. The website includes a database of meeting venues with detailed information about capacity, amenities and services. Eventbrite runs a competing on-line event planning website, and Cvent alleged that Eventbrite hired a third-party to “scrape”, or copy, information from Cvent’s database to create its own on-line “Venue Directory.” The gravamen of Cvent’s complaint, was “a claim for intellectual property theft and copyright infringement.” Eventbrite moved to dismiss all of the claims asserted in the Complaint except Cvent’s claim for copyright infringement.

Reverse Passing Off and Unjust Enrichment Claims Allowed to Proceed

Judge Brinkema’s ruling on Cvent’s claim for reverse passing off under the Lanham Act is perhaps the most important part of the decision because of the lack of any prior authority on this issue in the EDVA. In Dastar v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), the Supreme Court limited the scope of the Lanham Act to “tangible goods offered for sale, and not to the author of any idea, concept or communication embodied in those goods.” Otherwise, a Lanham Act reverse passing off claim would be indistinguishable from a copyright infringement claim.

Judge Brinkema noted a split of authority over whether a plaintiff could bring a Lanham Act claim for copying intellectual property and passing it off as one’s own. She found no controlling precedent in the Fourth Circuit or prior caselaw in the EDVA on the issue. The key factor in her decision was a distinction she made between Cvent’s ideas and its product. Cvent did not allege that Eventbrite passed off its ideas as its own, but rather than it passed off Cvent’s product – its database – as its own. While Dastar referred to “tangible goods,” Judge Brinkema held that the Supreme Court used that language merely to distinguish between “goods” and “ideas” and not to exclude electronic products, such as Cvent’s database, from Lanham Act protection.

Similarly, Cvent’s unjust enrichment claim survived a preemption challenge because Cvent alleged unauthorized scraping and repackaging of its products as opposed to a copyright infringement claim based on the theft of its copyrightable ideas.

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The Virginia State Bar Intellectual Property Law Section will be holding its Twenty-Second Annual Fall Weekend CLE on October 1-2, 2010, at The Williamsburg Lodge, Williamsburg, Virginia. It will run on Friday, October 1, from 12:45 p.m. until 6:15 p.m., followed by a reception sponsored by Thomson Reuters^®, and on Saturday, October 2, from 8:30 a.m. until 12:40 p.m., followed by a luncheon. 

The featured topics and speakers include:

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Chambers and Partners' 2010 Edition of Chambers USA gives Troutman Sanders a top-level ranking for Intellectual Property in Southern Virginia, stating that the group "continues to garner praise for its litigation expertise." Virginia IP Law bloggers Robert Angle, Rob Brooke and Dabney Carr are also ranked individually in intellectual property.  A full list of Troutman Sanders' rankings can be found here.

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June INTA Roundtable  "Practicing before the TTAB – Tips and Tricks" The Trademark Trial and Appeal Board is an efficient forum in which to resolve trademark disputes, but has a confusing array of rules that can be a trap for the unwary.  Attend this roundtable, sponsored by the International Trademark Association, to share your TTAB experiences with fellow practitioners. Wednesday, June 9th  12 p.m. Buffet Lunch Provided Troutman Sanders LLP 1001 Haxall Point, 15th Floor Richmond, Virginia 23219 $45 per attendee Please register by Wednesday, June 2nd; registration closes June 3rd

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As reported recently by Virginia Lawyers Weekly, four small cigarette manufacturers have filed suit in the United States District Court for the Eastern District of Virginia, challenging a FDA regulation adopted on March 19, 2010, regarding tobacco product brand names.  According to the plaintiffs, the regulation would send their valuable IP rights up in smoke.

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Intellectual property claims are rarely covered by insurance, but some claims of trademark and copyright infringement may be covered by insurance for advertising injury.  In a January 5 decision, though, Magistrate Judge Lauck narrowly interpreted "advertising injury" coverage to exclude the duty to defend a trademark infringement claim. Premier Pet Products LLC v. Travelers Property Casualty Co. of Am., Civil Action No. 3:09CV293 (Jan. 5, 2010).

In Premier Pet Products, Travelers issued an insurance policy to Premier that contained a “Web Xtend Liability” endorsement which provided coverage for “an offense committed in the course of advertising your goods, products or services” and defined advertising injury to include “infringement of copyright, title or slogan.”

