RI IPCaseTracker™ --- 2013 Was a Typical Year

2013 turned out to be a typical year for new intellectual property (patent, trademark and copyright) case filings in the U.S. District Court for Rhode Island.  We got off to a fast start, with 10 new intellectual property case filings in the first six months of 2013 at the, 6 filings in June alone. But filings dropped dramatically in the second half of the year, with only 1 new trademark filing in the fourth quarter.

In the end, 2013 saw 7 new patent case filings, 3 new trademark case filings, and 3 new copyright case filings. This matches the 2011 total of 13 new filings, and just barely exceeds the 2012 total of 12 new case filings.

Let’s hope for more intellectual property case filings in 2014.  Then there will be more cases to highlight here!

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case. There are other cases pending where the complaint may include trademark or other intellectual property claims, or where intellectual property counterclaims may have been asserted. But unless the case is designated as such in the court's database, we are not counting it here. 

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RIIPCaseTracker™ -- Only 2 New IP Cases Filed in RI in 3rd Quarter 2013

6 New IP Cases Filed in RI in June2013

RI IPCaseTracker™ -- Only 2 New IP Cases Filed in RI in 3rd Quarter 2013

We knew it was too good to be true.  We saw 10 new intellectual property (patent, trademark and copyright) case filings in the first six months of 2013 at the U.S. District Court for Rhode Island, 6 filings in June alone.But things returned back to normal levels in the third quarter, with only 1 new patent filing (which actually is a transfer from another judicial district) and 1 new copyright filing.  Still, we are enjoying a 20% increase over the number of IP case filings for the first 9 months of 2012, and over the number of IP case filings for the first 9 months of 2011 as well.

Overall, patent filings lead the way so far in 2013, with 7 new case filings.  There have also been 2 new trademark case filings, and 3 new copyright case filings.  We will attempt to highlight some of these filings in upcoming blog posts.

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case.  There are other cases pending where the complaint may include trademark or other intellectual property claims, or where intellectual property counterclaims may have been asserted.  But unless the case is designated as such in the court's database, we are not counting it here.

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6 New IP Cases Filed in RI in June 2013 (7/2/2013)

6 New IP Cases Filed in RI in June 2013

There were 10 new intellectual property (patent, trademark and copyright) case filings in the first six months of 2013 at the U.S. District Court for Rhode Island, 6 filings in June alone!  This is a 150% increase over the number of IP cases filings for the first six months of 2012, and an 11% increase over the number of IP case filings for the first 6 months of 2011.

Overall, patent filings lead the way so far in 2013, with 6 new case filings.  There have also been 2 new trademark case filings, and 3 new copyright case filings.  Some of these filings will be highlighted in upcoming blog posts, where we will see if we can determine any reasons for the uptick in filings in the Ocean State.

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case. There are other cases pending where the complaint may include trademark or other intellectual property claims, or where intellectual property counterclaims may have been asserted. But unless the case is designated as such in the court's database, we are not counting it here.

New Trademark Case Filed in D RI --- Can Erwin Pearl Stop JC Penney's Internet Keyword Purchases?

Erwin Pearl, Inc. v. J.C. Penney Corp., No. 12-207-S (D.R.I. filed March 20, 2012)

From the complaint, this case appears to be one where Erwin Pearl is complaining about J.C. Penney’s purchase from Google of “Erwin Pearl” as a keyword for a “sponsored link,” when J.C. Penney did not sell that brand of jewelry  This practice caused J.C. Penney’s advertisements to appear at the beginning of the search results page whenever a computer user entered “Erwin Pearl” as a search term.

Even though the courts continue to struggle with how to characterize “keyword” cases, it may be difficult for Erwin Pearl to prevail unless it shows that JC Penney used its trademarks in the text of the ads, or stated that it sold Erwin Pearl branded jewelry when it did not.

