e-Commerce Docket Sheet

A company's purchase of a competitor's trademark term as a search-engine keyword is a use in commerce, but is not actionable under the Lanham Act where no likelihood of confusion could have occurred. J.G. Wentworth, S.S.C. LP v. Settlement Funding LLC, 2007 U.S. Dist. LEXIS 288 (E.D. Pa. Jan. 4, 2007). In dismissing the trademark owner's infringement claims, the court rejected the plaintiff's argument that the defendant's keyword purchases resulted in Internet initial-interest confusion, finding that the use of the keywords yielded separate and distinct links on a search-engine results page, giving potential customers no opportunity to confuse the defendant's advertisements with those of the plaintiff. The court also found that the plaintiff had failed to show that the defendant's advertisements and links incorporated plaintiff's marks 'in any way discernable to Internet users and potential customers.'

Telephone calls to private residences that contain non-commercial, prerecorded messages must comply with the Telephone Consumer Protection Act ('TCPA') technical requirements concerning identification of the entity responsible for initiating the call and inclusion of appropriate contact information. State of Oklahoma ex rel. Edmondson v. Pope, 2007 U.S. Dist. LEXIS 2506 (W.D. Okla. Jan. 9, 2007). In granting the plaintiff summary judgment, the district court rejected the defendant's argument that because calls made for non-commercial purposes are exempt from the TCPA consent requirement, they are also exempt from all TCPA technical requirements. The court ruled that the technical requirements pertain to all 'artificial or prerecorded telephone messages,' even to the plaintiff's.

A defendant's purchase of domain names sounding similar to the plaintiff's competing business and to the personal names of the plaintiff's principals likely violated the Anti-cybersquatting Consumer Protection Act (ACPA). HER, Inc. v. RE/MAX First Choice, LLC, 2007 U.S. Dist. LEXIS 485 (S.D. Ohio, Jan. 5, 2007). In granting a preliminary injunction barring the defendant from using certain domain names, the court found that the defendant likely engaged in cybersquatting by registering domain names of the plaintiff's principals, names that were worthy of trademark protection due to their association with the plaintiff's long-standing business. However, the court found that the defendant did not commit infringement by registering domain names that took the form of the principals' first names, telephone numbers or street addresses, despite the fact that, according to the court, such registrations appeared to have no legitimate purpose.

The exception to the copyright 'first sale doctrine' contained in the Record Rental Amendment of 1984 is not applicable to sound recordings of literary works such as audiobooks. Brilliance Audio, Inc. v. Haights Cross Communications, Inc., 2007 U.S. App. LEXIS 1706 (6th Cir. Jan. 26, 2007). The appeals court upheld the district court dismissal of the copyright owner's claims that the defendant infringed its copyright by renting its copyrighted audiobooks to third parties. The court ruled that the language in the record-rental exception to the first sale doctrine, 17 U.S.C. '109(a), was limited to sound recordings of musical works and was not intended to encompass all sound recordings. The court concluded that the legislative history of the record-rental exception provision as well as the fact that Congress later carved out another express exception to the first-sale doctrine for computer software, supported the conclusion that Congress did not intend to exclude audiobooks from the first sale doctrine. The appeals court reversed the dismissal of the copyright owner's trademark claims, however, finding that there were material issues of fact concerning the applicability of the trademark first-sale doctrine to the defendant's repackaging and relabeling of the copyright owner's audiobook products.

A liability-insurance policy that covers the 'advertising injury' offense of 'making known ' material that violates an individual's right of privacy' does not provide coverage for violations of the Telephone Consumer Protection Act ('TCPA') resulting from the sending of unsolicited faxed advertisements. ACS Systems, Inc. v. St. Paul Fire and Marine Insurance Co., 2007 Cal. App. LEXIS 113 (Cal. Ct. App. Jan 29, 2007). In affirming the lower court's decision, the court found that the policy did not cover injuries caused by receipt of an unauthorized advertising fax because, in such a case, no 'making known' of private facts to a third party has occurred.

The Audio Home Recording Act does not immunize a satellite radio provider from copyright litigation, where the provider offered subscribers a device that could receive satellite radio broadcasts, and record and retain songs from such broadcasts. Atlantic Recording Corp. v. XM Satellite Radio, Inc., NO. 06 Civ. 3733 (S.D.N.Y., Jan. 19, 2007). The court denied the defendant's motion to dismiss based on the immunity provisions of the Act, 17 U.S.C. '1008, which bar such actions based on the manufacture, importation or distribution of a 'digital audio recording device' (DARD). In an issue of first impression, the court rejected the provider's assertion that the statute provides 'absolute immunity' from copyright infringement to distributors of DARDs. The court reasoned that while the statute protected the defendant from suits based on its actions as a distributor of such devices, it did not provide immunity for its actions as a satellite radio broadcaster or as a combination satellite radio/MP3 content-delivery provider. The court concluded that by broadcasting and storing copyrighted music on DARDs for later recording by subscribers, the defendant acted as a broadcaster and distributor, but only paid for a license to be a broadcaster.

