Those who have a passing familiarity with website design are probably familiar with the concept of meta tags.  Meta tags are pieces of data included in the HTML code of a webpage that provide information regarding the content of the page.  You can view the code of a webpage you are visiting by clicking the "view" menu and, in IE, selecting "source," or in Firefox, selecting "page source."

Keyword meta tags have been used frequently in the practice of SEO, or search engine optimization.  This essentially is an industry designed to get a webpage to show up higher in search results for various key terms and phrases in order to make it easier for the website to be found by customers.  SEO practices frequently included loading the meta tags of a site with numerous keywords and phrases in an effort to improve a site's search performance for those terms.

Click below for a discussion of what happens when trademarks are used in connection with this practice, and why website owners would be best served avoiding such use.

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In a recent decision, the Second Circuit reversed a district court's grant of a motion to dismiss in a trademark infringement case.  The district court, relying on the Second Circuit's 2005 decision in 1-800 Contacts, Inc. v. WhenU.com, Inc., held Google's use of its Adwords and Keyword Suggestion Tool to cause advertising to appear when certain trademarked words and phrases are searched did not constitute a "use in commerce" as defined in § 1127 and required for a claim of trademark infringement under § 1114.

On appeal, the Second Circuit reversed, holding this practice did constitute a use in commerce.  The court distinguished the 1-800 Contacts case, observing in that case, the advertisements were in response to visiting a website, not the entry of a trademark.  Further, in that case, advertisers could not "purchase" a competitors keyword, so even if an advertiser wanted its ads to appear when a user visited a competitor's site, the defendant did not offer such a service.

In contrast, here Google not only keys the advertisements to the trademark itself (rather than as a result of visiting a website), but also permits anyone to pay to have its advertisements shown when a trademark is searched.  The Keyword Suggestion Tool will also suggest that advertisers key their advertisments to trademarked terms.  Based on these allegations (taken as true in the context of Google's motion to dismiss), the Second Circuit held there was a use in commerce, and reversed the district court's dismissal of the case.

More detail of Rescuecom Corp. v. Google Inc. after the jump.

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In a recent decision, the Ninth Circuit reversed a district court's grant of a motion to stay federal trademark claims against Indian tribal defendants pending a determination of jurisdiction by a tribal court.  The trademark claims were for alleged passing off of cigarettes on the Internet, on the reservation of another tribe, and elsewhere.  The district court ruled that there was at least a colorable claim to tribal jurisdiction under Supreme Court precedent and granted a stay of federal proceedings pending a determination of jurisdiction by the tribal court.

The Ninth Circuit reversed, holding there was not a colorable claim of jurisdiction in tribal court insofar as it implicated the plaintiff's federal trademark claim against the tribal defendants and its principals, members of the Yakama Tribe.  Accordingly, allowing exhaustion of tribal remedies would serve no purpose other than delay.  As a result, the court reversed the district court's decision and remanded for the case to proceed.

More on Philip Morris USA, Inc. v. King Mountain Tobacco Co. after the jump.

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In a recent decision, the Ninth Circuit reversed a district court's grant of summary judgment that a copyright holder did not have standing to sue for copyright, trademark, unfair competition, and related declaratory judgment claims.  The case involved the film Gone in 60 Seconds, produced and directed in 1974 by H.B. "Toby" Halicki, and remade in 2000.  The key issue was the construction of a 1995 Agreement that provided an option to remake the movie, and assigned certain of Halicki's rights to Hollywood Pictures (a division of the Walt Disney Company and producer of the 2000 film), and more specifically what rights were reserved to Halicki's wife (who obtained Halicki's rights after his death).  Based on the district court's construction of the agreement, the Plaintiffs did not have standing because they assigned all relevant rights in the Agreement, and specifically the rights to the remake of the famed Ford Mustang "Eleanor." 

The Ninth Circuit reversed, holding the agreement between the parties lacked explicit details about what rights the plaintiff might have in a derivative work – namely a remake of Eleanor.  However, the court found that the agreement was "reasonably susceptible to the interpretation" that the plaintiff had retained rights to the remake of Eleanor.  When combined with other extrinsic evidence not considered by the district court, it was clear to the court that plaintiff owned the rights to remake Eleanor, and therefore reversed the district court's holding of no standing to bring the copyright claim.

The court also highlighted several errors by the district court regarding trademark standing.  First, the district court held the plaintiff did not have standing to claim infringement of the "Eleanor" mark because she did not own a registration in the mark.  This was the wrong legal standard, because a plaintiff may also have standing to claim infringement if they are the owner of an unregistered mark.  The district court also held that the plaintiff did not have standing to sue on the "Gone in 60 Seconds" mark because her registrations were for toy cars and baseball caps, while the alleged infringement was for use of the mark on actual cars.  The Ninth Circuit noted the district court confused the test for infringement with the test for standing:  to establish standing under the Lanham Act, a plaintiff must only demonstrate that they are the owner of a mark for any class of products.  Because the plaintiff owned a registration for the Gone in 60 Seconds mark (even for different goods), she had standing under the Lanham Act to bring an infringement claim against the defendant.