According to the Complaint, in 2011 Google “suspended” J.C. Penney’s ability to appear prominently in search results for a period of 90 days.  J.C. Penney allegedly used methods of improving its rankings in search results that Google felt were unfair.  As a result, J.C. Penney turned to purchasing keywords to promote “Sponsored Links.”  The Complaint alleges that in October, November, and December 2011 (Erwin Pearl’s most important selling season), whenever a computer user entered a search term of “Erwin Pearl” or “Erwin Pearl Jewelry”: into Google’s search engine, J.C. Penney’s advertisement showed up in the number one spot on the search results page as a “Sponsored Link.”  The Complaint further alleges that the advertisement referred to prices of “40-60% off” select Erwin Pearl jewelry, and misleadingly suggested that Erwin Pearl’s jewelry was available for purchase at J.C. Penney at prices far less than at the retails stores of Erwin Pearl or its distributors. Unfortunately, a copy of the advertisement was not attached to the Complaint.

Erwin Pearl’s complaint contains claims that J.C. Penney’s actions constitute federal and common law trademark infringement, federal and common law unfair competition, federal and state trademark dilution, and unjust enrichment..  The Complaint seeks an accounting, monetary relief and attorneys’ fees.

The case has been assigned to Judge Smith.

Analysis

The courts have struggled over the years with keyword cases since Google first introduced the practice.  Initially, some courts held that the purchase of a competitor’s trademarks as a keyword was not actionable under trademark law  because the purchase and use of the keyword was not a “use in commerce.”  Since the Second Circuit’s Rescuecom decision, however, [link] most defendants  concede that the use is a use in commerce.  For example, in Hearts on Fire Co., LLC v. Blue Nile, Inc., 603 F. Supp. 2d 274 (D. Mass. 2009), the Court found that “there is little question that the purchase of a trademarked keyword to trigger sponsored links constitutes a “use” within the meaning of the Lanham Act.” 

More recently, courts and defendants have turned to arguments that the purchase of the keyword and its use as a “trigger” for sponsored ads is not an infringement because it creates no likelihood of confusion.  In the Hearts on Fire decision, Judge Gertner examined the traditional likelihood of confusion factors, but found that “likelihood of confusion will ultimately turn on what the consumer saw on the screen and reasonably believed, given the context.”  She identified the following non-exhaustive list of “relevant elements” to showing a likelihood of confusion in the Internet context:  (1) the overall mechanics of web-browsing and Internet navigation, in which a consumer can easily reverse course; (2) the mechanics of the specific consumer search at issue; (3) the content of the search results webpage that was displayed, including the content of the sponsored link itself; (4) downstream content on the defendant’s linked website likely to compound any confusion; (5) the web-savvy and sophistication of the Plaintiff’s potential customers; (6) the specific context of a consumer who has deliberately searched for trademarks [products] only to find a sponsored link to a retailer of that product, and, in light of the foregoing factors, (7) the duration of any resulting confusion. 

The Erwin Pearl Complaint does not attach a copy of the advertisements in question, so it is difficult to undertake an analysis of the strength of Erwin Pearl’s claims.  Plaintiffs have not had much luck in many recent cases, however, as the courts have continued to find that there has been no likelihood of confusion when a potential customer has been momentarily diverted to a competitor’s website but the competitor has not actually used the plaintiff’s trademark publicly, other than to trigger the sponsored advertisement.   Erwin Pearl may have a stronger case if JC Penney used Erwin Pearl's trademarks in the text of the ad, or stated that they sold Erwin Pearl branded jewelry when they did not.

If the case results in a substantive decision, it may be the first in Rhode Island dealing with whether the purchase of keywords by competitor constitutes trademark infringement.

February and March 2012 IP Cases Filed in US District Court of RI

There was 1 new intellectual property (patent, trademark and copyright) case filing in February and March 2012 at the U.S. District Court for Rhode Island. This is the first IP case filing this year, which is a 75% decrease over the IP case filings for the first three months of 2011.

The new filing in March is a trademark case.  This case will be highlighted in an upcoming blog post.

So far there have been no new patent or copyright cases filed in 2012 in Rhode Island

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case. There are other cases pending where the complaint may include trademark or other intellectual property claims, or where intellectual property counterclaims may have been asserted. But unless the case is designated as such in the court's database, we are not counting it here

January 2012 IP Cases Filed in US District Court of RI

There were no new intellectual property (patent, trademark and copyright) case filings in January 2012 at the U.S. District Court for Rhode Island. This matched January 2011, when no intellectual property cases were filed.

