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Can A Company Go Too Far In Preventing Its Employees From Being Hired Away By Its Customers?

Can a company go too far in preventing its employees from being hired away by its customers? The Fourth District Court of Appeal recently answered, “yes,” but gave some indication where the line of permissible restrictions is crossed. (VL Systems, Inc. v. Unisen, Inc. (June 2007) 152 Cal.App.4th 708.)

The plaintiff VL Systems (“VLS”) was a computer consulting company and defendant Unisen was its client. VLS employed consultants to work with its customers on their particular projects and billed the customer for the consultant’s time on an hourly basis. The contract between VLS and Unisen included a “no-hire provision” in which Unisen agreed that “[b]uyer will not attempt to hire seller’s personnel” for a period of 12 months after the work was completed. The contract further provided for liquidated damages equal to 60 percent of the employee’s compensation in the event Unisen breached the no-hire restriction.

The scope of the consulting contract between VLS and Unisen was rather small. VLS hired a new employee, David Rohnow (“Rohnow”), after the contract with Unisen was completed. Rohnow never worked on the project with Unisen since it was already completed. Rohnow worked for VLS for six months then elected to seek employment elsewhere. Rohnow responded to an advertisement placed by Unisen seeking a director of information technology. Unisen hired Rohnow knowing he had worked for VLS, but Unisen did not believe the no-hire provision applied since Rohnow had not work on the Unisen project. VLS demanded that Unisen pay the liquidated damages provided for under the contract. Unisen refused and VLS brought suit.

The Court balanced two important public policies. The first is the public policy established in Business and Professions Code section 16600 which states: “Except as provided in this chapter, every contract by which anyone is restrained from engaging in a lawful profession, trade or business of any kind is to that extent void.” The second public policy balanced by the Court is the freedom of contract. The Court acknowledged that it should not blithely apply public policy reasons to void contract provisions. (Dunkin v. Boskey (2000) 82 Cal.App.4th 171, 183-84.)

The only case in California that came close to the issues presented in this appeal was Webb v. Westside District Hospital (1983) 144 Cal.App.3d 946 (overturned on other grounds), which upheld a no-hire provision included in a contract between a hospital and temporary employee service. The Court distinguished the Webb case by noting that the no-hire provision in Webb was limited solely to employees who had actually worked for the hospital and that the employment agency had suffered actual damages by the contract being terminated prior to the hospital hiring away its employees.

Without any binding precidence, the Court looked to more general public policies to determine whether VLS’s no-hire provision was enforceable. Narrowly-drawn no-hire provisions that might otherwise limit the employment mobility of individuals if necessary to protect the legitimate business interests of the former employer. Examples include restrictions on a former employee’s right to solicit away other employees and restrictions on former employee’s right to use trade secrets. (See L’Oreal Corp. v. Moyes (1985) 174 Cal.App.3d 268, 279.) Here, the Court found that VLS’s no-hire provision was not so narrowly drawn. It applied to all employees, whether or not they actually worked for the client and whether or not they were actually employed by VLS during the period that VLS worked for the client. The Court found that this broad no-hire provision “is not necessary to protect VL Systems’ interests and is outweighed by the policy favoring freedom of mobility for employees is therefore unenforceable.” (VL Systems, supra, 152 Cal.App.4th at 718.)

VLS attempted to argue that its no-hire provision was not a restraint on employee mobility, noting that the provision did not prohibit a client from hiring away an employee, it only established an agreed-upon price for doing so through the liquidated damages provision. The Court rejected that argument, noting that the liquidated damages provision was sufficiently punitive and would “unfairly narrow the mobility of the employee.”

The Court made it quite clear that its decision was limited to the facts before it and that its decision should not be interpreted to mean that all no-hire provisions were unenforceable under Business and Professions Code section 16600. Conversely, the Court declined to establish a bright line test as to when a no-hire provision goes too far as to become unenforceable. However, some guidance can be gleaned by understanding the factual distinctions the Court noted between the Webb decision and the case before it.

A narrowly-drawn no-hire provision that is reasonable in time and that applies solely to employees who actually work for the client have the best chance of being senforced. The public policy upholding private party contracts should prevail over the public policy favoring employee mobility when necessary to protect the legitimate business interest of the employer. As stated by the VLS Court, “This is not a case where the happy client of a consulting firm attempts to poach an employee.” (Id. at 715.) Contractual no-hire provisions, if narrowly drawn and necessary to protect the business of the company, are quite different than the facts in VL Systems.

Fantasy Sports League Hits It Out Of The Park In Challenging MLB’s Ownership Of Player Statistics

Just how valuable are baseball statistics? Apparently very valuable. In fact, baseball statistics are so valuable that CBC Distribution and Marketing, which has run the CDM Fantasy Sports leagues since 1992, sued Major League Baseball and challenged its ownership claim over player statistics. In a matter which rose all the way to the United States Court of Appeals for the 8th Circuit, CBC agued that baseball statistics become historical facts as soon as a game is over, and that it shouldn’t have to pay for the right to use them. Major League Baseball claimed that the right of publicity belonging to major league baseball players makes it illegal for fantasy leagues to commercially exploit the statistical profiles of its players.