Premier was sued for selling dog training collars bearing the plaintiff’s trademarked designations. The suit, however, did not specifically refer to Premier’s advertising. Rather, the plaintiff alleged liability based on Premier’s "sale" of products with plaintiff's trademarks and Premier's “use” of plaintiff’s trademarks and trade dress.

Travelers denied coverage, and Premier sued for breach of contract, seeking defense and indemnity under the policy. Judge Lauck granted summary judgment to Travelers on the duty to defend.

The key issue would appear to be whether the policy language covering “infringement of copyright, title or slogan” includes trademark infringement, and the parties extensively briefed a nationwide split of authority on that issue. Judge Lauck, though, did not reach that issue, holding instead that the Complaint did not allege (1) that Premier’s conduct occurred in the course of advertising its products, as the policy required; or (2) that Premier’s advertising activities caused the plaintiff’s harm.

On the first issue, Premier argued that the policy should be construed broadly, relying on a Fourth Circuit decision applying North Carolina law, State Auto Prop. & Cas. Co. v. Travelers, 343 F.3d 249, 259 (4th Cir. 2003), which held that “the term ‘advertising’ normally refers to ‘[a]ny oral, written, or graphic statement made by the seller in any manner in connection with the solicitation of business.’”

Instead, Judge Lauck relied on an earlier EDVA case, Solers, Inc. v. Hartford, 146 F.Supp.2d 785, 793 (E.D.Va. 2001), which narrowly defined “advertising” under Virginia law to refer “unambiguously to the widespread definition of promotional material to the public at large, or at least to widely disseminated solicitation or promotion” and did not include one-on-one “solicitation.” The Complaint’s allegations of Premier’s “sale” of products and “use” of the plaintiff’s trademarks, the Court held “could not constitute advertising, or ‘widespread promotion’ (as opposed to sale) of goods.”

On the second issue, Judge Lauck held that the Complaint did not clearly allege that Premier’s advertising activities caused injury. Instead, the plaintiff alleged that Premier’s “sale” of products and “use” of infringing designations were the cause of its alleged injuries.

The same day, Judge Lauck issued a follow-up Order noting that she had not ruled on whether Travelers had a duty to indemnify under the policy and giving the parties thirty days to brief that issue.  Since the duty to indemnify is typically no broader than the duty to defend, though, there seems little chance that the result will change. 

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By now you’d have to be living under a rock not to have some familiarity with the challenges that the Internet, with its typically-free, open-to-anyone culture, can pose to services and information that have traditionally been provided for payment or on a restricted access basis. Law generally – and IP litigation in particular – is no exception.

Recently, two new free, Internet-based services – Trademarkia and RECAP – have emerged that target subjects of interest to IP litigators.

Trademarkia.com offers free trademark searches online, billing itself as “the largest, most accurate, and most complete free search engine for U.S. federally registered trademarks on the Internet” and explaining that it “provide[s] up to the minute contextual information about the current use of interesting business names, slogans, and logos through pictures, commercials, and conversations from Flickr, Google, Youtube, and Twitter for each U.S. trademark filed in with the United States Patent and Trademark Office (USPTO) since the year 1870.”

Trademarkia.com aims to make money from both the usual advertising sources and from providing services related to filing trademarks. It also lists IP lawyers, together with the trademarks with which they’re associated (see an example for my blog colleague Rob Brooke here) and has an “Ask a Trademark Expert” section that it explains “is a collaborative community where individuals are able to exchange ideas and opinions on legal or business-related questions.”

For those in the legal profession, Trademarkia.com may be fun and is certainly useful as a quick reference tool. The site does not appear to provide detailed information about what Trademarkia.com searches, how the company’s information is updated (akin to the source information that Lexis and Westlaw provide on their databases), and how it compares to established trademark search services, however. In the absence of such information, it is difficult to imagine careful practitioners relying on Trademarkia.com for more than recreational or quick reference use. And any careful practitioner also ought to check out Trademarkia.com’s Terms and Conditions and Disclaimer page, to which one supposedly agrees by using the site.

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 Victoria A. Espinel

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This blog previously noted the upcoming 21st Annual IP Fall Weekend Seminar, being held by the Virginia State Bar's Intellectual Property Section on October 2 and 3, 2009 at the Omni Hotel in Richmond.