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case. There are other cases pending where the complaint may include trademark or other intellectual property claims. But unless the case is designated as such, we are not counting it here.

New Trademark Infringement Case Filed in DRI --- Selling Good Stuff Cheap Can Get You in Trouble

Swarovski Aktiengesellschaft v. Building #19, Inc., No. 11-627 ML (D.R.I. filed Dec.14. 2011)

A new trademark infringement case was filed in the District of Rhode Island in December.  The case involves the sale of genuine Swarovski crystal products by Building #19, Inc., which obtained the products from a salvage company after the warehouse in which the products had been stored was damaged in a tornado.  For those of our readers outside New England, Building #19 is an iconic chain of discount stores known for selling items it obtains at fire sales, liquidations, bankruptcies and other unfortunate events.  The chain’s motto is “GOOD STUFF CHEAP,” which is all you really need to know. 

According to Swarovski’s Complaint, Building #19 acquired over $1.5 million of Swarovski crystal products from an insurance salvage company.  At least some of the crystal products came from a warehouse that had been damaged in a tornado, but Swarovski claims it was not a Swarovski warehouse.  As can be expected in a disaster like this, the packaging for some of the products was damaged.

In  December, Building #19 advertised a “One Day Event” for “SWAROVSKI CRYSTAL” in the Providence Journal and on its website, and allegedly used the Swarovski name liberally in website ads and in in-store materials promoting the sale.  The next weekend, Building #19 advertised a similar sale at its Weymouth, Massachusetts store.  Swarovski took offense to the use of its name and trademark on the web ads, on Building #19’s Facebook page and on the in-store promotional materials.  Apparently, Swarovski feels that the ads made it look like Swarovski sponsored or otherwise approved of the sales.

Swarovski’s complaint alleges that Building #19’s advertising constitutes federal and common law trademark infringement, trademark dilution, federal and state unfair competition, deceptive trade practices under R.I.G.L. Section 6.13.1-2, and injury to business reputation under R.I.G.L. section 6-2-12.  The complaint seeks injunctive relief, damages, treble damages for willful infringement, punitive damages, and an order requiring Building #19 to produce corrective advertising.

The case has been assigned to Judge Lisi.

November and December 2011 IP Cases Filed in US District Court of RI

There were 3 new intellectual property (patent, trademark and copyright) case filings in November and December 2011 at the U.S. District Court for Rhode Island. This brings the final total to 13 new IP case filings (3 patent and 9 trademark and 1 copyright) for the year, which is a 32% decrease over the 19 new IP case filings in 2010.

The new cases in November consist of 1 trademark and 1 copyright case.  The new filing in December is a trademark case.  These cases will be highlighted in an upcoming blog post.

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case. There are other cases pending where the complaint may include trademark or other intellectual property claims, or where intellectual property counterclaims may have been asserted. But unless the case is designated as such in the court's database, we are not counting it here

September and October 2011 IP Cases Filed in US District Court of RI

There were no new intellectual property (patent, trademark and copyright) case filings in September or October 2011 at the U.S. District Court for Rhode Island. This leaves the total at 10 new IP case filings (3 patent and 7 trademark) for the year to date, which is a 33% decrease over the same period in 2010.

So far there have been no new copyright cases filed in 2011 in Rhode Island.

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case. There are other cases pending where the complaint may include trademark or other intellectual property claims, or where intellectual property counterclaims may have been asserted. But unless the case is designated as such in the court's database, we are not counting it here

August 2011 IP Cases Filed in US District Court of RI

There were no new intellectual property (patent, trademark and copyright) case filings in August 2011 at the U.S. District Court for Rhode Island. This leaves the total at 10 new IP case filings (3 patent and 7 trademark) for the year to date, which is a 29% decrease over the same period in 2010.

So far there have been no new copyright cases filed in 2011 in Rhode Island.

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case. There are other cases pending where the complaint may include trademark or other intellectual property claims. But unless the case is designated as such, we are not counting it here.

New Trademark Infringement Case Filed in DRI --- FM Global Seeks to Protect its FM and Diamond Certification Mark

FM Approvals, LLC v. Fullco Industries, Inc., No. 11-cv-00327-L (D.R.I. filed July 28, 2011).