The Major League Baseball Players Association is the bargaining representative for Major League baseball players and is comprised of almost all persons who are employed as Major League baseball players. When a player joins the Players Association it can choose to grant the Players Association certain rights with regard to the player’s name, nickname, likeness, signature, picture, playing record, and/or biographical data.”

CBC sells fantasy sports products online. Its fantasy baseball products incorporate the name, performance and biographical data of actual major league baseball players. Before the commencement of the major league baseball season each spring, participants form their fantasy baseball teams by “drafting” players from various major league baseball teams. Participants compete against other fantasy baseball “owners” who have also drafted their own teams. A participant’s success, and his or her own team’s success, depends on the actual performance of the fantasy team’s players on their respective actual teams during the course of the major league baseball season. Participants in CBC’s fantasy baseball games pay fees to play and additional fees to trade players during the course of the season.

The Players Association and Advanced Media, a company that, in 2005, entered into an exclusive license with the Players Association to use baseball players’ names and performance information for, among other things, providing fantasy baseball games on the MLB website, challenged CBC’s right to use the names of, and information about, major league players from the Players Association in connection with fantasy baseball games. The Players Association and Advance Media claimed that CBC violated the players’ right of publicity in their names and playing records as used in CBC’s fantasy games.

In Missouri, the elements of a right of publicity action include: 1) that the defendant used the plaintiff’s name as a symbol of his identity; 2) use without the plaintiff’s consent; and 3) with the intent to obtain a commercial advantage. These elements are almost exactly the same as California’s: (1) the defendant’s use of the plaintiff’s identity; (2) the appropriation of plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury.

Both the lower court and the Court of Appeals determined that CBC’s use of the players’ names and playing records implicate all three elements of Missouri’s right of publicity. The players’ names used by CBC are understood by CBC and fantasy baseball players as referring to actual major league baseball players. Additionally, the evidence showed that CBC’s use was without consent.

With regard to whether CBC’s use of the players’ names and statistics was “with the intent to obtain a commercial advantage,” the Court of Appeals noted that CBC’s use does not fit neatly into the more traditional categories of commercial advantage, namely using individuals’ names for advertising and merchandising in a way that states or intimates that the individuals are endorsing a product. Nevertheless, the Court of Appeals found that because CBC uses the baseball players’ identities in its fantasy baseball products for a project, CBC is using the identities for commercial advantage.

CBC argued that in the event it violated the players’ right of publicity, the First Amendment nonetheless trumps the right-of-publicity action provided by state law. CBC argued, and the court agreed, that the information used in CBC’s fantasy baseball games is speech. If previous court decisions have held that pictures, graphic designs, concept art, sounds, music, stories and narrative present in video games can constitute speech, so too can the players’ names, likeness, signatures, pictures, playing records and biographical information.

In determining that the players’ names and statistics are speech, the court found persuasive the fact that the information in question is readily available in the public domain. The court noted that it would be strange law that a person would not have a first amendment right to use information that is available to everyone. Further, the court the recognized the public value of information of the game of baseball and its players. The Court of Appeals noted that baseball is the “national pastime” and is followed by millions of people across the country on a daily basis. The Court noted a California appeals court decision which held that the “recitation and discussion of factual data concerning athletic performance of [players on Major League Baseball’s website] command a substantial public interest, and, therefore, is a form of expression due substantial constitutional protection.”

Based on the above, and the fact that the facts in the instant case barely, if at all, implicate the interests that states typically intend to vindicate by providing rights of publicity to individuals, CBC’s First Amendment rights in offering its fantasy baseball products supersedes the players right of publicity.

Tiffany v. Ebay: Is Ebay Responsible for Trademark Infringement?

The lawsuit Tiffany & Co. brought against Ebay in 2004 for contributory trademark infringement is currently being heard in the U.S. District Court in Manhattan. The outcome of this trial, though likely to continue on appeal, will greatly affect internet auction websites. A victory by Tiffany will not only spawn hundreds of additional lawsuits against Ebay, it will cost the internet auctioneer millions of dollars in policing costs.

Since its inception in 1995, Ebay has seen unprecedented growth. In the first quarter of 2007, Ebay had 588 million new listings. Ebay claims to sell about $2,000 in goods every second. Their gross merchandise volume for all the goods sold on their website was over $52 billions dollars in the first quarter this year. Despite this success, some retailers are not so enthusiastic. These retailers, including Tiffany argue that Ebay does not appropriately police its website to prevent counterfeiters. Based on this claim, Tiffany sued Ebay claiming that Ebay aided violations of the jeweler’s trademarks by allowing counterfeit items to be sold on its website. Tiffany claims that 95% of all the items sold under the Tiffany trademark are fakes. Tiffany’s complaint argues that Ebay is contributing to this trademark infringement by knowingly facilitating the sales between its users. Ebay, on the other hand, has argued that it has created numerous protocols to prevent fraudulent sales of trademarked goods.

In 1982, the US Supreme Court discussed what type of activity or conduct would create liability under contributory trademark infringement. The Court in Inwood Laboratories v. Ives Laboratories stated that liability for trademark infringement can extend beyond those who actually mislabel goods with the mark of another. Even if a manufacturer does not directly control others in the chain of distribution, it can be held responsible for their infringing activities under certain circumstances. The key test in the Ives case was if the manufacturer suggested, even if by implication, that they use their goods to infringe, then the manufacturer was liable for trademark infringement.

