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).

Six Kluger Kaplan Attorneys Named Best Lawyers in America

 

Congratulations to Founding Members Alan Kluger, Abbey Kaplan, Bruce Katzen, Steve Silverman and Philippe Lieberman and to attorney Terri Meyers, who were selected by Best Lawyers in America 2013 to be among the top legal practitioners in their practice areas:

Alan Kluger – Commercial Litigation / Litigation: Banking & Finance / Litigation: Real Estate

Abbey Kaplan – Commercial Litigation / Entertainment Law / Litigation: Mergers & Acquisitions / Litigation: Real Estate

Bruce Katzen – Securities, Capital Markets Law

Steve Silverman – Commercial Litigation

Philippe Lieberman – Commercial Litigation

Terri Meyers – Intellectual Property

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Chow vs. Chow: Miami Beach feud food lands in federal court

In honor of the Chinese New Year, we give you a timely article about the feud between the Chows on Miami Beach. Filed under Food Fight.

Read the full article from the Miami Herald here.

The proprietors of two Miami Beach restaurants with similar names and menus say this town isn’t big enough for both of them. They have taken their feud to federal court.

ADAM H. BEASLEY
abeasley@miamiherald.com

It’s the food fight of the century for all the egg rolls.

Chow v. Chow. Teacher versus student. Legend against upstart.

And it all goes down in a Miami federal courtroom beginning Monday, when a jury must grapple with this fundamental question: What’s in a name?

Among the potential witnesses: none other than former Miami Heat cornerstone Alonzo Mourning.

In one corner — Michael Chow, aka “Mr. Chow,” the creator and owner of the eponymous chain of upscale Chinese restaurants.

In the other — Philippe Chow, 53, a former Michael Chow disciple (and no relation) who went out on his own seven years ago. With the financial backing of restaurateur Stratis Morfogen and several famous athletes, he opened similarly swanky Asian cuisine restaurants intended to compete with Mr. Chow in New York, Los Angeles and South Beach.

The name of his growing empire: Philippe by Philippe Chow.

Confused? According to Michael Chow’s attorneys, that’s the point.

In a federal trademark infringement lawsuit, Michael Chow claims his pupil stole his restaurant’s name, its recipes and even its unique ambience in an attempt to confuse the public into thinking Philippe Chow was the original “Chow” — which is one of the most common family names in China. The suit, which depicts Philippe Chow as a fraudulent imitator whose 25 years in Mr. Chow’s kitchen were spent as little more than a glorified food chopper, seeks north of $20 million in damages.

The accused says all that is nonsense and has counter-sued on defamation grounds. Philippe Chow’s legal and financial teams claim he was a high-level chef, and along with Philippe’s mentor Sik Chung Lam, helped create Mr. Chow’s menu. As for Michael Chow, Morfogen describes him as a narcissistic celebrity front man who got rich on the backs of others.

“Michael Chow can’t boil water,” said Morfogen, who lured his star chef away from Mr. Chow’s New York location in 2005, only to open a near-replica just three blocks away. “He’s not a chef. The real story behind this lawsuit is Mr. Chow’s ego.”

Morfogen’s attorney, Anthony Accetta, plans to make that very point, with the help of a star-studded roster of witnesses.

Mourning, who along with fellow athletes Chauncey Billups, Al Harrington and Jerome Bettis is an investor in Philippe’s locations in Miami Beach and Boca Raton, is expected to testify on behalf of Philippe.

So too is hotelier Giuseppe Cipriani, the target of a similar Michael Chow lawsuit in California. Cipriani’s insult: Calling his Beverly Hills hotel and restaurant Mr. C — also too similar to “Mr. Chow” for Michael Chow’s liking.

Michael Chow, the 72-year-old Chinese expat whose father Zhou Xinfang was the famed grand master of the Beijing opera, declined comment during a break in his case’s final pre-trial hearing Wednesday.

But his attorney, Curtis B. Miner, has framed the debate as a battle for intellectual property rights, claiming that Philippe mimicking Mr. Chow’s essence and the recipes to what appear to be common Chinese dishes is tantamount to stealing the secret recipe to Coca-Cola.

While the lawsuit wasn’t filed until 2009, Michael Chow has been simmering for some time. It began when Chow learned that his old employee had teamed up with Morfogen to plan a Chinese-cuisine restaurant in New York. Alarms went off, the lawsuit states, when Michael Chow learned that his new competitor had legally changed his name from Chak Yam Chau to Philippe Chow and gave his new business the same moniker.

Read the rest of the story here.

Caesars scores interim win in Octavius trademark lawsuit

Caesars Entertainment Corp. of Las Vegas has scored an initial legal victory over a Florida man who claims to own the trademark to the name “Octavius Tower.” Read the full story from Vegas Inc. here.

Caesars scores interim win in Octavius trademark lawsuit

By

Caesars is preparing to open its expanded 668-room Octavius Tower at Caesars Palace — the sixth hotel tower at the resort on the Las Vegas Strip.

Marcel July of Port Charlotte, Fla., and his company, Octavius Tower LLC, claim to own the “Octavius Tower” trademark and have been ordering Caesars to stop using that name for the tower, the first portion of which opened in 2009.

Caesars responded with a federal lawsuit in Las Vegas in April against July accusing him of trademark fraud.

The lawsuit charged that two days after Caesars announced plans in July 2007 to build Octavius Tower, July registered website domain names using the Octavius Tower name and the Caesars name, including octaviustower.com and caesarstower.com.

As the lawsuit progressed, July sought an injunction against Caesars Entertainment to block it from use of the “Octavius Tower” phrase.

U.S. District Judge Gloria Navarro on Monday denied his bid for an injunction, ruling July had failed to meet his burden of proof that an injunction is warranted.

Navarro noted in her order that Caesars Entertainment in July 2007 had filed a trademark application for the Octavius Tower mark as it related to “hotel services,” but later abandoned the application because of delays in development of the tower. A second application was filed by Caesars in December 2010.

July, who says he founded a band called Octavius Tower in 1992, in 2009 received a trademark to the phrase Octavius Tower for “entertainment services.”

July, represented by Las Vegas attorney Michael Sanft of Sanft Law Group, argued in his preliminary injunction request that besides founding the international band in Germany, he had been using the Octavius Tower mark for broad entertainment and merchandising services.

Navarro didn’t buy those arguments, at least for the preliminary injunction stage of the case.

“Caesars makes strong arguments against July’s use of the mark that extinguishes July’s prima facie case,” Navarro wrote in Monday’s order.

The ruling did not close the case — the lawsuit will now likely continue with each side seeking a final order spelling out the rights to the Octavius Tower name.

Caesars is represented in the litigation by attorneys with the Las Vegas law firm Santoro, Driggs, Walch, Kearney, Johnson & Thompson as well as the Atlanta firm Alston & Bird LLP.