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Intriguing IP Cases – Our Top 4 for 2012 (So Far)

May 7, 2012
Maggie Tamburro

The cases demonstrate the growing diversity and reach of intellectual property today

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One can hardly check the daily news feed from their favorite syndicators without encountering yet another high profile intellectual property headline. Whether it’s a breaking story about the NFL cracking down on counterfeiters, or the April 18th U.S. Supreme Court ruling regarding a dissatisfied patent applicant’s ability to introduce new evidence, intellectual property related lawsuits dominate headlines.

We decided to count down our top 4 most intriguing and attention-grabbing intellectual property cases thus far in 2012. A caveat: Not all of these cases profoundly influence U.S. commerce (although one or two certainly have potential), or protect critical intangible ideas that result in palpable benefits to our economy, but, hey, this is America. The First Amendment right to freedom of speech is, so far as I know, still alive and well.
The cases do, however, demonstrate the growing diversity and reach of intellectual property today.

4. The Naked Cowboy – A Raw Deal?

New York’s famed Naked Cowboy perhaps got a raw deal when the U.S. District Court for the S.D. of New York dismissed his case against CBS and Bell-Phillip Television on February 23 of this year. For those of you unfamiliar with the Naked Cowboy, the district court, quoting the complaint, describes him as “an ‘enormously successful and popular’ street performer who ‘dresses as a cowboy-only a virtually Naked one.’ When performing, he wears only briefs, cowboy boots, a cowboy hat, and a guitar.”

Citing violations of the Lanham Act and various violations of New York law, the Naked Cowboy, d/b/a Naked Cowboy Enterprises, sued the broadcast network and producer of the daytime series “The Bold and the Beautiful.” At issue in the case, styled as Naked Cowboy v. CBS, was an episode allegedly containing a brief clip of a copycat character bearing a striking resemblance to the Naked Cowboy, portions of which were also posted on defendants’ YouTube channels.
Although concluding the “Naked Cowboy” was a protectable mark, the district court granted defendants’ FRCP 12(b)(6) motion and dismissed the case citing, among other things, the fair use defense, and finding no likelihood of confusion or dilution of plaintiff’s reputation. Whether the Naked Cowboy will appeal the decision is yet to be seen.

3. Simple Sex? Not So Much…

On April 6 of this year, Match.com, L.L.C., the company many credit with pioneering the world of online dating, filed an amended complaint in the U.S. District Court for the E.D. of Virginia, bringing an action in rem against domain name defendants xxxmatch.com and eroticmatch.com, and associated entities and individuals.
Citing claims of trademark infringement, unfair competition, false representation, false designation of origin, and cyberpiracy under the Lanham Act, Match.com alleges defendants have engaged in various infringing activities associated with a number of its MATCH.COM® federally registered trademarks and related services.

In the case, styled as Match.com, L.L.C. v. Fiesta Catering Int’l, plaintiff alleges defendants offer a variety of online “adult dating” services through websites designed to cause the user to believe such services are associated with MATCH.COM®.
Of particular issue is defendants’ alleged “egregious” use of the slogan “LOVE IS COMPLICATED. SEX IS SIMPLE,” which Match.com contends is an obvious reference to its federally registered “LOVE IS COMPLICATED. MATCH.COM® IS SIMPLE” trademark.

Plaintiff requests, among other things, that defendants be permanently enjoined from using the alleged egregious slogan and other acts of infringement, remedy any consumer confusion, be ordered to deliver for destruction all infringing goods and merchandise that using the slogan or any of the other marks associated with MATCH.COM®, and pay treble damages.

2. The Trouble with Tebow?

Filed March 27 of this year (notably less than a week after the Denver Broncos announced Tim Tebow had been traded to the New York Jets) Nike, Inc. and its subsidiary, Nike USA, Inc., filed suit in the U.S. District Court for the S.D. of New York against Reebok International Ltd, claiming violations of the Lanham Act (together with a number of other allegations).

At issue in the case, styled as Nike, Inc. v. Reebok Int’l Ltd., was Reebok’s alleged improper use of Tim Tebow’s name and New York Jets football number on New York Jets branded apparel allegedly sold by Reebok following announcement of Tebow’s trade.

Nike alleged the trade created what plaintiffs termed a unique “immediate and short-lived intense consumer demand for Tim Tebow-identified New York Jets-branded apparel,” and claimed that Reebok was unlawfully attempting to capitalize on this unique window of high consumer demand. Nike asserted that, unlike Nike, Reebok was neither licensed nor authorized to use the professional football player’s name on its products, either from Tebow or the NFL Players Incorporated (the licensing arm of the National Football League Players Association). Nike also alleged Reebok lacked a license from the NFL for use of NFL Marks.
Apparently the district court agreed with Nike – it issued a temporary restraining order and issued an order for preliminary injunction on April 6. Three days later, the Judge singed a Final Judgment closing the case.

1. Language Barrier?

This case easily earns our number one spot.
In this important 4th Circuit U.S. Court of Appeals opinion, Rosetta Stone Ltd v. Google, Inc., issued April 9 of this year, the U.S. Court of Appeals for the 4th Circuit vacated and remanded portions of a lower court’s order granting Google, Inc., summary judgment on Rosetta Stone Ltd’s claims of trademark infringement under the Lanham Act.

At issue were keywords used to display “cost-per-click” advertisements known as “Sponsored Links,” which Google sells under its advertising platform known as Google AdWords. Advertisers purchase keywords by bidding against each other in order to gain top placement on a search results page. Rosetta Stone, which owns several federally registered marks in connection with its language learning software, claimed that Google’s sale of its trademarked keywords, as well as use of its trademarked keywords in ad text, created confusion and misled users into purchasing counterfeiting, copycat Rosetta Stone software.
In vacating and remanding the district court’s order on Rosetta Stone’s claims of direct infringement, contributory infringement, and dilution, the 4th Circuit has potentially opened the door for an onslaught of similar claims from other companies. This is a case to watch closely – over 30 entities from various industries filed amici briefs in support of Rosetta Stone, including the likes of Ford Motor Company; Business Software Alliance; Chanel, Inc.; Sunkist Growers, Inc.; and the National Football League.

Your Turn

That’s it for our top four. What do you think is the most intriguing intellectual property filing or opinion so far this year?

This article was originally published in BullsEye, an expert witness and litigation news blog published by IMS ExpertServices. IMS ExpertServices is a full service expert witness and litigation consultant search firm, focused exclusively on providing best-of-class experts to attorneys. We are proud to be the choice of nearly all of the AmLaw Top 100.

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