Google: A Victim of Its Own Success?

ELLIOT V. GOOGLE, 2017 WL 2112311 (9TH CIR. MAY 17, 2017)

“Google it.”  Of course, we all know what this means. Indeed, the word “Google” has earned such widespread recognition that in 2006 it was added to the dictionary.  While this might be considered the epitome of success, it can be a nightmare in terms of trademark protection.

Google Lawsuit

Background

“Google” is what trademark law refers to as a fanciful mark.  Fanciful marks are made up, and similar to arbitrary marks, have no association to a particular type of goods or services.  For example, “Apple” has no apparent relation to computers just as the names Uber, Twitter, and Amazon give no indication of the particular product or service it provides.  For that reason, fanciful and arbitrary marks generally garner the highest level of trademark protection because it usually takes the trademark owner significant effort marketing its business to reach the point that the public associates its product or service with the mark.

However, when a fanciful term receives such unimaginable success that it transforms itself into a concept or in Google’s case, an entry in the dictionary, it may be in danger of losing its trademark protection and becoming a dreaded “generic” term.  Both “aspirin” and “escalator” were victims of “genericide.”

To determine if a mark has become generic, the Ninth Circuit Court established the “who are you/what are you” test.[1]  Applying this test, a finder of fact would analyze if a term points to the source (who you are), or if a type of good (what you are).[2]  An example is that the trademark “Coke” indicates a soft drink made by “Coca Cola” and the generic term “soda” indicates any carbonated soft drink. Once a term is found to be generic, it has no trademark protection, and can be fairly used by anyone in connection with describing goods or services.

Case

Aware of this risk, Google has vigilantly sought to protect its name.  In 2012 Google discovered that Chris Gillespie (“Gillespie”) acquired 763 domain names that included the term “Google.”  David Elliot (“Elliot”) purchased and registered the domain names using Gillespie’s GoDaddy.com account. Each of the domain names paired the term “Google” with a person, brand or product, such as “googledisney.com” and “googlebarackobama.com.” Google promptly objected to the registration of the domain names and filed a complaint with the National Arbitration Forum (“NAF”) using its dispute resolution procedure. Google argued that the domain names were confusingly similar to the “Google” trademark, were registered in bad faith and constituted cybersquatting.  Google prevailed and NAF transferred the domain names to Google.

Elliot then filed an action in the Arizona District Court (Gillespie later joined in the suit) for cancellation of the Google trademark on the grounds that the word “google” had become a generic term to describe the act of internet searching.

Ruling

After cross-motions for summary judgment, the district court found that Elliot and Gillespie failed to present sufficient evidence to support a jury finding that the public primarily understands the word “google” as a generic name for internet search engines[3].  Elliot and Gillespie appealed to the Ninth Circuit claiming that (1) they had presented sufficient evidence to create a triable issue of fact and (2) that the district court misapplied the primary significance test and failed to recognize the importance of the use of google as a verb.

On May 17, 2017, the Ninth Circuit affirmed the finding that a claim of genericide must always relate to a particular type of good or service, and that use of ‘Google’ as a verb is not synonymous with a finding of genericide[4].

Impact

Like Google, trademark owners must always be vigilant, monitor the public’s use of its mark and take affirmative steps to correct any public misuse to protect against potential claims of genericide.

 

Terri Meyers

Terri Meyers is a Partner at the Miami firm of Kluger Kaplan Silverman Katzen & Levine, P.L. and leads the firm’s Intellectual Property department.

 

 

 

Mayda_Nahhas

Mayda Nahhas is a law clerk at Kluger Kaplan Silverman Katzen & Levine, P.L., a rising third-year law student at Nova Southeastern University – Shepard Broad College of Law, the Goodwin Alumni Editor for Nova Law Review Vol. 42, and the Founding President of Nova Southeastern University Fashion Law Association.

 

[1] Official Airline Guides, Inc. v. Goss, 6 F. 3d 1385 (9th Cir. 1993).