In the 1990’s two cases used the Ives test to specifically hold owners of a flea market liable for trademark infringement for counterfeit goods sold at their flea market. Because Ebay is, in essence, an online flea market, the court will likely look to these decisions for guidance in deciding the present case. In both of these cases, a landlord operated a flea market where sellers sold counterfeit goods. In Hard Rock Café Licensing Corp. v. Concession Services, the Seventh Circuit held that “willful blindness” is sufficient for liability under contributory infringement. In Fonovisa v. Cherry Auction, the Ninth Circuit held that landlords of flea markets who do more than merely rent space, and effectively supplies all aspects necessary for a marketplace, can be liable if it knows of infringing activity on the premises. In addition, the landlord who knowingly fails to prevent such action will also be liable. Ebay argues that it has met these standards.

Since the beginning of this lawsuit, Ebay has argued that it is aware of the risks of users selling counterfeit goods. Trying to meet the standards set forth in the above cases, Ebay has established programs to prevent trademark infringement. One of these programs is the VeRO program. VeRO stands for Verified Rights Owner where owners of intellectual property can notify Ebay of suspicious items for sale. Ebay claims that it is very responsive to inquiries through this program and immediately removes any items that are suspicious. From 2003 to 2006, Tiffany sent Ebay 284,000 notices of infringement to Ebay.

Tiffany, however, claims that Ebay’s system is ineffective. They charge Ebay with the responsibility of policing its sites, especially after they have been put on notice that such rampant counterfeiting is taking place. Tiffany claims that Ebay’s methods are ineffective partially because Ebay is profiting off each item sold on Ebay, regardless if the goods are counterfeit or not. Tiffany has argued that as long as Ebay reasonably anticipates the sale of an infringing product, they should be held liable. This standard was mentioned in dicta in the Ives case, and Tiffany would like this stricter standard applied to Ebay.

The outcome of this case will have major implications for Ebay as well as trademark owners whose goods are sold through Ebay. If Ebay is held liable, they will have to systematically change there verification process for goods sold and actively police its site. This would cost Ebay millions to police such activity. The real threat, however, may come from the additional lawsuits that will be filed from trademark owners claiming trademark infringement.

Is There Really Only Room For One “Bay” On The Internet?

Has eBay become so powerful that it can successfully claim to be the only “Bay” on the Internet? That’s what it argued in a recent Ninth Circuit Court of Appeals trademark infringement case. In that case, Perfumebay.com, Inc. v. eBay, Inc., – – – F.3d – – – (9th Cir. November 5, 2007), the court upheld a federal district court decision from the Central District of California which ruled that the term “PerfumeBay” and “perfumebay.com” infringed the mark of Internet giant eBay.

When reviewing possible trademark infringement, courts analyze factors which have become known as the Sleekcraft factors. These factors include (1) strength of the mark, (2) proximity or relatedness of the goods, (3) the similarity of the marks, (4) evidence of actual confusion, (5) the marketing channels used, (6) the degree of care customers are likely to exercise in purchasing the goods, (7) the defendant’s intent in selecting the mark, and (8) the likelihood of expanding into other markets. Where the use of the mark is primarily on the Internet, however, the three key factors are the similarity of the marks, the relatedness of the goods and services, and the parties’ simultaneous use of the Internet as a marketing channel.

The court found that the marks were similar because Perfumebay includes the term eBay in its entirety, and found infringement because both used the Internet simultaneously and both sites sold perfume. The similarity of the marks was more pronounced when Perfumebay’s mark was used as “PerfumeBay.” Significantly, even when Perfumebay used separate words for advertising, Perfume Bay, the domain name www.perfumebay.com still contained eBay’s mark in its entirety because domain names cannot have spaces. Even though Perfumebay typically used a stylized starfish between “Perfume” and “Bay” in its logo, that did not help in the similarity analysis. And while the marks are pronounced differently, have different meanings, and Perfumebay uses a dissimilar look in its logo, the court stated that the way the marks are utilized in the marketplace is determinative. “Internet users do not utilize verbal communication as a basis for the services that they seek. The likelihood of confusion, therefore, does not arise in a vacuum, but rather from the manner in which ‘perfumebay’ is used on the internet.”

Perfumebay’s founder testified that she “envisioned a bay filled with ships importing perfumes from all parts of the world and this bay would be the place where perfume lovers could go to locate the selection of fragrances.” In the court’s view, however, the fact “that the term may convey different impressions to different individuals is irrelevant to a likelihood of confusion analysis.” Again, the court fell back to the fact that the mark “eBay” was found in its entirety within “perfumebay.”

eBay could not convince the court that it should be the only “Bay” on the Internet, however. It was only successful in persuading the court that it is the only permissible “eBay” on the Net. eBay’s Vice President for Litigation was “concerned about any use of bay which is likely to lead consumers into thinking that the web site is sponsored, affiliated, endorsed by [eBay], or one where they’re basically frontally assaulting the brand by treating bay as a generic reference to online commerce. He was also concerned that the use of a generic word plus ‘bay’ would lessen the distinctiveness of eBay’s trademark.” The court didn’t go that far, thankfully, and enjoined only the use of “perfumebay” as a single word. Thus, use of the term “Bay” without the “e” was permitted.

