Jurin v. Google, Inc., 2010 U.S. Dist. LEXIS 18208 (E.D. Cal., 2010)
Plaintiff sued Defendant (Google), over its Adwords keyword suggestion tool which suggests Plaintiff’s trademarked product name as a keyword for Adword pay-per-click advertising to Plaintiff’s competitors. The court granted Defendant’s motion to dismiss on several of the causes of action, including Lanham act claims. Read the rest of this entry »
Mac’s Shell Service, Inc., et al. v. Shell Oil Products Co. LLC, et al., 2010 U.S. LEXIS 2203
While this is not a trademark case per se, it touches on some trademark issues. Several Shell franchises sued the Shell franchisor from changing terms in its agreement that signficantly increased the franchisees rent. The franchisees renewed under the new terms and sued under the Petroleum Marketing Practices Act (PMPA) for constructive termination/nonrenewal. The Court held that in order to be a constructive termination or constructive nonrenewal, the franchisees have to actually terminate the relationship. “Thus, when given its ordinary meaning, the Act is violated only if an agreement for the use of a trademark, purchase or motor fuel, or lease of a premises is ‘put [to] an end’ or ‘annul[ed] or destroy[ed].’ Conduct that does not force an ende to the franchise, in contrast, is not prohibited by the Act’s plaine terms.” (pp. 14-15).
Gallup, Inc. v. Business Research Bureau (PVT.) Ltd., 2010 U.S. Dist. LEXIS 12154 (N.D. Cal., 2010)
Defendant runs a polling business in Pakistan under the name Gallup Pakistan, and is a an affiliate of Gallup International Association. Plaintiff does polling in the United States, and is a former member of Gallup International Association. Defendant alleged that Plaintiff is currently involved in trademark disputes with mayn GIA affiliates (noted as an aside in the case). Defendant posts his polls online in English. As a result, some polls have been picked up by American publications. The court held that these extraterritorial actions do not give rise to jurisdiction under a Timberlane analysis.
“Indeed, plaintiff essentially asks the Court to hold that mere participation in an international teleconference or news program broadcast to the United States (or available for viewing in the United States via the Internet) is sufficient to subject the holder of a presumably valid foreign trademark to infringement liability under the Lanham Act. The principles of comity and fairness weigh strongly against this argument.” (2010 U.S. Dist. LEXIS 12154 at p. 27.)
Rare Breed Distilling v. Heaven Hill Distilleries, 2010 U.S. Dist. LEXIS (N.D. Cal., 2010)
Plaintiff and Defendant both produce bourbon-based honey liqueurs that form the basis of a trademark infringement suit. Although both companies are headquartered out of Kentucky, Plaintiff’s IP issues are handled by a distributor based out of San Francisco. As a result, Plaintiff brought suit in the Northern District of California. Defendant requested transfer of venue under 28 USC 1404(a). The court declined to transfer because, on balance, the inconvenience to witnesses (etc.) did not outweight Plaintiff’s choice of forum.
ProtectMarriage.com - Yes on 8 v. Courage Campaign, 2010 U.S. Dist. 10045 (E.D. Cal., 2010)
Plaintiff sought a preliminary injunction based on trademark infringement. The court denied the injunction, holding that Plaintiff was “unlikely to overcome the conclusion that defendant’s use of the mark is protected under the first amendment, in that the use is relevant to an expressive parody and the use is not explicitly misleading.” Read the rest of this entry »
