Category Archives: Trademark

Can the Estate of a Person Who is Deceased Enforce that Person’s Right of Publicity? Originally Published May 22, 2014

Marilyn Monroe passed away in 1962.  Her estate has zealously enforced her trademark and other intellectual property rights against those who would infringe upon it.  However, there are other common law rights that might apply, such as the right of publicity, which would likewise bar someone from using her name and likeness.  The question that was before the Ninth Circuit Federal Court of Appeals in August of 2012 was whether that right of publicity could be applied in Marilyn Monroe’s case.  Archives v. Monroe, 692 F.3d 983 (9th Cir. 2012).

The twist in that case was that the Court had to determine whether Monroe was a resident of New York or California at the time that she passed away. If she had been a resident of New York, she would have no right of publicity since that state does not provide for such a right after death.  If she were a resident of California at the time she passed away, she would have such a right since California amended its law to provide for Monroe’s estate in particular to be able to avail itself of that protection.

The case was decided based upon the legal concept of “judicial estoppel.” Simply put, that principle states that a party cannot take countervailing positions under certain distinct circumstances, such as those presented in this case. Specifically, the Court determined that Monroe did not have such a right since she was a resident of New York at the time that she was deceased. Although she had moved to California and committed suicide there, the estate had taken the position in previous cases that she was a resident of New York.  Therefore under a theory of judicial estoppel, the Court found the estate was not allowed to make a contrary assertion in this later suit just because it was more advantageous.

© 2014 Nissenbaum Law Group, LLC

Does Google’s Keyword Advertising Constitute Trademark Infringement?

Proving that a mark was used in commerce has long been a requirement for plaintiffs claiming trademark infringement. After all, there is no need to protect a mark that is not being used.

But the case law concerning the definition of “use” was decided before the advent of the Internet. Accordingly, there are a host of new issues that Courts are wrestling with in the modern era. One of them is whether employing a word or phrase in what is called, “keyword advertising” is a “use in commerce” that may violate trademark protection.

Keyword advertising concerns the way people find relevant content on the Internet. When a person performs an Internet search, two types of search results arrive on the page. First, the search engine provides a list of links to websites that it determines to be relevant to the term that is searched. Second (and more important in this case), the search engine provides context-based advertising that includes links to products correlated to the user’s search. Advertisers are permitted to bid on keywords that users might enter into searches. When a user enters a keyword that has been purchased by an advertiser, the website of that advertiser will appear as a sponsored link on the search result page.

In a 2009, the United States Court of Appeals for the Second Circuit addressed this issue in Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009). The plaintiff in Rescuecom, a computer-related services company, had registered the term “Rescuecom” for trademark protection. As part of its advertising strategy, it purchased keywords from Google to promote its services. However, when it attempted to purchase the keyword “Rescuecom” from Google, it realized that Google had already sold the keyword to one of the plaintiff’s competitors. As a result, when Google users entered “Rescuecom” into a search, the competitor’s links would show up alongside the search results, in addition to the link to the plaintiff’s site.

Rescuecom alleged that Google’s sale of its trademark as a keyword constituted trademark infringement. The United States District Court for the Northern District of New York decided in Google’s favor and held that Rescuecom failed to allege any facts indicating that Google’s actions constituted a “use” of the trademark. Rescuecom appealed.

In order to prevail on a claim for trademark infringement, a plaintiff must establish that he or she:

1) has a valid, registered trademark that is entitled to protection;

2) that the defendant used the mark;

3) that the use was in commerce;

4) that the use was in connection with the sale or advertising of goods or services; and

5) that the use was without the plaintiff’s consent.

1-800 Contacts, Inc. v., Inc., 414 F.3d 400, 406 (2d. Cir. 2005) (citing 15 U.S.C. § 1114(1)(a)).

The Rescuecom Court reversed the lower court’s decision and held that Google’s actions did constitute “use” of the plaintiff’s trademark. The Court found that “what Google is recommending and selling to its advertisers is Rescuecom’s trademark.” Rescuecom at 129. It stated that Google “displays, offers, and sells Rescuecom’s mark to Google’s advertising customers when selling its advertising services.” Id. Additionally, it “encourages the purchase of Rescuecom’s mark through its Keyword Suggestion Tool.” Id.

Google had argued that the inclusion of a trademark in an internal computer directory could not be considered trademark use. However, the Rescuecom Court held that if that were the case, “the operators of search engines would be free to use trademarks in ways designed to deceive and cause consumer confusion.” Id. at 130. The case was remanded for further proceedings.

Rescuecom is generally in line with the decisions made by the courts of other jurisdictions when hearing similar cases. In 2010, the Tenth Circuit held that a “use in commerce” existed where the plaintiff’s mark was used to promote a defendant’s services and consumers were provided with a link to a website where it could purchase products from the defendant. 1-800 Contacts, Inc. v., Inc., 755 F.Supp. 2d 1151 (D. Utah 2010). Other circuits have relied upon and agreed with the Rescuecom decision. See Fair Isaac Corp. v. Experian Information Solutions, Inc., 645 F. Supp. 2d 734, 760 (D. Minn. 2009); Network Automation, Inc. v. Advanced Systems Concepts, 638 F.3d 1137, 1145 (9th Cir. 2011).


