e-Commerce Docket Sheet

On a motion for summary judgment alleging that the term “Half Price Books” is generic, an online bookseller accused of infringing registered trademarks incorporating the term failed to overcome the presumption of validity afforded by the plaintiff's certificates of registration for the trademarks. Half-Price Books, Records, Magazines, Inc. v. Barnesandnoble.com, 2004 U.S. Dist. LEXIS 23691 (N.D. Tex. Nov. 22, 2004). The district court concluded that the presumption of validity arising from the registration of the terms “Half Price Books” and “Half Price Books, Records, Magazines,” coupled with the plaintiff's evidence concerning descriptiveness, secondary meaning and consumer confusion, raised issues of material fact that should be decided by a jury.

Claims in a patent for distribution of coupons from an electronic terminal at the point of sale do not extend to the distribution of coupons from an Internet site. Catalina Marketing International, Inc. v. Coolsavings.com, Inc., 2004 U.S. App. LEXIS 24129 (Fed. Cir. Nov. 19, 2004) (issued as unpublished and nonprecedential). The circuit court upheld the lower court's claims-construction order that limited the claims in the patent in various respects that precluded its application to distribution of coupons via an Internet site. Among other things, the claims were limited to devices using a magnetic card reader and a touch screen.

Rhode Island, the plaintiff in liability litigation against the manufacturers of lead paint, is entitled to depose certain defendants on maintenance of a publicly accessible Web site containing information on class-action litigation against the lead-paint industry. State v. Lead Industries Association, Inc., 2004 R.I. Super. LEXIS 191 (Nov. 9, 2004). The court rejected the argument that because the Web site was a means of explaining the defendants' view that the liability litigation was unwarranted and was recommended by counsel, the deposition notice and subpoena should be quashed because it chilled the defendants' exercise of their First Amendment rights. The court noted that the content of the Web site was “easily accessible to anyone with access to the World Wide Web,” and that the defendants would have the benefit of any proper objections based on claims of privilege, work product or constitutional protection during the course of depositions and document production pursuant to the deposition notice and subpoena.

Because the relevant provisions in a merger agreement applicable to the continuation of a credit-card affinity agreement were ambiguous and susceptible to conflicting interpretations, extrinsic evidence was admissible to interpret the provisions of the merger agreement. Block Financial Corp. v. America Online, Inc., Nos. WD 62286, WD 62317 (Mo. Ct. App. Nov. 9, 2004). The court upheld a $21 million jury award for breach of the affinity agreement, which included the right to use name and trademarks of an online services company in marketing to its customers. The court concluded the provisions in the merger agreement that bore on the issue of the continuation of the affinity agreement were “fairly susceptible of different interpretations,” and so the introduction of extrinsic evidence and submission of the issue to a jury were appropriate.

An advertiser that engages a marketing agent who then sends e-mail to a single Utah resident in violation of the Utah anti-spam statute may be haled into court in Utah in an action under the statute. Fenn v. Mleads Enterprises, Inc., 2004 Utah App. LEXIS 452 (Nov. 12, 2004). The court ruled that the requirement of purposeful availment of the state of Utah was met by the advertiser's direction to its marketing agent to solicit business. The court concluded that the advertiser “should have anticipated being haled into court wherever its emails were received.” Regarding the state's interest in asserting jurisdiction over the advertiser, and the issue of due-process “fairness,” the court made several findings supporting the exercise of jurisdiction, including that the statute permits an award of attorney fees, and that Utah benefits from its attorneys earning such fees.

Publisher Marvel Enterprises filed suit against the developer and distributor of the massively multiplayer online video game “City of Heroes” that enables users to create characters that are “nearly identical in name, appearance and characteristics to characters belonging to Marvel.” Marvel Enterprises, Inc. v. Ncsoft Corp., (C. D.Cal. complaint filed Nov. 10, 2004). The complaint alleges that the defendants are liable for direct, contributory and vicarious infringement of Marvel's copyright and trademark rights in the characters, as well as unfair business practices. Marvel claims, among other things, that the similarities between the video game avatars and the Marvel characters alleged to be infringed are designed to confuse consumers into believing that Marvel endorsed or participated in the creation and distribution of the video game. The complaint is available at www.brownraysman.com/InternetLawUpdate/MarvelComplaint.pdf.

Avenue Media sued competitor DirectRevenue, alleging that DirectRevenue violated the federal Computer Fraud and Abuse Act by programming its competing adware to uninstall Avenue Media's “Internet Optimizer” program from users' computers. Avenue Media, N.V. v. DirectRevenue, LLC, No. CV 4-2371 (W.D. Wash. complaint filed Nov. 24, 2004). The complaint alleges that Avenue Media receives a fee when its program provides targeted contextual advertisements to users, and that the number of “hits” resulting from its program dropped by 50% as a result of the deletion of Internet Optimizer by DirectRevenue's competing adware program. The complaint also alleges tortious interference with economic relations, and seeks injunctive and declaratory relief, and compensatory damages.