A new trademark complaint was filed in the District of Rhode Island on July 28th. In its Complaint, FM Approvals LLC, a subsidiary of FM Global, claims federal and state trademark rights in a four-sided diamond containing the letters "FM." for its third party testing and product certification services.  FM's mark is a certification mark, like the Good Housekeeping Seal of Approval, and is registered with the U.S. Patent and Trademark Office.  FM Approvals tests and certifies numerous products, including roofing and building material products, classroom materials, and electrical and fire protection equipment.    According to the Complaint, FM Approvals's certification process assures customers that a product has been tested by an objective third party and conforms to rigorous standards. 

FM Approvals claims that Fullco is selling industrial products such as bushings and bearings, fasteners and screws that are of the type used in building assemblies certified by FM Approvals, and has been casting a design consisting of an "F" inside a four sided diamond onto its products. Fullco's mark also has been registered with the U.S. Patent and Trademark Office. 

FM Approvals seeks damages on counts of federal trademark infringement and federal and state law unfair competition, and seeks cancellation of Fullco's federal trademark registration for its "F" and four sided diamond mark.. The case has been assigned to Judge Lisi.

July 2011 IP Cases Filed in US District Court of Rhode Island

There was one new intellectual property (patent, trademark and copyright) case filing in July 2011 at the U.S. District Court for Rhode Island. This leaves the total at 10 new IP case filings (3 patent and 7 trademark) for the year to date, which is a 23% decrease over the same period in 2010.

The new case in July consists of a trademark infringement case. So far there have been no new copyright cases filed in 2011 in Rhode Island.

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case. There are other cases pending where the complaint may include trademark or other intellectual property claims. But unless the case is designated as such, we are not counting it here.

June 2011 IP Cases Filed in US District Court of Rhode Island

There were only 2 new intellectual property (patent, trademark and copyright) case filings in June 2011 at the U.S. District Court for Rhode Island. This brings the total to 9 new IP case filings (3 patent and 6 trademark) for the year to date, which is a 10% decrease over the same period in 2010.

The new cases in June include one design patent infringement case and one trademark infringement case. So far there have been no new copyright cases filed in 2011 in Rhode Island.

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case. There are other cases pending where the complaint may include trademark or other intellectual property claims. But unless the case is designated as such, we are not counting it here.

New Design Patent Infringement Case Filed in DRI --- Kitchen Gadget Wars

Blair v. Media Brands Co., Ltd. , No. 11-cv-234S (D.R.I. filed June 8, 2011).

A new patent infringement case was filed in the District of Rhode Island last week. Barry Blair and Norman Blier own two design patents for a kitchen utensil that holds vegetables and fruit for easy peeling, cutting and slicing, marketed under the PREP N' POP brand. The plaintiffs sell their product on QVC. As the picture shows, the product looks vaguely like a bicycle pump.

In their Complaint, the Plaintiffs allege that the defendants, a Canadian company called Media Brands Co., and its owners, have infringed the design patents by marketing an identical but inferior product under a PREP-XPRESS brand. The Complaint also alleges that in order to promote the PREP-XPRESS product, Media Brands sent out a mass e-mail containing links to a QVC video and a YOUTUBE video in which the plaintiffs can be seen demonstrating their own products. The complaint also asserts claims for federal trademark infringement, federal unfair competition, and Rhode Island state law claims for misappropriation and dilution. The case has been assigned to Judge Smith.

New Trademark Infringement Case Filed in DRI --- Can Thrifty Stop the Use of a Blue Shuttlebus by a Competitor?

Thrifty, Inc. v. KDSB Rentals, Inc. d/b/a Payless Car Rental, No. 11-cv-235M (D.R.I. filed June 8, 2011).

A new trademark complaint was filed in the District of Rhode Island last week. In its Complaint, Thrifty Car Rental claims federal and state trademark rights in the color light blue (Pantone No. 300) for vehicle rental services and for its rental buildings. Thrifty claims that Payless is operating a light blue courtesy shuttle bus out of its Warwick rental location. Apparently, Thrifty has been trying since October to get Payless to repaint its shuttle bus, without success. Thrifty seeks injunctive relief and damages on counts of federal trademark infringement, federal dilution and federal and state law unfair competition. The case has been assigned to Judge McConnell.

