Articles Posted in Internet Trademark Litigation

Trademarks can be trickier than a lot of people realize. Although it would be wonderful to simply tell the government you’re trademarking something and rest assured that it will be protected from that point on, the realities of applying for and protecting one’s trademark status are much more blurry.

This continues to be even increasingly the case as our markets become more and more globalized. Although a complaint for an alleged trademark violation would normally have to prove the defendant was infringing on the plaintiff’s market, defining the line between markets has gotten increasingly difficult with both the advent of the Internet and advances in technology that make travel easier and less painful.

A U.S. district court dismissed a lawsuit filed by Trader Joe’s for alleged patent infringement, but Trader Joe’s appealed that decision to the Ninth Circuit Court of Appeals and the appellate court decided to revive the grocery store’s claims. Continue reading ›

NPR reports:

Spotify, the groundbreaking streaming music service, is facing a class-action lawsuit alleging that it violates the copyrights of thousands of independent musicians.

If the songwriters prevail it could cost Spotify tens of millions of dollars in unpaid royalties. And according to experts in the music industry, this may be only the beginning, because other streaming services reportedly commit the same violations.

The named plaintiff in the lawsuit, filed on Monday in the U.S. District Court for the Central District of California, is David Lowery, an outspoken musicians’ rights advocate and frontman of rock bands Camper Van Beethoven and Cracker. He says his songs have been streamed hundreds of thousands of times without his permission.


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NPR reports:

Where do you draw the line between inspiration and appropriation when it comes to musical compositions? That question is at the heart of several high-profile court cases, including the recent “Blurred Lines” trial and a current copyright-infringement lawsuit involving “Stairway to Heaven.” But it isn’t always easy to prove a song is yours – particularly when you’re up against one of the biggest rock and roll bands of all time.


Super Lawyers named Illinois business trial attorneys Peter Lubin a Super Lawyer in the Categories of Class Action, Business Litigation, and Consumer Rights Litigation. Lubin Austermuehle’s Illinois business trial lawyers have over a quarter of a century of experience in litigating complex class action, trademark and libel suits, consumer rights and many different types of business and commercial litigation disputes. We handle emergency business law suits involving injunctions, and TROS, covenant not to compete, franchise, distributor and dealer wrongful termination and trade secret lawsuits and many different kinds of business disputes involving shareholders, partnerships, closely held businesses and employee breaches of fiduciary duty. We also assist businesses and business owners who are victims of fraud. You can contact us by calling at 630-333-0333.  You can also contact us online here.


When a person feels that they have been wronged and seeks redress, there is sometimes debate as to which person or entity is really responsible. In a recent case against Getty Images (US) Inc., the judge agreed that the defendant had been wronged, not by the company being sued.

Marshall Thompson is the only surviving original member of the Chi-Lites, a rhythm-and-blues group from Chicago. Thompson filed a lawsuit against Getty Images for allegedly profiting from his likeness without having first obtained his permission.

The U.S. District judge, Matthew F. Kennelly, dismissed the lawsuit but he did give Thompson a few days to file an amended complaint.

In the original complaint, Thompson alleges that Getty Images violated the Illinois Right of Publicity Act (IRPA), which prohibits the use of an individual’s identity without that person’s written permission. According to the complaint, Getty Images violated the IRPA when it posted several images of Thompson online and offered to license them to customers.

In his written opinion on the case, Judge Kennelly pointed out that Getty Images’ website stated that the pictures of Thompson were to be licensed “for editorial use only”. Such a restriction would require customers who obtained licenses for the pictures to also obtain the appropriate rights and clearances before using the images for commercial purposes.

Such language absolves Getty Images from responsibility if one of its customers used the pictures for commercial purposes without first obtaining Thompson’s written permission to do so. In his opinion, Judge Kennelly maintains that, according to “Thompson’s theory, liability would attach to a photographer who licensed his photograph to a publication that then printed the photograph for a commercial purpose”. The judge concluded that this “is not a reasonable interpretation of the statute, as it would extend liability much too far and chill speech protected by the First Amendment.” This is an example of the fact that, when considering whether or not a law has been breached, judges must also take into account how their decision might impact other laws and statutes already in existence.

