e-Commerce Docket Sheet

A trademark owner's remedies are not limited by the types of goods specified in its registration, and the owner may bring an infringement action if another's use of the mark on different goods or services is likely to cause consumer confusion with the owner's use of its mark in connection with goods or services described in its trademark registration. Applied Information Sciences Corp. v. eBay, Inc., 2007 U.S. App. LEXIS 29871 (9th Cir. Dec. 28, 2007). The appeals court affirmed the lower court's grant of summary judgment to the defendant, although on slightly different grounds. In questioning the lower court's reasoning, the appeals court clarified that the scope of trademark validity and the scope of relief are not coextensive and that the Lanham Act does not require that the alleged infringer's confusing use involves the same goods or services listed in the registration. The court concluded that the defendant was entitled to summary judgment, however, because the mark holder failed to produce any evidence tending to show a likelihood of confusion.

The use of a domain name consisting of the prefix 'e' before a famous mark weakens the ability of the mark holder to identify its goods and services, and constitutes dilution under the federal Trademark Dilution Act as per the pre-amendment actual dilution standard enunciated by the U.S. Supreme Court in Moseley v. V. Secret Catalogue. Visa Int'l Service Assoc. v. JSL Corp., 2007 U.S. Dist. LEXIS 95334 (D. Nev. Dec. 27, 2007). The court granted summary judgment to the plaintiff on its dilution claim and ordered the defendant to deactivate its Web site. The court concluded that 'e' is a commonly used domain-name prefix denoting the online version of a business, and that 'evisa.com' dilutes the plaintiff's famous 'Visa' mark, and 'presents a serious impediment to customers trying to locate the Visa Web site.'

A plaintiff's failure to produce a written copyright-transfer agreement does not deprive it of standing to bring an infringement action against a third-party infringer, absent some dispute between the transferee and transferor over the assignment of the copyright. Software for Moving, Inc. v. La Rosa Del Monte Express, Inc., 2007 U.S. Dist. LEXIS 90958 (N.D. Ill. Dec. 7, 2007). The court denied the defendant's motion to dismiss under Section 204(a) of the Copyright Act, which states that a transfer of copyright ownership, other than by operation of law, is not valid unless evidenced by a piece of writing. The court found that Section 204(a) is designed to resolve disputes between copyright owners and transferees in circumstances such as bankruptcy proceedings or work-for-hire situations, and cannot be used by an alleged third-party infringer to avoid a copyright-infringement suit. Because there is no quarrel between the plaintiff and its transferor over the assignment of the software copyright, the court held that the defendant lacks standing to invoke Section 204(a) as a basis for a motion to dismiss.

An election of statutory damages under Lanham Act section 1117(c) for the use of a counterfeit mark precludes an award of attorney's fees under section 1117(b), which grants a prevailing plaintiff seeking actual damages an award of treble damages plus reasonable attorney's fees. K and N Engineering, Inc. v. Bulat, 2007 U.S. App. LEXIS 29220 (9th Cir. Dec. 18, 2007). The appeals court reversed the lower court's award of attorney's fees to the plaintiff. The court reasoned that the counterfeit statutory-damage provisions of section 1117(c) make no allowances for attorney's fees, and that the attorney's fees provision of section 1117(b) applies only in cases where a plaintiff seeks actual damages under section 1117(a).

Registered Trademark Owner's Remedies
Not Limited By Types of Goods

A trademark owner's remedies are not limited by the types of goods specified in its registration, and the owner may bring an infringement action if another's use of the mark on different goods or services is likely to cause consumer confusion with the owner's use of its mark in connection with goods or services described in its trademark registration. Applied Information Sciences Corp. v. eBay, Inc., 2007 U.S. App. LEXIS 29871 (9th Cir. Dec. 28, 2007). The appeals court affirmed the lower court's grant of summary judgment to the defendant, although on slightly different grounds. In questioning the lower court's reasoning, the appeals court clarified that the scope of trademark validity and the scope of relief are not coextensive and that the Lanham Act does not require that the alleged infringer's confusing use involves the same goods or services listed in the registration. The court concluded that the defendant was entitled to summary judgment, however, because the mark holder failed to produce any evidence tending to show a likelihood of confusion.

The use of a domain name consisting of the prefix 'e' before a famous mark weakens the ability of the mark holder to identify its goods and services, and constitutes dilution under the federal Trademark Dilution Act as per the pre-amendment actual dilution standard enunciated by the U.S. Supreme Court in Moseley v. V. Secret Catalogue. Visa Int'l Service Assoc. v. JSL Corp., 2007 U.S. Dist. LEXIS 95334 (D. Nev. Dec. 27, 2007). The court granted summary judgment to the plaintiff on its dilution claim and ordered the defendant to deactivate its Web site. The court concluded that 'e' is a commonly used domain-name prefix denoting the online version of a business, and that 'evisa.com' dilutes the plaintiff's famous 'Visa' mark, and 'presents a serious impediment to customers trying to locate the Visa Web site.'

A plaintiff's failure to produce a written copyright-transfer agreement does not deprive it of standing to bring an infringement action against a third-party infringer, absent some dispute between the transferee and transferor over the assignment of the copyright. Software for Moving, Inc. v. La Rosa Del Monte Express, Inc., 2007 U.S. Dist. LEXIS 90958 (N.D. Ill. Dec. 7, 2007). The court denied the defendant's motion to dismiss under Section 204(a) of the Copyright Act, which states that a transfer of copyright ownership, other than by operation of law, is not valid unless evidenced by a piece of writing. The court found that Section 204(a) is designed to resolve disputes between copyright owners and transferees in circumstances such as bankruptcy proceedings or work-for-hire situations, and cannot be used by an alleged third-party infringer to avoid a copyright-infringement suit. Because there is no quarrel between the plaintiff and its transferor over the assignment of the software copyright, the court held that the defendant lacks standing to invoke Section 204(a) as a basis for a motion to dismiss.

An election of statutory damages under Lanham Act section 1117(c) for the use of a counterfeit mark precludes an award of attorney's fees under section 1117(b), which grants a prevailing plaintiff seeking actual damages an award of treble damages plus reasonable attorney's fees. K and N Engineering, Inc. v. Bulat, 2007 U.S. App. LEXIS 29220 (9th Cir. Dec. 18, 2007). The appeals court reversed the lower court's award of attorney's fees to the plaintiff. The court reasoned that the counterfeit statutory-damage provisions of section 1117(c) make no allowances for attorney's fees, and that the attorney's fees provision of section 1117(b) applies only in cases where a plaintiff seeks actual damages under section 1117(a).