New Patent Case Filed in DRI

A new patent case was filed in the federal District Court in Rhode Island last week. In its Complaint, Ira Green Inc. of Providence alleges that JL Darling Corp. of Tacoma, Washington, has sold products that falsely claim they are covered by patents, in violation of the federal Patent Act.

Both companies manufacture and sell weatherproof paper, and products such as books and notepads comprised of weatherproof sheets. Ira Green alleges that JL Darling is misleading the public by claiming its books and notepads are covered by a U.S. patent, when that patent does not cover the books and notepads in question.

The "false marking" provisions of the federal patent law make it illegal to put a patent number on a product that is not in fact covered by that patent "for the purpose of deceiving the public." The penalty is a fine of not more than $500. The statute also allows private individuals to bring "qui tam" suits against an alleged offender. If successful, the private plaintiff gets part of the fine and the government gets the other part.

For many years, the provision was not used very often, as it was interpreted to mean that a continuous false marking--such as the entire production run of a product--is a "single offense." So the fines were rarely worth the bother of filing a lawsuit. But in December 2009, the Federal Circuit Court of Appeals changed this interpretation and ruled that each wrongly marked item could be viewed as a separate offense under the statute. This ruling opened the floodgates for these "false marking" cases. In 2010, over 670 false marking cases were filed in the federal courts. Through the first quarter of 2011, an additional 199 cases were filed.

These false marking cases have been subject to question recently. In March, a federal court in Ohio reaffirmed a ruling declaring the provisions allowing a private individual to bring suit unconstitutional. Around the same time, the Federal Circuit held in In re BP Lubricants USA Inc. that conclusory allegations that a defendant is a sophisticated company, and "knew or should have known" that a patent had expired are insufficient, and that a complaint must "provide some objective indication to reasonably infer that the defendant was aware that the patent expired." Together, these two judicial limitations have substantially slowed down the filing of new false marking cases, as only 26 cases were filed in total in the federal courts in April and May 2011.

Whether or not the Ira Green complaint can overcome these limitations remains to be seen.

May 2011 IP Cases Filed in US District Court of Rhode Island

There were only 3 new intellectual property case (patent, trademark and copyright) filings in May 2011 at the U.S. District Court for Rhode Island. This brings the total to 7 new IP case filings (2 patent and 5 trademark) for the year to date, which is a 30% decrease over the same period in 2010. The new cases in May include one “false marking” patent case and two trademark infringement cases.

So far there have been no new copyright cases filed in 2011 in Rhode Island.

These numbers only include cases that have been designated in the court's database as a patent, trademark or copyright case. There are other cases pending where the complaint may include trademark or other intellectual property claims. But unless the case is designated as such, we are not counting it here.

Two New Trademark Cases Filed in DRI

Fuelbelt, Inc. v. Penguin Brands, Inc., No. 1:11-cv-00203-S (filed May 18, 2011).

JJI International, Inc. v. The Bazar Group, Inc., No. 1:11-cv-00206-ML (filed May 19, 2011).

Two new trademark cases were filed in the U.S. District Court for the District of Rhode Island this week. This brings the number of trademark cases filed in Rhode Island so far in 2011 up to 5 cases, one more than the same period a year ago.

The Fuelbelt case involves the trade dress for "molded holsters" that hold water bottles for runners and other athletes. Penguin Brands claims trade dress in its molded holsters sold under its SWIFT 2R, SPEED 2R and SPEED 4R brands. Fuelbelt seeks a declaratory judgment that its REVENGE series hydration belts having a molded holster do not infringe Penguin's trade dress and that the Penguin trade dress is functional. What do you think?


SPEED 2R Belt and Holster:






REVENGE Belt and Holster:













The case has been assigned to Judge Smith.

The JJI International case involves competitors selling gold and silver plated necklaces, earrings and rings. JJI sells a branded line of jewelry under the SPLASHES & SPARKLES trademark, for which JJI obtained a federal registration in 2005. JJI claims that in June 2010 Bazar started using a SPARKLE trademark in connection with competing jewelry products. JJI seeks injunctive relief and damages on counts of federal trademark infringement and federal and state law unfair competition. The case has been assigned to Judge Lisi