The Honorable David Kappos, Under Secretary of Commerce and the new Director of the United States Patent and Trademark Office, has been added to the schedule recently. He will address the seminar late Saturday morning on his plans for the PTO, and his presentation will include a question and answer session.

See our earlier post for registration links.

David Kappos

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The Virginia State Bar Intellectual Property Law Section will be holding its Twenty-First Annual Fall Weekend CLE on October 2-3, 2009, at the Omni Hotel in Downtown Richmond, Virginia. It will be begin on Friday, October 2, 2009 at 1:30 pm and finish around 1:00 pm on Saturday, October 3, 2009.

The featured topics and speakers include:

• Use of Surveys in Trademark Disputes, presented by Hal Poret, Guideline Market Research

• Patent Reform Status Report, presented by Hon. Q. Todd Dickinson, Executive Director, American Intellectual Property Law Association

• Fraud Standards at the Trademark Office, presented by Linda McLeod, Finnegan Henderson Farabow Garrett & Dunner LLP

• Hot Topics in Patent Law, presented by Stephen Kunin, Oblon Spivak McClelland Maier & Neustadt

• Electronic Copyright Applications, presented by John Jennison, Jennison & Schultz

• Ethics in IP, presented by Deborah Jeffrey, Zuckerman Spaeder

• Bankruptcy and Intellectual Property, presented by Matthew Cheney and Karen Hermann, Crowell & Moring

• Google Adwords/Online Advertising, presented by Brad Newberg, Holland & Knight LLP

For a PDF brochure and full details, please visit: http://www.vsb.org/sections/ip/2009-Fall-CLE.pdf

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Written by Troutman Sanders Intellectual Property Attorneys:  Doug Salyers, Michael Hobbs and James Thomas.

With the Federal Circuit’s recent decision in In re Bose Corporation, the Court squarely reversed the test for trademark fraud on the Patent and Trademark Office adopted by the Trademark Trial and Appeal Board in Medinol v. Neuro Vasx, Inc.

To recap the history of these seminal decisions regarding trademark fraud, in 2003, the Trademark Trial and Appeal Board (“TTAB”) in Medinol v. Neuro Vasx, Inc. reviewed a case where trademark owner Neuro Vasx had filed an “intent to use” trademark application for its mark "NEUROVASX" for “medical devices, namely neurological stents and catheters.”  As required by the United States Patent and Trademark Office (“PTO”), to obtain a federal registration from an “intent to use” application, Neuro Vasx filed its Statement of Use that the “NEUROVASX” mark was in use on the products covered by the application.  In doing so, counsel for Neuro Vasx checked a box on the form indicating that the mark had been used in connection with all of the goods it had originally identified in the application. However, at the time it checked that box, Neuro Vasx had only used its mark in connection with catheters, but not with stents.  Although a registration issued, the mistake was not discovered until subsequent litigation before the TTAB. 

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My colleague Mark VanderBroek spoke at recent seminar about Internet trademark issues. It is summarized below:   

The growing popularity of Internet advertising continues to spawn trademark issues that impact a broad range of businesses. Cybersquatting is on the increase. Nearly all businesses are subject to “typosquatters” who register domain names consisting of misspelled variations of others’ trademarks and “monetize” them by connecting to pay-per-click advertising websites. Many businesses now engage in Internet advertising, which may use others’ trademarks as keywords to link their advertisements to Internet search results. Cases addressing these and other current Internet trademark issues are discussed in this article.

Recent court cases involving domain names include a record damages award in a cybersquatting case ($33.15 million); confirmation that “domain tasting” amounts to cybersquatting; the failure of plaintiffs to obtain certification of a class action against Google and domain name registrars for registering, licensing and monetizing purported deceptive domain names; and an almost successful attempt by a state to seize domain names as “gambling devices.”

Trademark infringement cases involving use of a trademark as a keyword to trigger Internet advertising links generally raise two main issues: (1) whether the defendant is making use of a trademark in commerce; (2) whether there is a likelihood of confusion. A recent Second Circuit case brought clarity to the law on the first issue, by ruling that there is a use in commerce in this situation. Now, the main battleground in these cases will be on "likelihood of confusion" - an issue that was addressed by several cases in the last year.
 

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