However, that still would seem to prohibit any use of a domain name with the letters “ebay” in them. For example, www.littlebay.com advertises vacation rentals in the Florida Keys. Under Perfumebay.com, eBay could challenge Little Bay’s website as infringing its mark. After all, the domain name contains the mark “ebay” in its entirety, they both advertise on the Internet, and eBay also sells travel packages for Florida vacations. The site www.bluebay.com is another example. BlueBay also sells travel packages, advertises on the Internet, and the domain name contains the conjoined letters “ebay” in their entirety.

A significant factor in the court’s analysis was the strength of the eBay mark. Even though use of the generic term “Bay” without the familiar “e” was at least implied to be infringing, the court refrained from enjoining its use. The Ninth Circuit seemed clear that it would have upheld that injunction also, stating that “the district court did not clearly err in declining to enjoin” such use.

Perfumebay has vowed to continue fighting this decision, and it has filed for an emergency stay of the injunction. It has also indicated that it plans to seek review by the U.S. Supreme Court. Perhaps the Supreme Court will grant review and provide further guidance on trademark infringement in the use of domain names. Until then, there is only one authorized “eBay” on the web, and Little Bay, Blue Bay, and anyone else who uses the conjoined letters “ebay” in a domain name have reason to be nervous.

Blind Internet Users Victorious in Discrimination Action Against Website

Earlier this month, a California district court certified a class on behalf of blind internet users against Target.com under the American Disabilities Act and California law. National Federation of the Blind v. Target Corp. (N.D. Cal. Sept. 28, 2007). The class claims that the Target.com website is inaccessible to the blind and therefore violates federal and state laws prohibiting discrimination against the disabled. This ruling should give notice to website owners that websites, especially those available in California, should be made to be accessible to the blind.

The plaintiff, a blind college student, uses the internet for various reasons, including shopping. The plaintiff goes online to compare prices, research goods and make decisions about making purchases at physical stores. The plaintiff uses a screen reading software device to access the internet. The software reads embedded data on a website and vocalizes this information to the blind user. The plaintiff claims that the Target.com website fails to use such embedded data despite it being technologically simple and not economically prohibitive. The plaintiff claims that since Target.com lacks this embedded data, blind users are unable to navigate the website and are denied full and equal access to the physical target stores.

The court certified classes in this case based on federal and state law. The nationwide claim is based on the ADA’s requirement that all disabled people have full and equal enjoyment to goods and services of any place of public accommodation. Courts have been reluctant to hold websites to the standards set forth by the ADA because they are not considered to be a place of public accommodations. The court in this case, however, recognized that Target.com’s inaccessibility issues may have hindered the plaintiffs’ full enjoyment of the physical stores. The court found that Target’s physical store and its website are highly integrated. Many internet users use the website to pre-shop before shopping in the physical store. Target.com was inaccessible to the blind, and they were prevented from pre-shopping which caused some blind users to expend extra time and expense in shopping. In some cases, the blind users were diverted to more user friendly websites. The court held that the nexus between the website and the physical store was enough to cause harm to blind users who could not access the Target.com website. In these situations, plaintiffs who were unable to pre-shop did not have full and equal enjoyment of the goods and services at the physical stores.

Unlike the ADA, the California state disability laws do not require a nexus between a website and a physical store. The California Unruh Civil Rights Act and the Disabled Person Act (DPA) is not limited to restrictions on public accommodations. The Unruh Act regulates “all business establishments of every kind whatsoever.” Cal Civ. Code § 51(b). The DPA addresses “an accommodation, advantage, facility, and privilege of a place of public accommodation” and “other places to which the general public is invited.” Id. § 54.1(a)(1). Thus, the language of both statutes is broader than that of the ADA. The court reviewed the legislative history of both acts and determined that the nexus requirement is not required between the website and the physical store. Specifically, one court recently held that “business establishments” under the Unruh Act included an exclusively internet-based adoption agency. Butler v. Adoption Media, LLC, 486 F.Supp. 2d 1022, 1054 (N.D. Cal. 2007). In that case, the adoption agency discriminated against same-sex domestic couples in favor of married couples. The court found that no nexus was needed between the website and the physical place.

The DPA also is more expansive than the ADA. The DPA includes both physical and non-physical places and “other places where the public is invited.” There are no cases that hold that websites are included in “other places.” The court, however, holds that the there are no cases that exclude websites under this definition. In addition, the broad language of the DPA comfortably could include websites as places where the public is invited to. The court, therefore, found it was not necessary to find a nexus between the website and a physical store as the ADA requires.

This distinction may have important ramifications for web-based business in California. Under California law, it will be much easier for a plaintiff to prove harmed by a website for failing to provide full and equal enjoyment to its blind users. The plaintiff, in order to prevail, would simply need to show that they are injured in some way by not being able to access the website. The ADA, on the other hand, requires that there must be some nexus between the website and the physical store. Website owners should take note because this ruling will make it easier for claims to be brought against websites for disability discrimination, especially in California.

