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Rock legend gets to continue lawsuit against HP for selling penis-measuring app named after him – Evans v. Hewlett-Packard Co., 2013 WL 4426359 (N.D. Cal. Aug. 15, 2013)

English: Photo of Chubby Checker when he was i...

(Photo credit: Wikipedia)

Want to test the urban myth that a man’s shoe size is a good measure of his you-know-what?  Well, there’s an app for that.  Or there was.  And the app store that sold it is being sued by the app’s namesake, who isn’t thrilled that his name was associated with a digital ruler for male nethers.

“The Chubby Checker” was an app for estimating the size of a man’s genitals based on his shoe size.  Hewlett-Packard’s subsidiary, Palm, Inc., offered the app for sale on its app store.  The name of the app is a pun based on “Chubby Checker,” the stage name of rock-and-roll legend Ernest Evans.  Evans and the companies who owned registered marks associated with the name “Chubby Checker” sued HP and Palm for trademark infringement and dilution, federal unfair competition, and various state law claims.

The defendants tried unsuccessfully to dismiss the trademark infringement claim.  The complaint sufficiently alleged a claim of contributory infringement against the defendants, the court found.  Plaintiffs alleged that the “Chubby Checker” name and mark was internationally famous.  The defendants also allegedly maintained “primary control” over the use of the mark by setting up a detailed application and approval process for the app.  Thus, the court ruled that it was plausible to infer that the defendants knew or could have reasonably concluded that the plaintiffs would not have consented to license the “Chubby Checker” mark for use with the app.

The defendants fared better in their attempt to dismiss the state law claims.  The defendants invoked Section 230 of the Communications Decency Act, which immunizes internet service providers from tort liability based on content published by third parties.  The plaintiffs did not allege that the defendants created the app.  Instead, third parties created the app.  Since the defendants were internet service providers rather than content providers, Section 230 required dismissal of the state law claims.

LegalTXTS Lesson: This ruling could be a major setback for app store operators.  Essentially, it means an app store could be sued for contributory trademark infringement whenever one of the apps it sells is the subject of trademark litigation.  That might make some sense if the app store set up an approval process that includes review of the intellectual property rights used by apps (e.g., see how the app Pic Bubbler fared in the review process for the Apple App Store), but not if such review is missing from the app approval process (Google Play, for example, employs a minimal review process).  And you can bet the app store operator is a prime target for litigation if it’s a deep pocket.  Like in this case, who would you rather sue—HP, or the creator of The Chubby Checker, which apparently sold a mere 88 copies at 99 cents each?

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Amazon not vicariously liable for copyright infringement by hosting e-commerce platform for sale of allegedly infringing photo, but could be liable for contributory infringement –  Masck v. Sports Illustrated, 2013 WL 2626853 (E.D. Mich. June 11, 2013)

By MECU (Own work) [CC-BY-SA-2.5], via Wikimedia Commons

By MECU (Own work) [CC-BY-SA-2.5], via Wikimedia Commons

Amazon.com scored a partial victory in defending against a copyright infringement lawsuit.  The plaintiff in the lawsuit was photographer Brian Masck, who claims to have taken the sharpest photo of former University of Michigan football player Heisman Desmond Howard striking the iconic “Heisman pose” in a game where his team defeated archrival Ohio State University.  Masck claimed that unauthorized reproductions of his photo were offered for sale on Amazon.com.  Masck requested Amazon to stop selling copies of the photo on its website, but Amazon allegedly did not comply.  Masck sued Amazon and other sellers of the photo for copyright infringement.

Amazon filed a motion to dismiss the lawsuit, arguing that Masck could not bring a vicarious copyright infringement claim.  One requirement for vicarious liability for copyright infringement is the defendant’s right and ability to supervise the infringing conduct.  The court agreed with Amazon’s argument that it had no practical ability to determine which products being sold on its e-commerce platform were infringing.  Masck did not make specific factual allegations demonstrating that Amazon could plausibly verify the copyright status of each and every piece of merchandise it lists from third-party sellers.

Amazon did not fare so well in trying to dismiss Masck’s contributory infringement claim.  Selling infringing merchandise is considered a material contribution to infringement.  Amazon continued selling the alleged infringing photos even after Plaintiff requested their removal from Amazon’s website.  Plaintiff’s request should have alerted Amazon to potential infringement.  Based on that record, the court declined to dismiss the contributory infringement claim against Amazon.