[2] Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005); Filipino Yellow Pages, Inc. v. Asian Journal Publication, Inc., 198 F.3d 1143, at 1147 (9th Cir. 1999).

[3] Elliot v. Google, 2017 WL 2112311 at 2 (9th Cir. 2017).

[4] Id. at 3.

Supreme Court’s First Ruling on Fashion Copyright

Broadening Intellectual Property Rights for the Fashion Industry

Fashion Copyright

Case:

In a first ever fashion copyright decision, the U.S. Supreme Court analyzed whether design elements on a cheerleading uniform could be copyright protected.

At issue were two competitor manufacturers of cheerleading uniforms, Star Athletica, LLC (“Star Athletica”) and Varsity Brands, Inc., Varsity Spirit Corporation and Varsity Fashions & Supplies, Inc. (collectively “Varsity”).

Varsity had successfully acquired approximately 200 copyright registrations for two and three dimensional designs that appear on its cheerleading uniforms. Varsity sued Star Athletica for infringing five of Varsity’s copyright registered designs. In 2014, the District Court held that fashion related patterns for apparel were non-copyrightable if the work of art was not identified separately from its garment. It reasoned that the cheerleading uniform’s designs served a useful function of identifying a cheerleading uniform as such.

Background:

Under the Copyright Act of 1976[1], uniforms and other clothing are generally considered useful articles and therefore such items cannot be copyright protected. The fashion industry has customarily relied on other areas of intellectual property law such as trademark, trade dress or design patents to protect their fashion designs and brand. This is because although some elements of fashion can be protected by copyright law such as drawings, photographs, editorial content and software embedded in wearable tech, before this ruling, fashion designs were not copyright protectable.

Ruling:

The Supreme Court, in a majority 6-2 decision, reversed the District Court’s decision and ruled in favor of Varsity Brand, finding that individual design elements incorporated into such useful articles are eligible for copyright protection.

The Sixth Circuit’s decision held that the designs were “separately identifiable” because a blank cheerleading uniform can appear side-by-side a designed cheerleading uniform and both would still be identified as a cheerleading uniform. It further reasoned that the designs could stand-alone because the designs could be incorporated onto other tangible mediums.

Impact:

This decision marks an important milestone for the fashion industry and will no doubt spawn further litigation as designers press newfound copyright protection and copycats wonder what is safe. A designer wishing to obtain protection for a design must still prove ownership of an original “pictorial, graphic, or sculptural work which include two-dimensional and three-dimensional works of fine, graphic and applied art[2],” and obtain a registration from the U.S. Copyright Office. Although registration is not required to prove ownership of an original work of art, registration is a requirement in order to maintain a copyright infringement action in federal court.

Finally, Justice Ginsburg found the analysis of separability of the design from the useful article unnecessary because the designs at issue are not designs of useful articles, rather, the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles[3].” Given that the design is copyrightable, Justice Ginsburg points out that the right “includes the right to reproduce the work in or on any kind of article, whether useful or otherwise[4].” This common-sense approach may send a clear message to the U.S. Copyright Office as they review the inevitable influx of copyright registrations which will follow this opinion.

 

Terri MeyersTerri Meyers is a Partner at the Miami firm of Kluger Kaplan Silverman Katzen & Levine, P.L. and leads the firm’s Intellectual Property department.

 

 

 

Mayda_NahhasMayda Nahhas is a law clerk at Kluger Kaplan Silverman Katzen & Levine, P.L., a second-year law student at NSU Shephard Broad College of Law and Founding President of NSU Fashion Law.

 

 

 

[1] 17 U.S.C. § 101 (2010).

[2] 17 U.S.C. § 101.

[3] Star Athletica, Inc., 2017 WL 1066261, *14.

[4] 17 U.S.C. § 113(a) (2010).