It’s Hammer Time at The USPTO

There is a growing trademark dispute between a small Alaskan museum devoted to a 900 piece display of hammers and the great Los Angeles based Hammer Museum (formerly known as the Armand Hammer Museum). On February 10, 2006, the Los Angeles based Hammer Museum filed an application with the United States Patent and Trademark Office to register the mark, HAMMER MUSEUM for museum services. Early this summer, Dave Pahl, the founder of the Alaska museum, became aware of the L.A. Hammer’s application and filed his own in July. Pahl filed his application based on use in commerce and listed the date of first use as April 14, 2000.

This story has already received a significant amount of coverage, including a page one spread in the Wall Street Journal. Most of the stories focus on the “David and Goliath” element; the Alaska museum took in revenue last year of around $8,000 (half of which were from t-shirt sales) while in 2006 the LA Hammer reported approximately $10 million in sales. The Journal wrote, “if one museum is granted the mark it could stop the other from using the name” and then notes that the LA Hammer says it can date its first use to 1999. Readers may come away from the story with the belief that all is lost for Pahl and his cultural oasis in the great tundra. But Pahl should not trade in his hammers for sled dogs. Pahl may have acquired rights to the mark that are senior to the Westwood based fine art museum – at least in Haines Alaska.

Common law trademark rights resulting from a prior but non-registered use are not wiped out by a later filed federal trademark registration application. Trademark rights stem not from registration of a mark but from actual use in commerce. While some civil law nations follow the “first to file” rule which grant senior rights to the first party to win the race to the trademark office, the United States follows the rule that ownership and priority go to the party who was first to use.

Common law rights are defined by the scope of actual use and the geographical territory in which the mark was used. While a merchant may acquire common law trademark rights in the name of a brick and mortar business, that interest is limited to the geographic area in which the merchant actually does business. As such, another merchant in another town can use the exact same name for a similar business and not infringe the common law rights of the first merchant if the first merchant does not advertise or do business in that town.

The LA Hammer Museum filed its application in 2006. Contingent upon the application maturing to registration, the LA Hammer Museum will enjoy a presumptive nationwide right in and to its mark as of the filing date. This presumptive nationwide right is one of the primary motivators for filing a trademark application. However, this right is subject to any common law rights in existence at the time of LA Hammer’s filing.

The LA Hammer states that it can show a date of first use of 1999 on a brochure for the “UCLA Hammer Museum.” This is prior to Pahl’s stated 2000 date of first use. However, depending on how this brochure was utilized, it very well may be that LA Hammer’s common law trademark rights in the mark HAMMER MUSEUM is geographically limited and excludes the town of Haines, Alaska. Assuming that the LA Hammer did not use this brochure to actively market its museum to residents of Haines, Pahl may have superior rights to the mark HAMMER MUSEUM in Haines -and perhaps even the entire state of Alaska.

The USPTO provides a mechanism which enables parties to sort out issues such as this called a Concurrent Use Proceeding and it recognizes that, under certain circumstances, a registered mark can and may function to identify more than one source of goods or services. A concurrent use proceeding is initiated by an applicant filing an application that is limited as to territory. The application will be examined as all trademark applications are examined, and if it appears that the application is fit for registration it will be published. If no opposition is filed, the Trademark Trial and Appeals Board (TTAB) will prepare notices and send them to any parties named in the application as concurrent users of the Mark. In the case of an owner of a registered mark, unless it consents to the concurrent use application, the matter will move forward as a concurrent use proceeding before the TTAB. In the proceeding, the TTAB will take evidence on the scope of geographical use of each of the marks and eventually decide who can use their mark in certain geographical areas.

Pahl may not have to go through all of this though. In the Wall Street Journal article, a representative of the LA Hammer is quoted as stating that they have no interest in stopping Pahl from using the mark HAMMER MUSEUM; she continues in stating “we are a fine-art museum in California, not a museum of hammers in Alaska, we think we have very different audiences.” Given that the LA Hammer appears to be indicating that it believes there is no overlap in the group of consumers who encounter the two marks, and therefore no likelihood of confusion, Pahl next step should be to work out a Coexistence Agreement which may very well allow his pending federal application to also go forward to registration.

Disparage At Will, Just Don’t Infringe – The Message From The Ninth Circuit In Freecycle

The Ninth Circuit Court of Appeals issued an opinion last week that, while not necessarily controversial or new, serves as a good reminder for trademark litigators: There must be actual infringement to prevail in a trademark infringement lawsuit. While this would seem to be obvious, the Ninth Circuit thought it was an important enough reminder to actually publish the decision, and even more surprisingly, issued their unanimous opinion just over a month after oral argument.

The case, The Freecycle Network, Inc. v. Oey, — F.3d —, 2007 WL 2781902 (9th Cir. Sept. 26, 2007), involves the use of the terms “freecycle” and “The Freecycle Network” (“TFN”). According to its website, http://www.freecycle.org, “The Freecycle Network™ is made up of 4,129 groups with 3,906,000 members across the globe. It’s a grassroots and entirely nonprofit movement of people who are giving (& getting) stuff for free in their own towns. It’s all about reuse and keeping good stuff out of landfills. Each local group is moderated by a local volunteer.”