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Spike in YouTube Views and Google Search Errors Insufficient to Prove “Actual Confusion” in Trademark Infringement Claim – Scorpiniti v. Fox Television Studios, Inc., 2013 WL 252453 (N.D. Iowa Jan. 23, 2013)

Scorpiniti v. Fox Television Studios, Inc. is the latest case involving use of Internet popularity to prove infringement of a trademark or trade dress.  In this case filed in Iowa’s federal district court, the plaintiff unsuccessfully argued that a sudden rise in the number of hits on a YouTube page bearing the mark in question is evidence of “actual confusion.”

The plaintiff, Louis J. Scorpiniti (Scorpiniti) registered the mark “THE GATE” with the U.S. Patent and Trademark Office for use in relation to “television broadcasing.”  In 2007, Scorpiniti was developing his own religious-themed music television show, The Gate.  Scorpiniti created a website for the show and completed a pilot (which he posted on YouTube) and the first episode (which he posted on his Facebook page).  He never broadcasted his show on TV.

Fox Television Studios, Inc. (Fox) filed an application with the USPTO to register the mark “THE GATES” for use in relation to a new TV series, “The Gates”, about a police officer who moves into gated community inhabited by supernatural beings.  Scorpiniti initially filed a Petition for Opposition to Fox’s mark, but later withdrew the petition and chose instead to sue Fox for trademark infringement.  The Gates aired on ABC stations from June to September of 2010.

To prove infringement, Scorpiniti had to show that Fox’s use of THE GATES “creates a likelihood of confusion” between the two TV programs.  One of the factors relevant to determining if there is “likelihood of confusion” is evidence of actual confusion.

The pilot episode of The Gate that Scorpiniti posted on YouTube experienced a spike in the number of views during the summer of 2010 when ABC was advertising The Gates.  Scorpiniti argued that this was evidence of actual confusion.  The court disagreed.  Also unpersuasive to the court was the fact that a Google search of the term “abc the gate” yielded results in which Fox’s TV show was misspelled as “The Gate.”  Spelling errors in an internet search or the fact that someone stumbles upon Scorpiniti’s YouTube video due to a search illustrates inattentiveness or carelessness on the part of the searcher, not actual confusion, the court said.  Any viewer who mistakenly viewed the pilot episode of The Gate while searching for The Gates would be able to tell that the two shows come from different sources based on differences in their appearance, content and production value.

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One of the requirements for proving a claim for trade dress dilution is that the claimant’s trade dress must be “famous.”  15 U.S.C. § 1125(c)(4).  Surveys to establish famousness are notoriously expensive.  Can social media provide a cheap alternative  to a survey?  Not exactly, but one court made a step in that direction.  Paramount Farms Int’l LLC v. Keenan Farms, 2012 WL 5974169 (C.D. Cal. Nov. 28, 2012), is the first case I know of that recognizes brand recognition among social media users as an indication of famousness.

In analyzing whether the plaintiff established the required elements of a trade dress dilution claim, the court in Paramount Farms noted that the plaintiff had a Facebook page with almost 300,000 “likes.”  The court did not regard the “likes” as conclusive evidence of actual recognition of the plaintiff’s associated trade dress, but did note that the brand’s Facebook popularity gave credence to other evidence that the trade dress has become famous.

Well, a Facebook “like” might not be protected under the First Amendment, but at least it’s good for something.

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Google has lost a domain name arbitration against the owner of Oogle.com.  According to a report by the Domain Name Wire, Google charged the registrant of Oogle.com with cybersquatting.  Google was not happy that the domain name, which someone intending to visit its popular search engine could easily type in by mistake, points to porn sites.  It didn’t help either that Oogle.com was being offered for sale on a common domain name auction site for $300,000.  In his defense, the registrant argued that he registered the name before the Google mark was registered and gained popularity, although there is a dispute about whether a Whois search corroborates that.  The registrant also swore in a declaration that he registered the domain name because he was acquainted with a programmer who used the handle “Oogle” or “Criminal Oogle.”

The National Arbitration Forum panel expressed “extreme suspicions” about the registrant’s explanation, but ultimately found that Google failed to prove bad faith registration of the domain, which is required to obtain an order canceling or transferring a domain name.  So, the registrant can keep his name for now.  The panel did suggest that discovery in a legal proceeding could uncover evidence of bad faith.  Read the full decision here.

LegalTXT Lesson: Domain names can be valuable for branding purposes, so it’s important to brainstorm about  what typo-variations of your registered domain that you should also register.  At the same time, there are endless ways a domain name can be mis-typed, so one can only do so much (plus, being overzealous in registering domain names could in turn expose you to cybersquatting claims).  Still, considerable thought should be given to registering obvious typos, especially those with a salacious ring to it — like oogle, which does not require much imagination to associate with “adult” content.