Kluger Kaplan Announces Midwest Expansion Plan, Opens Minneapolis Office

Dan Rosen

Miami-based litigation firm Kluger, Kaplan, Silverman, Katzen & Levine announces its plans to expand into the Midwest market, with prominent litigator Daniel Rosen joining the firm on May 1 and serving as partner-in-charge of its new Minneapolis office.  The move marks the firm’s first physical footprint outside of the South Florida market and is designed to support the litigation powerhouse’s existing national practice, while creating a deeper platform across the Midwest.

With more than 30 attorneys in South Florida, Kluger Kaplan has built a national reputation for handling high-stakes business and commercial litigation disputes, including securities and financial fraud, probate, class actions, complex matrimonial, probate and trust litigation.   The firm’s attorneys serve as lead counsel in trials in federal and state courts across the country, and are consistently recognized by Chambers USA, Super Lawyers and Best Lawyers in America.  The firm was recently named a Top Litigation Firm by the Daily Business Review, an ALM-affiliate and sister publication to the American Lawyer, Corporate Counsel and National Law Journal. 

“Minneapolis is one of the fastest growing metropolitan cities in the country, with roughly 3.5 million people, major corporate headquarters, and a diverse economic base,” said Alan Kluger.  “This move will allow us to tap into the region’s unlimited growth potential, while better aligning our geographic footprint with our clients’ interests.”

According to the Bureau of Economic Analysis, in 2015, Minnesota’s gross domestic product (GDP) was $328.3 billion, ranking 17th in the U.S.  Additionally, 17 of the Fortune 500 companies are based in Minnesota, including General Mills, Target, Land O’Lakes, Hormel Foods, Best Buy and 3M. Yet despite the city’s robust economy, Mr. Kluger says that most law firms have traditionally eschewed the market in favor of major ‘power’ centers such as New York, Boston and Washington, D.C.

“Minneapolis is well-regarded for its sophisticated court system, highly experienced bench and bevy of major national corporations – but continues to be overlooked by the big litigation firms,” said Abbey Kaplan, founding partner of Kluger Kaplan. “Dan’s esteemed reputation, coupled with our resources, will bring immediate value to our existing clients and fill a need in this underserved market.”

Mr. Rosen previously served as partner of Parker Rosen, where he established his reputation as a veteran trial lawyer and advocate for some of Minnesota’s largest businesses and national corporations.  With 23 years of courtroom experience, Mr. Rosen focuses his practice on complex commercial and real estate litigation.  Prior to becoming a lawyer, he was an officer in the U.S. Navy.

As the leading Minnesota lawyer representing property owners in eminent domain takings, he successfully represented international developer, Hines Interests, in the largest eminent domain case in the state’s history.  Additionally, he has garnered a reputation for representing major national corporations with interests in the Midwest, including Exxon Mobil, Walgreens, Sears Holdings and Kmart.

“Coming to Kluger Kaplan is a natural fit and aligns seamlessly with my clients’ needs and interests,” said Mr. Rosen. “By combining forces, we can deliver exceptional legal counsel while creating a platform for additional growth across the Midwest.”

Mr. Rosen is a recognized force in the Minnesota business and civic communities.  He currently serves as Chairman of the Minnesota Campaign Finance and Public Disclosure Board, which is a governor-appointed position tasked with regulating campaign finance and lobbyist activities in state campaign. Additionally, he is the past chairman of the Minnesota Council of the American-Israel Public Affairs Committee (AIPAC) and is a member of the organization’s National Council.

Kluger Kaplan’s Minneapolis office will be temporarily located at 80 South 8th Street, before moving to a permanent location in the city’s downtown district. The firm also anticipates opening subsequent locations across the Midwest, such as Chicago and St. Louis.

5 Questions with Christina I. Echeverri: Why Divorce & Electronics Don’t Mix

 

Introducing our KK Q&A series. Over the coming months, look out for monthly Q&A posts with Kluger Kaplan associates, digging in about some of the most interesting parts of their practices. Something special you’re dying to ask an associate or learn more about? Send us a message and we’d be happy to include it.