Initially, TFN used the term “freecycle” to refer generally to the act of free recycling goods. TFN accomplished this primarily via the Internet. In 2004, Tim Oey, a TFN member, advised TFN to trademark the term “freecycle” and the name “The Freecycle Network” and actively protect the use of the terms. Oey drafted, and TFN implemented, a policy which allowed the use of the term “freecycle” only in connection with TFN or TFN’s services. TFN filed for trademark registration of the term, but an opposition was filed and the application is still pending.

A year later, Oey had a change of heart and came out in opposition of the registration of the mark. He believed that the term “freecycle” should be left to the public domain. He sent an email to TFN group moderators (TFN group moderators run the Internet sites for the local TFN groups) and posted statements on the Internet that TFN had no right to trademark “freecycle” because it is a generic term. He also asked others to write to the US Patent and Trademark Office voicing opposition to TFN’s trademark application. TFN responded by severing ties with Oey, but Oey continued to make statements challenging the TFN’s right to trademark the term and urging others to continue to use the term generically.

In April of 2006, TFN filed suit against Oey and sought an injunction, claiming that Oey’s statements constituted contributory trademark infringement and trademark disparagement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The district court granted a preliminary injunction at TFN’s request based only on TFN’s Lanham Act claims. Oey was enjoined from “making any comments that could be construed as to disparage upon TFN’s possible trademark and logo” and requiring that he “remove all postings from the Internet and any other public forums that he has previously made that disparage TFN’s possible trademark and logo.”

The Ninth Circuit reversed and vacated the injunction on two grounds. First, the court pointed out that because there was no indication that Oey used the term to promote any competing service or to gain any commercial benefit, Oey did not use the term in commerce. Use of the term in commerce is a threshold requirement in a trademark infringement claim. Second, even if there were some commercial aspect to his use of the term “freecycle,” the court found that “such use was not likely to cause confusion, mistake, or deceive anyone as to the connection of Oey’s services (or any other) with TFN.” Rather, the court found, Oey simply expressed his view that TFN did not have a valid claim to the term “freecycle,” and encouraged others to voice the same view.

Finally, the court addressed TFN’s contention that Oey’s remarks disparaged TFN’s trademarks. TFN set forth the elements of its claim for trademark disparagement as making false statements with malice about TFN’s operations and the validity of its trademarks. However, as the Ninth Circuit pointed out, the Lanham Act contains no claim for trademark disparagement, and the “elements” listed by TFN cannot be found anywhere in the text of § 1125(a). Rather, these are the elements of a claim for slander of title, which is not found in the Lanham Act. The court supported its position that the Lanham Act does not contain a trademark disparagement claim by pointing to “the absolute dearth of precedent analyzing such a claim under the Act.”

The court explained that even if TFN’s invented trademark disparagement cause of action did exist, and even if it had the elements TFN claimed, it would still fail. Oey’s statements were not false! TFN’s application for trademark registration is still pending. There had been no formal determination of TFN’s rights. Thus, the court reasoned, Oey’s contention that “TFN lacked trademark rights in the term therefore cannot be considered a false statement of fact.”

Because the court found that there was no likelihood of TFN succeeding on the merits of its trademark infringement claim, and because the Lanham Act simply does not contain a cause of action for trademark disparagement, the district court abused its discretion in enjoining Oey. The Ninth Circuit vacated the injunction. In doing so, they provided a useful little reminder that to prevail on a trademark infringement claim, there must actually be infringement. And disparage the trademark at will, so long as you don’t disparage the product or infringe the mark. The Lanham Act does not prevent you from speaking your mind.

New U.S. Patent and Trademark Office Rules

The United States Patent and Trademark Office (“PTO”) has revised the patent rules in an attempt to reduce the PTO’s workload, although the stated purpose is to “allow the Office to conduct a better and more thorough and reliable examination of patent applications.” The rule changes were initially proposed in January 2006 and the final rules were published in the Federal Register on August 21, 2007. The changes will take effect on November 1, 2007, although some rules will apply to patent applications filed before November 1, 2007 as well as those filed after November 1, 2007.

The key changes in the rules limit the number of continuing applications and requests for continued examination (RCEs) and also limit the number of claims that an application can contain. These new rules were controversial as soon as they were announced. In fact, one inventor has already filed a lawsuit against the PTO, alleging that the new rules are unconstitutional.

Continuing Applications

The new rules permit an inventor to file only two continuation or continuation-in-part (CIP) applications in one application family. An “application family” consists of the initial (parent) application and all of its continuations or CIP applications. A CIP may be the basis for two continuations or CIPs if it does not claim priority to the original parent application and its claims are not supported by the original disclosure.

If an inventor wishes to file a third continuation or C-I-P application, then he or she must file a petition explaining why the amendment, argument, or evidence could not have been presented in an earlier application. It is not clear what test the PTO will apply in deciding whether to grant a petition; however, it is expected that few petitions will be granted.

This rule will go into effect for applications filed after November 1, 2007. If a pending application has two continuations or CIPs already filed in its family, one more continuation or CIP application will be permitted after November 1, 2007.

The PTO’s rationale for this change (and the change in the RCE rules) is that the volume of continuing applications that contain patentably indistinct claims is “crippling” the PTO and drastically limiting the PTO’s ability to handle new applications. As evidence of this problem, the PTO notes that in 1980, 11.4% of the new applications were continuing applications, compared to 29.4% in 2006. The PTO also states that the practice of filing multiple continuing applications that often do not get resolved results in the public being left uncertain as to what is covered by a patent. Lastly, the PTO believes that continuing applications hinder innovation by slowing down the PTO’s ability to examine (and presumably allow) new applications.