More on Halicki Films, LLC v. Sanderson Sales & Mktg. after the jump.

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In a decision Wednesday, the Ninth Circuit affirmed a district court's grant of summary judgment that the producer of Grand Theft Auto: San Andreas had a First Amendment defense against a claim of trademark infringement.  The plaintiff owns a strip club known as the "Play Pen" on the eastern edge of downtown Los Angeles.  Grand Theft Auto: San Andreas includes, in its fictional city "Los Santos," a virtual strip club "Pig Pen" in the neighborhood "East Los Santos."  The Ninth Circuit, agreeing with the district court, held the First Amendment defeated the infringement claim.  Specifically, the court held the game's producers' "modification of [the] trademark is not explicitly misleading and is thus protected by the First Amendment."

More detail of E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc. after the jump.

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In a decision last week, the Eleventh Circuit reversed a district court's dismissal of a trademark infringement case for lack of personal jurisdiction.  The district court held that the allegedly infringing conduct, operating a website, was insufficient to warrant jurisdiction in the plaintiff's home state of Florida.

Here, the plaintiff was an individual, and the trademark allegedly infringed was the plaintiff's name.  The court applied the Calder effects test, and held it was reasonable for the defendant, in using the plaintiff's name, to expect to be haled into court in the plaintiff's home state.  The court characterized the alleged trademark infringement in this case as intentional, in that the plaintiff was "individually targeted" to "misappropriate his name and reputation for commercial gain."  As a result, the Calder test was met, and personal jurisdiction was proper in Florida.

More detail of Licciardello v. Lovelady following the jump.

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In a notice today, the USPTO announced a new trademark consistency initiative.  Under the new initiative, applicants who believe a substantive or procedural issue has been addressed in a "significantly different manner" in two applications may raise the issue for consistency review.  This is subject to four requirements:

1. the request is based on co-pending applications or an application and a registration owned by the same legal entity or a successor in interest (e.g., assignee);
2. the registration(s) involved was issued less than one year prior to the date of the request;
3. at least one of the applications in the request  is in a pre-publication status at the time of the request; and
4. the allegedly inconsistent treatment has already occurred.

While applicants are "encouraged" to raise the inconsistency issue with the examining attorney, they may now raise the issue for consistency review by providing a brief description of the inconsistent action and identification of the relevant applications.  The pilot program is scheduled to last for one year.

To read the full notice, click here.

In a recent decision, the Second Circuit affirmed a district court's summary judgment to the defendant in an antitrust case regarding trademark licensing.  The case involved the collective licensing setup of Major League Baseball Properties ("MLBP").  The plaintiff was a licensee of MLBP.  The court held the centralized licensing agent for all Major League Baseball teams did not violate § 1 of the Sherman Act.  

The plaintiff argued the agreement should be either per se illegal or subject to "quick look" rule of reason analysis.  The court rejected both of these contentions, instead applying traditional rule of reason analysis.  The court's lengthy opinion held that MLBP does not depress any collectibles market or violate antitrust provisions through its centralized licensing structure and equal apportionment of licensing revenue to each baseball club.

More on Major League Baseball Props., Inc. v. Salvino, Inc. after the jump.

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In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119.  § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO.  The prevailing defendant asked the district court to order the USPTO to dismiss a related cancellation proceeding.  The party had not requested an order under § 1119 in its counterclaims, but instead sought it by way of a Rule 59(e) motion to amend the final judgment in the case.  The district court denied the motion, concluding the defendant could simply raise the issue as a matter of issue preclusion.

The Second Circuit affirmed.  The court held there was no abuse of discretion in denying the Rule 59(e) motion.  Further, the court noted § 1119 is permissive, such that the court was not required to grant such relief.

More detail of Empresa Cubana del Tabaco v. Culbro Corp. after the jump.

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The Seventh Circuit recently reversed a district court's summary judgment for the defendant in a trademark infringement case.  The district court held no reasonable fact finder could find the marks likely to be confused.

On appeal, the Seventh Circuit reminded us that the test for likelihood of confusion is not simply whether consumers will confuse two marks, but whether upon viewing the junior mark a consumer will be likely to associate the product or service with the source of the products or services of the senior mark.  In other words, the relevant query is whether consumers will believe that goods/services offered under the junior mark are sponsored, endorsed, or otherwise affiliated with the senior trademark owner.  Applying this standard, the court held there was at least a genuine issue of fact regarding likelihood of confusion, and reversed the grant of summary judgment.

More detail of AutoZone, Inc. v. Strick after the jump.

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