Judge Kennelly further rejected the argument that Getty Images had violated IRPA by using the photos to promote the sale of a product (that product being the photos themselves) without Thompson’s permission. Judge Kennelly concluded that IRPA only extended so far as to prohibit the use of a person’s image to promote another product. However he ruled promoting the sale of the photograph itself is not covered under IRPA.

In his written opinion, Kennelly noted a similar case in which a stock photography library had used the image of the late musician, James Brown, to sell a product. Brown’s estate had then stated a claim under IRPA and the Illinois Appellate Court had sided with the estate. Judge Kennelly admits that the decision reached by the court in that case was “arguably contrary” to his own ruling. However, he also noted that he found the Illinois Appellate Court’s ruling “unpersuasive” and believed that, should the case get so far, the Illinois Supreme Court would agree with his view of the law.

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The internet, which is still a new phenomenon to many areas of the law, has greatly expanded the potential for infringement of trademarks and personal names. The act of registering someone else’s trademark or personal name as an internet domain name without authorization is known as “cybersquatting.” While proving a case of cybersquatting presents challenges, some plaintiffs have succeeded in court. The Ninth Circuit affirmed part of an Arizona federal court’s decision last year awarding $6.6 million to a plaintiff claiming cybersquatting and other causes of action. Skydive Arizona, Inc. v. Quattrocchi, et al, No. 10-16196, slip op. (9th Cir., Mar. 12, 2012).

The plaintiff, Skydive Arizona, operates one of the world’s largest and best-known skydiving centers in Eloy, Arizona. It has used the “SKYDIVE ARIZONA” mark since 1986. The defendants operate SKYRIDE, which the court called “a third-party advertising and booking service for skydiving centers” around the country. Id. at 2921. SKYRIDE had numerous websites that it used to advertise skydiving events and opportunities in various locations, including several that specifically referenced Arizona, such as PhoenixSkydiving and TempeSkydiving. It also had websites for its own business, including and SKYRIDE had no facilities in Arizona., and it did not do business with the plaintiff.

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Movie Studios Can Subpoena Internet Users’ Names, Data In File-Sharing Cases

AP reports:

A federal judge on Friday allowed the holder of a movie copyright to subpoena the names of people accused of illegally downloading and distributing a film over the Internet.


The below article on internet defamation appeared in the New York Times:

Venting Online, Consumers Can Find Themselves in Court
Stephen McGee for The New York Times
Justin Kurtz with his car, which was towed from his apartment complex parking lot near Western Michigan University.

Published: May 31, 2010

After a towing company hauled Justin Kurtz’s car from his apartment complex parking lot, despite his permit to park there, Mr. Kurtz, 21, a college student in Kalamazoo, Mich., went to the Internet for revenge.

Outraged at having to pay $118 to get his car back, Mr. Kurtz created a Facebook page called “Kalamazoo Residents against T&J Towing.” Within two days, 800 people had joined the group, some posting comments about their own maddening experiences with the company.

T&J filed a defamation suit against Mr. Kurtz, claiming the site was hurting business and seeking $750,000 in damages.

Web sites like Facebook, Twitter and Yelp have given individuals a global platform on which to air their grievances with companies. But legal experts say the soaring popularity of such sites has also given rise to more cases like Mr. Kurtz’s, in which a business sues an individual for posting critical comments online.

The towing company’s lawyer said that it was justified in removing Mr. Kurtz’s car because the permit was not visible, and that the Facebook page was costing it business and had unfairly damaged its reputation.

Some First Amendment lawyers see the case differently. They consider the lawsuit an example of the latest incarnation of a decades-old legal maneuver known as a strategic lawsuit against public participation, or Slapp.