Trademark Term As Keywords Is Use,
But Not Lanham Actionable

A company's purchase of a competitor's trademark term as a search-engine keyword is a use in commerce, but is not actionable under the Lanham Act where no likelihood of confusion could have occurred. J.G. Wentworth, S.S.C. LP v. Settlement Funding LLC, 2007 U.S. Dist. LEXIS 288 (E.D. Pa. Jan. 4, 2007). In dismissing the trademark owner's infringement claims, the court rejected the plaintiff's argument that the defendant's keyword purchases resulted in Internet initial-interest confusion, finding that the use of the keywords yielded separate and distinct links on a search-engine results page, giving potential customers no opportunity to confuse the defendant's advertisements with those of the plaintiff. The court also found that the plaintiff had failed to show that the defendant's advertisements and links incorporated plaintiff's marks 'in any way discernable to Internet users and potential customers.'

Telephone calls to private residences that contain non-commercial, prerecorded messages must comply with the Telephone Consumer Protection Act ('TCPA') technical requirements concerning identification of the entity responsible for initiating the call and inclusion of appropriate contact information. State of Oklahoma ex rel. Edmondson v. Pope, 2007 U.S. Dist. LEXIS 2506 (W.D. Okla. Jan. 9, 2007). In granting the plaintiff summary judgment, the district court rejected the defendant's argument that because calls made for non-commercial purposes are exempt from the TCPA consent requirement, they are also exempt from all TCPA technical requirements. The court ruled that the technical requirements pertain to all 'artificial or prerecorded telephone messages,' even to the plaintiff's.

A defendant's purchase of domain names sounding similar to the plaintiff's competing business and to the personal names of the plaintiff's principals likely violated the Anti-cybersquatting Consumer Protection Act (ACPA). HER, Inc. v. RE/MAX First Choice, LLC, 2007 U.S. Dist. LEXIS 485 (S.D. Ohio, Jan. 5, 2007). In granting a preliminary injunction barring the defendant from using certain domain names, the court found that the defendant likely engaged in cybersquatting by registering domain names of the plaintiff's principals, names that were worthy of trademark protection due to their association with the plaintiff's long-standing business. However, the court found that the defendant did not commit infringement by registering domain names that took the form of the principals' first names, telephone numbers or street addresses, despite the fact that, according to the court, such registrations appeared to have no legitimate purpose.

The exception to the copyright 'first sale doctrine' contained in the Record Rental Amendment of 1984 is not applicable to sound recordings of literary works such as audiobooks. Brilliance Audio, Inc. v. Haights Cross Communications, Inc., 2007 U.S. App. LEXIS 1706 (6th Cir. Jan. 26, 2007). The appeals court upheld the district court dismissal of the copyright owner's claims that the defendant infringed its copyright by renting its copyrighted audiobooks to third parties. The court ruled that the language in the record-rental exception to the first sale doctrine, 17 U.S.C. '109(a), was limited to sound recordings of musical works and was not intended to encompass all sound recordings. The court concluded that the legislative history of the record-rental exception provision as well as the fact that Congress later carved out another express exception to the first-sale doctrine for computer software, supported the conclusion that Congress did not intend to exclude audiobooks from the first sale doctrine. The appeals court reversed the dismissal of the copyright owner's trademark claims, however, finding that there were material issues of fact concerning the applicability of the trademark first-sale doctrine to the defendant's repackaging and relabeling of the copyright owner's audiobook products.

A liability-insurance policy that covers the 'advertising injury' offense of 'making known ' material that violates an individual's right of privacy' does not provide coverage for violations of the Telephone Consumer Protection Act ('TCPA') resulting from the sending of unsolicited faxed advertisements. ACS Systems, Inc. v. St. Paul Fire and Marine Insurance Co., 2007 Cal. App. LEXIS 113 (Cal. Ct. App. Jan 29, 2007). In affirming the lower court's decision, the court found that the policy did not cover injuries caused by receipt of an unauthorized advertising fax because, in such a case, no 'making known' of private facts to a third party has occurred.

The Audio Home Recording Act does not immunize a satellite radio provider from copyright litigation, where the provider offered subscribers a device that could receive satellite radio broadcasts, and record and retain songs from such broadcasts. Atlantic Recording Corp. v. XM Satellite Radio, Inc., NO. 06 Civ. 3733 (S.D.N.Y., Jan. 19, 2007). The court denied the defendant's motion to dismiss based on the immunity provisions of the Act, 17 U.S.C. '1008, which bar such actions based on the manufacture, importation or distribution of a 'digital audio recording device' (DARD). In an issue of first impression, the court rejected the provider's assertion that the statute provides 'absolute immunity' from copyright infringement to distributors of DARDs. The court reasoned that while the statute protected the defendant from suits based on its actions as a distributor of such devices, it did not provide immunity for its actions as a satellite radio broadcaster or as a combination satellite radio/MP3 content-delivery provider. The court concluded that by broadcasting and storing copyrighted music on DARDs for later recording by subscribers, the defendant acted as a broadcaster and distributor, but only paid for a license to be a broadcaster.