Divisional Applications

Under the new rules, divisional applications may be filed as long as the parent was subject to a restriction requirement and the claims are to a non-elected invention and have not been examined.

A divisional application starts its own family. Thus, an inventor may file two continuation or CIP applications and one RCE based on the divisional application as the parent. Additional continuing applications or RCEs may be filed if a petition explaining the need is granted.

RCEs

The new rules limit the number of RCEs to one per family. Again, the “family” is the parent and all continuation or CIP applications. Thus, only one RCE can be filed in all of these applications. If the inventor wants to file a second RCE, he or she must file a petition justifying the RCE, as is required by the new rules on continuing applications.

The new rules prevent any further RCE being filed after November 1, 2007 if one RCE has already been filed in the application family. Thus, most experts recommend that if an RCE is desired in an application pending under a final office action as of November 1, 2007 that has one RCE already filed in the application family, then the inventor should file the response with the RCE by November 1, 2007. This results in the inventor being permitted two RCEs; if the response is not filed by November 1, 2007, then no further RCE can be filed.

Multiple Related Applications

The new rules limit the number of related applications that have patentably indistinct claims and a common assignee.

The rules require an inventor to list all other pending applications or patents that have a common inventor, a common owner, or a filing date or priority date within two months of the filing date or priority date of the new application. The PTO will presume that multiple applications include patentably indistinct claims if they have a common inventor, a common owner, the same filing date or priority date, and substantially overlapping disclosures.

The inventor can rebut the presumption be explaining why the claims are patentably distinct or by filing terminal disclaimers and explaining why two applications containing patentably indistinct claims should be permitted. Without a satisfactory explanation, the PTO will treat such multiple applications with patentably indistinct claims as one application and limit the claims to five independent claims and 20 dependent claims, for a total of 25 claims. The purpose of this rule is to prevent applicants from avoiding the new rule limiting the number of claims.

Number of Claims

The new rules limit the number of claims that can be filed in any application to five independent claims and 20 dependent claims, for a total of 25 claims. If a greater number of claims is filed, the applicant must file an Examination Support Document (ESD).

The ESD must address all of the claims and must be filed before a first office action. The ESD has to include a search, a list of references, and an explanation of the patentability of the claims over the references. The intent of the ESD is to “help focus examination” by aiding the examiner in understanding the invention and in obtaining the prior art before performing a search.

The ESD is so onerous that patent experts believe it should be avoided if at all possible, as it will likely have estoppel effects in the prosecution of the application and in future litigation.

Although this rule is not effective until November 1, 2007, it is retroactive in that it applies to all pending applications that have not received a first office action as of November 1, 2007.

The Pending Lawsuit

One day after the PTO published its final rules, an independent inventor filed a lawsuit against the PTO and its director in the federal court in the Eastern District of Virginia, challenging the new rules. The suit was filed by Dr. Triantafyllos Tafas, who holds eight patents and has 17 pending applications. He is represented by a law firm in Washington, D.C.

The complaint seeks a declaratory judgment and an injunction prohibiting the PTO from enforcing the new rules. The grounds are that the PTO exceeded its rulemaking authority granted it by Congress, that the new rules violate the Patent Act, that the PTO violated the Administrative Procedures Act, that the rules are impermissively retroactive, and that the rules are unconstitutional in that they violate the Fifth Amendment’s takings clause.

Tafas’ attorneys have stated that the new rules will force inventors to file multiple patent applications to cover what would formerly have been filed as one application describing multiple versions of the invention. They believe that this will limit the ability of independent inventors and small companies to obtain patent protection as it will be cost-prohibitive for them to file multiple applications, while large corporations who have the money will be able to do so. They argue that the overall effect will be a negative one on innovation.

While many practitioners and inventors alike agree that the patent process has become too cumbersome, the new rules are receiving far more criticism than praise. Most opinions are that the PTO has gone too far. It will be interesting to see what the court in Virginia does. There may well be other cases on file, and some will likely end up on appeal. In the meantime, patent applicants will have to struggle with the new rules or find the loopholes.

Ninth Circuit Holds Modified Terms of Use Unenforceable

It’s not uncommon for companies to change or modify the terms under which they provide services to consumers. This is true whether the company is a traditional brick and mortar company or Internet based. When traditional companies make a change to service terms they usually send some type of written notice to the consumer. But for some reason this never caught on for Internet based companies. Often the Internet based Company would merely make changes to its terms of use (the contract which governs the consumers’ use of the relevant website and its services) and post the revised terms of use on its website. In most instances, unless the user reviewed the terms of use frequently and compared the current version to the version that was posted at the time the consumer became a user of the site, the user would be unaware of any changes.

Recently the Ninth Circuit addressed the enforceability of a modified terms of use when the company fails to provide notice to the consumer. In Douglas v. U.S, District Court, the plaintiff was a subscriber to AOL’s long distance telephone service. That service was subsequently taken over by Talk America. When Talk America took over AOL’s phone service it added for new provisions to the service’s terms of use: additional services charges; a waiver of the right to bring class actions; an arbitration clause; and a New York choice of law provision. Like so many Internet based service providers, Talk America did not affirmatively notify its users of the changes, but merely posted the revised provisions on line.