The label has traditionally referred to meritless defamation suits filed by businesses or government officials against citizens who speak out against them. The plaintiffs are not necessarily expecting to succeed — most do not — but rather to intimidate critics who are inclined to back down when faced with the prospect of a long, expensive court battle.

“I didn’t do anything wrong,” said Mr. Kurtz, who recently finished his junior year at Western Michigan University. “The only thing I posted is what happened to me.”
Many states have anti-Slapp laws, and Congress is considering legislation to make it harder to file such a suit. The bill, sponsored by Representatives Steve Cohen of Tennessee and Charlie Gonzalez of Texas, both Democrats, would create a federal anti-Slapp law, modeled largely on California’s statute.

Because state laws vary in scope, many suits are still filed every year, according to legal experts. Now, with people musing publicly online and businesses feeling defenseless against these critics, the debate over the suits is shifting to the Web.

“We are beyond the low-tech era of people getting Slapped because of letters they wrote to politicians or testimony they gave at a City Council meeting,” said George W. Pring, a University of Denver law professor who co-wrote the 1996 book “Slapps: Getting Sued For Speaking Out.”
Marc Randazza, a First Amendment lawyer who has defended clients against suits stemming from online comments, said he helped one client, Thomas Alascio, avoid a lawsuit last year after he posted negative remarks about a Florida car dealership on his Twitter account.

“There is not a worse dealership on the planet,” read one post, which also named the dealership.

The dealership threatened to sue Mr. Alascio if he did not remove the posts. Mr. Randazza responded in a letter that although Mr. Alascio admitted that the dealership might not be the worst in the world, his comments constituted protected speech because they were his opinion.

While the dealership did not sue, that outcome is unusual, said Mr. Randazza, who conceded that sometimes the most pragmatic approach for a Slapp defendant is to take back the offending comments in lieu of a lawsuit.

In the past, Mr. Randazza said, if you criticized a business while standing around in a bar, it went “no further than the sound of your voice.”
Now, however, “there’s a potentially permanent record of it as soon as you hit ‘publish’ on the computer,” he said. “It goes global within minutes.”
Laurence Wilson, general counsel for the user review site Yelp, said a handful of lawsuits in recent years had been filed against people who posted critical reviews on the site, including a San Francisco chiropractor who sued a former patient in 2008 over a negative review about a billing dispute. The suit was settled before going to court.

“Businesses, unfortunately, have a greater incentive to remove a negative review than the reviewer has in writing the review in the first place,” Mr. Wilson said.

Recognizing that lawsuits can bring more unwanted attention, one organization has taken a different tack. The group Medical Justice, which helps protect doctors from meritless malpractice suits, advises its members to have patients sign an agreement that gives doctors more control over what patients post online.

Dr. Jeffrey Segal, chief executive of Medical Justice, said about half of the group’s 2,500 members use the agreement.

“I, like everyone else, like to hear two sides of the story,” he said. “The problem is that physicians are foreclosed from ever responding because of state and federal privacy laws. In the rare circumstance that a posting is false, fictional or fraudulent, the doctor now has the tool to get that post taken down.”
The federal bill, in the House Subcommittee on Courts and Competition Policy, would enable a defendant who believes he is being sued for speaking out or petitioning on a public matter to seek to have the suit dismissed.

“Just as petition and free speech rights are so important that they require specific constitutional protections, they are also important enough to justify uniform national protections against Slapps,” said Mark Goldowitz, director of the California Anti-Slapp Project, which helped draft the bill.

Under the proposed federal law, if a case is dismissed for being a Slapp, the plaintiff would have to pay the defendant’s legal fees. Mr. Randazza would not disclose specifics on the legal fees he has charged his clients, but he said the cost of defending a single Slapp suit “could easily wipe out the average person’s savings before the case is half done.”
Currently, 27 states have anti-Slapp laws, and in two, Colorado and West Virginia, the judiciary has adopted a system to protect against such suits. But the federal bill would create a law in states that do not have one and offer additional protections in those that do, Mr. Goldowitz said.

