Domain Name Extensions Extended Again
ICANN decided Friday to postpone approval of procedures for organizations to propose new generic top-level domains (gTLDs). Companies anticipating the need to protect trademarks in a potentially large number of new gTLDs will have at least a few more months to understand and weigh in on the proposals, and to brace themselves for successive rounds of sunrise filings and domain name disputes as new gTLDs are introduced.
Continue Reading...SDNY Court Holds Credit Card Processors May Be Contributorily Liable for Trademark Infringement
Despite the fact that the word “contribute” or “contributory” appears nowhere in the Lanham Act (Trademark Act), as codified in Title 15 of the United States Code, U.S. District Judge Harold Baer, Jr. recently held in a twenty-four page decision, Gucci America, Inc. v. Frontline Processing Corp. et al., 09 Civ. 6925 (HB), 2010 WL 2541367 (S.D.N.Y. June 23, 2010), available at http://tinyurl.com/ILG-Gucci, that claims for contributory trademark infringement could proceed against three defending merchant credit card service providers who collectively arranged or handled credit card payments for a website selling counterfeit Gucci goods.
In denying the defendants' 12(b)(6) motion to dismiss for failure to state a claim, the opinion has raised eyebrows in the IP community, leaving many providing services to websites fearful of the next round of expanded liability and uncertain about what steps to take now to protect themselves from potential liability. While the significance of Judge Baer's opinion is notable, particularly if the case ultimately proceeds to final judgment and survives any appeal thereafter, eyebrows should be lowered at this time because Judge Baer's decision is in of itself should come as no surprise.
Continue Reading...European Court Hands Google a Keyword Victory but Warns Online Advertisers
The European Court of Justice ruled this week in cases brought against Google France by Louis Vuitton Malletier and Viaticum that Google is not liable for selling advertising keywords (Google AdWords) based on brand names to the competitors of the brand owners. However, the court noted that advertisers themselves may violate trademark and unfair competition laws if they create confusion as to the source of advertised products, and a search provider may be liable if it does not act promptly to remove abusive advertising once it becomes aware of it.
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