© 2012 Nissenbaum Law Group, LLC

Where Can a Website be Sued?

Facebook might be able to “friend” anyone it wants in California, but when it comes to suing people, it will have to be a bit more selective. 

In a recent suit, Facebook filed a complaint in the U.S. District Court for the Northern District of California against, LLC (“Teachbook”). Facebook, Inc. v., LLC, 2011 U.S. Dist. LEXIS 48590 (N.D. Cal. May 2, 2011). Facebook demanded that Teachbook, an Illinois-based website that provides a social and professional networking community for teachers, remove the “-book” suffix from its name. Facebook took this action on the basis that it was a trademark violation.  Teachbook moved to dismiss the complaint, arguing, in part, that the Northern District of California did not have personal jurisdiction over it.

Personal jurisdiction refers to the power of a court to rule on the personal legal rights of parties properly brought before it in a forum state. One way for a person or company to open themselves to personal jurisdiction is by establishing “minimum contacts” in the forum state, which generally requires a party taking some purposely direct action toward that state. Facebook argued that Teachbook established sufficient “minimum contacts” in California through its adoption and use of the “Teachbook” mark and the subsequent effects the use would have on Facebook within California.

In order to determine whether Teachbook’s conduct was “purposely directed” at California, the Court applied a three-part “effects” test. The “effects” test requires that the defendant allegedly have:

1) committed an intentional act 

2) expressly aimed at the forum state 

3) causing harm that the defendant knows is likely to be suffered in the forum state.

Id. at 5, 6.

Facebook argued that Teachbook’s actions met the three requirements of the “effects” test by claiming Teachbook intentionally used a confusingly similar trademark; that it intended to compete with Facebook; and that it knew its use of the “Teachbook” mark would injure Facebook in its home state of California.

However, the Court disagreed with Facebook’s argument because it found that Facebook failed to show Teachbook’s conduct was “expressly aimed” at California. Id. at 6. “None of Teachbook’s acts were purposely directed at California; to the contrary, Teachbook took purposeful steps to avoid the California market,” the Court stated. Id. at 10. The Court placed particular significance on the fact that Teachbook did not register users in California. Therefore, even if it did intend to compete with a California company such as Facebook, it intended to compete for users who were not in California. Id. at 7. Additionally, the Court noted that a mere foreseeable effect is not sufficient for establishing personal jurisdiction as “[t]he fact that an essentially passive Internet advertisement may be accessible in the plaintiff’s home state without ‘something’ more is not enough to support personal jurisdiction in a trademark infringement suit.” Id.

The Court’s dismissal does not preclude Facebook from filing the claim in another venue. However, the decision is significant in that it sheds some light on when a website’s actions are sufficient to develop “minimum contacts” in a forum state and, consequently, when such a court could exercise personal jurisdiction over such a company.


© 2011 Nissenbaum Law Group, LLC

One Cannot Use Someone Else’s Trademark under the “Historical Use” Exception Unless it is True Historical Use.

On September 2, 2010, the United States Court of Appeals, Fourth Circuit, decided a case that discussed the Historical Use Exception to the Trademark laws. That exception allows a trademark to be used by someone other than the legal owner of it if it is included in an historical work. It is essecually an exception that provides for Fair Use of the trademark.

Specifically, the Court in Bouchat v. Baltimore Ravens Limited Partnership, et al. –F.3d–, 2010 WL 3440867 (C.A.4 (Md.)) held that the Ravens and the NFL did not establish fair use of the Flying B logo in the highlight films sold by the NFL and the highlight film played during the Ravens’ home football games.  The Court analyzed the four statutory factors of fair use as listed in 17 U.S.C.§ 107, which are:  (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.  Although the Court considered all four factors, it primarily analyzed the first factor, purpose and character of the use, and defendants’ alleged defense of historical use of the logo.  The Court stated:    
There is no transformative purpose behind the depiction of the Flying B logo in the highlight films.  The use of the logo in the films serves the same purpose that it did when defendants first infringed Bouchat’s copyrighted Shield logo design: the Flying B logo identifies the football player wearing it with the Baltimore Ravens.  The simple act of filming the game in which the copyrighted work was displayed did not add something new to the logo.  It did not alter the logo with new expression, meaning or message.  The films capture the logo as it originally appeared, and the logo remains a symbol identifying the Ravens.  While the films no doubt add to the historical record of Ravens play, the use of the logo in those films simply fulfilled its purpose of identifying the team.  The logo continues to fulfill that purpose whenever a highlight film is shown.    

Id. at 4.

Simply filming football games that include the copyrighted logo does not transform the purpose behind the logo’s use into a historical one.  Defendants point to the dramatic editing, music, and narration in the highlight films in an attempt to show a transformative use for the logo.  But none of these effects transform the purpose behind the display of the logo.  The narrator in the films never comments on the controversy surrounding the use of the Flying B logo. Nor are the films a documentary on the history of the Ravens logo.  Instead, the films simply capture highlights of three Ravens seasons and necessarily portray the Flying B logo as it was actually used to identify the Ravens team.


The Court held that the “Ravens and the NFL originally violated Bouchat’s copyright by using his logo as the Ravens logo. Highlight films that come along later and depict that same use, without transformation, cannot stand as a fair use.”  Id. at 8.


© 2009 Nissenbaum Law Group, LLC