The Ninth Circuit held that merely posting the revised terms of use online is insufficient to bind previous users. While the plaintiff claimed that he had no reason to visit the Talk America website since AOL (and then Talk America) automatically charged his credit card for the services, the Ninth Circuit stated that even if he had visited the website he would no reason to look at the terms of use to determine if there had been any changes. “Parties to a contract have no obligation to check the terms on a periodic basis to learn whether they have been changed by the other side.” Further, the Ninth Circuit noted that the plaintiff would not know when to check the website for possible changes to the contract terms without being notified that the contract has been changes and how.

The drafters of some terms of use have foreseen enforceability issues and included a provision which provides that continued use of the service constitutes the user’s acceptance of the revised terms. The Ninth Circuit qualified the scope of such language by providing that even if continued use could be considered assent, such assent can only be inferred after the user receives proper notice of the proposed changes. In this case, the Ninth Circuit concluded, proper notice had not been given.

Other then providing notice by mail, the Ninth Circuit did not give any additional insight into what forms of notice are acceptable. Would notice by email, SMS, MMS, text message, or postings on the Service be sufficient? It’s not clear, and the sufficiency would probably be based on numerous factors.

This ruling also brings up business issues that need to be considered when crafting the terms of use, such as what should a company do if a user objects or refuses to accept the revised terms of use? Unless the terms of use includes a termination provision granting the company the right to terminate at any time, or grants the company the right to terminate if the user refuses to accept the revised terms of use, the company may be obligated to continue to provide services under the original terms.

“Making Available” is Copyright Infringement in File Sharing Case

Last week, a judge for the United States District Court in Arizona has granted a summary judgment in favor of recording companies. The judgment finds the defendant, Jeffrey Howell, liable for copyright infringement for illegally sharing music files. Even though there was no evidence that the defendant actually distributed the music files, the judge found the defendant violated copyright laws by making the files available for distribution. This case is significant because it is the first case that specifically states that “making available” equates to distribution under copyright laws.

This case was brought by several large recording companies against Jeffrey Howell. The recording companies, in an attempt to thwart unauthorized online distributions, hired a company to investigate and detect such activities. The company notified the recording companies that Howell had made available 54 specific sound recordings of musical artists which the record companies owned a valid copyright. Howell had made these files available through a file sharing program named Kazaa in which third parties could access and download Howell’s files. The recording companies filed an action for copyright infringement against Howell and moved for summary judgment on that claim, arguing that there is no disputed material fact that Howell violated their exclusive distribution right for the 54 identified sound recordings. Howell, representing himself, denied these claims and argued that their file-sharing program was “not set up to share” and that the files were for private use and “for transfer to portable devices that is legal for ‘fair use.'”

Title 17, Section 106(3) grants copyright owners the exclusive right to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending. In order to succeed in a copyright infringement claim the plaintiff must satisfy two requirements to win a prima facie case of direct infringement. First, they must show ownership of the allegedly infringed material. Second, they must demonstrate that the alleged infringers violate at least one exclusive right granted to copyright holders under Section 106. The question in this case is whether Howell infringed the recording companies’ copyrights by making available files to be shared by third parties.

The district court held that the owner of a collection of works who makes them available to the public may be deemed to have distributed copies of the works in violation of copyright law. The court noted that in a case involving the online file-sharing program Napster defendants were found to have violated copyright owners’ distribution rights by employing “the Napster software to make their collections available to all other Napster users.” The court also cited several cases that suggest that Kazaa users commit direct infringement by employing the Kazaa program to make their collections of copyrighted sound recordings available to all other Kazaa users.

In one such case,a set of screenshots showing the contents of a defendant’s Kazaa shared folder was found to present a cognizable claim for copyright infringement under 17 U.S.C. § 106(3). In another case cited by the court, a Texas court equated the placement of items in a Kazaa shared folder with “publication” as defined by 17 U.S.C.§ 101 because it is a distribution, or an offer of distribution “in which further distribution, public performance or display is contemplated.” Based on these cases, the court in this case held that it is no defense that a Kazaa user did not directly oversee the unauthorized distribution of copyrighted material.

Howell, on the other hand, argued that the recording companies brought forth no evidence that he participated in the distribution. Howell claimed that when the distribution occurred he was at work. Howell argued that screen shots showing the music files in the shared Kazaa folders were not enough to show copyright infringement. Finally, Howell argued that he owned every music file that he transferred to Kazaa and was using the Kazaa program for personal use.

The court disagreed with Howell’s arguments. The fact that Howell owned the music did not deny the possibility of unauthorized distributions. More importantly, the court held that the mere presence of copyrighted works in a shared folder is enough to trigger liability for copyright infringement.

The court ordered damages in the amount of $40,500 and issued an injunction against Howell to cease the distributions. This ruling is significant because the defendant was found liable for simply “making available” music files for download. The plaintiff in this case brought forth no evidence that files were actually distributed, rather the evidence showed they were only made available for distribution. Because the court found that making available for distribution equates to actual distribution, recording companies will have a much easier time succeeding in future suits against file sharers.