In Michigan, which does not have an anti-Slapp measure, Mr. Kurtz’s legal battle has made him a local celebrity. His Facebook page has now grown to more than 12,000 members.

“This case raises interesting questions,” said the towing company’s lawyer, Richard Burnham. “What are the rights to free speech? And even if what he said is false, which I am convinced, is his conduct the proximate cause of our loss?”
On April 30, Mr. Kurtz and his lawyers asked a judge to dismiss the suit by T&J, which has received a failing grade from the local Better Business Bureau for complaints over towing legally parked cars. Mr. Kurtz is also countersuing, claiming that T&J is abusing the legal process.

“There’s no reason I should have to shut up because some guy doesn’t want his dirty laundry out,” Mr. Kurtz said. “It’s the power of the Internet, man.”

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Larry Lessig gives an interesting and entertaining lecture on how copyright law is strangling creativity on the internet:

Based in Chicago and Oak Brook, Illinois, Lubin Austermuehle represents clients in business litigation throughout Illinois, the Midwest and the United States. We represent Chicago area businesses of all sizes, from family-owned small businesses to large corporations and partnerships. Our Oak Brook business attorneys also handle claims of trade libel and online or internet based defamation of a product, service or business, as well as unfair competition and other business claims. If your business is facing or wants to bring a lawsuit including on online infringement and unfair defamation of your products or services, we can help. To set up a consultation with one of Chicago business law attorneys to learn more about us, please contact us online or call us toll-free at 630-333-0333.


Google, the target of multiple online trademark infringement lawsuits, made a preemptive strike back in early August when it countersued the named plaintiff in a pending case against it. According to law professor Eric Goldman’s Technology & Marketing Law Blog, Google sued John Beck Amazing Profits, LLC, in the Northern District of California on July 27. The suit was a response to an Eastern District of Texas filing against Google on May 14, which was a putative class action led by John Beck. The web search giant seeks a declaratory judgment that it is not infringing on John Beck’s trademarks as well as damages for an alleged breach of its AdWords contract by John Beck when it sued in Texas — in a district with a reputation as advantageous for intellectual property complaints — rather than California.

In the first lawsuit, John Beck — a Los Angeles company that sells real estate investment advice– sued Google as well as several companies that use its technology for selling its trademarks as keywords using Google AdWords. The proposed class was very large, including all trademark holders in the United States whose trademarks have been sold as a keyword or AdWord for the past four years. However, according to Google’s countersuit, the complaint in that case had not been served to Google as of August 2, even though it was filed May 14.

Google responded with its suit for declaratory judgment, which targeted only John Beck. Its complaint alleges that John Beck’s original lawsuit was anti-competitive and subverted trademark law’s goal of preventing deception of consumers. It asked the court for declaratory judgments that it did not infringe John Beck’s trademark, contribute to such infringement, vicariously infringe it or falsely designate the origin of its mark. It also made a claim for damages from John Beck’s alleged breach of Google’s own AdWords contract, which it entered into as an AdWords customer. That contract included a provision that disputes should be settled in the Northern District of California, Google’s home jurisdiction, making John Beck’s choice to file in East Texas a breach of contract. As Professor Goldman observed, Google is probably also trying to move the venue of the original East Texas suit to the Northern District of California.

The original John Beck lawsuit was one of multiple lawsuits with similar trademark-infringement allegations against Google for its AdWords program. At Lubin Austermuehle, our Chicago online trademark infringement lawyers and Wheaton, Waukegan, Joliet and Chicago trial lawyers have investigated, and pursued similar claims. As of early August 2009, no court has ruled on the substance of these claims, although rulings on related matters have been slightly favorable to trademark holders. As with all trademark claims, the plaintiffs in cases like John Beck’s class action can ultimately win only if they show that Google’s advertisements create a likelihood of confusion among consumers looking for their products online, which can depend heavily on the circumstances and details of each case. Our Illinois Internet trademark attorneys work hard to prove those claims on behalf of clients.

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