 

Cell phones don’t seem to leave our hands these days. Amazing new technology, devices and apps have made it so much easier to improve efficiency and stay constantly connected. But there is a negative side to technology that’s become unavoidable. We’ve all been guilty at times of being caught up in the online world and ignoring the real world around us. So, we sat down with Christina I. Echeverri in our family law group to find out about how everyone’s favorite devices have had an impact on the world of divorce.

Cell Phones

1. What role does technology play in divorce cases?

For better or worse, technology has clearly effected almost every aspect of our lives. In the divorce world, however, I see it playing a role in two different ways. There are situations where my clients have chosen to file for divorce as a result of technology, and then there are clients’ divorce cases that are impaired and intensified because of technology.

2. How is that changing divorce proceedings?

Ironically, I’ve found that technology has led to a lack of communication. People are complaining that their spouse isn’t “present” – spending too much time glued to their phone, iPad, Apple Watch or the like, tablet or computer.  It has also become much harder for cheating or deceitful spouses to hide their faults. Social media plays a huge role. Remember, the internet remembers everything and “private” doesn’t always stay private. The biggest problem I’ve come across recently is that spouses are not realizing that when you write something on one device, it can also be seen in other places, and these devices do not always talk to each other. I’ve had two cases recently, where a spouse found incriminating text messages on an Apple Watch that the cheating spouse thought were deleted. Often times we come across one spouse obtaining personal information that spouse did not want the other spouse to have, such as bank or credit card statements, or a list of that spouse’s bank accounts simply because they left the information in plain view on a family computer. In many cases, this information has been instrumental to the spouse who obtained the information and has assisted with the discovery of additional funds or discovery of dissipation of assets during the litigation.

3. What should individuals know about protecting their privacy through technology during a divorce proceeding?

Individuals considering divorce or in the midst of divorce should be overly cautious about keeping private information private. Just as one would avoid case-related discussions within an earshot of the spouse, one should avoid leaving information where a spouse might have access.  Otherwise, you are potentially setting yourself up for a legal battle and giving your spouse either ammunition to file divorce proceedings or to rely on the information in divorce proceedings. There are easy ways to safeguard personal technology – passwords on cellphones and smart watches, ensuring a deleted text message is deleted on all devices (don’t trust them to sync), and a heightened level of care when it comes to protecting private information. Above all else, the safest way to avoid trouble with technology is to keep private communications old-fashioned: face to face or on the phone.

4. Have new technologies effected how attorneys handle divorce cases?

Lawyers have adapted their communication methods just as the rest of the world has, which means sometimes we communicate with our clients through text message. This can become troublesome in divorce cases since divorce is such a sensitive matter, with opponents living such intertwined lives. For example, if a client was planning a divorce and still living in the same house as their spouse, seeing a text message from a divorce lawyer on the client’s phone could be problematic. There is the possibility that the spouse may learn tactics or overhear private conversations, which can create another layer of issues during the divorce proceedings. Hence, we counsel our clients to be wary of the access their spouse may have to their electronic devices, especially email access on family computers (sometimes allowing for automatic login), shared ICloud accounts and syncing devices.

5. What advice would you give a client or potential client regarding technology in their marriage or divorce?

Technology has its drawbacks. With regards to technology in marriages, too many times it becomes a substitute for communication and the marriage takes a downward spiral. My recommendation is to put the phone away, don’t wear a Bluetooth watch, and go back to the old way of communicating with your spouse. Be an active participant in the marriage. With regards to technology and privacy during the marriage or divorce proceedings, I hope it goes without saying, my foremost recommendation is not to cheat in the first place. But if you find yourself in that situation, be thoughtful about protecting private information. If you must communicate via an electronic device, whether it be with your counsel or personal conversations, secure your information by familiarizing yourself with the syncing capabilities of all of your devices and remove automatic login options for emails on your family computer or tablet.

Christina EcheverriChristina Echeverri practices in Kluger Kaplan’s family law group, handling all aspects of divorce, post judgment proceedings, enforcement proceedings, paternity actions and prenuptial and postnuptial agreements.

Daily Business Review: Florida Standard for Expert Opinions Uncertain After Decision

Kluger Kaplan associate, Gina Rhodes, is featured in today’s Daily Business Review Board of Contributors Column:

Florida Standard for Expert Opinions Uncertain After Decision

Commentary by Gina Rhodes, Daily Business Review

Gina Rhodes

On Feb. 16, the Florida Supreme Court declined to adopt the 2013 amendments to the Florida Evidence Code which replaced Frye standard for expert witnesses with the Daubert standard.

In its opinion, the court stated, “We decline to adopt the Daubert Amendment to the extent that it is procedural, due to the constitutional concerns raised, which must be left for a proper case or controversy.” The ruling shows the interplay between the Florida Supreme Court and the Florida Legislature may create confusion and uncertainty about the standard attorneys and judges should apply for expert witness opinions going forward.

In 2013, the Florida Legislature amended the Florida Evidence Code Sections 90.702 and 90.704 regarding expert opinions. The purpose of the amendments was for Florida to shift from the Frye standard to the Daubert standard for expert witness opinions in order to put Florida in line with the federal courts and most states. Under the Frye standard, an expert opinion based on a scientific technique was admissible only if such technique was “generally accepted” as reliable in the relevant scientific community. Under Daubert, the standard is arguably broader.

The amended version of Section 90.702 adds that an expert witness can testify if: “The testimony is based upon sufficient facts or data; the testimony is the product of reliable principles and methods; and the witness has applied the principles and methods reliably to the facts of the case.” Section 90.704 was also amended to prevent inadmissible evidence from being disclosed to the jury through an expert opinion unless the probative value “in assisting the jury to evaluate the expert’s opinion substantially outweighs their prejudicial effect.” The Daubert standard has governed the admissibility of expert witness testimony since the statutes were amended.

The Ruling

In declining to adopt the 2013 versions of the amended sections, the court explained that even though it is the policy to adopt provisions of the Florida Evidence Code “as they are enacted and amended by the Legislature,” “on occasion the court has declined to adopt legislative changes … because of significant concerns about the amendments, including concerns about the constitutionality of an amendment.”

The court noted the committee recommended by a 16-14 majority not to adopt the amendments and “in support of its recommendation, both the committee and commenters … raised what we consider ‘grave constitutional concerns.’ ” The concerns were not discussed in detail in the opinion but touched upon the constitutional right to a jury trial and denying access to the courts.

Justice Ricky Polston, concurring in part and dissenting in part, disagreed with the majority for failing to replace the Frye standard with the Daubert standard, honing in on the fact that the Daubert standard is followed not only in federal courts but also in “36 states.” Polston continued, stating he knew of “no reported decisions that have held that the Daubert standard violates the constitutional guarantees of a jury trial and access to courts” and in fact cited to case law across the nation stating the opposite.

Overall, unless and until the Daubert standard is challenged in a “proper case or controversy” where the Florida Supreme Court has an opportunity to review the constitutional issues it referenced, the ruling could have a substantial impact in the trial courts.

For example, when a party objects to the admissibility of an expert witness opinion based upon the Daubert standard, the opposing party may argue that, based on the court’s ruling, the Daubert amendments are unconstitutional. A party seeking to admit expert testimony could also argue that the amendments are procedural in nature, and because they were not adopted by the Florida Supreme Court, the court should use the Frye standard in ruling on the motion.

Appeals of trial and appellate court rulings on these issues could lead to a determination by the Florida Supreme Court regarding the constitutionality of the Daubert amendments. However, until then, it appears this ruling is likely to cause confusion in courts across the state in applying the standard for admitting, challenging or excluding expert opinions under the Florida Evidence Code.

Gina Rhodes is an associate at Kluger, Kaplan, Silverman, Katzen & Levine in Miami. She focuses her practice on commercial litigation disputes in both state and federal court.

http://www.dailybusinessreview.com/home/id=1202780599068/Florida-Standard-for-Expert-Opinions-Uncertain-After-Decision?mcode=1202629277012&curindex=1